WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
C&A Nederland C.V., C&A UK, Aldemar A.G. v. SafetyNet Systems Ltd.
Case No. D2001-0503
1. The Parties
The Complainants in this administrative proceeding are C&A Nederland C.V. based at Koningin Wilhelminaplein 12/11301, 1062 Amsterdam, The Netherlands, C&A UK based at 1 Connaught Place, London W2 2DY, United Kingdom, and Aldemar AG based at Baarerstrasse 8/348, 6301 Zug, Switzerland. They are represented by Mrs. Sophie Van de Steen, Esq., Alcide de Gasperilaan, 1804 Vilvoorde, Belgium.
The Respondent is SafetyNet Systems Ltd. with offices at Park Hall Road, Unit C, Longton, Stoke-on-Trent, Staffordshire ST3 5AT, United Kingdom, represented by its Director, Mr. Paul Cotton.
2. The Domain Name and Registrar
The domain name at issue is <clockhouse.com> ("the Domain Name"). The Domain Name is registered with Melbourne IT, Ltd., Level 2, 120 Kings Street, Melbourne VIC 3000, Australia.
3. Procedural History
The Complainants filed a complaint ("the Complaint") with the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") electronically on April 5, 2001, and by hard copy on April 6, 2001.
On April 9, 2001, the Center acknowledged receipt of the Complaint.
On April 10, 2001, the Center transmitted to Melbourne IT a request for registrar verification in connection with this case so as to:
- confirm that the Domain Name at issue is registered with Melbourne IT;
- confirm that the person identified as the Respondent is the current registrant of the Domain Name;
- provide full contact details, i.e. postal address(es), telephone number(s), facsimile number(s), e-mail address(es) available in the Registrar's Who is database for the registrant of the disputed Domain Name, the technical contact, the administrative contact, and the billing contact for the Domain Name.
The same day, Melbourne IT responded to the Center's request for registrar verification and confirmed that Melbourne IT is the registrar of the Domain Name <clockhouse.com>. It indicated that the Domain Name was registered in the name of SafetyNet Systems Ltd. and that the administrative and technical contact is Mr. Paul Cotton at SafetyNet System's seat.
On April 11, 2001, the Center verified that the Complaint met the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
The panel has reviewed the documentary evidence provided by the Parties and the Center and agrees with the Center's assessment that the Complaint complies with the formal requirements of the aforementioned Rules.
The administrative proceeding commenced on April 11, 2001. The same day, the Complaint was notified to Respondent.
On April 26, 2001, Respondent filed a Response, the receipt of which was acknowledged by the Center the day after.
Upon receipt of the necessary declaration of independence and impartiality of each member of the present panel, the Center appointed on May 21, 2001, Prof. Dr. Charles Gielen, Scott Donahey, Esq. and Dr. Thomas Legler (presiding panelist) as members of the administrative panel.
4. Factual Background
The Complainants C&A Nederland, C&A UK and Aldemar are part of the same company group owned and directed by members of the Brenninkmeijer family. The group is active in retail around the world, the most known activity being the well-known C&A retail stores. C&A Nederland and C&A UK are national retail operating companies that have in the past registered C&A brands as trademarks. In the year 1996, Aldemar was established as a company managing all intellectual property rights of the group. All trademark registrations since 1996, are therefore made in the name of Aldemar with the consent of the national C&A companies (Complaint, paragraph 3). The Complainant C&A Nederland registered the trademark "Clockhouse" for the first time on May 28, 1975, in the Benelux for clothing (Complaint, Annex 3) when it launched a new brand for its youth clothing line. Subsequently, there were further trademark registrations all over the world for various classes (Complaint, Annexes 4 to 34). Among others, the panel has noted that there are various international and CTM registrations, as well as national registrations with six filings in the UK (Complaint, Annexes 29 to 34). Most of the registrations for "Clockhouse" were made in the classes 3, 9, 14, 16, 18, and 25. The panel has further noted that the trademark "Clockhouse" was registered as a wordmark and a trademark & design and has reached a CTM registration for class 14 including watches (Complaint, Annexes 8, 10, 11 and 12).
In 1999, C&A started operating stand-alone stores under the "Clockhouse" brand. It now has six stand-alone stores under this brand in Austria, the Czech Republic, and France. On the other hand, C&A has decided last year to close its retail operations in the UK due to unsatisfactory results. Until then, C&A had 120 stores all over England (Complaint, paragraph 12).
Respondent registered the Domain Name on September 29, 2000. In January 2001, a C&A employee placed an offer on a website associated to Respondent, offering hereby an amount of USD 1,000 for the Domain Name. Respondent's answer was that a fair price for "such a memorable descriptive domain name" would be USD 10,000 (Annex 43).
