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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Quintessentially (UK) Limited v. Mark Schnorrenberg/ Quintessentially
Case No. D2006-1643
1. The Parties
The Complainant is Quintessentially (UK) Limited, of the United Kingdom of Great Britain and Northern Ireland, represented by Lewis Silkin, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Quintessentially Concierge/ Mark Schnorrenberg, of Marble
Falls, Texas, United States of America.
2. The Domain Names and Registrar
The disputed domain names <quintessentiallyconcierge.com>, and
<quintessentiallyconcierge.net> (“the Domain Names”) are
registered with eNom, Inc. dba Dynames.com, Inc. (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2006. On January 5, 2007 and January 12, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 15, 2007, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the Domain Names. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 17, 2007. The Center verified that the Complaint together with the amendment to 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 on January 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2007. The Respondent provided a response informally (by email) to the Center on February 4, 2007. On February 5, 2007, the Center replied, asking the Respondent if he wished to add anything to his February 4 email, and giving him until February 9 to do so.
A formal Response was filed with the Center on February 9, 2007.
The Center appointed Warwick Smith as the sole panelist in this matter on February 19, 2007. The Panel finds that it was properly constituted. 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.
By email to the Center dated February 13, 2007, the Complainant sought to amend its Complaint to include the domain names <quintessentiallyconcierge.info>, <quintessentiallyconcierge.biz> and <quintessentiallyconcierge.org> (“the Other Domain Names”). It is apparent from the Complaint itself that the Complainant was aware that the Other Domain Names had been registered on November 7, 2006, and that prior to filing the present Complaint, the Complainant was aware of the name of the registrant of these Other Domain Names and the fact that those Other Domain Names pointed to the same website to which the Domain Name <quintessentiallyconcierge.com> resolves. The Complainant noted in its Complaint that “it strains credulity to believe that an entirely unconnected third party registered these domain names and then arranged for them to point to the Respondent’s website without instructions from the Respondent”.
What changed after the Complaint was filed, is that the Complainant learned from the informal Response provided by the Respondent on February 4, 2007, that the individual who is the registrant of the Other Domain Names appears to be the same person who the Respondent says he contracted with “to both re-design and manage my website”.
The Panel has some sympathy with the Complainant’s wish to have the disputes over all these domain names resolved in the one administrative proceeding. However, the Rules require that the Respondent be the “holder” of a domain name registration, and in this case the Respondent is clearly not the registrant of the Other Domain Names. The Panel is of the view that should the Complainant elect to initiate separate proceedings in relation to the other Domain Names it would be appropriate for the registrant of the Other Domain Names to be named as a respondent in any such proceedings. Any amendment to the present proceeding to add the Other Domain Names would however require the addition of another respondent (the registrant of the Other Domain Names) and re-service of the amended Complaint on that additional respondent.
In the Panel’s view, there is little to be gained
in the context of the present expedited proceedings by adding additional domain
names where such amendment would require that a different (or additional) respondent
be added, and that the proceeding be re-served on that additional respondent.
In those circumstances and without prejudice to any other proceedings the Complainant
may wish to submit, the Panel declines to permit the amendment of the Complaint
to include the Other Domain Names in this case.
4. Factual Background
The Complainant operates a private concierge service, which is now available worldwide. It has offices in London, New York, Miami, Los Angeles, Moscow, Johannesburg, SAR of China, and a number of other cities around the world. The business, which has always operated under the brand “Quintessentially”, was launched in London in December 2000.
The Complainant provides an exclusive service to its client subscribers which “takes care of all their needs from pedicure appointments, to restaurant reservations, to landing seats at a fashion show” (to quote from an article in the February 2003 edition of Women’s Wear Daily which the Complainant produced). The Women’s Wear Daily article referred to the Complainant’s then clientele of 3000 “cosmopolitan clients”, who were said to include a number of celebrities, including Madonna and Gwyneth Paltrow.
In order to extend its range of services to its members (subscribers), the Complainant has formed a number of strategic partnerships with hotels and travel companies, theatres, spas, gyms, and a number of luxury brands, which offer Quintessential members preferential service and/or discounts. The Complainant also provides its members with a credit card service, and a newsletter offering members difficult-to-find wines. A sister-company specializes in event planning.
In essence, the aim of the business is to provide “cash rich but time poor” executives, celebrities, and other very busy people, with a service which takes care of an (apparently almost unlimited) range of personal needs they may have.
