WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
S Inc. v. USA-Host, David Feldman
Case No. D2007-0800
1. The Parties
Complainant is S Inc. of Boston, Massachusetts, United States of America, represented by Kenyon & Kenyon, United States of America.
Respondent is USA-Host, David Feldman of Alpharetta, Georgia, United States of America.
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 May 31, 2007. On June 1, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On June 1, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 June 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 3, 2007. The Response was filed with the Center on June 26, 2007.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on July 24, 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.
4. Factual Background
Complainant is S, Inc. and it is one of the largest retailers on the Internet focused on footwear and related apparel. Complainant has partnerships with over 250 manufacturers and represents over 400,000 products from many well-recognized brands. It is the owner of U.S. Trademark Reg. No. 2,518,099 for SHOEBUY.COM for “computerized online retail store services featuring footwear” and of U.S. Trademark Reg. No. 2,871,916 for SHOEBUY for “retail store services featuring footwear; computerized online retail store services featuring footwear” both in International Class 35. The Complainant’s trademark rights date back to 1999.
Respondent registered the disputed domain name on January 29, 2002. At first, the disputed domain name did not direct users anywhere, but the disputed domain name was recently being used to redirect users to a website appearing under “http//:/home.jsp”.
5. Parties’ Contentions
A. Complainant
Identical or Confusingly Similar
Complainant asserts that the disputed domain name is identical or confusingly similar to its trademarks SHOEBUY.COM and SHOEBUY. It has adduced evidence to show that the Complainant has registered the SHOEBUY.COM AND SHOEBUY trademarks as early as 1999 and the registration remain in full force and effect. Complainant asserts that, under U.S. laws, its SHOEBUY.COM trademark is “incontestable” and thus constitutes “conclusive evidence” of the validity of the mark and registration. The Complainant further contends that each of its trademark registration also serves as prima facie evidence of validity, which creates a rebuttable presumption that the marks are inherently distinctive.
Complainant contends that by adding an additional “s” to the Complainant’s SHOEBUY.COM trademark, Respondent has engaged in a classic case of typosquatting and as a result of the typosquatting, the disputed domain name is confusingly similar to the Complainant’s SHOEBUY and SHOEBUY.COM trademarks. Complainant identifies three cases to support this argument, The Nasdaq Stock Market, Inc. v. NSDAQ.COM, WIPO Case No. D2001-1492, and Pfizer Inc v Lorna Kang, WIPO Case No.D2002-0480, and Wachovia Corporation v. Peter Carrington, WIPO Case No.D2002-0775.
Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name for the following reasons:
(1) Respondent itself does not offer any goods or services at the website appearing under the disputed domain name. At first, the disputed domain name was inactive and did not redirect Internet users anywhere. Recently, Respondent has used the disputed domain name as a platform from which to redirect users improperly to Shoemall, which like Complainant, offers computerized online retail store services featuring footwear. Complainant has reasons to believe that Respondent was receiving a commission from Shoemall whenever a user was redirected from the disputed domain name to the Shoemall website. Complainant contends that such use cannot be considered a bona fide offering of goods and services by Respondent and therefore does not give Respondent a right or legitimate interest in the disputed domain name.
(2) Respondent has used a domain name that is confusingly similar to the Complainant’s SHOEBUY and SHOEBUY.COM trademarks and it is clear that Respondent has infringed the Complainant’s trademarks as such in an attempt to cause confusion and to get a free ride off the accumulated fame and good will of the Complainant’s marks for its own commercial gain. Respondent thus has no right or legitimate interests in the disputed domain name.
(3) Respondent has had notice of the SHOEBUY.COM trademark before any use or demonstrable preparation to use the disputed domain name. The Complainant’s trademark rights date back to 1999 whilst Respondent only registered its domain name in 2002. Therefore, Complainant contends that Respondent has at least constructive notice of the Complainant’s SHOEBUY.COM trademark as it was already registered at that time.
