WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Shadowline Inc. v ICOM Datenverarbeitungs GmbH

Case No. D2000-1737

 

1. The Parties

The Complainant is Shadowline Inc., a company incorporated under the laws of North Carolina, with a place of business at 550 Lenoir Rd., Morganton, NC 28655-2604, United States of America.

The Respondent is ICOM Datenverarbeitungs GmbH, whose full post office address is Alsterweg 68, 14167 Berlin, Germany.

 

2. The Domain Name(s) and Registrar(s)

The domain name in issue is "shadowline.com"; the Registrar with which the disputed domain name is registered is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA 20170, United States of America.

 

3. Procedural History

The Complaint was filed on December 13, 2000, by e-mail. The Center sent an acknowledgement of receipt of the Complaint to the Complainant by e-mail on December 13, 2000, and advised the Complainant that hard copies together with payment of the fee must be sent by express mail or courier to the Center. The Center also advised that one copy including all annexes must be sent by fax, or by postal or courier service, or by e-mail to the Respondent as well as to the Registrar.

A request for Registrar verification was forwarded to Network Solutions Inc. on December 18, 2000, by e-mail. On December 19, 2000, Network Solutions Inc. confirmed by e-mail that Network Solutions is the Registrar of the domain name in dispute and that ICOM Datenverarbeitungs GmbH, Alsterweg 68, 14167 Berlin, Germany, Berlin, DE 14167 DE is the current registrant of the domain name in dispute.

On December 22, 2000, the Center sent a Complaint Deficiency Notification by e-mail to the Complainantís representative, carbon copied to the Respondent, advising that the Complaint does not identify the registrar with which the domain name is allegedly registered. In the Complaint Complainant has indicated that the Respondent is the Registrar, which is incorrect. The Center also advised that the Complaint does not allege facts in support of issues which the Complainant is required to prove, as required by the Rules, paragraph 3(b)(ix). The Center advised that Complainant that it needs to demonstrate how the domain name and the trademark are confusingly similar; why the Respondent has no legitimate interest in the domain name and what action or inaction constitutes bad faith. The Center also requested the Complainant to provide a copy of the trademark registration and to fill in section IX (Other Legal Proceedings) of the Complainant. The Center advised the Complainant that it must correct the deficiencies within 5 calendar days of the date of the notification.

On December 27, 2000, the Center received an amended Complaint.

On January 4, 2001, the Center forwarded Notification of Complaint and Commencement of Administrative Proceeding to the Respondent ICOM Datenverarbeitungs GmbH by post/courier, e-mail and facsimile. The Center advised the Respondent that a Response was due within twenty (20) calendar days from the day of receipt of the notification. The Respondent was advised that the last day for sending the Response to the Complainant and the Center is January 23, 2001.

On January 5, 2001, the Respondentís representative sent an e-mail to the ComplainantĎs representative, Shannon Carswell, advising that Respondent is "doing all the IT stuff for these companies, so did we register the domain "shadowline.com" for them". The Respondent advised that the owner of these companies is Mr. Artur Janczak who is also the owner of the registered trademark "Shadowline". The domain is primarily used for e-mail exchange and a web site is planned for the middle of 2001. The Respondent advised that Mr. Janczac is not interested in giving away or selling the domain name.

The Complainantís representative replied to the Respondent on January 5, 2001, advising that the Complainant intends to proceed with the Complaint. Complainant registered the U.S. trademarks for Shadowline and design in 1953 and has trademarked Shadowline in about 6 other countries.

On January 8, 2001, the Respondent sent a Response to the Center with a copy by courier to the Complainant. On January 9, 2001, the Center sent an Acknowledgement of Receipt (Response) to the Respondent by e-mail with a copy by e-mail to the Complainant.

On January 21, 2001, the Center forwarded a Notification of Appointment of Administrative Panel and Projected Decision Date by e-mail to the Complainant and the Respondent advising that an Administrative Panel consisting of a single member had been appointed and that the Administrative Panel was required to forward its decision to the Center by February 4, 2001.

On January 21, 2001, the Center transmitted the case file to the Administrative Panelist by e-mail and by courier.

