WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Cream Holdings Limited v. National Internet Source, Inc.

Case No. D2001-0964

 

1. The Parties

The Complainant is Cream Holdings Limited of 40-42 Slater Street, Liverpool L1 4BX, United Kingdom, represented by Mr. Roger Grimshaw of Messrs. Mewburn Ellis of Manchester.

The Respondent is National Internet Source, Inc., of 12 Maple Street, Ramsey, New Jersey 07466, United States of America, represented by Mr. Jason M. Drangel of Messrs. Bazerman & Drangel, P.C. of New York.

 

2. The Domain Name and Registrar

This dispute concerns the domain name <cream.com>.

The Registrar is Network Solutions Inc., of Herndon, Virginia, United States of America.

 

3. Procedural History

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

The Complaint was received by the Center by email on July 26, 2001, and in hardcopy on July 27, 2001. The Complaint was acknowledged on July 31, 2001, and that day registration details were sought from the Registrar. On August 1, 2001, the Registrar confirmed that the disputed domain name is registered in the name of the Respondent, and that its Version 5 Service Agreement (which incorporates the Policy) is in effect.

On August 2, 2001, the Center satisfied itself that the Complainant had complied with all formal requirements, including payment of the prescribed fee. That day the Center formally dispatched a copy of the Complaint to the Respondent by post/courier, facsimile and email (the latter two without attachments) with a letter notifying the Respondent of the commencement of this administrative proceeding. The Center sent copies to the Complainant, the Registrar and ICANN.

The last day specified by the Center for a Response was August 22, 2001. That day a Response was filed by email and by facsimile. The Center acknowledged its receipt on August 23, 2001.

On September 17, 2001, the Center notified the parties of the appointment of Alan L. Limbury to serve as panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On that day, the Center transmitted the case file to the Panel and notified the parties of the projected decision date of October 1, 2001.

The language of the proceeding was English.

The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with paragraph 2(a) of the Rules; the Response was filed within the time specified by the Rules and the panel was properly constituted.

 

4. Factual Background (uncontested facts)

The Complainant has been trading under the name CREAM in the UK since 1992. Its principal place of business is Liverpool, United Kingdom. It provides entertainment services, including the operation of night-clubs, the arrangement of music festivals and events and the production of records, CDs, tapes and associated merchandise products for all the aforementioned, including a range of clothing. It regularly holds events in the United States, South Africa and Australia.

On April 7, 1995, James Barton and Darren Hughes, also represented by Messrs. Mewburn Ellis, applied to register in the United Kingdom a "word and device" mark comprising a device resembling a tree-bladed shipís propellor above the stylized word "cream" ("the mark").

The mark was registered in the names of those gentlemen as proprietors on October 25, 1996, under registration no. 2016985B in relation to the following classes of goods and services:-

(i) Class 9 goods including recording discs, compact discs, records, tapes, film and computer software

(ii) Class 18 goods including leather and imitation leather goods, bags and umbrellas

(iii) Clss 25 goods including clothing, footwear and headgear.

(iv) Class 32 goods including beers and non-alcoholic beverages

(v) Class 41 services including night-club services, production of radio and television programmes, arranging and conducting of conferences and distribution of films and video tapes.

On January 24, 2001, the Complainant became by assignment the registered proprietor in the United Kingdom of the mark.

The Complainant received a number of awards for its events in the years 2000 and 2001. It has sold over 2,000,000 record albums in the UK. Sometime in 1995 (it is not clear whether this was before or after the registration of the disputed domain name) it released a record album called "Cream Live". Further albums including in their title the word "cream" were released in 1996 and subsequently.

The Complainant has sold clothing and other merchandise under the mark for many years and has appeared on television programmes having large audiences. Its website <www.cream.co.uk> has been operating for a number of years and currently receives around half a million hits per month. Last financial year the Complainant spent about £400,000 on advertising and promoting the name CREAM. Turnover in the year 2000 was £3,000,000.

Since it was registered in the United Kingdom the mark has been registered in several other countries, including the USA, where the Respondent is located, all those applications and registrations being made after December 14, 1995, the date when the Respondent registered the disputed domain name.

The Respondent was founded in 1994 by four partners as one of the first full service Internet service providers in New Jersey, U.S.A. It has since built a regional network servicing customers with a range of Internet services including dialup access, ISDN and T1, web hosting and large scale web development.

The partners also developed new ideas for on-line businesses, some successful resulting in their being sold, others currently owned and run by the partners through companies set up to run the businesses, and still others being in development. In furtherance of these activities, the partners registered, through the Respondent, a number of domain names they felt would be useful for new ventures, including, during the period late 1995 to early 1996:

<february.com>
<fall.com>
<cloth.com>
<cream.com (the disputed domain name)>
<suntanoil.com>
<july.com>
<say.com>
<haze.com>
<busy.com>
<hyena.com>
<junkfood.com>

The Respondent has not made any use of many of its domain names since their registration more than 5 years ago, including the disputed domain name.

