Complainant is Carol House Furniture, Inc. of Maryland Heights, Missouri, United States of America, represented by Senniger Powers LLP, United States of America.
Respondent is Registrant [3458020]: Oversee Domain Management LLC of Los Angeles, California, United States of America, represented by Willenken Wilson Loh & Lieb LLP, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with D LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2010. On December 7, 2010, the Center transmitted by email to D LLC a request for registrar verification in connection with the Domain Name. On December 15, 2010, D LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a request for confirmation by the Center, Complainant filed an amended Complaint on December 16, 2010.
The Center verified that the Complaint together with the amended 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 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2011. The Response was filed with the Center on January 6, 2011.
The Center appointed Christopher S. Gibson, Jordan S. Weinstein and David E. Sorkin as panelists in this matter on January 31, 2011. The Panel finds that it was properly constituted. Each member of 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, Carol House Furniture, Inc., was incorporated in 1970 and it has done business under the Carol House Furniture name since at least 1965.
Complainant owns the CAROL HOUSE FURNITURE trademark, which Complainant has used in connection with the sale of furniture since as early as 1965. Complainant has used its CAROL HOUSE FURNITURE mark continuously during more than 45 years in business, thereby obtaining common law trademark rights in the mark.
Complainant owns United States Trademark Registration No. 3595641, granted on March 24, 2009 for the CAROL HOUSE FURNITURE mark, and owns the Missouri State Registration No. S017573, granted on March 1, 2007 for the CAROL HOUSE FURNITURE mark.
Respondent registered the Domain Name on September 4, 2010. Respondent has used it to link to a parking, pay-per-click (PPC) site that offers links to other sites, thereby earning revenue by obtaining click-through commissions from owners of the sites to which it links. 5. Parties’ Contentions A. Complainant
Complainant contends that the Domain Name is identical or confusingly similar to marks in which it has rights. The Domain Name is and the entire portion of the Domain Name that precedes the top-level is an exact match with Complainant's CAROL HOUSE FURNITURE mark, with the exception of the double “r" and double “l" in "carroll" and the deletion of the generic term "furniture”. Complainant explains that this close misspelling of CAROL is a classic example of typo-squatting, which has been held to constitute confusing similarity in numerous cases under the Policy. It is well-established in UDRP precedent that the addition or deletion of a generic term is insufficient to avoid confusion with a complainant's trademark. Complainant refers to several previous cases in which the addition of a generic term was not sufficient to avoid confusing similarity.
Complainant maintains that Respondent has no rights or legitimate interests in the Domain Name. Respondent has not made a bona fide use of the Domain Name or a name corresponding to it in connection with a bona fide offering of goods or services. The Domain Name directs to a website that is deceptively designed to appear to be a legitimate site for selling merchandise, and specifically furniture, but instead is merely a parking site that is being used to deceive consumers and direct them to competitors of Complainant and to other parties. Thus, Respondent is using the Domain Name as bait to attract customers to Respondent's site and to other parties' goods and services. Moreover, Respondent has no relationship whatsoever with Complainant and Complainant has never authorized Respondent to use the Domain Name or any other domain name. Respondent has not at any time been commonly known by the Domain Name. Respondent has not made a legitimate noncommercial or fair use of the Domain Name.
