WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Brown Shoe Company, Inc. v. Guide Publications
Case No. D2001-0762
1. The Parties
1.1 Complainant is Brown Shoe Company, Inc., a New York corporation located at 8300 Maryland Avenue, St. Louis, Missouri 63105, U.S.A. Respondent is Guide Publications, located in Santa Monica, California, U.S.A. Complainant is represented by counsel, Polster, Lieder, Woodruff & Lucchesi LC, St. Louis, Missouri, U.S.A.
2. The Domain Name and Registrar
2.1 The domain name which is the subject of this proceeding is <brown-shoes.com> owned by Respondent. The domain name is registered with Network Solutions, Inc., Herndon, Virginia, USA.
3. Procedural History
3.1 On June 7-11, 2001, a Complaint was received in connection with this matter.
3.2 On June 11, 2001, an Acknowledgment of Receipt of Complaint was sent.
3.3 On June 12, 2001, a Request for Verification was sent to Network Solutions.
3.4 On June 20, 2001, a Notification of Complaint and Commencement of Administrative Proceeding was issued.
3.5 On July 10, 2001, a Response was received in connection with this matter.
3.6 On July 10, 2001, an Acknowledgment of Receipt of Response was issued.
3.7 On July 12, 2001, Requests to the Administrative Panel by Respondent (I and II) were issued.
3.8 On July 19, 2001, a supplemental filing by Complainant was issued.
3.9 On August 21, 2001, Notification of Appointment of Panel and Projected Decision was issued.
3.10 Additional submissions were received by the Panel from Complainant and Respondent.
3.11 The Panel finds that the Center acted fairly and in accordance with the Rules and Policy concerning the administration of this dispute.
4. Factual Background
4.1 Complainant is the owner of the following service marks, corporate and trade names, and domain name:
a. Brown Shoe: Service mark Complainant used and/or uses for manufacturing, advertising, distributing, and sales of shoes and footwear. Brown Shoe is the commonly used service mark and trade name for Brown Shoe Company, Inc., Brown Shoe Company, Brown Shoe Co., and Brown Group, Inc., and has been for over a century. Brown Shoe Company, Inc., holds itself out as Brown Shoe, for example, on Brown Shoe Company, Inc.ís own internet web site.
b. Brown Shoe Co: Service Mark, Reg. No. 1,969,202, on the Principal Register of the United States Patent and Trademark Office, for retail shoe store services, in class 42 (U.S. CL. 101). The registration states a first use in 1991, application filed February 25, 1994, and registration April 23, 1996.
c. Brown Shoe Company: Trade name Complainant first used commercially for the manufacturing, advertisement, and distribution of shoes and footwear in 1893 and has continually used since. This trade name was registered as a fictitious name designation with the Missouri Secretary of State in February 3, 1972, as Charter Number X00076510.
d. Brown Shoe Company, Inc.: On January 2, 1913, Complainant was incorporated and registered as Brown Shoe Company, Inc. with the New York Department of State. Complainant is also listed on the New York Stock Exchange. On January 11, 1913, Complainant, Brown Shoe Company, Inc., registered with the Missouri Secretary of State as a foreign corporation to do business within the State of Missouri for manufacturing and distributing shoes and footwear. The Brown Shoe Company, Inc. name was used continually as Complainantís corporate name until 1972 when the company was re-designated as Brown Group, Inc. From 1972 to 1999, the shoe manufacturing, wholesaling and marketing division was named Brown Shoe Company. In 1999, the company returned to the use of Brown Shoe Company, Inc., and has used the name as such since. Complainantís Amended Certificate of Incorporation was filed May 27, 1999, with the Department of State of the State of New York reflecting this change.
e. <www.brownshoe.com>: the domain name used by Complainant Brown Shoe Company, Inc., for its internet web site. The domain name record was created November 6, 1996. This site is used for advertising the various brands of shoes and footwear manufactured for and/or sold by Complainant Brown Shoe Company, Inc., including BUSTER BROWN®, NATURALIZER®, LIFESTRIDE®, NATURAL SPORT®, and AIR STEP® brands. The site also advertises and promotes Complainantís associated retail operations including FAMOUS FOOTWEAR®, NATURALIZER®, and F.X. LASALLE stores, and the on-line sale of NATURALIZER® shoes. This web site is also used for corporate information, employment opportunities, on-line wholesaling to retail customers, and investor information. This list is not exhaustive.
4.2 Complainant has been using the name "Brown Shoe" and various forms thereof as a trade name since 1893, as its corporate identity since 1913 (with the exception of the period 1972-1999, during which time Complainant diversified but still used "Brown Shoe" in conjunction with Complainantís shoe division, Brown Shoe Company), and as a service mark since 1991. Complainant registered the domain name, "www.brownshoe.com", in 1996. Complainant has popularized and established the name "Brown Shoe" and the aforesaid various forms of "Brown Shoe" through marketing, advertising, sales and other customary business practices in the shoe industry, and in association with related goods and services. These activities have produced a good reputation and considerable goodwill for Complainant. Each of these endeavors has been undertaken by Complainant to develop, maintain, and strengthen the recognition and knowledge of "Brown Shoe" in both the wholesale footwear industry and in the retail footwear trade, as a trade name and service mark.
