WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Harry Winston Inc. and Harry Winston S.A. v. Jennifer Katherman Case No. D2008-1267 1. The Parties
The Complainants are Harry Winston Inc. of New York, United States of America and Harry Winston S.A. of Geneva, Switzerland.
The Respondent is Jennifer Katherman of South Carolina, United States of America. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with GoD, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2008. On August 20, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 22, 2008, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 22, 2008 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint.
The Complainant filed amendments to the Complaint on August 26, 2008 and August 27, 2008. The Center verified that the Complaint together with the amendments 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 on August 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 18, 2008.
On September 17, 2008 the Respondent sought an extension of time for the filing of the Response until October 8, 2008. The Complainant consented to the extension sought and the Center duly granted it. The Response was received by the Center on October 3, 2008.
The Center appointed Tony Willoughby as the sole panelist in this matter on October 8, 2008. 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
The Complainants are associated companies, Harry Winston S.A. being a wholly owned subsidiary of Harry Winston Inc. For the purposes of this decision the Panel will treat them as one. They are the proprietors of a number of trade mark registrations of or including the name, HARRY WINSTON.
There is no dispute between the parties that HARRY WINSTON is a very well-known, longstanding trade mark for fine jewelry, diamonds and timepieces and that the trade mark is owned by the Complainants.
The Domain Name was registered on March 11, 2008, in the name of Domains By Proxy, Inc. The identity of the Respondent was not disclosed until after the Complaint had been filed and the Center had sought from the Registrar registrar verification in respect of the Domain Name.
The Respondent is engaged in the retail sale of “dog and cat supplies and accessories” under the name, Hairy Winston, in South Carolina.
The Respondent candidly admits that she selected the name, Hairy Winston, as the name of her business with the Complainants' famous trade mark very much in mind. Her company, Hairy Winston LLC was formed on March 14, 2008. She applied for a South Carolina retail licence on March 31, 2008 and received the retail licence effective June 1, 2008. She applied for a federal trade mark registration on April 7, 2008 and signed a lease for her retail store on May 2, 2008. The retail store opened under the name, Hairy Winston, in August, 2008. 5. Parties' Contentions A. Complainants
The Complainants contend that the Domain Name is confusingly similar to a trade mark or service mark in which they have rights.
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Finally, the Complainants contend that the Respondent registered the Domain Name “without any legitimate right or interest in using that domain and holds it in bad faith to capitalize on the fame and renown of the Harry Winston name”. The Complainants draw attention to the similarity of font used by the Respondent to that used by the Complainants for their trade mark. The Complainants add that the use by the Respondent of the Registrar's privacy service when first registering the Domain Name is itself evidence of bad faith.
The Complainants quote authorities relating to the trafficking of domain names, thereby suggesting that they are applicable to the Respondent's activity. B. Respondent
The Respondent accepts that the Domain Name is similar to the Complainants' well-known trade mark, but denies that it is confusingly similar to that trade mark. She contends that it will be obvious to all that her use of the name, Hairy Winston, is a playful variation of the Complainants' famous trade mark. One of her dogs, a hairy dog, is named Winston. She selected the name, Hairy Winston, for her ‘luxury pet boutique' business to make playful use of the name of the dog and the Complainants' trade mark. She acknowledges and intends that the name will bring the name of the Complainants to mind, but not in a context likely to lead to any confusion. As she puts it, “thus, the name playfully suggests to the customer both high-quality goods and an incongruous association with the hairy canine world.”
The Respondent contends that she is making fair use of the name, Hairy Winston, for her luxury pet boutique business, albeit by way of parody. She contends that she was doing so long before she had any notice of the Complaint, which arrived in the course of August, 2008. She contends that, for the Panel to hold that she has no rights or legitimate interests in respect of the Domain Name, is tantamount to a finding of trade mark infringement, a finding that is outwith the scope of the Policy and the Panel's competence.
The Respondent denies that the Domain Name was registered and is being used in bad faith. The Respondent runs through all the examples of bad faith registration and use set out in paragraph 4(b) of the Policy and denies that any of them is applicable.
