WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Porto Chico Stores, Inc. v. Otavio Zambon

Case No. D2000-1270

 

1. The Parties

The complainant is Porto Chico Stores, Inc., of 6603-5 West North Avenue, Oak Park, Illinois, 60302, United States of America. The respondent is Otavio Zambon of Lovely Girls, Rua Hemeterio Gomes Fernandes, 47, Marilia, SP 17516-390, Brazil.

 

2. The Domain Name and Registrar

The disputed domain name is <lovelygirls.com> and the registrar is Network Solutions Inc., of Herndon, Virginia, USA.

 

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").

The complaint was received by the Center by email on September 26, 2000, and in hard copy on September 28, 2000. It was acknowledged on September 28, 2000. On October 2, 2000, registration details were sought from and confirmed by the registrar and the Center satisfied itself that the complainant had complied with all formal requirements, including payment of the prescribed fee. On October 5, 2000, the Center formally notified the respondent by post/courier, fax and email of the complaint and of the commencement of this administrative proceeding and sent copies to the complainant, the registrar and ICANN.

The last day specified in the notice for a response was October 24, 2000. On October 30, 2000, the Center notified the respondent that it was in default and that the Center would proceed to appoint an administrative panel.

On November 8, 2000, the Center invited Alan L Limbury to serve as panelist. On November 9, 2000, Mr. Limbury accepted the appointment and submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On November 9, 2000, the Center transmitted the case file to the panel and notified the parties of the projected decision date of November 22, 2000.

The language of the proceeding was English.

The panel is satisfied that the complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Centerís assessment concerning the complaintís compliance with the formal requirements; the complaint was properly notified in accordance with paragraph 2(a) of the Rules; no response was filed and the administrative panel was properly constituted.

 

4. Factual Background (uncontested facts)

Since 1979, the complainant has manufactured and sold under the trademark LOVELY GIRL womenís apparel and makeup, nail care, skin care and hair care products and perfume. It operates the "www.lovelygirl.com" website, where customers may obtain information about and may purchase its products.

The complainant is the registered owner of United States trademarks 1,188, 706 (registered 02/02/82) and 1,188,725 (registered 02/02/82), both in respect of womenís apparel; 1,613,454 (registered 09/18/90) in respect of makeup and other womenís care products and 1,978,581 (registered 06/04/96) in respect of retail store services and distributorships in the fields of clothing and cosmetics.

Since 1979, the complainant has spent over US$1 million in advertisements, including the Internet, television, billboards and signage, including recently over $18,000 in radio advertising to promote its website "www.lovelygirl.com".

The respondent has registered the disputed domain name lovelygirls.com. There is no evidence of the date of registration. A printout by the complainant of the respondentís website home page on March 23, 2000, revealed a heading "lovelygirls virtual erotic magazine", a warning that this website contains adult related material and a reference to "50,000+ hardcore, lesbian, Asian, group sex, gay erotic pics".

 

5. Partiesí Contentions

A. Complainant

Identity or confusing similarity

The disputed domain name is confusingly similar to the complainantsí registered trademark in that the respondent merely added "s" to the famous LOVELY GIRL mark in which the complainant has common law and statutory rights.

Illegitimacy

The respondent has no rights or legitimate interests in respect of the disputed domain name, because the use of the domain name is to misleadingly divert consumers for financial gain and to tarnish the complainantís famous LOVELY GIRL mark by using the complainantís mark as part of a domain name for a site devoted to pornography.

Bad faith

The respondent registered the disputed domain name in bad faith and uses the domain name intentionally to attempt to attract, for financial gain, Internet users to the site by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation or endorsement of the respondentís website and the product offered thereon.