4.3 In 1913, Complainant incorporated and was thereafter listed on the New York Stock Exchange, with its name being Brown Shoe Company, Inc. Since 1893, Complainant has continuously used "Brown" and "Shoe" as major components in its corporate and/or divisional name and has been known across the United States throughout that period of time as "Brown Shoe Company."
4.4 In 1972, Complainant formally changed its name to Brown Group, Inc., to recognize its diversification. However, Complainant designated an entire division as Brown Shoe Company and continued to utilize the "Brown Shoe" name and continued to do business through that division as Brown Shoe Company. Thereafter, in 1999, Complainant formally changed its full corporate name back to Brown Shoe Company, Inc.
4.5 For most of its history, Complainant has been one of the major United States manufacturers, wholesalers, and distributors of shoes, footwear, and accessories. For the 2000 fiscal year, Complainant Brown Shoe Company, Inc. had consolidated annual net sales of $1.685 billion, including the sale of over 60 million pairs of shoes through wholesale and retail sales to 120 million customers. As of April 1, 2000, Complainant had over 17 million shares of outstanding common stock, listed both on the New York Stock Exchange and the Chicago Stock Exchange. As of the end of fiscal year 2000, Brown Shoe Company, Inc., through a subsidiary operated over 1,406 retail footwear stores which sold numerous footwear products purchased from Complainant in conjunction with one or more of the various "Brown Shoe" trade names.
4.6 Respondent registered its domain name on March 4, 1998.
5. Partiesí Contentions
5.1 The following arguments are set forth in the Complaint.
5.2 The subject domain name <www.brown-shoes.com> illegally causes a likelihood of confusion, mistake and/or deception with Complainantís service mark, corporate and trade names and domain name. In particular:
a. The subject domain name itself, <www.brown-shoes.com>, is confusingly similar in spelling, sound and connotation, to all of Complainantís aforesaid mark, and corporate and trade names, Brown Shoe, Brown Shoe Company, Brown Shoe Co., and Brown Shoe Company, Inc., and domain name, <www.brownshoe.com>. The subject domain name uses both the words "brown" and "shoe" which comprise the exact same substantive portion of each of Complainantís mark, corporate and trade names and domain name.
b. Respondent uses its web site, identified by the subject domain name, for the marketing and retail sales of shoes, footwear, and related products; the very same goods and services offered by Complainant in association with Complainantís aforesaid mark and corporate and trade names, Brown Shoe, Brown Shoe Company, Brown Shoe Co., and Brown Shoe Company, Inc., and domain name,<www.brownshoe.com>.
c. Respondentís web site, identified by the subject domain name, identifies Respondent as "brown-shoes.com."
d. The words "Brown Shoes" are seen throughout Respondentís web site. The top of the order form page on Respondentís web site states "Welcome to Brown-Shoes secure web server." (emphasis added). The email link allows one to email to "firstname.lastname@example.org", and the copyright link allows one to email to email@example.com.
5.3 The similarity in sound, connotation and use, between the complained-of domain name, <www.brown-shoes.com>, and complainantís domain name <www.brownshoe.com>, and mark, and corporate and trade names Brown Shoe, Brown Shoe Company, Brown Shoe Co., and Brown Shoe Company, Inc., is manifest and indisputable, and confusion is inevitable.
5.4 Further, Complainant is not only the indisputable senior user of the term "brown shoe" with a long and well-establish history of use, "brown shoe" is inextricably tied to and associated with Complainantís identity. Respondentís use can only be a vehicle for confusion and illegal appropriation.
5.5 Complainant has used Brown Shoe and Brown Shoe Company for over a century, expending considerable resources in establishing these as recognized names in the manufacturing, distributing, and selling of footwear, and related products throughout the United States and the world. In addition, Complainant registered the internet web address "www.brownshoe.com" in 1996 through which shoes and footwear are advertised, as are other aspects of the operations of the company.
5.6 Respondent registered <www.brown-shoes.com> in 1998 as its web site for the retailing of shoes, footwear, and related products. The web pages identify Respondent as <Brown-Shoes.com>. The top of the order form page states "Welcome to Brown-Shoes secure web server." The email link allows one to email to firstname.lastname@example.org", and the copyright link allows one to email to "email@example.com." Hence, Respondent is illegally holding itself out as Brown Shoes to appropriate Complainantís customers and goodwill, and is also thereby threatening Complainantís reputation.
5.7 Respondent registered the complained-of web site in 1998. Respondentís web site address, <www.brown-shoes.com>, is nearly identical to and confusingly similar to Complainantís "Brown Shoe" mark, corporate and trade names, and web site, <www.brownshoe.com>.
5.8 Yet, to the best of Complainantís knowledge, the terms "brown" and "brown-shoes" have no association or correlation to any other name or identity used by Respondent. Indeed, the names under which Respondent otherwise does business have no relation whatsoever Ė phonetically, visually, or contextually Ė to "Brown Shoes."