Complainant asserts that the Domain Name was registered and is being used in bad faith. Respondent registered the Domain Name in September 2010, which is 45 years after Complainant first used its CAROL HOUSE FURNITURE mark, and also after Complainant had obtained its federal and state trademark registrations. Respondent selected, registered, and used the Domain Name in an effort to trade on Complainant's goodwill, in order to provide commercial gain for Respondent. Respondent has used the Domain Name to attract customers to its website, which is merely a parking site offering links to other websites. Respondent gains revenue by obtaining click-through commissions from the owners of the sites to which it links. Furthermore, even stronger evidence of bad faith is provided by the fact that Respondent's PPC links direct Internet users to sites offering products that compete with Complainant's products. As such, Respondent's registration and use of the Domain Name is in bad faith. B. Respondent
Respondent claims the Domain Name is not identical or confusingly similar to Complainant’s trademark. Respondent argues that this is not a case of typo-squatting, which occurs when a domain name differs from a trademark in a manner that might reflect a typographical error attributed to the layout of the “qwerty” keyboard. More times than not, such “typo domains” make no sense absent the existence of the trademark on which they are based. Respondent gives the example of a registrant counting on an Internet user mistyping the mark “clorox” as “cloroz” and arriving at the domain name . The Domain Name is not a typographical error based on CAROL HOUSE FURNITURE because the entire word “furniture” is missing and the term “carroll” in the Domain Name is the proper spelling of the surname “Carroll”. In short, the Domain Name is not a typo of Complainant’s mark but a properly spelled combination of a surname and the generic word “house”. Nothing prohibits the registration of such a generic string on a “first come, first served basis”. Further, Respondent contends that in arguing that the Domain Name and the CAROL HOUSE FURNITURE mark are similar, Complainant asks that the Panel ignore part of the actual mark (i.e., the word FURNITURE).
Respondent also argues that the Domain Name was not created by adding a descriptive term to a fanciful mark. Nor does the Domain Name “incorporate the trademark in its entirety”. Indeed, the CAROL HOUSE FURNITURE mark does not appear anywhere in the Domain Name because (i) there is a legitimate spelling difference between the given name “carol” and the surname “Carroll”; and (ii) the mark contains the word FURNITURE, whereas the Domain Name does not. Complainant is asking that this Panel disregard the term “furniture” when conducting its analysis of similarity. In doing so, the Panel would be disregarding part of Complainant’s mark itself and would violate the long-standing principle that, in conducting a comparison between two marks (or, in this case, a mark and a domain name), the marks must be compared in their entirety. Here, when one compares the mark, in its entirety, to the Domain Name, there is no confusing similarity given the spelling difference between “carol” and “carroll” and the absence of the word “furniture”. Alternatively, the Domain Name, standing alone, connotes nothing other than a surname and the word “house”, rather than a furniture store.
Respondent also contends that confusion does not exist, even if the Panel were to ignore the word “furniture” in its analysis, because Complainant operates in a “crowded field”. A crowded field exists when multiple parties are using similar or identical marks. Confusion is less likely in a crowded field because consumers, having been presented with so many similar, if not identical trademarks, have learned to differentiate between them. Respondent provides examples of third parties who are using some derivation of “Carol” or “Carroll” and “House”. According to Respondent, there are numerous parties who use the name Carol House or Carroll House without the exclusive right to prohibit the use by others. In light of the pervasive third-party use, consumer confusion is unlikely given the dissimilarity between Complainant’s mark and the Domain Name.
Respondent maintains it has legitimate rights in the Domain Name. Respondent emphasizes it is for Complainant to establish that Respondent has no rights or legitimate interests in the Domain Name, and when a domain name corresponds to a less distinctive mark, this burden tends to be higher than it might otherwise be. Here, the phrase “Carroll House” is nothing more than a generic string consisting of the surname “Carroll” and a generic word “house”. That being the case, Respondent has every right to own the Domain Name and populate it with pay-per-click links. Numerous panels have found that the use of domain names for PPC links or the direct navigation industry is legitimate and establishes rights or legitimate interests in a domain name. According to Respondent, this is particularly the case where the domain name concerned is generic or not clearly associated with a single entity. The terms “Carroll” and “house” (or derivations thereof such as “Carol”) consist of a surname and a generic word and are not associated with a single entity. Thus, Respondent’s operation of accomplishes the same function as a search engine where somebody might input “Carroll House” as a search term: it provides a different set of potential results relating to the phrase “Carroll House” from which a user can select the one that is most appropriate for them.
Respondent argues it is not guilty of “bad faith”. Respondent goes through the various factors included in the Policy that are illustrative of bad faith. Respondent has not offered to sell, rent, or otherwise transfer the Domain Name to Complainant or a competitor. Further, it cannot be said that Respondent has prevented Complainant from reflecting its mark in a corresponding domain name, because Complainant has registered two domain names corresponding to its mark.
