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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Red Letter Days Limited v. RDX

Case No. D2006-0125

 

1. The Parties

The Complainant is Red Letter Days Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by Davenport Lyons, United Kingdom of Great Britain and Northern Ireland.

The Respondent is RDX, D Olofsson, Geneva, Switzerland.

 

2. The Domain Name and Registrar

The disputed domain name <redletterdays.com> is registered with NamesDirect.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2006.

On January 30, 2006, the Center transmitted by email to NamesDirect.com a request for registrar verification in connection with the domain name at issue.

On January 31, 2006, NamesDirect.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced February 7, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response February 27, 2006. The Response was filed with the Center February 24, 2006.

The Center appointed James Bridgeman, Tony Willoughby and Christophe Imhoos as panelists in this matter on March 29, 2006. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

By agreement in writing dated August 1, 2005, the assets of a company Red Letter Days Limited (in administration) were purchased by the Complainant, a newly incorporated company then known as AIC Limited.

On August 30, 2005, the following name changes took place: Red Letter Days Limited changed its name to OLDCO2005 Limited and AIC Limited changed its name to Red Letter Days Limited, the Complainant in these proceedings.

By agreement dated September 28, 2005, relating to United Kingdom and Community Trademarks all trademarks previously owned by OLDCO2005 Limited were assigned to the Complainant.

The Complainant thereby became the registered owner of the following registered trademarks and pending applications:

- CTM number 002620433, word mark RED LETTER registered on September 9, 2003 in classes 16, 35, 36, 39, 41, 43 and 44;

- UK registered trademark number 2343107 series RED LETTER DAYS registered on May 7, 2004 (filed on September 11, 2003), in classes 9, 16, 35, 39, 41, 42,43 and 44;

- UK registered trademark number 2205212 series RED LETTER DAYS registered on August 8, 2003 (filed on August 6, 1999), in classes 9, 14, 16, 18, 21, 22, 25, 26, 33, 36, 39, 41, 42, 43 and 44;

- UK registered trademark number 2289258 series RED LETTER DAYS registered on January 3, 2003 (filed on January 3, 2002), in classes 35 and 36;

- US trademark application number78/561154 word mark RED LETTER filed on February 4, 2005;

- US trademark application number 78561158 word mark RED LETTER filed on February 4, 2005, in class 36;

- US trademark application number 78/561161 word mark RED LETTER filed on February 4, 2005, in class 41;

- US trademark application number 78/561163 word mark RED LETTER filed on February 4, 2005, in class 44;

- US trademark application number 78/561136 word mark RED LETTER DAYS filed in February 4, 2005, in class 16;

- US trademark application number 78/561146 word mark RED LETTER DAYS filed in February 4, 2005, in class 36;

- US trademark application number 78/561151 word mark RED LETTER DAYS filed in February 4, 2005, in class 41;

- US trademark application number 78/561152 word mark RED LETTER DAYS filed in February 4, 2005, in class 44;

- Australian Trademark Application number 1032375 word mark RED LETTER filed on December 1, 2004, in classes 9, 16, 35, 36, 39, 41, 42, 43 and 44;

- Australian Trademark Application number 1032441 word mark RED LETTER DAYS filed on December 1, 2004, in classes 9, 16, 35, 36, 39, 41, 42, 43 and 44;

The Complainant and its predecessor in title have registered the Internet domain name <redletterdays.co.uk> and have maintained a website at that address since in or about 1996 or early 1997.

According to the information supplied by the Registrar, the domain name in issue <redletterdays.com> was registered on May 10, 2002, and last updated on December 22, 2005.

 

5. Parties’ Contentions

A. Complainant

The Complainant submits that its predecessor in title, the company that became OLDCO2005 Limited, was established in the United Kingdom in 1989 and built up a valuable goodwill in the trademarks RED LETTER DAYS and RED LETTER in the business of providing gift days and experiences. Since its acquisition of the goodwill by assignment, the Complainant has continued to build up the goodwill in these trademarks.

