Antiques Abroad, Ltd. v. Through The Looking
Glass, Inc.
Claim Number: FA0607000749501
PARTIES
Complainant is Antiques Abroad, Ltd. (“Complainant”), represented by Shelley B. Mixon, 1151 Clarkson Street, Denver, CO 80218. Respondent is Through The Looking Glass, Inc. (“Respondent”), 304 Narrows Pointe Drive, Grasonville, MD 21638.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <antiquesabroad.com>
(“Respondent’s domain name”),
registered with Network Solutions, Inc.
PANEL
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.
Kendall C. Reed as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 13, 2006; the National Arbitration Forum received a hard
copy of the Complaint on July 17, 2006.
On July 14, 2006, Network Solutions, Inc. confirmed by e-mail to the
National Arbitration Forum that the <antiquesabroad.com>
Domain name is registered with Network Solutions, Inc. and that the Respondent
is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. 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 21, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of August 10, 2006 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@antiquesabroad.com by e-mail.
A timely Response was received and determined to be complete on August
7, 2006.
On August 10, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Kendall C. Reed as Panelist.
On August 15, 2006, the Panel received an additional submission from
Complainant, and on August 16, 2006, the Panel received an additional
submission form Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1. Complainant Contends in its Original Complaint that:
·
Complainant and
Respondent are both based in Charlotte, North Carolina.
·
Complainant and
Respondent are direct competitors.
·
Complainant’s
business name is “Antiques Abroad, Ltd.”
·
Complainant
began operations in 1994.
·
Complainant’s
business is arranging and conducting excursions to Europe for tourists and
collectors from all over the world to purchase antiques.
·
Complainant is
the owner of United States trademark registration number 2,746,815 for the
service mark ANTIQUES ABROAD, LTD.
·
Complainant
conducted advertising since at least 1995 that includes its trademark ANTIQUES
ABROAD. This advertising has been
specifically aimed at a substantial portion of the public by way of national
and local newspapers, brochures, direct mail and on the Internet, and the
intended recipients include home owners, interior designers, antique retailers,
and others.
·
Complainant has
expended approximately $708,000 on worldwide advertisements and promotions for
services offered under the ANTIQUES ABROAD trademark.
·
Complainant has
generated gross business revenues of approximately $6,500,000 for its efforts
under the ANTIQUES ABROAD trademark.
·
The <antiquesabroad.com>
domain name resolves to Respondent’s website located at
<throughthelookingglass.com>.
·
Respondent
registered the <antiquesabroad.com> domain name on May 2, 1997.
·
A number of
Complainant’s customers attempted to reach Complainant’s web site by using the <antiquesabroad.com>
domain name, and instead reached Respondent’s web site. Declarations to this effect were attached to
the Complaint.
·
Respondent’s
domain name is confusingly similar to a service mark in which Complainant has
rights.
·
Respondent has
no rights or legitimate interest in the <antiquesabroad.com>
domain name.
·
The <antiquesabroad.com>
domain name was registered and is being used by Respondent in bad faith.
2. Complainant Contends in its Additional
Submission that:
·
Complainant’s
mark was and is protected under the common law as a result of its use of the
mark dating back to a least 1995, at least two years before Respondent
registered the disputed domain name.
·
Two of the
advertisements presented by Respondent do not contain the term “abroad.” The remaining advertisements presented by
Respondent use the terms “antique” and “abroad,” but do not use the phrase
“antiques abroad.” Two of the
advertisements post date Complainant’s use of the ANTIQUES ABROAD
trademark. All of Respondent’s uses of
the Domain names are with the intent for commercial gain and misleadingly
divert consumers.
·
Respondent has
been successful in causing actual confusion with Complainant’s customers.
B. Respondent
1. Respondent Contends in its
Original Response that:
·
Respondent does
business under the business name of Through the Looking Glass.
·
Respondent’s
operations began in 1984.
·
Respondent did
advertise in the Wall Street Journal, at least one of these being dated May 15,
1992.
·
Joyce Jones
worked for Respondent in the years 1992 and 1993
·
Joyce Jones
left Respondent’s employ and started an almost identical company in early 1995,
copying everything about Respondent’s business concept, including Respondent’s
advertisements, advertising outlets, much of Respondent’s business literature,
scheduling competing business trips to Europe at the same time as Respondent,
and sometimes staying in the same hotels.
·
Respondent
registered the following domain names:
<throughthelookingglass.com>
<antiquesabroad.com>
<antiquestours.com>
<antiqushipping.com>
<shippingantiques.com>,
and
<theantiquebueyer.com>
·
This was done
with the intention of casting a wide net for Internet users who might be
interested in Respondent’s services.
