Decky Company v. WOMA / WOMA N/A
Claim Number: FA1208001460959
Complainant is Decky Company (“Complainant”), represented by Felicia Guardado, California, USA. Respondent is WOMA / WOMA N/A (“Respondent”), represented by Lawrence R. Robins of Edwards Wildman Palmer LLP, Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <whang.com>, registered with ENOM, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Mrs. Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 31, 2012; the National Arbitration Forum received payment on August 31, 2012.
On September 4, 2012, ENOM, Inc confirmed by e-mail to the National Arbitration Forum that the <whang.com> domain name is registered with ENOM, Inc and that Respondent is the current registrant of the name. ENOM, Inc has verified that Respondent is bound by the ENOM, Inc 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 September 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 25, 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@whang.com. Also on September 5, 2012, the 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.
A timely Response was received and determined to be complete on September 24, 2012.
On October 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mrs. Antonina Pakharenko-Anderson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
I. Complainant claims:
a. The Complainant owns rights in the mark WHANG because Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the mark (Reg. No. 2,880,437 filed May 8, 2003; registered August 31, 2004).
b. The Complainant first began using the WHANG mark in August of 2003.
c. The <whang.com> domain name is identical to the WHANG mark.
d. The Respondent uses the <whang.com> domain name to provide advertising that is not related to Complainant.
B. Respondent
II. Respondent claims:
a. The Respondent admits that the Complainant has rights in the WHANG mark and that the <whang.com> domain name is confusingly similar to the Complainant’s WHANG mark.
b. The Respondent uses the <whang.com> domain name to host sponsored hyperlinks that are unrelated to Complainant’s business, which is a bona fide offering of goods or services.
c. The Respondent registered the <whang.com> domain name on November 4, 1998.
d. The Complainant claims that it began using the WHANG mark on July 5, 2003, which is after the Respondent registered the disputed domain name.
e. Therefore, the Respondent did not register the disputed domain name in bad faith.
f. The Complainant is guilty of reverse domain name hijacking.
A. Complainant
The Complainant contends that they have been using the trademark WHANG (“Mark”) since August of 2003.
The Complainant relies on their trademark rights deriving from U.S. Trademark Registration No. 2,880,437 for the word mark WHANG for “Retail clothing stores, namely, mail order catalogue services featuring clothing, telephone shop-at-home services in the field of clothing, in class 35” registered on August 31, 2004.
The Complainant further relies on his common law rights dating back to the onset of use of the subject trademark.
It is alleged the registered domain name <whang.com> is identical to the Complainant’s service mark, WHANG, in which the Complainant has common law rights and for which Complainant has a pending U.S. Federal Service Mark Registration.
The Complainant claims that the domain name <whang.com> is used by the Respondent for advertising and no direct relation to Whang, thus creating confusion in the marketplace to consumers implying a relationship or affiliation between the two.
Respectively, the Complainant claims that the domain name <whang.com> is being used in bad faith because it has nothing in common to or marketing anything related to Whang.
On July 27, 2012, the Complainant served a demand letter to the Respondent, received on August 2, 2012. The demand letter was the Respondent’s first notice of the domain name dispute. The Respondent has never responded to the demand letter.
Accordingly, the Complainant requests that the Panel order that the domain name be transferred to the Complainant.
B. Respondent
On November 4, 1998, Respondent registered the <whang.com> domain name (the “Domain Name” with eNom, Inc. (then known as BulkRegister). The Respondent has been the only owner of the Domain Name. The Domain Name resolves to a “parking” webpage that hosts “sponsored listing” and “related search” links. The links appearing in the “sponsored listing” portion of the webpage are generated by a third party service and Respondent is unaware of any instances where such links have referred to clothing or retail clothing services. In the “related search” portion of the webpage these links lead to dictionary, thesaurus, reference, WHOIS domain and IP address search services, among others, that Respondent is able to choose.
Although Respondent is unable to choose the “sponsored listing” portion of the webpage, to the best of Respondent’s knowledge these third party generated links consistently lead to webpages unrelated to Complainant’s retail clothing services. Respondent does not imply an affiliation or create confusion merely by operating a “parking” service that displays unrelated links.
On July 27, 2012, Complainant served a demand letter to the Respondent, received on August 2, 2012. The demand letter was Respondent’s first notice of the domain name dispute. Respondent has never responded to the demand letter.
The Respondent acknowledges that Complainant is the owner of record of U.S. Service Mark Registration No. 2,880,437 for the mark WHANG and the domain name <whang.com> is similar to the mark shown in the registration.
