WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Windsmoor (London) Limited v. Balata Inc
Case No. D2006-0262
1. The Parties
Complainant is Windsmoor (London) Limited, London, United Kingdom of Great Britain and Northern Ireland.
Respondent is Balata Inc, Tel Aviv, Israel.
2. The Domain Name and Registrar
The disputed Domain Name is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2006. On March 2, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On March 3, 2006, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March�28,�2006. Respondent sent an email with short comments on March�8,�2006. On March 15, 2006, the Center acknowledged Respondent’s comments inviting the same to forward its Response to the Complaint. The Center notified Respondent’s default on March 29, 2006. Respondent on the same date informed the Center that he had already responded to the Complaint with its email of March 8, 2006.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on April�4,�2006. 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.
The language of the proceeding is English.
4. Factual Background
Complainant has been registered in England and Wales under the name Windsmoor (London) Limited since January 1, 1946. Complainant is a company within the Jacques Vert Group, which designs, manufactures and sells ladies clothing and accessories under the name Windsmoor as evidenced by the brochures and labels provided and by its website at . Complainant holds, either directly or via its fellow subsidiary, Baird Textile Holdings Limited, registrations of the Windsmoor trade mark around the world in respect of clothing and accessories, including the following: European Community Trade Mark No. E547257 filed in May�1997, UK Trade Mark No. 2218158 filed in December 1999 and UK Trade Mark No.�576500.
Complainant registered the Domain Name on April 1997.
Respondent registered the disputed Domain Name on September�21, 2004.
5. Parties’ Contentions
A. Complainant
Complainant claims that:
1) The Domain Name is identical to the WINDSMOOR trade mark and to the Windsmoor domain name, , which Complainant registered in April 1997;
2) Respondent has no legitimate interest in the Domain Name and is not authorized by Complainant to use the mark or name Windsmoor,
3) Due to the reputation of Complainant, it is reasonable to assume that Respondent must have known of its existence at the time it registered the Domain Name;
4) The Domain Name is being used as a portal to websites selling clothing and accessories, none of which relates to Complainant;
5) The Domain Name in the hands of Respondent is being used in bad faith,
6) It was registered for the purposes of selling it as evidenced by the “THIS DOMAIN IS FOR SALE” sign on the website;
7) It is being used by Respondent in a way which will inevitably confuse people or businesses into believing that the Domain Name is registered or otherwise connected to Complainant;
8) By using a domain name confusingly similar to that of Complainant and offering and/or selling the very same products as those of Complainant, Respondent obviously intended to benefit from Complainant’s trademark;
9) It is one of a series of registrations that Respondent has made, which because of their number, type and pattern, prove that Respondent is in the habit of making registrations of domain names which correspond to trade marks or other well known names in which Respondent has no apparent interest.
10) Respondent has already been involved in several proceedings: i.e. Marionnaud Parfumeries v. Balata, Inc., WIPO Case Nos. D2005-0291 and Boscolo Tours S.p.A. v. Balata Inc., D2005-0970 and Nominet UK DRS Nos. 02370, 02863,02455 and 02462, all disputes against Respondent on similar grounds to the above in which the respective domain names were transferred to Complainant.
11) Respondent has also registered the domain name another trade mark of the Jacques Vert Group and , another well known clothing business in the UK, both of which lead to the same portal. This series of registrations must render the Domain Name registration automatically abusive.
B. Respondent
Respondent replied to Complainant’s contentions affirming, without providing any proof to sustain its arguments, that: “The domain was bought because it is combined of two generic words: Winds & Moor (Moor – anchora boat). We bought this domain in order to provide Cruise and Travel information. The Complainant has a trademark on jewelry, clothing and footwear etc. our website doesn’t provide any information related to the Complainant’s trademark. Therefore, we don’t see any reason for confusion with the Complainant’s trademark.”
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy lists three elements that Complainant must prove to merit a finding that the domain names registered by Respondent be transferred to Complainant:
1) the domain name is identical or confusingly similar to a trademark or service mark (“mark”) in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is identical to Complainant’s trademark WINDSMOOR, the only difference being the gTLD .com. As was affirmed in Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 “the addition of the generic top-level domain (gTLD) name ‘.com’ is … without legal significance since use of a gTLD is required of domain name registrants”).
Respondent did not deny that Complainant owns trademark registrations for WINDSMOOR, but submits that Respondent registered (“bought”) the domain name because it is combined of two generic words: Winds & Moor.
Regarding Respondent’s claim that the domain name is a combination of two generic terms, the Panel refers to the decision in The Cyberbingo Corporation v. 207 Media Inc. WIPO Case No. D2005-0714: where it was observed that: “many panels have held that a panel lacks authority to ignore valid trademark registrations which have been subject to examination and opposition. Christie v. Porcaro, WIPO Case No. D2001-0653; Hola S.A. v. Idealab, WIPO Case No. D2002-0089.”
