WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Capt�n Snooze Management Pty Limited v. Domains 4 Sale
Case No. D2000-0488
1. The Parties
The complainant is Capt�n Snooze Management Pty Ltd (ACN 006 232 720), the management company of Capt�n Snooze Pty Ltd, having its principal place of business at 21A Shierlaw Avenue, Canterbury, Victoria, Australia 3126 ("the Complainant").
The respondent is Steve Gregory d/b/a Domains 4 Sale, of Angeles City, 2009 Philippines (the Respondent").
2. The Domain Name and Registrar
The domain name the subject of this dispute is "" ("the Domain Name"), which was first registered on October 24, 1997.
The registrar of the domain name is Network Solutions Inc. of Herndon, Virginia, USA ("the Registrar").
3. Procedural History
A Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), both of which were implemented by ICANN on October 24, 1999, was received by WIPO in electronic format on May 24, 2000, and in hard copy on May 31, 2000. The latter was accompanied by payment in the required amount for a single Panelist.
On May 25, 2000, a formal Acknowledgment of Receipt (Complaint) was sent to the Complainant.
On May 25, 2000, a Request for Registrar Verification was sent to the Registrar, requesting confirmation that it had received a copy of the Complaint from the Complainant, that the domain name was currently registered with it and that the Policy was in effect, and requesting full details of the holder of the Domain Name and advice as to the current status of the Domain Name.
On May 30, 2000, the Registrar advised that it had not received the Complaint, but that it is the registrant of the Domain Name, that the Respondent is the holder of the Domain Name, confirming the Respondent�s contact details, advising that the Registrar�s 5.0 Service Agreement was in force, and advising that the Domain Name was in �Active� status.
On May 31, 2000, the Complaint was checked by WIPO for compliance with the Policy, the Rules and with the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") and was verified as being satisfactory.
On May 31, 2000, the formal requirements having been met, a Notification of Complaint and Commencement of Administrative Proceeding was sent to the Respondent and the Registrar, advising that the formal date of commencement of the administrative proceeding was June 2, 2000, and that accordingly the Response was due by June 21, 2000. The Notification was also sent by email and courier to the Respondent�s Administrative/Billing contact and Technical/Zone contact.
On June 20, 2000, a Response pursuant to the Policy, the Rules and the Supplemental Rules was received by WIPO.
On June 22, 2000, in view of the Complainants designation of a single panelist, WIPO invited Clive Elliott ("the Panel") to serve as the panelist in this Proceeding and transmitted a Request for Declaration of Impartiality and Independence to the Panel.
On June 23, 2000, a Statement of Acceptance and Declaration of Impartiality and Independence was received from the Panel.
On June 27, 2000, a Notification of Appointment of Administrative Panel and Projected Decision Date ("the Appointment Notification") was sent to the Complainant and the Respondent. In accordance with the Complainant�s request, the Appointment Notification informed the parties that the Administrative Panel would be comprised of a single panelist, Mr. Clive Elliott, and advised that the decision should be forwarded to WIPO by July 10, 2000.
On June 27, 2000, the case file was transmitted to the Panel.
Having reviewed the file, the Panel is satisfied that the formal requirements of the Administrative Proceeding have been satisfied.
A number of further steps of a procedural nature have taken place, as follows.
On June 27, 2000, a Reply to Respondent�s Response was received by WIPO, accompanied by a request that the Reply be taken into account in accordance with Rule 12 of the Policy. The Panel assumes that the Complainant intended to refer to para 12 of the Rules, which allows the Panel, at its discretion, to request further statements or documents from either of the Parties.
On June 28, 2000, an objection to the Reply was received by WIPO, alleging that the Reply raised new issues and requesting that the Reply be disregarded. Alternatively, the objection requests that if the Reply is to be taken into account, the Respondent should be permitted an opportunity to respond to the new issues raised in the Reply.
On June 28, 2000, an answer was received to the Respondent�s objection, alleging that the Reply was confined solely to matters raised for the first time in the Response.
4. Factual Background
Complainant
The Complainant asserted and provided evidence in support of the following, which is accepted by the Panel.