The prong that Complainant focused on, and the one on which Respondent focuses its response, is whether by using the Domain Name, Respondent intentionally attempted to attract for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website. Respondent argues Complainant cannot establish “bad faith” for two reasons. First, nothing suggests that Respondent knew of and targeted Complainant when it registered the Domain Name. In fact, Respondent, a California company, asserts that it had no knowledge of Complainant, a Missouri company, until the present matter was filed. Respondent has put in the sworn declaration of Lance Martinez to the effect that Respondent had never heard of Complainant prior to Complainant’s filing of the Complaint; and, that during the registration process, neither Respondent’s automated filtering system nor Respondent’s human reviewers (of which there were three) identified as identical or confusingly similar to a trademark. This principle—that a finding of bad faith is necessarily predicated on Respondent’s targeting of Complainant—is well-established. That the landing page for the Domain Name subsequently provided links for furniture is of no moment. The keywords appearing on the site are determined by an automated system (called DomainSponsor) and, in part, as a result of the interaction between visitors to the site and the site itself. Respondent asserts that when Complainant visited the Domain Name’s site and selected various furniture-related keywords and made printouts for purposes of preparing its Complaint, it essentially increased the odds that the site would be optimized for furniture going forward, as opposed to, for example, bed and breakfasts. Given that it is entirely permissible to show pay-per-click advertisements on a site for a generic or descriptive domain name that does not refer to any single source, it would be nearly impossible to show that providing advertisements related to one such source (unknown to Respondent at the time of registration) proves that the Domain Name was originally registered in bad faith. Respondent asserts that it is simply trying to provide visitors to the site with a complete set of potential items of interest for people who happen to be looking for “Carroll House”. 6. Discussion and Findings
The burden for Complainant under paragraph 4(a) of the Policy is to prove:
(i) that the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered is being used in bad faith. A. Identical or Confusingly Similar
There is no question that Complainant has long-established rights, through use and more recently registration, in its CAROL HOUSE FURNITURE mark. As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Overview”), the fact that secondary meaning may exist only in a particular geographic area does not limit Complainant’s rights in a common law trademark.
Given that the Domain Name is not identical to Complainant’s mark, the question is whether it is confusingly similar. Respondent’s Domain Name incorporates the dominant element of Complainant's mark, deleting only the generic term “furniture” and using the double “r" and double “l" in "carroll". While this may not constitute an instance of "typo-squatting", the Domain Name and the dominant element of Complainant's mark have identical pronunciation. Further, "carroll" is a common alternative spelling of "carol", such that Internet users might be expected to substitute one for the other in seeking Complainant's website. Although the content of a website is normally not relevant for determining confusing similarity, in this case, if Respondent’s explanation of its dynamically generated PPC links is to be believed, then this would be additional evidence of confusing similarity, as Respondent’s PPC links have been optimized to boost “furniture” to the most prominent links on Respondent’s site.
For all of these reasons, the Panel finds that the Domain Name is confusingly similar to Complainant’s CAROL HOUSE FURNITURE mark pursuant to Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
A complainant is normally required to make out a prima facie case that a respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in a domain name. If the respondent fails to do so, the complainant is considered to have satisfied paragraph 4(a)(ii) of the UDRP.
Complainant maintains that Respondent has no rights or legitimate interests in respect of the Domain Name because, while Respondent has been using the Domain Name commercially, Respondent has made no bona fide use of it. Complainant has argued that Respondent has not been commonly known by the Domain Name nor been authorized by Complainant to use its trademark. Instead, Respondent is using it as bait to attract customers to Respondent's site, which is deceptively designed to appear to be a legitimate site for selling merchandise, and specifically furniture, but is merely a PPC site used to deceive consumers and direct them to competitors of Complainant and to other parties. The Panel finds that Complainant has made out a prima facie case on this showing as supported by the evidence Complainant has submitted.
