Wall Beds By Wilding, LLC, d/b/a
Wilding Wall Beds v. Texas International Property Associates, Keyword
Marketing, Inc. and
Claim Number: FA0712001124523
Complainant is Wall Beds By
Wilding, LLC d/b/a Wilding Wall Beds, represented by Stanley
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.
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.
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 email@example.com, firstname.lastname@example.org, and email@example.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.
Complainant requests that the domain names be transferred from Respondents to 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.
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.
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.
Complainant has failed to establish all the elements necessary to entitle it to relief.
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>.
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.
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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