Complainant is J Barbour & Sons LTD of Newcastle, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by McDaniel & Co., UK.
Respondent is Whois Privacy Services Pty Ltd. Of Queensland, Australia; Quantec, LLC/ Novo Point of Dallas, Texas, United States of America (“US”). 2. The Domain Name and Registrar
The disputed domain name is registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2013. On February 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 2013, the Registrar 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. On February 11, 2013, the Registrar also sent an email communication and annexes to the Center, giving notice that the disputed domain name is the subject of a receivership action in the United States District Court for the Northern District of Texas. On February 18, 2013, the Center acknowledged receipt of the Registrar’s email communication and invited Complainant to provide any comments it might wish to make or if it wished to request the discontinuation of the UDRP proceedings in light of the Registrant’s email communication and documents therein. Complainant did not submit any comments in this respect. The Center also sent an email communication to Complainant on February 18, 2013 providing the registrant and contact information disclosed by the Registrar, inviting Complainant to submit an amendment to the Complaint as to cure deficiencies found in the Complaint. Complainant filed an amended Complaint on February 21, 2013.
On February 26, 2013, an individual named Mr. Cox, submitted further documents in relation to the receivership action. On March 1, 2013, the Center acknowledged receipt of Mr. Cox’s email communication and informed the parties that any consideration of the effect of the mentioned legal receivership on these proceedings would be a matter for the Panel to consider on its appointment.
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 Respondent of the Complaint, and the proceedings commenced on March 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2013. On March 25, 2013, the Center informed Respondent that no formal Response in the above-referenced case was filed within the due date for Response and that accordingly the Center will proceed to appoint the Panel. On March 30, 2013, Mr. Cox again sent an email communication to the Center reminding the parties that the disputed domain name is subject of the mentioned receivership action. On April 3, 2013, the Center acknowledged receipt of this email communication.
The Center appointed Ross Carson as the sole panelist in this matter on April 4, 2013. 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.
On April 9, 2013 the solicitors for Complainant emailed the Center submitting that the Receiver had not clearly explained how the Receiver claims title in the disputed domain name, especially when it appears to have been registered unlawfully. Complainant submits that the disputed domain name on the face of it appears to infringe Complainant’s trademark and Complainant submits that title could not pass to the Receiver in such circumstances.
Later in the day on April 9, 2013, Mr. Cox, who indicates that he acts as an attorney representing the Receiver, advised the Center and Complainant: ” this domain name is subject to the exclusive jurisdiction of the US District Court for the Northern District of Texas, and WIPO and the complainant(s) are stayed from further actions regarding the domain. I have again attached the relevant information and orders of the Court.” 4. Factual Background
Complainant is a company incorporated in England and Wales whose business covers the manufacture and sale of clothing and associated articles. Complainant was incorporated on the September 11, 1912, but through its predecessor in title has been trading using the name “Barbour” since 1894 in respect of inter alia clothing and associated articles. Complainant has been using the brand name “Barbour International” since 1956 in association with its clothing and related goods.
Complainant has used the trademarks BARBOUR and BARBOUR INTERNATIONAL and promoted those brands extensively around the major sales territories of the world market. Complainant is the registered proprietor of the trademarks BARBOUR and BARBOUR INTERNATIONAL in countries throughout the world. For example, Complainant is the registered owner of United States Trademark Registration No. 1265059 for the trademark BARBOUR registered January 24, 1984 in relation” to goods and services in IC 25: Water-resistant and protective outer clothing, namely, hats, caps, gloves, mittens, socks, stockings, [waders], insoles, socklets, jackets, trouser, coats, waistcoats, riding suits, sweaters, smocks, [chest waders], vests and pants and mainly intended for use by sportsmen. First use: 1890. First use in commerce: 1970. Complainant is also the owner of UK Trademark UK 2530226 for the trademark BARBOUR INTERNATIONAL registered July 2, 2010 in relation to goods and services in IC 1, 3, 9, 12, 14, 16, 18, 21, 24, 25, 26, 28, 35, 37, 39, 40 and 41.