In response, Respondent has contended that it has every right to own the Domain Name on a first-come, first-served basis and populate it with PPC links. Respondent has argued that its PPC site should be considered a legitimate use of the Domain Name. The majority of cases decided under the Policy involving PPC links, however, including cases cited by Respondent, are careful to distinguish legitimate use from circumstances where a domain name registrant may have targeted a trademark owner or its mark. According to Respondent, the phrase “carroll house” is nothing more than a generic string consisting of the surname “Carroll” and the generic word “house”. Moreover, the combination of these terms forms a string that is not associated with any single entity. However, the WIPO Overview, in paragraph 2.2, provides that if a complainant makes out a prima facie case that a respondent has no rights or legitimate interests, as Complainant has done in this case, and the respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in a domain name even if it is comprised of generic words. Thus, the fact that the Domain Name in this case consists of a surname and generic word is not, in and of itself, sufficient to rebut Complainant’s claims.
Here, the Panel considers that, although Respondent’s assertions of entitlement to register the combination of the terms “Carroll” and “house” as surname and generic word would appear to have superficial plausibility, much depends on the answers to the following two questions: Why did Respondent choose this particular word string from the entire universe of generic strings available? And why did Respondent’s PPC site for the Domain Name, which name by itself has no semantic connection with the furniture business, feature prominent links for furniture, which is Complainant’s line of business? These questions are addressed below in the section on bad faith registration and use.
Accordingly, whether Respondent can be considered to have made a bona fide use of the Domain Name and obtained any rights or legitimate interests in it, and therefore, to have rebutted Complainant’s prima facie showing, depends on the analysis in the next section. Because the Panel finds that the Domain Name was registered and has used in bad faith, in connection with a landing page featuring furniture-related PPC links, the Panel finds Respondent’s use has not acquired any rights or legitimate interests in the Domain Name. The Panel concludes that Policy, paragraph 4(a)(ii) has been satisfied. C. Registered and Used in Bad Faith
The Panel considers that the decisive issue in this case is whether Respondent has exhibited conduct that fits into bad faith registration and use by the intentional registration of the Domain Name to capitalize on Complainant’s goodwill, with the Domain Name being used to link to a PPC site featuring links to sites offering furniture products in competition with Complainant.
Complainant, whose CAROL HOUSE FURNITURE mark has been in continuous use for 45 years, has alleged that Respondent selected, registered, and used the Domain Name in an effort to trade on Complainant's goodwill by linking it to a PPC site. Complainant has proven that Respondent has registered the Domain Name, has linked it to a page containing PPC links, and that the furniture-related PPC links are the top two links on Respondent’s web page. Further, while furniture sites might well be an appropriate link to put in a site whose domain name includes the term "house", that would not be a valid explanation of good faith for including such a link where "house" is combined with the surname "Carroll". The Domain Name does not appear to be descriptive of anything, or to have any semantic meaning related, in particular, to furniture. The Panel finds that Complainant has made an initial showing of bad faith registration and use. The burden falls to Respondent to rebut it and to answer the two questions raised above: why did Respondent choose this particular word string from the universe of words available, and why did Respondent’s PPC site feature prominent PPC links for furniture?
Respondent is in the business of registering domain names. It has not come forward with any explanation for why it chose to register the disputed Domain Name in particular, other than as part of a business model for maximizing PPC revenue in which an “automated system” identifies potential domain names for registration. The Panel did not learn anything from Respondent about the criteria that it programs into its automated system for identifying potential domain names. For example, the criteria in its system might search for word strings that bear similarity to trademarks. The Panel just does not know. Thus, explaining that it uses an automated system does not enlighten the Panel nor relieve Respondent of its responsibility to avoid registering words that infringe on the rights of third parties. That Respondent appears to be relatively savvy when it comes to registering domain names and that it acknowledges its intent to use them for PPC links only heightens the concern in this case.
