WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Graco Children's Products Inc. v. Oakwood Services Inc. Case No. D2009-0813 1. The Parties
The Complainant is Graco Children's Products Inc. of Exton, Pennsylvania, United States of America, represented by Schiff Hardin LLP, United States of America.
The Respondent is Oakwood Services Inc. of Dallas, Texas, United States of America, represented by Rothstein Rosenfeldt Adler, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Compana LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2009. On June 19, 2009, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the disputed domain name. On June 20, 2009, Compana LLC 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” 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 June 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2009. The Response was filed with the Center on July 14, 2009.
The Center appointed William R. Towns as the sole panelist in this matter on July 21, 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.
The Complainant on July 18, 2009, forwarded to the Center an unsolicited supplemental submission (“Complainant's Reply to Response”) based on what the Complainant described as newly discovered evidence regarding the Respondent's identity. The Respondent, on July 20, 2009, submitted to the Center an objection to the admission of the Complainant's supplemental submission (“Respondent's Objection to Admission of Complainant's Reply”), but also requested an opportunity to submit a sur-reply. The Respondent requested and was afforded by the Panel an opportunity to submit a sur-reply on or before July 31, 2009, but the Respondent did not do so.
In view of the foregoing, the date for the Panel to forward its decision to the Center was extended pursuant to paragraph 15(b) of the Rules to August 14, 2009. 4. Factual Background
The Complainant makes various children's products, including strollers and car seats, and related accessories. The Complainant and its predecessors-in-interest1 have used the trademark APRICA in connection with children's products in the United States as far back as the early 1980s, and have obtained trademark registrations for APRICA in the United States and in other countries and jurisdictions around the world, including a Community Trademark registration in Europe.
The Respondent is the current registrant2 of the disputed domain name , which resolves to a pay-per-click portal website populated with links to third party commercial websites offering various products and services, including links to websites offering children's products such as car seats, stroller, high chairs and booster seats, Internet users clicking a search link for “Aprica” on the Respondent's website are directed to third party websites offering APRICA strollers and car seats, as well as competing brands of such products. The Respondent's website also contains search links for “Aprica Strollers”, “Baby”, “The Baby Jogger”, “Baby Strollers”, “Car Seats”, and “Children's Products”. 5. Parties' Contentions A. Complainant
The Complainant asserts that the disputed domain name is identical and confusingly similar to its APRICA mark. According to the Complainant, the Respondent's website advertises products that are directly competitive to the Complainant, and includes a prominent banner displaying the Complainant's APRICA mark, intended to create the impression that the Respondent's website is affiliated with or endorsed by the Complainant.
The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent has never been commonly known by the disputed domain name, is not authorized to use the Complainant's APRICA mark, and is illegitimately seeking to exploit and profit from the Complainant's mark by driving Internet traffic to the Respondent's website in order to generate advertising revenues from pay-per-click links to third party commercial websites. The Complainant asserts that the Respondent clearly must have had the Complainant's mark in mind when registering the disputed domain name, in view of the foregoing.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith, intentionally attempting to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant's APRICA mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. According to the Complainant, the Respondent's bad faith is further manifested by the Respondent's continued use of the disputed domain name in this manner following receipt of the Complainant's cease and desist letter of March 27, 2009.
In the Complainant's supplemental submission, the Complainant asserts that the Respondent is associated with Texas International Property Associates (TIPA), a respondent in numerous UDRP cases in which transfer orders have been issued.3 B. Respondent
The Respondent claims that the Complainant has not established trademark rights in APRICA on the grounds that the mark is geographically descriptive or misdescriptive, since Aprica is the name of a town and ski resort in northern Italy. Alternatively, the Respondent contends that the Complainant's rights in the mark must be “closely circumscribed” for this reason. In addition, The Respondent asserts that “aprica” is the name of a poisonous mushroom, a type of sea slug, and a plant in North America. 4 The Respondent also asserts that “aprica” means “sunny” in English. Thus, according to the Respondent, the Complainant cannot assert exclusive rights in the word “Aprica”.
The Respondent maintains that it has rights and legitimate interests in respect of the disputed domain name. According to the Respondent, the disputed domain name was initially registered in September 2002 and in use long before the Respondent received notice of this dispute from the Complainant. Further, the Respondent contends that it is making a bona fide use of the disputed domain name to generate click-through advertising revenues based on the geographically descriptive aspect and the various third party uses of the word “Aprica”. The Respondent also asserts that it is not responsible for the advertising content on its website because it has contracted with Hitfarm, which provides targeted advertising searches that are triggered by search requests from Internet users.