The Complainant has a registered trademark and associated designs for CAPT�N SNOOZE in classes 20, 22 and 24 in Great Britain, Northern Ireland, Hong Kong SAR of China, Malaysia, Singapore, Thailand, Indonesia, China, Canada and New Zealand, and in classes 1, 32, 42 and 44 in the USA.
The Complainant has registered trademarks and associated designs for CHOOZE SNOOZE and CAPT�N SNOOZE in Australia, and one registration for the word SNOOZE alone, applied for on March 13, 1998.
The Complainant is the owner of the following domain names, which were registered on the dates given ".au" (August 17, 1999), "" (February 25, 2000), "captn.au" (July 11, 1996) and "captn" (February 21, 2000).
The Complainant has sought to protect against infringement of its intellectual property and business reputation by registering the trademark in order to market and promote its range of bedroom furniture and bedding in the international market place.
The Panel notes that the Respondent has provided evidence showing that the Respondent has offered the Domain Name for sale to the public via its website and has attached a minimum price of US$50,000 to the Domain Name.
Respondent
The Respondent asserted and provided evidence in support of the following, which is accepted by the Panel.
As noted above, the Respondent registered the Domain Name on October 24, 1997. The Complainant applied for the Australian trademark SNOOZE on March 13, 1998, and the application was not published until early 1999.
The Panel notes that trademark applications are searchable on the Australian Trade Marks Office website soon after they are lodged.
5. Assertions
Complainant
In relation to para. 4(a)(b) and (c) of the Policy and Rules, para. 3(i) of the Policy, the Complainant makes a number of assertions.
Firstly, the Domain Name is identical or confusingly similar to the Complainant�s registered trademarks.
Second, the use of the Domain Name by any party other than the Complainant would be likely to mislead and deceive customers of the Complainant.
Third, the Respondent does not have any right or legitimate interests in respect of the Domain Name as it does not hold any such trademark, nor operate any business under or in connection with the Domain Name.
Fourth, the Respondent has registered the Domain Name in bad faith, in that it registers many Domain Names for the purpose of profiting from the sale of the Domain Names and seeks a minimum bid of $50,000 for the Domain Name.
Fifth, the Respondent has not used the Domain Name to develop a website in connection with the legitimate operation of any business that in any way relates to the use of the Domain Name.
Sixth, the Respondent by offering the Domain Name for sale is infringing upon the rights of the Complainant to its intellectual property rights by requiring the Complainant to bid or purchase for the right to use the Domain Name.
Seventh, the registration of the Domain Name by the Respondent has no legitimate commercial use for Respondent as it does not conduct any legitimate commercial or non-commercial business in Australia.
Eighth, the Respondent has not licensed or permitted the Respondent to use its trademarks.
Ninth, any sale by the Respondent to a third party will not allow the third party to use the Domain Name, as use of the Domain Name by anyone other than the Complainant will infringe upon the intellectual property rights of the Complainant.
The Complainant also cites WIPO Decision Nos. D1999-0001 and D2000-0003 as authority for its request to have the domain name transferred, but does not refer to any particular part of those decisions.
Respondent
The Respondent has provided a detailed Response, making a number of assertions.
Firstly, the Respondent had not heard of the Complainant or its trademark prior to this dispute and the Domain Name is a common word in the English language. In support of this allegation, the Respondent refers to WIPO Decision No. D2000-0016, where the same Respondent succeeded in retaining the domain name "", which it had registered in similar circumstances to those at issue in this Proceeding.
Second, the Respondent has a legitimate interest in the Domain Name.
Third, the Respondent did not register the Domain Name with an intention of selling it to the Complainant. In support of this assertion, it refers to the dates of registration of the Domain Name and the SNOOZE trademark respectively.
Fourth, the Respondent has not acted improperly in registering the Domain Name, as the registration of generic domain names with an intention of profiting thereby is legitimate. Accordingly, the Complainant�s accusations of bad faith are baseless and should be rejected.
