Wall Beds By Wilding, LLC, d/b/a
Wilding Wall Beds v. Texas International Property Associates, Keyword
Marketing, Inc. and
Claim Number: FA0712001124523
PARTIES
Complainant is Wall Beds By
Wilding, LLC d/b/a Wilding Wall Beds, represented by Stanley
R. Jones,
REGISTRARS AND DISPUTED DOMAIN NAMES
The domain names at issue are <wildingwallbeds.com>, registered with Compana,
LLC; <wallbedbywilding.com>,
registered with DomainDoorman, LLC;
and <wallbedsbywildings.com>,
registered with BelgiumDomains, LLC.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint under the usTLD Dispute Resolution
Policy to the National Arbitration Forum electronically on December 21, 2007. The National Arbitration
Forum received a hard copy of the Complaint on December
21, 2007.
On December 26, 2007, Compana LLC
confirmed by e-mail to the National Arbitration Forum that the <wildingwallbeds.com> domain name
is registered with Compana LLC, and that Respondent Texas International Property Associates is the current registrant
of the name. Compana LLC has verified that that Respondent is bound by the Compana LLC registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (“the
Policy”).
On December 26, 2007, DomainDoorman, LLC confirmed by e-mail to the National
Arbitration Forum that the <wallbedbywilding.com> domain name is registered with DomainDoorman, LLC, and
that Respondent Keyword Marketing, Inc.
is the current registrant of the name. DomainDoorman, LLC has verified that that Respondent
is bound by the DomainDoorman, LLC
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with the Policy.
On December 26, 2007, BelgiumDomains, LLC confirmed
by e-mail to the National Arbitration Forum that the <wallbedsbywildings.com>
domain name is registered with BelgiumDomains,
LLC, and that Respondent Caribbean
Online International Ltd. is the current registrant of the name. BelgiumDomains,
LLC has verified that that Respondent is bound by the BelgiumDomains, LLC registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with the Policy.
On January 7, 2008 the National
Arbitration Forum drew to Complainant’s attention several deficiencies in the
Complaint, including that the domain names do not fall under the usTLD Policy
and the absence of any argument that the multiple Respondents are, in fact, one
Respondent per the National Arbitration Forum’s Supplemental Rule 1(d). On
January 14, 2008, Complainant submitted an amended Complaint under the Policy, asserting
that all of the Respondents are to be considered as one and the same.
On January 15, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding,
setting a deadline of February 4, 2008 by which Respondents could file a
Response to the amended Complaint, was transmitted to Respondents via e-mail,
post and fax, to all entities and persons listed on each Respondent’s
registration as technical, administrative and billing contacts, and to postmaster@wildingwallbeds.com, postmaster@wallbedbywilding.com,
and postmaster@wallbedsbywildings.com by e-mail.
A timely Response was received from Respondent Texas International
Property Associates and determined to be complete on February 4, 2008. No Response was received from Keyword Marketing,
Inc. or Caribbean Online International Ltd.
Timely Additional Submissions were received from Complainant on
February 11, 2008 and from Respondent on February 13, 2008. Both were
determined to be complete and in compliance with the National Arbitration
Forum’s Supplemental Rule 7.
On February 13, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Alan L. Limbury as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondents to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant says the names of the Respondents are aliases and that all
of the Respondents are to be considered as one and the same because “the
impersonating domain names are essentially the same compared with each other
and differ only by slight degree or spelling variants”. It also asserts in rem jurisdiction over the domain
names under the Anticybersquatting Act and says this Complaint is filed against
the offending domain names themselves.
On October 16, 2007, Complainant became the proprietor of United States
registered trademarks WILDING WALL BEDS (No. 3,310,407, disclaiming the
exclusive right to use “wall beds” apart from the mark as shown) and WILDING
(No. 3,310,408). Both marks are
registered for “furniture, namely wall beds”. Both applications were filed on
December 29, 2006 and claimed first use in commerce on November 3, 1997.
Complainant claims common law rights in those marks by reason of
extensive use over more than a decade in connection with furniture manufactured
and sold by Complainant in the United States and elsewhere. The Complaint
asserts that “tens of millions of advertising and goodwill dollars have been
spent by Wilding over the last decade or more in establishing it as a name with
a fine reputation for wall bed products”.