The Respondent refers to the Complainants' contention that the Respondent is guilty of trafficking and observes that not only is there no evidence of any trafficking on the Respondent's part, but that for her to sell the Domain Name would be wholly inconsistent with her business plans.
As to the similarity of fonts used by the parties, the Respondent contends that the font used is Times New Roman, which according to Wikipedia is one of the commonest fonts of all. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainants must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
As indicated in section 4 above, the underlying facts of this case are simple, straightforward and largely undisputed.
The Complainants' trade mark, HARRY WINSTON, has long been a famous trade mark for fine jewelry, diamonds and timepieces.
Earlier this year, the Respondent decided to set up a ‘luxury pet boutique' in a mall on the outskirts of Charleston, South Carolina, retailing “dog and cat supplies and accessories”. She adopted the name, Hairy Winston, for her business, it being a play on the Complainants' trade mark and the name of one of her dogs, a hairy dog named Winston. She formed a company under the name, obtained the requisite licences, applied for trade mark registrations and in August this year opened her Hairy Winston ‘luxury pet boutique'. B. Identical or Confusingly Similar
The Respondent does not deny that the Domain Name is similar to the Complainants' trade mark; indeed, she contends that her use of the Domain Name is a playful parody of the Complainants' trade mark. She asserts that for a parody to be successful, a similarity to the original is a necessary prerequisite. However, the Respondent denies that the similarity is a confusing similarity.
The Respondent's arguments on this score rely heavily on the nature of her website, a luxury pet boutique website, which is self-evidently so far away from anything associated with the Complainants that nobody other than ‘a moron in a hurry' (to use a term of art favoured by the judiciary in the United Kingdom) would believe the site to be in any way associated with the Complainants.
However, it is now well-established that the content of the Respondent's website is an irrelevant factor when assessing confusing similarity under the first element of the Policy. The test is to be conducted by way of a side-by-side comparison of the Complainants' trade mark and the Domain Name. As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions puts it (paragraph 1.2):
“The content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity. This is because trademark holders often suffer from “initial interest confusion”, where a potential visitor does not immediately reach their site after typing in a confusingly similar domain name, and is then exposed to offensive or commercial content. The test for confusing similarity should be a comparison between the trademark and the domain name to determine the likelihood of confusion.”
Accordingly, while the Panel accepts that anyone aware of the existence of the Complainants and noticing the one letter difference in the names is unlikely to be confused, the Panel believes it quite likely that people (not merely morons in a hurry) glancing at the Domain Name may well not notice the difference and believe that they are looking at ‘harrywinston'.
The Panel finds that the Domain Name is confusingly similar to a trade mark or service mark in which the Complainants have rights. C. Rights or Legitimate Interests
The Respondent has admitted adopting a variation of the Complainants' trade mark for the purposes of her business. For the purposes of this head of paragraph 4(a) of the Policy, the issue is as to whether or not her parodying of the Complainants' trade mark can be said to be legitimate or fair within the terms of the Policy.
The Respondent contends that she is entitled to the benefit of paragraph 4(c)(i) of the Policy on the basis that she had been making use of the Domain Name for the purposes of a bona fide offering of goods and services before she had notice of the Complaint. She received the Complaint in August some months after she had started making the necessary preparations for her business. She had formed her company, Hairy Winston LLC, back in March.
In so construing paragraph 4(c)(i) of the Policy, the Respondent is in error. She was aware of the potential for dispute the moment she considered adopting a parody of the Complainants' trade mark.
However, in light of the Panel's finding under the next head, it is unnecessary for the Panel to address the issue as to whether or not she has rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
The Complainants adopt something of a scatter gun approach when they come to their contentions as to bad faith registration and use.
The Complainants cite decisions to support the proposition that registering domain names featuring the trade marks of others for the purposes of trafficking constitutes bad faith registration and use; but there is no suggestion in the Complaint (let alone any evidence) that the Respondent registered the Domain Name with a view to selling it. Indeed, the essence of the Complaint is not that the Respondent has any intention of selling the Domain Name, but that she is using it commercially to connect to her trading website and is thereby profiting from the resultant confusion of Internet users.
