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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dan Zuckerman v. Vincent Peeris
Case No. DBIZ2002-00245
1. The Parties
Complainant is Dan Zuckerman of 11965 Venice Blvd, Suite 404, Los Angeles, California, United States of America.
Respondent is Vincent Peeris of c/o Renown Sports Club of 225 Jampettah Street, Colombo – 13, Sri Lanka, represented by Zak Muscovitch Esq., of Toronto, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name is <shoes.biz> and the Registrar is OnlineNic, Inc., dba China-Channel.com.
3. Procedural History
This is an administrative proceeding in accordance with the Start-up Trademark Opposition Policy for ".BIZ", adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, (the "STOP"), the Rules for Start-up Trademark Opposition Policy for ".BIZ", adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, (the "STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for ".BIZ" (the "Supplemental STOP Rules").
The Complaint was filed at the WIPO Arbitration and Mediation Center (the "Center") by email on May 21, 2002, and in hard copy on May 24, 2002. Its receipt was acknowledged on May 23, 2002. On June 17, 2002, the Center sought from the Registrar an indication of the language of the registration agreement. On June 18, 2002, the Registrar informed the Center that the language was English. On June 24, 2002, the Center informed Complainant that the Complaint was deficient in some respects, including that it failed sufficiently to describe the grounds on which it is made, as required by STOP Rule 3(c)(ix). The Center said:
"You must also provide some indication as to why the Respondent does not have rights or legitimate interests in using the domain name in question".
Complainant filed an amendment to the Complaint on June 25, 2002. On June 28, 2002, the Center satisfied itself that all formal requirements had been complied with and that day formally dispatched copies of the amended Complaint by post/courier (with enclosures) to Respondent at the address as recorded with the Registrar and by email (without attachments). The Center included with that material a letter dated June 28, 2002, containing notification of the commencement of this administrative proceeding, with copies (of the amended Complaint without attachments) to Complainant, the Registrar and ICANN.
The last day specified by the Center for a Response was July 18, 2002. No Response was received within the time specified by the STOP Rules. On July 19, 2002, the Center notified the parties of Respondent’s default, stating that the Panel would decide in its sole discretion whether to consider any late Response in deciding the case. Later that day, a Response was filed by email. An email from Mr. Muscovitch to the Center transmitted on July 19, 2002, and opened by the Center on July 22, 2002, explained that the Response was a day late because Respondent had been away on business and had not received the draft Response for approval until the last day for filing.
On July 31, 2002, the Center notified the parties of the appointment of Alan L. Limbury as Panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. That day the Center transmitted the case file to the Panel and notified the parties of the projected decision date of August 14, 2002. The hard copy of the Response was received by the Center on August 2, 2002, and was separately transmitted to the Panel.
The Panel is satisfied that the amended Complaint complies with the requirements of the STOP Rules and the Supplemental STOP Rules; payment was properly made; the Panel agrees with the Center’s assessment concerning the Complaint’s compliance with the formal requirements; the Center discharged its responsibility under paragraph 2(a) of the STOP Rules to employ reasonably available means calculated to achieve actual notice to Respondent of the Complaint; a late Response was filed and the Panel was properly constituted. The language of the proceeding was English.
Pursuant to STOP Rule 10(c), the Panel, on its own motion, extends the time for the filing of the Response by email to July 19, 2002, having regard to the explanation by Respondent’s counsel of the exceptional circumstances which led to the late filing. The Panel will therefore have regard to the Response in deciding this case.
Both parties communicated to the Center a wish to make a supplemental filing, Respondent to cite a recent court case concerning the domain name <canadian.biz> and Complainant to file a Reply to the Response. Like the UDRP and the UDRP Rules, the STOP and STOP Rules do not provide for the parties to a dispute to file supplementary submissions subsequent to the Complaint and the Response. However, Rule 12 of the STOP Rules does provide that:
"In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties."
There can be no doubt that neither Complainant nor Respondent has a right to file supplementary submissions subsequent to the Complaint and the Response. It is for each Administrative Panel to determine whether or not to accept or request supplementary submissions, taking into account all the circumstances of the particular case. If a respondent raises matter which the complainant could not have been expected to have addressed in its complaint, admission of a reply, even an uninvited one, may be warranted in the interests of fairness: Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO Case No. D2000-0802. See also Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490; J.P.Morgan v. Resource Marketing, WIPO Case No. D2000-0035 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151.