·
All of these
terms had been used by Respondent in flyers, brochures and literature before
these domain names were registered, and all of these names were names that were
pertinent to Respondent’s business.
·
Respondent
set-up the following websites to redirect users to Respondent’s website:
<antiquetours.com>
<antiqueshipping.com>
<antiquesabroad.com>
·
Complainant’s
trademarked its name in 2003, six years after Respondent registered these
domain name.
·
Respondent’s
use of the domain name <antiquesabroad.com> was legitimate and
proper.
2. Respondent Contends in its Supplemental
Response that:
·
Respondent
provides a copy of an advertising flyer for a trip organized by Respondent that
took place in 1993. This flyer
prominently displays the following words:
“DISCOVER ANTIQUES ABROAD ON OUR NEXT SPECIAL EDITION TRIP JOIN US
NOW!!” Also included is a room roster
for this trip.
FACTUAL FINDINGS
This Panel finds as follows:
·
At all relevant
times Complainant and Respondent were direct competitors in the business of
arranging and conducting excursions to Europe for tourists and others to
purchase antiques, and at all relevant times both parties operated in
Charlotte, North Carolina.
·
Complainant’s
business name is “Antiques Abroad, Ltd.” and Respondent business name is
“Though the Looking Glass, Inc.”
·
Complainant
began operations in 1994 and Respondent began operations in 1984.
·
For a period of
time in 1992 and 1993 a principal of Complainant worked for Respondent.
·
At times, tours
operated by both parties would stay in the same hotels in Europe.
·
Complainant is
the owner of United States trademark registration number 2,746,815 for the
service mark ANTIQUES ABROAD, LTD.
·
Complainant has
conducted public advertising since at least 1995 that includes the expression
“antiques abroad.” This expression is
accompanied by a substantial and prominent design consisting of a mythical,
winged cherub-like figure within a circle.
The word “Antiques” sits atop this circle in a semicircle arrangement,
and the words “ABROAD, Ltd.,” sit
below this circle in a horizontal arrangement.
·
As of the time
of the Complaint, Complainant had expended approximately $708,000 on worldwide
advertisements and promotions for services offered under the expression and
design “antiques abroad.”
·
As of the time
of the Complaint, Complainant had generated gross business revenues of
approximately $6,500,000 for its efforts under the ANTIQUES ABROAD trademark.
·
Several of
Complainant’s customers attempted to reach the Complainant’s web site by using
the <antiquesabroad.com> domain name and instead reached
Respondent’s web site.
·
Respondent
registered the following domain names on May 2, 1997:
<throughthelookingglass.com>
<antiquesabroad.com>
<antiquestours.com>
<antiqushipping.com>
<shippingantiques.com>,
and
<theantiquebueyer.com>.
·
Respondent
set-up the following websites to redirect users to Respondent’s website
<throughthelookingglass.com>:
<antiquetours.com>
<antiqueshipping.com>
<antiquesabroad.com>.
·
In 1993,
Respondent published a copy of an advertising flyer for a trip organized by
Respondent. This flyer prominently
displays the following words: “DISCOVER
ANTIQUES ABROAD ON OUR NEXT SPECIAL EDITION TRIP JOIN US NOW!!”
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 s
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’s Trademark Rights:
The question about whether a complainant has trademark rights for purposes of 4(a)(i) is ordinarily easily resolved when a complainant is the owner of a registered trademark. See Am. Online, Inc., v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the USPTO creates a presumption for rights in a mark). In the present case, Complainant is the owner of United States Trademark Registration number 2,746,815 for ANTIQUES ABROAD, LTD. plus design. However, a difficulty exists because the trademark registration certificate states on its face: “No claim is made to the exclusive right to use “Antiques Abroad Ltd.” apart from the mark as shown.” As such, the trademark registration excludes the very expression that is the subject of inquiry, and as such, Complainant has no rights pursuant to the trademark registration that could be identical or similar to Respondent’s domain name.
This is not the end of the inquiry, however. The relevant trademark rights for purposes of 4(a)(1) can also be common law trademark rights. To establish common law trademark rights, a complainant may show exclusive use of a trademark in commerce over a period of time and secondary meaning. 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). Secondary meaning can be shown through factors commonly accepted in trademark law, including long use, exclusive use, evidence of advertising, extensive sales, advertising dollar expenditures, and the like.