The Respondent notices that Complainant bears the burden of showing that the Respondent lacks rights to, or a legitimate interest in the subject domain name, but Complainant failed to meet this burden by merely stating that the “Respondent “uses [the] domain name for advertising” with “no direct relation to Whang”.
At the same time, Respondent claims that Complainant fails to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii) because the Complainant provides only general assertions and does not state any specific facts to support its claim of bad faith. Even in cases where panels have determined that a respondent has no legitimate interest in the domain, where a respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, and is not a competitor of the complainant and seeking to disrupt the complainant's business, lack of bona fide use on its own is insufficient to establish bad faith.
Yet the more, the Complainant did not hold legally recognizable rights in the WHANG mark when the Domain Name was registered in November 1998, and Respondent has a legitimate interest in the Domain Name. Therefore, the Complainant cannot prove that the Respondent’s registration and use of the Domain Name is in bad faith.
Finally, the Respondent claims that the Complainant represents an abuse of the administrative proceedings and constitutes reverse domain name hijacking inasmuch as the Respondent registered the Domain Name almost five years before the Complainant registered the mark WHANG. Moreover, the Respondent highlights that the Complainant did not make even an attempt to demonstrate the existence of any earlier rights in the mark, nor did the Complainant address the issue arising from the disparity in dates between Respondent’s registration of the Domain Name and the Complainant’s registration of the mark WHANG. Instead, the Complainant demanded that the Domain Name be transferred to the Complainant after nine years of co-existence between the Complainant and the Respondent, and after Complainant’s registration of the <whangclothing.com> domain which more specifically describes Complainant and its retail clothing services. For these reasons, the Respondent submits that the Complaint is brought in bad faith and constitutes an abuse of the administrative proceedings.
Respectively, the Respondent requests that the Administrative Panel deny the remedy requested by the Complainant. Also, Respondent requests that the Administrative Panel make a finding of reverse domain name hijacking.
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.
There are two requirements that the Complainant must establish under this paragraph: that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the mark(s).
The Complainant asserts that it owns rights in the mark WHANG. The Complainant argues that it owns a trademark registration with the USPTO for the mark (Reg. No. 2,880,437 filed May 8, 2003; registered August 31, 2004). The Panel finds that the Complainant’s trademark registration with the USPTO sufficiently demonstrates Complainant’s rights in the WHANG mark under Policy ¶ 4(a)(i), dating back to May 8, 2003. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
As far as common law rights in the WHANG mark are concerned, the Panel notes that the Complaint is remarkably sparse and the mere assertion of the common law rights in the mark is not sufficient to confirm the same before the Panel. To support the common law rights, assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.
Complainant claims that Respondent’s <whang.com> domain name is identical to the WHANG mark. In this regard, the Panel concludes that the disputed domain name combines Complainant’s WHANG mark with the generic top-level domain (“gTLD”) “.com.” Regardless of this addition, the Panel finds that Respondent’s <whang.com> domain name is identical to the WHANG mark under Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
If Paragraph 4(a)(i) of the Policy would also mean that a Complainant must have rights in a trademark which antedates the date when the domain name in issue was registered, then the Complainant does not meet the requirements of this paragraph as long as the Respondent’s domain name was registered on November 4, 1998. If so, the Complainant cannot succeed.
The Panel is of the view that the trademark must predate the domain name so that the Complainant could prevail.
However, the Panel believes that this question arises because of paragraph 4(a)(iii) (requiring bad faith registration), rather than paragraph 4(a)(i), and, respectively this aspect will be analyzed in the other section of the decision. In either case, the result is the same, as it is apparent from the Panel’s decision below.
In the interim, the Panel concludes that the Complainant has satisfied the requirements of Paragraph 4(a)(i) of the UDRP.
While the overall burden of proof rests with the complainant, the Panel recognizes that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the Respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant claims that Respondent “uses [the] domain name for advertising” with “no direct relation to Whang”. The Complainant also states that Respondent “creates confusion” and “implies a relationship of affiliation”, but Complainant does not provide any evidence in support of these allegations.
The Panel finds that Complainant made a weak attempt to establish a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). However, the Respondent was unable to overcome even this meager showing by showing it was making a bona fide offering of goods or services at the disputed domain name either as it is evident from the below discussion.
According to the Respondent’s Response, the Domain Name <whang.com> resolves to a “parking” webpage that hosts “sponsored listing” and “related search” links. The links appearing in the “sponsored listing” portion of the webpage are generated by a third party service and Respondent is unaware of any instances where such links have referred to clothing or retail clothing services. In the “related search” portion of the webpage these links lead to dictionary, thesaurus, reference, WHOIS domain and IP address search services, among others, that Respondent is able to choose.