Here the Panel is of the view that the Response does not raise any issues that Complainant could not reasonably have anticipated. Accordingly Complainant’s request to file a Reply is rejected. Respondent’s communication to the Center seeking to draw attention to the court case concerning <canadian.biz> is likewise rejected because the Response already cites several cases on generic names.
4. Factual Background
Complainant is Vice President of a company known as "Shoes.com, Inc.", incorporated in the State of Delaware, United States of America, on November 23, 1999. Since it appears the complaint is made on behalf of that company, henceforth the word "Complainant" is used in this determination to refer to the company rather than to Mr. Zuckerman.
Complainaint is the successor in interest to the original registrant of the domain name <shoes.com> in 1995 and has been conducting e-commerce at the "shoes.com" URL since 1999.
On October 5, 2000, Complainant filed application No. 76141407 with the United States Patent and Trademark Office to register on the Principal Register as a service mark in relation to "online retail store services for footwear by means of the Internet " the design of a stylized letter " S " described as "made to resemble legs with a shoe on each foot", followed by the words ‘SHOES.COM’. The application contained the disclaimer: "No claim is made to the exclusive right to use "SHOES.COM" apart from the mark as shown". The application was published for opposition on May 21, 2002, and remains pending.
On February 21, 2001, Complainant filed U.S. application No. 76213608 to register on the Principal Register the same design and words (described as "S SHOES.COM") as a trademark, with the same disclaimer, in relation to slippers. This was published for opposition on January 1, 2002, and matured to registration under No. 2595865 on July 16, 2002 (after the Complaint was filed).
Respondent is the President of Renown Sports Club, established in 1981 in Colombo, Sri Lanka. In 1999 the club expanded into business projects as a way to support the club financially and to improve the local community. On February 14, 2000, the members in general meeting resolved to expand into Internet ventures, especially web development, and authorized its Vice President and head of business activities to register domain names for future development.
On January 11, 2002, the members in general meeting approved a proposal that the club acquire domains in the new .biz tld. The minutes record:
"…after discussion the House gave their approval since it provided the ideal opportunity to acquire good generic domains which were not available in .com so that they can be developed in future".
The disputed domain name was registered on March 27, 2002, in the name "Renown". It follows that these proceedings should have named Renown as Respondent. Nothing turns on this, however and the Panel treats Mr.Vincent Peeris and the club as being in the same interest for the purposes of this dispute.
5. Parties’ Contentions
The domain name is identical to two trademarks in which the Complainant has rights. Complainant is the owner of two active applications in the United States Patent and Trademark Office, each of which is expected to go to final registration in the very near future. Copies of these two applications are available upon request. Complainant filed an IP Claim for the disputed domain name with Neulevel on August 6, 2001. This suggests that Respondent has no legal rights and that the disputed domain name was registered in bad faith.
Respondent does not have rights or legitimate interests in using the domain name in question for the following reasons:
a. Respondent is not the owner or beneficiary of a trade or service mark that is identical to the domain name. On the other hand, as previously mentioned, Complainant is the owner of a trade or service mark that is identical to the domain name.
b. Complainant believes, after having conducted a reasonable investigation, that Respondent has made no use of the domain name (or a name corresponding to the domain name) in connection with a bona fide offering of goods or services, and that Respondent has undertaken no demonstrable preparations to use the domain name (or a name corresponding to the domain name). On the other hand, since 1999 Complainant has been continuously conducting e-commerce at the "shoes.com" URL – a name which not only corresponds to the domain name which is the subject matter of this complaint – but which in fact is identical to such domain name but for the suffix ".biz".
c. Complainant believes, after having conducted a reasonable investigation, that Respondent (as an individual, business or other organization) has not been commonly known by the domain name. On the other hand, Complainant has been commonly known by the domain name (or a name corresponding to the domain name) since 1999.
At all material times, it was the intention of Vincent Peeris, the club President, on behalf of the club and with the support of club members, to develop a web site for members of the club, the local community, and the world, to view shoes and purchase them. The site is intended to be mainly targeted at football shoes purchasers. It goes without saying that the domain name, <shoes.biz> is descriptive of the wares that Respondent intends to sell.
Since the domain name was acquired only on March 27, 2002, and has been locked ever since, Respondent has had no real opportunity to develop the site.