 

4. Factual Background

(1) Complainantís Trademarks

The Complainant is the owner of the following trademark registrations (see Annex 03 to the Amended Complaint):

United States Trademark Registration No. 0640057

Registration Date: January 15, 1957

Trade-mark Shadowline Design

Registrant: Shadowline, Inc.

Goods and Services: International Class 025, U.S. Class 039 : ladiesí panties, night-gowns, slips, [bandeaux,] pyjamas, bed jackets, peignoirs, robes, pettiskirts [, and dressing gowns].

First use in commerce: 1954-08-02

United States Trademark Registration No. 0641062

Registration Date: February 5, 1957

Trademark Shadowline Design (& words Lingerie youíll like near you!)

Registrant: Shadowline, Inc.

Goods and Services: International Class 025, U.S. Class 039: ladiesí panties, night-gowns, slips, [bandeaux,] pyjamas, bed jackets, peignoirs, robes, pettiskirts [, and dressing gowns].

First use in commerce: 1954-08-02

Complainant submits that it has been using its trademarks in connection with sales of womenís daywear and sleepwear products for over 25 years.

(2) Respondentís Trademark

Mr. Artur Janczak, on whose behalf the Respondent registered the domain name "shadowline.com", owns the following German trademark SHADOWLINE:

German Registration No. 396 55 399

Registration Date: 23 January 1997

Trade-mark: SHADOW LINE (fanciful letters)

Registrant: Artur Janczak

Goods and Services: products from the sun blind industry (see page 4 of Response). The products are not specified on the registration page attached to the Response.

Mr. Artur Janczak is a partner in the Respondent ICOM Datenverarbeitungs GmbH.

 

5. Partiesí Contentions

A. Complainant bases its Complaint on the following grounds:

(i) The Complainant submits that the Respondent has registered the domain name "shadowline.com" which is identical to the Complainantís registered trademarks SHADOWLINE & Design.

The Complainant is the owner of two registered United States trademarks for SHADOWLINE & Design. Said trademarks are registered and used for ladiesí panties, night-gowns, slips, [bandeaux,] pyjamas, bed jackets, peignoirs, robes, pettiskirts [, and dressing gowns]. The Complainant has provided copies of trademark registrations for SHADOWLINE & Design in the United States.

The Complainant submits that the domain name in dispute, "shadowline.com", is identical to the Complainantís registered trademarks.

With respect to the second element, which the Complainant must prove, whether the Respondent has no rights or legitimate interest in respect of the disputed domain names, and the third element which the Complainant must prove, whether the domain name in dispute was registered by the Respondent in bad faith and is being used in bad faith, Complainant argued entitlement by reason of Registration of Complainantís Trademarks many years prior to Registration of SHADOW LINE design by Mr. Janczak. The Complainant also submitted that the Respondent was not operating a live site.

B. Respondent

In the Response dated January 9, 2001, the representative for the Respondent submitted that Mr. Artur Janczak of Berlin is a partner in the Respondent ICOM Datenverarbeitungs GmbH. The representative for the Respondent submitted that Respondent is doing all the IT related business for one Artur Janczak who owns the following businesses:

Artur Janczak Jalousien KG of Berlin, Germany

and

Shadow z.o.o. of Szczecin, Poland.

Artur Janczak is the owner of both companies and also the owner of the registered German trademark "SHADOW LINE". Mr. Janczak is also a partner of ICOM Datenverarbeitungs GmbH, the Respondent herein.

The Respondent submits that the companies are producing and selling products of the sun-blind industry and the trademark SHADOW LINE is registered for products from this industry.

The Respondent submits that the domain name "shadowline.com" is used for email exchange and e-commerce applications (electronic exchange of business documents such as orders, delivery notes and invoices). An extended web site with an online shop for "SHADOW LINE" products is planned for the middle of 2001.

Respondent submits that the owner of the domain name "shadowline.com" has rights in a trademark which is identical to the domain name. Respondent submits that it is using the domain name for business and the domain name is well known to its customers. Respondent further submits that the domain name in dispute is obviously not being used in bad faith.

With respect to 4.a. of the Uniform Domain Name Dispute Resolution Policy, Respondent further submits that the Respondent is the legal registrant and owner of the domain name "shadowline.com".