Complainant operates a website at <wallbedsbywilding.com>.
Complainant says the offending domain name [sic] is exactly the same as
the name of Complainant’s business and has caused actual confusion; that
Respondents have no rights or legitimate interests in respect of the
“impersonating” domain names the subject of this Complaint, and that they
should be considered as having been registered “and or” used in bad faith.
As to legitimacy, Complainant says the “Texas Respondent”, which has
been involved in over 40 cases of illegitimate use, has never been known by the
name Wilding and is simply impersonating Complainant by adopting and using
Complainant’s trademarked names in “an illegal click farm operation”. It is not
making any legitimate noncommercial or fair use of the domain name. Instead its purpose is solely misleadingly to
divert consumers or to tarnish the trademark and reputation of Complainant.
As to bad faith, Complainant says it discovered the “domain theft” in
June, 2007 and sent Notices requesting cessation of infringement of valid intellectual
property rights. No mention was made of transfer of the domain name. In reply,
the “Texas outfit” stated that it had no intention of transferring the domain
name but would review any information Complainant cared to send, while warning
of reverse domain name hijacking if Complainant could not substantiate its
assertions. Complainant says that since the first mention of transfer
originated with the “Texas outfit”, the clear inference is that a transfer of
the domain name for illicit monetary gain was always a prime consideration by
the “Texas outfit”.
The Complaint continues: “What hypocrisy! First the Texas pirates
steal, and then they offer to sell the stolen name back to the rightful owner.
Court records show that this is a common unlawful practice by the Texas
pirates. Time after time they imitate
domain names of others, solely for their own illegitimate gain and to the great
harm of the true owners. An order that the domain name “wildingwallbeds.com” be
transferred to [Complainant] will be a first step in halting this nefarious
practice”.
Further, Complainant says Respondent [sic] has registered the
impersonating domain name [sic] in order to prevent the true owner of the
WILDING and WILDING WALL BEDS trademarks from reflecting those marks in
corresponding domain names and primarily for the purpose of disrupting
[Complainant’s] business: at the website of the impersonating domain name one
finds selected articles and products of Complainant’s competitors.
Complainant also says Respondent [sic] has intentionally attempted to
attract, for its illegal commercial gain, Internet users to its website,
resulting in actual customer confusion and damage to Complainant’s reputation.
B. Respondent
As mentioned, the only Response filed is from Texas International
Property Associates (hereinafter referred to as “Respondent”) in relation to
the domain name “wildingwallbeds.com”.
It admits that that domain name is identical or confusingly similar to
Complainant’s trademarks but contends that Complainant has failed to establish
the other elements entitling it to relief.
As to legitimacy, Respondent says it has used the domain name to
provide a web portal offering advertisements provided through the Google
Adsense program, over which Respondent has no control, as held in Admiral Insurance Services Limited v. Dicker,
D2005-0241 (WIPO June 4, 2005), and for which Respondent is not responsible. As in Eastbay Corp. v.
VerandahGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002), Respondent
began using the subject domains [sic] for this purpose long before receiving
notice of this dispute and because it believed that no person or entity had
exclusive rights to the use of the combination of the surname “Wilding” and the
dictionary words “wall” and “beds” in the United States and elsewhere. Mere
ownership of a common term domain establishes legitimacy: Shirmax Retail Ltd. v. CES Marketing, Inc., AF-0104 (e-Resolution
March 20, 2000).
As to bad faith, Respondent says the Policy requires proof of both bad
faith registration and bad faith use. By the time Complainant applied to
register its marks, the domain name had been registered for almost a year and a
half (since May 2, 2005). There is no way Respondent could have known of
Complainant when it registered the domain name; there is no evidence that it
knew of Complainant before June 6, 2007; and Respondent asserts that it was not
aware of Complainant or its business in May 2005. Accordingly, Respondent could
not have chosen Complainant’s non-existent mark for any type of ride, free or
otherwise: McMullen Argus Publishing Inc.
v. Moniker Privacy Services/Jay Bean, MDNH, Inc., D2007-0676 (WIPO July 24,
2007). This case is not an exception to the general rule that bad faith is not
shown where the domain name was registered prior to the existence of
Complainant’s trade mark rights.
