The Complainant is Witmer Public Safety Group, Inc. of Coatesville, Pennsylvania, United States of America represented by Belles Katz LLC, United States of America.
The Respondent is Kwang pyo Kim, of South Korea represented by ESQ, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2011. On January 14, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On January 14, 2011, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 17, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 17, 2011.
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 the Respondent of the Complaint, and the proceedings commenced January 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for the Response was February 8, 2011. The Response was filed with the Center on February 8, 2011.
The Center appointed Gabriela Kennedy (presiding), Jonathan Hudis and The Hon Neil Brown QC as panelists in this matter on March 15, 2011. The Panel find 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
The Complainant is an American company based in Pennsylvania which provides equipment and supplies to fire, police, EMS and military personnel through retail stores and website sales. The Complainant was established in 1996 and has been continuously trading under the trade mark “the” since 1999. Further, the Complainant applied for the registration of the United States trade mark “the” in relation to retail store services featuring apparel used in connection with fighting fires and performing emergency rescue services, products and tools used in connection with fighting fires and products and tools used in connection with performing emergency rescue services on September 19, 2006 and obtained registration for this mark on January 8, 2008.
The Respondent appears to be a resident of South Korea. The Disputed Domain Name was registered on December 24, 1999. From 2001 to 2008, the Disputed Domain Name resolved to a website entitled “Focus Enhancements” which offered electronics goods for sale (the “Website”). The Website was recently amended and is now a referral website featuring pay-per-click links to other websites promoting and selling firefighting equipment and related goods. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarised as follows:
(a) The Disputed Domain Name is confusingly similar to the Complainant’s registered trade mark; the Complainant also has unregistered trade mark rights which have arisen from the extensive use of the “the” trade mark since 1999;
(a) The Respondent no longer has rights or legitimate interests in the Disputed Domain Name. The Disputed Domain Name used to resolve to a website offering electronic goods for which there was no ground for dispute. However, the Website was recently reconstituted to direct Internet traffic to the websites of the Complainant’s direct competitors, from which the Respondent derives profit;
(b) The Respondent currently has no legitimate, noncommercial use of the Disputed Domain Name;
(c) The Disputed Domain Name creates confusion in the marketplace and damages the goodwill associated with the Complainant’s trade mark;
(d) The Disputed Domain Name is being used in bad faith. The Complainant’s trade mark is very well known and it is extremely unlikely that the Respondent was not aware of that fact. The Respondent is capitalizing on the fame of the Complainant’s trade mark to generate traffic to its website; and
(e) By using the Disputed Domain Name to direct the public to websites that compete directly with the Complainant, the Respondent is intentionally and wrongfully using the Complainant’s goodwill for its own gain. B. Respondent
The Respondent’s contentions can be summarised as follows:
(a) The Disputed Domain Name registration predates the Respondent’s first trade mark application in the United States and the Complainant failed to provide evidence of subsistence of common law unregistered trade mark rights at the time of the registration of the Disputed Domain Name;
(b) The Disputed Domain Name is a descriptive domain name relating to the sale of fire fighting goods. The Disputed Domain Name was registered due to its descriptive nature, and the Respondent did not have any knowledge of the Complainant at the time of registering the Disputed Domain Name;
(c) At the time that the Respondent registered the Disputed Domain Name, the Complainant was conducting business primarily in the state of Pennsylvania and was not well known outside of that state, certainly not in South Korea where the Respondent resides;
(d) The Complainant’s trade mark is for “the” and the Disputed Domain Name is . The fact that the Disputed Domain Name is slightly different from the Respondent’s trade mark (i.e., it does not contain the definite article “the”) is significant since the trade mark in question is very descriptive;
(e) The registration of a descriptive term as a domain name by the Respondent ipso facto establishes that the Respondent’s legitimate interest provided that the Respondent did not register the Disputed Domain Name with the Complainant’s trade mark in mind;
(f) The Respondent has rights and a legitimate interest in the Disputed Domain Name. The fact that the links appearing in the Respondent’s website include links to websites which relate to firefighting goods does not mean that the Respondent targets the Complainant’s trade mark because the links are naturally associated with the descriptive term “fire store” contained in the Disputed Domain Name, and are automatically generated by the parking site;
(g) Pay-per-click activities do not preclude the Respondent from having a legitimate interest in the Disputed Domain Name especially since the Respondent did not even select the links. Hence, the Respondent is clearly using the Disputed Domain Name in connection with a bona fide offering of goods and services;
(h) The Complainant has admitted that the Respondent registered and used the Disputed Domain Name in good faith from 1999 to 2008. Anything after 2008 took place such a long time after registration that it cannot constitute bad faith;
(i) The Respondent registered the Disputed Domain Name simply because it incorporated descriptive terms that became available when its prior registrant failed to renew it;
(j) Even if the use of the Disputed Domain Name might be considered as being in bad faith, there is no evidence that the Complainant had knowledge of the Respondent’s trade mark at the time of the registration of the Disputed Domain Name; this is even more the case since the Respondent is domiciled in South Korea; and
(k) The Complainant has engaged in reverse domain name hijacking because there was absolutely no basis for the claim and the Complainant should have known that before filing its Complaint. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith.