Complainant’s turnover of goods and services in association with trademarks for or including BARBOUR in the year 2009 was 74.50 thousand UK Pounds and 89.90 thousand UK Pounds for the year 2010. By reason of use of trademarks BARBOUR for over one hundred years in association with clothes and accessories the trademark has acquired an enhanced level of distinctiveness and reputation to the extent that many associate the trademarks BARBOUR and BARBOUR INTERNATIONAL with Complainant’s clothes and accessories.
The disputed domain name was created on April 15, 2005. 5. Parties’ Contentions A. Complainant A.1. Identical or Confusingly Similar
Complainant states that it owns numerous trademark registrations for or including BARBOUR and the trademark BARBOUR INTERNATIONAL registered in relation to clothes and accessories in class 25 as more particularly described in Section 4 immediately above.
Complainants submit that the disputed domain name is confusingly similar to Complainant’s trademark BARBOUR and identical to Complainant’s trademark BARBOUR INTERNATIONAL. A.2.No Rights or Legitimate Interests in respect of the disputed domain name
Complainant submits that it is the owner of the worldwide brand for Barbour in respect of the trademarks set out in Section 4 above. Irrespective of the identity of Respondent they can have no legitimate interest in the disputed domain name. A.3. Registration in Bad Faith
Complainant states that Respondent is currently using the website associated with the disputed domain name as part of what can be described as a "Parking program" whereby the site is used to generate income by seeking adverts and/or "click through's" for clothing ether unrelated to the BARBOUR and BARBOUR INTERNATIONAL brands or unrelated or unauthorized “Barbour” sites. As such Respondent is taking unfair advantage of Complainant’s trademarks for BARBOUR and BARBOUR INTERNATIONAL. B. Respondent
On December 19, 2012, a search of the Registrar’s database disclosed that the disputed domain name was held by Whois Privacy Services Pty Ltd. On February 11, 2013 in response to the verification request of the Center, the Registrar advised that Respondent named in the original Complaint is not the current registrant. The Registrar advised that the current registrant of the disputed domain name is Quantec LLC. / Nova Point, LLC.
As noted above, on February 26, 2013, an individual named Mr. Cox, an attorney representing a Receiver appointed by the U.S. District Court for the Northern District of Texas, advised the Center and Complainant that the disputed domain name is a Receivership Asset clearly subject to the Receiving Order dated November 24, 2010, and all its provisions. Mr. Cox stated: “[…] As a result of the entry of the Receiver Order and its Stay, you are hereby prohibited from continuing to prosecute any action with respect to the Domain during the pendency of the receivership. Because of the Order and the Stay the Receiver is not taking a position as to the merits of your claims relating to the Domain. However, the Receiver is required to preserve the value of all Receivership Assets. For these reasons, the Receiver must maintain the status quo with regard to the Domain during the pendency of the receivership.”
In pursuance to the terms of the Receivership Order, Mr. Cox did not file a Response taking any position on the merits. He stated on February 26, March 30 and April 9, 2013 that “you are hereby prohibited from continuing to prosecute any action with respect to the Domain during the pendency of the receivership.” 6. Discussion and Findings Notice of Receivership and Stay
On February 25, 2013, Mr. Cox, an Attorney at Law, forwarded an email to the Center: ”To Whom It May Concern”. Copies of the email where forwarded to the Registrar in this case and to Whois Privacy Services Pty. Ltd. as well as numerous Counsel for Receiver and Receivership Professionals retained by the Receiver.
The Notice of Receivership and Stay reads as follows:
“My name is [Mr.] Cox. I am writing to you with regard to the above-referenced domain name (the “Domain”). The Domain is subject to the jurisdiction of […] S. Vogel, the Receiver appointed by a U.S. District Judge in a case styled as Netsphere v. Baron et al., Case No. 3: 09cv988, U.S. District Court for the Northern District of Texas. I am counsel for Quantec, LLC (“Quantec”), the registrant of the Domain, and am a duly appointed Receivership Professional as defined in the Receiver Order. Mr. Vogel has authorized me to contact you regarding the Domain.