In correspondence between the parties, initiated in late February 2000 by the Complainant with an offer of $US 500 for the disputed domain name (to which the Respondent made no reply) the Complainant asserted registered trademark rights in the mark CREAM; the Respondent questioned whether the Complainant had registered trademark rights in the actual word CREAM, repeatedly asked for copies of the registration documents so that its legal department could consider it and said it had received "a very high offer" for the disputed domain name; the Complainant did not supply the documents but offered to purchase the disputed domain name registration and increased its offer to $US 2,000 and then to $US 4,000. The Respondent in October 2000 continued to question whether the Complainant owns the trademark on "a common word like CREAM".

There was a lull in the correspondence, during which time the mark was assigned by James Barton and Darren Hughes to the Complainant. On March 9, 2001, the Complainantís solicitors provided to the Respondent a copy of the trade mark certificate with a letter asserting that the Complainantís registered trademark number 2016985 (the mark) was "in respect of the word CREAM" and offering to waive "any rights which [the Complainant] may have" against the Respondent in exchange for transfer of the disputed domain name. The Complainant offered to pay the Respondentís expenses in relation to the costs of registration.

After a further exchange, in which the Respondent asserted that Ďcreamí is a common word similar to Ďcarí or Ďhouseí, "which can only be trademarked along with a combination of other words since they are too generic", the Respondentís attorney declined the Complainantís offer, saying the amount was not a "fair reflection of its Ďgenericí value". The Complainant increased its offer to $US 12,000. The Respondent declined, its attorney estimating the current value to exceed $US 40,000. The Complainant increased its offer to $US 30,000. The Respondent declined. During a telephone conversation, the value of the domain name was said on behalf of the Respondent to be $US 50,000-75,000. In May 2001, the Complainant reasserted its claim to rights in the word CREAM and offered $US 12,000 for the disputed domain name. The Respondent declined. These proceedings were initiated in July 2001.

 

5. Partiesí Contentions

A. Complainant

Since 1992, the Complainant has developed an international reputation in relation to its activities.

Identity/confusing similarity

The disputed domain name is identical/ similar to the Complainant's Mark, CREAM, under which the Complainant offers its goods and services and in which it has a substantial reputation.

The word CREAM is wholly acceptable trademark matter. Strong evidence of this is apparent in the acceptance and registration of the mark CREAM by the UK Registry.

Final registrations of the same mark have also been obtained in Argentina, Eire, and Australia. A search reveals that 41 other CREAM trademarks have obtained registration on the UK, Community Trade Mark, International, French, German, Italian, Austrian, Swiss, Benelux, Spanish, US Federal, US State, Canadian and Swedish Registers. The mark CREAM is clearly capable of registration and is not unregistrable "generic" matter.

Legitimacy

The Respondent has no legitimate rights or interests in the disputed domain name and the Respondent was not authorised by the Complainant to use and register <cream.com> as a domain name.

The Respondent appears to be engaged in registering domain names with a view to selling them for a sum far in excess of out-of-pocket costs directly related to the domain name. This is the conclusion to be drawn from the Respondentís behaviour to date and demonstrates that the Respondent has no legitimate rights or interest in the name, based on the reasons enunciated at the paragraphs which follow.

From an initial offer of $US 500, the estimated value of the domain name rose to a sum in excess ofí $US 40,000 when interest in the name was shown by the Complainant.

The Respondent has registered 22 domain names through Network Solutions. In previous WIPO decisions, the bulk registration of domain names has been regarded as behaviour inconsistent with legitimate rights or interests in the domain names registered. The number of registrations which might be considered Ďbulkí may be as low as three (Bellevue Square Managers, Inc v Web, D2000-0056).

A total of 13 domain names were registered in the period November/December 1995 at the time when the disputed name was registered. A period of well over five years has now elapsed without the establishment of web sites for these domains, which suggests very strongly that the Respondent has no interest in developing them but is rather in the business of selling them to the highest bidder. The Respondent is clearly not offering bona fide goods or services under the disputed domain name in the form of a commercial site.

The Respondent does not appear to be making any use, or demonstrable preparations to use, the domain name in connection with a bona fide offering of services.

The Respondent does not appear to be commonly known by the domain name.

There is no evidence that the Respondent is making a legitimate non-commercial or fair use of the domain name.

Bad faith

The Complainant considers that the registration was obtained in bad faith and is being used in bad faith for the following reasons.

The Respondent has not made any use of any of 22 domain names since registration. In Mondich and American Vintage Wine Biscuits, Inc. v. Brown (WIPO Case D2000-0004), it was established that the respondent had done nothing with the domain name for a period of over two years, and it was

"possible to infer from this failure of use that the domain name was registered without a bona fide intent to make good faith use."

In the instant case, no use has been made of the domain names for a prolonged period, in particular the disputed name (being a period of more than five years). Moreover, in Nabisco Brands Company v. The Patron Group, Inc. (D2000-0032), none of the 40 domain names registered were being used in relation to an active web site, from which fact the Panel was able to infer that

"it was highly unlikely that Patron could legitimately use each of the 40 domain names it assertedly owns in providing goods and services in commerce."

The collection of names without any legitimate interest or intended use of them suggests a pattern of bad faith registrations and indicates that the domain name was registered in bad faith and no good faith use is being made of the name.