The Panel has come to a decision to deny the Complaint but for different reasons that are set out in the following opinions: A. Identical or Confusingly Similar
The Presiding Panelist accepts that the Complainant presently has rights in the “the ” trade mark due to its U.S. registration for the trade mark dated January 8, 2008. While the Complainant did not have any registrations for the “the” trade mark at the time that the Disputed Domain Name was registered, Paragraph 4(a)(i) of the Policy does not require that the Complainant show it had rights in the trade mark at the time that the Disputed Domain Name was registered, but rather it merely requires that such right exists at the time of filing the Complaint (see, e.g., Digital Vision, Ltd. v. Advanced Chemill Systems,WIPO Case No. D2001-0827; and Esquire Innovations, Inc. v. I c/o Whois Identity Shield; and Vertical Axis, Inc, Domain Administrator,WIPO Case No. D2007-0856).
Whether the Complainant had rights in the trade mark at the time of registration of the Disputed Domain Name may be relevant to the consideration of bad faith under paragraph 4(a)(iii) of the Policy, but it is not relevant for the purposes of determining whether the Disputed Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
The only difference between the Disputed Domain Name and the Complainant’s “the” trade mark is the removal of the definite article “the” from the Disputed Domain Name. As the definite article offers little meaning to the trade mark, its removal does nothing to negate the confusing similarity between the Disputed Domain Name and the Complainant’s mark (see e.g., Press-Enterprise Company v. Cook Barela,WIPO Case No. D2006-0731; and Mandarin Oriental Services B.V. v. Control Alt Delete,WIPO Case No. D2000-1671).
The Presiding Panelist accordingly finds that the Disputed Domain Name is confusingly similar to the “the” trade mark in which the Complainant has rights, and that element 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The Respondent contends that the registration of descriptive domain names, such as the Disputed Domain Name, ipso facto establishes the Respondent’s legitimate interest, provided that the trade mark was not registered with a particular trade mark in mind. The Respondent cites a number of cases in support of this principle, including Metro Sportswear Limited (trading as Canada Goose) v. Vertical Axis Inc. and C c/o Whois Identity Shield,WIPO Case No. D2008-0754; Baccus Gate Corp. d/b/a International Wine Accessories v. CKV and Port Media, Inc.,WIPO Case No. D2008-0321. In the Metro Sportswear Case the Panel found that the relevant question for generic domain names is whether the respondent registered the domain name with the complainant’s trade mark in mind and deliberately used it to take advantage of the complainant’s reputation in that name. The Panel in that case further stated that: “The key is whether a respondent registered and is using a domain name to describe his product/business or to profit from the generic value of the word without intending to take advantage of a complainant’s rights in that word”. The Presiding Panelist is sympathetic to the approach taken in the Metro Sportswear case.
The Presiding Panelist agrees that the Disputed Domain Name is of a descriptive nature. The Presiding Panelist also finds that there is no evidence that the Respondent knew of the Complainant’s trade mark at the time of registering the Disputed Domain Name (as discussed in more detail in relation to bad faith below). Therefore the Presiding Panelist finds that the Respondent did not register the Disputed Domain Name with the Complainant’s trade mark in mind, and the Presiding Panelist accordingly finds that the Complainant has not satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name.
As the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy, the Complaint thus fails, and in normal circumstances, the third requirement under paragraph 4(a)(iii) of the Policy would not need to be considered. The Presiding Panelist, however, thinks it fit to look at the third requirement in view of the Respondent’s claim that the Complainant engaged in Reverse Domain Name Hijacking. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to establish that the Respondent registered and used the Disputed Domain Name in Bad Faith (the “conjunctive requirement”). There are conflicting views expressed by Panels as to whether a complaint should be successful when it can prove bad faith use in the absence of bad faith registration.