Fifth, none of the four factors identified in the Policy as constituting bad faith applies to the Respondent�s conduct. In particular, the Respondent has never solicited the Complainant to purchase the Domain Name and did not register the Domain Name with an intention of selling it to the Complainant. The Respondent and Complainant are not competitors and as described above had not heard of the Complainant until receiving the Complainant�s cease and desist letter. Finally, the Respondent had no intention of attracting or confusing those looking for the Complainant, nor has attempted to imply any affiliation or endorsement with the Complainant.
Sixth, the Complainant�s CAPT�N SNOOZE and CHOOZE SNOOZE marks are not identical or confusingly similar to the Domain Name and no confusion with the generic word SNOOZE used as a domain name is likely.
Seventh, although the Complainant has an Australian trade mark registration for SNOOZE there is no claimed or actual use of the SNOOZE mark, nor is there any evidence of use of the mark on the Complainant�s websites. There is similarly no evidence that the SNOOZE mark is famous and deserving of protection in every top-level domain, and there is no evidence suggesting that confusion has occurred or is likely. Even if initial confusion occurred, this would quickly be dispelled when the website attached to the Domain Name was accessed. In addition, the SNOOZE trade mark is marked with an endorsement under Section 44(3)(b) of the Australian Trade Marks Act 1995, which implies that the Complainant�s registration of SNOOZE was only permitted due to another potentially confusing mark.
Eighth, the Domain Name is a common word in the English language and due to the geographical nature of trade marks there are thousands of potential claimants who could claim rights to this particular Domain Name. The Respondent has merely registered common words and phrases that he believes may have value in an attempt to maximize that value, and there is nothing improper or unlawful in doing so, providing this does not equate to an attempt to extort money from a trade mark holder.
Ninth, there are many uses to which the Respondent or a third party could put the Domain Name to without infringing upon the rights of the Complainant.
Complainant�s Reply to the Respondent�s Response
The Complainant�s Reply makes a number of points:
Firstly, the Policy does not require proof of actual knowledge of a trademark�s existence for an allegation of bad faith to be made out, citing WIPO Decision No. D2000-0054.
Second, the availability of other domain names is irrelevant to whether a registration was applied for in order to prevent a complainant registering a domain name corresponding to its registered trade marks, again citing WIPO Decision
No. D2000-0054.
Third, the word SNOOZE is an integral component of the Complainant�s trade marks and the Domain Name is confusingly similar thereto.
Fourth, domain name speculation is not a legitimate enterprise and accordingly does not grant a legitimate right and interest in a domain name, again citing WIPO Decision No. D2000-0054.
Fifth, the Respondent has a history of registering domain names he does not intend putting to commercial use other than to prevent other parties with legitimate rights to those names from reflecting those rights in a corresponding domain name. Accordingly the registration is not fair or in good faith.
6. Discussion and Findings
Para 4(a) of the Policy requires that the Complainant must prove each of the following:
(i) the Domain Name is identical or confusingly similar to the Trade Mark: and
(ii) the Respondent has no right or legitimate interest in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Para 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by para 4(a)(iii) referred to above.
Para 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in para 4(a)(ii) referred to above.
Exercise of discretion
The Panel notes the Complainant�s request that the material contained in the Reply to the Respondent�s Response be considered by the Panel, and the Respondent�s request that it be permitted to file evidence in reply should the Reply be taken into consideration by the Panel.
The Panel considers that where a new matter is raised in a response under the Policy, it is fair and just that the Complainant be given an opportunity for further comment. However, such comments should be strictly limited to those issues raised for the first time in that response. The Panel notes that this view has been adopted by the Panel in a number of earlier decisions, including WIPO Decision No. D2000-0030.
Accordingly, the Panel has taken the comments made by the Complainant in the Reply into account.
The Panel does not consider it necessary to allow the Respondent an opportunity to reply, as the Panel has found that, on the evidence provided, the Complainant has not proven the necessary elements of its claim and has decided this Proceeding in favor of the Respondent.
Identical or confusingly similar
The Domain Name consists solely of the word SNOOZE.
The Complainant has two �sets� of trade marks on which it places reliance.