In connection with the contention as to likelihood of confusion:

- the mark is not descriptive of the complainantís goods or services and is a strong mark, having been registered and used for over 20 years;

- since both partiesí use the mark pertaining to women and both use the Internet, the goods are in close proximity such that the consumer would be reasonably confused as to the source or affiliation of the respondentís web page;

- the domain name and the mark are so similar as to be nearly identical;

a web surfer who accessed "www.lovelygirls.com" and reached a website containing pornographic pictures of women is likely to think that the complainant is offering this as an extension of their famous LOVELY GIRL line of products;

- since the LOVELY GIRL products are relatively inexpensive, the reasonably prudent consumer is likely to exercise less care and thus, confusion is more likely;

- under U.S. trademark law, the respondent should be taken to have had constructive notice of the registration and use by the complainant of the trademark at the time the respondent registered the disputed domain name;

- where an infringer adopts a mark with actual or constructive knowledge that it was anotherís trademark, the courts will presume an intent to deceive the public;

- in the Internet context, courts have recognized that the intentional registration of a domain name knowing that the second-level domain is another companyís valuable trademark weighs in favor of likelihood of confusion; and

- based on the complainantís registrations, the respondent had constructive knowledge that the complainant had rights in the mark. Thus, in registering the domain name, the respondent evinced an intent to deceive the public and derive benefit from the reputation of the complainantís mark.

B. Respondent:

There was no response or other communication from the respondent.

 

6. Discussion and Findings

To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:

- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

- the respondent has no rights or legitimate interests in respect of the domain name; and

- the disputed domain name has been registered and is being used in bad faith.

 

Rights

The complainant undoubtedly has rights in the trademark. In the case of the 1982 registrations, they are incontestable under U.S. trademark law. This constitutes conclusive evidence of the validity, registration and ownership of the mark and of the registrantís exclusive right to use the name in commerce on or in connection with the goods or services specified in the registration.

The mark depicted in each of the certificates of registration is a stylized form of the words "lovely girl", with a picture of a heart replacing the letter "o" in "lovely".

The words themselves are, of course common descriptive words of the English language, in which common law and registered trademark rights cannot exist without proof that they have acquired a secondary meaning, denoting the goods or services of a particular trader. There is no evidence of the form of the mark in which the complainant claims common law trademark rights. The panel is prepared to infer that this is a stylized form similar to that of the registrations.

The registrations themselves are limited in relation to the goods and services specified but they are also limited to the particular stylized form registered.

Ownership of such a mark as a means of identifying the source of particular goods and services does not entitle the owner of the mark to prevent use of those words by others in commerce accurately and descriptively in accordance with their primary meaning in the English language.

Thus, although the complainant has rights in the stylized form of the trademark LOVELY GIRL in relation to womenís apparel and womenís care products, those rights cannot prevail over the use of the words "lovely girls" as an accurate description of lovely girls. Likewise the owner of the trademark APPLE in relation to computers cannot prevent use of the word "apple" in relation to apples.

 

Identity or confusing similarity

The panel considers this issue is to be resolved by comparing the trademark and the disputed domain name, without regard to the circumstances under which either may be used.

Taking into account the particular stylized form of the complainantís trademark, the panel finds the domain name <lovelygirls.com> to be virtually identical and confusingly similar to the trademark LOVELY GIRL. See Minnesota Mining & Mfg. Co. v. Taylor, 21 F. Supp. 2d 1003, 1005 (D. Minn. 1998), (finding "post-it.com" and "Post-It" to be the same); Interstellar Starship Servs. Ltd. v. Epix, Inc., 983 F. Supp. 1331, 1335 (D. Or. 1997), ("In the context of Internet use, [Ďepix.comí] is the same mark as [ĎEPIXí]"); Planned Parenthood Federation of America, Inc. v. Bucci, 1997, U.S. Dist. LEXIS 3338, No. 97-0629 (S.D.N.Y. Mar. 24, 1997), (concluding that "planned-parenthood.com" and "Planned Parenthood" were essentially identical), affíd, 152 F.3d 920 (2d Cir. 1998), cert. denied, 119 S. Ct. 90 (1998).

Neither the suffix "s" nor the suffix ".com" detract from the overall impression of the dominant part of the name in each case, namely the trademark LOVELY GIRL.

Virtual or essential identity is sufficient for the purposes of paragraph 4(a)(i) of the Policy. The panel finds the complainant has established both sufficient identity and confusing similarity.