The Panel in the UDRP Case of Camon S.p.A. v. Intelli-Pet, LLC,WIPO Case No. D2009-1716, discussed the conjunctive requirement issue in great depth (including an analysis of many previous decisions). In particular, the Panel in that case looked at recent decisions which found that the wording of paragraph 4(b)(iv) of the Policy is such that it is not necessary to prove registration and use in bad faith, and that the type of use described in this paragraph is to be taken as evidence of bad faith registration as well as bad faith use. However, the Panel in the Camon case did not agree with this approach and favoured the stricter, conjunctive requirement approach.
The Presiding Panelist agrees with the approach taken by the Panel in the Camon case, and is of the view that the requirement under paragraph 4(a)(iii) is conjunctive, and that a complainant must prove bad faith registration and bad faith use in order to satisfy the requirements of paragraph 4(a)(iii).
The Complainant did not have any trade mark registrations for “the” at the time that the Respondent registered the Disputed Domain Name, nor did it provide sufficient evidence that it possessed common law rights in the trade mark at the time that the Disputed Domain Name was registered. According to the Complainant, it commenced use of the “the” trade mark sometime in 1999, less than a year before the Respondent registered the Disputed Domain Name on December 24, 1999. The Disputed Domain Name consists of descriptive generic terms, and the Complainant has not produced any evidence that the “the” trade mark obtained any great degree of fame or secondary meaning in the time prior to registration of the Disputed Domain Name, certainly none that extended to South Korea, where the Respondent resides.
By the Complainant’s own admission, the Respondent did not register the Disputed Domain Name in bad faith, and was not using the Disputed Domain Name in bad faith until recently when the Respondent started using the Disputed Domain Name to resolve to a website that features a parking page with links to the Complainant’s competitors’ products.
Given that the Respondent registered the Disputed Domain Name in good faith over 10 years ago and subsequently used the Disputed Domain Name in good faith for a long period of time, the Presiding Panelist finds that the Complainant would not successfully satisfy paragraph 4(a)(iii) of the Policy either. However, the Presiding Panelist notes that recent use of the Disputed Domain Name is suggestive of bad faith. D. Reverse Domain Name Hijacking
The Respondent contends that the Complainant has engaged in reverse domain name hijacking due to the fact that the Complainant had no basis for filing the Complaint and should have known of this prior to filing the Complaint.
Reverse Domain Name Hijacking is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. The body of case law indicates that in order to make out a claim for reverse domain name hijacking, the Respondent must show that the Complainant had knowledge of the Respondent’s right or legitimate interest in the domain name, as well as proving the Complainant subjected the Respondent to harassment in the face of such knowledge (see Sydney Opera House Trust v. Trilynx Pty. Limited, WIPO Case No. D2000-1224).
While the Presiding Panelist has found that the Complainant has failed to satisfy the requirement of paragraph 4(a)(ii) and the Complaint should therefore be denied, she also concluded that the Complainant would not satisfy paragraph 4(a)(iii) either, noting however the recent bad faith use of the Disputed Domain Name. The Presiding Panelist thus finds that the Complainant had an arguable case at least and does not find that the Complaint was frivolous or that it was filed merely to harass the Respondent. Accordingly, the Presiding Panelist does not find that the Complainant engaged in reverse domain name hijacking. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Gabriela Kennedy
Presiding Panelist
Jonathan Hudis
Panelist
(Concurring in the Result)
The Hon. Neil Brown QC
Panelist
(Concurring in Part, Dissenting in Part)
Dated: March 31, 2011 Jonathan Hudis Concurring Opinion
I write separately to concur in the Result reached by the Panel majority, although on narrower grounds.
The facts are fairly uncontested. The Respondent registered the Disputed Domain Name in 1999, and used it in an unobjectionable way (according to the Complainant) at least until 2008. At some point (the Complainant suspects it was within the last 6 months) the Respondent re-tasked the “www.” Website so that it is now a “click through” site directing Internet users to some of the Complainant’s competitors.
To begin, the Complainant has alleged a prima facie case under the Policy. 1) The Complainant has registered rights and has provided at least proof of “some” common law rights in “TheFireS”. The Disputed Domain Name is confusingly similar to the Complainant’s mark. However, as noted above in the Presiding Panelist’s opinion and below in this Panelist’s concurring opinion, proof of priority remains in question. 2) Presently, the Respondent is using the Disputed Domain Name for a “click through” site that directs Internet users to some of the Complainant’s competitors. This, arguably, causes confusion to Internet users looking for the Complainant’s web site. This is not a right or legitimate interest recognized by the Policy, paragraph 4(c)(iii). 3) By the same token, the Respondent’s present use arguably is a bad faith use under the Policy, paragraph 4(b)(iv).