The Complainant achieved a high profile in the United Kingdom market within a very short time of its business having been launched. One of the reasons for that is that a founder of the Complainant, Ben Elliot, is a nephew of the Duchess of Cornwall. A son of the Duchess of Cornwall, Tom Parker-Bowles, has also been associated with the business. Mr. Elliot’s international profile has no doubt also been enhanced by an apparently well-publicized relationship with a daughter of the rock musician, Mick Jagger.
In February 2003, the Complainant opened a United States office in New York City. It appears that the New York launch attracted a great deal of publicity in the American media, and the Complainant has produced copies of numerous articles reporting on the opening party at Sotheby’s in New York, which was attended by a number of celebrity guests.
In November 2004, the Complainant opened an office in Miami, and in May 2005, another office was opened in Los Angeles. By September 2005, the Wall Street Journal’s online edition reported that the company was operating 15 offices around the world. The Complainant has continued to obtain regular news media coverage, whether through the activities or associations of its founders, the openings of new branches (e.g. Moscow in 2006), or its connection with famous events attended by celebrities (e.g. the Cannes Film Festival). The launches of the New York, Miami, and Los Angeles offices were widely reported in the United States media, and the Complainant’s business has regularly featured in United States magazines and websites.
The Complainant’s Trademarks
The Complainant is the registered proprietor of the mark QUINTESSENTIALLY, registered in the United Kingdom with effect from May 31, 2002 in international classes 16, 20, 21, 35, 36, 38, 39, 41, 42, 43, and 45. It is not necessary to refer to the specifications in all of these classes, but the Panel notes that the Class 45 specification refers to “concierge services for others comprising of making requested personal arrangements and providing customer specific information to meet the needs of individuals; security services for the protection of property and individuals ….”
The Complainant’s QUINTESSENTIALLY mark was registered internationally under the Madrid Protocol, on December 21, 2005, with effect from June 22, 2005. The Class 45 international specification was in the same terms as the United Kingdom registration.
According to the Complaint, applications to register the QUINTESSENTIALLY trademark are pending in numerous jurisdictions, including the United States of America. The application to the United States Patent and Trade Marks Office, was made on December 21, 2005.
The Complainant’s Website
The Complainant owns and operates a website at “www.quintessentially.com”. The Complainant says that the website at that address went live in December 2000, is hosted in the United States of America, and (as at October 2006) had an average of over 130,000 hits per month.
The Respondent and the Domain Names
The Domain Names were registered by the Respondent on May 3, 2004. The home page of the website to which the Domain Names resolve (“the Respondent’s website”), describes the Respondent’s operation as “a personal and business management firm”. The home page goes on to state that:
“The Respondent’s business specializes in many personal concierge services for visitors to the Horseshoe Bay/Marble Falls area in addition to residents of the Texas Hill Country.
QC Personal Concierge serves in the Texas Hill Country and Horseshoe Bay Resort/Marble Falls area include house-sitting, waiting services, referral services, property management, property maintenance, assistance with automobile services, event planning, personal assistant services, errand running services, visitor services and much more.
For the visitor to Horseshoe Bay and the Texas Wine Country, QC has formed numerous partnerships and arrangements with area hotels, bed-and-breakfast, condominiums, and attractions. If you are a tourist or resident of the area, QC has many services and packages to offer you.”
There follows on the home page a statement that is repeated elsewhere on the website:
“We are confident you will find the answer to your time constraints in the unique and professional Personal Assistant Services Quintessentially Concierge offers.”
The home page provides a Post Office box address in Marble Falls, Texas, telephone and facsimile numbers, and the statement “Contact QC of Texas”.
The Respondent’s website also includes a “Services” section. Services are summarized under the headings “Home Services”, “Errands”, “Automobile”, “Event Planning, Corporate”, “Personal Assistants”, “Specialty Services”, “Leisure & Recreation”, and “Visitors”. There is a brief summary of the nature of the services provided under each of these headings. For example, under the heading “Errands”, there appears: “Bill Pay/Bank/Gift Purchase/Personal Shopper”. Under “Home Services”, are listed “house sitting”, “cleaning and maintenance referral”, “preparing home for arrival and departure”, and “property management assistance.” The services listed under “Event Planning, include parties, corporate, weddings, and honeymoons.
A section of the Respondent’s website headed “About”, consists substantially of a curriculum vitae for the Respondent. The Respondent has substantially reproduced this curriculum vitae in his formal response – indeed, some 5 pages of the Response comprise the reproduction of this curriculum vitae. However, when the Panel checked the Respondent’s website on February 22, 2007 (in response to an invitation in the Response to compare the Respondent’s website with those operated by the Marble Falls and Kingsland Chambers of Commerce), the Panel noted that one paragraph under the heading “Professional Experience” had not been reproduced by the Respondent in his Response. That paragraph reads:
“June 1, 2006 – Present
Established “Quintessentially Concierge … a Personal and Business Management Firm” www. QuintessentiallyConcierge.com.”