Complainant alleges that its Complaint ‘is based on two identical trademarks’ but concedes that it is the owner of only "active applications". In fact, as of July 16, 2002, the Complainant did receive a registration for a logo for shoes.com. Respondent registered the disputed domain name on March 27, 2002, prior to the trademark. Accordingly, at the time of the domain name registration, Complainant had no rights in a trademark. Complainant has not filed any evidence of common law trademark status, and accordingly, no conclusion is possible other than that Respondent’s rights in the domain name <shoes.biz>, preceded the Complainant’s rights in the trademark, and therefore must fail.
Furthermore, neither Complainant’s registered trademark nor its pending application, asserts any rights over the word, shoes.com. In fact, both applications expressly disclaim such words. As such, it is respectfully submitted that Complainant realized that no mark as descriptive as "SHOES" and as generic as ".com" could possibly be the subject of a trademark. Accordingly, the only application or registered trademark held by Complainant expressly disclaims SHOES.COM, and relies only on the stylized logo.
It is respectfully submitted that Complainant has no trademark rights in the word SHOES and accordingly has failed to demonstrate that it has a trademark that is identical to the disputed domain name.
Respondent’s Legitimate Interest
Where a domain name is generic, the first person to register it in good faith is entitled to the domain name. This is considered a "legitimate interest": CRS Technology Corporation v. CondeNet, NAF Case No: FA0002000093547 and Coming Attractions v.ComingAttractions.com, NAF Case No. FA0003000094341.
Respondent has shown, through the filing of Annual General Meeting minutes, an express intention to develop a site for a bona fide offering of goods. This constitutes evidence establishing a legitimate interest.
No Bad Faith
There is no evidence or basis whatsoever for a finding of bad faith registration. In fact, there is an absence of any meaningful allegation of bad faith in the Complaint.
The domain name has not been used at all because it is locked, so all that may be decided is ‘bad faith registration’.
In Rodale, Inc. v. Kelly Britt, WIPO Case No. DBIZ2002-00152 the Panel found that ‘bad faith’ cannot be inferred from registration of a .biz domain name when the Complainant has a registered trademark in relation to a generic word.
There is no evidence of an offer to sell the domain name to Complainant or a competitor or otherwise to interfere with Complainant’s trademark or business. All that Respondent has done is register a completely generic and descriptive word as a domain name with the intention of using same for a business.
6. Discussion and Findings
STOP Rule 15(a) requires this Panel to decide this Complaint on the basis of the statements and documents submitted and in accordance with the STOP, the STOP Rules and any rules and principles of law that it deems applicable.
Complainant is required by paragraph 4 (a) of the STOP to prove each of the following three elements: --
(a) the domain name is identical to a trademark or service mark in which Complainant has rights;
(b) Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered or is being used in bad faith.
Independent investigation by the Panel
Although the Complaint and the Response gave some of the details set out in section 4, paragraphs 3 and 4 of this determination, neither the Complaint nor the Response included copies of the relevant documents on the register of the USPTO. The Panel itself searched the USPTO Trademark Electronic Search System.
The power of the Panel to conduct independent investigations is extremely limited and it has been held that it is not the role of the Panel to conduct an independent investigation outside the materials submitted in the record: STOP Rule 15(a), identical to UDRP Rule 15(a), and Benefitslink.com, Inc. v. Mike Haynes, NAF Case No. FA0007000095164. This panelist has suggested that apart from legal research, which the Panel is clearly authorized to conduct, a reference in the materials submitted in the record to a website incorporates the content of the website into those materials, so that the Panel may visit that website without violating rule 15 (a): Buendnis 90 / Die Gruenen v. RJG Engineering Inc., WIPO Case No. D2001-1111.
It appears to be accepted Panel practice to visit any website associated with a disputed domain name, despite the risk that the content might have been changed by the respondent since the complaint was made: Pharmacia & Upjohn Co. v. Brainbow, Inc., WIPO Case No. D2000-1763; High-Class Distributions, S.r.l. v. Online Entertainment Services, WIPO Case No. D2000-0100; Terabeam Corp. v. Colin Goldman, WIPO Case No. D2001-0697 and PRL USA Holdings, Inc. v. Polo, WIPO Case No. D2002-0148.
That risk is not present with public records. Accordingly it is a matter for the discretion of the Panel in any case as to whether to examine for itself trademark registry records on which one or more of the parties rely.
In this case, both parties rely on those records but neither put them before the Panel. In this regard the Panel notes that the Response refers to an Exhibit D as being the trademark registry printout but there is no such printout in either the electronic or the hard copy of the Response received by the Panel. Under these circumstances the Panel regards it as appropriate and within STOP Rule 15(a) for it to find and examine those records for itself.