The excessive sum demanded for the name is an indication that the domain name was registered in bad faith and the invitation of offers in excess of $US 40,000 constitutes bad faith use of the domain name. The sum demanded is clearly based on the underlying value of the Complainantís trademark.

"This value is grounded in the right of the Complainant to use its mark to identify itself as a source of goods or services. [The] Respondent has made no use of the domain name other than to offer it for sale at a price that is likely to substantially succeed its out-of-pocket costs of registration, and the price that that domain name commands would be largely based on the trade mark of the Complainant" (Educational Testing Service v. TOEFL, D2000-0044).

The dramatic increase in the amount sought is inconsistent with good faith registration or use of the name. Moreover, in Ronson Plc v. Unimetal Sanayi ve Tic.A.S. (D2000-0011), the size of the sum ($US 70,000) demanded for the domain name in response to interest from the holders of trade mark rights in it and the setting of a deadline (the threat to raise the price if the offer was not met) to force through the sale was found to be evidence of registration of the domain name in bad faith.

By registering the disputed domain name, the Respondent has acted in bad faith as it has registered the name primarily for the purpose of disrupting the business of the Complainant (paragraph 4(c)(iii) UDRP). As it is clear that the Respondent is not using the disputed name for any legitimate purpose, and furthermore as the registration of the name prevents the Complainant from using it, it is evident that the Respondent has acted in bad faith.

It appears that the name was registered with a view to reselling it to the Complainant at an extortionate price and the registration and use of the name is bad faith under section 4(b)(i) UDRP.

The Complainant commenced its high-profile activities in 1992, some three years before the registration of the domain name by the Respondent. Mindful of the need to consolidate its trademark rights as incidences of bad faith use of its marks around the world increased with the size of its reputation, the Complainant filed an application to register the Mark, some eight months before the registration of the disputed domain name.

The filing of the Mark gave constructive notice to the Respondent of the Complainantís trademark rights, in the unlikely event that it were not already aware of the Complainantís activities through the extensive use of the mark since 1992. In Barneyís Inc. v. BNY Bulletin Board (D2000-0059), it was found that under Section 22 of the United States Trade Mark Act:

"Ďregistration of a mark on the principal register Ö shall be constructive notice of the registrantís claim of ownership thereofí. As a matter of the United States trade mark law, it must therefore be presumed that Respondent was on notice of Complainantís rights in the [mark] prior to registering [the domain name]. Complainantís high profile presence in the retail market and the fame of the Complainantís mark would further tend to indicate that Respondent was aware of Complainantís rights therein."

Elsewhere, it has been found that,

"as a matter of United States law, the Respondent had prior constructive or actual knowledge of the Complainantís trade mark" (Cellular One Group v. Paul Brien, D2000-0028).

Similarly, under UK law ignorance of trade mark rights, whether registered or unregistered, is no defence to infringement or passing-off of them.

It is to be noted that the rights conferred on the owner of a UK trade mark registration by virtue of section 9 of the UK Trade Marks Act 1994 have effect from the date of registration (being the same as the date of the filing of the application). The registered rights in the Complainantís Mark therefore predate the date of registration of the disputed name by a considerable period.

In addition to its registered rights, the Complainant can claim rights through the use of its mark. In Atlantic Records v. Paelle Corporation (D2001-0065) it was found that

"even if a trademark is not yet approved by the authorities and the relevant certificate is not yet granted, this does not mean that such a trademark does not exist, with substantial goodwill generated on someoneís businesses, with name and brand recognition, and with certain expectation rights that may become reality as soon as the authority grants such recognition and validates such prior use as constitutive of the right to such a trademark."

It seems that the Respondent was therefore aware of or may be deemed to have been aware of the trade mark rights of the Complainant, both registered and unregistered, and has registered and is using the domain name in bad faith with the intention of reselling it for a price vastly in excess of out-of-pocket costs directly related to the domain name.

Furthermore, in Educational Testing Service v. TOEFL (D2000-0044) it was found that as there was

"no evidence on the record that the Respondent has undertaken any act regarding the disputed domain name other than to offer it for sale, the Panel infers that the offering for sale was the Respondentís purpose for the registration. If the Respondentís offer for sale to the Complainant is determined to be in bad faith, then the registration will also be deemed to be in bad faith."

B. Respondent

The Complainant Does Not Have Prior Rights in a Trademark or Service Mark Identical or Confusingly Similar to Respondentís Domain Name

The Respondent registered the domain name CREAM.COM on December 14, 1995. The Complainant has come forward with no evidence of substantive rights to a trademark or service mark for the word mark CREAM prior to that date.

"A complaining party can establish that it has rights in a trademark or service mark by establishing that an entity such as the PTO has approved its mark, or alternatively, that it has established rights as a common law mark. Ordinarily, to satisfy the requirements of Rule 4(a)(1), the complaining party must have trademark rights before the domain name in dispute was registered." Business Architecture Group, Inc. v. Reflex Publishing, FA 0104000097051 (Nat. Arb. Forum 2001); see also Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (under ICANN rules, a trademark must predate the domain name.)

Registrations for CREAM owned by Complainant

The earliest registration for the mark (UK 2018965B) owned by Complainant [1] was first published on July 10, 1996, and did not issue until October 25, 1996.