The first is its Australian trade mark registration for the word SNOOZE, supported by its registrations of the domain names ".au" and "". The Complainant has not provided evidence as to why these registrations were obtained. As all three of these registrations were obtained a significant period after the Domain Name in dispute was registered, the Panel does not consider them an appropriate basis for the current claim.
The second are the Complainant�s registrations for CAPT�N SNOOZE and CHOOZE SNOOZE.
In all countries other than Australia and New Zealand the Complainant�s trade mark registrations are solely for a stylized trade mark that features the words �Capt�n Snooze�, in combination with a night-cap located over the letters �OO�, making these letters resemble eyes.
In Australia, there are also registrations for the night-cap alone, the words CAPT�N SNOOZE and CHOOZE SNOOZE, and a different stylized trade mark, where the word CAPT�N is presented above and in a smaller size font than the word SNOOZE, which in turn appears above a drawing of an apparently seafaring gentleman reclining and appearing to be asleep.
In New Zealand, there are only registrations for the words CAPT�N SNOOZE alone. These registrations contain a disclaimer stating that the registration does not give any right to the exclusive use of the word SNOOZE.
Prima facie, the Panel does not consider that the word SNOOZE is either identical or confusingly similar to either the trade mark CAPT�N SNOOZE or the trade mark CHOOZE SNOOZE, whether in the stylized formats used by the Complainant or for the words alone. The name selected by the Complainant is a distinctive mark that combines two generic words to make a distinctive combination under which it trades and promotes its products.
This prima facie opinion could be altered by evidence showing that the Complainant�s use of the trade mark was such that it was entitled to protection for the word SNOOZE alone.
However, while asserting that any use of the Domain Name by any other party would be likely to mislead or deceive the Complainant�s customers, the Complainant has not filed any evidence in support of this claim. Nor has the Complainant provided evidence suggesting that it uses the word SNOOZE alone in its advertising, marketing, promotion, or sale of the business or its products, whether in Australia or in any other country the Complainant or the products it promotes and sells. Nor has the Complainant provided evidence that it or its products are known colloquially or otherwise by the word SNOOZE alone. In addition, while not required to do so, in an attempt to get a better feel for the manner in which the Complainant actually uses its trade marks the Panel has reviewed the Complainant�s website located at ".au" it is noted that the Complainant frequently and consistently refers to itself as Capt�n Snooze, with occasional use of the trade mark Chooze Snooze. The Panel was unable to locate even a single occurrence of the word SNOOZE used alone in a trade mark sense.
While revealing a likelihood that the Complainant has a substantial reputation, at least in Australia, neither the evidence before it nor the Panel�s own research suggest that this reputation extends to use of the word SNOOZE alone, which is, as the Respondent has noted, a common word in the English language.
For these reasons, the Panel�s initial view that the Domain Name is not confusingly similar to the Complainant�s trade marks has not been displaced by the evidence of the Complainant or otherwise.
In the Complainant�s Reply to Respondent�s Response, the Complainant notes that the word SNOOZE is an integral part of the Complainant�s other trademark registrations. While accepting that this may be so, this does not entitle the Complainant to protection for that word alone.
It is acknowledged that the word "snooze" may not necessarily fit with the category of words which are inevitably and on their face generic and/or highly descriptive. However, in the Panel�s view "snooze" is to a degree descriptive and in this respect the Respondent�s claim that it has merely registered a common word or phrase, which has its own inherent commercial value cannot be simply rejected and must be given some weight. Likewise, the onus rests on the Complainant and in the final analysis it is felt that the Complainant has not done enough to shift it.
Accordingly, the Panel finds that the Complainant has not established that the Domain Name is identical or confusingly similar to the Complainant�s trademarks. Accordingly, para 4(a)(i) of the Policy is not satisfied and the Panel need not consider this matter further.
7. Decision
The Complainant has failed to meet the requirements of para 4(a)(i) of the Policy and accordingly the Complaint against the Respondent is dismissed.
Clive L. Elliott
Panelist
Dated: July 10, 2000
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