The Complainant is Jake's Fireworks Inc. of Pittsburgh, Kansas, United States of America, represented by Hovey Williams LLP, United States of America.
The Respondent is Whois Privacy Services Pty Ltd / Vertical Axis Inc., Domain Administrator, Customer ID: 47520518994762 of Fortitude Valley, Queensland, Australia and the Garrison, St. Michael, Barbados, respectively, represented by ESQ Law Firm, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with F. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2011. On May 5, 2011, the Center transmitted by email to F a request for registrar verification in connection with the disputed domain name. On May 6, 2011, F 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 May 9, 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 May 13, 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 May 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response June 7, 2011. The Response was filed with the Center June 7, 2011.
The Center appointed Christopher J. Pibus, Sir Ian Barker and The Hon Neil Brown QC as panelists in this matter on July 6, 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.
An Administrative Procedural Order requesting the Respondent to provide further details regarding the acquisition of the disputed domain name was issued on July 19, 2011. In response to the Order, the Respondent filed materials on July 25, 2011. The Complainant filed its response to those materials on July 29, 2011. 4. Factual Background
The Complainant operates a business which distributes and sells fireworks throughout the United States of America under the name “Jake’s Fireworks”. The Complainant owns nine distribution centers in Washington, Nebraska, Kansas, Oklahoma, Arkansas, Kentucky, Indiana and South Carolina. The Complainant owns a trademark registration for the mark WORLD-CLASS FIREWORKS & Globe Design, U.S. Trademark Registration No. 2,781,352, registered November 11, 2003.
The Respondent, Vertical Axis, Inc., is in the business of registering and purchasing domain names for the purpose of resale. The Respondent registered the disputed domain name on December 17, 2005. At the time the Complaint was filed, the domain name reverted to a website that provided links to various businesses including a number of entities selling fireworks. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The Complainant owns the trademark WORLD-CLASS FIREWORKS & Design, registered as U.S. Trademark Registration No. 2,781,351, on November 11, 2003. The Respondent has registered the domain name , which is identical to the Complainant’s registered trademark, except for the deletion of the hyphen between the words “world” and “class”. The deletion of the hyphen and the added .com designation do not distinguish the disputed domain name from the Complainant’s Registered Trademark. Accordingly, the domain name is confusingly similar to the Complainant’s WORLD-CLASS FIREWORKS & Design Trademark. Rights or Legitimate Interests
The Respondent is not publicly known by the “World Class Fireworks” name, and the Complainant submits that the Respondent cannot have any rights or legitimate interest in the disputed domain name, because the Complainant has exclusive rights to the trademark WORLD-CLASS FIREWORKS. The Respondent has no past or current business relationship with the Complainant, and the Respondent was never licensed or otherwise authorized to use the Complainant’s trademark. Further, the Respondent is not making a bona fide use of the disputed domain name in that it has used the disputed domain name in connection with a website which provides links to third-party websites which are competitors of the Complainant for purposes of monetary gain. The Respondent is a reseller of domain names and has no business connection or interest in the selling of fireworks. Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith for the following reasons: (i) the Respondent must have known about the Complainant’s rights in the trademark WORLD-CLASS FIREWORKS when it registered a confusingly similar domain name; (ii) the Respondent registered and is using a confusingly similar domain name which reverts to a website which provides links to websites of direct competitors of the Complainant; (iii) the Respondent has registered and is using a confusingly similar domain name to divert internet users looking for the Complainant to the Respondent’s website for the purposes of monetary gain; (iv) the Respondent is using a proxy service to hide its identity; and (v) the Respondent has offered to sell the disputed domain name back to the registered owner for an amount significantly higher than the out-of-pocket expenses incurred to register the domain. B. Respondent
The Complainant does not have exclusive rights to the words ”world class fireworks”, because the trademark is a combination of laudatory and generic words. The Complainant’s rights in its registered trademark are limited to the design elements and its enforcement rights cannot exceed that scope. The words “world class” are descriptive and denote the superior quality of fireworks. The Respondent owns several “world class” combination domain names including: ; ; ; ; and .
The Respondent submits that it was not aware of the Complainant and its trademark registration for WORLD-CLASS FIREWORKS & Design when it registered the domain name . The Respondent registered the disputed domain name when its previous owner failed to renew the domain name and the domain name was cancelled in 2005.
The Respondent is in the business of registering and purchasing domain names and reselling those names. The Respondent contends that the business of buying and reselling domain names constitutes a legitimate right and interest in the domain name. Furthermore, the Respondent submits that it does not control what links are placed on the website, which the disputed domain name refers to, but rather it has employed the services of an auto-generated pay-per-click advertiser, which populates the website with links that relate to the word “fireworks”.
The Respondent submits that it did not register the domain name in bad faith and has not targeted the Complainant because it was not aware of the Complainant or the Complainant’s trademark. The Respondent contends that it registered the domain name in good faith and that it considered the domain name to be made up of generic, common words. Respondent also relies on laches, based on the Complainant’s delay in commencing this proceeding for a period exceeding five years from the date the domain name was registered. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant does have trademark rights in the mark WORLD-CLASS FIREWORKS & Design by virtue of U.S. Trademark Registration No. 2,781,351.
The Panel further finds that the domain name is confusingly similar to the Complainant’s trademark WORLD-CLASS FIREWORKS, as the principal textual elements are the same, except for the deletion of the hyphen between the words ”world” and “class”. The deletion of the hyphen does not serve to distinguish the domain name from the Complainant’s trademark, for purposes of the analysis under Paragraph 4(a)(i).