What Complainant has failed to mention about the application for the mark is that it was originally filed as a series of marks, two of which included the "propellor" design and two of which were for the word CREAM, one being stylised and the other being in text format.

In the course of the prosecution of the application, the Office rejected the two trademarks for CREAM in text format and CREAM in stylized lettering, for among other reasons, Section 3(1)(b)(c) & (d) of the U.K. Trademark Act, which bars registrations of trademarks

(b) which are devoid of any distinctive character,

(c) which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographic origin, the time of production of goods or of rendering f services, or other characteristics of goods or services,

(d) which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade: provided that, a trademark shall not be refused registration . . . if, before the date of the application for registration, it has acquired a distinctive character as a result of the use made of it.

In response to this rejection, the Complainant dropped those two trademarks from the application. Under the Act, the Complainant could have overcome the rejections by showing that the mark had acquired distinctiveness at that time. However, since it was obviously unable to do so, the trademarks were dropped. Each and every other registration relied upon by the Complainant was also for a design mark and applied for and issued years after the date Respondent obtained its domain name.

In the United States where the Respondent is located, the Complainant owns a pending application only since July 24, 1998 for CREAM and the design shown above. The application does not claim use of the trademark in the United States.

Since none of the registrations relied upon by the Complainant are for the word mark CREAM apart from a device or design they should not be considered by the Panel [2]. By its own admissions in its Complaint and its conduct in the U.K. Trademark Office, it is clear that the Complainant agrees that CREAM is a weak term. The Complainant has provided evidence that the term CREAM is a common term, by showing that "a total of 41 CREAM trade marks have obtained registration on the selected Registers."[3]

Claimantís Alleged Common Law Rights in CREAM

Since the Complainant is not able to show ownership of a registration prior to the date the Respondent obtained its domain name, it must prove that it has common law rights in the term CREAM [4].

The Complainant has failed to show any evidence of acquired distinctiveness of CREAM as a trademark or service mark by it. More glaringly, the Complainant has failed to do so for the period of time at issue - prior to December 14, 1995- the date Respondent obtained its domain name registration.

The Complainant claims that it "has been trading under the name CREAM in the UK since 1992." This allegation merely supports a finding that the term was used as a tradename, but not that it was used as a trademark [5].

There are no indications that CREAM is used as a trademark/service mark in connection with nightclub activities and as a promoter, nor that the services have been offered, advertised and promoted to any degree prior to December 1995, the period in which acquired distinctiveness must be shown.

The Complainantís awards were not received until the years 2000 and 2001.

The Complainantís first album was released in the U.K. in 1995 under the name "Cream Live" [6]. It is textbook trademark law that individual album titles are not granted trademark/service mark status-except where a series of albums are released under the same trademark [7]. The second album was not released until 1996 and under a different title. There is no indication regarding the success of the early albums, but due to the timing and trademark law, it would be impossible for the Complainant to show that it had acquired distinctiveness in the trademark CREAM for albums before December 14, 1995.

The Complainant claims it also produces a line of clothing and other merchandise "to promote the CREAM brand." Again, there are no samples of the goods or indication of the length of time for the sales or the success of the products.

The Complainant claims that its reputation has been enhanced due to publicity it has received since 1999. Since the domain name was registered in 1995 by Respondent, this information is irrelevant.

Finally, the Complainant supplies some indication of the amount it spends on advertising and promotion of the CREAM brand, the popularity of its website located at CREAM.CO.UK and its "turnover". However, since the figures are for the year 2000, we again have no indication how well known the "CREAM" brand was before December 14, 1995.

These claims fail to evidence that the trademark CREAM acquired distinctiveness as applied to the Complainants goods/services prior to December 14, 1995, the only time period that matters.

Respondent Did Not Adopt or Use its Domain Name in Bad Faith

This case is not a typical cyberpiracy case. It deals with the registration of a domain name in 1995, when the Internet was in the early stages of commercial development. Moreover, it deals with the registration at that time by an established American company of a domain name containing a trademark allegedly being used by the Complainant in the United Kingdom-but not in the United States at the time. This is a basic point as all examples of bad faith under Section 4(b) of the policy appear to require some familiarity with the complainant or with its trademark [8].

The Domain Name Was Not Registered in Bad Faith

The record in this case fails to establish either actual or constructive knowledge of the Complainantís trademark by the Respondent when registering the domain name. The Respondent registered the disputed domain name in December 1995, prior to issuance of the Complainantís first registered trademark [9].

Ownership of a trademark registration alone without a showing of fame of the alleged trademark at the time is not enough to support a claim of bad faith [10]. The Complainant has failed to show any evidence that its alleged trademark had acquired distinctiveness, no less that the trademark was famous at the time the Respondent registered the domain name in 1995.

The Respondent did not know of the Complainant in 1995, and until it received the first correspondence from the Complainant in 2000 still never heard of the Complainant or its alleged rights in a trademark for CREAM. To infer that the Respondent was familiar with the Complainant or its alleged trademark in 1995 from its limited use in the United Kingdom and almost non-existent use outside, is absurd.

