WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Warnaco Inc. v. PrivacyP and India Domains
Case No. D2008-0871
1. The Parties
The Complainant is Warnaco Inc., New York, NY, United States of America, represented by Katten Muchin Rosenman LLP, New York, NY, United States of America.
The Respondents are PrivacyP and India Domains of, according to the respective Whois records, Moergestel, the Netherlands and Washington, DC, United States of America, the latter being represented by Stephen H. Sturgeon & Associates, P.C., Potomac, MD, United States of America.
2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Lead Networks Domains Pvt. Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2008. On June 6, 2008, the Center transmitted by e-mail to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the domain name at issue. On June 17, 2008, the Registrar transmitted by e-mail to the Center its verification response disclosing underlying registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to the Complainant on June 17, 2008, providing the underlying registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
The Complainant filed an amendment to the Complaint on June 17, 2008. 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 June 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response July 8, 2008. On July 9, 2008, the Center acknowledged receipt of a Response dated July 7, 2008.1
The Center appointed Douglas M. Isenberg, James A. Barker and G. Gervaise Davis III as panelists in this matter on August 22, 2008. The Panel finds that it was properly constituted. Each member of 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.
On July 14, 2008, Complainant submitted a Supplemental Filing in reply to Respondent’s Response. On July 23, 2008, Respondent submitted a Supplemental Filing in reply to Complainant’s Supplemental Filing. On July 28, 2008, Complainant submitted another Supplemental Filing in reply to Respondent’s Supplemental Filing.2
4. Factual Background
Complainant states that it is a global apparel leader that designs, sources, markets, licenses and distributes a broad line of intimate apparel, sportswear and swimwear worldwide, including intimate apparel, lingerie, bras, panties and other related products sold under the trademark OLGA, which it has used for nearly 50 years. Complainant states that it “is the owner of a family of trademark and service mark applications and registrations for its OLGA name and mark in the United States and in over 100 countries around the world, including the Netherlands and India.” In support thereof, Complainant provides as an annex printouts from the website of the U.S. Patent and Trademark Office for three trademark registrations for OLGA owned by Complainant: U.S. Reg. Nos. 883,813 (first used in commerce September 8, 1962, registered January 6, 1970); 780,385 (first used in commerce April 26, 1962, registered November 17, 1964); and 2,895,952 (first used in commerce September 8, 1962, registered October 19, 2004). Collectively, the trademarks cited by Complainant are referred to hereafter as the “OLGA Trademark.”
The Disputed Domain Name was registered on April 21, 1997.
Complainant states that “Respondent’s web site includes specific and unauthorized references to Complainant and Complainant’s products.” Accordingly, Complainant states that it sent a demand letter to Respondent via e-mail on May 14, 2008, and that “Complainant received an automated reply from the e-mail address ‘contact@privacyp’ stating, in pertinent part, that privacyp is ‘NOT the actual owner of the domain name’, that using the link ‘ is the ONLY way to get in touch with the domain name owner’ and that ‘we DO NOT accept any postal mail on behalf of the domain name owner and all mails sent to our address will be rejected. Any telephone calls received at the PrivacyP Telephone Number, would be greeted with an electronic answering machine requesting the caller to visit this website’.”
Respondent states that “the Registrant of the domain name OLGA.COM in this proceeding is Moises Gilinski” and that “[h]e and his brother Abraham Gilinski operate a business engaged in the marketing of guitar products.” Respondent states, and provides affidavits to support, that “[t]he intention of Respondent in buying this name was to use it in his business of marketing guitar products…. The term Olga was and is related to guitars on the internet, it is an acronym of On Line Guitar Archive….” The registrar-confirmed registrant of record for the Disputed Domain Name is India Domains.
5. Parties’ Contentions
A. Complainant
In addition to the factual background set forth above, Complaint contends, inter alia, as follows:
- The Disputed Domain Name is identical to the OLGA Trademark.
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent does not own any trademark filings for the OLGA name and mark and does not offer any goods or services under the OLGA Marks”; “Complainant’s numerous OLGA trademark registrations throughout the world suggest that Respondent had actual and/or constructive knowledge of Complainant’s mark when it registered the domain name”; “Respondent has no agreements, legal or otherwise, with Complainant authorizing it to use the OLGA Marks”; and “Respondent has not been personally identified, or commonly known, by names comprised, in whole or in part, of the name ‘OLGA’.”
- The Disputed Domain Name has been registered and is being used in bad faith because, inter alia, “it is simply not possible to conceive of any plausible circumstance where Respondent could have coincidentally registered the domain name without first knowing of and intentionally infringing upon the OLGA Marks”; “Respondent uses the web site, which includes specific references to Complainant’s products, to intercept and siphon off internet users searching for Complainant’s well-known OLGA goods and services”; and “Respondent has sought to obstruct proceedings commenced under the Policy by utilizing a privacy service which provides no accessible contact information whatsoever.”
B. Respondent
In addition to the factual background set forth above, Respondent contends, inter alia, as follows:
- Respondent has rights or legitimate interests in respect of the Disputed Domain Name because the word “OLGA” is, according to an entry in the Wikipedia, “an acronym for On-line Guitar Archive, the oldest internet library of guitar and bass tablature”; Respondent “has, in fact, undertaken considerable activity in order to utilize the domain name for the legitimate business activity of marketing guitar-related products”; and any links on the web page associated with the Disputed Domain Name that refer to Complainant’s products are not prominent, not within Respondent’s control and have not contributed to any earnings by Respondent.
