The Complainant is H, Inc. of California, United States of America, represented by Fulwider Patton LLP, United States of America.
The Respondent is Frank Kelly, Intervac International of Stockholm, Sweden, represented by MAQS Law Firm Advokatbyrå AB, Sweden. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with CSL Computer Service Langenbach GmbH dba J. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2011. On December 20, 2011, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba J a request for registrar verification in connection with the Disputed Domain Name. On December 22, 2011, CSL Computer Service Langenbach GmbH dba J 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 the Respondent of the Complaint, and the proceedings commenced on January 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2012. The Response was filed with the Center on January 24, 2012. The Respondent further communicated with the Center on February 9, 2012 by email requesting that the Panel not permit the Complainant to file a Supplemental Response or Amended Complaint to these proceedings.
The Center appointed Alistair Payne as the sole panelist in this matter on February 3, 2012. 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 was founded in 1997 as a provider of home, boat, apartment and RV exchange services. The Complainant owns a registered service mark on the United States Supplemental Register for HOME EXCHANGE under registration number 3578188 which was registered on February 17, 2009 and with a first use in commerce date of January, 1, 1998. It operates a website at the domain name .
The Disputed Domain Name was registered by the Respondent, Frank Kelly on behalf of the Intervac International organization on April 20, 2005 which organization was originally founded in 1953 to facilitate the exchange of teachers’ homes. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns registered trade mark rights as set out above and that as a consequence of extensive expenditure on advertising and marketing throughout the world its mark is very well reputed. The Complainant says that its mark is wholly contained within the Disputed Domain Name which the Complainant concedes also includes the Respondent’s name. However the Complainant says that because the Complainant and the Respondent are direct competitors the incorporation of its mark into the Disputed Domain Name is likely to confuse Internet users and to divert them to the Respondent’s website particularly when using search engines.
The Complainant further submits that it has never authorized this use by the Respondent and to the best of the Complainant’s knowledge is not commonly known by this mark or name. It says that the Respondent’s conduct in registering the Disputed Domain Name and pointing its other domain names to this one is illegitimate because it is calculated to confuse Internet users who will be presented with a domain name that incorporates the trade marks of both the Complainant and the Respondent and in many cases will be diverted to the Respondent’s website and may think incorrectly that there is some association between the parties. For these reasons the Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
For similar reasons, the Complainant submits that the Respondent’s conduct fulfills the requirements of paragraph 4(b)(iv) of the Policy. In addition it says that the Respondent’s registration of the Disputed Domain Name many years after the Complainant had commenced its business, together with its more recent decision to change its manner of marketing from only using a mark or domain name containing INTERVAC to using the Disputed Domain Name which includes the phrase “home exchange” is calculated to trade on the Complainant’s goodwill and to divert consumers and under paragraph 4(b)(iii) of the Policy is evidence of bad faith. B. The Respondent
The Respondent submits that it is commonly known by the “Intervac Home Exchange” name and that the Disputed Domain Name is not confusingly similar because it commences with the Respondent’s highly distinctive INTERVAC mark and then uses the descriptive phrase “home exchange”. It says that Internet users would not be confused as a result of the use of its visually and phonetically distinct INTERVAC mark. It notes 12 other domain names belonging to different traders which also use this formula and include a descriptive use of the “home exchange” phrase. The Respondent notes that even where there is a degree of confusing similarity that previous panels have found that a domain name used to attract Internet traffic incorporating a commonly used descriptive phrase may be legitimate, for example Private Media Group, Inc., Cinecraft Ltd v. DHL Virtual Networks, Inc., WIPO Case No. D2004-0843.
The Respondent submits that the Policy was never intended to preclude parties from using common descriptive phrases such as “home exchange” unless the complainant had trade mark rights in the phrase and it was clear that there was an attempt by the respondent to capitalize on those rights in bad faith. In any event the Respondent submits that the evidence presented by it supports the conclusion that it has used the name “Intervac Home Exchange” since before the Complainant registered its service mark in 2009 and therefore has rights or legitimate interests in the Disputed Domain Name.