5.9 At some point subsequent to Respondentís registration of the complained-of web site, Respondent began the on-line retailing of shoes, footwear, and related items. Respondent has held itself out as Complainant. Respondent has no right to hold itself out as Complainant, a well-established and well-known company. Respondent cannot create rights in a mark that has been previously used by Complainant for the exact same goods and services. Respondentís activities are such that the respondent has intentionally attempted to attract for financial gain, internet users to Respondentís web site by creating a likelihood of confusion, mistake or deception, with Complainantís uses of "Brown Shoe" as to the source, sponsorship and/or affiliation of the goods and services promoted on Respondentís web site.
5.10 Complainant is not the source of Respondentís goods or services marketed and sold through the subject web site, and Complainant does not sponsor Respondent or have any affiliation with Respondent. Accordingly, Respondentís activities also create a likelihood of confusion, mistake or deception of the endorsement of Respondentís web site, products, and services by the Complainant.
5.11 Furthermore, Respondentís use of the subject domain name disrupts the business of Complainant, and creates associations Complainant does not desire. Respondent has no legitimate rights in the name "Brown Shoes" and cannot make a bona fide offering under the complained-of name of goods and services related to shoes, footwear, related items, and services.
5.12 Respondent registered the subject domain name <www.brown-shoes.com> in bad faith. The Policy states that the registrant of a domain name has acted in bad faith in registering the domain name when "by using the domain name, [the registrant has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [registrantís] web site or location or of a product or service on [registrantís] web site or location." (Policy, Sec. 4.b.(iv)).
5.13 The WIPO Arbitration and Mediation Centerís Administrative Panel (the "Panel") has regularly found bad faith when the registrant has registered a domain name that is confusingly similar to a well-known or famous senior mark and the domain name is used for a closely related business enterprise. See, e.g., Christieís Inc. v. Tiffanyís Jewelry Auction, Inc., Case No. D2001-0075 (WIPO 2001)("christiesacution.com" registered in bad faith for web auction business unrelated to Christieís, Inc.); Houghton Mifflin Co. v. The Weathermen, Inc., Case No. D2001-0211 (WIPO 2001)("curiousgeorge.net" registered in bad faith for web sales of "Curious George" items only tangentially associated with claimant); Playboy Enterprises Intíl Inc. v. SAND WebNames Ė For Sale, Case No. D2001-0094 (WIPO 2001)("plaboy.com" registered in bad faith for links to pornography sites unrelated to Playboy Enterprises); Nike, Inc. v. Crystal Intíl, Case No. D2001-0102 (WIPO 2001)("nikewomen.com", "nikeshop.net", "nikeshop.org", "nike-shop.com", "nike-shop.net" and "inike.net" were registered in bad faith). (Copies of these decisions and all other decisions listed in this Complaint are attached hereto as Annex VIII, and incorporated by reference herein).
5.14 The National Arbitration Forum has likewise reached similar conclusions. See, e.g., General Media Communications Inc. v. JMR Creations, Dispute No. FA0004000094387 (NAF 2000)("penthouse.net" registered in bad faith for web-based pornographic business unrelated to "Penthouse" trademarked business); Fiber-Shield Indus., Inc. v. Fiber Shield LTD, File No. FA0001000092054 (NAF 2000)("fiber-shield.com" registered in bad faith when registrant was aware of complainantís nearly identical trademarks).
5.15 The unlawful damage to another partyís business is manifest when a cybersquatter registers and uses a domain name identical or virtually identical to another partyís business to further a similar business. FaceTime Communications, Inc. v. Live Person, Inc., File No. FA0001000092048 (NAF 2000)("facetime.com" registered in bad faith where domain name was identical to complainantís senior mark and registrant and complainant were in similar businesses). The FaceTime Panel specifically noted that, "Use of marks, which are so similar for the same services confuse the public and those desiring to obtain a particular entityís services and products." (Emphasis added). The Panel continued, "This gives an unfair competitive advantage to [the cybersquatter] through its ownership of a domain name, which is likely to result in misdirected inquiries and messagesÖ [and that] [t]his is one method available [to the cybersquatter] to interfere with a competitorís business relations."
5.16 In particular, Christieís, is very instructive to the present matter. The complainant in Christieís was Christieís Inc., the long-established and well-known auction house. Christieís Inc. was the owner of several federally registered trademarks, including the mark "CHRISTIEíS", bearing its name, for auctioning of fine and decorative art, antiques, jewelry and other valuable objects, and "CHRISTIEíS APPRAISALS" for appraising art and jewelry. In December, 1998, the registrant registered "christiesauction.com" for a web-based jewelry auction business unrelated to Christieís Inc. Based on these facts, the panel justifiably reasoned that "although not specifically mentioned in the non-exhaustive Policy bad faith provisions, the very fact of registering such a famous mark to use in the same business as Complainant reeks of bad faith." (emphasis added). The Panel thereafter transferred the domain name to the Complainant, Christieís Inc.
5.17 Like Christieís Inc., Complainant is a long-established and well-known company. Like Christieís Inc., Complainant owns numerous trade names and trademarks, including the service mark and corporate and trade names that incorporate the name "Brown Shoe." The "Brown Shoe" service mark and the corporate and trade names are all associated with Complainantís business and trade in the footwear industry. Just as the registrant did in Christieís Inc., Respondent here registered a domain name virtually identical to Complainantís corporate and trade names and its service mark; in this case, "www.brown-shoes.com." Just as the registrant used "www.christiesacution.com" in association with the same business as Christieís Inc. (i.e. auctioning jewelry), Respondent here uses "www.brown-shoes.com" in association with the very same business as Complainant, namely the sale of shoes and footwear. Hence, just as in Christieís Inc., the very fact of registering such a famous mark (i.e. "Brown Shoes") to use in the same business as Complainant exhibits bad faith.