The Complainant continues the business of its predecessor in allowing customers to purchase either a specific voucher for an experience such as a pamper spray, bungee jumping or learning circus skills or alternatively providing vouchers that allow the recipient to choose from a variety of experiences organised by the Complainant. The experiences organized by the Complainant include MiG flights in Kazakhstan, wine tours in France, Ferrari driving in Italy and arctic adventures in Sweden. These activities have been extensively promoted by the Complainant and its predecessor in title to the goodwill in the RED LETTER DAYS and RED LETTER marks.

Since approximately the year 2000, the Complainant and its predecessor in title have provided a vast number of services to clients in the United Kingdom. In addition they have provided services to approximately 2670 clients in the EU excluding the United Kingdom, including 150 in Switzerland. During the same period the Complainant had 860 sales in the United States, 270 in Australia and 100 in Canada as well as sales as far afield as Afghanistan, Brazil, China, Egypt and India.

The Complainant submits that it would be extremely difficult for the Respondent to establish that it has rights or legitimate interest in the domain name because it contains or is confusingly similar to the Complainants trademarks. In this regard the Complainant refers to the decision of the administrative panel in Nike Inc. v. B.B. de Boer, WIPO Case No. D2000-1397 (December 21, 2000), where the panel said it “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing the complainant’s distinctive and famous NIKE trademark.

The Complainant submits that there is no evidence to show that the Respondent is commonly known by the domain name in issue or the marks RED LETTER or RED LETTER DAYS and this is further evidence that it has no rights or legitimate interest in the domain name. In this regard the Complainant cites the case Compagnie de Saint Gobain v. Corn-Union Corp., WIPO Case No. D2000-0020 (March 14, 2000) finding no rights or interest where the Respondent was not commonly known by the mark and never applied for a licence or permission from the Complainant to use the mark. The Complainant also relies on Victoria’s Secret et al. v. Asdak, FA96542 (February 28, 2001) where the NAF panel found sufficient proof that the respondent was not commonly known by the domain name that was confusingly similar to the complainant’s famous VICTORIA’S SECRET trademark because of the complainant’s well established use of the mark.

Furthermore the Complainant states that there is no evidence to show that the use of the domain name in issue by the Respondent has been for any legitimate purpose and asserts that the domain name was registered and is being used in bad faith.

The Complainant submits that the Respondent acquired the domain name in or around December 7, 2005. Prior to that date the domain name was registered to another registrant and was used intermittently since May 2002. The previous owners established a single web page at the address purporting to offer Hungbao for sale. The website ceased operating when the Complainant made a Complaint to the previous owner. Hongbao are traditionally used in China to give money as gifts at New Year.

At the top of the page on the Respondent’s website, there is a large banner advertisement for Golden Moments and a link to the website “goldenmoments.net”. The Golden Moments website is run by an enterprise GoldenMoments.net Limited. GoldenMoments.net Limited is a competitor of the Complainant that offers experiences similar to those offered by the Complainant.

The Complainant submits that “given that the business of the Respondent (and the Previous Registrant) is purportedly operating from the Australian Outback, it is unusual that: (i) the content was hosted through an English company by the Previous Registrant; and (ii) the Respondent is based in Switzerland”. The Complainant states that there are no details of the individual or corporate entities behind the Respondent’s website and the only contact is to the e-mail address. In making contact through this address no response has been received by the Complainant.

The Complainant submits that the fact that the advertisement for Golden Moments is so prominently displayed on the website indicates that the site is a sham to redirect Internet traffic to the Complainant’s competitor.

All attempts to contact the Respondent using the contact information supplied to the Registrar have remained unanswered. Both emails and couriered correspondence have been returned undelivered. A FedEx agent was advised by a lady at that address that the previous registrant did not live at that address and the previous registrant subsequently amended its registered details.

