WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Mark Bowering v. Wholesale Supplement Group Case No. D2008-1467 1. The Parties
The Complainant is Mark Bowering, the United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Joe Binley, UK.
The Respondent is Wholesale Supplement Group, the United States of America (“US”), represented by Harper Macleod LLP, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2008. On September 30, 2008, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On October 2, 2008, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 9, 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” or “UDRP”), 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 October 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2008. The Response was filed with the Center on October 23, 2008.
The Center appointed Ross Wilson as the sole panelist in this matter on November 7, 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. Supplementary Filing
On October 29 and 31, 2008 the Center received emails from the Complainant. In reply the Center advised the Complainant that there is no express provision for supplementary filings in the Rules except in the case of a deficiency notification or if requested by the Center or the Panel, and that admission of such filings would be at the sole discretion of the Panel (on appointment). The Respondent emailed the Center on October 30, 2008 with a reply to the Complainant's emails and sought advice from the Center about forwarding further information to the Complainant.
Panels in the past have held that additional information would only be allowed in exceptional purposes. In Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 the Panel considered exceptional circumstances as “the existence of new, pertinent facts that did not arise until after the submission of the complaint, or the desire to bring new, relevant legal authority to the attention of the Panel”. There was nothing in the Complainant's emails that indicated that any such circumstances exist. Consequently, the Panel did not consider the supplementary filings. 5. Factual Background
The Complainant has been trading as a limited company since 2002. It advertises in the UK and worldwide in magazines and online mediums with an annual budget of in excess of £100,000. Its membership is 60,000.
In 2007 the Complainant submitted a complaint through the Nominet UK Dispute Resolution Service against the Respondent's domain name . The Complainant was successful and the disputed domain name was transferred to the Complainant.
The Complainant filed a UK trademark application on July 10, 2007 for the design mark “MONSTERSUPPLEMENT.COM” superimposed on a large letter “M”. The application was opposed by a connected company of the Respondent on the grounds that the works are widely used in the classes of goods and services for which registration was sought and devoid of distinctive character. The Complainant failed to lodge a counter statement to the opposition by the due date and the application was deemed withdrawn on July 28, 2008.
The Respondent has been operating in the same “supplement” business as the Complainant since March 21, 2007. It was registered as a company in the UK on February 11, 2008. It operates in the United Kingdom and the United States of America. Its marketing expenditure since commencement has been about £247,000.
On January 2, 2008 the Respondent filed a US trademark application for “MONSTERSUPPLEMENTSTORE” and on March 18, 2008 filed a UK trademark application with the same words. The UK application has been opposed. 6. Parties' Contentions A. Complainant
The Complainant contends that:
a it has rights to the domain name and related mark;
b its customers are confusing the Complainant with the Respondent causing disruption to working procedures and damaging the Complainant's reputation;
c a Nominet decision had determined that the Respondent was damaging the Complainant's reputation by finding in the Complainant's favour. B. Respondent
The Respondent contends that:
a generic words and terms are not capable of providing exclusive rights to one entity;
b the Complainant has failed to provide any evidence:
- of its allegations that the disputed domain name is causing confusion to its customers;
- to support its implicit common law trademark claims; and
- why the Respondent does not have any right or legitimate interest in the disputed domain name;
c the generic nature of the term used in the disputed domain name provides the Respondent with the right to hold and use the domain name in the cause of trade;
d the Complaint is defective in not specifying which elements of the Policy are applicable in accordance with paragraph 3(b) of the Rules;
e the Nominet expert erred in law; and
f the Complainant is seeking to hijack the substantial customer recognition and loyalty that the Respondent has generated in connection with the disputed domain name.
The Respondent has requested the Panel to deny the Complaint and make a finding of reverse hijacking. 7. Discussion and Findings
In order to succeed the Complainant must establish:
a that the domain name is identical or confusingly similar to trademark or service mark in which it has rights;
b that the Respondent has no rights or legitimate interests in respect of the domain name; and
c the domain name has been registered and used in bad faith.
The onus is on the Complainant to establish each of the above circumstances. A. Identical or Confusingly Similar
The Complaint contained no assertion to any rights the Complainant has in a registered trademark. In response to the Center's request to confirm the trademark or service mark on which the Complaint is based, the Complainant submitted the decision by the Nominet UK Dispute Resolution Service in December 2008 that the Complainant has common law rights in the words “Monster Supplements”.
In the Nominet case despite minimal evidence, the independent expert concluded that the Complainant had established common law rights in the name “M”. (The only evidence provided appeared to be a two page advertisement in Flex magazine in November 2005). The finding appears to have been based on statements made by the Complainant about its turnover, marketing and number of customers. In making his decision the expert noted that the Respondent did not dispute the Complainant's assertions, that some well known trademarks consist of generic words and that the threshold to rights in Nominet cases was low.
The Respondent argues that the Nominet expert's common law finding erred in law, that the Complainant is basing its rights on its trade name and that as the trade name is generic it is not capable of generating rights on which the Complainant can rely. The Respondent points out that it was successful in opposing the Complainant's UK trademark application on such grounds.