5.18 Of course, the finding of Respondentís bad faith is also supported by the decisions in Houghton Mifflin Co. v. The Weathermen, Inc., Playboy Enterprises Intíl Inc. v. SAND WebNames Ė For Sale, Nike, Inc. v. Crystal Intíl, General Media Communications Inc. v. JMR Creations, Fiber-Shield Indus., Inc. v. Fiber Shield LTD, and FaceTime Communications, Inc. v. Live Person, Inc., all referenced above.
5.19 According to its own claim, Respondent has been in the business of retail sales of shoes and footwear for at least eight (8) years, and therefor is not only familiar with the shoe and footwear industry, but has been well-aware of Complainantís extensive use of its "Brown Shoe" mark and corporate and trade names, and the reputation and goodwill established therein. Respondent even applied to have an open account with Complainant. Thereafter, in a telephone conversation on November 3, 2000, Respondentís representative, Mr. John Sole suggested Complainant partner with Respondentís business and indicated Respondentís desire to retail Complainantís products.
5.20 Respondent has nevertheless held itself out as Complainant for the on-line retailing of shoes by using a domain name confusingly similar to Complainantís senior "Brown Shoe" mark, trade names, and domain name, and is thereby illegally trading on Complainantís very corporate identity. Respondent is brashly and illegally trading on the reputation and goodwill of Complainant.
5.21 Furthermore, efforts to reach Respondent have been all but ignored. Initially, Complainant, by and through its attorneys, directed a letter via certified mail to Respondents. Acceptance of the letter was refused, and it was returned to Complainantís attorneys. A second, substantially identical letter, was sent via overnight delivery to Respondent. Respondent again, did not and has not responded. Finally, an electronic mail message was sent to J.P. Sole at firstname.lastname@example.org. It was only after this e-mail was sent that Mr. Sole called Complainantís counsel in response. Even then Respondent refused to transfer the domain name to Complainant; instead demanding that Complainant "make an offer" on the domain name without regard to Respondentís actual registration and maintenance costs.
5.22 Respondent is aware of Complainant Brown Shoe Company, Inc. and Complainantís long-established business. Respondent is also fully-aware of Complainantís well-established reputation and goodwill in its "Brown Shoe" mark and trade names used throughout the United States in association with the shoe and footwear industry. Respondent not only attempted to be a direct customer of Complainant, but even suggested a business relationship with Complainant when contacted regarding this dispute. Respondent nevertheless has registered and continues to use "www.brown-shoes.com", a confusingly similar domain name to Complainantís "Brown Shoe" mark, corporate and trade names, and domain name. Respondent has held itself out as Complainant for the on-line retailing of shoes, footwear, and related items. Respondent did not respond to Complainantís letters. Respondent simply has no legitimate rights in the name, and is not using the domain name in any fair use or non-commercial manner. In short, Respondent in bad faith has sought to and has succeeded in appropriating Complainantís goodwill through the divergence of on-line customers through the use of a domain name confusingly similar to Complainantís domain name, service mark and corporate and trade names.
5.23 [In its supplemental filing of July 19, 2001, Complainant states that] In its Response, Respondent claims, without any supporting evidence, that "Brown Shoes" is "an industry term for casual or comfort shoes." Respondent bases this "fact" upon a purported statement by some purported executive of Nike shoes. Respondent then argues that this revelation, and not the desire to appropriate Complainantís historic name and associated goodwill, led to its registration of the domain name <brown-shoes.com>.
5.24 Yet, Respondent admits that in 1998 it was preparing a website to market and sell shoes over the Internet. (Id. at p.1). Respondent further admits that it was preparing the website for "Ben" Kashfian, the very same Mr. Kashfian who applied for an account with Complainant to sell Complainantís shoes, and who, the evidence indicates, ran one or more retails shoe stores for at least six (6) years. (See id.; see also Annex III to Complaint). Respondent admits this is the very same Mr. Kashfian whose company address is, to this date, listed as Respondentís "brown-shoes.com" domain name registration address.
5.25 Respondent does not deny that Mr. Kashfian was fully aware of Complainant, of Complainantís products, its services, and Complainantís registered BROWN SHOE CO. service mark, at the time Respondent registered <brown-shoes.com>. Further, Respondent fails to produce any evidence whatsoever that Mr. Kashfian was not involved in the choice of his own domain name, or even that Respondent purchased Mr. Kashfianís Internet business as it claims. In fact, Respondent has offered no proof whatsoever that Mr. Kashfian is not to this day involved with Respondent and the <brown-shoes.com> website. Instead, Respondent attempts to sidestep its involvement with Mr. Kashfian by claiming, without any proof, that it conveniently severed ties with Mr. Kashfian, and implying that Mr. Kashfian, Respondentís client, had no say in the selection of the <brown-shoes.com> domain name for his own website.
