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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ugly, Inc. v. Group Lottuss Corporation S.L.

Case No. D2006-0891

 

1. The Parties

The Complainant is Ugly, Inc., Cornwall, New York, United States of America, represented by Jacobs deBrauwere LLP of New York, New York, United States of America.

The Respondent is Group Lottuss Corporation S.L., Barcelona, Spain, represented by Duran-Corretjer of Barcelona, Spain.

 

2. The Domain Name and Registrar

The disputed domain name <coyote-ugly.net> is registered with CORE Internet Council of Registrars.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2006. On July 13, 2006, the Center transmitted by email to CORE Internet Council of Registrars a request for registrar verification in connection with the domain name at issue. On July 14, 2006, CORE Internet Council of Registrars transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

On August 4, 2006, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 4, 2006. In accordance with paragraph 5(a) of the Rules, the due date for the Response was August 24, 2006. The Response was filed with the Center on August 21, 2006.

The Center appointed Charters Macdonald-Brown as the Sole Panelist in this matter on September 14, 2006. The Sole Panelist finds that the Administrative Panel (the “Panel”) was properly constituted and appointed in accordance with the Rules and the Supplemental Rules. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.

Due to unforeseen circumstances, on September 29, 2006, the Center informed the Complainant and the Respondent that the Panel decision date had been postponed to October 4, 2006.

The language of the proceedings is English.

 

4. Factual Background

The Complainant

The Complainant is a US company. According to the Complaint, the Complainant has used the trademark and service mark COYOTE UGLY (the “Mark”) in connection with bar services and the sale of related goods since at least as early as 1993, when the Complainant’s predecessor in interest, Love Picin, Inc., opened the “Coyote Ugly” bar in New York.

The Complainant is the owner of the following trademarks, all of which (with the exception of US trademark Registration No. 2,144,582), were annexed to the submitted Complaint:

- US trademark COYOTE UGLY with Registration No. 2,144,582 for Class 42 (bar and tavern services), applied for on March 19, 1997, and issued on March 17, 1998.

- US trademark COYOTE UGLY with Registration No. 2,594,526 for goods in Class 14 (including jewellery), applied for on October 10, 1997, and issued on July 16, 2002.

- US trademark COYOTE UGLY with Registration No. 2,632,027 for goods in Class 16 (including printed paper goods), applied for on October 10, 1997, and issued on October 8, 2002.

- US trademark COYOTE UGLY with Registration No. 2,559,097 for goods in Class 21 (including beverage and barware), applied for on October 10, 1997, and issued on April 9, 2002.

- US trademark COYOTE UGLY with Registration No. 2,654,613 for goods in Class 25 (including apparel), applied for on October 10, 1997, and issued on November 26 9, 2002.

- US trademark COYOTE UGLY with Registration No. 2,565,496, for goods in Class 34 (including tobacco accessories), applied for on October 10, 1997, and issued on April 30, 2002.

- Community trademark COYOTE UGLY with Registration No. 1837707 for goods in Classes 14, 16, 21, 25, 32 and 34 (for use in connection with jewellery, printed paper goods, beverage and barware, apparel, beer, tobacco accessories and other goods that are commonly associated with bars and saloons), applied for on September 4, 2000, and issued on December 13, 2001.

According to the Complaint, the Complainant has also registered the Mark (or similar) in forty-four countries worldwide and has pending applications for the Mark (or similar) in a further fourteen jurisdictions, details of which were annexed to the submitted Complaint.

The Complainant is also the owner of the domain name <coyoteuglysaloon.com>, which it registered on October 1, 1999, and which it has used since as the main website for the Complainant’s business.

According to the Complainant, the Complainant currently operates and/or licenses fifteen Coyote Ugly bars in the US.

In addition, according to the Complainant, on December 17, 1997 Disney Pictures (“Disney”) acquired from Love Picin, Inc. and the founder of the Coyote Ugly bar, Liliana Lovell, the exclusive motion picture rights to the story of the Coyote Ugly bar. Disney released the film “Coyote Ugly” on August 1, 2000. According to the Complainant, the Coyote Ugly film grossed over $110 million worldwide in box office receipts, with a substantial portion of proceeds originating from Europe, including Spain.

