The Complainant is Industria de Diseño Textil, S.A. of Arteixo (La Coruña), Spain, represented by Santiago Mediano Abogados, Spain.
The Respondent is Sean Collins of Massachussetts, United States of America (“U.S.”), represented by Brown Rudnick LLP, U.S. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2011. On December 23, 29, 2011 and January 4, 2012, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On January 4, 2012, Network Solutions, LLC 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 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2012. The Response was filed with the Center on January 31, 2012.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on February 8, 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 is a Spanish corporation, operating a fashion retail business under the following banners: Zara, Pull & Bear, Massimo Dutti, Bershka, Stradivarius, Oysho, Tempe, Zara Home, Uterqüe and Lefties. The Complainant operates over 5,402 stores in 78 countries around the world.
The Complainant has developed a payment card to be used within the Complainant’s group of stores called the “AffinityCard”. This “AffinityCard” can be used for payment of goods in the Complainant’s retail stores. The Complainant’s “AffinityCard” is issued by the Uno E Bank in Spain.
The Complainant began registering the trademark AFFINITY CARD in various countries around the world in 1993. The Complainant owns many trademark registrations for the trademark AFFINITY CARD and AFFINITY CARD & Design, including the following:
Andorra – AFFINITY CARD & Design – Reg. No. 994 – December 13, 1996
Benelux – AFFINITY CARD & Design – Reg. No. 566768 – January 18, 1995
Benelux – AFFINITY CARD – Reg. No. 550675 – March 28, 1994
Cyprus – AFFINITY CARD & Design – Reg. No. 45714 – July 18, 1996
Spain – AFFINITY CARD – Reg. No. 1766861 – February 16, 1996
Spain – AFFINITY CARD – Reg. No. 1743915 – February 4, 1994
France – AFFINITY CARD – Reg. No. 93460700 – September 3, 1993
Indonesia – AFFINITY CARD & Design – Reg. No. 399309 – October 14, 1997
Indonesia – AFFINITY CARD & Design – Reg. No. 396291 – October 6, 1997
International Trademark – AFFINITY CARD – Reg. No. 619752 – June 29, 1994
Portugal – AFFINITY CARD – Reg. No. 299286 – September 9, 1997
Singapore – AFFINITY CARD Design – Reg. No. T96/07420Z – July 18, 1996
The Respondent registered the disputed domain name on June 24, 1998. At the time the Complaint was filed the domain name reverted to a website that featured links to third parties. In 2002, the Respondent “parked” the disputed domain name with DomainSponsor, who placed ads on the associated website using a “proprietary alogrithm”. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The Complainant owns many trademark registrations for the trademark AFFINITY CARD around the world (including: Benelux – AFFINITY CARD & Design – Reg. No. 566768; Benelux – AFFINITY CARD – Reg. No. 550675; Cyprus – AFFINITY CARD & Design – Reg. No. 45714; Spain – AFFINITY CARD – Reg. No. 1766861; and France – AFFINITY CARD – Reg. No. 93460700), which date back to as early as September 3, 1993. The Respondent has registered the disputed domain name which is identical to the Complainant’s registered trademark, except for the addition of the “.com” designation. The Complainant contends that the addition of a gTLD designation does not distinguish the disputed domain name from the Complainant’s trademark. Rights or Legitimate Interests
The Respondent is not publicly known by the AFFINITY CARD name, and the Complainant submits that the Respondent cannot have any rights or legitimate interests in the disputed domain name, because the Complainant has exclusive rights to the AFFINITY CARD trademark. 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, and has used the disputed domain name in connection with a website which diverts unsuspecting Internet users to third party websites which are competitors of the Complainant or make unauthorized to the Complainant’s wares and services. 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 reason: the Respondent registered a confusingly similar domain name and is using the disputed domain name in association with a website which provides links to third party websites which are competitors of the Complainant and/or make unauthorized reference to the Complainant for the purposes of monetary gain. B. Respondent
The Respondent submits that the Complainant does not own trademark rights to the phrase “affinity card”, because the phrase is generic in nature, describing a payment card which is connected to a specific third party sponsor or organization. The Respondent draws attention to the Complainant’s attempt to register the AFFINITY CARD trademark in the U.S. Patent and Trademark Database, where the U.S. Examiner rejected the application based on the fact that the mark was too generic to indicate source. The Complainant failed to overcome the U.S. Examiner’s objections and was required to file a disclaimer to the words “affinity card” in order to obtain a U.S. registration. The Respondent relies on this disclaimer to support his argument on genericness.
The Respondent contends that he registered the disputed domain name in 1998, nine years before the Complainant attempted to register the trademark in the U.S.