5.26 Respondent asks the Panel to believe that Respondent, a self-proclaimed professional web developer, selected and registered a domain name for one of its customers for a website comprising "more than 1000 files", without even consulting the customer whatsoever, based solely on some purported vacuous reference to shoes on a television news show. In addition, Respondent asks this Panel to believe that Respondent, a web developer with absolutely no shoe industry experience whatsoever, bought out one of its customers to jump into the middle of the Internet shoe retailing business.
5.27 Respondent cannot escape the fact that it does offer the same goods and services on its website as Complainant. Respondent claims that its "goods and services" are somehow different from Complainantís because it sells different brands of shoes. However, because it does not actually dispute that its "services" are the same, Respondent actually only claims that the "goods" are different. Yet, it is well understood that different brands of the same products do not constitute different goods, but instead a brand is actually "[a] word, mark, symbol, design, term, or a combination of these, both visual and oral, used for the purpose of identification of some product or services." (Blackís Law Dictionary 130 (6th ed. 1991)). Accordingly, it is irrelevant that Respondent may offer different brands of shoes than Complainant. In the realm of trademarks and service marks, Respondent indisputably offers the very same goods (i.e. shoes) and services (i.e. sales of shoes) as Complainant.
5.28 Respondentís claim that it does not desire to sell Complainantís products only diverts attention from Respondentís true motive of hijacking Complainantís customers through the use of a deceptively confusing website. Respondent, through inflammatory and unsubstantiated attacks, attempts to demean Complainant and Complainantís goods by recklessly labeling Complainantís goods as "throw away products," while comparing Complainant to Kmart and Respondent to Tiffany. (Response, p.3). Respondent then uses these false representations as a foundation for its argument that it has no desire to sell Complainantís goods and therefore has no bad intent regarding the <brown-shoes.com> domain name.
5.29 Respondentís unmonitored, uncertified and self-serving "survey" is untrustworthy and fraught with defects and bias that make it incompetent as evidence and should be given little weight. Respondent claims to have conducted a 7-hour "survey" on June 27, 2001, in Buffalo, NY, that, on its face, indicates only slight name recognition for Brown Shoe Company. (Response, p.5). However, Respondentís amateur "survey" is patently self-serving, exceedingly limited in scope and is fraught with numerous defects, including the following:
(i) Total lack of certification: There is absolutely no certification for any aspect of the "survey"; not the questions, the answers, or even the survey inquisitors. Accordingly, there is absolutely no trustworthiness in any of the results.
(ii) Numerical insignificant sample size: The "survey" comprises a total of only 100 interviews; this is statistically non-existent in a population of well over 250,000,000 people in the United States alone.
(iii) Geographically insignificant sample: The "survey" was purportedly taken in one shopping mall in New York, thereby severely skewing all results as to the remainder of the United States.
(iv) No survey of the wholesale market: The "survey" has no relations whatsoever to the wholesale shoe market in which Complainant maintains significant standing and in which Respondent procures its goods.
5.30 The failure of Respondentís "survey" to pass even the most rudimentary requirements for reliability raises serious and substantial doubt as to whether the "survey" is tainted or, perhaps, an outright sham. This alone should preclude any reliance on the results of the "survey." Furthermore, even if taken at face value, which it should not be, the "survey" has such a limited scope and sample size that any conclusions that could be drawn from the survey would have no statistical significance, and should be disregarded in this dispute.
5.31 Respondent fails to cite any references that contradict the authorities cited in the Complaint that hold Respondentís bad faith is established because Respondent registered the domain name <brown-shoes.com> which is confusingly similar to Complainantís well-known or famous senior mark "Brown Shoe" and the Respondent uses the domain name for a closely related business enterprise (selling shoes over the Internet).
5.32 The following arguments are set forth in the Response.
5.33 In 1991 Guide Publications was established as a d.b.a. for publishing Southern California visitor guides. The primary business was providing strategic and tactical marketing services to Respondentís client base. Services included production and planning of advertising in all media. They also developed substantial expertise in digital publishing, which included creating the first beta test to successfully produce a four color publication from the Windows platform in 1992. At the same time, they entered into a relationship with an advertising client operating a computer store. This was for the purpose of marketing computers and digital publishing systems. As a natural evolution of these computer and advertising ventures, in 1997 they established an I.S.P. and expanded their services to include internet site design and hosting. They then offered these services to their 300 marketing and advertising clients.
5.34 Included in this group was "Ben" Kashfian, a one time advertiser in their Summer 1993 Malibu Guide. In December 1997 they did enter into a contractual agreement to produce site(s) retailing the clientís shoe brands. They accepted a small deposit and began creating the more than 1,000 files constituting the site(s). The principal brand would be Birkenstock. Their strategy then was to create a second, generically named site to promote other less well known brands.
5.35 It has long been their practice to listen to the cable business channel CNBC while working on the computer. During the week of March 2, 1998, or just prior, there was an interview with the then C.E.O. of Nike Corporation in which he stated, (paraphrasing) "we anticipate all future earnings growth to be in Brown Shoes." When asked, "What he meant by Brown Shoes ?" He replied, "Itís an industry term for casual or comfort shoes." Having no shoe industry experience but, assuming the C.E.O. of Nike did, it was shortly thereafter that they registered the domain name:<www.Brown-Shoes.com>. It seemed the ideal name and image for the casual and comfort shoes offered by their client. The domain name: <www.brownshoes.com> less the hyphen was, as they recall, also a retail shoe site. They believe the disappearance of this site may have some bearing on the current matter. They have requested a history of this domain from Network Solutions on June 26, 2001, without reply at the time of writing.