In the present case, Complainant used the expression “Antiques Abroad, Ltd.” and design in a trademark sense since at least 1995. Complainant asserts exclusive use, and Respondent does not assert that it or any other entity used the same expression in a trademark sense. Respondent did use the expression “antiques abroad” in a linguistic sense in its advertising flyer that it attached to its Supplemental Response, but such a linguistic usage is not sufficient to show usage in a trademark sense. Further, as of the time of the Complaint, Complainant had expended approximately $708,000 on worldwide advertising, and had made sales of approximately $6,500,000. These facts tend to support a finding of secondary meaning. As such and as of the time the Complaint was filed, Complainant had acquired common law rights in the following: ANTIQUES ABROAD, LTD. plus design.
This is not the end of the inquiry, however. Complainant’s common law Trademark is a combination of a word portion and design portion, similar to Complainant’s Trademark registration. There has been no showing by Complainant that the word portion qualifies as a common law Trademark separately and by itself. Is that Required? The Panel thinks not. It is sufficient that the word portion is not a de minimis aspect of the overall impression of the Trademark. This is because the Policy always focuses on the word portion of any Trademark, and the design portion, if any, is irrelevant for the most part. To hold otherwise would cause the unintended consequence of denying protection under the Policy to all registered combined marks, since the owner would never be able to show separate registration for the word portion alone. Since such marks are afforded protection under the Policy, this cannot be a requirement under the Policy. Further, since this cannot be a requirement with respect to registered marks, it should not be a requirement for common law marks either.
Having said that the word portion of a combined mark is afforded protection under
the Policy without the need for a complainant to show a separate basis for
Trademark protection, there are at least two situations where this would not be
true. One exception would be where the
word portion is expressly disclaimed, as is true in the present case, and
another exception would be where the word portion of a common law Trademark is de
minimis with respect to the overall impression of the mark, which as noted
is not true in the present case.
This is not the end of the inquiry, however. Another consideration is whether Complainant had Trademark rights as of the time Respondent registered its domain name. See Phoenix Mortgage Corp. v. Toggas, D2001-010 (WIPO Mar. 30, 2001) (finding that Policy 4(a)(i) “necessarily implies that Complainants rights predate Respondent’s registration…of the domain name”); see also Razorbox, Inc. v. Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003) (noting that as the respondent’s registration of the <razorbox.com> domain name predated the complainant’s alleged rights (the respondent registered the disputed domain name more than two years prior to the complainant’s stated first use in commerce) the complainant did not have standing to bring a claim under the UDRP).
The question then is whether Complainant can show sufficient facts to establish a common law trademark rights as of May 1997. Complainant has shown that it started to operate under its trade name, “Antiques Abroad, Ltd.,” in 1994. Complainant did conduct advertising as early as 1995, as evidenced by the samples attached to the Complaint, which means that Complainant expended moneys on advertising. And, Complainant’s use of the expression “antiques abroad” was exclusive during this period. These facts are sufficient for purposes of the Policy and 4(a)(i) to make out a claim of secondary meaning as of May 1997, the date on which Respondent registered its domain name.
As such, Complainant did possess common law trademark rights in the expression ANTIQUES ABROAD at the time Respondent registered its domain name <antiquesabroad.com>.
Identical or Confusing Similarity:
This panel has no difficulty finding that Respondent’s domain name <antiquesabroad.com> is identical to Complainant’s Trademark. For purposes of the requisite comparison, irrelevant content is removed. See Nev. State Bank v. Modern Ltd., - Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 29, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a Domain name s is identical or confusingly similar under the Policy.”).
The requirement is that Respondent have no
rights or legitimate interests in its domain name. The examples given in 4(c) are clear opportunities for Respondent
to demonstrate its rights or legitimate interests, but these examples are not
exclusive. These examples include use
of the domain name for a bona fide sale of goods and services prior to
notice of the dispute (4(c)(i)), being generally known by the domain name, as
with a trade name or business name (4(c)(ii)), and non-commercial and
non-damaging fair use (4(c)(iii)). The
burden is on a claimant to raise an objection to a respondent’s rights or
legitimate interests, and then the burden shifts to the Respondent to show that
it does have rights or legitimate interests.
See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum, Oct. 1, 2002) (holding that, where the complainant has
asserted that the respondent does not have rights or legitimate interest with
respect to the domain name, it is incumbent on the respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”).
None of these are available to Respondent to
show rights or legitimate interests in its domain name.