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
In light of the Panel’s findings under section 6(c), it is unnecessary to make any findings on this issue. C. Registered and Used in Bad Faith
The issue of bad faith is particularly challenging for the Panel in this decision, as the evidence filed by the parties is sharply divergent in a number of fundamental respects. Faced with contradictory evidence, in a summary proceeding, which does not permit cross-examination or viva voce testimony, the Panel is aware that its findings will necessarily be based on the present record.
The Complainant’s most difficult issue arises from Respondent’s explicit denial that it was aware of the Complainant’s trademark when it acquired the disputed domain name. There are some situations where this sort of denial is simply not credible, such as where a Respondent’s website displays obvious indicia of deceptive intent, for example use of infringing graphic or textual elements. However, where this sort of damning collateral evidence is absent, as is the case in this proceeding, the Panel is faced with the difficult task of evaluating Respondent’s knowledge of the trademark based on reasonable scrutiny applied to the parties’ submissions and weighed on the balance of probabilities.
What then are the factors that support Complainant’s position on bad faith, and can those factors prevail in light of Respondent’s explicit denial of knowledge of the trademark?
(i) Complainant’s sales and promotional efforts support a reputation for the WORLD-CLASS FIREWORKS & Design Trademark since 1997 through the 8 U.S. states where it operates distribution centers and throughout the U.S. by virtue of its retail locations. The overall success of the Complainant’s business means that its trademark is at least somewhat well-known even if it is not a “famous” brand.
(ii) Complainant’s specific trademark registration for WORLD-CLASS FIREWORKS & Design dates back to 2003, and those registered rights were obviously accessible to anyone who cared to search.
(iii) Since the Respondent is in the business of buying and selling domain names, it would have had ready access in 2005 to the U.S. Trademarks Database and must have known or ought to have to known about Complainant’s registration at that time.
All of these factors are said to lead to the inference that the Respondent knew or ought to have known about Complainant’s trademark when it acquired the domain name in question. On their own, these factors could support an inference of bad faith on the part of the Respondent. However, that inference is put into question by the following issues raised by the Respondent’s evidence, which cumulatively turn the balance of probabilities in the Respondent’s favour.
(i) Respondent flatly denies any knowledge of Complainant’s trademark. This denial is supported by sworn evidence of 2 witnesses, although the precise role of the witnesses in Respondent’s decision-making is not clear. In the absence of inconsistencies in this evidence, or other circumstances which undermine its credibility, the evidence, on the present record, is difficult for Complainant to overcome.
(ii) Respondent argues that the mark in question is merely a combination of laudatory and descriptive elements which ought to be available for use by others. The Panel accepts that the disputed domain name is in fact comprised of laudatory and descriptive elements, which are by virtue of their descriptive nature attractive to website developers and users. This is a significant factor in Respondent’s favour.
(iii) Respondent admits that its business model involves the purchase of multiple domain names, which are identified as having useful descriptive elements, including multiple domain names prefixed by the words ”world class”. In the circumstances of this Complaint, it appears that Respondent’s business model was predicated not on an intention to trade on the reputation of Complainant’s brand but on an intentional selection of attractive descriptive terms.
(iv) The Panel agrees that a brand owner who adopts a clearly descriptive mark must live with the consequences of that choice, which may sometimes include situations where other users cannot be prevented from adopting those same descriptive terms to identify the character or nature of their products.
(v) The extent of the reputation of the Complainant in the specific trademark WORLD-CLASS FIREWORKS has not been developed in any many meaningful or measurable detail in the evidence. To persuade the Panel that WORLD-CLASS FIREWORKS & Design is in fact a famous mark would require more comprehensive support than Complainant has mustered, in particular in terms of annual sales, annual advertising expenditures and other tangible materials which might allow for the inference that Respondent might or ought to have known about the trademark in question. Our review of Complainant’s sales materials (as produced) makes it clear that the primary source identifier used by Complainant is in fact JAKE’S FIREWORKS, with WORLD-CLASS FIREWORKS serving as a secondary brand. This is not helpful to Complainant’s submission that Respondent must have been aware or ought to have been aware of its trademark rights.
(vi) Respondent openly admits that its associated website contains links to fireworks suppliers, but maintains that this is a logical consequence of the plainly descriptive combination of words that comprise the disputed domain name. In other words, the impugned links are relied on to support Respondent’s argument that the domain name is primarily a description of the category of wares, not of a particular supplier. The Panel does not view the presence of these links on Respondent’s website as a probative indicator of bad faith.
(vii) The absence of any other indicia of copying by the Respondent in the design, get-up or appearance of its website is also relevant to the failure to establish bad faith. For example, the Panel notes that the disputed domain name does not replicate the hyphenated form of ”WORLD-CLASS” which is used by the Complainant. That small difference is obviously not determinative, but it is consistent with the overall absence of the indicia of copying.
In light of the evidence provided in this proceeding, the Panel finds that the Complainant has failed to establish on the balance of probabilities that Respondent’s conduct amounts to bad faith registration and use of the domain name.
Accordingly, the Panel finds that Complainant has not satisfied the requirement under Paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Presiding Panelist
Sir Ian Barker
Panelist
The Hon Neil Brown QC
Panelist
Dated: August 9, 2011
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