The Complainant is Camilla Australia Pty Ltd of Darlinghurst, Australia, represented by TressCox Lawyers, Australia.
The Respondent is Domain Admin, Mrs Jello, LLC of New Jersey, United States of America, represented by Oshman & Mirisola, LLP, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 7, 2015. On September 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 8, 2015, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 18, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2015. The Response was filed with the Center October 14, 2015. On October 20, 2015, the Center received the Complainant's supplemental filing.
The Center appointed David J.A. Cairns, M. Scott Donahey and Christopher S. Gibson as panelists in this matter on November 12, 2015. 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.
On November 13, 2015 the Panel received a further unsolicited email from the Complainant. On November 17, 2015 the Panel issued an order allowing the Respondent three days to comment on the matters raised in the Complainant's supplemental submission and email, and advised the Parties that with the exception of the Respondent's additional comments so authorized, the Panel would not accept any further unsolicited statements or communications from the Parties. The Respondent submitted its authorized response on November 20, 2015. 4. Factual Background
The Complainant is the registered owner of Australian trademark registration Nº 1443488 (filed on August 18, 2011) for the trademark CAMILLA (stylized in the form of a signature) for goods and services in classes 3, 9, 14, 24, 25 and 35.
There is also a pending registration for the same trademark in Australia in a further class, as well as pending registrations in the United States and an international application.
The Respondent purchased the disputed domain name at auction in May 2009.
The disputed domain name currently hosts a landing page hosting pay-per-click ("PPC") links to vendors of various goods and services. The Panel found that this landing page (at least within the United States) led to pages (such as /camilla) that offered both Complainant's goods as well as the goods of others. The particular page on Lyst appears to feature CAMILLA branded goods, but the parent website features all sorts of goods. At the top of the PPC landing page, there is also a link headed: "Click Here For All Inquiries". The link brings users to a webpage where it is stated " may be available for purchase. Send your offer now! Send your offer for . Complete this form to contact the owner." 5. Parties' Contentions A. Complainant
The Complainant is an Australian fashion company, which states that it has been selling goods under the CAMILLA trademark in Australia for more than ten years, and in the United States for more than five years. Goods bearing the CAMILLA trademark are sold at exclusive fashion retailers and boutiques, and also promoted on various social media platforms. It therefore submits that it has common law rights in the CAMILLA trademark in Australia, the United States and internationally, in addition to its registered trademark rights.
The Complainant states that the disputed domain name is identical to the CAMILLA trademark, with the only difference being the suffix ".com" which should be disregarded for the purposes of comparison.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name. It states that the disputed domain name hosts a landing page providing PPC links to terms that incorporate the CAMILLA trademark directly (such as "Camilla beads" and "Camilla Bracelet"), terms that incorporate the CAMILLA trademark by way of misspelling (such as "Chamilia Charms" and "Chamilia Jewellery") as well as terms that bear no relation to the CAMILLA trademark or the Complainant's business. The Complainant also states that the Respondent engages in no trade or commerce that bears any trademark identical or similar to the CAMILLA trademark, and also that the Respondent does not satisfy any of the requirements of rights and legitimate interests referred to in paragraph 4(c) of the Policy.
The Complainant states that the Respondent has registered and is using the disputed domain name in bad faith, referring to paragraph 4(b)(i) and (ii) of the Policy. The Complainant refers to a rejected offer for the purchase of the disputed domain name as evidence that the Respondent has registered the disputed domain name primarily for the purpose of selling it for valuable consideration. As regards paragraph 4(b)(ii) of the Policy the Complainant states that the Respondent is in the business of registering domain names with a view to selling such registrations to legitimate brand owners for inflated profits. It refers to Milly LLC v. Domain Admin, Mrs. Jello, LLC,WIPO Case No. D2014-0377 as a case involving the same respondent and the same pattern of behavior, where the complainant successfully argued bad faith use and registration even though the registration of the domain name in question occurred before the complainant acquired proprietary rights in the brand name.
The Complainant further submits that the links on the landing page are further evidence of bad faith. It states that several of the links are to fashion and accessory products, being of a similar nature to the fashion garments made and sold by the Complainant and have no intrinsic relationship to the name "Camilla", indicating that the Respondent is only able to exploit the value of the disputed domain name because the goods and services represented by the PPC links are similar to the goods bearing the Complainant's CAMILLA trademark. It also alleges many of the links over time (such as adult dating services) are inappropriate and detrimental to the Complainant's business.
