WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Celebration Shoes Ltd. v Bridal Shoe Path

Case No. D2001-1123

 

1. The Parties

The Complainant is Celebration Shoes Ltd., a corporation pursuant to the laws of Ontario, Canada with its principal place of business at 106 Yorkville Avenue, Toronto, Ontario, M5R 1B9, Canada. The Complainant is represented by David Harvey of Goodman and Carr LLP, 2300-200 King Street West, Toronto, Ontario, M5H 3W5, Canada.

The Respondent is Bridal Shoe Path, a general partnership, of 4040 Steeles Avenue West Unit 24, Woodbridge, Ontario, L4L 4Y5, Canada.

 

2. The Domain Names and Registrar

The domain name at issue is <celebrationshoes.com>. The domain name is registered with Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia.USA ("the Registrar").

 

3. Procedural History

The Complaint submitted by Complainant was received on September 13, 2001, (electronic version), September 14, 2001, (by fax) and September 17, 2001, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").

An Acknowledgement of the Complaint was sent by the WIPO Center to the Complainant on September 17, 2001, by e-mail.

On September 18, 2001, a request for Registrar Verification was transmitted by the WIPO Center to the Registrar, Network Solutions, Inc.

By email dated September 19, 2001, the Registrar advised WIPO Center as follows:

- It had received a copy of the Complaint from the Complainant.

- It is the Registrar of the domain name registration <celebrationshoes.com>.

- The Respondent, Bridal Shoe Path is shown as the "current registrant" of the domain name.

- The administrative contact and billing contact is the Respondent, Bridal Shoe Path.

- The UDRP applies to the registration.

- The domain name registration <celebrationshoes.com> is currently active.

- The Registrar has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").

Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Resolution Policy ("Rules"), the WIPO Center on September 24, 2001, transmitted by post-courier and by email a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.

The Complainant elected to have its Complaint resolved by a single Panelist; it has duly paid the amount required of it to the WIPO Center.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days, namely October 14, 2001. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.

No response was received by the WIPO Center from the Respondent within the prescribed time. A Notice of Respondent Default was issued on October 17, 2001.

WIPO Center invited Mr. Ross Carson of Ogilvy Renault, Ottawa, Ontario, Canada to be the Panelist in the case. It transmitted to Mr. Carson a Statement of acceptance and requested a Declaration of Impartiality and Independence. Mr. Carson forwarded to the WIPO Center an executed Declaration of Impartiality and Independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

On October 26, 2001, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by November 15, 2001.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.

 

4. Factual Background

(a) The Complainant has been carrying on business as a retailer of bridal shoes in Toronto, Canada under the trade name Celebration Shoes Ltd. since 1994. The Complainant registered its corporation in Ontario under the name Celebration Shoes Ltd. on March 8, 1994. (Annex 1 to the Complaint).

(b) The Complainantís signage, packaging, advertising, letterhead and tradeshow material all contain the reference CELEBRATION SHOES in connection with the business of Celebration Shoes Ltd. (Annex 5 to the Complaint). By extensive use on its products and services of the words CELEBRATION SHOES, the Complainant has acquired common law rights in the trademark CELEBRATION SHOES.

 

5. Partiesí Contentions

Complainant:

(i) The domain name <celebrationshoes.com> is identical to a trademark or service mark in which the Complainant has rights.

Complainant submits that it has been operating as a retail bridal shoe business under the name Celebration Shoes Ltd. since 1994 and that Celebration Shoes Ltd. has become well known in the Toronto area among those in the bridal business. Store signage, packaging, advertising, letterhead and tradeshow materials all use CELEBRATION SHOES in connection with the Complainantís business. Complainant submits that the words CELEBRATION SHOES have become a trademark and trade name of Complainant in relation to the sale of bridal shoes.

Complainant had previously registered the domain name <celebrationshoes.com> but inadvertently allowed it to expire by failure to renew the registration in or about April, 2001. Complainant had prepared and published advertising information which included reference to the Complainantís website at <www.celebrationshoes.com>.

(ii) Respondent has no rights or legitimate interests in respect of the domain name <celebrationshoes.com> .

On or about June 15, 2001, the Respondent, Bridal Shoe Path, registered the domain name <celebrationshoes.com>. On or about June 16, 2001, the Respondent registered the domain name celebrationshoes.ca in Canada. (Annex 6). Complainant submits that Respondent is a competitor of the Complainant and sells similar products in the same geographic area. Complainant submits that Respondent has never had any connection with the Complainant and has never used the phrase Celebration Shoes in any manner in connection with its business. Respondent has never been commonly known by the name Celebration Shoes. Complainant has never authorized Respondent to use the phrase Celebration Shoes in any manner.