Respondent concedes that it has been involved in many UDRP cases
resulting in transfer but says it consented to transfer in a substantial number
of those cases, in which there were no findings made. It has won some cases and
settled others. It has registered
thousands of domain names consisting of electronically registered generic words,
a legitimate business. Merely comparing the number of cases in which it has
been involved without considering the broader context is misleading.
Respondent says it did not register the domain name to sell to
Complainant. The full correspondence between the parties demonstrates this.
C. Additional Submissions
Respondent objects to the filing of Complainant’s Additional
Submission, citing paragraph 12 of the Rules and contending that the Forum’s
Supplemental Rule 7 is an improper modification of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”).
According to paragraph 1 of the Rules,
“Supplemental Rules shall not be inconsistent with the Policy or these
Rules and shall cover such topics as fees, word and page limits and guidelines,
the means for communicating with the Provider and the Panel, and the form of
cover sheets.”
Respondent says the Rules anticipate that the Supplemental Rules of any
Provider are housekeeping in nature and are not meant to allow substantial
modifications of the rights of the parties under the Policy. As observed by one recent WIPO panel, “[t]he
normal procedure under these proceedings, is that Complainant is allowed to
submit a Complaint, and Respondent is allowed to submit a Response. Even though
the Response in this case was filed late, this should not alter the main
principle of one shot each.” Internationale
Spar Centrale B.V. v. Scientific Process & Research, Inc., D2005-0603
(WIPO October 6, 2005). Respondent says
that by allowing such unsolicited material, the Forum allows Complainant to
thwart the very streamlined procedure of “one shot each” envisioned by the
Policy.
This panelist accepts that paragraph
12 of the Rules does not contemplate unsolicited submissions after the
Complaint and Response and gives the Panel the "sole discretion" as
to acceptance and consideration of additional submissions. The overriding
principle of Rule 12 enables the Panel both to disregard unsolicited
submissions received within the time limits contemplated by the Forum’s
Supplemental Rule 7 and to take into account unsolicited submissions received
outside those time limits. See Darice, Inc.
v.
Complainant’s Additional Submission contains much that
is repetitious of the Complaint but also seeks to introduce, for the first
time, evidence in support of Complainant’s claim to have acquired common law
rights prior to the registration of the domain name <wildingwallbeds.com>. For the Panel to receive
this material under the Forum’s Supplemental Rule 7 would violate the principle
of “one shot each” enshrined in the Rules and would impermissibly extend the
scope of Supplemental Rules beyond housekeeping matters by giving to
complainants the right to split their case.
Nevertheless, it is appropriate to
consider the circumstances of each case before deciding whether to admit
unsolicited additional submissions: Toyota Jidosha Kabushiki Kaisha v.
S&S Enterprises Ltd., D2000-0802 (WIPO Dec. 9, 2000). The evidence sought to be adduced here takes the form of a
contact list of customers in Texas dated February 8, 2008. This is not a
case of discovery of evidence not reasonably available to Complainant at the
time of its initial submission, nor of arguments by Respondent that Complainant could not reasonably have anticipated: see Goldline
Int’l, Inc. v. Gold Line, D2000-1151 (WIPO Jan. 4, 2001). Further, the list of customers in
The Panel therefore rejects the Complainant’s
Additional Submission and, in consequence, Respondent’s Additional Submission
in reply.
FINDINGS
Complainant has failed to establish all the
elements necessary to entitle it to relief.
DISCUSSION
Preliminary Issue: Multiple
Respondents
These are not proceedings in rem against domain names but proceedings in personam against domain name registrants.
Complainant asserts that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, operating under several aliases. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel finds that Complainant has presented no evidence in support of its assertion, and thus the Panel, under the National Arbitration Forum’s Supplemental Rule 4(f)(ii), is required to dismiss the Complaint against Keyword Marketing, Inc. and Caribbean Online International Ltd. in relation to the <wallbedbywilding.com> and <wallbedsbywildings.com> domain names.
