WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sophia's Heritage Collection, Inc. v. Beverly Danusis Case No. D2009-1752 1. The Parties
Complainant is Sophia's Heritage Collection, Inc. of Malvern, Pennsylvania, United States of America, represented by the law firm Panitch Schwarze Belisario & Nadel, LLP, United States of America.
Respondent is Beverly Danusis of Fort Wayne, Indiana, United States of America, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with R. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2009. On December 22, 2009, the Center transmitted by email to R. a request for registrar verification in connection with the disputed domain name. On December 23, 2009, R 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 Respondent of the Complaint, and the proceedings commenced on December 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for the Response was January 18, 2010. The Response was filed with the Center on January 14, 2010.
The Center appointed Richard G. Lyon as the sole panelist in this matter on January 27, 2010. The Panel finds that it was properly constituted and has jurisdiction over this administrative proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Center received supplemental filings from both Complainant and Respondent on January 19, 2010. Complainant's filing sought to correct two claimed “misstatements of fact” in the Response. Respondent's submission was an email communication contesting the accuracy of Complainant's factual assertions in the proposed supplemental filing. Neither proposed additional submission is justified by the extraordinary circumstances that occasionally countenance departure from the Rules' limiting each party to one submission, so each party's request for a supplemental submission is denied. The Panel takes no account of the supplemental material in his decision.1 4. Factual Background
Complainant sells dolls, toys, and gifts under (among other brands) its trademark SOFIA'S. This mark was registered with the United States Patent and Trademark Office (“USPTO”) in January 2003, for dolls and related accessories. Complainant maintains an active website at . According to the Complaint this domain name was acquired in 2000; according to the Wayback archives it first contained content in January 2002.
Respondent also sells dolls; hers are generally modeled upon various Greek mythological goddesses. She registered the disputed domain name in 2005 and has used it for sale of her merchandise. Three times between February 2007 and April 2008 Respondent attempted to register SOPHIADOLLS with the USPTO, and three times the application was denied, primarily because of similarity with Complainant's mark. 5. Parties' Contentions A. Complainant
Complainant contends as follows:
1. The dominant feature of Complainant's registered trademark and the disputed domain name is the word SOPHIA. Adding the product for which Complainant's trademark is registered only exacerbates confusion between that mark and the disputed domain name.
2. Complainant has never authorized Respondent to use its mark. By using a domain name confusingly similar to Complainant's mark Respondent has knowingly diverted consumers seeking Complainant to Respondent's site. Respondent's registration of the disputed domain name “contravened the following representations made under [paragraph] 2 of the Uniform Domain Name Dispute Resolution Policy, which states: ‘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 (a) the statements that you made in your Registration Agreement are complete and accurate; (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.'
3. Respondent's registration and use of the disputed domain name “where, as here, Respondent was aware of Complainant's prior rights,” constitutes bad faith for purposes of the Policy. B. Respondent
Respondent's contentions do not in substance address the first two heads under paragraph 4(a) of the Policy. Her opposition to the Complaint is based upon the following factual grounds:
1. Each party's products are clearly dissimilar and address entirely different markets and target customers. There is no likelihood of confusion between their products.
2. Complainant has made no showing of confusion. Respondent's site receives very few visitors and there are thousands of websites that employ the word “Sophia” or similar together with “doll.”
Respondent denies any bad faith, asserting that “At the time of obtaining the Respondent's Domain Name, the Respondent was not aware of the existence of the Complainant's Company.” 6. Discussion and Findings
The requirements of paragraph 4(a) of the Policy are conjunctive, and Complainant bears the burden of proof on each. If any required element is not established the Complaint must fail. In this case the Panel finds that Complainant has not established that Respondent registered the disputed domain name in bad faith. In light of this the Panel need not, and chooses not, to address the other Policy heads.
To establish registration in bad faith Complaint must ordinarily show that Respondent actually knew of Complainant, and that she targeted Complainant or its products at that time, selecting the disputed domain name to take advantage of take advantage of those marks.2 These may be proven by direct evidence or inferentially.
Complainant provides no evidence to support its charge, quoted above, that Respondent knew of Complainant's mark when she registered the disputed domain name. Respondent denies it and her denial is not incredible in the circumstances of this case. Complainant's mark is not famous in the trademark sense and appears not to be particularly distinctive even in its own industry; there are many other registered marks that use the relatively common woman's name “Sophia” or variant spellings and many other dolls are marketed under brands that feature such words as well. Respondent could easily have selected the disputed domain name because of the woman's name or, as she claims, for a combination of that and its meaning (wisdom) in the Greek language. This is not an instance where seeking a free ride on Complainant's mark is the only reasonable explanation for selecting the disputed domain name. The United States doctrine of constructive notice normally does not apply in Policy proceedings (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.4), and none of the limited exceptions to that rule of decision applies in this case.
Nor is there any evidence of targeting. None of the standard elements of cybersquatting appears on this record. There is no (nor has there ever been) obvious copying or imitating Complainant's mark, logo, products, or website. Respondent does not appear ever to have been the subject of a Policy proceeding, and she is not a domain name aggregator to which special duties might attach. She used the disputed domain name for actual promotion and sales of her own merchandise rather than targeted (or other) hyperlinks based upon Complainant's mark. In short, at no time did Respondent appear to seek to exploit the goodwill attaching to Complainant's mark.
As such, the Panel finds that it has not been established on the record in this case that the disputed domain name has been registered and is being used in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Sole Panelist
Dated: February 8, 2010
1 Following his customary practice the Panel did read the supplemental submissions, and notes that neither contains any material relevant to the merits.
2 E.g., Align Technology, Inc v. Web Reg/ Rarenames/ Aligntechnology.Com,WIPO Case No. D2008-0103.
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