5.36 Having registered the domains: <www.Brown-Shoes.com> and <www.BirkenstockOnline.com> they completed the site(s) and posted them to the Web by Mid March 1998. Within hours orders were being received. Upon completion, the balance due from Mr. Kashfian became payable and they did request these funds. When presented with this request, to their surprise, Mr. Kashfian informed them he was no longer interested in internet sales and he would not honor their contract or fill the orders. Thinking of their considerable efforts in creating these, what were then world case sites, based on long term and recurring returns, was far beyond any contractual amount they might recover, they offered to buy Mr. Kashfianís interest in the sites. An agreement was signed on March 31, 1998 assigning all rights to the above mentioned sites to Joseph Sole. Within days they had an agreement with another Birkenstock vender and have continued to grow their business and customer base since.
5.37 They had made a request to CNBC on June 28, 2001, for the Nike C.E.O. interview either in video or transcript form. While writing the request the cable channel was again on in the background. At 12:18 PM Thursday June 28, 2001, correspondent Garrett Glaser was reporting on Nikeís earnings. In this report he specifically stated, "Nike achieved earnings estimates largely due to their continued success in the Brown Shoes category." They of course also requested this segment but, as of this writing, have yet to receive a reply.
5.38 The complaint in section [12Ba] claims their domain uses the "exact same" words "brown" and "shoe." Clearly they do not. Throughout their site they use Brown-Shoes as a single phrase. Again, this phase means casual or comfort shoes. Further, the word "shoe" is materially different in form and concept from the word "shoes." In sec. [12Bb] the suggestion is they offer "the very same goods and services." They do not. The brands they offer are very clearly stated repeatedly throughout their site, none of which include any of the brands listed under the complaint.
5.39 Of course, the phrase Brown-Shoes.com is seen often in their site since it is the name under which they have done business on the internet for nearly four years. The Complainant can make claims of being the "senior user" of the words brown shoe but, doing so, no matter how often does not convey any rights to the words brown shoes or the phase Brown-Shoes. They do in fact hold themselves to be Brown-Shoes. Complaintís contention they do so to appropriate customers or threaten Complainantís reputation, would be laughable in any other forum. While they offer the finest brands on the planet, Complainant makes, for lack of a better term, throw away products. This, as Complainantís products are molded plastic and when showing wear cannot be repaired. The price range of Complainantís products ranges from $10. to $45. The brands sold in Respondentís Brown-Shoes.com site are clearly listed. All constructed of the highest quality materials and designed to last the customer a very long time. Respondentís prices range from $60. to over $300. Price, in this point of appropriating customers, is an issue. While Respondent has been very successful marketing via the Internet, the Complainant has little hope of doing so. Given the costs associated with doing business, Respondent has found it is not possible to recover their costs on products selling for less than $60.
5.40 A key issue missed by the Complaint is customer satisfaction. The vast majority of Respondentís online customers, likely over 90%, have owned the product they are ordering before. They have held it in their hand, walked mile after mile in it and they know their size. They are not confused, they are certain. Both Kmart and Tiffany are in the business of selling jewelry. One could imagine Kmart wanting to use Tiffany boxes. However, who could suggest the opposite with a straight face. This is the case here. Respondent does not hold itself to be Complainant, by any representation. Respondent does not and would never do anything to encourage any misrepresentation. Respondent had no knowledge of "The Brown Shoe Company" prior to receipt of an e-mail from a Mr. Brian S. Clise at email@example.com which was sent on the evening of October 30, 2000. Mr. Clise was in the employ of Complainantís authorized representatives.
5.41 The "Clise" message requested was responded to by November 3, 2000. Respondent did place a call to Complainantís representative on November 2, 2000, in which they spoke with Mr. Clise from 10:11AM to 10:25AM. In this conversation, Complainantís representative was assured: 1.) To date, there has not been any instance of confusion and there would never be any misrepresentations. 2.) If it was "their" intention to find a resolution to "their" concerns, Respondent would be willing to consider any accommodation. Towards this end a disclaimer was offered, and additionally many suggestions of alternate possibilities including; a link or even placing Complainantís products in the site if Complainant could provide someone willing to fill the orders. These suggestions were offered only to demonstrate Respondentís sincerity.
5.42 Complainant has been aware of Respondentís contact information and business, as provided by the Respondent, for over eight (8) months. Yet, Complainant uses information it knows to be false, to fabricate some connection between Respondent and Mr. Kashfianís background and actions. Originally, Mr. Kashfian was to be responsible for all fees associated with the site. As such, his address was used at registration. Respondent has made repeated and numerous efforts to update contact information with Network Solutions since severing all contact with Mr. Kashfian years ago. Literally from the time the site was posted to the net. Knowing this, Complainant persists in suggesting an order from Mr. Kashfian years later has some value as evidence. Yet, it only serves to deceive and demonstrate the bad faith of the Complainant.