What follows is therefore confined to a consideration of the Complaint against Respondent in relation to the domain name <wildingwallbeds.com>.
Primary Issue
Paragraph 15(a) of the Rules instructs this Panel
to “decide a complaint on the basis of the statements and documents submitted
in accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each
of the following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1) the domain name registered by Respondent is
identical or confusingly similar to a trademark or service mark in which
Complainant has rights;
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is being
used in bad faith.
Paragraph 4(a)(i) of the Policy embodies no requirement that a complainant’s trademark rights must have arisen before the disputed domain name was registered. See Valve Corp. v. ValveNET, Inc., D2005‑0038 (WIPO Mar. 9, 2005) and the cases there cited.
It is common ground and the Panel so finds,
that the domain name <wildingwallbeds.com> is identical or confusingly similar to
Complainant’s WILDING and WILDING WALL BEDS registered trademarks.
Complainant has established this element of
its case.
Complainant has established that its trademarks are distinctive in relation to wall beds and has asserted, without contradiction, that Respondent’s website carries advertisements some of which promote wall beds of Complainant’s competitors and that Respondent is not known by the domain name. This is sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interest in the disputed domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2001) and the cases there cited.
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrant’s rights or legitimate interests to the disputed domain name. Respondent relies on the circumstances specified in sub-paragraph 4(c)(i):
“before any notice to you of the dispute,
your use of, or demonstrable preparations to use, the domain name or a name
corresponding to the domain name in connection with a bona fide offering of
goods or services;”
Respondent does not deny that it is using the disputed domain name to lead to a website offering advertisements for Complainant’s competitors. It says that the disputed domain name is generic and that, in any event, it has no control over those advertisements, which are provided under Google’s Adsense program.
Although Wilding is a common name and “wall” and “beds” are common generic words, the combination “wildingwallbeds” used in the disputed domain name is not generic (just as the combination “Smiths potato crisps” is not generic). Indeed, it has been accepted by the USPTO as distinctive of Complainant’s wall beds.
Although this
panelist accepted in Admiral Insurance Services Limited v. Dicker, D2005-0241 (WIPO June 4, 2005) that “the terms under which Google makes its Adsense
advertisements available do not permit the Respondent to control them and that
the Respondent cannot be aware of their content as displayed in any particular
country”, panelists in subsequent cases, including Media General
Communications, Inc. v. Rarenames, WebReg, D2006-0964 (WIPO Set. 23, 2006);
Mariah Media Inc. v. First Place® Internet Inc., D2006-1275 (WIPO Dec. 6, 2006) and Shangri-La International Hotel
Management Ltd. v. NetIncome Ventures Inc., D2006-1315 (WIPO Feb. 25, 2007)
have appreciated that domain name registrants are able to exercise some degree
of control over advertisements provided under Google’s Adsense program and may
therefore be held responsible for them.
Be that as it may, in light of the Panel’s finding under the next heading, it is unnecessary to come to a conclusion in relation to this element.
The Policy requires proof of both bad faith
registration and bad faith use, not, as Complainant puts it, “and or”. Certainly,
Complainant had acquired registered trademark rights by the time it filed this
Complaint. However, Complainant has provided no evidence that it had acquired,
through use, common law rights in its trademarks prior to the registration by
Respondent of the <wildingwallbeds.com> domain name in 2005. This makes it difficult,
to put it mildly, to show that Respondent was then aware of Complainant or of
its marks.
Complainant’s failure to provide any such
evidence with its Complaint is extraordinary because, in reply to its own email
dated June 6, 2007 asking that Respondent immediately discontinue use of the
domain name, Complainant received an email from Respondent dated June 8, 2007
which contained the following request:
In order to properly evaluate your claim to
this domain name, more information from you is needed. If you have a federally registered trademark
and believe that the domain name is somehow infringing on that trademark,
please forward us all relevant information by email.
If you do not have a federally registered
trademark, please forward the information which you believe establishes your
common law trademark rights. To assist in the evaluation of your claim, please
indicate whether you believe your purported trademark is arbitrary or fanciful,
suggestive, or descriptive along with proof of secondary meaning where
required. Secondary meaning in this case means that the public has come to view
an association formed in the mind of the consumer which links an individual
product with its manufacturer or distributor.