The Respondent submits that it had made extensive use of and was already known by a name corresponding to the Disputed Domain Name long before the Complainant registered its trade mark and that it had used the expression “home exchange” in conjunction with the “Intervac” name for many years. It says that it has no interest in acting in bad faith or seeking to trade off the goodwill attaching to the Complainant’s trade mark or domain name and submits that it is crucial to keep in mind that the Disputed Domain Name incorporates at the beginning a key differentiator the “distinctive “Intervac” name. 6. Discussion and Findings
The Panel is satisfied that the Disputed Domain Name is listed in the registration details as being owned by Frank Kelly for the Intervac International organization and that both parties are properly listed as the Respondent.
The Panel notes that the Complainant has sought leave to make a supplemental filing out of time in reply to the Response and the Respondent initially sought leave to have the deadline for the Response extended and when refused indicated that it would seek to file a supplemental submission.
There is no provision for extension of the date for filing the Response under the Policy and the filing of supplemental submissions is a matter for the Panel’s discretion. In this case the Panel is not inclined to grant either party leave to file supplemental submissions as it does not find that any such additional submissions would assist or alter its decision in terms of the first element of the Policy as set out below. A. Identical or Confusingly Similar
As noted above, the Complainant has demonstrated that it owns registered trade mark rights in the United States for the trade mark HOME EXCHANGE under registration number 3578188. However, the Panel notes that this mark is registered on the Supplemental Register in the United States, which is not equivalent to a registration on the Principal Register and offers the mark a much lower degree of protection. The requirement under the Policy is for an appropriate demonstration of trade mark rights whether registered or not. Having reviewed the evidence of use submitted by the Complainant the Panel is satisfied that the combination of this registration and the degree of common law use of the mark and of renown attaching to it qualifies the mark as being supported by trade mark rights for the purposes of the Policy.
Is the Disputed Domain Name confusingly similar to the Complainant’s mark? The test for confusing similarity requires an objective side by side comparison of the Disputed Domain Name against the Complainant’s trade mark. Where the Disputed Domain Name wholly incorporates the Complainant’s mark, then unless there is an element that sufficiently distinguishes the Disputed Domain Name, it will be confusingly similar for the purposes of this element of the Policy.
In this case, the Complainant’s HOME EXCHANGE mark is wholly incorporated into the Disputed Domain Name, but the other element in the Disputed Domain Name is the Respondent’s distinctive and coined word mark INTERVAC which precedes the words “home exchange” and has been used over a long period of time by the Respondent.
The Panel notes that the expression “home exchange” is descriptive of the services offered by both the Complainant and the Respondent and comprises common English words that should be available for use by all traders in relation to these services. In circumstances that the Respondent had registered these words in a domain name without an adequate distinguisher and that the Complainant could demonstrate significant renown attaching to its mark, then this Panel might have made a finding of confusing similarity. However in this case the Respondent’s strong and distinctive INTERVAC mark, which prima facie appears to the Panel to be a coined term, precedes the expression “home exchange” and is used adjectivally in the sense of a trade mark plus a descriptive expression of services being offered. In the Panel’s view the primary significance of the INTERVAC name or mark in the Disputed Domain Name is sufficient to distinguish it from the Complainant’s HOME EXCHANGE trade mark or trade name.
The Panel notes that the Respondent has submitted evidence of numerous other traders using the expression in their domain names for what would appear to be websites and businesses operating in the same field of activity. Therefore, the Complainant does not in practice enjoy any absolute degree of exclusivity to the phrase “home exchange” and in the Panel’s view, the Respondent should be entitled to use the common and entirely descriptive expression “home exchange” in this manner in its business as should other traders, provided always that their domain names are distinguished appropriately from the Complainant’s.
In short, under the Policy and for the purposes of these proceedings the Panel does not think that Internet users on seeing the highly distinctive INTERVAC mark preceding the expression “home exchange” would be confused and that accordingly the Disputed Domain Name is not confusingly similar to the Complainant’s trade mark under the first element of the Policy.
As a result the Complaint fails in relation to this first element of the Policy and accordingly there is no requirement for the Panel to consider the other elements of the Policy. However the Panel notes that had it been required to consider the second element of the Policy it would have found little difficulty in the circumstances of this case of finding that the Respondent did have a legitimate right or interest in the Disputed Domain Name. 7. Decision
For the foregoing reasons, the Complaint is denied.
Alistair Payne
Sole Panelist
Dated: February 15, 2012
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