The Complainant is Stonz Wear, Inc. of Vancouver, Canada represented by Dickinson Mackaman Tyler & Hagen, PC, United States of America (“U.S.”).
The Respondent is Framez l-Wear of West Islip, New York, U.S., internally represented. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Network Solutions, LLC (“the Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2011. On October 18, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 18, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 21, 2011. The Center verified that the Complaint together with the amendment to 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 October 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2011. The Response was filed with the Center on November 11, 2011.
The Center appointed Karen Fong as the sole panelist in this matter on November 21, 2011. 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. 4. Factual Background
The Complainant is a Canadian company which is in the business of producing and selling infant footwear, gloves and hats. It started trading in 2004. The Complainant filed a U.S. trade mark application to register the mark STONZ and design on July 31, 2008. The trade mark was registered on May 17, 2011 (U.S. trade mark registration no. 3960291). The trade mark is also registered in Canada under trade mark registration no. TMA 715102. The Complainant operates a website connected to the domain name .
The Domain Name was registered on October 18, 1998. The Domain Name was renewed on October 14, 2009. The Respondent has been registered as a business since 1997. It is in the business of producing and selling sunglasses under the brand STONZ since 1998. The Respondent has a U.S. trade mark registration for STONZ in classes 9 and 25 under trade mark registration no. 2365021. The mark was filed on January 27, 1998 and registered on July 4, 2000. The trade mark was cancelled on April 7, 2007 due to the failure of the Respondent to file the required declaration of use. 5. Parties’ Contentions A. Complainant
The Panel summarises the Complainant’s contentions as follows:
1. The Complainant holds valid trade mark rights in STONZ by reason of its U.S. and Canadian trade mark registrations. The Domain Name is confusingly similar to the registered trade marks.
2. Although the Respondent did at one time have a registered trade mark in the U.S. for the mark STONZ, the mark was cancelled on April 7, 2007 for failure to file the required affidavit of use of the mark with the USPTO. The Respondent has ceased using the Domain Name and therefore has no rights or legitimate interests in the Domain Name.
3. On or about April 2007, the Complainant contacted the Respondent on the telephone to make an offer to purchase the Domain Name. The Complainant did not receive a response to this offer from the Respondent. It is unclear whether a conversation took place or whether an answer phone message was left. At about this time, the Complainant submitted an offer to purchase the Domain Name for USD 250 through a website (it is unclear from the printout submitted what the website address is). The offer was to expire on May 7, 2007. It would appear that no response was received to the offer. The Complainant filed its trade mark application to register the STONZ and design mark on July 31, 2008. In the meantime, the Respondent renewed the Domain Name on October 14, 2009. The Complainant’s trade mark was registered on May 17, 2011. On June 21, 2011, the Complainant’s legal representatives wrote to the Registrar asking for the Registrar to transfer the Domain Name to the Complainant as the website connected to the Domain Name is not active and has not been active for some time. No response was received from the Registrar. The Complainant has done its due diligence in trying to secure the Domain Name through contacts with the Respondent and the Registrar. Since the WayBackMachine website shows that the Domain Name has not been in use since February 21, 2007 and the Respondent’s trade mark was cancelled in April 2007, the Respondent renewed the Domain Name in October 2009 even though there was no intent to use the Domain Name. The above shows that the Respondent’s actions are nothing more than an attempt to block the Complainant from a legitimate use of the Domain Name. The Respondent is holding the Domain Name in bad faith. B. Respondent
The Panel summarises the Complainant’s contentions as follows:
1. The Respondent has been commonly known by the name STONZ. It has been making and selling sunglasses under the brand STONZ since 1998. The Respondent submitted advertisements supporting the use of the mark in 1998 in relation to sunglasses. The Complainant on the other hand is in the business of shoes and boots which whilst in the broader fashion industry is different from the Respondent’s industry. There is therefore no likelihood of confusion.
2. The Respondent had a trade registration for STONZ in Class 9 and 25 since 2000. The trade mark registration for STONZ was cancelled accidentally as the Respondent’s principal was involved at the time with various personal issues. The Respondent has plans to re-register the trade mark in class 9. The above shows that the Respondent has rights or legitimate interests in the Domain Name.
3. The Domain Name pre-dates the Complainant’s trade mark registration by at least seven years. The Respondent could not have been contemplated the Complainant’s non-existent rights at the time of the registration of the Domain Name. It has never tried to solicit offers to sell the Domain Name to the Complainant or any of its competitors. There is no evidence that the Respondent attempted to attract commercial gain by creating confusion or that the Respondent registered the Domain Name for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant or its competitors. If the Respondent registered the Domain Name in good faith then it must have an unforfeitable right. If that is the case, the Domain Name cannot be said to have been registered in bad faith especially since the Respondent is not a transferee of the Domain Name. The Respondent had not received any of the pre-proceeding communications from the Complainant that the latter alleged were made. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The 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 Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
Failure to prove any one of these factors is fatal to the Complaint. B. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trade mark STONZ.