 

7. Discussion and Findings

On December 22, 2000, the Center sent a Complaint Deficiency Notification by e-mail to the Complainantís representative advising that the Complaint as originally filed did not provide evidence with respect to grounds 4.a.(ii) and (iii) of the ICANN Policy or evidence of the trademark registrations referred to in the original Complaint, as required by the Rules, paragraph 3(b)(ix). The Center advised that Complainant that it needed to demonstrate how the domain name and the trademark are confusingly similar; why the Respondent has no legitimate interest in the domain name and what action or inaction by the Respondent constitutes bad faith. The Complainant submitted a revised Complaint annexing particulars of two United States registrations for SHADOWLINE design relating to the issue of confusion, but did not provide any further submissions concerning why the Respondent has no right or legitimate interest in the domain and what action or inaction by the Respondent constitutes bad faith.

Paragraph 4 of the ICANN Policy provides that a Complainant must prove each of three elements in a domain name dispute:

(i) the domain name is identical or misleadingly similar to a trade or service mark in which the complainant has rights; and

(ii) the holder of the domain name has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is used in bad faith.

Confusingly Similar

The Complainant submits that the domain name "shadowline.com" is identical to the Complainantís registered trademarks SHADOWLINE & Design.

Finding:

Complainant is the owner of two trademark registrations for the trademark SHADOWLINE & Design registered in the United States Trademark Office in 1957 in association with ladiesí panties, night-gowns, slips, [bandeaux,] pyjamas, bed jackets. peignoirs, robes, pettiskirts [,and dressing gowns].

The Complainant has supplied the Panel with a copy of United States Registration Nos. 0640057 and 0651062 for SHADOWLINE & Design.

The design mark SHADOWLINE, Registration No. 0640057 consists of the words "Shadow" and "line" in a triangular banner or flag.

The design mark SHADOWLINE, Registration No. 0651062 consists of the words "Shadow" and "line" in a triangular banner or flag in association with the words "Lingerie youíll like near you!".

The Complainant submits that trademarks have been used extensively in association with the wares for which they have been registered. The Complainant did not submit evidence of extensive use in the form of invoices or brochures to substantiate the claim of extensive use.

The Respondentís client (who is a partner in Respondent firm) owns the German trademark Nr. 396 55 399 for Shadow Line, registered in association with window blinds.

The Respondent has not filed any demonstrative evidence of use of the German Trademark SHADOW LINE design in association with the goods for which it is registered.

The Panel finds that the domain name "shadowline.com" is confusingly similar to the Complainantís trademark registrations for SHADOW LINE & Design.

Legitimate Interest

The second element which the Complainant must prove is found in Paragraph 4.a.(ii) of the Uniform Domain Name Dispute Resolution Policy:

The Complainant submitted that because the Complainant registered its trademark and has used its trademark SHADOW LINE & Design in association with lingerie since the 1950ís, the Complainant has superior rights over the Respondent who acquired the registered trademark for SHADOW LINE design for window blinds in 1997.

Finding:

The Respondent and companies using the trademark SHADOW LINE design for window blinds are owned or held in partnership by Artur Janczak of Berlin. The Respondent has demonstrated its rights and legitimate interest as provided in paragraph 4c. of the ICANN Policy by using the domain name "shadowline.com" in association with e-mail exchange and providing business customers with product information before any notice to the Respondent of this dispute.

Bad Faith

Respondentís Domain Name Has Been Registered And Is Being Used In Bad Faith.

The third element which the Complainant must prove is found in Paragraph 4.a.(iii) of the Uniform Domain Name Dispute Resolution Policy:

"4.a.(iii) your domain name has been registered and is being used in bad faith".

Findings:

The Complainant has not provided arguments or evidence to establish on a balance of probabilities that the Respondent registered the domain name "shadowline.com" in bad faith and is using the domain name in bad faith.

I find that the Complainant has failed to establish that the domain name "shadowline.com" was registered and is being used in bad faith.

 

8. Decision

In the Complaint, the Complainant requested that in accordance with the Uniform Domain Name Dispute Resolution Policy, the Administrative Panel issue a decision that the disputed domain name be cancelled or transferred to Complainant.

The Complainant has failed to prove two of the three elements Complainant is required to prove. The Complaint is dismissed.

 


 

Ross Carson
Sole Panelist

Dated: February 2, 2001