Maggie Sottero Designs, LLC v. zhou Maggie
Claim Number: FA1205001444847
Complainant is Maggie Sottero Designs, LLC (“Complainant”), represented by Tyler Davis of Holland & Hart LLP, Colorado, USA. Respondent is zhou Maggie (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <maggiebrides.com>, registered with Hichina Zhicheng Technology Ltd.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 18, 2012; the National Arbitration Forum received payment on May 18, 2012. The Complaint was received in Chinese and English.
On May 22, 2012, Hichina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <maggiebrides.com> domain name is registered with Hichina Zhicheng Technology Ltd. and that Respondent is the current registrant of the name. Hichina Zhicheng Technology Ltd. has verified that Respondent is bound by the Hichina Zhicheng Technology Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 29, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 18, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@maggiebrides.com. Also on May 29, 2012, the Chinese language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Panel has issued its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable. Panel notes that Respondent submitted e-mail correspondence in this matter however that Panel observes that Respondent’s correspondence does not present any argument under the UDRP and so does not advance its cause.
Panel also notes that the Registration Agreement is written in Chinese and so the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
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.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant conducts a bridal wear business by reference to a number of trademarks including the trademark MAGGIE SOTTERO, registered with the United States Patent and Trademark Office under Reg. No. 2,415,876 on December 26, 2000.
2. Complainant and its customers use the expression MAGGIE BRIDES to either feature or refer to real-life stories and photographs of brides who have purchased Complainant’s wedding apparel.
3. Respondent registered the disputed domain name on January 3, 2012.
4. A website corresponding with the disputed domain name is used to advertise and sell bridal gowns.
5. There is no relationship between the parties.
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; and
(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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry - a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the trademark and the disputed domain name are identical or confusingly similar.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is accepted that a trademark registered with a national authority establishes trademark rights however trademark rights can also arise at common law through use and reputation (see Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark; see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”)).
Complainant shows that it is the owner of a trademark registration for MAGGIE SOTTERO (USPTO Reg. No. 2,415,876 registered December 26, 2000). It therefore has rights in that trademark (see Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant alleges that the <maggiebrides.com> domain name is confusingly similar to its MAGGIE SOTTERO trademark. Panel finds that argument unsustainable. On any analysis there is no likelihood of confusion between the terms MAGGIE SOTTERO and MAGGIE BRIDES.
In the alternative, Complainant asserts common law trademark rights in the words MAGGIE BRIDES and alleges that the disputed domain name is identical to that asserted trademark.
To succeed in that argument, the Complaint must establish common law rights in MAGGIE BRIDES (see Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established; see also Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (http://www.wipo.int/amc/en/domains/search/overview2.0) asks at paragraph 1.7: What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights? In answer, the consensus view of former UDRP panelists is that:
The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.
Complainant contends that purchasers of Complainant’s bridal gowns refer to themselves as “Maggie Brides” and that a section of Complainant’s official website, entitled MAGGIE BRIDES, features real-life stories and photographs of brides that have purchased Complainant’s wedding apparel. Complainant asserts that this practice reaches over almost ten years.
The evidence of common law rights in MAGGIE BRIDES contained in the Complaint is much as just described – blogs of real life experiences by Complainant’s customers who are apt to describe themselves as “Maggie Brides”. Relevant parts of Complainant’s website include the words MAGGIE BRIDES.
In addition, the Complaint exhibits copies of media articles in which Complainant’s bridal wear has been featured.
Panel has assessed all of that evidence and is not satisfied that it shows a level of public awareness of the term MAGGIE BRIDES such that it could be fairly said that common law trademark rights exist in those words. Whilst it is true that, at one level, the words are used to reference the goods, there is no clear indication that they are used in a trademark sense. Where they are used by Complainant itself, invariably it is on the same page and often alongside Complainant’s other (registered) trademarks. When they are used by Complainant’s customers, the use is either self-referencing or, at best, a collective reference to that limited group of persons who have purchased or worn MAGGIE SOTTERO labeled dresses. On an application of trademark law as it is understood in most jurisdictions today, that use does not automatically qualify as trademark use.
In any event, leaving to one side that failing, there is no convincing evidence before the Panel that the words MAGGIE BRIDES have gained an appreciable level of public recognition separate from the Complainant’s registered trademark MAGGIE SOTTERO. The media clippings universally refer to the trademark MAGGIE SOTTERO. Taken as a whole, there is no evidence of use of the words MAGGIE BRIDES which even approximates the material necessary to prove common law trademark rights.
For these reasons Complainant has failed to show trademark rights in a term identical or confusingly similar to the disputed domain name and has so failed to establish the first limb of the Policy.
No findings required (see Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary; see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having failed to establish at least one of the three elements required under the Policy the Complainant is DENIED. Accordingly, it is Ordered that the <maggiebrides.com> domain name remain with Respondent.
Debrett G. Lyons, Panelist
Dated: June 27, 2012
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