5.43 Complainantís counsel is incorrect by stating, Mr. Sole demanded "that Complainant make an offer on the domain name." Complainantís counsel inquired if Respondent would sell the domain name. Respondent replied, it was not the preferred or intended solution, and as no offer has been made, there has been no reason to consider an option which does not exist. In fact, all offers by Respondent to create a resolution were never explored. No effort has been made by Complainant to reach a mutually satisfactory outcome. Respondent contends this is based on Complainantís knowledge that there is no actual basis for concern and no harm exists. This clearly demonstrates Complainantís bad faith. Respondent further contends Complainantís actions or lack thereof, reveals the true motive of Reverse Domain Name Hijacking. For whatever undisclosed reasons, Complainant seeks transfer of the domain in question. Complainant chooses this forum as such an outcome would not be available to Complainant in a court of law. Respondent asserts, were a court to fully decide in Complainantís favor, the most drastic remedy the court could or would impose is restricting Respondent from selling shoes. For this is the basis of Complainantís mark. Yet, this would not accomplish the Complainantís real goal of reverse domain name hijacking.
5.44 Beyond failing to produce this bad faith result, in a court of law Complainant would be held to a much high standard of proof and fact. Primarily, precedent would require Complainant prove this mark as famous and distinctive among consumers. A test Complainant would surely fail. Beyond this, to achieve the remedies requested Complainant would have to acknowledge the thousands of dollars Respondent has invested in good faith, and the goodwill Respondent has created with tens of thousands of customers over nearly four (4) years of doing business under this name completely independently of Complainant. While this specific language is not stated in "the policy" or "the rules" Respondent contents the purpose of the rules and policy are to produce resolutions consistent with the law and the rights of the parties there under. As such, Respondent does pray all such considerations will weigh heavy in the Panelís determinations. Complainant has cited several WIPO cases, each addressing misrepresentations in domain names. The cases on which Complainant relies have one key commonality. They are known. On June 27, 2001, between the hours of 1PM and 8PM, Respondent did conduct a public survey at Northtown Plaza, Metro Buffalo, New York. One hundred people, (64 Women and 36 Men) were asked if they had "heard of" the following names; the percentage responding YES are noted: The Brown Shoe Company 2%, Christies Auction House 55%, Tiffanyís Jewelry 95%, Curious George 79%, Playboy 99%, Penthouse 100%, Nike 99%.
5.45 The policy requires in establishing bad faith, an "intentional attempt to attract, for commercial gain" or by "confusion" internet users. Logic dictates this is simply not possible with an unknown or little known name. Though two percent replied yes to having heard of the Brown Shoe Company, after completing the survey, these two men were asked how they heard of it. The first, "thought it was a shoe store in Toronto, Ontario" and second stated "he did not know but, had heard of it." To add emphasis, the Northtown Plaza site was selected as it contains the Complainantís largest of several Famous Footwear stores in the Western New York market. Not one person surveyed could name a brand the Brown Shoe Company sells. If it were Respondentís intention to benefit by creating bad faith with the Complainant, Dr. Schollís was known by 98% and Naturalizer was known by 63%. Clearly there was no such intention on the part of the Respondent.
5.46 Respondent does hold itself to be marketing and internet professionals. Online shoe sites managed by the Respondent are entirely dependant on search engine placement. Using the "Web Ferret" utility, likely the most comprehensive, the words "brown" and "shoe" where searched. In the results Respondentís site was not found. Upon searching the words "brown" and "shoes" Respondentís site is number one worldwide and Complainant is number two. While the Complainant may claim to be confused, the search engines are not. Respondent assures the Panel, if we intended to create confusion, Respondentís site would be number one in both searches. Of the shoe sites managed by the Respondent, about 95% of sales are in one brand, Birkenstock. In the survey Respondent undertook Birkenstock was known by 32%. The Panel must question why a marketing professional would promote a brand known by 32% of people through creating confusion with a name known by 2%. Respondentís site www.BirkenstockOnline.com has consistently been ranked highly in search engines. The keyword "Birkenstock" is extremely competitive. Yet, Respondent has over the years had this site ranked number one in AOL search, Excite, Webcrawler, Metacrawler, Direct Hit, Lycos, HotBot and other important search engines. Respondent estimates over 80% of all sales are a result of searches on AOL. Yet, were the Panel to search AOL for www.brown-shoes.com the Panel will find the site is nowhere listed by any keywords. Respondent cites this fact as the clearest evidence there is no "bad faith" under ICANN policy.
5.47 Again, the Respondentís intent was to use <www.brown-shoes.com> as a link between our "Brand Name" sites to expose customers to other less well known casual and comfort shoes. This was done solely based on the phrase "Brown Shoes" being a representative term for casual and/or comfort shoes. Respondent does contend this to be a "legitimate" use of the domain name under the ICANN policy. Beyond this, in trademark law, "general terms" like "blue" and "sky" are offered the most narrow or no protection at all. Respondent contends the word "shoes" is completely distinct from the word "shoe." For all these reasons and by the protections provided under ICANN policy [4c(i)] and [4c(ii)] Respondent trusts the Panel will reaffirm and protect Respondentís "rights" and "legitimate interests."
