WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Worldwide Pants Inc. v. VisionLink Communications Group, Inc. Case No. D2008-1796 1. The Parties
Complainant is Worldwide Pants Inc. of New York, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
Respondent is VisionLink Communications Group, Inc. of Plainview, New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “domain name”) is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2008. On November 24, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name. On November 24, 2009, eNom transmitted by email to the Center its verification response confirming that 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” 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 Respondent of the Complaint, and the proceedings commenced on December 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 21, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 23, 2008.
The Center appointed David H. Bernstein as the sole panelist in this matter on January 23, 2009. 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 the television and motion picture production company responsible for several well-known programs including the “Late Show with David Letterman” (1993-present), “The Late Late Show with Craig Ferguson” (2005-present), “The Late Late Show with Tom Snyder” (1995-1999), “The Late Late Show with Craig Kilborn” (1999-2004), “Everybody Loves Raymond” (1996-2005), “Ed” (2000-2004), “The Bonnie Hunt Show” (1995-1996), and the film “Strangers with Candy: The Movie” (2006). Since 1994, it has owned a federal registration for the trademark WORLDWIDE PANTS INCORPORATED in connection with the production of television programs (Registration No. 1,858,943) and since 2005 it has owned a federal registration for the same term in connection with promotional clothing (Registration No. 2,986,729). Complainant prominently displays its trademark during the closing credits of each of its productions and has been the subject of substantial press attention since 1993.
On July 16, 2001, Complainant's counsel sent a letter to Respondent requesting transfer of the domain name but Respondent replied by telephone that it would not do so.
The domain name was first registered in August 1996 and is currently inactive. The Internet Archive does not indicate that the domain name was ever in active use. 5. Parties' Contentions A. Complainant
Complainant contends that the domain name is identical and confusingly similar to its federally-registered trademark WORLDWIDE PANTS INCORPORATED. It is irrelevant, according to Complainant, that the domain name excludes the generic and non-source identifying term “incorporated”. Just as a domain name owner cannot add generic terms to avoid confusing similarity, it cannot delete non-distinctive material from Complainant's mark to avoid having its domain name found confusingly similar with Complainant's trademark.
Complainant contends that Respondent has no rights or legitimate interests in the domain name. Preliminarily, it contends that Respondent bears the burden of establishing legitimacy because Complainant adopted and used its mark extensively prior to the registration of the domain name. Registration of the domain name occurred after Complainant had made extensive use of the WORLDWIDE PANTS INCORPORATED mark and after it had obtained a federal trademark registration, putting Respondent on both actual and constructive notice of the mark. Respondent cannot show any use or preparations to use the domain name in connection with a bona fide offering of goods or services and there is no evidence of any such use or preparation to use within the twelve years since registration. There exists no relationship between the parties that would give rise to any rights of Respondent in the mark, and the domain name is not, nor could it be contended to be, an identifier of Respondent. Respondent lacks the right to use Complainant's mark, and the domain name suggests that Complainant is or may be authorizing or sponsoring a website associated with the domain name, or that the domain name is a means of contacting Complainant.
Complainant contends that Respondent registered and is using the domain name in bad faith. It first argues that the fact that Respondent has registered a domain name that is confusingly similar to Complainant's mark is itself evidence of bad faith. Moreover, in over twelve years, Respondent has never developed a website in connection with the domain name, and this warehousing itself constitutes bad faith. It is impossible to conceive of any legitimate use of the domain name because consumers looking for Complainant will inevitably be diverted to Respondent's website, resulting in confusion. Any use of the domain name would take advantage of the substantial goodwill that the Complainant has established in its trademark by unfairly attracting Internet users to Respondent's website for commercial gain. B. Respondent
Respondent did not reply to Complainant's contentions.1 Accordingly, the Panel may decide the dispute based on the Complaint, all factual allegations are accepted as true, and the Panel may draw appropriate inferences from Respondent's default. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009 (Feb. 29, 2000). 6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and used in bad faith. A. Identical or Confusingly Similar
Complainant easily satisfies its burden under paragraph 4(a)(i). Complainant owns two federal trademark registrations incorporating the words “Worldwide Pants”, and the only difference between the domain name and Complainant's registered trademark is the dictionary term “Incorporated”, which is insufficient to avoid confusing similarity. See Pfizer Inc. v. Asia Ventures, Inc.,WIPO Case No. D2005-0256 (May 6, 2005) ( confusingly similar to the trademark PFIZER). B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which Respondent may demonstrate rights or legitimate interests in a domain name:
(i) before any notice of the dispute, Respondent's use of, or demonstrable preparations to use, the domain or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is 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.
Although the Policy places the burden on Complainant to establish the absence of rights or legitimate interest in the domain name, panels long have recognized the inherent difficulties of proving a negative. Accordingly, the consensus view is that Complainant need only put forward a prima facie case that Respondent lacks rights or legitimate interests, whereupon the burden of production shifts to Respondent to allege specific facts establishing rights or a legitimate interest. See, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306 (Jan. 24, 2001); WIPO Overview of WIPO Panel Views on Selected UDRP Questions § 2.1. The burden of proof, however, always remains on the Complainant.
Complainant has sufficiently met its burden in putting forward a prima facie case that Respondent lacks rights or legitimate interests. It has demonstrated that Respondent is not associated with any business incorporating the mark WORLDWIDE PANTS and that, despite twelve years of ownership, Respondent has never used the domain name in connection with a bona fide offering of goods or services or any other legitimate endeavor. Because Respondent has not come forward with any evidence to the contrary that might show that it has rights or legitimate interests in this domain name, the Panel finds that Complainant sustained its burden of proving that Respondent lacks any rights or legitimate interests in the domain name. C. Registered and Used in Bad Faith
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:
(i) circumstances indicating that [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 that complainant, for valuable consideration in excess of [respondent's] documented out-of-pocket costs directly related to the domain name; or
(ii) [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 [respondent has] engaged in a pattern of such conduct; or
(iii) [respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent's] 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 [respondent's] web site or location or of a product or service on [respondent's] web site or location.