In his informal emailed Response of February 4, 2007, the Respondent said that he attended the MBA programme of Baylor University between 1996 and 1998, and it was then that he first thought of “Quintessentially Concierge”. He said that he immediately then began the process of naming his business, and what he described as the “tedious task” of making certain that the name was available and not being used via the Internet or “in its geographic area of service”.
He says that his Quintessentially Concierge business was launched in the State of Texas in 1999. He asserts that the business has since “evolved” into a “Personal and Business Management Firm”, specializing in providing both personal and business management services in a confidential relationship and a local setting: two counties in Central Texas.
The Respondent says in his Response: “When I named my business I was not aware of any other business using the name ‘Quintessentially’.”.
The Respondent says in his Response that Quintessentially Concierge enjoyed its first client relationship in 1998/1999, during the final year of the Respondent’s MBA course at Baylor University. The Respondent did not identify this first client, nor provide any contemporaneous documentation evidencing this first “client relationship”. The curriculum vitae produced by the Respondent indicates that, between December 1998 and June 1999, the Respondent was employed as executive director at the McLennan Community College Small Business Development Center. The Respondent’s curriculum vitae for the period when he was McLennan Community College does refer to him having been involved in Internet/website design and maintenance work, but there does not appear to be any reference to the establishment of a business under the name Quintessentially Concierge, or any identification of the “first client” of such a business.
The Respondent describes his current clientele as “people in the Central Texas area, governments, Chambers of Commerce, university administrators/professors, legislatures, and colleagues acquainted with Quintessentially Concierge as a respected and thriving business”. He says in his formal response that the Respondent’s website was self-designed, but in his prior informal response he stated that, approximately 8 years ago, he and his brother-in-law started designing the Respondent’s website, and that he “finally submitted” the rough, finished version to Zeecon Internet, of Marble Falls, Texas, to purchase the domain sites and manage the website. He says that in October 2006, he contracted with Matt Parker of MPDesign.us to both re-design and manage the Respondent’s website.
The Respondent says that he has never entertained an inquiry from a client that has claimed to be familiar with the Domain Names through any publication or media source outside of his defined territory, being the Central Texas area.
Finally under this heading, the Complainant produced as an annexure to its Complaint, an extract from the website of the Marble Falls/Lake LBJ Chamber of Commerce, downloaded on October 26, 2006. This web page provided a photograph from an event described as a “Ribbon Cutting For Quintessentially Concierge”, which had apparently been submitted on August 30, 2006.
On October 24, 2006, the Complainant’s representative wrote to the Respondent at his Post Office Box in Horseshoe Bay, Texas. The letter appears to have been sent by email and by fax. The letter from the Complainant’s representative referred to the Complainant’s operations, including the opening of offices in New York, Miami, and Los Angeles in February 2002, November 2004, and May 2005 respectively. The letter asserted that the registration of the Domain Names amounted to abusive registrations under the Policy, and required the Respondent to immediately cease all use of the two websites and transfer them to the Complainant. The Complainant’s representative advised that if that request was not complied with within 14 days, action would follow under the Policy.
The Respondent says in his Response that the email correspondence from the Complainant’s representative was not opened. He explains that he receives hundreds of email items each day identified as “spam” by his Norton Anti-virus Software, and that the correspondence from the Complainant’s representative was identified as such and not opened due to possible viral contagion.
The Other Domain Names
According to the Complaint, the Other Domain Names
were registered on November 7, 2006. Initially, the Other Domain Names were
registered anonymously through Domains by Proxy, Inc. The Other Domain names
all directed an Internet user to the Respondent’s website.
5. Parties’ Contentions
The Complainant contends the following:
5.1. The Domain Names are confusingly similar to trade or service marks in which the Complainant has rights, for the following reasons:
(i) The Complainant has registered trademark or service mark rights in the mark QUINTESSENTIALLY, in the United Kingdom, in Hong Kong, and internationally under the Madrid Protocol.
(ii) The QUINTESSENTIALLY mark has become extremely well-known, and has developed a significant reputation and goodwill.
(iii) The Domain Names are confusingly similar to the Complainant’s QUINTESSENTIALLY mark.
(iv) The QUINTESSENTIALLY mark is used primarily in relation to exclusive concierge services, and the use of that mark in combination with the word “concierge” is an unusual combination, and is confusingly similar to the Complainant’s mark.