This is subject to a three-part test:
1.
The
length and manner of use;
2.
The
nature and extent of advertising and promotion; and
3.
The
efforts made in promoting a conscious connection between the name, word, term,
or mark and the product, service or business in the minds of consumers.
In light of Complainant’s failure to provide
to this Panel any evidence (as distinct from assertion) of having acquired
common law rights, despite having received from Respondent this very clear
indication of what is required, this Panel is not prepared to infer that
Respondent had Complainant or its business in mind when Respondent registered
the domain name.
It follows that this Panel is not persuaded
that Respondent registered the domain name in order to prevent the true owner
of the marks from reflecting them in corresponding domain names nor primarily
for the purpose of disrupting Complainant’s business.
Complainant’s argument that because
Respondent was first to raise the issue of transfer (in saying “At this time,
we have no intention of transferring the above-referenced domain name but will
gladly review any information you may wish to send”) the clear inference is
that a transfer for illicit monetary gain was always a prime consideration by
Respondent needs only to be stated to be dismissed as completely untenable.
It follows that Complainant has failed to
discharge its burden of proving bad faith registration.
True it may be that, following Complainant’s
Notification to Respondent in June 2007, Respondent may have used the domain
name misleadingly to attract consumers seeking Complainant to Respondent’s
website for commercial gain, and may thereby have used the domain name in bad
faith in the manner contemplated in paragraph 4(b)(iv)
of the Policy. That paragraph provides
that such circumstances shall be evidence of both bad faith registration and
bad faith use.
However, the prevailing view amongst
panelists is that a finding of bad faith registration may be made where
bad faith use within paragraph 4(b)(iv) of the Policy
is the only evidence tending to show the purpose for which the domain name was
registered. Where there is other relevant evidence, such as evidence that the
domain name was registered for a permissible purpose, it must be weighed
against any evidence of bad faith registration constituted by evidence of bad
faith use within paragraph 4(b)(iv). It is difficult to imagine circumstances in
which, under this approach, subsequent bad faith use within 4(b)(iv) would suffice to prove that a domain name was
originally registered in bad faith: Passion Group Inc. v. Usearch, Inc.,
eResolution case AF-0250 (decision date unavailable; commenced June 9, 2000),
followed in Viz Commc’ns, Inc., v. Redsun, D2000-0905 (WIPO Dec. 22, 2000).
The Policy was not designed to prevent good faith
registration followed by bad faith use: Substance Abuse Mgmt., Inc. v.
Screen Actors Modesl [sic] Int’l, Inc. (SAMI), D2001-0782 (WIPO Aug. 14,
2001); Teradyne Inc.Teradyne, Inc. [sic] v. 4tel Tech., D2000-0026 (WIPO
May 9, 2000); Telaxis Commc’ns Corp. v. Minkle, D2000-0005 (WIPO Mar. 5,
2000) and Yoomedia Dating Ltd. v. Newcomer / Dateline BBS, D2004-1085 (WIPO Feb. 22, 2005).
Here there
is no evidence of good faith registration. Rather there is an absence of
evidence of bad faith registration, by reason of the absence of any evidence
that Respondent had Complainant in mind when registering the disputed domain
name in 2005. The only evidence that Complainant has trademark rights is the
evidence of its trademark registrations in 2007.
This Panel is not prepared to make a finding of bad faith registration based upon Paragraph 4(b)(iv) of the Policy in circumstances in which Complainant’s trademark rights are not shown to have existed at the time of the registration of the domain name. There are no exceptional circumstances present here, such as a prior confidential disclosure to Respondent of Complainant’s plans to develop a trademark or to engage in a merger, which would justify a finding of bad faith registration despite the trademark rights post dating the domain name registration.
Complainant has failed to establish this
element of its case.
DECISION
Complainant having failed to establish all three elements required
under the Policy, the Panel concludes that relief shall be DENIED.
Alan L. Limbury, Panelist
Dated: February 27, 2008
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