By letter of November 30, 2005, the Complainant gave the previous owner a deadline of 4 p.m. on Friday December 9, 2005, to address its concerns relating to the registration and use of the domain name in issue. The domain name was transferred to the Respondent only days prior to the expiration of that deadline. The Complainant submits that because of the similarity of the web pages it is clear that there was collusion and duplicity on the part of the previous owner and the Respondent. In this regard the Complainant cites the decision of the administrative panel in Hebdomag Inc. v. Illuminaty Marketing, WIPO Case No. D2001-0206 (March 17, 2001) finding that the “prior registrant’s behaviour can negatively affect the behaviour of the current registrant of a domain name”.

B. Respondent

As to the question of similarity, the Respondent denies any infringement of the Complainant’s marks and has provided the Administrative Panel with an example of the manner in which the Respondent uses the words on its website which it contrasts with the Complainant’s device mark registration.

The Respondent states that the manner in which it uses the words RED LETTER DAYS on its website in conjunction with the word “Hungbao” does not cause any confusion or association with the Complainant or the Complainant’s offers of gift days, experiences or anything else provided by the Complainant’s marks.

The Respondent’s domain name was registered on May 10, 2002. The Complainant’s earliest trademark registration is the United Kingdom registered trademark number 2289258 series RED LETTER DAYS registered on January 3, 2003, and the first advertisement in the registration process for that mark in the United Kingdom appeared some 4 months after the date on which the domain name in dispute was registered.

The domain name had been in use for three years before the date of the Complainant’s trademark registration in Australia.

The Respondent submits that the Complainant has only succeeded in registering the trademark RED LETTER DAYS in Australia and the United States and only in a limited number of classes. In other jurisdictions the registrations are for the word mark RED LETTER. The Respondent submits that this is because the phrase “red letter days” is a generic term. The Respondent provides a number of quotations from dictionaries that define the phrase “red letter day” as a fortunate or auspicious day, a memorably happy or noteworthy day and a day on which something special happens, the origin being the custom of marking holy days and saints’ days on calendars with red letters.

While the Complainant claims to have an international client base, an examination of the Complainant’s website shows that its products are aimed only at the United Kingdom market. The Complainant’s website is only in the English language. Overseas products on offer represent only a very small percentage of the overall offering and these appear to be aimed at United Kingdom residents traveling to overseas destinations. The “worldwide” section of the Complainant’s website mentions only two products outside the United Kingdom: Mount Everest experience and Arctic Adventure Sweden.

The Respondent submits that it would seem logical that the Complainants clients from overseas are likely to be United Kingdom citizens who are familiar with the United Kingdom brand and the website at the <redletterdays.co.uk> domain address. The Respondent submits that in those circumstances it is impossible to see how any customers would be likely to see any association between the content on the website at the disputed domain and that of the Complainant. To suggest that Internet users may mistakenly assume the disputed domain name is owned by the Complainant is as improbable as thinking that Internet users would assume a connection between the domain names <wipo.com> and <wipo.org>.

The Respondent claims rights and legitimate interests in the domain name. The Respondent claims to have been using the domain name before any of the Complainant’s trademarks were registered or even advertised as part of those processes.

The Respondent states that there is no comparison between the issues in the present proceedings and those relating to the NIKE trademark in WIPO Case No. D2000-1397 (above). NIKE is a unique term whereas RED LETTER DAYS is not and is a commonly used term throughout the English speaking world.

The Respondent uses its website to market its range of red envelopes suitable for presenting during Hongbao. This is a special occasion during which money or other items are presented to others. It is a growing cultural custom originating in China but now increasingly part of other societies. For example when attending a Chinese wedding you must present Hongbao to the newly married couple. Chinese are one of Australia’s largest ethnic communities numbering over half a million people. There are 35 million Chinese people who live outside China. The oriental design and fashion of the Respondent’s envelope make them attractive to these target groups.