The Respondent submits that he was not aware of the Complainant or its trademark rights in other countries, in 1998, when he registered the disputed domain name . The Respondent contends that he registered the disputed domain name because it consisted of a generic term that related to his business, and this is supported by simultaneous registration of the plural version, .
By way of explanation, Respondent describes his business background in some detail. The Respondent contends that he is a graduate of the University of California at Berekely, holding a Masters of Business Administration from Wharton School, at the University of Pennsylvania. The Respondent has been involved in the affinity card industry since its inception. The Respondent submits that from May 1989, he worked for American Express, where he created and structured credit card services alliances. Later the Respondent worked for Fidelity Investments in a similar capacity for their mutual fund offerings.
In August, 1994, the Respondent joined Affinity Partners, now known as Affinity Marketing Group. Affinity Partners was a pioneer in creating affinity marketing and customer loyalty programs for financial institutions, insurance companies and other organizations. In 2002, the Respondent left Affinity Partners to create and found Partner Advisors, which creates endorsed financial service programs for various organizations. The Respondent contends that he was active in the affinity card business when he registered the disputed domain name in 1998.
The Respondent submits that he did not make active use of the domain name from June, 1998 to April, 2011, and the disputed domain name for a time simply resolved to a website which featured a notice stating “under construction”. The Respondent submits that in 2002, he employed a third party to place ads on the website using an proprietary algorithm. The Respondent contends that these automatically generated links created by the third party, Domain Sponsor, are not evidence of bad faith. Upon being notified of the links that referred to the Complainant, the Respondent submits that he had those links removed from the website. The Respondent further submits that the use of third party entity to place ads and links on a website is not in of itself evidence of bad faith. 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 interests 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 AFFINITY CARD by virtue of Benelux – AFFINITY CARD & Design – Reg. No. 566768; Benelux – AFFINITY CARD – Reg. No. 550675; Cyprus – AFFINITY CARD & Design – Reg. No. 45714; Spain – AFFINITY CARD – Reg. No. 1766861; and France – AFFINITY CARD – Reg. No. 93460700, which date back to as early as September 3, 1993 .
The Panel further finds that the disputed domain name is identical to the Complainant’s registered trademark AFFINITYCARD, except for the addition of the gTLD “.com” designation. The Panel finds that the additional of a gTLD designation does not serve to distinguish a domain name from a registered trademark.
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 6(C) below, it is unnecessary to make any findings on this issue. C. Registered and Used in Bad Faith
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 disputed domain name .
The Respondent has submitted convincing evidence that the words ”affinity card” may be considered as generic. The Panel is particularly influenced by evidence relating to Complainant’s own representations to the U.S. Patent and Trademarks Office, during the prosecution of its AFFINITY CARD Design mark in 2008-2011. The following representations were made on behalf of Complainant:
“[…] The dominant element in Applicant’s mark is the unique logo design. The words AFFINITY CARD appear alongside the logo, and are substantially smaller than the logo. Because the phrase is descriptive, consumers will view AFFINITY CARD as referring to the type of services that Applicant provides, and not as an indicator of origin. Consumers will instead view the logo as the source-identifying portion of Applicant’s mark.”
(May 6, 2008 Response to Office Action)
“Applicant has previously demonstrated that “affinity card” is a term of art in the marketing industry for a type of consumer loyalty card, and the Applicant does not use the term “affinity card” as a trademark […]
[…] Marketing professionals will immediately understand that Applicant’s use of AFFINITY CARD is descriptive; they will not think that the term AFFINITY CARD is Applicant’s trademark […]”
(February 22, 2011 Request for Reconsideration after Final Refusal)
- “The term AFFINITY CARD does not function as an indicator of source.” (p.5)
- “Affinity Card” is not an obscure term of art – such cards are widely marketed” (p.5)
- No one can “stop Applicant [the Complainant here] or anyone else from using the descriptive term “affinity card”, which is clearly in the public domain.” (p.7)
- “affinity card” is not a trademark” and “is incapable of serving as an indicator of source” (p.8)”
(July 11, 2011 Appeal Brief)
The Panel is prepared to accept the Respondent’s evidence that he registered the disputed domain name in June 1998 because the phrase “affinity card” was generic and he was personally involved in the affinity card business. All of the supporting evidence lends credibility to this submission and conclusion. Accordingly, the Panel is not prepared to find that the Respondent registered the disputed domain name in bad faith in June 1998.
The Panel finds that the conduct of the Respondent in removing the links to the Complainant upon notification, is not sufficient, in all the circumstances, to constitute bad faith.
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
Sole Panelist
Dated: February 22, 2012
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