The real factor to assist the Respondent in this case is timing. The Respondent registered 13 domains in late 1995, early 1996. Many of the issues addressed by the Policy were then not apparent as they are today. The Respondent filed these names at a time when not only the full names of various famous people but also the corporate names of many famous companies were available. Other than the name of its company, the domain names the Respondent acquired, including the disputed domain name, are suggestive/generic/descriptive Internet domain names.

The Respondentís acquisition of the <cream.com> domain name in December 1995, was done in this context.

"If the Respondent had registered the domain names with the intention to cybersquat, it is not clear why it would not have chosen 13 more merchantable domain names to register. Nor is it clear why it would have held on to the domain name for over five years and never contacted the Complainant. The registration of 13 domain names is not sufficient to establish that the Respondent has engaged in a pattern of bad faith registration under paragraph 4(b)(ii) of the Policy: Bernardaud Porcelaines de Limoges S.A. et al. v. Chapman Capital LLC, (WIPO D2001-0247).

The Respondent Did Not Use the Domain Name in Bad Faith

"The Complainant has not proved the initial requirement that the domain name was registered in bad faith. The Panelist is not therefore required to consider the additional requirement of whether the domain name was used in bad faith by the Respondent." Bernardaud Porcelaines de Limoges S.A. et al. v. Chapman Capital LLC, (WIPO D2001-0247).

However, in an effort to clear its name and further show its good faith conduct and the Complainantís reverse hi-jacking conduct, the Respondent responds to the Complainantís alleged facts regarding bad faith use.

The letters submitted with the Complaint speak for themselves. Almost five years after the Respondent had acquired the domain name, the Complainant contacted the Respondent in an attempt to have the domain name assigned to it. The Respondent did not respond to the Complainantís first few correspondence because it simply was not interested in selling the domain name. Nonetheless, the representative for the Complainant continued to contact the Respondent. When the Respondent did not respond, the Complainant offered a fee for the transfer. When the Respondent expressed no interest, the Complainant raised the amount it was willing to pay without being requested to do so.

Since the Respondent was a pioneer Internet company, it was well aware of its rights to domain names at the time of registration and at the time it was contacted by the Complainant. The Respondent knew that it had no duty to respond to the Complainantís queries, assign the domain name or engage in negotiations for the domain name. However, being a business, it was willing to listen to offers. The fact that negotiations between the parties for the sale of the domain name occurred does not prove that the original registration was made primarily for the purpose of selling to the Complainant.

"The Policy does not impose a blanket prohibition on selling domain names." SOUTHBank v. Media Street, (WIPO D2001-0294).

"The fact that Respondent is seeking substantial money for what it believes to be a valuable asset is not tantamount to bad faith. Rather it tends to show a reasonable business response to an inquiry about purchasing a business asset . . ." Meredith Corp. v. CityHome, Inc., (WIPO D2000-0223).

There is no evidence of any attempt to sell the domain name by the Respondent since 1995, so there can be no inference that the Respondent acquired the name for the purpose of resale to the Complainant or a competitor [11]. There is no evidence that the Respondent engages in a pattern of registering the trademarks of others as domain names. There is no evidence that the Respondent registered the domain name for the purpose of disrupting the business of a competitor. Finally, the record contains no evidence to establish that the Respondent intentionally attempted to create a likelihood of confusion with the Complainantís alleged trademark CREAM. The Complainant claims that confusion is likely and that the Respondent is using the domain name in an attempt to attract consumers to its website. Even if this was true, which it is not,

"[t]he mere presence of a likelihood of confusion or dilution is not sufficient to find bad faith under the policy . . . Thus, the evidence supports a finding that Respondent registered and used the domain name <rollerblading> in an intentional attempt to attract internet users by using the common name for a popular sport, not by creating confusion with Complainantís mark.". Rollerblade, Inc. v. CBNO, (WIPO D2000-0427).

There was no bad faith and thus there could not be a violation under the UDRP.

The Respondent Has the Right to Use its Generic Domain Name

Since it is clear that the Complainant does not have exclusive rights to the term CREAM by its own admission and actions, the Respondent has as much rights as anyone to use the term CREAM in a generic fashion [12].

Respondent has never used or intended to use the subject domain, comingattractions.com, in any way related to apparel. The term Ďcoming attractionsí is a generic term in the field of entertainment, generally associated with movies, television, theatre and other forms of entertainment. Widespread use of this generic term predates Complainantís trademark registration. Respondent has the right to register the subject domain name, comingattractions.com based upon the generic usage of the term Ďcoming attractions.í Coming Attractions, Ltd. v. Commingattractions.com, FA 0003000094341 (Nat. Arb. Forum, May 11, 2000).

The Respondent does not nor would it ever have an interest in using the domain name in connection with any goods/services alleged to be offered by the Complainant.

It has always been the intention and still is the intention for the Respondent to use the domain name <cream.com> to develop and run a website similar to that of the well-known <about.com>. This is a search engine site that prioritizes other websites for the most interesting and relevant information on a wide variety of topics so that searchers can find the best in the least amount of time using the least effort. The use of the domain name <cream.com> for such a site is taken from the concept that the listings on the site are the "CREAM of the crop." While the Respondent still intends to undertake this project, it has a number of other projects in current development that require its attention. The other domain names as well are intended to be used in connection with legitimate businesses such as <say.com> for a website to convert HTML to speech, and <junkfood.com> for a lighthearted nutrition website.

