Wicked Fashions, Inc. v.
WebQuest c/o
Claim Number: FA0807001215980
PARTIES
Complainant is Wicked Fashions, Inc. (“Complainant”), represented by Arlana
S. Cohen, of Cowan, Liebowitz & Latman, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <southpole.com>, registered with Fabulous.com
Pty Ltd.
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
Dennis A. Foster, G. Gervaise Davis and Debrett Lyons (chair) as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 17, 2008; the
National Arbitration Forum received a hard copy of the Complaint on July 21, 2008.
On July 17, 2008, Fabulous.com Pty Ltd. confirmed by e-mail to
the National Arbitration Forum that the <southpole.com> domain name is
registered with Fabulous.com Pty Ltd. and
that the Respondent is the current registrant of the name. Fabulous.com
Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 July 30, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 19, 2008 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@southpole.com by e-mail.
A timely Response was received and determined to be complete on August 18, 2008.
Complainant submitted an Additional Submission on August 25, 2008 that
was determined to be timely and complete pursuant to Supplemental Rule 7. Likewise, Respondent submitted an Additional
Submission on September 2, 2008 that also satisfied Supplemental Rule 7.
On
September 6, 2008, pursuant to Respondent’s request to have the dispute decided
by a three-member Panel, the
National Arbitration Forum appointed Dennis A. Foster, G. Gervaise Davis
and Debrett Lyons as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Broadly, Complainant asserts trademark rights and alleges that the
disputed domain name is confusingly similar to its trademark. Complainant alleges that Respondent has no
rights or legitimate interests in the disputed domain name and that Respondent
registered and has used the disputed domain name in bad faith.
In particular, Complainant provided evidence of trademark registrations
with the USPTO for SOUTH POLE in both one-word and two-word form. Complainant also laid implicit claim to
common law trademark rights through use and reputation of the trademark. Complainant asserts that its trademark has
“been recognized as a dominant street wear brand in the
Complainant goes on to assert that Respondent has no legitimate
interest in the domain name because the corresponding website is a link farm
and so Respondent “does not engage in any business or commerce.” Complainant alleges that the website “has
links to third-party competing sites.” Complainant
otherwise asserts that Respondent has no rights in the domain name.
Complainant argues that Respondent had constructive notice of its
trademark rights by reason of its USPTO registrations, the earliest of which
pre-dates the registration date of the domain name. Complainant alleges bad faith registration on
that basis. Complainant submits that
“Respondent’s [sic.] redirects Internet users to websites that contain
hyperlinks to third-party sites. This
constitutes a disruption of Complainant’s business and qualifies as bad faith
registration and use under the Policy.”
Complainant finally states that “upon information and belief, there is
evidence of actual confusion among consumers who want to buy clothing bearing
Complainant’s [trademark]. These
consumers have typed in respondent’s domain name into their Internet browsers,
reached Respondent’s website and have mistakenly believed that this website is
somehow endorsed by or associated with Complainant.”
B. Respondent
Respondent’s submissions can be distilled as follows. It repeatedly admits to being in the business
of pay-per-click search engines. It
repeatedly admits to having registered the disputed domain name “to add to its
collection of generic, search engine names.”
It repeatedly denies having any knowledge of Complainant’s business or
trademark at the time it registered the domain name, or later, up to the time
of receipt of the Complaint.
Respondent denies that at the time of registration of the domain name,
Complainant’s trademark was famous and distinctive (being a geographical place
name). Respondent claims to have a
legitimate business interest in the domain name and denies having acted in bad
faith in any way.
C. Additional Submissions
Both parties made Additional Submissions which are referred to in the
discussion below to the extent the Panel found necessary.
FINDINGS
Complainant is in the business of manufacturing
and wholesaling items of clothing, footwear and headgear.
Complainant has used the trademark SOUTH POLE in
connection with that business since 1994.
The trademark is the subject of US Federal
Trademark Registration No. 1,982,070 issued June 25, 1996, amongst others.
Respondent is in the business of registering
domain names for the purpose of their use as general search engines.
Respondent registered the disputed domain name on
October 25, 1997.
Respondent supports an active website at an
address corresponding with the domain name.
The evidence does not support Complainant’s
allegation that Respondent’s website carries links to third party competitors
to Complainant.
There is no relationship between the parties, nor
prior to the Complaint, have they ever been in contact with each other.