On December 2, 1999, Disney, with the consent of the Complainant, registered the domain name <coyoteugly.com> in order to operate a website promoting the film “Coyote Ugly” prior to its release and its website has since been available online.

The Respondent

The Respondent is a Spanish company. The Respondent opened a bar called “Coyote Ugly” in Barcelona in July 2001. According to the Respondent, it has also opened five other “Coyote Ugly” bars in Spain prior to this dispute.

The Respondent is the applicant of the following trademarks, all of which were annexed to the submitted Response and all of which are subject to ongoing opposition proceedings brought by the Complainant:

- Community trademark COYOTE UGLY (figurative mark) application No. 2428795 for Classes 9, 41 and 42, applied for on October 26, 2001, and published on August 12, 2002. Following an opposition brought by the Complainant on August 19, 2002, the Office for Harmonization in the Internal Market (“OHIM”) gave a decision on November 19, 2005, that the application in relation to Classes 9 and 41 could proceed to registration. At the time of this dispute, OHIM’s decision of November 19, 2005, is pending on a decision on the appeals filed by the Respondent on January 25, 2006, (against the rejection of the services in Class 42) and the Complainant on January 27, 2006, (against the acceptance of the goods and services in Classes 9 and 41). The Respondent annexed a copy of OHIM’s decision of November 19, 2005, and a copy of the appeals by the Respondent and the Complainant to the submitted Response.

- Spanish national trademarks COYOTUGLY for Classes 41 and 42 applied for on June 19, 2001, and CHICAS COYOTE for Classes 41 and 42 applied for on August 21, 2001. The Complainant filed a nullity action against these trademarks, which is currently being appealed in Spain’s Court of Appeal.

The Respondent registered the disputed domain name <coyote-ugly.net> on March 27, 2002. The Respondent uses the domain name to operate the main website for its business.

 

5. Parties’ Contentions

A. Complainant’s case

The Complainant bases its Complaint upon paragraphs 4(a), (b) and (c) of the Policy, and in accordance with paragraph 3 of the Rules.

The Complaint can be summarised as follows:

Identical or confusingly similar to a trademark in which the Complainant has rights

Rights in the Mark

- The Complainant has substantial rights in the Mark as evidenced by the factual statements referred to in paragraph 4 above.

Identical or confusingly similar

- The disputed domain <coyote-ugly.net> is identical to the Mark, COYOTE UGLY, the only difference being that the words “coyote” and “ugly” are separated by a hyphen and the TLD “.net”.

- The TLD “.net” is a functional necessity rather than an arbitrary trademark choice, so the TLD is properly ignored when considering the similarity between a domain name and a mark.

- The addition of a hyphen does not decrease the confusing similarity between the domain and the mark, so the hyphen is also properly ignored when considering the similarity between a domain name and mark.

Rights or legitimate interests

- The Respondent has no rights or legitimate interests in respect of the disputed domain name and uses it solely to capitalise on the Complainant’s Mark and to exploit the Complainant’s goodwill therein.

- The Respondent does not have, and never has had, a valid and subsisting trademark registration for COYOTE UGLY that gives the Respondent a legitimate interest in the subject domain name.

- Although on June 19, 2001, the Respondent sought registration in Spain for the mark COYOTUGLY and on August 21, 2001, for the mark CHICAS COYOTE, which marks are currently the subject of contested proceedings in the courts of Spain, these marks are not identical to the subject domain name and, in any event, the Complainant’s US Registration No. 2,144,582 for COYOTE UGLY was registered on March 17, 1998 – three years before the Respondent applied to register its marks.