5.48 Respondent does hereby move to block Complainantís supplemental submission from any consideration. Respondent contends:
1.) There is no "new" information presented in the response which was unavailable to Complainant prior to filing the complaint.
2.) Failure on the part of Complainant to use accurate information and to undertake proper due diligence prior to filing their complaint is their responsibility, and does not create any "deficiencies" as required by ICANN rules. Complainant's own neglect does not create an allowable reason for a second bite of the apple, to introduce new evidence or for rebuttal.
3.) While Complainant had nearly eight (8) months from November 2, 2000, the date of the "Clise" conversation until filing was submitted June 11, 2001. Respondent insists this was more than adequate time for Complainant to prepare it's case. Further, Complainant has had the efforts of Mr. Clise, Mr. Churovich, Mr. Boeschenstein, attorneys all, and, the help of Nora Schomogy and presumably other Litigation Paralegals. While, Respondent stands alone, pro se, in this matter and was in fact allowed only thirteen actual days to make it's case. From June 26, to July 9, 2001.
4.) Allowing the Panel to decide whether to consider the new information is a de-facto entry of this information into the proceedings. As, a bell can not be unrung.
5.) As such, consideration of any supplemental information and the admissibility and value in evidence thereof , not protected under deficiencies, should be considered only by a second and separate Panel created at Complainant's expense.
6.) Complainant seeks only an opportunity for rebuttal, which under WIPO rules and policy, is not allowed.
7.) In any case, Respondent demands, twenty days to review, make motions and rebut, from the date of "hard copy delivery" any supplemental offerings by the Complainant. And, this time must be allowed before such information is forwarded.
8.) For these reasons, any supplemental offerings shall not be forwarded to the Panel pending resolutions of issues herein.
6. Discussion and Findings
6.1 The Panel has reviewed all of the partiesí supplemental submissions, sometimes sent directly to the Panel, although it is not required to do so under the Policy and the Rules. The Panelís unanimous decision below was based on the Complaint and Response, with these supplemental submissions from both parties not changing the outcome and therefore being unnecessary.
6.2 Complainant must prove each of the following three elements set forth in the Uniform Domain Name Dispute Resolution Policy Paragraph 4(a), namely (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. The Panel will now look at each one of the elements to determine if Complainant has met its burden of proof.
6.3 The Panel has reviewed the evidence submitted by the Complainant concerning ownership of the trademark BROWN SHOE and is satisfied that the Complainant has proven ownership of a common law service mark in such expression and registered rights in BROWN SHOE CO. Furthermore, the Panel finds that the domain name <brown-shoes.com> is identical or confusingly similar to the service mark(s) in which the Complainant has rights.
6.4 The Panel has carefully reviewed the allegations of the Respondent that it has rights or a legitimate interest in respect of the domain name <brown-shoes.com>. Respondent contends that the expression "brown shoes" is generic for a category of casual shoes and thus he may use such term as a fair use pursuant to Policy 4(c)(iii). The Panel hereby finds that the record does not have sufficient evidence to prove this fair use. Therefore, the Panel hereby finds that the record has not shown any legitimate rights in the domain name.
6.5 Finally, the Panel needs to examine the issue of bad faith. The Complainant has made a lengthy argument with supporting documentation that the Respondent has violated the bad faith provisions of the Policy at 4(b)(iv):
"[b]y 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 a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
The Respondent contends the disputed domain name <brown-shoes.com> is generic, therefore the Respondent is free to use it in its generic sense and that this is what the Respondent has done at its website. However, the Panel has already rejected the Respondent's argument that brown shoes is generic for casual shoes because the Respondent did not furnish convincing evidence to this effect. Furthermore, from the photographic samples of the Respondent's websites (Complaint Annex 2), it is clear to the Panel that the Respondent believes the term "Brown Shoes" has service mark goodwill and that the Respondent intends to exploit this goodwill to attract potential customers to buy shoes at its website. When the Respondent's website invites the client to "Purchase here online from Brown-Shoes.Com", uses "Brown-shoes.com" with a design of shoes as a service mark, or uses the term "Brown-Shoes Catalogs", the Respondent is using Brown Shoes as a service mark to divert web traffic.
The Respondent's bad faith is all the more notable in that Respondent is in the same business as a part of the Complainant's much more extensive shoe business. The close similarity of business endeavor increases the likelihood that the Respondent will divert the Complainant's clients (See Christie's Inc. v. Tiffany's Jewelry Auction, Inc., WIPO/ICANN Case No. D2001-0075 March 6, 2001, and FaceTime Communications, Inc. v. Live Person, Inc., WIPO/NAF Case No. FA0001000092048 February 18, 2000 )
Accordingly, the Panel finds that Complainant has met its burden of proof as to Policy 4(a)(iii) in that the domain name was registered and is being used in bad faith.
7.1 The Panel decides that the domain name <brown-shoes.com> is identical or confusingly similar to the service mark of Complainant, that Respondent has no rights or legitimate interests in such domain name, and that the domain name in issue has been registered and is being used in bad faith.
7.2 The Panel hereby orders that the registration of the domain name <brown-shoes.com> be transferred to Complainant.
Clark W. Lackert
Dennis A. Foster
Dated: September 4, 2001