(v) Previous WIPO Panel decisions have indicated that if a Domain Name incorporates
a complainant’s mark in its entirety, it is confusingly similar to that
mark despite the addition of other words (citing Wal-Mart Stores, Inc. v
Kuchora, Kal, WIPO Case No D2006-0033).
5.2. The Respondent has no rights or legitimate interests in respect of the Domain Names, for the following reasons:
(i) There is no evidence that the Respondent has used, or has made demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names, in connection with a bona fide offering of goods or services. The Respondent’s website and related business is not bona fide, as it was registered and is being used in bad faith with the intention to benefit from the publicity and goodwill attached to the QUINTESSENTIALLY mark. In doing so, it has diverted potential consumers from the Complainant’s website, and is tarnishing the Complainant’s reputation.
(ii) A search of United States newspapers and wires using the search terms “quintessentially” and “concierge”, produces no results relating to the Respondent’s use of the Domain Names. The search did produce 31 documents relating to the Complainant’s business. This shows that the Respondent has not built up any significant awareness, reputation or goodwill in relation to his use of the Domain Names, while the Complainant has developed a reputation in the United States which relates not only to the recognition of the mark QUINTESSENTIALLY but also to the Complainant’s exclusive concierge service.
(iii) The Respondent has intentionally made it difficult to find out about and contact him other than through an email hyperlink on his website. The Respondent’s website doesn’t contain any details of a registered business, and there is only a Post Office Box address rather than a full postal address. There is no mention by name of any employees or individuals within the Respondent’s business. The Respondent is attempting to make himself as inaccessible as possible, which reinforces the argument that he is not conducting a legitimate business.
(iv) There is no reasonable explanation for the Respondent’s use of the Quintessentially name. The use of that name simply serves to attract consumers looking for the Complainant’s services available through the website at “www. quintessentially.com”.
(v) The effect of the Respondent’s use of the Domain Names and the Respondent’s website is to tarnish and dilute the reputation of the Complainant.
(vi) Consumers have been, and will be, misleadingly diverted to the Respondent’s website. A Google search on the words “quintessentially “ and “concierge” brings up the Respondent’s website as the first result. It is entirely natural that customers and potential customers of the Complainant would search using those terms. The Respondent is aware of that, and chose the combination of words for the Domain Names in order to benefit from diverting consumers looking for the Complainant’s website, to the Respondent’s website.
(vii) The Respondent failed to respond to the Complainant’s representative’s cease and desist letter. Instead, the Respondent proceeded to register the Other Domain Names on November 7, 2006. It strains credulity to believe that an entirely unconnected third party registered these domain names and then arranged for them to point to the Respondent’s website, without instructions from the Respondent.
5.3 The Domain Names were registered and are being used in bad faith, for the following reasons:
(i) The Respondent would have been aware of the existence of the Complainant when he registered the Domain Names on May 3, 2004. The Complainant’s website at www.quintessentially.com went live in December 2000, and the Complainant began operating in the United States in 2001. It launched a New York office, with much attendant publicity, in February 2002. The Respondent would have been exposed to numerous online articles about the Complainant in 2003 and early 2004, and would have had access to articles featuring the Complainant in magazines such as Vogue and Vanity Fair in December 2003.
(ii) The independent concierge business is relatively new, and the Respondent’s decision to set up that business is highly unlikely to have been arrived at without some exposure to the concept from elsewhere. Any Internet search on the words “concierge” and “quintessentially” would have taken the Respondent to the Complainant’s website or the online media coverage referred to above.
(iii) The choice of the word “quintessentially” is unusual; that word is an adverb, and the adjective “quintessential” would have been more appropriate to describe something that was the “quintessence” of a service.
(iv) The use of the word “quintessentially” is inaccurate to describe the Respondent’s services, which do not match dictionary definitions, including “the pure and concentrated essence of a substance”, and “the most perfect embodiment of something”. The Respondent’s website is not of the same quality as the Complainant’s.
(v) The web page extract from the website of the Marble Falls/Lake LBJ Chamber of Commerce suggests that the Respondent’s first use of the name “Quintessentially Concierge” did not pre-date the Complainant’s application to register its QUINTESSENTIALLY mark in the United States (on June 21 2005). Any use of the QUINTESSENTIALLY mark commenced in the United States after June 21 2005 would be an infringement of the Complainant’s United States mark once registered, and is an infringement of the Complainant’s international registration, which has a priority date of June 22, 2005.
