The Complainant is Incase Designs Corp. of Chino, California, United States of America, represented by Sideman & Bancroft LLP, United States of America.
The Respondent is Lakeside Enterprises Limited of Victoria, Mahé, Seychelles, internally represented. 2. The Domain Name and Registrar
The domain name (the “Disputed Domain Name”) is registered with F Pty Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 24, 2012. On August 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 2012, 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.
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 August 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for the Response was September 17, 2012. The Respondent filed a Response with the Center on September 13, 2012.
The Center appointed Gabriela Kennedy, Kimberley Chen Nobles and David E. Sorkin as panelists in this matter on October 3, 2012. 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.
The domain name specified in the Complaint made improper reference to the third level of the domain name registration and on October 15, 2012, the Panel issued Administrative Panel Procedural Order No. 1 (“Order No. 1”), requesting the Complainant to rectify this error by October 22, 2012. The Panel invited supplemental submissions in response from the Respondent on or before October 29, 2012. The Center received the amended Complaint on October 22, 2012, and the Respondent’s further submissions in response on October 23, 2012.
On October 15, 2012, the Center received a request from the Complainant to provide supplemental submissions in response to the Response filed by the Respondent. On October 24, 2012, the Panel issued Administrative Panel Procedural Order No. 2 (“Order No. 2”), granting the Complainant’s request to file supplemental submissions on or before November 7, 2012. The Panel invited the Respondent to submit any additional submissions in response by November 21, 2012. The Center received the Complainant’s supplemental submissions on November 6, 2012 and the Respondent’s supplemental submissions in response on November 21, 2012. 4. Factual Background
The Complainant is an American manufacturer of protective cases and bags for consumer electronics. The Complainant is the proprietor of many trade marks throughout the world incorporating INCASE, including a United States trade mark filed on September 5, 1997 and registered on December 1, 1998. The Complainant is also the registrant of the domain name , which was first registered on October 21, 1999.
The Respondent is based in Seychelles and is engaged in the business of registering and operating a portfolio of domain names, including:
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The Disputed Domain Name was registered on November 20, 2007. As at the date of this Decision, the Disputed Domain Name resolves to a website displaying numerous links which largely relate to cases and bags (the “Website”). 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarised as follows:
(a) The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights:
(i) the Disputed Domain Name incorporates the Complainant’s registered trade marks in its entirety;
(ii) the Respondent has created a likelihood of confusion with the Complainant’s INCASE trade mark by registering the Disputed Domain Name, as consumers would reasonably assume that the Disputed Domain Name would be owned by, or related to, the Complainant; and
(iii) the addition of a hyphen between the words “in” and “case” is not sufficient to be considered a material alteration of the Complainant’s INCASE trade mark.
(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name:
(i) the Respondent has no prior rights or legitimate interest in the Disputed Domain Name as the registration of the INCASE trade mark preceded the registration of the Disputed Domain Name by many years;
(ii) the Respondent is not commonly known by the name “incase” and the Complainant is not affiliated with the Respondent, nor has the Complainant authorised the Respondent’s use of the Complainant’s trade mark in the Disputed Domain Name;
(iii) the Disputed Domain Name is not used for a legitimate noncommercial or fair use as the Disputed Domain Name resolves to a parking page containing pay per click (“PPC”) advertisements to generate revenue;
(iv) the Respondent has not shown that the Disputed Domain Name is used for a bona fide offering of goods or services. The only reason for the use of the Complainant’s INCASE trade mark in the Disputed Domain Name is to divert Internet users away from the Complainant to a website that offers products which are in direct competition to the Complainant; and
(v) the Respondent has not distinguished itself from the Complainant by placing disclaimers or markings on the Website.
(c) The Disputed Domain Name was registered and is being used in bad faith:
(i) the Respondent registered the Disputed Domain Name with an intent to create a false impression of association with the Complainant;
(ii) given the amount of time the Complainant has used the INCASE trade mark, the Respondent must have been aware that the Disputed Domain Name infringes and otherwise violates the rights of the Complainant. The Respondent cannot say that it chose the Disputed Domain Name without an intent to create an impression of an association with the Complainant; and
(iii) the Respondent’s use of the Disputed Domain Name containing the Complainant’s INCASE trade mark to direct Internet users to webpages displaying PPC links for commercial gain constitutes use in bad faith.