The Complainants also cite decisions to support the proposition that the use of privacy services offered by registrars in order to conceal registrants' identities is evidence of bad faith. The Panel accepts that in certain circumstances the use of such services may be objectionable, but it does not follow as night follows day that such services are inherently abusive within the meaning of paragraph 4(a)(iii) of the Policy. Ordinarily, the vice will lie in deliberately concealing one's identity with a view to frustrating or rendering more complex the legitimate attempts of a complainant to launch an administrative proceeding under the Policy. Here, however, the Complainants were well aware of the true identity of the person behind the Domain Name when they filed the Complaint. They exhibited pages from the Respondent's website featuring her name and contact details and a reasonably clear indication of her business, namely a ‘luxury pet boutique'.
The Panel dismisses any allegations of trafficking as fanciful and rejects, too, the allegation that the Respondent was acting in bad faith by using the Registrar's privacy service when she registered the Domain Name.
That leaves the Complainants' principal contention. The Complainants contend that the Respondent selected the Domain Name precisely because it is a variant of the famous name of the Complainants and with a view to attracting Internet users to her website for commercial gain (i.e. to promote her luxury pet boutique).
Thus far, the Respondent does not dispute that contention of the Complainants. She does not deny that she selected the Domain Name with a view to benefiting commercially from the fame of the Complainants' trade mark.
The Complainants then go on to contend that the commercial gain that the Respondent is hoping and expecting to derive from the Domain Name will be achieved by visitors visiting the Respondent's website in the mistaken belief that, because of the confusing similarity of the Domain Name to the Complainants' trade mark, the Respondent's website is a site of or associated with the Complainants (paragraph 4(b)(iv) of the Policy). On arriving at the site, those visitors will appreciate their mistake, but insofar as any of those visitors may be interested in acquiring pet supplies and accessories, the Respondent will thereby have derived an unfair business opportunity, the unfairness lying in the deceit by which the Respondent has diverted the visitors to her site.
The Respondent rejects that contention entirely. She accepts that she is seeking to derive a commercial benefit from the fame of the Complainants' trade mark, but not one that depends upon any deceit or consumer confusion. She starts from the position that a significant proportion of her clientele and potential clientele will know of the Complainants' trade mark and will associate it with top of the range luxury. When they see the name of the Respondent's business, Hairy Winston LLC, and the Domain Name, they will see it as a parody of the Complainants' trade mark. She contends that there is no risk of any “likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation, or endorsement of [her] website” as is required by paragraph 4(b)(iv) of the Policy.
The Panel reminds himself that his task is to assess whether the Domain Name is an abusive registration within the meaning of the Policy. Specifically, it is not the task of the Panel to attempt to assess whether the Respondent's activities constitute infringement of the Complainant's trade mark rights.
What is the abusive conduct that the Policy is designed to address? Part of the answer is to be found in paragraph 4(b) of the Policy, which sets out a non-exhaustive list of what shall constitute bad faith registration and use for the purposes of the Policy. It is only part of the answer because, as indicated, the list is a non-exhaustive list. It is open to the Panel to look beyond paragraph 4(b) of the Policy.
However, paragraph 4(b) is a good starting point. Paragraph 4(b)(i) covers registration of a domain name with the intention of selling it at a profit. The Panel has already found that that is not applicable to this case. Paragraph 4(b)(ii) covers registration of a domain name with a view to blocking the complainant, but that is clearly not applicable here. There is no suggestion that the Complainants wish to register the Domain Name. Paragraph 4(b)(iii) of the Policy covers registration of a domain name with a view to disrupting the business of the complainant. Clearly, if the Respondent's use of the Domain Name causes to the Complainants' trade mark the damage that the Complainants fear, the Domain Name will disrupt the Complainants' business to an extent, but that was not the Respondent's purpose and, in any event, this issue can more readily be dealt with under the next head, namely paragraph 4(b)(iv) of the Policy, which is the sub-paragraph upon which the Complainants' allegations are based.