(vi) The registration of the Other Domain Names immediately after the Respondent received the letter from the Complainant’s representative, is further evidence of the Respondent’s bad faith. By November 7, 2006, the Respondent was indisputably aware of the Complainant, and the registration of the Other Domain Names was a calculated act, designed to compound disruption of the Complainant’s business by further confusing and diverting consumers away from the Complainant’s website towards the Respondent’s website.
(vii) The Respondent has intentionally intended to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and the services available on the Respondent’s website. The aim of the registration of the Domain Names was to take advantage of the confusion between the Domain Names and any potential complainant rights.’
(vi) The registration of the Domain Names has prevented the Complainant from reflecting its QUINTESSENTIALLY trademark in a corresponding Domain Name.
The Respondent contends the following:
1. The words “quintessentially” and “concierge” are recognized in dictionaries of every language. They should be available for use by anyone who may deliver a service that is “par excellence”.
2. The name “Quintessentially Concierge” has been registered with both State and Federal Governments to protect the Respondent’s business name, and so that others may not use it. The Respondent has no objection to other parties using either word on its own.
3. The Domain Names are not confusingly similar to the Complainant’s QUINTESSENTIALLY trademark. If someone wants a superior management experience in the Central Texas area, they will select “Quintessentially Concierge” for the service, and not “Quintessentially” (for the impersonal global experience).
4. The Complainant has erred by not reserving ownership of every use and combination of the words “quintessentially” and “concierge” with both global government entities and the Internet.
5. If the word “quintessentially” is queried in a search engine, all references to the word will be displayed for the average consumer to select the target of the search.
6. When the Respondent’s services are engaged, the Respondent’s client deals with a “quintessentially” personal/confidential relationship.
7. The Respondent was not aware when he named his business, of any other business using the name “Quintessentially”.
8. The Respondent has not offered to transfer the Domain Names to anyone. The Respondent is not a competitor of the Complainant in the open market.
9. The Respondent’s use of extraordinary words such as “Quintessentially Concierge”, is not at all suspicious or alarming; to the Respondent’s very close friends, he is acknowledged as an “enigma”.
10. The Respondent has a legitimate interest in the Domain Names, and was intuitive enough to protect his business by registering the name “Quintessentially Concierge” with every entity that he could imagine.
11. The Complainant has not produced any evidence of bad faith or fraudulent behaviour on the part of the Respondent. It could not, because no such evidence exists.
12. The Complaint is being presented for an improper purpose, such as to harass
the Respondent. The Complaint is not warranted under the Rules or under applicable
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:
(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
A. Identical or Confusingly Similar
The Panel finds this part of the Complaint proved.
Under paragraph 4(a)(i) of the Policy, the Complainant need only show that it has trademark or service mark rights at the time the Complaint is filed. In this case, the Complainant has proved that it has had registered rights in the mark QUINTESSENTIALLY in the United Kingdom from May 31, 2002, and internationally from June 22, 2005. So the Complainant has sufficiently proved that it has rights in the mark QUINTESSENTIALLY.
The Domain Names incorporate the Complainant’s QUINTESSENTIALLY mark
in its entirety. Numerous WIPO Panels have found that a domain name that wholly
incorporates the complainant’s registered mark may be sufficient to establish
confusing similarity for the purposes of the Policy – see, for example,
Nokia Group. v. Mr. Giannattasio Mario, WIPO
Case D2002-0782, and the decisions referred to at pages 4-5 of the decision
in that case. As noted by the three-member Panel in The Ritz Hotel. Limited
v. Damir Kruzicevic, WIPO Case D2005-1137,
there may be some cases where a domain name which incorporates in full another
party’s registered trademark will not be confusingly similar to that trademark
because sufficient additional letters or numbers have been added to the registered
mark to remove any confusion. But as in The Ritz Hotel case, that is
not the position here, where the word “quintessentially” is the
more distinctive part of the Domain Name, and the word “concierge”
is descriptive. As in The Ritz Hotel case, the addition of a term or
expression which is descriptive of the business operated by the complainant
(in this case “concierge”) serves only to increase the likelihood
of confusion (see the Ritz Hotel case at page 9 of the decision, and
the cases there referred to).
It is well-established that the suffix “.com” is generic, and is not to be taken into account in determining confusing similarity.
For the foregoing reasons, the Panel concludes that the Domain Names are confusingly similar to the QUINTESSENTIALLY mark in which the Complainant has rights.