The Complainant also refers to paragraph 2 of the Policy which states that it is a registrant's responsibility to determine whether a domain name infringes or violates someone else's rights, and states that the Respondent infringes the Policy in this regard by maintaining the registration without any legitimate interest in the brand represented by the disputed domain name.
The Complainant requests that the disputed domain name be transferred to the Complainant.
In its supplemental submission dated October 20, 2015 the Complainant addressed several alleged inaccuracies in the Respondent's evidence. A further communication dated November 13, 2015 referred to the Respondent's evidence about the Complainant's trademark applications in the United States. B. Respondent
The Respondent states that it is an operating company providing search engine optimization and marketing services, and which owns hundreds of websites and other URLs in development from which it earns PPC revenue. The Respondent refers to Stimulan B.V. v. Domain Admin, Mrs. Jello, LLC,WIPO Case No. D2015-0609 which it states found that it was engaged in a legitimate business purpose in its use of generic words in generating revenue on a PPC basis.
The Respondent states that it purchased the disputed domain name at auction in May 2009. Its reason for the purchase was that it was composed of a common name, generic in nature, associated with British royalty and had many search inquiries for that reason.
The Respondent states that in the six and a half years that it has owned the disputed domain name "it has never been offered for sale", and the Respondent never contacted the Complainant regarding the sale of the disputed domain name.
The Respondent states that it had never heard of the Complainant or its use of CAMILLA before its purchase of the disputed domain name. The Respondent provides a statement by its Managing Member who states that "I was involved with the research into the decision to purchase this domain in 2009 and there was not even a search result that I found for the Complainant." The Respondent also states that the Complainant did not do business in the United States, where the Respondent conducts business, until years after the Respondent purchased the disputed domain name.
The Respondent states that the Complainant's US trademark applications can still be contested and that the Respondent intends to do so.
The Respondent states that the Panel should reject the Complainant's factual assertions because they are not supported by a declaration of a person with knowledge.
The Respondent accepts that the word "Camilla" as used by the Complainant is similar to the disputed domain name, but also states that it is a very common woman's name.
The Respondent states that it has a right and legitimate interest in the disputed domain name from its use since acquisition in 2009. It states that the Respondent's use has been a bona fide use which has generated revenue through advertising. The Respondent states that when its use began the Respondent did not know of the existence of the Complainant, and there was no activity at that time in the United States. The Respondent refers to Stimulan B.V. v. Domain Admin, Mrs. Jello, LLCWIPO Case No. D2015-0609.
The Respondent states that it registered and used the disputed domain name in good faith. It states that before any notice to Respondent of this dispute, the existence of the Complainant, of any trademark in any country, the Respondent used the disputed domain name in connection with a bona fide use which pre-dated the use of the Complainant and continues in identical form today. It states that the Complainant has failed to prove the criteria of bad faith set out in paragraph 4(b) of the Policy.
The Respondent submits that the Complaint should be denied.
In its reply submission, the Respondent states that the Complainant has no current rights in any United States trademark and that its application is based on an "intent to use" as opposed to an "actual use", and that the Respondent is challenging the registration. The Respondent denies it has offered the disputed domain name for sale online, and responds to the Complainant's supplementary submission. The Respondent again submits that it was "unaware of the existence of the Complainant at any point in time until receiving an email from them" and "Respondent's ownership of C and its use of C predates the activities asserted by the Complainant … to establish their rights in any trademark." 6. Discussion and Findings
A preliminary procedural issue is the admissibility of the supplemental filings by the Complainant on October 20 and November 13, for which there is no provision in the Rules. Paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") notes that Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case.
In the present case, the Complainant's supplemental filings were in the nature of a reply to certain allegations in the Response, rather than the presentation of new arguments. The Panel decided to accept these brief filings, subject to the Respondent's being given an opportunity to comment in order to preserve its procedural rights. The Respondent's comments were duly received. These filings are by nature clarifications of the original Complaint and Response, and the Panel is satisfied that the acceptance of these supplementary filings of both Parties is consistent with its obligation in paragraph 10(b) of the Rules to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
The Respondent also raises an evidential objection based on the absence of supporting declaration by a person with knowledge of the facts, stating that claims by counsel (in the Complaint) are not personal knowledge and should be rejected. This submission misunderstands the UDRP procedure which differs from the practices of common law courts in matters of evidence. The Complaint contains a certification by the Complainant itself (even if signed by counsel) that the information contained in the Complaint is to the best of the Complainant's knowledge complete and accurate (Rules, paragraph 3(xiv)), and so the Complaint and accompanying annexes can be relied upon as evidence, and evaluated for its admissibility, relevance, credibility and weight in accordance with the general powers of the Panel (rules paragraph 10(d)) without the formality of a supporting declaration by an officer of the Complainant or other witness with personal knowledge.