- The Respondent registered the disputed domain name on or about March 27, 2002, after the Complainant had registered the COYOTE UGLY mark in numerous countries (including obtaining Community trademark Registration No. 1837707, dated October 23, 2001, which is valid in the Respondent’s home country of Spain), after the Complainant had registered its own domain name <coyoteuglysaloon.com>, after the film about the Complainant’s bar was released worldwide, after the Complainant had established “Coyote Ugly” as a chain of bars and after the Complainant’s licensee had registered its own domain name <coyoteugly.com>.

- The Respondent has no connection to, licence or relationship with the Complainant that would give the Respondent a legitimate interest in the domain name. The Complainant has not consented to or authorised the Respondent’s registration or use of the disputed domain name.

- With reference to paragraph 4(c)(iii) of the Policy, the Respondent is not making a legitimate non-commercial fair use of the disputed domain name. The website accessed by the disputed domain name promotes the Respondent’s bar and saloon franchise opportunities, as well as bars and saloons operated by the Respondent for profit. The Respondent clearly uses the disputed domain name solely in connection with its own business enterprise, from which it derives commercial benefit.

- The Respondent’s use of the entirety of the Mark in the disputed domain name does not constitute fair use for the Respondent could have readily devised a domain name that described the Respondent’s primary commercial activities of operating bar establishments without incorporating the Complainant’s Mark. The manner in which the Respondent uses the Mark as the name of its bars is carefully calculated to mimic the look and feel of the Complainant’s bars and to duplicate the entertainment activities in its bars that the Complainant made famous.

Registered and used in bad faith

- The Respondent registered the disputed domain name in bad faith.

- The Respondent states that its bar business was based on the film, which was licensed by the Complainant and based on the Complainant’s business.

- The Respondent had actual and/or constructive knowledge of the existing rights in the Mark in Classes 14, 16, 21, 25, 32, 24 and 42 and in the field of goods and services associated with bars and saloons. Thus, with reference to paragraph 4(b)(iv) of the Policy, the Respondent’s registration of a domain name incorporating the Mark and use thereof in connection with a website to promote services identical to the Complainant’s primary business in a manner that mimics the Complainant’s activities constitutes proof that the Respondent had actual knowledge of the Complainant’s superior rights in the Mark and intended to profit from the use of the Mark in the disputed domain name, demonstrating bad faith.

- There is no plausible good faith explanation why the Respondent would have registered a domain name containing the precise mark owned by the Complainant to advertise his own chain of bars that uses the precise name of the bars run by the Complainant. The only conceivable explanation is that the Respondent wished to benefit from the public recognition and goodwill associated with the Mark and the Complainant’s “Coyote Ugly” bars for the Respondent’s own commercial benefit, which is demonstrative of opportunistic bad faith.

- The Respondent not only registered the disputed domain name in bad faith it is also using the registration in bad faith.

- The Respondent uses the Mark in the disputed domain name in order to divert consumers searching for the official website of the Complainant’s “Coyote Ugly” chain of bars and/or confuse consumers into believing that the Respondent’s promotion of his bars is sponsored by or affiliated with the Complainant or its licensee, Disney. The Respondent displays the same imagery on its website as on the Complainant’s website, and incorporates meta-data into its website that spells out “Coyote Ugly”, without any other qualifying elements when pages of its website are printed. The Respondent’s use of “Coyote Ugly” film logo imagery on its website, including the manner in which it misappropriated the form of the Mark on the website, and its use of the Mark in its entirety in the website’s domain name, taken together, are an attempt to play on the public’s recognition of the Complainant’s Mark in connection with bar services and products and to deceive the public into believing that the Respondent’s services are affiliated with and/or endorsed by Complainant. The Respondent’s use of the disputed domain name in conjunction with the promotion of its bars infringes the Complainant’s rights in the Mark by giving the impression that the Complainant endorsed, sponsored or was otherwise affiliated with the Respondent’s website and the products and/or services offered on its website.

B. Respondent’s case

The Response can be summarised as follows:

Identical or confusingly similar to a trademark in which the Complainant has rights

Rights in the Mark

- The Complainant has no prior substantial right in the Mark in Spain (and/or the European Union) in relation to services for discos and night clubs.

