WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dylex Limited v 1270694 Ontario Inc./Tom Goodwin
Case No. D2000-1539
1. The Parties
Complainant is Dylex Limited, a corporation incorporated under the laws of Ontario, Canada, with a head office and principal place of business at 637 Lake Shore Boulevard West, Toronto, Ontario, M5V 1A8, Canada.
The Respondent is 1270694 Ontario Inc./Tom Goodwin, whose address is 158 Rideau Street, Ottawa, Ontario, K1N 5X6, Canada.
2. The Domain Name and Registrar
The domain name in issue is <xxxy.com>. The Registrar with which the disputed domain name is registered is Register.com, 575 8th Avenue, 11th Floor, New York, New York, 10018, United States of America.
3. Procedural History
The Complaint was received on November 8, 2000 by the WIPO Arbitration and Mediation Center by e-mail. A hard copy was received by the Center on November 13, 2000. The Center acknowledged receipt of the Complaint on November 15, 2000.
The Complainant also sent the Respondent a copy of the Complaint by e-mail and registered mail on November 8, 2000. A copy of the Complaint was also sent by electronic mail to Register.com, Inc. on November 8, 2000.
A request for Registrar verification was forwarded to the Registrar on November 17, 2000. On November 22, Register.com, Inc. confirmed by facsimile that Tom Goodwin of 1270694 Ontario Inc. is the current registrant of the domain name in issue. Register.com, Inc. informed the Center that it had not received a copy of the Complaint.
On October 4, 2000, the Center forwarded Notification of the Complaint and Commencement of Administrative Proceedings, together with a copy of the Complaint, to the Respondent Tom Goodwin of 1270694 Ontario Inc. by courier, facsimile and e-mail. The Center advised the Respondent that the formal date of the commencement of the administrative proceeding was November 29, 2000 and that the last day for sending a Response to the Complainant and to the Center was December 18, 2000.
The Center also sent copies of the Notification of the Complaint and a copy of the Complaint by e-mail, facsimile and courier to Register.com, Inc. and by e-mail to the representative for the Complainant.
A Response was sent by e-mail to the Center on December 14, 2000. A hard copy of the Response was received by the Center on December 21, 2000. On December 18, 2000, the Center sent an Acknowledgement of Receipt of the Response by e-mail to the Respondent and to the representative for the Complainant.
The Complainant requested a single panelist, and the Center appointed Ross Carson as the Panelist. The Panelist has duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
On January 8, 2001, the Center forwarded a Notification of Appointment of Administrative Panel to the Parties.
On January 8, 2001, the Center forwarded a copy of the Complaint to the Panelist Ross Carson by e-mail and the hard copy of the Complaint by courier. The date scheduled for the Panelís decision is January 21, 2001. The language of the proceedings is English.
4. Factual Background
The Complaint is based on the ownership of a registered Canadian Trademark for XXXY & Design, Registration No. 478,028 registered on June 18, 1997. A declaration of use was filed on May 14, 1997 for wares and services.
The Complaint is also based on a pending United Kingdom Trademark Application No. 2,046,309 for XXXY & Design filed in the U.K. Trademarks Office on November 24, 1995.
The trademark XXXY & Design covers the following goods and services:
(a) jeans, pants, shorts, namely sport shorts and underwear; shirts, dresses, sweaters, shirts, T-shirts, sweatshirts, jackets, vests, blazers, coats, raincoats, neckties, hosiery, socks, shoes and boots, belts, braces and hats and caps; and
(b) retail store services featuring clothing and clothing accessories.
The Complainant has attached a copy of its trademark registration as Annex 3 and a copy of the particulars of the United Kingdom application as Annex 4.
Complainant submits that Complainant is a leading retailer in Canada with over 540 locations throughout major urban and suburban areas in Canada. Its operating divisions include BiWay, Braemar, Fairweather and Thriftys. Complainant submits that the Thriftys division of the Complainant operates four stores in Canada under the XXXY & Design Mark, three in the Toronto area and one in Vancouver. Complainant submits that it has invested significant resources in developing and promoting throughout Canada the XXXY & Design mark in association with fashion-related goods and services. The Complainant submits that it began using the XXXY & Design mark in Canada in 1997. In 1995 Complainant filed Canadian and United Kingdom trademark applications for the XXXY& Design mark. The Canadian registration issued in 1997.
5. Partiesí Contentions
(i) The Complainant submits that the domain name <xxxy.com> is identical or confusingly similar to the Complainantís registered and pending trademarks XXXY & Design.
(ii) The Complainant submits that the Respondent has no rights or legitimate interest in respect of the domain name <xxxy.com> .