Although the circumstances listed in paragraph 4(b) are all phrased in terms of affirmative actions by Respondent, it is now firmly established that the passive holding of a website, in certain circumstances, can constitute bad faith use under the Policy. See, e.g., Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,WIPO Case No. D2006-0483 (June 15, 2006); Telstra Corporation Limited. v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (Feb. 18, 2000); WIPO Overview of WIPO Panel Views on Selected UDRP Questions § 3.2. The panel in Telstra pointed to a number of factors tending to show that Respondent's passive holding of a website satisfied the requirements of paragraph 4(a)(iii):
(i) “the Complainant's trademark has a strong reputation and is widely known, […]
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,
(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) […] it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law.”
The circumstances of the present case are sufficiently similar to those present in Telstra and its progeny to establish bad faith passive holding of the domain name.
Complainant has produced evidence sufficient to establish that Respondent was, or certainly should have been, aware of Complainant's trademark at the time registered the domain name in 1996. First, Complainant is the owner of two United States registrations for the mark WORLDWIDE PANTS INCORPORATED, putting Respondent, a United States resident, on constructive notice of the trademarks. See, e.g., Teachers Insurance, supra (“As both Respondent and Complainant are residents of the United States, Respondent was on constructive notice of Complainant's trademark rights.”). Second, it is highly likely that Respondent had actual knowledge of Complainant's mark when it registered the domain name in 1996, three years after Complainant began use of the mark and two years after it was registered. At the time the domain name was registered, Complainant already was producing several successful television shows in the United States, and prominently displayed its mark at the conclusion of every episode it produced. Complainant has provided evidence of substantial press coverage between 1993 and 1996 and continually to this day. Although Complainant's mark may not have the same degree of worldwide fame as the TELSTRA mark, it is reasonable to infer that Respondent, a United States resident located in the same metropolitan area as Complainant, had knowledge of Complainant's mark when it registered the domain name, especially since it has not provided any innocent explanation for the registration for this unusual combination of dictionary words. See Teachers Insurance, supra (“Respondent resides in the same state and city as Complainant, increasing the likelihood that Respondent was actually aware of Complainant's mark.”).
It is true that “worldwide” and “pants” are both dictionary terms, but it would be an unusual coincidence for Respondent to have registered this domain name independently; rather, the Panel draws the inference that Respondent registered this domain name with actual knowledge of Complainant's mark. Moreover, given that Respondent has not posted any content on a website to which the domain name resolves in the dozen years since, it appears that Respondent is not planning to pursue a use that might arguably support a legitimate interest (including, for example, a noncommercial fan site or criticism site).2
Had the Respondent chosen to respond, it is possible that Respondent might have pointed the Panel to good faith reasons for registering and passively holding the domain name. However, just as in Telstra, Respondent has failed to submit any response to Complainant's allegations. Paragraph 14(b) of the Rules provides that in the event of default, “the Panel shall draw such inferences therefrom as it considers appropriate”. The Panel will not relieve Respondent of its burden to respond by conjecturing some plausibly good faith justification for twelve years of failing to actively develop a website based on a federally-registered mark. Accordingly, the Panel infers from Respondent's default that it is unable to rebut Complainant's showing of bad faith.
One difference between this case and the Telstra decision is that, unlike as in Telstra, Respondent did not provide false registration information. However, the Telstra holding does not turn on the use of false contact information; rather, the central holding of that case is that passive holding of a well-known mark can itself suffice to establish bad faith registration and use. See Teachers Insurance, supra (“The provision of false contact information or operation under a false identity is not a prerequisite for a finding of bad faith registration and use based on respondent inaction.”) (citing Ingersoll-Rand v. Frank Gully, d/b/a Advcomren,WIPO Case No. D2000-0021 (March 9, 2000)).
Having found that Respondent's registration and passive holding of the domain name constitutes bad faith use and registration, Complainant has satisfied its burden on paragraph 4(a)(iii) of the Policy. 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 the Complainant.
David H. Bernstein
Sole Panelist
Dated: February 10, 2009
1 Given the absence of a Response, the Panel has carefully reviewed the record and ensured that Respondent received fair notice of this proceeding pursuant to the Rules. Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415 (Jan. 23, 2001). The Center sent notification of the Complaint to Respondent by United Parcel Service (“UPS”) to the Respondent's mailing addresses, and UPS has confirmed that the package was in fact delivered on December 2, 2008. The Center also sent the notification to the email address listed in the Registrar Verification, another email address provided by the Complainant, and the postmaster address for the domain name; two of these email addresses generated bounce back messages, but the third did not, which suggests that the emails also were received by Respondent. The Center was unable to send notification by fax because Respondent did not include a fax number in its WHOIS information. Thus, it appears that the Respondent received actual notice of the Complaint, but even if did not, the Panel finds that the Center has discharged its obligation to provide fair notice to Respondent under paragraph 2(a) of the Rules. See Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647 (July 2, 2008) at n.2.
2 In this regard, this Panel disagrees with the panel in Telstra that one cannot imagine “any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate”. There almost always can be legitimate noncommercial fair uses of a domain name, just as there can be many illegitimate uses. However, when no use at all is made after sufficient time, and no excuse is offered to explain the registration or the subsequent passive holding, then the inference of bad faith overwhelms any possible speculation as to legitimate interests.
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