B. Rights or Legitimate Interests
If the circumstances are sufficient to constitute a prima facie showing
by the Complainant of absence of rights or legitimate interests in the Domain
Names on the part of the Respondent, the evidentiary burden shifts to the Respondent
to show, by plausible, concrete evidence, that he does have a right or
a legitimate interest in the Domain Names (there are numerous WIPO decisions
where that approach has been adopted, see, for example, the decision of the
three-member panel in Phillip Morris Incorporated v. Alex Tsypkin,
WIPO Case No. D2002-0946, citing Do
The Hustle, LLC v. Tropic Web, WIPO
Case No. D2000-0624).
In this case, the Complainant has not authorised the Respondent to use the QUINTESSENTIALLY mark, whether in the Domain Names or otherwise, and the Panel has found that the Domain Names are confusingly similar to the QUINTESSENTIALLY mark in which the Complainant has rights. In those circumstances it is for the Respondent to prove that he has some right or legitimate interest in the Domain Names, either under one of the subparagraphs of Paragraph 4(c) of the Policy or on some other ground.
In combination, the matters listed below lead the Panel to the conclusion that the Respondent’s claim to rights or legitimate interests in the Domain Names must be rejected:
1. In his response, the Respondent says that Quintessentially Concierge was conceived and launched in the State of Texas in 1999 (the Panel’s emphasis). In his email dated February 4, 2007, he made substantially the same assertion, saying that he “devised the name/business concept in 1999, started the business, and have grown the business from its inception.”
But when the Panel visited the Respondent’s website on February 22, 2007, the Panel noted in the “About QC” section, under the heading “Professional Experience”, the statement that Quintessentially Concierge was established between June 1, 2006 and the present time. That statement is fundamentally inconsistent with the Respondent’s assertion that Quintessentially Concierge was launched in the State of Texas in 1999.
2. In his Response, the Respondent reproduced substantial parts of his curriculum vitae as it appears on the Respondent’s website, but he omitted to include the reference to the Quintessentially Concierge business having been established only between June 1, 2006 and the present time. The Panel can only conclude in the circumstances that the omission was deliberate.
3. The curriculum vitae included in the Response (and published on the Respondent’s website) covers the Respondent’s business and personal activities for a period going back at least as far as 1994. It contains no mention of the launch or establishment of any “Quintessentially Concierge” business, prior to June of 2006.
4. With its Complaint, the Complainant attached an extract from a website operated by the Chamber of Commerce for the area of Marble Falls/Lake LBJ, which referred to a “ribbon cutting” for Quintessentially Concierge, being an event which apparently occurred on or shortly before August 30, 2006. The Complainant clearly alleged in the Complaint that the appropriate inference to be drawn from this (independent) website reference, is that the Respondent’s business use of the name Quintessentially Concierge did not commence until at or about that time (i.e., August 2006).
The “ribbon cutting” website reference is consistent with the Respondent’s Quintessentially Concierge business having been launched some time after June of 2006, but seems inconsistent with the Respondent’s claim that the business was launched as long ago as 1999. The Complainant’s allegation therefore called for a clear response from the Respondent, but no explanation was offered, whether in the email of February 4, 2007 or in the formal Response.
5. The Respondent has produced no contemporaneous documents to support his assertion that the Quintessentially Concierge name was chosen, and business commenced under that name, from as early as 1999. One would have thought that if a Quintessentially Concierge business had been launched at that time, the Respondent would have been able to produce documents from around that period referring to the establishment of the new business, invoices from third party suppliers addressed to “Quintessentially Concierge”, or similar corroborating evidence that there was indeed a business operating in Texas from around 1999 under the name “Quintessentially Concierge”. The Respondent has not produced any such corroboration.
6. In the circumstances described in paragraphs 1 to 5 above, the Panel can only reasonably infer that the correct position is that stated on the Respondent’s website, namely that the “Quintessentially Concierge” business was not established until some time after June 2006. The Panel so finds.
7. The Respondent has offered no clear explanation for his choice of the Domain Names. In his Response, he appears to acknowledge that the words “Quintessentially Concierge” are extraordinary, but he asserts that his choice of them is “not at all suspicious or alarming”. He says that, to his very close friends, he is “acknowledged as an enigma”. He also asserts, apparently by way of further explanation for his choice of the Domain Names, that when his services are engaged, the client deals with him “in a quintessentially personal/confidential relationship”. But the word “quintessentially” hardly seems apt to describe the degree of confidentiality or one-on-one personal contact that may exist in a relationship. One could readily have understood the use of an expression such as “strictly confidential”, but in the Panel’s view “quintessentially confidential” and “quintessentially personal” are strained usages of the English language, and improbable choices for a self-professed linguist such as the Respondent.