Moreover, the Respondent’s re-tasking of the Website resolving to the Disputed Domain Name constitutes progressive encroachment. See, Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455 (4th Cir. 1996) (“the owner has no obligation to sue until the likelihood of confusion looms large.”). The initial use of the Disputed Domain Name arguably was non-infringing, but has since morphed into an objectionable use. Moreover, this new (and arguably infringing) use occurred long after the Complainant began using “TheFireS” mark and name, and well after the Complainant registered the mark in the U.S. Another fact of concern is the Respondent’s “private” registration of the Disputed Domain Name in the name of “Moniker Privacy Services” so as to hide his true identity and contact details.
However, the Complainant has not overcome a fatal flaw in its proof – which is repeatedly mentioned by the Respondent. The Complainant has not shown that it possessed registered or common law trade mark rights in “The FireS” prior to the Respondent’s registration of the Disputed Domain Name. With this lack of proof of priority, I do not see that the Disputed Domain Name is confusingly similar “to a trademark or service mark in which the Complainant has rights” under paragraph 4(a)(i) of the Policy. Absent this proof of priority, the Complainant cannot establish its case under the Policy.
On the other hand, this Panelist is not “sympathetic” to the approach taken by the Presiding Panelist in the “Rights or Legitimate Interests” Section of her opinion. Respondent may not have registered the Disputed Domain Name with the Complainant’s mark, “TheFireS”, in mind. However, there is undisputed evidence that the Respondent re-tasked the “www.” Website to an objectionable use long after the Complainant began using “TheFireS” mark and name, and well after the Complainant registered the mark in the U.S. On these facts, I cannot find that the Respondent has a legitimate interest in the Disputed Domain Name.
I further depart from that part of the Presiding Panelist’s opinion stating that it is unnecessary to discuss bad faith (in view of the Complainant’s failure to prevail under paragraphs 4(a)(i) or 4(a)(ii) of the Policy), and then devote a whole section of the decision to bad faith. To this Panelist, such a circular approach makes no sense. Moreover, because I would decide this matter based upon the Complainant’s failure of proof regarding its trade mark priority, I do not wish to enter the debate whether any complainant needs to prove bad faith use and registration to establish its case under the Policy. I do agree with the Presiding Panelist that the Complainant had at least an arguable case. Therefore, I too would not find that the Complaint was frivolous or that it was filed merely to harass the Respondent. Accordingly, I agree with the Presiding Panelist that the Complainant did not engage in reverse domain name hijacking.
Jonathan Hudis
Panelist
(Concurring in the Result) The Hon. Neil Brown QC Concurring in Part, Dissenting in Part A. Identical or Confusingly Similar
This panelist concurs with the opinion of the Presiding Panelist that the Complainant has satisfied paragraph 4(a)(i) of the Policy, but on the following limited basis. It is sometimes said that for the purposes of paragraph 4(a)(i) of the Policy, a complainant need satisfy only a comparatively low threshold. Thus, for example, the prevailing view seems to be that a complainant need only show that it has a trade mark at the time the complaint is filed. There are, however, decisions to the effect that a complainant must show that its trade mark rights existed prior to the registration of the disputed domain name. Thus, for example, in Expert Computers Inc. v. Name Delegation c/o Domain Administrator, NAF Claim No. 787937, it was said by a unanimous three person panel that:
“Paragraph 4(a)(1) of the Policy requires Complainant to show that Respondent’s domain name is identical or confusingly similar to Complainant’s marks. This provision necessarily implies that Complainant’s rights predate the registration of Registrant’s domain name. Intermark Media, Inc. v. Wang Logic Corp., FA0212000139660 (NAF Feb. 19, 2003). Respondent registered the domain name on May 1, 2001, which is prior to Complainant’s first use date of its trademark and was three years prior to Complainant’s filing of its application. As Complainant has not shown that its rights pre-date Registrant’s domain name, Complainant has not satisfied paragraph 4(a)(1) of the Policy.”