Although Respondent is unable to choose the “sponsored listing” portion of the webpage, to the best of the Respondent’s knowledge these third party generated links consistently lead to webpages unrelated to the Complainant’s retail clothing services. The Respondent does not imply an affiliation or create confusion merely by operating a “parking” service that displays unrelated links.
At the same time, neither the Complainant, nor the Respondent offered credible evidence in support of their allegations, although it would have been simple to exhibit documentary proof to that effect just producing the copies of the website.
Complainant does not allege that Respondent is not commonly known by the <whang.com> domain name either. However, in examining the record, the Panel took due note that the WHOIS information lists “WOMA / WOMA N/A” as the registrant of the disputed domain name. Respectively, the Panel holds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
The Complainant does contend that Respondent uses the <whang.com> domain name to provide advertising that is not related to Complainant, and the Respondent supports this allegations through its Response.
According to paragraph 2.6. of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"):
“Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services" [see also paragraph 3.8 below] or from "legitimate noncommercial or fair use" of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”[*]
In this context the Panel accepts that before first notice of the dispute, the Domain Name was not being used by the Respondent in connection with a bona fide offering of goods and services (paragraph 4(c)(i) of the Policy). The Respondent had apparently “parked” the Domain Name and the advertisements on the site were generated on the website.
Thus, the Panel determines that the offering of unrelated hyperlinks is neither a Policy ¶ 4(c)(i) bona fide offering of goods or service nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <whang.com> domain name. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
The Panel therefore finds that the Respondent has no legitimate rights or interests in the Domain Name and that the requirements of Paragraph 4(a)(ii) of the Policy have therefore been satisfied.
Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date as it has been noted above, when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.1, and cases cited therein (“Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.”)
Respondent argues that it registered the <whang.com> domain name on November 4, 1998. Respondent notes that the Complainant claims that it began using the WHANG mark on July 5, 2003, which Respondent asserts is after Respondent registered the disputed domain name. Therefore, Respondent contends that it could not have registered the disputed domain name in bad faith.
The Policy, paragraph 4(a)(iii), obliges the Complainant to establish that the Domain Name “has been registered and is being used in bad faith.” The consensus view since the Policy was implemented in 1999 has been that the conjunctive “and” indicates that there must be bad faith both at the time of registration and subsequently. Apart from unusual cases of a respondent’s advance knowledge of a trademark, it is not logically possible for a respondent to register a domain name in bad faith contemplation of a mark that does not yet exist or of which the respondent is not aware.
Thus, the Panel’s view is that the Complainant has not proved bad faith registration. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).
At the same time, the Complainant failed to prove that the Respondent has ever been involved in any pattern of registration or other bad-faith actions which might fall under the Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b).
Thus, the Panel further finds that Respondent has not registered or used the <whang.com> domain name in bad faith inasmuch as the Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith).
Accordingly, the Panel concludes that Complainant has not met its burden of establishing the probability that Respondent registered the Domain Name in a bad faith effort to exploit the Complainant’s mark, and that the Complainant has not satisfied Paragraph 4(a)(iii) of the UDRP.
Reverse Domain Name Hijacking and Abuse Process
Paragraph 15(e) of the UDRP Rules provides that, if "after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding". Reverse Domain Name Hijacking is defined under the UDRP Rules as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name".
WIPO panels have found that the onus of proving a complainants bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.17, and cases cited therein).
Another common feature of previous panel decisions is that there is a tendency to identify the bad faith requirement with the degree of the Complainant’s knowledge of its capability of meeting its burden of proof with regard to the mandatory elements of Paragraph 4 of the Policy. For example, in carsales.com.au Ltd. v. Flanders, D2004-0047 (WIPO Apr. 8, 2004), the Panel states that “a finding of reverse domain name hijacking is warranted if the Complainant knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the policy”.
However, it is important not to overemphasize the Complainant’s failure to prove the Complaint, to the detriment of the demonstration of bad faith that is the essence of paragraph 15(e). A complainant with a weak claim may present this complaint in good faith. Not succeeding in the complaint does not amount to an attempt at reverse domain name hijacking except when it involves bad faith in an to attempt to deprive a registered domain-name holder of a domain name (paragraph 1 of the Policy).
In light of the aforesaid, and taking into account that the Complainant satisfied Paragraph 4(a)(i) and Paragraph 4(a)(ii) of the Policy, the Panel judges that the present Complaint does not constitutes the case of reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy); see also Church v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <whang.com> domain name REMAIN WITH Respondent.
Antonina Pakharenko-Anderson, Panelist
Dated: October 29, 2012
[*]See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") at http://www.wipo.int/amc/en/domains/search/overview2.0/index.html
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