Contrary to Complainant’s claim, there is no
evidence of actual costumer confusion.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Complainant provided
evidence of a
The differences between the disputed domain name and Complainant’s trademark are trivial and amount only to the elimination of the space between the two words, and the addition of the gTLD, “.com.” The Panel follows the consensus view of panelists in earlier decisions under the Policy in holding that those differences do not prevent a finding of identicality. See Diesel v. LMN a/k/a L. M. Nordell, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Accordingly, the Panel finds that Complainant has satisfied the first element of the Policy.
Under the Policy, Complainant has the burden to establish that Respondent has no rights or legitimate interests in the domain name. Nevertheless, it is well settled that Complainant need only make out a prima facie case, after which the onus shifts to Respondent to demonstrate rights or legitimate interests. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
By proving its trademark rights, showing no relationship between the parties and by establishing from WHOIS data that Respondent is not commonly known by the domain name, Complainant establishes a prima facie case and so shifts the onus onto Respondent.
Policy ¶ 4(c) states that
any of the following circumstances, in particular but without limitation, if
found by the Panel to be proved based on its evaluation of all evidence
presented, shall demonstrate rights or legitimate interests to a domain name
for purposes of Policy ¶ 4(a)(ii):
(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; or
(ii) you (as an individual, business, or
other organization) have been commonly known by the domain name, even if you
have acquired no trademark or service mark rights; or
(iii) you are making a legitimate
noncommercial or fair use of the domain name, without intent for commercial
gain to misleadingly divert consumers or to tarnish the trademark or service
mark at issue.
Policy ¶ 4(c)(i) is relied upon by Respondent who by its evidence highlights the generic nature of the term “South Pole.” The Panel does not support Respondent’s argument that Complainant’s trademark is non-distinctive since it most certainly is distinctive when used in connection with clothing, but does accede to Respondent’s argument that the well understood geographical term might be chosen in good faith by any number of parties intending to use it purely descriptively, or indeed, use it commercially in ways unconnected with Complainant’s business activities. Former Policy panels have underscored that a respondent can have rights or legitimate interests in domain names that are composed of common descriptive or generic words, even if those names correspond to a valid trademark. See, e.g., HSBC Fin. Corp. v. Clear Blue Sky Inc. & Domain Manager, D2007-0062 (WIPO June 4, 2007); Nat’l Trust for Historic Preservation v. Preston, D2005-0424 (WIPO Aug. 10, 2005); and Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., D2004-0843 (WIPO Dec. 14, 2004).
Turning to the remaining aspects of Policy ¶
4(c)(i), there is nothing in the evidence to suggest that Respondent’s use of
the domain name only occurred after notice of this dispute—quite the contrary—and
for the following reasons the Panel finds that the use has been in connection
with a bona fide offering of goods or
services.
As presented by the evidence, Respondent’s
business model is legitimate under the Policy.
Complainant’s allegations about Respondent are incorrect or inconsistent. Complainant’s allegation that Respondent’s
website corresponding with the domain name carries links to competitors of
Complainant is incorrect and not supported by the evidence in any way. Complainant’s allegations about Respondent’s
activities are inconsistent. Complainant
first alleges Respondent is not engaged in any business or commercial
enterprise, but then charges Respondent with having benefitted from a
pay-per-click revenue scheme. Respondent
openly admits that it obtains pay-per-click revenue from use of the domain name
and many other domain names it owns and that this is the platform of its
business. It goes on to justify that
model by reference to earlier Policy decisions, most notably the case of Weather Shield Mfg., Inc. v. Lori Phan, D2007-1247
(WIPO Oct. 10, 2007), where it was said:
The Respondent has also made commercial use of the Domain Name for extended periods in the form of third-party marketing, pay-per-click advertising, and listing the Domain Name for resale. These might, according to the circumstances, represent use in connection with a bona fide offering of goods or services, particularly where the Domain Name is a dictionary word and there is not persuasive evidence that the Respondent was more likely than not aware of the Complainant’s marks. See, e.g., Media General Communications, Inc. v. Rarenames, WebReg, D2006-0964 (WIPO Sept. 23, 2006).
and the case brought against this same Respondent in Bag Boy LLC v. Chad Wright and WebQuest.com, Inc., FA 530334 (Nat. Arb. Forum Sept. 15, 2005), where the panel said:
Complainant seems to believe that only the owner of a registered trademark can use that mark within a domain name. This is of course not the case. Ownership of a trademark does not confer the exclusive right to all domain names containing the mark. And using a domain name for commercial gain is not, per se, a bad faith activity prohibited under the Policy.