Rights in a trademark
Under the UDRP it has been held that there are no rights conferred by an application to register a trademark. See Aspen Grove, Inc. v. Aspen Grove, WIPO Case No. D2001-0798 and Spencer Douglass MGA v. Absolute Bonding Corporation, WIPO Case No. D2001-0904. The same has been held under the STOP. See Netdoktor AS v. Jens Nielsen, WIPO Case No. DBIZ2002-00109; Rodale, Inc. v. Christianne Schelling, WIPO Case No. DBIZ2002-00130 and Jones Holding Limited v. Vitty Inc.,WIPO Case No. DBIZ2002-00265.
The rights of Complainant flowing from the registration obtained on July 16, 2002, arose after the disputed domain name was registered. Surprisingly, this is not necessarily fatal to a finding in favor of a trademark owner. In Galaxy Multimedia Inc v. T1, NAF Case No. FA0111000101823 (December 23, 2001) this Panel found, in an unusual case, that for the purposes of paragraph 4(a)(i) of the UDRP, it is sufficient for a Complainant to establish that, at the time of filing the Complaint, the Complainant has rights in a trademark.
Here the registration of the trademark took place after the Complaint was filed. Having regard to the purpose of the STOP (Section 1) and the definitions of Claimant and Complainant in STOP Rule 1, it appears that the trademark rights which the STOP is designed to protect must have arisen before the Claimant submitted an IP Claim Form, necessarily some months before the filing of the Complaint. Accordingly the registration of Complainant’s trademark No. 2595865 was too late to be of assistance to Complainant in these proceedings.
In any event Complainant’s case on this issue is hopeless because:
(a) Complainant has disclaimed the exclusive right to use the words SHOES.COM;
(b) the word SHOES is generic and therefore cannot become distinctive of goods or services in the field of footwear, in which Complainant engages;
(c) there is no evidence Complainant has acquired common law rights in the claimed mark SHOES.COM; and
(d) the claimed mark SHOES.COM is not identical to the disputed domain name <shoes.biz> even leaving aside, as is appropriate, the tld <.biz> as inconsequential.
Accordingly, Complainant has failed to establish rights in a trade or service mark corresponding to the disputed domain name.
Respondent has rights and a legitimate interest in the disputed domain name because the word SHOES is generic and Respondent was the first to register it in the .biz tld. Complainant has failed to establish this element.
There is no evidence of bad faith. Complainant has failed to establish this element.
Reverse domain name hijacking
STOP Rule 1 defines reverse domain name hijacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." See also STOP Rule 15(d). To prevail on such a claim, it has been held that Respondent must show either that Complainant knew of Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith: Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 or that the Complaint was brought in knowing disregard of the likelihood that the respondent possessed legitimate interests: Smart Design LLC v. Hughes, WIPO Case No. D2000-0993.
To these may be added the additional circumstance, which is not necessarily subsumed in the grounds just stated, that Complainant knew it had no rights in the trademark or service mark upon which it relied and nevertheless brought the Complaint in bad faith.
Here, factors relevant to this issue are:
- the Complaint did not identify the asserted trademark. It was therefore not clear from the Complaint whether Complainant claimed rights in the word SHOES or in some other mark;
- no copies of the trademark applications were included in the Complaint but were merely offered "upon request". Complainant thereby avoided disclosure of the disclaimers to the Panel;
- the applications were to register stylized logos, indicating awareness on Complainant’s part that any application to register the word SHOES either alone or together with the word .COM in connection with footwear (without disclaimer) would be likely to fail;
- the failure of the Complaint as originally filed to give any indication as to why Respondent did not have rights or legitimate interests in the disputed domain name;
- the plain fact that the word SHOES is generic;
- the absence of any attempt by Complainant to establish common law rights of any kind.
These factors lead the Panel to the conclusion that Complainant brought the Complaint in bad faith and with knowledge that Complainant had no rights in the trademark upon which it relied. Further, having regard to the fact that the word SHOES is generic, the Complaint was brought in knowing disregard of the likelihood that the Respondent possessed legitimate interests in the disputed domain name by virtue of having registered it.
Pursuant to paragraphs 4(i) of the STOP and 15(d) of the STOP Rules, the Panel finds that this dispute is not within the scope of paragraph 4(a) of the STOP and accordingly the Complaint is dismissed.
Pursuant to STOP Rule 15(d), the Panel finds that the Complaint was brought in an attempt at Reverse Domain Name Hijacking.
Alan L. Limbury
Dated: August 12, 2002