(iii) The Complainant further submits that the domain name <xxxy.com> was registered and was, and continues to be, used in bad faith.
(i) Identical or Confusingly similar.
With respect to the first element of confusion between the domain name and the registered and pending trademarks for XXXY & Design the Complainant submits that by virtue of intensive use and advertising of the XXXY & Design Mark, it has a distinctive quality and has acquired special and particular significance and very valuable goodwill as identifying the Complainant and its apparel goods and retail services. Complainant submits that it has acquired common-law rights in the XXXY & Design Mark in Canada and elsewhere, in addition to its statutory rights pursuant to its Canadian trademark registration.
Complainant submits that the domain name at issue, <xxxy.com> is identical to the XXXY & Design Mark of the Complainant. Complainant submits that the Respondent registered the domain name <xxy.com> long after the Complainant acquired its rights in the mark XXXY & Design Mark. Complainant submits that Complainant has satisfied the first element of proof that the domain name <xxy.com> is identical or confusingly similar to the Complainantís trademark.
(ii) Absence of Respondentís rights and legitimate interest in the domain name
The second element is whether the Respondent has rights or a legitimate interest to the disputed domain name.
Complainant submits that the Respondent has never associated a website with the <xxxy.com>domain name. A print-out of the current content of the Respondentís website associated with the <xxxy.com< domain name is attached as Annex 5. Entry of the domain name <xxxy.com> merely links to GreatDomains.com, a commercial domain name registration website where the domain name <xxxy.com> is listed as available for sale. .Complainant asserts that the Respondent is a domain name merchant in that it has registered the domain name <xxxy.com> for the sole purpose of later selling it for a profit.
(iii) Registration and Use of the Domain Name in Bad Faith
With respect to the third element as to whether the Respondent has registered and is using the disputed domain name in bad faith the Complainant submits that the Respondent is not using the domain name <xxxy.com> in connection with a bona fide offering of goods and services nor for a legitimate or fair use. The domain name <xxxy.com> is not a term by which the Respondent is commonly known. Respondent has recently offered the domain name <xxxy.com> for sale to the general public. Respondent has not developed the <xxxy.com> domain name to be worth at least $300 U.S. which is listed as the minimum sale price.
Complainant further submits that the registration of the domain name was in bad faith because Respondent has offered the domain name for sale to the general public. Complainant submits that it should be concluded that the domain name was chosen because of its similarity to Complainantís trademark and that it will or might be sold at some point in time to earn a profit.
Complainant submits that the Respondent and Complainant are competitors in that they both operate retail stores in Canada dealing in wearing apparel among other things. Complainant alleges that Respondent is disrupting the business of Complainant by making it impossible for Complainant to use its trademark XXXY in the domain name <xxxy.com>.
Complainant submits that when Respondent registered the domain name <xxxy.com>, the Complainant trademark XXXY & Design had been registered in Canada for over two years. Complainant submits that Respondent had a duty to ascertain these facts prior to registering the domain name <xxxy.com>.
Complainant attached as Annex 6 the corporate particulars of the Respondent and as Annex 7 corporate particulars of Top of the World Trading Corporation as well as particulars of the domain name <topoftheworld.com>. Complainant submits that as both companies are located at the same address and as Tom Goodwin is associated with both firms the Respondent is a sister company or subsidiary of Top of the World Trading Corporation. The website at <www.topoftheworld.com (Annex 9 to Complaint) promotes apparel goods of Top of the World Trading Corporation. Complainant submits that as Respondent is related to or commonly owned by a Canadian retailer of wearing apparel, Respondent is therefore a competitor of the Complainant.
Respondent submits that it has a legitimate interest in the domain name <xxxy.com>, did not register <xxxy.com> in bad faith and is not currently and has never used the domain name in bad faith.
Respondent submits that it is a Web development company and attaches the business plan drawn up in the June 1999 as Annex A to the Response. Respondent submits that its plan was to reserve several domain names in growth industries and develop web sites, attract users, and get acquired by larger companies who purchase small web sites/companies for the values of the registered users of those sites. Respondent submits that it registered 18 domain names in three categories as shown in the business plan. Three names were put into development, one of which was <xxxy.com> for the online dating/chat industry.
Respondent submits that it received some inquiries regarding purchase of some of its domain names and considered selling one name to finance the development of the others. Respondent listed some of its domain names (Annex D) with GreatDomains.com which offers free listing and also free parking in order to save expenses of purchasing space from other registrars. Respondent submits that market conditions in the spring of 2000 slowed development which has been put on hold awaiting a market turnaround. The Respondent has included as Annex E a printout of the alpha version and beta version of the website which had been developed to be used in association with the domain name <xxxy.com>. Respondent also provided a sample of its proposed web pages associated with its domain name <touristdestinations.com> as it was when development was placed on hold.