Respondent claims it had no knowledge of Complainant prior to this dispute, and that during the registration process, neither Respondent’s automated filtering system nor Respondent’s human reviewers identified as confusingly similar to a trademark. Respondent does not state whether its filtering system uncovered Complainant's mark, whether Complainant's mark came to the attention of the three human reviewers, or whether the reviewers, if confronted with Complainant's mark, considered the Domain Name unlikely to cause confusion, an assessment that would be different from this Panel’s determination. Does Respondent aggressively choose word strings that risk crossing the line? Again, the Panel is not told anything about the process used by Respondent’s human reviewers. While Respondent denies that it was targeting Complainant, the issue remains open as to whether it was aware of Complainant’s trademark. Is it too much to expect that Respondent should prove that it was unaware of Complainant's mark, when this evidence is only within the zone of Respondent’s own operations? Given that Complainant’s mark had been used for 45 years, that Complainant had its own well-established website selling furniture, that both parties are located in the United States, and that Respondent is in the business of registering domain names, a finding of constructive notice may not go too far in this case. In view of the circumstantial evidence, the Panel expected something more from Respondent to rebut Complainant’s case.
As for bad faith use, Complainant has submitted copies of Respondent’s web page featuring furniture-related PPC links as the two top links. Respondent contends that where "there is evidence that the domain name was registered for a permissible purpose, it must be weighed against any evidence of bad faith registration." But what was the permissible purpose? Was it, as Respondent indicates, "providing visitors with a complete set of potential items of interest for people who happen to be looking for 'Carroll House'?" What is a "Carroll House?" If it is a place to buy furniture, as indicated by the top two links on Respondent’s site and even though the name, standing alone, connotes nothing to suggest furniture, then that is not a permissible purpose.
This inquiry brings the Panel to Respondent’s explanation for the content on its site. The evidence on this issue is Complainant's submission, consisting of a copy of Respondent’s web page for the Domain Name showing furniture-related PPCs as the top two links, and Respondent's explanation that the links appearing on its site are determined, at least in part, by an automated system and are the result of the interaction between visitors to the site and the site itself. Once again, Respondent’s use of automated technologies does not relieve Respondent of its responsibilities to avoid infringing on the rights of third parties. But what links appeared on Respondent’s web page when it was first uploaded? The Panel does not know because Respondent did not provide a copy of that page. Respondent speculates, however, that the initial PPCs links could have included home rentals and furniture. Why did it not submit a version of the search page as it appeared when first uploaded? Respondent could have provided sample versions of its web page with the top search terms being, for example, Lewis Carroll's house, or any of the other entities that it asserts constitute alternative meanings for "Carroll House". However, Respondent did not do so. As between Complainant and Respondent, the latter should be able to provide its own data. There are at least two plausible alternative explanations for why the website Complainant received when it accessed the Domain Name included furniture-related PPCs as the top links: (i) these terms did not change from the way they first appeared when Respondent uploaded the web page; or (ii) Internet users other than Complainant clicked on furniture-related PPC links on the Domain Name’s web page, placing these links at the top. The Panel does not know the actual reason why Complainant received the web page it did, but the Panel does know that it did receive that page; that it was possible the page included furniture-related PPC links from the day it was uploaded, and that it was possible third parties, not Complainant, searched for furniture or clicked furniture-related PPCs links before Complainant ever did. Therefore, the possibility that furniture-related PPCs links can appear on Respondent's web page, combined with the certainty that the web page included these links when Complainant accessed it, negate Respondent's claim that its landing page had a "permissible purpose" weighing against bad faith registration. Moreover, there is no reason why Respondent, as a domain name company with filtering technology, could not have added code to its web page system in order to avoid furniture-related PPC links. For a firm in the business of registering domain names so that they can be linked to PPC web pages, this course of technical operation would presumably be standard practice and Respondent cannot assert that it has no responsibility in the matter.
The Panel finds for all of the above reasons that Respondent has not adequately rebutted Complainant’s showing of bad faith registration and use. Accordingly, the Panel finds that Complainant has satisfied the Policy, paragraph 4(a)(iii). 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 Complainant.
Christopher S: Gibson
Presiding Panelist
Jordan S. Weinstein
Panelist
David E. Sorkin
Panelist
Dated: March 21, 2011
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