The Panel finds
that Respondent has discharged the burden of proof which fell to it under Policy ¶ 4(a)(ii) and for that reason alone
the Complaint might be denied; however, in this case the Panel believes that it
is correct to also make the bad faith analysis.
Complainant must
establish that Respondent both registered and used the disputed domain name in
bad faith. Policy ¶ 4(b) sets out the circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
(i) circumstances indicating that you have registered or you have
acquired the domain name primarily for the purpose of selling, renting, or
otherwise transferring the domain name registration to the complainant who is
the owner of the trademark or service mark or to a competitor of that complainant,
for valuable consideration in excess of your documented out‑of‑pocket
costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner
of the trademark or service mark from reflecting the mark in a corresponding
domain name; or
(iii) you have registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to
attract, for commercial gain, Internet users to your website or other on‑line location, by creating a
likelihood of confusion with the complainant's mark as to the source,
sponsorship, affiliation, or endorsement of your website or location or of a
product or service on your website or location.
Nothing in the evidence can be linked to Policy
¶ 4(b)(i). Nothing in the evidence
supports a finding under Policy ¶ 4(b)(ii) and indeed Complainant has been
doing good business from the website <southpole-usa.com>, the domain name
for which it registered on May 27, 1998.
Complainant presses its case under Policy ¶¶ 4(b)(iii) and (iv), but
without convincing this Panel that on the balance of the evidence Respondent
has acted in either of those ways.
Independently from Policy ¶ 4(b), Complainant
alleges bad faith registration on the basis of constructive knowledge of its
trademark rights and alleges bad faith use, repeating its allegation that
Respondent’s website provides links to third party competitors. The latter claim is patently incorrect and,
once more, the Complaint collapses on the basis that there is no evidence
before the Panel of bad faith use.
For the sake of completeness, the Panel is
not prepared to find bad faith registration on the basis of either actual or
constructive knowledge of Complainant’s trademark. Respondent’s Additional Submissions carry the
Affidavit of Chad Wright in which he denies any knowledge of Complainant or of
its trademark prior to the dispute. The
Complaint states continuous use of the trademark since 1991. That claim was not supported by the evidence
since Complainant’s earliest Reg. No. 1,982,070 shows a first use in commerce date
of June 1994. The Complaint speaks of
the international fame of the trademark but without any evidentiary
support. Complainant’s Additional
Submissions include the Declaration of Gary Lim, Complainant’s Vice-President,
who verifies the first use date of the trademark as 1994 and states that
“during the years 1994 through 1997, [Complainant] had several millions of
dollars of sales of SOUTHPOLE-branded clothes.”
That is the
Policy panels have differed in opinion on the question of whether a Respondent can have imputed or constructive knowledge of trademark rights. As a generalisation, panelists have insisted on proof of actual knowledge of a complainant’s trademark rights. There are cases under the Policy involving very well‑known marks where panelists have seemingly imputed a respondent with knowledge of the mark but the better understanding of those cases is that the panels have in fact applied a test of actual knowledge which, based on the balance of probability, so overwhelming favoured the complainant that it merely appears as if their decisions rest on constructive knowledge of the complainant’s rights.
Nonetheless, the
issue of constructive knowledge has in
prior decisions taken a specific incarnation where complainant has a USPTO-registered
mark and both parties (or at least, the respondent) is located in the
under the Policy, a domain name registrant has no obligation to perform a trademark search. Indeed, it is clear from the travaux preparatoires of the Policy that mere failure to conduct a trademark search does not constitute bad faith behavior. The closest equivalent to a legislative history for the Policy can be found in the April 30, 1999 Final Report of the WIPO Internet Domain Name Process, which formed the basis for the ICANN Policy.
This report states at paragraph 103:
[T]he performance of a prior search for potentially conflicting trademarks should not be a condition for obtaining a domain name registration. … Particularly in an international context, the requirement of searches prior to the registration of a domain name was generally considered to be unrealistic and conducive to unnecessary delays in the registration process.
And the report states at paragraph 105:
It is not recommended that domain name registrations be made conditional upon a prior search of potentially conflicting trademarks but it is recommended that the domain name application contain appropriate language encouraging the applicant to undertake voluntarily such a search.”
Accordingly, the Panel does not find that Respondent had constructive or actual knowledge of Complainant’s trademark at the time of registration of the domain name. The Panel finds good faith use and registration. Complainant has failed to establish the third and final element of the Policy.
DECISION
Having failed to establish at least one, but in fact two, elements
required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Dennis A. Foster
G. Gervaise Davis
Debrett Lyons
Panelists
Dated: September 17, 2008
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