The Complainant’s trade mark is a stylized mark for STONZ, with the letter “O” bearing a footprint within it. In all respects, the mark is for the word STONZ. The Domain Name could therefore be considered to be identical to this term and therefore no showing of confusion is required. In any event, even if the mark is not considered identical, the threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. In this case the Complainant’s registered trade mark STONZ is the dominant portion of the Domain Name. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic top level domain suffix “.com”. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a 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.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well-established that the burden of proof remains on the Complainant to prove an absence of rights or a legitimate interest. Panels, however, have long recognized the inherent difficulties of proving a negative. Accordingly, panels generally require the complainant to come forward with a prima facie showing that a respondent has no rights or legitimate interests; thereafter, the burden of production shifts to the respondent, even though the burden of proof always remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions 2.1 (“WIPO Overview 2.0”).
In this case, the Panel finds that the Complainant has in fact failed to put forward a prima facie case. This is a case where the Domain Name and the Respondent’s right to the mark STONZ pre-dates the Complainant’s trade mark. The Complainant was also aware that the Respondent was at one time using the trade mark in respect of goods from its searches on the WayBackMachine website. It is clear that the Respondent had rights or legitimate interests in the name and therefore falls within the safe harbor of paragraph 4(c)(i).
The next question is whether the fact that (a) the Respondent’s trade mark registration was cancelled for failure to file an affidavit of use in 2007; and (b) the Respondent appears not to be using the website connected to the Domain Name since some time in 2007 nullifies the defense for the purpose of the second element of the Policy. The Panel is of the view that it does not. There is no requirement that a respondent has to have registered rights to fall within 4(c)(i) in the first place. Again, the fact that the Respondent is not actively using the Domain Name after establishing that it has rights or legitimate interests in the first place does not nullify these rights. As stated by the panel in The California Milk Processor Board v. Center Ring Productions, LLC,WIPO Case No. D2011-1689, “Paragraph 4(c)(ii) has no qualifier, and in these circumstances the Panel will not infer one. In a Policy proceeding the Complainant must establish that the Respondent lacks rights or legitimate interests in the disputed domain name, not that the Complainant’s rights are ‘superior’ or of longer standing (citations omitted)”.
The above reasoning applies to Paragraph 4(c)(i) as well and the Panel finds that the Complainant has failed to establish the second element of the Policy. D. Registered and Used in Bad Faith
Whilst there is no necessity for the Panel to consider the third element of the Policy in view of the finding in the second element, nevertheless for completeness the Panel will give its reasons why the Complaint fails under this head as well. The Complainant’s arguments in relation to bad faith failed to take into account the conjunctive or traditional approach in relation to the requirements of “registration and use”. Neither did the Complainant attempt to argue the “Mummygold” approach, City Views Limited v Moniker Privacy Services/ Xander, Jeduyu, ALGERALIVE,WIPO Case No. D2009-0643, which adopts the “unified concept”. The Complainant’s arguments seem to be based on a novel approach - the fact that because the Respondent is no longer using the Domain Name and attempts to resolve the matter with the Respondent and Registrar have been unsuccessful, the Domain Name is being held in bad faith by the Respondent.
Adopting the traditional conjunctive approach, there is no question here that the registration of the Domain Name could not possibly be in bad faith as the Complainant was not even in existence at the time of the registration of the Domain Name and the Respondent could not have contemplated the Complainant’s then non-existent right.
In relation to the renewal of the Domain Name, whilst the WIPO Overview 2.0 states that a mere renewal of a domain name is not generally treated at a new registration for the purpose of assessing bad faith, the Panel also notes the approach of taken by some panelists in considering whether the use complained of is different from what the Respondent has legitimately been doing (see Eastman Sporto Group LLC v. Jim and Kenny,WIPO Case No. D2009-1688). In this case, although the Respondent may have stopped actively using the Domain Name, these reasons are completely unrelated to the establishing of the Complainant’s trade mark rights. In any event, the fact that it has stopped actively using the Domain Name and the fact that its registered trade mark rights have been cancelled does not mean that it has no unregistered and/or residual rights in the STONZ mark. The Complainant has not shown any bad faith on the part of the Respondent at the time of renewal of the Domain Name.
In relation to the use of the Domain Name, the Respondent does not appear to be currently using the Domain Name and whilst there are certain circumstances where passive holding does not prevent a finding of bad faith because of the cumulative circumstances which includes the complainant having a well-known trade mark, no response to the complaint and the registrant’s concealment of its identity (Paragraph 3.2 of the WIPO Overview 2.0), this is certainly not one of these cases. The fact that the Respondent has for the moment not been actively using a Domain Name which it acquired and used legitimately does not amount to bad faith. The fact that the Complainant tried but failed to get the Respondent to sell the Domain Name again does not mean that the Respondent is acting in bad faith particularly since no evidence has been provided that the Respondent actually received any of the communications and the Respondent has stated that it had in fact not received any of the communications.
The Complainant has failed to satisfy the third element of the Policy 7. Decision
For all the foregoing reasons, the Complaint is denied.
Karen Fong
Sole Panelist
Dated: December 8, 2011
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