Paragraph 4 (b)(iv) of the Policy reads:
“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 the 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 Respondent denies having intentionally attempted to do anything of the sort. She says that nobody aware of the Complainants and seeing the name, Hairy Winston, whether as a business name or as part of a domain name will believe that Hairy Winston/hairywinston has any connection with the Complainants. The name of the Complainants will come to mind, but that is all. She acknowledges and intends that the name will bring the name of the Complainants to mind, but not in a context likely to lead to any confusion. As she puts it, “thus, the name playfully suggests to the customer both high-quality goods and an incongruous association with the hairy canine world.”
The Panel agrees. In the view of the Panel, it is inconceivable that people of the sophistication of the Complainants' clientele will believe that the Complainants could begin to countenance use of such a variant of their name for their business. Even if the Complainants were minded to consider brand extensions, it is most unlikely that Hairy Winston would feature as a candidate.
The area where confusion is a possibility is where an Internet user, aware of the Complainants' name and trade mark sees the Domain Name and misreads it believing it to be . In what circumstances is this likely to occur and what will be the consequence of the mistake? Where is the Domain Name likely to appear other than in an advertisement or directory entry for the Respondent's pet boutique? The Complainants do not elaborate. It seems to the Panel that in such a context the parody is likely to be appreciated for what it is. If anyone does misread the name, the mistake will be so fleeting as to be of no consequence. If the reader does not immediately appreciate the mistake, it will be because he or she is unaware of the Complainants in which case, again, the mistake will be of no consequence.
Another possibility is that someone will type in the Domain Name by mistake when intending to type in the Complainants' name and trade mark. But this has to be a very remote possibility; ‘r' and ‘i' are several keys apart on the keyboard.
What the Respondent has done may constitute trade mark infringement under United States of America law. The Panel does not know, but the Panel is satisfied that the Respondent, when registering the Domain Name, had no intention of deceiving Internet users. That said, the Respondent's intentions cannot be determinative of the issue. The test has to have an objective element. Was it reasonable for the Respondent to assume that what she was doing was not likely to cause confusion?
The Panel is much taken by three quotations from US authorities cited by the Respondent, namely:
“A parody must convey two simultaneous – and contradictory – messages: that it is the original, but also that it is not the original and is instead a parody.” [People for the Ethical Treatment of Animals –v- Doughney 263 F.3d (4th Cir. 2001)]
and:
“Thus a parody relies upon a difference from the original mark, presumably a humorous difference, in order to produce its desired effect.”[Jordache Enterprises, Inc. v Hogg Wyld, Ltd 828 F.2d (10th Cir. 1987)]
and:
“It is a matter of common sense that the strength of a famous mark allows consumers immediately to perceive the target of the parody, while simultaneously allowing them to recognize the changes to the mark that make the parody funny or biting.” [Tommy Hilfiger Licensing, Inc. v Nature Labs, LLC [221 F.Supp.2d (S.D.N.Y. 2002)]
The Panel is satisfied that the Respondent's intention in registering and using the Domain Name as she has was to parody the Complainants' famous name and trade mark and that she was justified in believing that the parody would successfully differentiate the parody from the original such as to obviate any significant risk of confusion or deception. In such circumstances it would be perverse to categorise the Respondent's intentions when she registered the Domain Name as bad faith intentions for the purposes of the Policy. The Policy is intended to address clear cases of cybersquatting, and whatever else the present case may be, it is not that.
Thus, although the list of examples of bad faith registration and use in paragraph 4(b) of the Policy is a non-exhaustive list, the Panel sees no reason to look any wider. In the view of the Panel, the Respondent has not acted in bad faith under the Policy.
Finally, for completeness, the Panel deals with the Complainants' observation (no express allegation accompanies the observation) that the Respondent has selected a very similar style and size of font for the name Hairy Winston on the home page of her website. Even if one assumes that the similarity was deliberate, it would have been in aid of the parody and since the font selected is a clear large upper case font, the scope for any misreading of the name is reduced. Furthermore, it appears in a context in which confusion with the Complainants is in this Panel's view inconceivable.
The Panel is not satisfied that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Tony Willoughby
Sole Panelist
Dated: October 18, 2008
Full & Egal Universal Law Academy