The Respondent argues that the Complainant does not have common law trademark rights as the Complainant has not shown “by evidence” that it meets English law requirements. The Respondent considers that as required by English law there is no evidence provided to support the contention that the Complainant has common law rights. For example, there is no evidence that:
a the Complainant has been trading in the market place for a sufficient time to build up an association in the minds of the public between the goods it provides and its trade name;
b goodwill exists;
c there was material misrepresentation by the Respondent;
d the public regards the term as an indication of trade origin;
e confusion exists within a substantial section of the public; and
f there is damage to the Complainant.
The position taken by panels with respect to common law trademarks is that the complainant is required to evidence that its name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence includes the length and amount of sales under the mark, the nature and extent of advertising, consumer surveys, and media recognition. In Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322 the Panel noted that common law trademark and service mark rights exist when “a party proves that there is enough goodwill and reputation in and to a name and sufficient association of the same with the party itself, no matter how strong or weak those trademark and service mark rights may be”.
In the Panel's view despite the finding in the Nominet decision, the Complainant has not provided the evidence necessary to prove that it has sufficient goodwill and reputation in “M” or that there is sufficient association with the name and the Complainant to evidence a common law trademark.
In the absence of sufficient evidence, the Panel finds that the Complainant does not have a trademark or service mark in which it has rights and therefore fails to meet the first requirement for a complaint to succeed. B. Rights or Legitimate Interests
Although the Complaint might be said to be denied on the first element, for the sake of completeness, the Panel discusses below the second and third elements.
Paragraph 4(c) of the Policy sets out how a respondent can demonstrate rights to and legitimate interests in the disputed domain name.
The Respondent has been trading under the name of “Monster Supplements Store” since March 2007 selling supplements including “monster supplements” in the apparent belief that it was entitled to use generic words. The Respondent provided considerable evidence that in its business field the words “monster” and “supplements” are widely used to denote products and services suited to rapid body and muscle growth. The commencement date of the Respondent's trading is well before notice of this dispute or of the July 30, 2007 notice of the Nominet dispute. In fact the Respondent claims it was unaware of the Complainant's trade name when it registered the disputed domain name, noting that there are many entities in the field in which they operate that utilise the word “monster” and “supplement” and the term “monster supplement”.
In EAuto, L.L.C., v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047 it was held that persuasive evidence of a respondent's legitimate interest in a domain name pursuant to the Policy, paragraph 4(c)(i) is the “fact that Respondent had been using the domain name in the bona fide offering of goods for sale over the Internet before Respondent received notice from Complainant”.
On the basis that the disputed domain name is a generic term for the goods offered for sale by the Respondent and the fact that Respondent has been using the term in connection with appears on the available record to be bona fide offering of goods, the Panel finds that the Respondent has rights to and legitimate interests in the domain name. C. Registered and Used in Bad Faith
For the purposes of determining whether there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Two circumstances illustrated in part (iii) and (iv) of that paragraph are relevant to this case.
The first is whether the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor. The Respondent does not deny that the Complainant is a competitor. However, it does provide evidence that it has tried to avoid disrupting the Complainant's business by giving a different look and feel to its website and also by making arrangements with Google in February 2008 to ensure the term “monster supplement store” cannot be used as an AdWord or keyword search heading by any organization other than the Respondent ostensibly to avoid potential consumers confusion rather than to stifle competition, which in any event would be outside the scope of the Policy.
The second circumstance is whether by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other online 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 or service on the Respondent's website or location. In this context the Complainant has raised the concern that numerous customers have confused the Respondent with the Complainant “stating that they have received zero customer service and that they have paid for goods that are not being dispatched… causing huge disruption to working practices and more crucially severely damaging the complainants (sic) reputation within the industry”.
The Panel is of the view that it is inevitable that registering a domain name derived from industry specific generic words or terms will likely result in some confusion with other domain names also using similar industry specific generic words and terms. Also, it is unlikely that the confusion would work just in one direction but in fact in both directions.
The burden of proof lies with the Complainant to establish that the Respondent has registered and used the disputed domain name in bad faith. The Panel finds that the Complainant has failed to demonstrate that the Respondent registered and used the disputed domain name in bad faith. D. Reverse Domain Name Hijacking
The Respondent has requested the Panel to consider a finding of reverse domain name hijacking.
According to the Rules, reverse domain name hijacking means using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name. In other words, wrong and improper or reckless motives are the common factor of the Complainant's actions.
In Amanresorts Limited v. Melissa Perlman,WIPO Case No. D2003-0383 involving a request for a finding of reverse domain name hijacking, the Panel states that “the real question is whether it should have been clear to the Complainant when it commenced this proceeding, that its position was wholly without merit, and that there was no prospect of the Complaint succeeding.” As in that case, this Panel believes that in commencing the proceeding the Complainant's motive was not unreasonable. The Panel considers the Complainant's motivation related to its concern about customer confusion and its understandable belief that the Nominet decision was incontrovertible.
The Panel finds that the Respondent has not provided sufficient evidence to justify a finding of reverse domain name hijacking. 8. Decision
For all the foregoing reasons, the Complaint is denied.
Ross Wilson
Sole Panelist
Date: November 21, 2008
Full & Egal Universal Law Academy