(4) That Respondent is not making a legitimate noncommercial or fair use of the disputed domain name as the Respondent’s website has redirected users to a third party competitor and Complainant has reason to believe that Respondent received a commission for each user who was redirected to the website of the said competitor. Such use by Respondent does not constitute a legitimate noncommercial or fair use of the disputed domain name.
Registered and Used in Bad Faith
Complainant contends that Respondent has registered and is using the disputed domain name in bad faith on the following grounds:
(1) In view of the Complainant’s earlier trademark registrations and the Respondent’s much later registration of the disputed domain name, it is evident that Respondent chose the disputed domain name in an effort to get a free ride off the goodwill amassed by S in the SHOEBUY.COM and SHOEBUY trademarks. Respondent is using the disputed domain name to confuse consumers and to redirect Internet users to a competitor’s website. Therefore the disputed domain name was registered and is being used in bad faith.
(2) Respondent’s use of the disputed domain name represents a classic case of typosquatting and previous UDRP decisions have ruled that this is evidence of bad faith registration of a domain name.
B. Respondent
Identical or Confusingly Similar
Respondent concedes that the disputed domain name is similar but not confusingly similar to the Complainant’s SHOEBUY.COM and SHOEBUY marks. Respondent denies that this is a case a typosquatting as the cases cited by Complainant are dealing with distinctive trademarks and there is no other perceived meaning or dictionary words that make up these trademarks. In contrast, the trademarks SHOEBUY and SHOEBUY.COM is made up of two common dictionary words – shoe (a noun) and buy (a verb). Respondent contends that Complainant cannot have exclusive rights to either the word “shoe” or the word “buy”. This is evidenced by a Google search using the key word “shoe buys” which returns over 11,600 matches with few referring to the Complainant other than their paid Google advertisements. Respondent rejects the Complainant’s suggestion that SHOEBUY is a suggestive mark such that Complainant should not be required to prove secondary meaning. Respondent contends that the claimed mark is descriptive at best and Complainant should shoulder a heavy burden to demonstrate that the generic word “shoe”, combined with the generic word “buy” forms a distinctive service mark..
Rights or Legitimate Interests
Respondent contends that it has used the domain name concerned along with other generic names that it owns as a profit making enterprise to allow users that type in the generic words to find a website that meets their expectations of the words typed. The users have never been redirected to any site that makes it seem they have arrived to the Complainant’s website “www.s”. Respondent contends that it has right or legitimate interests in the disputed domain name because it is using its generic name as a profit making venture by getting paid for clicks while not actually offering any goods themselves when the Internet users are directed to websites that they expect to reach.
Registered and Used in Bad Faith
Respondent contends that it did not register the dispute domain name nor is it using it in bad faith on the following grounds:
(1) Respondent was unaware of Complainant’s company S, Inc., and also unaware of its trademarks when the disputed domain name was registered;
(2) Respondent has never attempted to sell the disputed domain name to Complainant or anybody else;
(3) Respondent has never attempted to confuse anybody into thinking that it is in any way affiliated with Complainant;
(4) Respondent has never intentionally diverted traffic from “www.s”;
(5) Respondent did not register the disputed domain name to primarily disrupt the Complainant’s business; and
(6) Respondent has refuted the Complainant’s allegations four years ago and has held the disputed domain name in quiet possession until the present proceedings.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
1. the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
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.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the SHOEBUY and SHOEBUY.COM marks in the United States since 1999. The Panel accepts the evidence adduced by the Complainant and rules that the Complainant has rights in the claimed marks.
The disputed domain name consists of the Complainant’s mark SHOEBUY.COM in its entirety except for the addition of the letter “s”. In assessing the degree of similarity between the Complainant’s trademarks and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The Panel, upon considering the disputed domain name and the Complainant’s marks, concludes that it is clear that the disputed domain name is confusingly similar to the Complainant’s marks.
The Panel finds for the Complainant on the first part of the test.
B. Rights or Legitimate Interests
The Panel notes that the Respondent has not provided documentary evidence of a legitimate use of the domain name or reasons to justify the choice of the word “shoebuys” in its business operations prior to notification of the present proceeding; that there was no evidence on the record to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the trademark; and that there is no indication on the record that the Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.”