While the Respondent is not currently using the domain name, it should not be penalized for holding it for future projects. U.S. Trademark law allows applicants to file applications based on "intent to use" in U.S. commerce and does not penalize the owner for taking three years to do so or failure to do so. Regardless, since the Complainant has failed to prove bad faith by the Respondent, it is not even necessary for the Arbitrator to consider the Legitimate Use requirement of Section 4(a) of the Policy [13].

Conclusion

Complainant has failed to come forward with any evidence to support any of the three factors considered under the Policy. As such, its request for transfer should be denied. In fact, considering Complainantís conduct in using the UDRP in order to obtain a domain name it clearly did not have exclusive or prior rights in requires a finding of reverse hijacking.

 

6. Discussion and Findings

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

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

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

Identity or confusing similarity

The Complainantís registered trademark, as distinct from its trade name, appears on the material before the Panel to be the combination of the word and the propellor device.

It should be noted that the word CREAM appears in stylized form, the application in the UK in 1995 to register the word CREAM standing alone in text form having been abandoned.

Although essential or virtual identity is sufficient for the purposes of the Policy,[14] the panel finds the disputed domain name is not identical to the Complainantís trademark.

The test of confusing similarity under the Policy, unlike trademark infringement or unfair competition cases, is confined to a consideration of the disputed domain name and the trademark [15]. In Microsoft Corporation v. Microsof.com aka Tarek Ahmed (WIPO D2000-0548) contributing factors to the likelihood of confusion were held to be the visual similarity between the domain name and the complainantís mark and the mark being strong and immediately recognizable.

Here the most prominent feature of the trademark is the logo, the word CREAM being commonly used as a descriptive word. Despite the presence of that word, in stylized form, as part of the trademark, the Panel finds the disputed domain name is not confusingly similar to the trademark.

To succeed in this complaint, the Complainant must establish that, prior to the registration of the disputed domain name, it had acquired through use of the word CREAM, trademark rights at common law. However the material before the Panel as to the period before the registration of the disputed domain name does not go beyond use of the word as a trading or corporate name. Telling is the failure of the Complainant to produce evidence of use of the word CREAM as a trade mark in response to the objections raised by the UK Patent Office only a few months before the registration of the disputed domain name. If there were any such evidence it would surely have been produced then.

The Complainant has not established this element.

The Complaint therefore fails. However, in light of the Respondentís request for a finding of reverse domain name hijacking, it is necessary to consider the other elements.

Illegitimacy

The Complainant has not authorized the Respondent to use its trademark nor to register the disputed domain name. The name of the Respondent is not and does not include any part of any of the disputed domain name. The disputed domain name is not being used at all, let alone in connection with a bona fide offering of goods or services. Were the trademark a well-known invented word having no descriptive character, these circumstances would shift the onus to the Respondent to demonstrate its rights or legitimate interest in the disputed domain name. But that part of the mark comprising the word CREAM is commonly descriptive and, standing alone, not well-known as a trademark.

"Cream" is merely a common generic word in which the Complainant cannot have exclusive rights. Thus the Respondent has rights and a legitimate interest in the disputed domain by virtue of having been the first to register it [16].

"Where the domain name and trademark in question are genericóand in particular where they comprise no more than a single, short, common termóthe rights/interests inquiry is more likely to favor the domain name owner".[17]

Recognizing that anyone has a right to register common words in the language, a legitimate interest is even established where a Respondentís only purpose in registering a common word domain name is for resale [18].

There is no evidence, and no basis for inferring, that the Respondent was aware, or should be deemed to have been aware, of the Complainant or its trademark prior to the registration of the disputed domain name. The constructive notice provision of US trademark law applies to trademark filings in that country, once registration is achieved. The US application was not filed until after the registration of the disputed domain name.

The fact that ignorance of trade mark rights affords no defence under UK trademark law does not amount to constructive notice of the mark, nor does the retrospective application of UK registered trademark rights to the date of the application. [If it were necessary to make a finding as to the proper law to be applied in this case, the Panel would find that US law should apply, since the disputed domain name is registered in that country, the Respondent is located there and the Complainant has submitted to the jurisdiction of the courts of the Eastern District of Virginia, where the Registrar is located].

The domain name was registered at the same time as the Respondent registered as domain names other commonly descriptive words. This circumstance negates any conclusion that the Respondent was targeting the trademarks of others.

There can be no objection to the "bulk" registration of descriptive domain names that are not identical or confusingly similar to the trademarks of others. The panel is satisfied that the Respondent has a right to and a legitimate interest in the disputed domain name. The Complainant has not established this element.

Bad faith registration and use

The correspondence between the parties makes it clear that the first suggestion that the disputed domain name might be transferred to the Complainant came 5 years after it was registered and was made by the Complainant. The passage of such a long period of time alone must cast considerable doubt over whether sale to the Complainant at a profit was the Respondentís primary purpose in registering the disputed domain name [19].

The Panel does not infer such a purpose from the course of the negotiations nor from the ultimate asking price of the Respondent. The Panel accepts that the Respondent sought a price to reflect its assessment of the value of a <.com> domain name containing the descriptive word CREAM.