Notwithstanding those unsatisfactory explanations, in an administrative proceeding such as this the Panel is not in a position to rule out the possibilities that the Complainant did, as he says, “conceive” of the personal concierge business concept in 1998 or 1999, and that he even thought of the name “Quintessentially Concierge” at that early stage. So, for the purposes of this administrative decision, the Panel will give the Respondent the benefit of the doubt on those matters and proceed on the basis that the Respondent may have conceived of the concept of a personal concierge service (which would operate under the name “Quintessentially Concierge”) back in 1999, but that he did nothing to advance or action the concept (apart from registering the Domain Names) until in or after June of 2006. In the absence of any actual use of the expression “Quintessentially Concierge” by the Respondent in the period prior to May 2004, the Respondent would not have acquired any rights in that expression by that date. The Panel accordingly finds, on the limited available evidence, that the Respondent had no trademark or service mark rights in “Quintessentially Concierge” when he registered the Domain Names.
8. The Respondent claims to be “savvy” in matters relating to the Internet, ICANN, WIPO, etc. That claim appears to be consistent with references in his curriculum vitae to his possessing “superior web page design and internet skills”, and to his having been involved in that area in the late 1990s. He has referred to carrying out the “tedious task” of making certain that the name was available “and not being used via the internet or in its geographic area of service”. He does not say precisely when he carried out that task, but the implication appears to be that it was in 1998 or 1999, and in any event before the Complainant’s website went live in December 2000. But the Respondent (whose business seeks to attract not only residents of Central Texas, but also visitors to that area) offers no explanation for a delay of some 5 years between his carrying out these “tedious” checks and the registration of the Domain Names in May of 2004. Even if a check for other Internet users of “Quintessentially” had been carried out as early as 1998 or 1999, it seems highly probable that a “savvy” Internet professional such as the Respondent (who, as the Panel has found, had not by May 1994 commenced business under the “Quintessentially Concierge” name) would have recognised that the position could have changed within the preceding five years and carried out another check immediately before registering the Domain Names. That check would inevitably have disclosed that an established international concierge business was then being operated (including in the United States) under the name “Quintessentially”.
9. The evidence sufficiently shows that by May of 2004 the Complainant had
been operating under the mark QUINTESSENTIALLY in the United States of America
for some two years, and that it had by then established a reputation in that
country such as would have supported a claim in the tort of passing off to protect
its goodwill in the business conducted under the mark. (It is not essential
for a successful claim under the Policy that a complainant should have registered
trademark or service mark rights when the Domain Names were registered - numerous
Panels have noted that common law trademark rights may be acquired by use sufficient
to give the mark a “secondary meaning” which denotes the user’s
goods or services. Even likely future use may in certain circumstances provide
a basis for a complainant to allege bad faith registration – as noted
by the panelist in Motorola, Inc. v R3 Media, WIPO
Case D2006-1393, “Panels have indeed held that an awareness of likely
use may in appropriate circumstances be a valid basis on which to find a violation
of the Policy….” (referring to Kudos Information Limited, Kudos
Information, Inc. v. Kudos Systems, Keith Pearson,
WIPO Case D2004-0015)). The New York
launch in particular attracted significant media attention.
10. It seems to the Panel to be more likely than not that a person who was about to become involved in the concierge business, and who was looking to attract to that business both local customers and visitors to his area by establishing a website, would have been keenly interested in the Complainant’s United States launch, and that it would have come to his attention. Indeed, the Respondent does not directly deny that one or more of the various 2003 and early 2004 publications referred to by the Complainant, which referred to the Complainant’s business, did come to his attention.
11. The Respondent does say that, when he named his business, he was not aware of any other business using the name “Quintessentially”. But that statement must be read in the context of his assertion that he “named” his business in 1999. If he did come up with the name in 1999, the statement is in all probability correct – the complainant had no business in the United States at that stage, and did not establish an Internet site until December 2000.
12. The Respondent submits in his Response that the words “quintessentially” and “concierge”, are just dictionary words, and that no-one can claim a monopoly in either of them. He says “I do not mind if others use either word, otherwise I might be the “Complainant””. He also says: “When I conceived my family business I thought of the name “Quintessentially Concierge” (not just one word) and immediately began … the tedious task to make certain that the name was available and not being used via the internet …”
The Respondent appears to be asserting that:
(i) no-one can claim trademark or other proprietary rights in an ordinary dictionary word such as “quintessentially”; and
(ii) the existence of a global concierge business operating under the QUINTESSENTIALLY mark should not prevent him from operating a local concierge business called “Quintessentially Concierge”.
Those views are wholly consistent with the Respondent being aware of the Complainant and its mark, but electing to proceed with the registration of the Domain Names in any event.