The Court’s Order Appointing Receiver, dated November 24, 2010 (the “Receiver Order”), grants the Receiver authority over all Receivership Assets (as defined therein), including the Domain, and mandates a stay (the “Stay”) with regard to any and all actions against Receivership Assets during the pendency of the receivership. Further, the Court’s Order Granting the Receiver’s Motion to Clarify the Receiver Order with Respect to Novo Point, LLC and Quantec, LLC, dated December 17, 2010, provides specifically that Quantec (the registrant of the Domain) is a Receivership Party subject to the Receiver Order. I have enclosed copies of the relevant orders for your consideration.
The Domain, which is registered by a Receivership Party, is a Receivership Asset clearly subject to the Receiver Order and all its provisions. As a result of the entry of the Receiver Order and its Stay, you are hereby prohibited from continuing to prosecute any action with respect to the Domain during the pendency of the receivership. Because of the Order and the Stay the Receiver is not taking a position as to the merits of your claims relating to the Domain. However, the Receiver is required to preserve the value of all Receivership Assets. For these reasons, the Receiver must maintain the status quo with regard to the Domain during the pendency of the receivership.
Thank you in advance for your cooperation”.
The copies of the relevant Orders or Notices filed in The United States District Court for The Northern District of Texas, Dallas accompanying the email in chronological sequence are as follows:
(1) Notice of Appearance, filed by [Mr.] E Cox, as Attorney for Quantec, LLC and Novo Point, LLC, filed December 10, 2010, 2 pages.
(2) Order Appointing Receiver and Stay of Actions, dated, November 24, 2010, 14 pages.
(3) Order Granting the Receiver’s Motion to Clarify the Receiver’s Order with Respect to Nova Point, LLC and Quantec, LLC, dated December 17, 2010, 8 pages.
(4) Receiver’s Notice of Employment of [Mr.] Cox as Consultant to the Receiver, dated, December 29, 2010, 2 pages.
While conducting a search on Google relating to Netsphere, Inc., et al. v. Jeffrey Baron et al. supra, the Panel found a decision of the United States Court of Appeals, Fifth Circuit, 703 F. 3d 296, dated December 18, 2012; see WIPO Overview of WIPO Panel Views on selected UDRP Questions (“WIPO Overview 2.0”) paragraph 4.5. Before the Court of Appeals, counsel for Baron appealed the above noted receivership remedy provided by the U.S. District Court, Northern District of Texas, Dallas Division, in Civil Action No. 3: 09-CV-0988-F and almost every order entered by the district court thereafter. The appeal was heard by De Moss, Southwick and Higginson, Circuit Judges. The decision of the court was delivered by Leslie H Southwick. The Court held that the appointment of the receiver was an abuse of discretion and reversed the Appointment and Remanded the matter to the District Court with instructions.
At page 310 of the decision the Court found: ”The receivership also included business entities owned or controlled by Baron including Nova Point, LLC and Quantec, LLC. Although Nova Point and Quantec were listed as parties on the global settlement agreement, they were never named as parties in the Netsphere lawsuit or the Ondova bankruptcy. We conclude that the district court could not impose a receivership over Baron’s personal property and assets held by Nova Point and Quantec.”
At page 311 of the decision the Court found: “We conclude that the receivership improperly targeted the assets outside the scope of the litigation to pay claims of Baron’s attorneys and control Baron’s litigation tactics. This was improper use of the receivership remedy. The order appointing a receiver is vacated.”
The Case file submitted to the Panel by the Center does not disclose any reference to the decision of the Court of Appeals, Fifth Circuit, apparently vacating the receivership order of the U.S. District Court Northern District of Texas, Dallas Division and finding that the district court could not impose a receivership over Baron’s assets held by Nova Point LLC. and Quantec LLC.