(d) The Complainant has not engaged in any reverse domain name hijacking
(i) the Respondent has not discharged its burden of proving reverse domain name hijacking (i.e. the Respondent must show knowledge on the part of the Complainant of the Complainant’s lack of relevant trade mark rights, or the Respondent’s rights or legitimate interests in, or lack of bad faith concerning, the Disputed Domain Name);
(ii) the Complainant has established all three elements required under the Policy; and
(iii) the Complainant filed the Complaint following an audit due to the confusing similarity of the Disputed Domain Name with the Complainant’s INCASE trade mark and the nature of the content of the website. B. Respondent
The Respondent’s contentions can be summarised as follows:
(a) The Disputed Domain Name is not identical or confusingly similar to a trade mark or service mark in which the Complainant has rights:
(i) the Disputed Domain Name is comprised entirely of generic terms;
(ii) the Complainant cannot claim to own exclusive rights of the generic terms “in” and “case”, whether they are placed together or separately;
(iii) the Complainant’s design marks are limited to the graphical representation of INCASE and do not grant exclusive rights to the generic terms “in” “case”;
(iv) the inclusion of the hyphen between “in” and “case” in the Disputed Domain Name is sufficient to negate similarity with the Complainant’s INCASE word mark given the highly generic nature of this phrase;
(v) the Disputed Domain Name cannot be confusingly similar to the Complainant’s INCASE word mark as the Complainant’s European Community word marks did not acquire distinctiveness; and
(vi)there are several companies which incorporate the Complainant’s INCASE trademark into their name.
(b) The Respondent has rights and legitimate interests in respect of the Disputed Domain Name:
(i) the term “in case” is a dictionary phrase and is used by many organisations in many countries;
(ii) registration of domain names comprised entirely of generic terms is subject to a “first come, first served” basis. The Respondent was the first person to register the Disputed Domain Name and should prevail over others; and
(iii) the Respondent is using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Website contains advertising links generated by the descriptive nature of the term “in case”.
(c) The Disputed Domain Name was not registered and is not being used in bad faith:
(i) the Respondent could not have been aware of the Complainant, its trade marks or products as the Complainant was and is not currently trading in Seychelles. The Complainant does not have any trade mark registrations in Seychelles;
(ii) the Respondent is the registrant for many other domain names incorporating generic terms, which corroborates the fact that the Respondent registered the Disputed Domain Name due to it comprising of dictionary terms (and not because of the Complainant’s trade mark);
(iii) the Complainant has not submitted any evidence showing that the INCASE trade mark was famous or well known in any country when the Disputed Domain Name was registered on November 20, 2007;
(iv) the Complainant has failed to submit any evidence to show that the Respondent has registered the Disputed Domain Name in bad faith. Mere assertions are not sufficient;
(v) the Respondent used the Disputed Domain Name without the Complainant in mind as the Website is set up to display links generated in connection with the generic term “in case”;
(vi) the Respondent has not contacted the Complainant or any other party to offer to sell Disputed Domain Name, nor has the Respondent engaged in a pattern of registering domain names similar to the Complainant’s INCASE trade mark; and
(vii) the Complainant has not taken action against the Respondent for almost 5 years.
(d) Reverse Domain Name Hijacking:
(i) The Panel should make a finding of Reverse Domain Name Hijacking against the Complainant;
(ii) the Complainant should have been aware that the generic term “in case” would be used by a wide variety of entities; and
(iii) the Complainant knew at the time of filing the Complaint that it could not prove lack of Respondent’s rights or legitimate interests in the Disputed Domain Name, nor could it prove bad faith use and registration. 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:
a) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
b) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
c) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith.
The Panel notes that the Respondent has made several comments and criticisms regarding the preparation of the Complaint. In summary, the Respondent alleges that the Complaint was prepared by a software operator engaging in a copy and paste process, with little or no human review. The Panel finds that this issue was sufficiently addressed in the Supplemental Submissions made by the Complainant in response to Order No. 2 and no further discussion is required. A. Doctrine of Laches
Prior to addressing its findings in accordance with paragraph 4(a) of the Policy, the Panel will address the Respondent’s contention that the Complaint should be barred on the basis of the Complainant’s delay in filing the Complaint after the registration of the Disputed Domain Name. It is commonly accepted that the doctrine of laches does not apply under the Policy, and that a delay in bringing an action does not prevent a complainant from recovering a domain name (see paragraph 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). Therefore, the Panel finds that the Complainant is not prevented from recovering the Disputed Domain Name by virtue of it bringing these proceedings five years after the registration of the Disputed Domain Name by the Respondent (see Converse Trading, Ltd. v. Vertical Axis Inc.,WIPO Case No. D2011-1616). B. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the INCASE trade mark on the basis of the trade mark registered in the United States on December 1, 1998, as well as its various other registrations for or incorporating INCASE around the world.
It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case “.com” should typically be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd., WIPO Case No. D2006-0762).
The Disputed Domain Name incorporates the INCASE trade mark in its entirety. The Panel is of the view that the addition of the hyphen between the words “in” and “case” is insufficient to distinguish the Disputed Domain Name from the Complainant’s trade mark.
The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the INCASE trade mark in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied. C. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview 2.0 states the consensus view among UDRP panels that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of production to demonstrate it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant contents that the Respondent is not connected or associated with the Complainant’s business and is not on any other basis licensed or authorised to use its INCASE trade mark. Further, the Complainant submits that the Respondent is not known by the “incase” name. Accordingly, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and therefore the Respondent now has the burden of demonstrating that it does possess such rights or legitimate interests.