The Respondent denies any bad faith, maintaining that it had no intent to target the Complainant's mark, and arguing that the Complainant has presented no evidence that the Respondent selected the disputed domain name “for a free ride upon, Complainant's mark”. According to the Respondent, the Complainant has made no showing that consumers or Internet users are likely to be confused or to associate Respondent's services with the Complainant's. According to the Respondent, a cursory Google search for the term “aprica” yielded approximately 1.2 million results, most of which refer to the ski resort in Italy, mushrooms, or sea slugs, and not to the Complainant.5 Moreover, the Respondent asserts that the Complainant sat on its hands from some seven (7) years following the creation of the disputed domain name, indicating that the Complainant has not been harmed by the Respondent's registration of the disputed domain name, but is instead attempting to hijack the Respondent's domain name. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical or confusingly similar to the Complainant's APRICA mark, in which the Complainant have demonstrated rights in for purposes of paragraph 4(a)(i) of the Policy. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. See also Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson Sr.,WIPO Case No. D2000-1525. That is the case here.
The Respondent's reliance upon Jumeirah Intenational LLC, Jumeirah Beach Resort LLC v. Vertical Axis, Inc., Domain Administrator/J,WIPO Case No. D2009-0203, for the proposition that the Complainant lacks enforceable rights in its APRICA mark is misplaced. With respect to the Complainant's trademark registrations, the record does not reflect that the primary significance of the term “Aprica” is geographic. Moreover, at a minimum the Complainant's marks are entitled to a presumption of validity by virtue of their registration on the United States Patent and Trademark Office's Principal Register. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047. 6
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The disputed domain name is identical to the Complainant's mark. The Complainant's rights in the APRICA mark were established prior to the Respondent's registration of the disputed domain name, but there is no indication in the record that the Respondent explored the possibility of third-party trademarks before registering the disputed domain name. Further, there are multiple pay-per-click advertising links on the Respondent's website leading to third party commercial websites on which the Complainant's APRICA brand products as well as directly competing products are offered.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the 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.
The Respondent submits that prior to notice of a dispute the Respondent was using the disputed domain name in connection with a website populated with automated pay-per-click links to third party commercial websites offering various goods and services. The Respondent's position is, because the term “aprica” is not used exclusively as an indicator of the Complainant's goods and services, this is sufficient to demonstrate that the disputed domain is being used in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
The Panel disagrees. It is true that a number of panels, including this one, have concluded that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant. See National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich,WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047. Thus, where a respondent registers a domain name consisting of “dictionary” terms because the respondent has a good faith belief that the domain name's value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304. But the domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of any value corresponding to a trademark. Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964. See also Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062.
The Panel further notes that paragraph 2 of the Policy requires some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy.7 See Media General Communications, Inc. v. Rarenames, WebReg, supra. See also City Views Limited v. Moniker Privacy Services/Xander, Jeduyu, ALGEBRALIVE,WIPO Case No. D2009-0643 (paragraph 2 of the Policy imposes a continuing duty on registrant to ensure that the domain name is not used in violation of another's rights; this obligation is an integral part of the Policy and cannot be ignored). In this case, the Respondent has not indicated whether it explored the possibility of third-party rights in any way before registering and using the disputed domain name. Although the Respondent does not so acknowledge, it is evident from the record that even a cursory search of the USPTO trademark database prior to the Respondent's registration of the disputed domain name would have disclosed the existence of several registrations for APRICA. See, e.g., HSBC Finance Corporation, supra. And had the Respondent prior to registering the disputed domain name conducted a cursory Google search for the term “aprica” – such as the one the Respondent now wishes to rely on – that search likely would also have informed the Respondent of the Complainant's mark.
The Respondent's position is at variance with UDRP panel decisions holding that those who register domain names for targeted advertising, often using automated programs and processes, cannot simply turn a blind eye to the possibility that the names they are registering will infringe or violate third-party trademark rights. See, e.g., Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448; mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; Mobile Communication Service Inc., supra. These panel decisions and the “willful blindness” standard articulated therein are firmly grounded in an appreciation that paragraph 2 of the Policy requires registrants to make reasonable efforts to ensure they are not infringing upon third-party rights. See, e.g., Terroni Inc. v. Gioacchino Zerbo,WIPO Case No. D2008-0666. Further, as observed by the Panel in City Views Limited v. Moniker Privacy Services/Xander, Jeduyu, ALGEBRALIVE, supra, the obligations imposed by paragraph 2 are an integral part of the Policy and should be applicable to all registrants, even though panel decisions to date for the most part have applied the “willful blindness” standard only when faced with bulk registration of domain names using automated software programs.
Moreover, as has been recognized in both Asian World of Martial Arts Inc., supra, and mVisible Technologies Inc., supra, many domain names have both commonly understood and trademark-related meanings. The disputed domain name here falls into this category. Where, as here, the Respondent has not indicated that it explored the possibility of third-party rights before registering the disputed domain name, to establish rights or legitimate interests in the domain name the Respondent must come forward with credible evidence that the disputed domain name was registered because of its attraction as a generic or descriptive term, and not because of its value corresponding to a trademark, and credible evidence that there has been no use of the domain name inconsistent therewith. See Balglow Finance S.A., Fortuna Comércio e Franquias Ltda. v. Name Administration Inc. (BVI),WIPO Case No. D2008-1216; Media General Communications, Inc. v. Rarenames, WebReg, supra.
