WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
S v. Internet Action Consulting
Case No. D2000-0439
1. The Parties
The Complainant is S, a corporation organized under the laws of the State of California, USA, with its principal place of business in Irvine, California, USA. S is a wholly owned subsidiary of AltaVista Company, a corporation headquartered in Palo Alto, California, USA.
The Respondent is Internet Action Consulting, an entity in Inglewood, California, USA.
2. The Domain Name and Registrar
The domain name at issue is www-s. The domain name is registered with Network Solutions, Inc. ("NSI").
3. Procedural History
The Complainant initiated this proceeding by filing a Complaint by email with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on May 16, 2000. On May 17, 2000, the Center received a hard copy of the Complaint. After confirming that the Complaint satisfied the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Center sent Respondent notice of the commencement of this proceeding on May 25, 2000. Copies of the notice were sent by email to the Respondent at the email address disclosed in Respondent�s registration, lctoliver@. (Compuserve had notified the Center that this new email address has replaced the former email address lctoliver@.) As required by Rule 2(a)(ii)(B), the Center also emailed the notice to postmaster@www-s. Both of these emails were returned to the Center as "undeliverable." The Center also sent the Notification to the Respondent by courier to the address listed in the registration, but that copy, too, was returned as undeliverable. In addition, the Center sent the Notification by email, courier and facsimile to the technical and zone contact listed in Respondent�s registration data, Registrar, Internic, but it is not clear whether those copies were forwarded on to the actual Respondent.
Respondent did not submit any response by the June 13, 2000 deadline. Accordingly, on June 15, 2000, the Center notified Respondent by email that Respondent was in default. Again the email was returned as "undeliverable."
On June 23, 2000, the Center appointed David H. Bernstein as the sole panelist in this matter.
On June 26, 2000, the Panel received the case file by courier. On June 29, 2000, after completing a preliminary review of the case file, the Panel issued a Request For Further Submissions from the parties, pursuant to Rule 12. This interim order requested that the parties submit the following information:
"Respondent should disclose whether and when it first received notice (either from Complainant, the Center, or its technical contact) of the complaint, and whether and when it first received the Center�s official Notification of Commencement.
"Complainant shall submit evidence of whether the complaint it sent to Respondent on May 15, 2000 (Complaint � 48) was actually delivered to Respondent. Complainant also shall provide any further information it had as of the date it filed the complaint (such as information it developed through any investigation) on Respondent�s whereabouts or how Respondent may be contacted.
"Complainant shall submit a full and complete copy of its and its affiliates� trademark file wrapper or wrappers for any and all applications to register the marks SHOPPING or SHOPPING.COM, or any other mark containing those terms, including a copy of all submissions to and from the relevant trademark office. Such file wrappers should be submitted regardless of whether they concern a registration that is active, cancelled or expired, or an application that is pending or abandoned."
Although the Center�s efforts to notify the Respondent of the commencement of this proceeding satisfied the Center�s obligations under Rule 2(a) (requiring the Center "to employ reasonably available means calculated to achieve actual notice to Respondent"), in a further effort to achieve actual notice, the Panel directed the Center to distribute the Request to Respondent at all known email, facsimile and courier addresses, including the addresses previously used. The Panel also requested that the Center expressly ask the Respondent�s technical and zone contact to send the Request (as well as the previously distributed Complaint) to the registrant of the domain name at issue, and that the Center send the Request, along with copies of the Complaint (without exhibits), Notification of Commencement and Notification of Default, to the following additional email addresses found on the Respondent�s websites located at www-s and whereigos (a second website disclosed in the Complaint):
postmaster@whereigos
whereigoshopping@
lctoliver@
postmaster@
On July 6, 2000, the Center received Complainant�s further submission via facsimile; the fax was more than 100 pages long. Respondent did not file any submission. After receiving the submission by courier from the Center on July 10, 2000, the Panel noted that some pages of the fax were illegible due to transmission problems, and some of the requested materials were missing.
In a Second Request For Further Submissions, dated July 11, 2000, the Panel requested, pursuant to Rule 12, that the Complainant resend its additional material by courier and check to ensure that it included all the requested material. The Panel received the further submissions by courier from the Center on July 19, 2000. Among the materials submitted by Complainant was proof that Complainant sent a copy of the Complaint to Respondent, and that the package was personally signed for by "L. Toliver," the Respondent�s administrative and technical contact. This evidence is conclusive proof that, not only did the Center comply with Rule 2(a), but, in fact, Respondent received actual notice of the filing of this matter.
Once the matter was fully submitted, the Panel reset the date for decision to July 28, 2000, pursuant to Rule 10(c).
4. Factual Background
The Rules provide that, in the event that a party defaults by failing to comply with any provision of or requirement under the Rules, "the Panel shall draw such inferences therefrom as it considers appropriate." Rule 14(b). Furthermore, even in the absence of a Response, the Panel is charged with rendering its decision "on the basis of the statements and documents submitted." Rule 15(a). See also Rules 5(e), 14(a) (when respondent defaults, Panel shall "proceed to a decision on the complaint").