With respect to Complainantís allegations that Respondent is a sister company or subsidiary of Top of the World, Respondent advises that Respondent company is a separate corporate entity and totally unrelated to Top of the World. Respondent advises that Top of the World is a skateboard and snowboard shop founded in 1991 and incorporated in 1994. Respondent submits that Top of the World does not carry or sell the same goods as Complainant and is not a competitor of the Complainant. (Para. 13 of the Response). Respondent refutes the allegation by Complainant that Respondent is a competitor of the Complainant.
(i) Identical or Confusingly similar
Respondent advises that the term xx-xy is a generic term meaning male-female, derived from the names given to the chromosomes that determine gender. Respondent attached as Annex K to the Response registration information for xxxy.net, xxxy.org, xx-xy.org, xx-xy.net and a partial list of other domain names including xxx followed by every letter of the alphabet.
Respondent submits that the appeal of any domain name with xxx is widespread, generic and in no way associated with the Complainant.
(ii) Absence of Respondentís rights and legitimate interest in the domain name
Respondent denies the allegation that it has no legitimate interest in the domain name <xxxy.com>. Respondent submits that while currently there is no use of the domain name <xxxy.com> in connection with an active website, Respondent has presented evidence of preparations for the use of the domain name at Annex E to the Response.
Respondent also submits that while Complainant registered the domain name <xxxy.ca> over two years ago, Complainant has not yet developed a web site. Respondent suggests that by its own rationale Complainant could be considered to have no legitimate interest in <xxxy.ca>.
Respondent submits that the burden of proof of legitimate interest has been met by the Respondent.
(iii) Registration and Use of the Domain Name in Bad Faith
Respondent submits it never contacted or attempted to contact Complainant or any other person or entity in attempts to sell the domain name. Respondent advises that the domain <xxxy.com> was listed as available for sale after Respondent was contacted by parties interested in acquiring the name. The minimum offer of $300 U.S. is the default setting applicable to all listed names on the GreatDomains.com site. Respondent refutes Complainantís allegation that Respondent chose the domain name <xxxy.com> because of its striking similarity to Complainantís trademark XXXY & Design.
Respondent submits that Respondent is a website development company, not a retailer and also not a competitor of the Complainant. Respondent denies that it registered the domain name to disrupt the business of the Complainant. Respondent submits that Complainant has neglected to develop its site under the domain name <xxxy.ca> for over two years. Complainant has abandoned its U.S. trademark application (Annex W to Response) and it seems unlikely that a web presence in the U.S. or world with a "dot.com" would be in the Complainantís business plan.
Respondent submits that the stated use of the domain name <xxxy.com> does not conflict with the Complainantís trademark which is used in a different industry.
Respondent further submits that Complainant has not shown its mark to be well known and submits that it is a generic term.
Respondent submits that the burden of proof of bad faith registration has not been met by the Complainant.
The Respondent requests the Administrative Panel to issue a decision to dismiss this Complaint. The Respondent further requests the Panel to declare that the Complaint was brought in bad faith and that the Complaint constitutes an abuse of the adminstrative proceeding.
(i) Identical or Confusingly Similar
The first element which the Complainant must prove is that the domain <xxxy.com> is identical or confusingly similar to the Complainantís trademark or service mark XXXY and design.
The Complainantís trademark is a design mark consisting of two boxes one above the other. The upper box has a white background with the letters XX in black. The lower box has a black background with the letters XY in white.
The letters XX and XY are letters used by biologists to designate combinations of chromosomes found in human beings. The letters XX reference chromosomes of females and the letters XY reference chromosomes found in men. Letters are inherently weak trademarks being the building blocks of words. The Complainantís trademark is a design trademark in which the combination of letters XX and XY are used in combination against different backgrounds to indicate women and men. The Complainant did not file any evidence of use of the design trademark in association with the goods and services for which the trademark is registered in Canada. The Complainant stated that four stores are now being operated in Canada in association with the design mark XXXY. No evidence was provided of how the trademark was used in advertising goods or services or the extent of advertising dollars spent in promoting goods or services in association with the design trademark. The Complainant did make a general statement that significant resources were invested in developing and promoting the XXXY design mark in Canada in association with fashion related goods and services. The Complainantís design trademark is one in which the letters XX and XY are visually differentiated. In the domain name in dispute the letters <xxxy.com> the combination of letters are not visually differentiated. The Respondentís evidence is that the Respondent has developed some material to use the domain name <xxxy.com> in association with an online dating/chat web site. When the letters xxxy are used in association with an online dating/chat website the letters will be recognized by a portion of the public and differentiated into xx and xy having regard to the service in association with which the domain name <xxxy.com> is proposed to be used. The domain name <xxxy.com> is confusingly similar to the Complainantís trademark XXXY & Design.