(iii) Respondent registered and is using the domain name <celebrationshoes.com> in bad faith.

Complainant submits that Respondent is a competitor of the Complainant and sells similar products in the same geographic area. The URL <www.celebrationshoes.com> resolves to a webpage marked "Under Construction" and also to a link headed "Create your page" provided by Domain People. (Annex 8).

Complainant submits that although Complainant now maintains a website at <www.celebrationshoes.net>, many people would assume that the Complainantís website would be at <www.celebrationshoes.com> and would attempt to enter that site first. Advertising materials of the Complainant reference <www.celebrationshoes.com>. Upon reaching that site and finding no company website at that address, customers would assume that there is no company website at that address, which is disruptive to the Complainantís business and reflects badly on the Complainant.

Complainantís solicitor wrote to the Respondent on June 29, 2001, stating that the domain name in dispute infringed the trademark and trade name of the Complainant (Annex 9). Respondentís solicitor replied on July 5, 2001, indicating that Respondent "has never made any use of the <celebrationshoes.com> domain name and has no intention of doing so".

Complainant submits that as Respondent has no intention of using the domain name, and that the domain name is identical to the business name of a competitor, Respondent has registered the domain name in bad faith in order to disrupt the business of a competitor.

Complainant further submits that Respondent has registered the domain name in order to prevent the Complainant from reflecting its trademark in a corresponding domain. Complainant further submits that by also registering the domain name celebrationshoes.ca the Respondent has engaged in a pattern of such behaviour.

Respondent:

The Respondent failed to submit a Response.

 

6. Discussion and Findings

In accordance with Paragraph 4(a) of the Policy, the Complainant has the burden of demonstrating three elements:

(i) That the Complainant has rights in a trademark or service mark with which the Respondentís Domain Name is identical or confusingly similar;

(ii) That the Respondent has no rights or legitimate interests in the Domain Name; and

(iii) That the Domain Name has been registered and is being used in bad faith.

6.1 The first issue is whether the Complainant has rights in a trademark or service mark and whether the domain name in dispute <celebrationshoes.com> is identical or confusingly similar to that mark.

Complainant has established common law rights in its trademark CELEBRATION SHOES by extensive use of the trademark together with its trade name Celebration Shoes Ltd. since 1994 in association with the sale of bridal shoes. Complainant has provided examples of advertising including its trade name and trademark.

The distinctive portion of the domain name in dispute consists of the words "celebration" and "shoes". The domain name in dispute is confusingly similar to Complainantís trade name and trademark and is likely to lead people to believe that the domain name <celebrationshoes.com> is connected with the Complainant.

The Panel finds that the domain name in dispute is identical to Complainant trademark and trade name.

6.2 The second matter which the Complainant must prove is that the Respondent has no rights or legitimate interest in the domain name in dispute.

Respondent has never been known by the trade name Celebration Shoes. Respondentís trade name is Bridal Shoe Path. Respondent is a competitor of Complainant. Complainant has never authorized Respondent to use the trade name or trademark CELEBRATION SHOES. Respondentís solicitor advised in a letter dated July 5, 2001, that Respondent "has never made any use of the celebrationshoes.com domain name and has no intention of doing so".

The Panel finds that the Respondent has no rights or legitimate interests in the domain name in dispute.

6.3 The third matter which the Complainant must prove is that the domain name has been registered and is used in bad faith.

The Respondent is a passive holder of the domain name in dispute. The Administrative Panel in Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003 stated at Paragraph 7.9 "... the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case it can be said that the Respondent is acting in bad faith."

Complainantís solicitor wrote to the Respondent on June 29, 2001, stating that the domain name in dispute infringed the trademark and trade name of the Complainant (Annex 9). Respondentís solicitor replied on July 5, 2001, indicating that Respondent "has never made any use of the celebrationshoes.com domain name and has no intention of doing so".

Evidence of bad faith includes using a domain name or domain names to disrupt the business of a competitor (ICANN Policy para. 4.b(iv)). Currently the website at <www.celebrationshoes.com> is under construction. The domain name in dispute <celebrationshoes.com> will attract customers of the Complainant to a web page operated by the Respondent and upon finding that the site is under construction customers of the Complainant will be led to believe that the Complainantís site is inactive.

The Panel concludes that the Respondent has registered and is using the domain name <celebrationshoes.com> in bad faith.

 

7. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;

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

(c) The Respondentís domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <celebrationshoes.com> be transferred to the Complainant.

 


 

Ross Carson
Sole Panelist

Dated: November 8, 2001