Given Respondent�s failure to submit an answer in a timely fashion, the Panel accepts as true all of the allegations of the Complaint. See Talk City, Inc. v. Michael Robertson, Case No. D2000-0009 (WIPO Feb. 29, 2000), � 5(d). Those facts include the following:
In July 1997, Complainant registered the domain name s with NSI. Since December 1997, Complainant has used the s domain name to identify its company and services. Complainant describes itself as "an e-commerce service and infomediary that provides customers with the information necessary to make personalized buying decisions and gives retailers the ability to reach a large customer base through its website" (Complaint � 13). Complainant was also an online retailer until March 2000. The Complainant states that it has invested extensive resources to publicize the s designation, and has widely used that designation in commerce (see Complaint � 16).
Complainant has filed several applications with the United States Patent and Trademark Office to register marks utilizing "shopping" or "s," including "s" and "." Neither of these applications has matured to registration. To the contrary, in August 1999, the examining attorney preliminary refused registration of "s" because the mark is merely descriptive of Complainant�s services. Complainant filed a response to that office action on February 17, 2000, arguing that "s" is not merely descriptive and, in any event, has acquired secondary meaning. The Trademark Office has yet to rule on that submission.
Complainant had similar difficulty trying to register . Twice, the examining attorney rejected Complainant�s arguments in favor of registration because the mark was merely descriptive. After the examining attorney issued a final refusal, the Complainant abandoned that application on September 9, 1999.
In July 1998, Respondent Internet Action Consulting registered the domain name www-s with NSI. The name appears to be designed to capture typo traffic � here, users who type a hyphen rather than a dot after a "www." Until about May 7, 2000, Respondent offered services that were in direct competition with Complainant�s services. Thereafter, until approximately June 29, 2000, the home page of www-s indicated that the website had been "shut down." By clicking on a link on the page, visitors could be linked to the "Brand New Store" on the website whereigos. This name was also registered by the Respondent, and the site provides services that are in direct competition with the Complainant�s services.
The Respondent did not respond to Complainant�s cease and desist letters.
5. Discussion
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the "Policy") have been satisfied:
(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Although the Respondent�s use of a deliberate typographical error to attract users to its competing website smacks of bad faith, the Complainant has failed to establish the first element of the Policy because Complainant has not established rights in the trademark or service mark "s."
There can be no question but that "shopping" is a generic term for the services offered at Complainant�s website. The definitions of the word "shopping" include: 1. "To visit stores in search of merchandise or bargains" and, 2. "To look for something with the intention of buying it." (American Heritage Dictionary of the English Language (3rd ed. 1996)). By its own description, Complainant uses s to "provide[] customers with the information necessary to make personalized buying decisions and give[] retailers the ability to reach a large customer base through its website" (Complaint � 13). Moreover, the term "shopping" refers to a particular activity that cannot easily be described with a different word.
Similarly generic is the designation ".com." As the Trademark Office noted in its first office action against the application to register s, .com merely "denot[es] that the applicant is a commercial on line entity" and thus "has no trademark significance." Adding the designation ".com" to a generic word may indicate a site where those generic goods or services can be obtained, but it does not transform the generic word into a protectible mark.
In its response to the Trademark Office�s office action, Complainant asserted that it has invested more than $8 million in advertising and marketing for its s designation and website. Although impressive, these efforts to establish secondary meaning fail as a matter of law because generic terms can never function as trademarks, and no amount of secondary meaning can convert a generic term into a trademark.
For these reasons, the Panel concludes that Complainant has failed to establish rights in the service mark "s" for the purposes of satisfying Paragraph 4(a)(i) of the Policy. The Panel therefore rejects its claim of abusive domain name registration against Respondent.
It is important to note that, although the Panel has found on this record that s is generic, this is not a definitive determination. The ultimate decision as to whether Complainant does or does not have proprietary rights in that designation is better left to the Trademark Office or a court. In the event that the Trademark Office should agree to register s as a trademark on the principal register without requiring a disclaimer of the word "shopping," or should a court hold that s is a protectible trademark, then Complainant may refile this proceeding and seek transfer of the domain name, and this decision is without prejudice to any such further proceedings.
As mentioned above, it is worth noting that, notwithstanding the Complainant�s failure to satisfy the first element of the Policy, Complainant has shown Respondent�s bad faith. Based on the fame of the s website and the minor variation between the Complainant�s and Respondent�s domain names, it appears that Respondent�s registration and use of the domain name www-s was done to trade on mistakes by users seeking Complainant�s website. It is difficult to imagine any legitimate purpose for registering a domain name based on a typographically erroneous variation of Complainant�s domain name. See Oxygen Media, LLC v. Primary Source, Case No. D2000-0362 (WIPO Jun. 19, 2000) � 6(B) (addressing substitution of digit zero for letter "o" in ).
6. Decision
Complainant has failed, on this record, to establish trademark rights in the designation "s." Accordingly, Complainant has failed to satisfy Paragraph 4(a)(i) of the Policy. The Panel therefore rejects Complainant�s claim of abusive domain name registration against Respondent, and denies its request that the Panel ask the registrar to transfer the domain name "www-s" from Respondent to it.
___________________
David H. Bernstein
Panelist
Dated: July 28, 2000
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