 

Illegitimacy

Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrantís rights or legitimate interests to the disputed domain name. The respondent has made no attempt to demonstrate any of these or any other circumstances of legitimacy and the panel may draw appropriate inferences from this.

Nevertheless, the complainants have the onus of proof on all issues.

In State Farm Mutual Automobile Insurance Company v. Rocky E. Faw (Case FA94971) the respondent was found to have no legitimate interests in respect of the domain name where he had neither used nor developed the domain name for a legitimate noncommercial or fair purpose and was not using the domain name in connection with a bona fide offering of goods or services. See also Leland Stanford Junior University v. Zedlar Transcription & Translation (Case FA94970).

Here the disputed domain name is being used in connection with a pornographic website. The words "lovely girls" are descriptive. The site contains pictures, some of which, no doubt (Footnote 1), are of women to whom that description applies. There is no evidence the respondent knew of the complainantís trademark at the time of registration of the disputed domain name nor subsequently. There is nothing illegitimate about offering pornography on a website. There is no evidence the respondent seeks to mislead potential customers of the complainant into visiting the respondentís site. For the reasons given in relation to bad faith, below, the panel is not prepared to draw this inference.

Under these circumstances, the panel finds the complainant has not established this element.

 

Bad faith

Paragraph 4(b) of the Policy specifies circumstances which, if proved (but without limitation) shall be evidence of both registration and use in bad faith. The complainant does not seek to establish any of the circumstances specified in sub-paragraphs 4(b)(i), (ii) or (iii). It invokes sub-paragraph (iv), which provides:

"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating the likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service of your web site or location".

In SportSoft Golf, Inc. v. Hale Irwinís Golfersí Passport (Case FA94956) a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trademark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot (Case FA94737); Canada Inc. v. Sandro Ursino (Case AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (Case FA95037).

There is no evidence that the complainantís trademark is famous and the panel is not prepared to make this finding, especially in view of the descriptive nature of the words comprising the complainantís trademark and the stylized form in which that mark is registered.

There is no evidence that the respondent had actual knowledge of the complainantís trademark rights at any time prior to the initiation of this administrative proceeding. Hence the panel cannot find that the respondent intentionally adopted the complainantís mark in the disputed domain name nor that the respondent is using the domain name intentionally to attract Internet users to its site by creating a likelihood of confusion with the complainantís mark.

Any constructive knowledge that the respondent may be deemed to have had, under U.S. trademark law (Footnote 2), is limited to the particular stylized form of the mark registered and to the particular classes of goods and services in respect of which the mark is registered.

The respondent is not using a stylized form for its domain name and is using the domain name in respect of pornographic pictures, not womenís apparel or womenís makeup or other care products. There is no evidence before the panel that any womenís apparel makeup or other womenís care products are depicted in any of the pictures displayed at the respondentís website1. It is therefore not apparent to the panel that the respondent is infringing the complainantís trademark. In any event, the Policy does not require a showing of trademark infringement.

Even if the respondent had constructive knowledge of the complainantís registered trademark rights, the use by the respondent of the disputed domain name so as accurately to describe the content of the pictures it offers negates any presumption of an intent to deceive the public or to derive benefit from the complainantís mark.

It is true that the disputed domain name differs only in the additional letter "s" from the complainantís website "www.lovelygirl.com" and this may account for instances of actual confusion of customers of the complainant who may have found themselves inadvertently visiting the respondentís website. But the relevant criteria under the Policy relate to the complainantís trademark, not its website. The complainant has not established trademark rights in the words "LOVELY GIRL" otherwise than in the particular stylized form registered and otherwise than in relation to the particular goods and services with respect to which the mark is registered. Its website address is not in that particular stylized form.

Accordingly, the complainant has not established this element.

 

7. Decision

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the complaint is dismissed.

 

 


 

 

Alan L Limbury
Presiding Panelist

Dated: November 15, 2000

 


 

Footnotes:

1. Under Rule 15(a), the panel is required to decide this complaint on the basis of the statements and documents submitted. Accordingly, the panel has not visited the respondentís website.

2. It is not clear that U.S. trademark law applies here, despite the disputed domain name having been registered with a U.S.-based registrar.