The Respondent has not supplied any customers in the United Kingdom, nor has it received any requests for information on their Hongbao envelopes from either the Complainant or its representatives.

As to the allegation that the domain name has been registered and is being used in bad faith, the Respondent repeats that the domain name was registered before the Complainant had any rights in any registered marks. To this day the Complainant is not commonly known in Australia.

While the Respondent’s website carries an advertisement for and a link to the “goldenmoments.net” site, it has carried advertisements for other companies also. The banner advertisement is clearly marked “advert”. There is no similarity between the Golden Moments name and the Complainant’s mark.

In December 2002, the Respondent’s website carried an advertisement for Activity Superstore, however following a complaint from the Complainant and a threat of legal proceedings against Activity Superstore, the Respondent was asked by Activity Superstore to remove the advertisement and did so.

The Respondent asks, if there were grounds for infringement, why did the Complainant not bring this Complaint three years ago?

The Complainant has sent a number of communications recently relating to this dispute. The Respondent has chosen not to answer these as they contained complicated and threatening language, whilst demanding large sums of money.

Referring to the report of the FedEx agent, the Respondent states that the lady “Jane” said “Robert Piggott no longer lives there”. At that time the domain registrar sent notification for the address to be updated and this was done immediately.

In conclusion the Respondent states that it has never attempted to sell the domain name to the Complainant or to anyone for any amount. The Respondent has rejected offers from third parties to sell including some companies that may be competitors of the Complainant. The Respondent states that it has no intention of selling the domain name and strongly refutes any claim that the domain name was registered or has been used in bad faith.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy places on the Complainant the onus of proving that:

(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the said domain name; and

(iii) the said domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established in these proceedings that it is the owner of and has rights in a number of registered trademarks for the words Red Letter and Red Letter Days in the European Union including national rights in the United Kingdom and in the United States and Australia. The domain name is clearly similar to the Complainant’s RED LETTER mark and is identical to the Complainant’s RED LETTER DAYS mark.

B. Rights or Legitimate Interests

In light of the Panel’s finding below that the Complainant has failed to satisfy the Panel that the Respondent was acting in bad faith when he registered the domain name, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in respect of the domain name.

That said, there is insufficient material before the Panel for the Panel to make a positive finding that the Respondent has rights or legitimate interests in respect of the domain name

C. Registered and Used in Bad Faith

The essence of the Complainant’s case that the domain name was registered in bad faith, turns on whether the registrant knew the Complainant and was aware of the goodwill of the Complainant when the domain name was registered. The Respondent denies all knowledge of the Complainant at that time.

The essence of the Complainant’s case that the domain name is being used in bad faith rests on the fact that the website established by the Respondent at the domain name address has in the past carried an advertisement for an enterprise, Activity Superstore, a competitor of the Complainant and more recently carries an advertisement for another competitor enterprise GoldenMoments.net Limited and a link to the competitors website.

This Administrative Panel has concluded that the Complainant has failed to establish that the registrant of the domain name had any knowledge of the Complainant or its goodwill when the domain name was registered in on May 10, 2002. It follows that the complaint fails. The Domain name seems to have been registered within dictionary meaning of the word “Red Letter Days” and not with a view to free ride on goodwill created by the Complainant. This is supported by the fact that the domain name was registered by the Respondent before the Complainant registered its trademarks.

The Administrative Panel makes no determination as to whether the domain name is being used in bad faith by posting an advertisement for and a link to a website promoting products in competition with the Complainant.

The Complaint is denied under the Policy due to lack of evidence of bad faith registration. The decision is of course not in any way meant to prejudge or influence an eventual national court proceeding between the parties, which would be conducted under different procedural and substantive rules.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.


James Bridgeman
Presiding Panelist

Tony Willoughby
Panelist

Christophe Imhoos
Panelist

Dated: April 12, 2006

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2006/d2006-0125.html

 

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