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent's domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns the CAMILLA trademark registration referred to above.
In determining whether a disputed domain name is identical or confusingly similar to the Complainant's trademark the relevant comparison involves the second-level portion of the domain name only (here, 'camilla'). The applicable top-level domain name suffix (here, ".com") is a functional element of a domain name, and usually disregarded for the purposes of comparison (see WIPO Overview 2.0, paragraph 1.2. Similarly, the comparison for the purposes of the first element of the Policy involves the alpha-numeric components of the domain name and disregards the stylistic features of the registered trademark (see WIPO Overview 2.0, paragraph 1.11).
On this basis, the Panel finds that the disputed domain name is identical with the Complainant's CAMILLA trademark. Accordingly, the first element required by the Policy is satisfied. B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent has any proprietary or contractual rights in any registered or common law trademark corresponding to the disputed domain name; (ii) the Respondent is not authorized or licensed by the Complainant to use the CAMILLA trademarks or to register and use the disputed domain name; (iii) the Respondent has not been commonly known by the disputed domain name.
Paragraph 4(c) of the UDRP provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. The Respondent is not known by the disputed domain name, and is making a commercial use of the disputed domain name (through PPC traffic) so that paragraphs 4(c)(ii) and (iii) have no application.
With regard to paragraph 4(c)(i) (bona fide offering of goods or services prior to any notice of the dispute) WIPO Overview 2.0 paragraph 2.6 addresses the question of when PPC links might generate rights or legitimate interests in a disputed domain name: "Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a 'bona fide offering of goods or services'… or from 'legitimate noncommercial or fair use' of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion."
The PPC links of the Respondent do not provide any basis in themselves for rights or legitimate interests, and in any event would be excluded in this case on the grounds that the PPC links lead to the Complainant's products (as discussed below) and therefore do not constitute a bona fide use.
For these reasons, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out the four circumstances without limitation which if found by a Panel to be present shall be evidence of the registration and use of a domain name in bad faith. However, bad faith may be established on grounds other than those set out in paragraph 4(b), as the circumstances in paragraph 4(b) are expressed to be "in particular but without limitation".
The Panel finds that the Respondent's current use of the disputed domain name for PPC revenue involves the deception of Internet users that are seeking the Complainant's products, and the diversion of Internet users to vendors selling both the Complainant's products and the products of competitors. There is no disclaimer on the Respondent's landing page that this website is not connected to the Complainant's identical mark, and clearly no effective steps have been taken to ensure that no links were posted that led to sites offering the Complainant's (or competitors) products (cf. WIPO Overview 2.0 paragraph 2.6). This constitutes bad faith use in that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website or other on-line location by creating a likelihood of confusion with the Complainant's trademark (within the meaning of paragraph 4(b)(iv) of the Policy).
Paragraph 4(a)(iii) requires that the disputed domain name has been registered and is being used in bad faith. The Respondent states that it did not know of the Complainant's trademark when it registered the disputed domain name, and that there was no activity by the Complainant at that time in the United States. The Respondent registered the domain name in 2009, and the Complainant only filed its first trademark application (in Australia) in August 2013. The Complainant is vague about the exact dates that its business commenced, or first entered the United States, or the manner its trademark has been marketed or become known. The Panel accepts the Complainant's trademark is a successful fashion brand, but also finds that this success has been rapid and recent. The Panel accepts that the Respondent did not and could not reasonably have known of the Complainant's trademark when it registered the disputed domain name in May 2009.
The Respondent argues that its current use of the disputed domain name for PPC revenue predates the Complainant's rights and is unchanged from this time, and so cannot be in bad faith. It is true that what has changed is not the Respondent's use, but the emergence of the Complainant's new and powerful trademark. The Respondent's argument therefore raises the question of the obligations of the owners of domain names used to generate PPC revenue to the owners of new, emerging, trademarks.
It has been recognized by numerous Panels that the use of domain names to generate PPC revenue involves certain obligations. These obligations were summarized as follows in the decision in Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448:
"In the later case of Media General Communications Inc v. RareNames WebReg,WIPO Case No. D2006-0964, the Panel again considered large scale registration of domain names for the purpose of reselling/advertising links. The Panel noted that such practices would most likely be regarded as legitimate in the following circumstances:
(i) Where the Respondent regularly engages in the business of registering and reselling domain names, and/or using them to display advertising links;
(ii) The Respondent makes good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;
(iii) The domain name in question is a 'dictionary word' or a generic or descriptive phrase;
(iv) The domain name is not identical or confusingly similar to a famous or distinctive trademark; and
(v) There is no evidence that the Respondent had actual knowledge of the Complainant's mark."