(ii) No Rights or Legitimate Interests
The second element which the Complainant is required to prove is that the Respondent has no right or legitimate interest in respect of the domain name in dispute. The only evidence filed by the Complainant shows that entry of the domain name in dispute currently links to a commercial domain name registration website where the domain name is shown as being for sale for a minimum of three hundred dollars. The Respondent has filed evidence of e-mails disclosing an interest to purchase the domain name in dispute. The Respondent has obviously not sold the domain name in dispute. The Respondent has filed evidence of a general plan accompanied by some documentation to support the planned operation of a website for an online dating/chat room. The Complainant filed evidence that another company carried on business associated with clothing downstairs from the Respondent and that an officer of the Respondent was associated with both companies. The Respondent stated in evidence that the company Top Of The World Limited which operates downstairs is a "sport specific" sporting goods store specializing in the so-called "extreme" sports. The representative for the Respondent states that Top Of The World carries over 100 models of skateboards and over 200 styles/colours of skateboard shoes. The representative for the Respondent states that over 95% of the wearing apparel sold at Top Of The World is specialized clothing only available to skateboard and snowboard shops. I infer after reviewing the evidence presented that the company Top Of The World is not a competitor of the Complainant.
The Complainant also submitted that the fact that the Respondent is not actively operating a website is evidence of no legitimate interest in the domain name. The Respondent has filed evidence of a business plan with some follow up design with respect to a planned active webpage for an online dating/chat room to be associated with the domain name in dispute <xxxy.com>. The Respondent states that further work in developing the website was delayed because of the downturn in the .com business sector in the spring of the year 2000. With respect to not operating an active website the Complainant relied on the Telstra case (WIPO D2000-0003). The Telstra case related to a trademark which was inherently distinctive and well known in the satellite business. The combinations of letters in the Complainantís design mark XX and XY are not inherently distinctive and there is no evidence of how the design mark is used dollar values of the extent of use and advertising of the design mark in association with the goods and services for which the trademark is registered for the years 1997 to 1999.
The Complainant submitted that speculation in a domain name is not recognized by the Policy as a legitimate interest in a name, and the Policy should not be interpreted to hold that mere speculation in domain names is a legitimate interest. The Respondent submitted a business plan and some development work relating to a webpage for an online date/chatroom site as evidence that the domain name in dispute was not registered and held for mere speculation.
After reviewing the evidence of the Complainant and the Respondent, I find that the Complainant has failed to prove that the Respondent has no right or legitimate interest in respect of the domain name in dispute.
(iii) Registered and Being Used in Bad Faith
The third element which the Complainant is required to prove is that the disputed domain name has been registered and is being used in bad faith.
In addition to submissions made by the Complainant in support of the allegations that the Respondent had no right or legitimate interest in the domain name in dispute the Respondent made some additional submissions with respect to the issue that the domain name <xxxy.com>was registered and is being used in bad faith,
The Complainant submitted that the Respondent had a duty to conduct searches and refrain from using a domain name that infringes on a third partyís rights. The Complainant has not established that the Respondent is using or intends to use the domain <xxxy.com> in relation to clothing items or the services of operation of a clothing store. The Complainant did not file evidence in the Complaint that the Complainantís design mark was a famous trademark which should be protected in relation to goods or services well beyond those for which the trademark is registered or used.
The Complainant also submitted that the domain name in dispute was registered and is being used in bad faith because the domain name <xxxy.com> is not being used in commerce as an active website. The submission is that "parking" of a domain name is synonymous with use in bad faith. The Respondent has filed evidence of some development of an active website for an online dating/chat room, and in the time since registration of the domain name in June 1999 and having regard to the downturn in the .com business in the year 2000 the failure to develop an active website is not evidence of use in bad faith having regard to the evidence filed. I find on evaluating the evidence that the Complainant has failed to prove on a balance of probabilities that the Respondent registered and is using the domain name <xxxy.com> in bad faith.
7. Summary of Findings
a. The domain name in dispute is confusingly similar to the Complainantís registered trademark for XXXY & Design.
b. The Complainant has failed to prove that the Respondent has no right or legitimate interest.
c. The Complainant has failed to prove that the domain name <xxxy.com> was registered and is being used in bad faith.
The Complaint is dismissed.
Dated: January 20, 2001