Respondent in this UDRP proceeding, when registering the disputed domain name represented and warranted, among other matters, that to its knowledge, that the registration of the domain name will not infringe upon or otherwise violate the rights of any third party and further agreed that it is the applicant’s responsibility to determine whether the domain name infringes or violates someone else’s rights. (Paragraph 2, UDRP Policy.)
Respondent in this UDRP proceeding agreed to submit to a mandatory administrative proceeding in the event that a trademark owner commences a proceeding incorporating the three elements set out in Section 4(a) of the UDRP Policy.
The Panel’s review of the WhoIs information at the time of commencement of this proceeding discloses that the Center served all the persons or entities appearing in the WhoIs information in accordance with paragraphs 2(a) and 4(a) of the Rules.
Based on the information in the Case File and the decision of the Federal Court of Appeal the Panel feels warranted in proceeding with a decision under the UDRP, See paragraph 18(a) of the Rules. Pursuant to paragraph 4(k) of the Policy either party may submit the dispute to a court of competent jurisdiction, after such proceeding is concluded within the time limits provided if either party is unhappy with the outcome or feels that it has been treated unfairly by the procedures. See Mobile Communication Service Inc. v. WebsiteWebReg RN,WIPO Case No. D2005-1304
In light of the evidence before the Panel, the Panel finds its appropriate to name the Respondent both the privacy shield as identified in the publicly-available WhoIs and the Complaint as the registrant of the disputed domain name at the time of the filing, and the entities Quantec LLC/ Novo Point as revealed by the concerned Registrar.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain names are identical to or confusingly similar to the trademark in which the Complainant has rights.
Complainant is the owner of numerous trademark registrations for the trademarks BARBOUR and BARBOUR INTERNATIONAL some of which are recited in Section 4 of this Decision above. Complainant’s registered trademarks were extensively promoted and used in many parts of the world including the United States of America for many years prior to the date of registration of the disputed domain name on April 15, 2005.
The disputed domain name is identical to Complainant’s trademark BARBOUR INTERNATIONAL. The disputed domain name incorporates the entirety of Complainants’ trademark BARBOUR. Many UDRP decisions have found that domain names are confusingly similar to trademarks when the disputed domain name incorporates the trademark in its entirety. See eBay, Inc v. Progressive Life Awareness Network,WIPO Case No. D2001-0068 (finding that the domain name incorporated the complainant’s mark in its entirety and holding it to be confusingly similar to complainant’s EBAY mark). See also, Auxilium Pharmaceuticals, Inc. v. Kumar Patel, NAF Claim No. 642141 (finding confusingly similar to complainant’s AUXILIUM name and mark).
The disputed domain name also includes the generic word “international” which describes goods promoted and distributed in many countries. Numerous UDRP panels have found that domain names comprised of a well-known trademark as the distinctive element in conjunction with descriptive or generic terms are confusingly similar to a registered trademark. See Swarovski Aktiengesellschaft v. Swarovski AG,WIPO Case No. D2010-2139 (“Furthermore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark SWAROVSKI despite the additional word “line” followed by the generic top-level domain “.com”. The distinctive feature of the disputed domain name is “Swarovski”, being the sole and distinctive feature of the Complainant’s trademark. The generic word “line” is indistinctive. The fact that understandably a line or range of goods is sold by the Complainant and marketed under their mark SWAROVSKI will make actual confusion among consumers likely”).
The inclusion of the generic top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusing similarity. UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525, holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429, finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant has proven that the disputed domain name is identical to Complainant’s trademark BARBOUR INTERNATIONAL and confusingly similar to Complainant’s trademark BARBOUR. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s trademarks BARBOUR and BARBOUR INTERNATIONAL.