Simply stated, to demonstrate rights or legitimate interests under paragraph 4(c) of the Policy, it is not sufficient for the Respondent merely to show that the domain name may be susceptible to a common or descriptive meaning, while turning a blind eye to the use of the domain name with a pay-per-click landing page containing links to ads that relate to a trademark to which the domain name is identical or confusingly. See Balglow Finance S.A., Fortuna Comércio e Franquias Ltda. v. Name Administration Inc. (BVI), supra; Champagne Lanson v. Development Services/MailP, Inc.,WIPO Case No. D2006-0006. In this instance, the Respondent has used the disputed domain name to attract paid advertising that clearly is related to the Complainant's APRICA mark (as opposed to any generic or descriptive meaning of the term “aprica”).8 In the Panel's opinion, it is immaterial in this instance whether such advertising may be automatically generated by a third party such as Hitfarm. The Respondent has received click-through revenue from advertisements remotely placed with the Respondent's acquiescence, and the Respondent ultimately is responsible for the content on its website. See, e.g., Grundfos A/S, supra; Grisoft, s.r.o. v. Original Web Ventures Inc.,WIPO Case No. D2006-1381.
In view of all of the foregoing circumstances, the Panel does not believe that the Respondent has met its burden of production under paragraph 4(c) of the Policy. Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
In this case, the disputed domain name is identical to the Complainant's APRICA mark, in which the Complainant had established rights prior to the Respondent's registration of the disputed domain name. The Respondent registered the domain name in order to use it to target paid advertising. There is no indication in the record that the Respondent explored the possibility of third-party rights in any way before registering the disputed domain name, notwithstanding the implicit requirement of paragraph 2 of the Policy, although it appears from the record that even a cursory review of the USPTO trademark database would have revealed several APRICA registrations.
While the Respondent claims it had no intent to target the Complainant, the facts and circumstances of this case indicate otherwise. The Respondent's website is populated with pay-per-click links that are related to the field of commercial activity of the Complainant, including links to commercial websites offering both the Complainant APRICA products and those of its competitors. The search results for the Respondent's webpage display no apparent connection to the term “Aprica” in relation to the Italian town and ski resorts, poisonous mushrooms, or sea slugs. Simply stated, the Respondent's use of the disputed domain name belies any credible claim that the Respondent registered the disputed domain name based on its attraction as a generic or descriptive term, and instead manifests an intent to exploit and profit from the Complainant's trademark. 9
The Panel concludes from the totality of the facts and circumstances in the record that the Respondent registered and is using the disputed domain name in bad faith. Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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.
William R. Towns
Sole Panelist
Dated: August 14, 2009
1 The Complainant acquired Aprica Childcare Institute Aprica Kassai, Inc. (“Aprica”), a leading maker of strollers, car seats, and other's children's products in 2008.
2 The WhoIs record for the disputed domain name indicates a creation date (i.e., first registration date) of September 16, 2002. The Response alludes to this creation date, but is silent as to when the Respondent first acquired the disputed domain name.
3 Although the Panel accepted the Complainant's supplemental submission for purposes of the administrative record in this proceeding, the Complainant's additional arguments have not been considered by the Panel in reaching a decision in this case.
4 Amanita aprica is a poisonous species of mushroom found in Southwest Canada and the U.S. Pacific Northwest. Gascoignella aprica is name given to a type of sea slug, Townsendia aprica is a low-growing flowering plant found in Utah.
5 The Panel parenthetically notes that upon recreating the Respondent's “aprica” search using the Google search engine four (4) of the first five (5) search results were directly related to the Complainant and its products sold under the APRICA mark.
6 Under United States trademark laws, descriptive marks for which secondary meaning has not been established are eligible for registration only on the USPTO's Secondary Register. See CyberTrader, Inc. v. Gregory Bushell,WIPO Case No. D2001-1019.
7 Paragraph 2 of the Policy, “Your Representations”, is incorporated by reference in the registration agreements of ICANN-approved registrars, and provides as follows:
By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights. (emphasis added).
8 Conspicuously absent from the Respondent's website, for example, are advertising links keyed to Italy, ski resorts, poisonous mushrooms, or sea slugs, notwithstanding the Respondent's claim that the attractiveness of the word “aprica” is based on its geographic or descriptive meaning rather than its trademark value.
9 In City Views Limited v. Moniker Privacy Services/Xander, Jeduyu, ALGEBRALIVE, supra, the panel concluded that the registrant's representations and warranties under paragraph 2 of the Policy, while made as of the time of the registration, also extend to the registrant's future conduct. Thus, depending on the particular facts of any given case, future use of a domain name that calls into question the registrant's compliance with its representations and warranties under paragraph 2 may be indicative of bad faith registration.
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