- The Disputed Domain Name has not been registered and is not being used in bad faith because Respondent “registered the domain names [sic] without any awareness of any claim of Complainant regarding the terms,” confirmed by the fact that “a search on search engines for the terms [sic] results in innumerable instances of the usage of the terms that are completely unrelated to Complainant or Complainant’s alleged trademarks”; “soon after Respondent registered the domain name, Respondent discovered that the website was not consistently displaying only guitar products, he made numerous email messages and telephone calls to the registrar and individuals involved with the hosting of his website in order to demand that linkages and advertisements only be provided with respect to guitar products”; and Moises Golinski had very good reasons to utilize privacy services, including to avoid confusion with employees and to protect his family.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).
Where a complainant does not prove one or more of these elements, the panel is compelled to issue a decision denying the complaint, regardless of the complainant’s ability to prove the other element(s) required by the Policy. Accordingly, under such circumstances, “any discussion by the panel with respect to such other element(s) would be unnecessary in reaching a decision to deny the complaint.” David Pecker v. Mr. Ferris,WIPO Case No. D2006-1514. See also, e.g., Admerex Limited v. Metyor Inc.,WIPO Case No. D2005-1246 (“[s]ince the Complainant must prove all three elements of the Policy, and since the Complainant fails under the third element,… it is not necessary to make a finding under the second element of the Policy”); and Micro Electronics, Inc. v. MicroCenter,WIPO Case No. D2005-1289 (where the complainant failed to prove the second element of the Policy, “there is no need for the Panel to address the third element of the Policy”).
A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is obvious that Complainant has rights in and to the OLGA Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the OLGA Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “olga”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. In this case, it is clear without the need for elaboration that the second-level portion of the Disputed Domain Name is identical to the OLGA Trademark. Therefore, the Panel is convinced that Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
A respondent can establish rights or legitimate interests in a domain name by providing evidence that “before any notice to [it] of the dispute, [it] use[d]… or [made] 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.” Policy, paragraph 4(c)(i). In this case, Respondent states repeatedly, and supports its statements with affidavits, that it registered the Disputed Domain Name as an endeavor related to guitars, given that “OLGA” is an acronym for “On-line Guitar Archive.” According to an excerpt of a Wikipedia article provided by Respondent, the “On-line Guitar Archive” used the domain name , which the Panel’s own research3 indicates was registered on November 8, 1995 – thereby making Respondent’s claim plausible, given that the Disputed Domain Name was registered after the domain name used for the “On-line Guitar Archive” . In addition, an Internet search conducted by the Panel using the Google search engine reveals that the top-ranked organic search result for the word “olga” leads to a website for “The Online Guitar Archive” at “www.”.4
Where a respondent “provide[s] evidence corroborating his claim that he had made preparations to use the disputed domain name before” the date on which a complainant contacted it about the complainant’s alleged rights, a respondent has satisfactorily established rights in the domain name, pursuant to Policy, paragraph 4(c)(i). IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420. In this case, although the Panel would have preferred to see evidence in addition to the self-serving affidavit provided by Respondent, the Panel has no reason to reject the affidavit.5 Accordingly, Respondent in this case has established rights or legitimate interests in the Disputed Domain Name. See also K2r Produkte AG v. Jeremie Trigano,WIPO Case No. D2000-0622 (“[t]here is no reason to question the respondent’s explanation as to how he came to choose the name”); and The Jolt Company v. Digital Milk, Inc.,WIPO Case No. D2001-0493 (“in the context of a truncated UDRP proceeding, sufficient issues have been raised by Respondent’s submissions and supplemental submissions to rebut Complainant’s claim of a lack of rights or legitimate interest in the Domain Names”).
C. Registered and Used in Bad Faith
Given that, for the reasons set forth above, it is unnecessary for the Panel to make a finding with respect to the third element of the Policy, paragraph 4(a)(iii), the Panel refrains from doing so.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Douglas M. Isenberg
Presiding Panelist
James A. Barker
Panelist
G. Gervaise Davis III
Panelist
Date: September 5, 2008
1 The Panel accepts and considers the Response because it is unclear whether it was submitted late; the lateness, if any, was minimal and did not affect the proceeding, and the Complainant has not objected to the Panel’s consideration of it.
2 The Panel does not accept or consider any of the unsolicited supplemental filings in this case because neither of the parties has shown “why it was unable to provide that information in the complaint or response.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.2.
3 “The panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5.
4 Other prominent organic search results lead to websites for “Olga’s Kitchen” , the “Online Lead Generation Association,” “Olga’s Gallery” , “Olga of Kiev”, and “Olga Kurylenko” – “a Ukrainian-born actress and model who grew up in poverty sharing a Soviet flat with her aunt, uncle, grandparents and cousin, is now starring as Bond girl opposite Daniel Craig.”
5 With more information, especially regarding the credibility of Respondent’s contentions and the affidavits, this Panel might have reached a different decision. However, “[f]or good reason, this … process is designed to be a fast track inexpensive process. Necessary elements of that desirable process are an absence of discovery, depositions, cross examination, live hearings. When … a party critically needs certain evidence available only by discovery forbidden by the [Policy’s] parameters, this process may not produce as confidently sound results as the more expensive court processes that afford those features forbidden here. That is one of the reasons that this process is not a final process, but one where a disappointed party may take the issue to court.” Quoteseek Corporation v. Internet Marketing Group,WIPO Case No. D2002-0511.
Full & Egal Universal Law Academy