- Prior to the registration of the disputed domain name and/or to this dispute, solely the Complainant’s Community trademark Registration No. 1837707 (dated October 23, 2001) was valid in the Respondent’s home country of Spain.

- The goods and services covered by the Complainant’s Community trademark Registration No. 1837707 (Classes 14 (precious metals and their alloys and goods in precious metals or coated therewith and others), 16 (paper goods, stationery and others), 21 (household or kitchen utensils and containers and others, 25 (clothing, footwear and headgear), 32 (beers, mineral and aerated waters and other non alcoholic drinks and others) and 34 (tobacco, smoker’s articles and others)) differ from the services for discos and night clubs (Class 41) or cocktail lounge services (Class 42) operated as a business by the Respondent and promoted through the website accessed by the disputed domain name.

- The date of registration of the Complainant’s Community trademark Registration No. 1837707 (October 23, 2001) is later than the date of the first “Coyote Ugly” bar/night club in Barcelona run by the Respondent (July 2001).

Identical or confusingly similar

- The Respondent advanced no arguments on this point.

Rights or legitimate interests

- The Respondent has a legitimate interest in the disputed domain name.

- The Respondent was known by the disputed domain name prior to its registration

- The Respondent used the disputed domain name before this dispute

- The Respondent has used the domain name in connection with its own business and, therefore, with the bona fide offering of services.

- The Respondent opened its first “Coyote Ugly” bar in Barcelona in July 2001, prior to the date of registration of the disputed domain name. The Respondent also opened five other “Coyote Ugly” bars in Spain prior to this dispute.

- The Respondent is the applicant of the figurative Community trademark COYOTE UGLY No. 2428795 for Classes 9, 41 and 42 (application filed on October 26, 2001).

- Despite the Complainant’s opposition against the application, by a decision issued on November 29, 2005, OHIM decided that Classes 9 and 41 may proceed to registration. At the time of this dispute, OHIM’s decision of November 29, 2005 is pending a decision on the appeals filed by the Respondent (against the rejection of the services in Class 42) and by the Complainant (against the acceptance of the goods and services in Classes 9 and 41). Therefore, as the applicant of the Community trademark No. 2428795 prior to the registration of the disputed domain name and any notice of this dispute, the Respondent has rights and/or expectation of rights in respect of the disputed domain name.

Registered and used in bad faith

- At the time the Respondent adopted “Coyote Ugly” as the name for its first bar/nightclub in Barcelona in July 2001, any rights of the Complainant were limited to territories outside the Respondent’s home country of Spain and/or the European Union.

- At the time the Respondent registered the disputed domain name there were only three “Coyote Ugly Saloon” locations, opened solely within the US.

- By January 2006 there was no “Coyote Ugly Saloon” outside the US and it was only in 2006 that the Complainant decided to expand its “Coyote Ugly Saloon” business by globally offering licences in territories outside the US.

- The Complainant has failed to submit any evidence of use of its claimed earlier rights which would necessarily imply actual and/or constructive knowledge of the existence of those rights by the Respondent.

- The Complainant based its allegation that the Respondent had registered and has been using the disputed domain name in bad faith solely on the existence of the “Coyote Ugly” film. Further, the Complainant claims but does not prove that the film was based on the Complainant’s business and that the Complainant had licensed the right to use the Complainant’s Mark in that film.

- The Respondent admits on its website that its “Coyote Ugly” bar in Barcelona was inspired or based on the “Coyote Ugly” film. However, the Respondent claims that such statement does not imply that at the time of opening its first bar and/or registering the disputed domain name the Respondent knew about the existence of a real bar or night club operated under such name by the Complainant and/or the existence of prior rights owned by the Complainant.

- It is not the first time that the Complainant has alleged bad faith of the Respondent on the basis of the pre-existence of the film and supposed well-known character of the Mark. However, such argument on bad faith has been repeatedly rejected in the nullity action in the courts of Spain in relation to the Complainant’s action filed against the Respondent’s Spanish trademarks COYOTUGLY (Classes 41 and 42) and CHICAS COYOTE (Classes 41 and 42).