Accordingly, it may be the case that the Complainant in the present proceedings has satisfied the requirement of paragraph 4(a)(i) as a matter of literal interpretation of the Policy, for it “has” trademark rights, even if it did not have them when the Disputed Domain Name was registered. But it should be noted that its trademark rights are weak and will not allow it to prevail in these proceedings. That is so because the trademark in question was not applied for until 7 years after the Disputed Domain Name was registered and was not issued until 9 years after the Disputed Domain Name was registered. As such, it is clear that the trademark relied on will not enable a finding that the Disputed Domain Name was registered in bad faith.
Moreover, the Complainant has not established that it has or ever had an unregistered or common law trade mark in THEFIRESTORE.COM. It is true that it asserts in the Complaint that it has used that mark “in connection with” its business, but it nowhere alleges that it ever had an unregistered or common law trade mark and certainly offers no evidence of secondary meaning or anything else to make out such a case. Indeed, the Complainant’s case is that the trade mark is THEFIRESTORE.COM, i.e., that it is in the form of an internet domain name. The domain name is registered not in the name of the Complainant, but in the name “Jeff Smith Private Registration”. This suggests that the Complainant has been somewhat reticent in promoting its connection with as the source of its goods and services. But at the very least the case for a common law or unregistered trademark has not been made out.
On the limited basis explained above, this Panelist accepts the finding that the Complainant has satisfied the first element. B. Rights or Legitimate Interests
This panelist concurs with the opinion of the Presiding Panelist, for the reasons given, that the Complainant has not satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith
This Panelist concurs with the opinion of the Presiding Panelist, for the reasons given, that the Complainant has not satisfied paragraph 4(a)(iii) of the Policy in so far as it relates to bad faith registration.
This Panelist is also of the opinion that the Complainant has not satisfied paragraph 4(a)(iii) of the Policy in so far as it relates to bad faith use. D. Reverse Domain Name Hijacking
Findings of reverse domain name hijacking should be made sparingly and only when such a finding is clearly justified. In applying that test, a useful guide is that a complainant who brings a complaint over optimistically, even if it fails, is not necessarily guilty of reverse domain name hijacking, but one who brings a complaint, knowing that it will not be able to prove one or more of the elements set out in the Policy or recklessly indifferent as to whether it will be able to prove its case or not, runs a very real risk of such a finding being made against it.
In the present case, it is clear that there was no ground for filing the complaint and that this was known to the Complainant. That is so because the Complainant has made the unusual but frank admission that the domain name was not registered in bad faith. That being so, the Complainant must have been fixed with knowledge, at the time it filed the Complaint, that it would not be able to prove one of the elements required to be proved, namely that within the meaning of paragraph 4(a)(iii), the Disputed Domain Name had not only been used in bad faith, but had been registered in bad faith. That, by itself, is a ground for making a finding of reverse domain name hijacking.
It might be said against this opinion that the Complainant believed on reasonable grounds that when the Respondent registered the Disputed Domain Name it knew of the Complainant’s common law or unregistered trademark. That is an argument that is and can be made on appropriate facts. But there are no such facts that could justify such a view in the present case. The Complainant offered no evidence at all to support a common law trademark, no evidence that the Complainant believed it had a common law trademark and no evidence that the Respondent could conceivably have known of one, had it existed. The Complainant could not therefore have believed on reasonable grounds that it had any hope of making out its case and yet it brought these proceedings regardless. That also is a ground for a finding of reverse domain name hijacking. It is also to be noted that the Complainant did not reply to the Respondent’s application for a finding of reverse domain name hijacking as it could have done. The Respondent made some trenchant criticisms of the Complainant’s case and it would have been helpful for the Panel to see what could be said against the case advanced. When no such reply is advanced, a panel is entitled to reach whatever conclusions it believes are appropriate on the material before it.
Finally, there is an air of unreality about the Complainant’s case of which it must have been aware. It has its own website, “www.the” and the domain name leading to that website is clearly . A search shows that the domain name is registered in the name Jeff Smith Private Registration and that it was registered on August 12, 1999. Despite this privacy registration, it is apparent that the Complainant made a conscious decision to register, not , which it could have registered, but . It seems unreal for it to claim 11 years later that the Respondent has no right to and registered in bad faith a domain name that it could have registered itself, but did not and a domain name that another party subsequently registered and used to promote goods coming within its generic meaning.
The case for a finding of reverse domain name hijacking in the present proceedings is therefore not a marginal one but a strong one. In fact, the Respondent’s description of it as “quintessential reverse domain name hijacking” is probably apposite.
The Hon. Neil Brown QC
Panelist
(Concurring in Part, Dissenting in Part)
Dated: March 31, 2011
Full & Egal Universal Law Academy