“Other panels have held that the propriety and wisdom of considering lack of distinctiveness of a registered trademark is better suited to Courts pursuant to cancellation or invalidity proceedings which provide a fuller procedure with respect to documentation, viva voce evidence and cross-examination. (The Amazing Kreskin v. Gerry McCambridge, WIPO Case No.�D2000-1730).”
“This Panel believes that the Registered Trademarks for CYBERBINGO are prima facie evidence of validity and the proper forum for considering if the trademark CYBERBINGO lacks distinctiveness is cancellation or invalidity proceedings”.
With respect to Paragraph 4(a)(i) of Policy, the Panel finds that Complainant has rights in the trademark WINDSMOOR and that the domain name is identical to a registered trademark in which Complainant has established rights.
B. Rights or Legitimate Interests
Complainant must show that Respondent has no rights or legitimate interests in respect of the disputed domain name. A respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
a) that before any notice to respondent of the dispute, he or she used or made 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;
b) that respondent is commonly known by the domain name, even if he or she has not acquired any trademark rights; or
c) that respondent intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Respondent has no connection or affiliation with Complainant, who has not licensed or otherwise authorised Respondent to use or apply for any domain name incorporating Complainant’s trademark. Respondent has not given any facts or elements to justify prior rights and/or legitimate interest in the disputed domain name. Respondent does not appear to make any legitimate use of the domain name for non-commercial activities. On the contrary, Respondent is, for his own commercial gain, diverting internet users looking for Complainant’s services to the website associated with the disputed domain name, where competing products similar to those of Complainant (i.e. clothing) are offered.
Accordingly, the Panel finds that Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to 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 holder’s documented out-of-pocket costs directly related to the domain name; or
ii) the holder 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 holder has engaged in a pattern of such conduct; or
iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s web site or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s web site or location or of a product or service on the holder’s web site or location.
Accordingly, for a Complainant to succeed, the Panel must be satisfied that the domain name has been registered and is being used in bad faith.
As regards Respondent’s use of the domain name, it appears that, before the start of the present proceeding, Respondent’s domain name was used to present to Internet users a webpage on which several hyperlinks were displayed. By clicking on these hyperlinks, users were directed to competing third parties commercial websites. While, actually presented on the website “www.” are several hyperlinks related to various items: travel, business, shopping etc.
By deflecting users, Respondent has shown bad faith use of the domain name that clearly falls within the example given in paragraph�4(a)(iv) of the Policy: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
The content which related to the clothing field, namely Complainant’s field of activity, set by Respondent on the webpage “www.” is also an inference of Respondent’s knowledge of Complainant’s trademarks and activity at the time it applied for the disputed domain name. In Cr�dit�Industriel et Commercial S.A. v. La Porte Holdings, Inc., WIPO Case No.�D2004-1110 it was affirmed that “It is obvious, mainly from the categories of hyperlinks used by the Respondent on the litigious websites (banking and financial), that the latter was well aware of both Complainant’s identity and activities.”
The fact that Respondent registered several domain names corresponding to third parties registered trademarks among which there is also the domain name , corresponding to another of Complainant’s registered trademarks, is further inference that Respondent had actual knowledge of Complainant’s activity and trademarks.
In view of the above and in the absence of contrary evidence, the Panel finds that there are good reasons to believe that Respondent had actual knowledge of Complainant’s trademarks when it registered the disputed domain name. The Panel, in accordance with previous decisions issued under the UDRP, is of the opinion that actual knowledge of Complainant’s trademark and activities at the time of the registration of the disputed domain may be considered an inference of bad faith (See�Parfums Christian Dior v. Javier Garcia Quintas and C, WIPO Case No.�D2000-0226 and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No.�D2000-1409, “It is inconceivable that the Respondent could make any active use of the disputed domain name without creating a false impression of association with the Complainant. The Respondent was not authorised by the Complainant to use neither its mark nor any of the disputed domain names”.
The advertisement “this domain name is for sale”, placed on the website “www.”, suggests that Respondent intended to sell the disputed domain name.
Finally, as evidenced by Complainant, Respondent has already been recognized as having registered and used several domain names in bad faith. This Respondent has in fact been involved several administrative procedures such as: Marionnaud Parfumeries v. Balata, Inc. WIPO Case No D2005-0291 and Boscolo Tours S.p.A. v. Balata, Inc., WIPO Case No.�D2005-0970
In view of the above, the Panel finds that Respondent’s activities create a pattern of conduct, since Respondent appears to be engaged in the registration of a series of third parties trademarks.
It is the Panel’s opinion that Respondent’s activities demonstrate bad faith registration and use pursuant to Policy paragraph 4(b)(ii). See, Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No.D2004-0430, where the Panel affirmed that the fact that respondent has been involved in a large number of cases under the UDRP proves that respondent’s use and registration of the disputed domain names fall within the concept of bad faith.
7. Decision
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 name be transferred to Complainant.
Fabrizio Bedarida
Sole Panelist
Dated: April 18, 2006
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