The Panel accepts that the Complainant has not licensed or otherwise authorised the Respondent to use the INCASE trade mark. The Panel also notes that there is no evidence, whether put forward by the Respondent or otherwise, that the Respondent has been commonly known by the Disputed Domain Name, and finds that the use of the Website as a “link farm” to host numerous sponsored links (for which the Respondent receives revenue, on PPC or other basis) precludes any argument that the Disputed Domain Name is being used on a noncommercial basis. As such, the Respondent (at least if it wishes to bring itself within the express circumstances described in paragraph 4(c)(i) of the Policy) needs to demonstrate that it acquired rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy through use of the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Panel accepts that use of a website to host PPC sponsored links is capable of conferring rights or legitimate interests in the relevant domain name on the registrant and/or website operator, particularly where the domain name in question consists of a dictionary or generic word or phrase, and the domain name is reasonably related to the content of the links hosted (see National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; US Nutraceuticals, LLC v. Telepathy, Inc. c/o Development Services, NAF Claim No. 365884).
The Disputed Domain Name consists of a generic phrase (“in case”). The sponsored links displayed on the Website also largely relate to this phrase. The Panel accepts the Respondent’s submission that the links displayed on the Website are generated by the descriptive nature of the term “in case”, including its variations such as “cases”, and “just in case”. While the Website displayed a link to the Complainant’s website at the time that the screen shot provided by the Complainant was captured, the Panel does not consider this to be evidence that the Complainant was specifically targeted by the Respondent. Rather, the links displayed on the Website relate to various companies in the business of selling and/or manufacturing cases. In addition, the Panel finds that when the Website is viewed outside of the United States, for example in Hong Kong, a significant proportion of the links relate to businesses operated locally. This indicates that the Website content is not fixed or predetermined and is adapted to the geographical location of the Website viewer, as recognised by the panel in Phones4U Limited and Mobileserv Limited v. Marchex Sales Inc.,WIPO Case No. D2011-1656. As such, in the absence of any apparent evidence that the Respondent is targeting the Complainant in any way through use of the Disputed Domain Name and in the absence of any apparent evidence that the Disputed Domain Name is being used in any sense beyond a descriptive sense, the Panel is prepared to find that the Respondent’s use of the Disputed Domain Name and the Website constitutes legitimate use under the Policy.
The Panel considers its finding supported by other relevant factors, such as the Respondent’s record of registering domain names containing generic words or phrases prior to these proceedings, many of which incorporate “in” (including , , , , , , and ) rather than deliberately targeting third party brands or trade marks (see Avnet, Inc. v. Aviation Network, Inc.,WIPO Case No. D2000-0046). Another relevant factor taken into account by the Panel is the lack of evidence of the Complainant’s status and fame outside of the United States, particularly in Seychelles where the Respondent is located, to indicate that the use of the Disputed Domain Name by the Respondent could not on balance have been said to be merely descriptive.
The Panel accordingly finds that the Complainant has not satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name. D. Registered and Used in Bad Faith
As the Panel finds that the Complainant has failed to discharge its burden of proof under paragraph 4(a)(ii) of the Policy, it considers it unnecessary to proceed to consider the satisfaction or otherwise of the requisite elements regarding bad faith under paragraph 4(a)(iii) of the Policy. E. Reverse Domain Name Hijacking
The Respondent requested the Panel to make a finding of Reverse Domain Name Hijacking against the Complainant. 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 UDRP decisions indicates that in order to make out a claim for Reverse Domain Name Hijacking, the Respondent must typically show that the Complainant had knowledge of the Respondent’s right or legitimate interest in the Disputed 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. Ltd,WIPO Case No. D2000-1224).
The Panel is of the opinion that the Complainant’s case was at least arguable. The Complainant satisfied paragraph 4(a)(i) of the Policy as the Disputed Domain Name is identical to the Complainant’s INCASE trade mark with the exception of a hyphen between the words “in” and “case”. Although the Panel has found that the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy, the Panel does not find that the Complainant’s arguments failed by such an obvious margin such as to indicate that the Complainant must have appreciated this at the time of filing the Complaint. In particular, the Complainant had a basis to be aggrieved as the Website displays PPC links to products in direct competition with the Complainant’s products (see Mondial Assistance S.A.S. v. Compana LLC,WIPO Case No. D2007-0965; Ville de Paris v. Salient Properties LLC,WIPO Case No. D2009-1279).
Under such circumstances, the Panel cannot find that the Complainant’s case was so hopeless that it knew or should have known it would not succeed and thus declines to find that the Complainant has acted in bad faith in filing the Complaint, and so the Respondent’s application for a declaration to this effect is dismissed. 7. Decision
For the foregoing reasons, the Complaint is denied.
Gabriela Kennedy
Presiding Panelist
Kimberley Chen Nobles
Panelist
David E. Sorkin
Panelist
Dated: December 6, 2012
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