This list of factors has been referred to in previous cases involving the current Respondent (see Stimulan B.V. v. Domain Admin, Mrs. Jello, LLCWIPO Case No. D2015-0609; and Yara International ASA v. undefined, Domain Admin, Mrs. Jello LLC,WIPO Case No. DTV2008-0015).
The obligation in (ii) is a continuing obligation; in other words a bulk registrant of domain names that adopts a PPC revenue model must ensure that after registration the disputed domain name is not used in a deceptive or confusing manner with new or developing trademarks. Although a trademark might not be known at the time of registration, if it is subsequently brought to the attention of the registrant, for example by the complaint of the trademark owner itself, then the registrant must ensure that advertising links or other use do not take advantage of the newly acquired trademark significance of the common term.
Further, this is an obligation that exists from the time of registration so that a bulk registrant of domain names from the moment of acquisition must be prepared to take necessary steps to ensure that the PPC links generated by algorithm do not infringe existing trademarks, or any trademarks that may emerge in future. The registration of domain names with the intention of ignoring any future trademark rights that might affect the chosen domain names is equally a bad faith registration as is an intention to profit from an existing and established trademark right. In both cases the intention is to profit from the intellectual property rights of another, and to deceive the public in their Internet use.
This obligation in no way restricts the right to invest or speculate in domain names that might in future increase in value. Domain names can be purchased for legitimate use, or passive holding, but if the chosen use is to generate PPC revenue then the registrant must ensure this is not carried out in a way that infringes the trademark rights of others.
Finally, and importantly, this obligation is embedded in the Policy and the very act of registration. Paragraph 2(d) of the Policy states that a registrant "represent[s] and warrant[s] that [he] will not knowingly use the domain name in violation of any applicable laws or regulations. It is [the registrant's] responsibility to determine whether [the] domain name registration infringes or violates someone else's rights." This is a representation and warranty as to the registrant's future conduct made at the time the registrant applies for registration of a domain name. The registrant represents and warrants that in the future he will not use the domain name at issue in bad faith. Moreover, it is the registrant's obligation to make sure that the domain name is not used to target the rights of a third party. "I can't help it that my parking service targets the trademark" is not a defense.
In the current case the clear bad faith use is evidence of bad faith registration. The fact that the Respondent has taken no efforts, once the Complainant put it on notice of its trademark rights, to remove the links to the Complainant's products, is probative that at the time of registration the Respondent was prepared to disregard any rights that might develop from the successful use of the word "camilla" by any business, such as in fact occurred with the Complainant. As the Panel stated in Tata Communications International Pte Ltd (f/k/a VSNL International Pte Ltd) v. Portmedia Inc. / TRUEROOTS.COM c/o Nameview Inc. Whois WIPO Case No. D2010-0217:
"In all cases, the issue remains that to which the bad faith registration requirement in paragraph 4(a)(iii) is directed: what was the state of mind of the Respondent when it registered the disputed domain name? A respondent which speculatively registers a disputed domain name, with an open mind to exploiting any future trademark value the domain name might develop, can arguably be said to have registered the domain name in bad faith.
There is some evidence which might support such a finding of such bad faith in this case. The Respondent's business appears to be the bulk registration of domain names for the purpose of exploiting whatever value flows from those registrations. The Respondent is no stranger to the domain name system. It cannot have been unaware that domain names often have value in relation to trademarks. On its own admission, it took no steps to avoid the disputed domain name being used in bad faith until after it was aware of this dispute. The Respondent simply allowed links to appear on its website autogenerated by Yahoo, without its direct awareness, and to obtain whatever profit flowed from those links. […] The Respondent's more recent bad faith use might also provide some foundation for an inference that it had a bad faith intent when it registered the disputed domain name."
In the present case, the Panel finds that the disputed domain name was registered speculatively with an open mind as to the exploitation of trademark rights, and has in fact been used to exploit the Complainant's trademark rights. In these circumstances both bad faith registration and use are demonstrated. Accordingly, the third element of the Policy is satisfied, and in particular bad faith in the terms of paragraph 4(b)(iv) 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 the Complainant.
David J.A. Cairns
Presiding Panelist
M. Scott Donahey
Panelist
Christopher S. Gibson
Panelist
Date: November 30, 2015
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