There is no evidence of bad faith registration.

As to use, the Complainant relies on UDRP decisions holding that, in certain circumstances, passive use may amount to use in bad faith.

The Ďuseí requirement has been found in many cases not to require positive action, inaction being within the concept [20]. In the leading case on passive use [21], passive holding was held to amount to acting in bad faith where:

(i) the Complainantís trademark had a strong reputation and was widely known;

(ii) the Respondent provided no evidence of any actual or contemplated good faith use by it of the domain name;

(iii) the Respondent had taken active steps to conceal its true identity, by operating under a name that is not a registered business name;

(iv) the Respondent had actively provided, and failed to correct, false contact details, in breach of its registration agreement, and

(v) taking into account all of the above, it was not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainantís rights under trademark law.

Apart from the vast dissimilarity between this case and Telstra, there can be no objection to the failure over a long period to use domain names that are not identical or confusingly similar to the trademarks of others.

Accordingly the Panel finds that the Complainant has not established that the disputed domain name was registered and is being used in bad faith.

Reverse domain name hijacking

Rule 1 defines reverse domain name hijacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." See also Rule 15(e). To prevail on such a claim, it has been held that a respondent must show that the complainant knew of the respondentís unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith [22]. The cases decided on this basis were all cases in which the Complainantís rights in a trademark were clearly established. Here the Complainantís trademark rights are in a mark which is significantly different from the disputed domain name.

The Complainant, professionally represented and advised, must have known of the inherent weakness of the word CREAM, standing alone, as a trademark. Its attempt to register that word as a trademark had been rejected for lack of distinctive character by the UK Patent Office in August 1995, only a few months before the disputed domain name was registered. The Complainant did not seek to demonstrate to the Patent Office that, through use, the word had acquired a secondary meaning distinctive of the Complainantís goods or services. Rather, it abandoned the attempt. Its trading under the name CREAM since 1992 does not establish its use of CREAM as a trade mark, nor is there any evidence before the Panel of any trade mark use of the word CREAM, standing alone, let alone any use prior to the registration of the disputed domain name.

The course of correspondence between the parties reveals some dissembling on the part of the Complainant in the form of repeated claims by representatives of the Complainant that the Complainant had registered trade mark rights in the mark CREAM in the UK (without disclosing that its rights were confined to the combination of that word and the device forming part of the registered mark) while making increased offers to acquire the domain name registration, coupled with failure to comply with repeated requests by the Respondent to supply copies of the trademark registration documents so the Respondent might consider its legal position.

All this satisfies the Panel that, at the time it filed its Complaint, the Complainant was and had long been well aware that:

- its registered trade mark rights are limited to the word and device mark depicted above; and

- it could not establish common law trademark rights in the word CREAM, standing alone, prior to the registration of the disputed domain name.

The Complainant thus had no basis on which to assert that the Respondent had no rights to or legitimate interests in the disputed domain name. It therefore had no proper objection to the disputed domain name. Since the Complainant was being professionally advised throughout, the conclusion is inescapable that the Complainant was aware of this.

Under these circumstances it is appropriate for the Panel to make a finding of reverse domain name hijacking on the basis that the Complainant was aware of the Respondentís unassailable rights to or legitimate interests in the disputed domain name.

The Panel finds the Complaint was filed as an attempt at Reverse Domain Name Hijacking and was brought in bad faith primarily to deprive a registered domain-name holder of a domain name. Accordingly, pursuant to Rule 15(e), the Panel declares the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

 

7. Decision

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

 


 

Alan L. Limbury
Sole Panelist

Dated: September 28, 2001

 


Footnotes:

1. This registration was applied for and issued to James Barton & Darren Hughes of Liverpool, England. The registration was not assigned to Complainant until January 24, 2001 as shown in Annex 3 to Complainantís Complaint.

2. Zero International Holding GmbH & Co. et al. v. Beyonet Services et al., (WIPO D2000-0161): "So far as the German trade mark 1009879 is relied on by the Complainant, that trademark is a device mark for the stylized form of the word ZERO as shown on the registration, rather than the word ZERO itself. As such, this panel is not satisfied that this trade mark gives relevant rights in the word ZERO."

3. Zero International Holding GmbH & Co. et al. v. Beyonet Services et al., (WIPO D2000-0161): "The word ZERO is a common word which is short, simple and easy to remember and may well have been registered by any number of people for any purpose."

4. "To establish common law rights, the Complainant must show that the mark has acquired distinctiveness when associated with Complainantís goods or services" prior to the Respondentís domain registration. Business Architecture Group, Inc. v. Reflex Publishing, FA 0104000097051 (Nat. Arb. Forum 2001).

5. Business Architecture Group, Inc. v. Reflex Publishing, FA 0104000097051 (Nat. Arb. Forum 2001); Marbil Co. Inc. v. Sangjun Choi, (WIPO D2000-1275); Kendall v. Mayer Re skipkendall.com, D2000-0868 (WIPO Oct. 26, 2000).