5. Parties' Contentions
The Complainants allege that the Domain Name is identical to the trademarks registered and used by Complainants (Complaint, paragraph 12). They point out that Respondent has no rights or legal interests in respect of the "Clockhouse" Domain Name, since it is not, or has not been, commonly known by the Domain Name, nor has it, to the Complainants' knowledge, acquired any trademark or service rights in the Domain Name. According to the Complainants, there was no web address operating by direct reference to the Domain Name until Complainants placed an offer. Any attempt to assess the web address was directly diverted to the unrelated web address of <joinin.com>, an organization affiliated to Respondent and created to develop websites utilizing "high quality descriptive and memorable domain names". In January 2001, a C&A employee placed an offer on the derived <joinin.com> website, offering an amount of USD 1,000 for the Domain Name. The answer from Respondent was: "For us to consider removing the domain from our development schedule we would need an offer of USD 10,000. This we feel a fair price for such a memorable descriptive domain name and will cover our cost to date" (Complaint, Annex 43). According to Complainants, Respondent hereby showed that it wanted an amount far in excess of out-of-pocket costs directly related to the Domain Name.
After the enquiry of Complainants to buy the Domain Name, Respondent has started to use the web address as a portal site in a transparent and belated attempt to create the illusion of a legitimate interest in the Domain Name. Complainants further state that Respondent's bad faith is demonstrated by the fact that it registered the Domain Name with the intention to sell it to the highest bidder, all the more that Respondent is a company specialized in the creation of websites and the offer of high-demanded domain names.
Complainants further stress that it is impossible that Respondent, when it registered the Domain Name on September 29, 2000, had no knowledge whatsoever of Complainants' trademark and interests, since it is located in a city where until 2000, a big C&A retail store was located. Moreover, the C&A brands, including the "Clockhouse" brand, are well-known in the UK. According to a spontaneous brand awareness test carried out in the UK in 1999, 57% of the total female respondents recognize the "Clockhouse" brand and within the target group (youth) the recognition increases to 75% of the total female respondents.
The Respondent does not dispute that the trademark "Clockhouse" is identical to the Domain Name for the purpose of this arbitration.
It asserts that it has legitimate rights with regard to its portal site utilizing the Domain Name within the scope of its logical association with clocks and watches. <clockhouse.com> is the trading name of the website and is the name chosen for Respondent's clocks and watches offering. As such, Respondent is known by this name by its visitors who are attracted through its on-line marketing. Respondent contends that it has a legitimate interest outside of the trademark's scope and utilizes the Domain Name for its intrinsic descriptive value. Portals are a legitimate business, especially given that Respondent is a pure play Internet company. To develop websites is also a legitimate business. Respondent creates websites that use descriptive domain names with the domain names chosen to reflect the content of the site. The fact that Complainants have secured a common term for a trademark in areas outside of the logical association of the term does not and cannot prevent its usage within that scope.
Bad faith requires that an abusive action be performed against complainant. In this case, Respondent was unaware of Complainants and the Domain Name was registered because of its inherent association with an area of commerce in which it wished to provide a service. When it registered the Domain Name, Respondent had no knowledge of the trademark in question. This is due to the fact that the trademark is not so well-known as Complainants assert. Pursuant to a private survey commissioned by Respondent of 60 people sampled, only nine (15%) were aware of "Clockhouse" as a brand for clothing. "Clockhouse" is further a common term in the UK used by all sorts of businesses from restaurants, public houses, bars, through to suppliers of clocks and watches (Response, Annex 1). Complainants took a public domain term and used it for their sub-brand. "Clockhouse" is a common term with descriptive properties (Response, Annexes 1 and 2).
Moreover, selling a domain name is not per se prohibited by the ICANN Policy, nor is it illegal or even in a capitalist system ethically reprehensible. Respondent considers offers for the sale of its domains on a regular basis. This is both normal and rational business practice. If an offer for sale exceeds Respondent's anticipated returns from the continuation of development and operation, then it may well proceed with the sale to the party making the offer. In the light of the foregoing, the Domain Name was not registered and is not being used in bad faith.
Pursuant to Respondent, the circumstances of this case are very close to that of the <ezstreet.net> case (WIPO Case No. D2000-1005) in that the Complainant has brought about a dispute relating to a common descriptive English phrase without attempting to negotiate a resolution of the matter prior to initiating the panel proceeding. The panel in that case found this to be an example of reverse domain name highjacking and given the similarities of the cases, Respondent asks the panel to consider this to be the case in this proceeding also.
6. Discussion and Findings
To succeed in their Complaint, Complainants must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that
1. the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
2. the Respondent has no rights or legitimate interests in the domain name, and
3. the domain name has been registered and used in bad faith.
These three elements will be considered below.