13. The combination of the factors listed above, leads the Panel to the view that, on the evidence produced, it is more probable than not that the Respondent was aware of the Complainant and its QUINTESSENTIALLY mark by 2004 when he registered the Domain Names.
14. If that is so, the Respondent could not have failed to appreciate the likelihood that web browsers looking for sites associated with the Complainant would be attracted to any website the Respondent might establish at the Domain Names. QUINTESSENTIALLY is the Complainant’s service mark, and “concierge” describes precisely the service the Complainant provides under the mark. Also, the Panel accepts the Complainant’s submission that a likely search method a browser looking for the Complainant’s website would employ, would be to key into a search engine the words “quintessentially” and “concierge”. Such a search would likely take a number of such browsers to the Respondent’s website, and the Panel concludes that the Respondent must have appreciated that likelihood. If he appreciated the likelihood and proceeded anyway, it is reasonable to conclude that he must have intended to attract to the Respondent’s website browsers looking for the Complainant. As the Respondent’s website is commercial in nature, the conclusion must be that the Respondent’s actions fall within the category of bad faith registration and use described at paragraph 4(b)(iv) of the Policy.
15. It follows from the matters listed in paragraph 1 to 14 above that the Respondent has not brought himself within any of the examples of rights or legitimate interests set out at paragraph 4(c) of the Policy. He did not establish his business until the latter part of 2006, and therefore neither he nor the business would have been personally known by the name “Quintessentially Concierge” when the Respondent registered the Domain Names in May 2004. The Respondent has not produced any evidence of “demonstrable preparations” to use the Domain Names in connection with a bona fide offering of goods or services, and in the Panel’s view his actual use of the Domain Names from and after June 2006 has been neither bona fide nor fair: bad faith use under paragraph 4(b)(iv) of the Policy can not provide a basis for a claim to a right or legitimate interest.
16. The Respondent has not advanced any other basis for the Panel to find that he has some right or legitimate interest in either of the Domain Names. The Panel therefore concludes that he has no such right or interest.
17. There are a number of other factors that reinforce the Panel’s conclusion in that respect. First, the Respondent says that he did not receive the email copy of the cease and desist letter dated October 24, 2006. He says that the letter was identified by his anti-virus software as being spam, and was not opened because of possible viral contagion. That explanation strikes the Panel as overly convenient and is not compelling. The Panel can think of no reason why a letter from a firm of lawyers, clearly and correctly addressed to the Respondent, would be identified as spam. In the absence of any more plausible explanation, and having regard to the matters listed in paragraphs 1 to 16 above, the Panel infers that the Respondent probably did receive the cease and desist letter, and elected not to respond to it. That finding is consistent with the other evidence which suggests that the Respondent has not been acting in good faith.
18. Secondly, the Respondent describes the Respondent’s website as having been “self-designed” – a matter on which he professes some pride. It appears that web design is indeed one of his skills. But in his February 4 email to the Center, the Respondent said that the original design was carried out by himself and his brother-in-law, and that Matthew Parker was contracted to carry out a re-design in October 2006. The Respondent has not produced the “original design”, and he has not explained the need for the involvement of Matthew Parker in a “re-design” (given the Respondent’s own web-design skills). Nor were these statements repeated in the Respondent’s formal response. In these circumstances there is no sufficient proof that any website design work was carried out before the latter part of 2006.
19. Thirdly, the Respondent has also elected not to explain the reason why the Other Domain Names, which point to the Respondent’s website, were registered under an “anonymous” identity shield by a different person. If the Respondent does own and control the Other Domain Names, why are they not registered in his name (as the Domain Names are)? If they are not owned or controlled by him, why was that fact not explained in his Response (with a brief description of the relationship between the Respondent and the registrant of the Other Domain Names, sufficient to explain why they were registered and why they resolve to the Respondent’s website)?
20. For the reasons set out above, the Panel finds that the Respondent has no right or legitimate interest in either of the Domain Names.
C. Registered and Used in Bad Faith
For the same reasons set out in section 6 B above, the Panel also finds that
the Domain Names have been registered and are being used in bad faith, they
having been used intentionally to attract, for commercial gain, Internet users
to the Respondent’s website by creating a likelihood of confusion with
the Complainant’s QUINTESSENTIALLY mark, as to the source, sponsorship,
affiliation, or endorsement of the Respondent’s website.
For all the foregoing reasons, in accordance with
Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the
Domain Names be transferred to the Complainant.
8. Reverse Domain Name Hijacking
It follows from the decision in this case, which is favourable to the Complainant, that this allegation by the Respondent must be dismissed.
Date: March 5, 2007