6. It should be noted for the record that there was a famous band out of the United Kingdom in the sixties lead by Eric Clapton called CREAM. Since there is still a large following for this band, it appears that this album title, as well as possibly Complainantís entire business was an attempt to take advantage of that bandís notoriety.

7. In re Polar Music Intíl AB, 221 U.S.P.Q. 1088, 1091 (TTAB 1998); In re Peter Spirer, 225 U.S. P.Q. 693 (TTAB 1995).

8. Bernardaud Porcelaines de Limoges S.A. et al. v. Chapman Capital LLC, (WIPO D2001-0247).

9. Diamond Shamrock Refining and Marketing Co. v. CES Marketing Group Inc., FA 0102000096766 (Nat. Arb. Forum April 20, 2001): "The critical fact is that Complainantís trademark registration issued after the disputed domain name was registered. Therefore, the element of registration in bad faith is missing."

10. Bernardaud Porcelaines de Limoges S.A. et al. v. Chapman Capital LLC, (WIPO D20001-0247).

11. Id Software Inc. v. Doom Gaming Connections, FA 00006000095002 Nat. Arb. Forum, July 24, 2000).

12. Zero International Holding GmbH & Co. et al. v. Beyonet Services et al., (WIPO D2000-0161): "The word ZERO is a common English word. Although any number of organizations (including the Complainant) may have trademark rights in such word that does not preclude the respondent effecting registration of a common word on a Ďfirst come, first servedí basis which was available."

13. Bernardaud Porcelaines de Limoges S.A. et al. v. Chapman Capital LLC, (WIPO D2001-0247); see also Diamond Shamrock Refining and marketing Co. v. CES Marekting Group, Inc., FA 0102000096766 (Nat. Arb. Forum, April 20, 2001): "Because we find that the Complainant has failed to prove registration in bad faith, the Panel finds it unnecessary to discuss the first two elements."

14. See The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc. (WIPO Case No. D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd. (WIPO Case No. D2000-0802) and Nokia Corporation v. Nokiagirls.com a.k.a IBCC (WIPO Case No. D2000-0102). For a typical US case see Sportyís Farm L.L.C. v. Sportsmanís Market, Inc., 202 F.3d 489, 497-98 (2d Cir. 2000) (the differences between the trademark "sportyís" and the domain name <sportys.com> Ė specifically, an apostrophe in the trademark and the addition of .com in the domain name Ė are "inconsequential," such that the domain name is "indistinguishable" from and "certainly Ďconfusingly similarí to the protected mark").

15. AltaVista Company v. S.M.A., Inc., (WIPO Case D2000-0927); Gateway, Inc. v. Pixelera.com, Inc. (formerly Gateway Media Productions, Inc.) (WIPO Case D2000-0109). See also General Mills, Inc. v. John Zuccarini (NAF Case FA0104000097050 , May 30, 2001).

16. Energy Source Inc. v. Your Energy Source, (NAF Case 96364); Ultrafem, Inc. v. Warren R. Royal, (NAF Case 97682).

17. Shirmax Retail Ltd. v. CES Marketing, Inc., (e-Resolution Case AF-0104. See also General Machine Prods Co. v. Prime Domains, NAF Case 92531); Car Toys, Inc. v. Informa Unlimited, Inc., (NAF Case FA93682); CRS Technology Corp. v. Condenet, Inc., (NAF Case FA9347); Nicholas V. Perricone, M.D. v. Martin Hirst, (NAF Case FA0095104); Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, (WIPO Case D2000-0161); Primedia Special Interest Publications, Inc. v. John L. Treadway, (WIPO Case D2000-0752); First American Funds, Inc. v. Ult.Search, Inc., (WIPO Case D2000-1840).

18. Newstoday Printers and Publishers (P) Ltd. v. InetU, Inc., (WIPO Case D2001-0085); Audiopont, Inc. v. eCorp, (WIPO Case D2001-0509); Kis v. Anything.com Ltd., (WIPO Case D2000-0770); Allocation Network GmbH v. Steve Gregory, (WIPO Case D2000-0016).

19. See The World Phone Company (Pty) Ltd v. Telaccount Inc. (WIPO Case D2000-1163) and Maureen A. Healy v. Andreas Kuhlen (WIPO Case D2000-0698).

20. See Telstra Corporation Limited v. Nuclear Marshmallows, (WIPO Case No. D2000-0003); Barneyís, Inc. v. BNY Bulletin Board (WIPO Case No. D2000-0059); CBS Broadcasting, Inc. v. Dennis Toeppen (WIPO Case No. D2000-0400); Video Networks Limited v. Larry Joe King (WIPO Case No. D2000-0487); Recordati S.P.A. v. Domain Name Clearing Company (WIPO Case No. D2000-0194) and Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman (WIPO Case No. D2000-0468).

21. See Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003).

22. See, e.g., Sydney Opera House Trust v. Trilynx Pty. Ltd., (WIPO Case D2000-1224); Goldline International, Inc. v. Gold Line (WIPO Case D2000-1151); K2r Produkte AG v. Jeremie Trigano (WIPO Case D2000-0622); Smart Design LLC v. Hughes, (WIPO Case D2000-0993); Loblaws, Inc. v. Presidentchoice.inc/Presidentchoice.com, (eResolution Case AF-0170a to Ė0170c).