Complainant has been using its BARBOUR trademark in association with clothes and accessories for over a century and using its trademark BARBOUR INTERNATIONAL for decades to promote its goods and services. Respondent appears to have registered or acquired the disputed domain name on July 15, 2005, when Complainant’s trademarks were widely-known in the UK, the US and many other parts of the world. Previous UDRP panels have found that in the absence of any license or permission from a complainant to use well-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. See LEGO Juris A/S v. DomainPark Ltd, David Smith, A, Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138.
Respondent used the disputed domain name in association with a website as part of what can be described as a parking program whereby the site is used to generate income by seeking adverts and/or click throughs for clothing either unrelated to Complainant’s BARBOUR and BARBOUR INTERNATIONAL Brands or unrelated or unauthorized Barbour sites. A Domain Tools WhoIs search for on April 7, 2013 likewise disclosed live links to men’s designer jackets from Eden Park and Barbour Jackets on sale for 35% to 60% off. Respondent’s use of the disputed domain name to attract Internet users familiar with Complainant’s goods only to offer competitors clothing or unauthorized products for sale for pay-per-click income is not a legitimate use of the disputed domain name. (see, The American Automobile Association, Inc. v. Jack Holder, NAF Claim No. 1227171; Florida Department of Management Services v. Anthony Gorss (or AGCS), WIPO Case No. D2009-1194).
The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in a domain name or domain names. Once this showing is made, the burden of production shifts to the respondent to demonstrate its rights or legitimate interests in the domain name. See Deutsche Telekom AG v. Britt Cordon,WIPO Case No. D2004-0487 where the UDRP panel stated “A number of WIPO cases have established that, by virtue of paragraph 4(c) of the Policy, once a complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent.” In this case, Respondent was given the opportunity by way of Response to demonstrate any rights or legitimate interests in the disputed domain names pursuant to paragraph 4(c) of the Policy. However, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.
Under the circumstances, the Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and is being used in bad faith. C.1. Registered in Bad Faith
The disputed domain name was created on July 15, 2005.
Complainant has been using its BARBOUR trademark in relation to clothes and accessories since 1894 and the trademark has become widely-known throughout the world. Additionally, Complainant has used its trademark BARBOUR INTERNATIONAL in association with clothes and accessories since 1956.
The registration by Respondent of the disputed domain name which is identical to Complainant’s trademark BARBOUR INTERNATIONAL in association with a webpage with live links to Complainant’s competitors clothes creates a strong inference to the Panel that Respondent was aware that BARBOUR and BARBOUR INTERNATIONAL were trademarks used in association with clothing prior to the creation of the disputed domain name on July 15, 2005. The subsequent use of the disputed domain name to resolve to websites relating to unauthorized sellers of Complainant’s and its competitors’ clothing strengthens the inference.
The Panel finds that Respondent registered the disputed domain name in bad faith. C.2. Use In Bad Faith
Respondent has been using the disputed domain name in association with a website having links to Complainant’s competitor’s goods as well as links to websites offering unauthorized BARBOUR jackets. The Panel infers that Respondent is receiving pay-per-click remuneration from the owners of the websites associated with such links which constitutes using the disputed domain name in bad faith as set forth in paragraph 4(b)(iv) of the Policy (see L’Oreal, Biotherm Lancôme Parfums et Beauté & Cie v. Unasi, Inc. WIPO Case No. D2005-0623 in which it was stated that exploitation of the reputation of trademarks by diverting Internet users is a common example of bad faith).
The registration, in absence of any rights or legitimate interests and lacking any contrary evidence, of a domain name confusingly similar to Complainant’s widely-known trademarks suggest opportunistic bad faith (see, Banca Sella S.p.A. v Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Mastercard International Incorporated v. Total Card Inc., WIPO Case No. D2007-1411 and MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412).
The Panel finds that Complainant has proven, on a balance of probabilities, that Respondent uses the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and that the Complaint satisfies the requirement under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Ross Carson
Sole Panelist
Date: April 21, 2013
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