6.1. Identity or confusing similarity
The panel is convinced, and Respondent does not dispute that the Domain Name is identical with Complainants' trademark.
6.2. Rights or legitimate interests
Complainants have registered the trademark "Clockhouse" as a wordmark and a trademark & design in many countries since 1975. Complainants registered their marks, in particular in Class 25 referring to clothes, and also reached a CTM registration for Class 14 (watches). Complainants have sold "Clockhouse" clothes in the C&A shops and run various shops under this particular branding. Even an awareness degree of only 15% according to Respondent's own marketing research may lead to the assumption of a well-known trademark as opposed to famous marks (like Coca Cola, Dior, etc.), which usually reach a significantly higher degree. Based on these circumstances and the personal knowledge of some members of the panel, there can be no doubt that the trademark "Clockhouse" is a well-known trademark (see also the criteria developed by WIPO in its Recommendations for well-known trademarks of September 1999).
The panel is further of the opinion that it is not credible that under these circumstances Respondent had no knowledge of this trademark when it registered it, all the more that the brand "Clockhouse" is intensively used in the UK and that there was a C&A store in the town where Respondent is domiciled.
Respondent contends that it runs a portal site for clocks and watches and therefore has a legitimate interest in using the disputed name. Looking at Respondent's website, the panel does not have the impression that Respondent has set up a real portal for the watch business. It is more a simple compilation of a couple of links in this context, surrounded by a lot of other links and information having no relation to this type of products. There is furthermore a contradiction in Respondent's assertions: on the one hand, Respondent claims that its business purpose would be to run a portal site; on the other hand, it seems to easily accept offers for selling the domain name to which its "core business" is connected (Complaint, Annex 43). Accordingly, there are no indications for a use or preparations to use the Domain Name in connection with a serious bona fide offering of goods and services. Furthermore, such offering of goods and services would probably be infringing the Complainants' rights in the trademark "Clockhouse" because of its reputation for goods in class 25 and its CTM registration for, amongst other, watches in class 14. The panel is further of the opinion that it is impossible that Respondent is commonly known by the Domain Name (Paragraph 4(c) of the ICANN Policy) since it switched its "portal site" at the earliest in January 2001. Consequently, the panel concludes that Complainants have satisfied the second criteria of the Policy.
6.3. Bad Faith
According to paragraph 4(a)(iii) of the ICANN Policy, it is incumbent on the Complainant to prove that the Respondent has registered and is using the domain name in bad faith. The panel is of the opinion that the circumstances indicate clearly that the Respondent registered the Domain Name primarily for the purpose of selling its registration to the Complainants or to a competitor of the Complainants for valuable consideration in excess of out-of-pocket costs directly related to the Domain Name. This is shown by Respondent's e-mail of January 2001, where it tried to sell the Domain Name at a price of USD 10,000, which is clearly in excess of reasonable out-of-pocket expenses (see for instance, WIPO Case No. D2000-0636, page 4). The fact that Respondent – as it asserts - did not actively offer the Domain Name to Complainants for sale (a view which is not shared by Complainants) does not change the situation, since also a passive holding of a domain name can infringe the Policy, in particular if it is made with the intention to wait for the rightholder's or a third party's offer.
Respondent submitted a document (the origin and authenticity of which is not clear) indicating that other persons or entities use the term "Clockhouse" for their business activities in the UK. It is not unusual that various persons or entities use the same name for their business, all the more where the name in question is not a very distinctive and fanciful one like in the present case. In this context, the panel points out that contrary to Respondent's assertion, the expression "Clockhouse" is as such not a generic term, but rather composed of two generic terms which together make a new expression not existing in the English language. The panel is of the opinion that the fact that others may have registered the same name as a trade name does not matter because Paragraph 4(a)(i) of the Policy only refers to trademarks and not trade names or other business names or signs. The panel's conclusion can also be upheld from a procedural point of view and even if the list submitted by Respondent would contain some trademarks. Indeed, the Policy does not contemplate to consider the rights and interests of third parties who may also hold the mark in connection with other goods and services. A panel cannot sit in judgment of third parties who are neither complainant nor respondent in the respective administrative proceeding (see the dissenting opinion in WIPO Case No. D2000-1840). The panel therefore concludes that Complainants have satisfied the third condition of the Policy.
7. Reverse Domain Name Highjacking
Given the circumstances of this case and the above considerations, the panel does not consider that a case of reverse domain name highjacking has been made out. The panel accordingly rejects to make a declaration against the Complainants in this regard.
For the foregoing reasons, the panel concludes and decides that:
1. the Domain Name <clockhouse.com> shall be transferred to the Complainants;
2. there is no finding of reverse domain name highjacking against the Complainants.
Dr. Thomas Legler
Prof. Dr. Charles Gielen
Scott Donahey, Esq.
Dated: June 4, 2001