- The Complainant has failed to prove any of the circumstances listed in paragraph 4(b)(i) to (iv) of the Policy as evidence of bad faith.

- On the contrary, the Respondent clearly uses the disputed domain name solely in connection with its own business enterprise, promoting the bar and saloons operated by the Respondent without creating any confusion about any possible relation between the business run by the Respondent and the business run by the Complainant.

 

6. Discussion and Findings

In order to be successful in its Complaint, the Complainant must show each part of paragraph 4(a) of the Policy:

(i) the disputed domain name 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 domain name; and

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

Paragraph 4(c) of the Policy sets out circumstances which, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondent’s rights or legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy.

Paragraph 4(b) of the Policy sets out the circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

A. Identical or confusingly similar to a trademark in which the Complainant has rights

The Complainant is the registered proprietor of United States Patent and Trademark Office registration of the Mark, No. 2,144,582, in Class 42 covering bar and tavern services. The registration was issued on March 17, 1998 and is valid and subsisting. This, on its own, satisfies the threshold requirement for the Complainant to have trademark rights under the Policy. The Respondent has not argued that the disputed domain name is not identical or confusingly similar to the Mark. The view of the Panel is that the disputed domain name is identical to the Mark belonging to the Complainant. In reaching this conclusion, the TLD “.net” and the hyphen have been ignored.

B. Rights or Legitimate Interests

The overall burden of proof rests with the Complainant to show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. That burden only passes to the Respondent if the Complainant can make out an initial prima facie case.

The UDRP process is designed for relatively straightforward cases of bad faith registrations. This is not a straightforward case and the ultimate determination of what rights the Complainant and the Respondent might have in respect of the disputed domain name are likely to be determined in trademark or possibly passing off or unfair competition proceedings under the relevant national law and the Panel’s finding does not in any way attempt to pre-judge the reasoning or outcome of any such proceedings. Such proceedings would provide a more suitable forum for the examination and testing of the quite complex facts in this case. It is already clear from the national proceedings which have taken place in Spain and which are the subject of appeal and from the OHIM proceedings that matters are not clear cut.

Whilst the Respondent admits that its “Coyote Ugly” bar in Barcelona was inspired by the film of that name, the Respondent claims that when it opened its bar in Barcelona in July 2001 it did not know about the existence of a real bar or night club operated under that name by the Complainant. The evidence before the Panel is not sufficient to test that assertion. It is worth noting that the first instance Court in Barcelona, in its decision of July 29, 2003, stated that it could not be deduced from what happened in the Spanish version of the film Coyote Ugly that it related to a real bar. According to the Court, this was not explained in the credits nor in the advertising.

The following further facts appear not to be disputed: that the Respondent opened a bar called Coyote Ugly in Barcelona in July 2001 and has since opened further bars in Spain. There is no evidence that this is not a genuine profit making business. In fact, the Complainant asserts that the Respondent uses the disputed domain name in connection with its own business from which it derives commercial benefit.

The view of the Panel is that, on the evidence before it, the Complainant has not made out an initial prima facie case that the Respondent has no rights or legitimate rights in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Although it is not necessary to go on to make any decision under paragraph 4(a)(iii) of the Policy, the Panel has the following comments. There is no evidence that any of the circumstances set out in paragraph 4(b) of the Policy, which if they existed would be evidence of the registration and use of the domain name in bad faith, in fact exist in this case. These conditions are not exhaustive but it is instructive to consider the decision dated April 22, 2005, of the Court of Appeal in Barcelona which, having had, presumably, more evidence before it than there is before this Panel, considered whether the Respondent had acted in bad faith and concluded that there was an absence of proof of bad faith of which the Complainant had accused the Respondent.

 

7. Decision

For all the foregoing reasons, the Complainant has failed to meet the requirements of paragraphs 4(a)(ii) and (iii) of the Policy and, in the circumstances, the Complaint is denied.


Charters Macdonald-Brown
Sole Panelist

Date: October 4, 2006

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2006/d2006-0891.html

 

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