Respondent has argued that it has used the domain name concerned along with other generic names that it owns as a profit making enterprise to allow users that type in the generic words to find a website that meets their expectations of the words typed, and that the user has never been directed to any site that makes it seem like they have arrived to the Complainant’s website “www.s”. Respondent contends that it has rights or legitimate interests in the disputed domain name because it is using its generic name as a profit making venture by getting paid for clicks while not actually offering any goods themselves when the Internet users are directed to websites that they expect to reach.
The Panel notes that Respondent has not provided any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name.
The Panel further notes that Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the word “shoebuys” in its business operations prior to notification of the present proceeding; that there is no evidence on the record to show that Complainant has licensed or otherwise permitted Respondent to use its trademark or to apply for or use any domain name incorporating the trademark; and that there is no indication on the record that Respondent is commonly known by the disputed domain name.
In light of its further findings, however, the Panel will not reach further conclusions on this element of the UDRP criteria.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(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 the 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.
With regard to the last part of the test under the Policy, the Panel must conclude, based on the case file before the Panel, that the Complainant has not successfully discharged its burden of proving that the Respondent has registered and used the domain name in bad faith. The grounds of the Panel’s decision are as follows:
1. The Panel finds that the Complainant’s marks in issue are not inventive or coined words but made up of two generic words “shoe” and “buy”.
2. To find bad faith on the part of the Respondent and to order a transfer of the disputed domain name to the Complainant in the present proceeding, the Complainant must discharge its burden of proof under the Policy that the Respondent registered and used the domain name in bad faith. This commonly includes among other things showing that a respondent had knowledge of a complainant and its trademark rights prior to or at the time of registration/acquisition of the disputed domain name. Previous panels have recognized that in the absence of clear evidence that a respondent had actual knowledge of a mark, certain inferences may be drawn in terms of likely knowledge from inter alia the fame of a complainant’s mark. In the present case, there is no compelling evidence before the Panel that the Respondent had actual knowledge of the Complainant’s SHOEBUY and SHOEBUY.COM marks when the disputed domain name was registered. The question then arises in the present case as to the degree of the notoriety or fame of the Complainant’s SHOEBUY and SHOEBUY.COM marks. The Panel finds that the evidence before it is not sufficient to enable the Panel to conclude that the SHOEBUY and SHOEBUY.COM marks are well-known marks, at least not at the time of the domain name registration, which preceded the filing of the Complaint by some five years. Being a word made up of two generic words – “shoe” and “buy” which is not inherently distinctive, there is an onus on the Complainant to present the Panel with compelling evidence of secondary meaning and distinctiveness through extensive use. The burden of proof on the Complainant is especially heavy when the mark is a descriptive mark like in the present case. Unfortunately, based on the case file presented to the Panel, the Complainant has failed to meet this burden. The pleadings contain assertions as to sales figures and customers, but the Panel could not find any documentary evidence on the status of the trademark that would credibly establish that Respondent registered the disputed domain name with Complainant, its business or its trademarks in mind. There is evidence that a search over the Internet using the Google search engine for the key word “shoe buys” generates a return of thousands of websites, the majority of which do not belong to nor are associated with the Complainant and its business. In the absence of more specific indications in favor of Complainant’s assertions, the Panel, on balance, finds it more likely than not that Respondent registered the fairly generic term “shoebuys” in order to attract traffic looking for websites in relation to shoe purchases in general and thus to generate revenue by providing sponsored links. Cf. Gorstew Limited v. Domain Manager, Domain Escrow, WIPO Case No. D2007-0815. While a competent court might provide occasion to assess these matters on a more complete record and in a broader legal context, the Panel in this case concludes that the facts before it do not appear to justify a transfer finding under the criteria of the UDRP.
The Panel finds that the third part of the test has not been established by the Complainant.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Susanna H.S. Leong
Sole Panelist
Dated: August 7, 2007
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