With respect to the first of these
exceptions, use of a domain name for a bona fide sale of goods or
service, 4(c)(i), there is nothing in the Policy that prohibits use of a domain
name that is not similar to a company’s trade name, and such is common
practice. And, use of such a domain
name for a bona fide offering of goods or service could and does support
a finding of a legitimate interest in the domain name. At the same time, arbitration panels have
suggested that where a domain name is identical to another’s Trademark, and the
other’s Trademark rights are generally well known (and presumably thereby
likely known by the Respondent), and the use of the domain name has the affect
of diverting the other’s potential customers, such usage cannot be used to
support a finding of a legitimate interest, even where the Respondent’s web
site makes bona fide offers of goods or services. See
Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001)
(“In the Panel’s mind, use of the contested domain name as an instrumentality
for diverting Internet users, who as a result of entering a domain name containing
the Complainant’s mark – through inadvertently with a different gTLD from that
associated with the Complaint’s site but clearly with an intention of reaching
the Complainant’s web site -- to a commercial site of a direct competitor
clearly does not constitute legitimate use.”).
In the present case, it is clear that
Respondent has at all relevant times conducted a bona fide business and
advertised for its business through the Internet, among other means. In this Internet marketing process, Respondent
used the domain name that is similar to its trade name,
<throughthelookingglass.com>, which linked to its web site. Such a use of the
<throughthelookingglass.com> domain name would support a finding of a
legitimate interests on the part of the Respondent in that domain name.
However, Respondent also used several domain
names that are not similar to its trade name, including <antiquesabroad.com>,
which was also linked to its web site.
This <antiquesabroad.com> domain name is identical to
Complainant’s Trademark, as discussed above.
Further, this use by Respondent of this domain name had the likely and
actual effect of diverting Complainant’s potential customers away from Complainant’s
web site and to Respondent’s web site,
as demonstrated by the declarations attached to the Complaint. Further, it is reasonable to infer that
Respondent was aware of Complainant’s use of Complainant’s Trademark
at the time Respondent took these actions.
It is reasonable to make this inference because the parties were
operating competing businesses, in the same city, using similar business
models, advertising in the same region of the country, and in some instances,
staying in the same hotels in Europe.
On the basis of these facts, the Panel finds that the use by Respondent
of the <antiquesabroad.com> domain name does not support a finding
of a legitimate interests in this domain name.
Respondent has made no showing that it has
rights or legitimate interests in the <antiquesabroad.com> domain
name by virtue of some other bona fide offering of goods or
services.
With respect to the other two examples under 4(c), Respondent has not
been known by the name ANTIQUES ABROAD, and Respondent has made no argument
that its use of its domain name was in any way a non-commercial, non-damaging
fair use.
Also, Respondent does not otherwise claim
rights or legitimate interests in the <antiquesabroad.com> domain
name. It is not sufficient for
Respondent to have used the words “antiques” and “abroad,” either singly or in
combination in a linguistic sense in any of its business activities or
literature because, as has been noted, these are not Trademark usages; not
having been used in a trademark sense, all others are free to use them in a
non-Trademark sense or use them in a Trademark sense, and thereby acquire
Trademark rights therein.
As such, Respondent has failed in its burden
to show rights or legitimate interests in the <antiquesabroad.com>
domain name.
The Panel finds that Respondent does not have
legitimate rights or interests in respect of the domain name <antiquesabroad.com>.
For purposes of 4(a)(iii), the Respondent’s
bad faith must exist, if at all, at both the time Respondent registered its
domain name and at the time it uses its domain name. 4(b) presents several examples of relevant activities, that if
proven, would establish bad faith, and like 4(c) these examples are not
exclusive. In particular, 4(b)(iv)
states that a Respondent acts with bad faith when it intentionally attempts to
attract, for commercial gain, Internet users to its web site 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 its web site or
location or of a product or service on its we site or location.
As has been discussed, the Panel finds that
Respondent’s domain name is identical to Complainant’s Trademark rights and
that Respondent did know about Complainant’s Trademark rights at the time
Respondent registered its domain name, and in so doing, Respondent intended to
direct Complainant’s potential customers to Respondent’s web site. Further, there is no indication in the
record that Respondent had any motivation other than commercial gain. Further still, the use of a domain name that
is identical to Complainant’s Trademark could only cause confusion with respect
to the source of Respondent’s web site with respect to those looking for
Complainant, at least at the time the Internet user actually uses the domain
name (by entering the domain name and clicking to it). As such, the Panel finds that Respondent
acted in bad faith.
This was true at the time the Respondent
registered its domain name, and it remains true today.
As such, the Panel finds that Respondent’s
domain name has been registered and is being used in bad faith.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <antiquesabroad.com>
Domain name be TRANSFERRED from Respondent to Complainant.
Kendall C. Reed, Panelist
Dated: August 24, 2006
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