WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dama SpA v. NAK Group Inc
Case No. D2001-1203
1. The Parties
The Complainant is Dama SpA of Via Pieminte, 174, 21100 Varese, Italy.
The Respondent is NAK Group Inc., 14 Bond Street, Suite 157, Great Neck, New York, USA.
2. The Domain Name(s) and Registrar
The Domain Names are <paulandshark.org> and <paulandshark.net>.
The Registrar is Network Solutions, Inc.
3. Procedural History
The Complaint was filed on October 3, 2001 (electronic copy) and October 5, 2001 (hardcopy). WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The Panelist is satisfied this is the case.
The Complaint was properly notified in accordance with Rules, paragraph 2 (a). No Response was filed by the Respondent. The Respondent is in default.
The administrative panel was properly constituted. The undersigned panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panelís decision was November 27, 2001.
4. Factual Background
The Complainant is the owner of registered trade marks incorporating Paul and Shark Yachting in the USA and Italy and has been using the Paul and Shark Yachting trade mark on apparel since 1977.
5. Partiesí Contentions
The Complainant states:
A. Factual Background
(i) Dama is engaged in the business of manufacturing, distributing and selling high-end menís and womenís apparel and accessories.
(ii) When it was founded in 1957, Dama (previously known as "Maglificio Dama S.p.A") adopted the trademark PAUL & SHARK YACHTING® for use in conjunction with the sale of menís and womenís apparel. Since 1977, Dama has continuously used the Paul and Shark Yachting® trademark in connection with its goods.
(iii) The PAUL & SHARK YACHTING® name and logo are protected by valid and subsisting U.S. federal trademark registrations. Prominent in the PAUL & SHARK logo is an image of a shark.
(iv) In the U.S, the registration dates for the PAUL & SHARK YACHTING® trademark are as follows:
Goods or Services
Pullover Sweaters, Cardigans, Jackets, Shirts, Bathing Suits, Surf Pants, Belts and Scarves
(v) Dama has also filed an Intent to Use application with the United States Patent and Trademark Office for the PAUL & SHARK YACHTING® trademark to be used in conjunction with luggage bags, luggage trucks, travelling bags, umbrellas, and leather and imitations of leather sold in bulk. The serial number of the pending application is 76030036. The application was filed on April 19, 2000, and was published for opposition on March 13, 2001.
(vi) PAUL & SHARK YACHTING® is also the subject of trademark registration by Dama in Italy.
(vii) In registration dates for the PAUL & SHARK YACHTING® trademark in Italy are as follows:
July 14, 1977
December 19, 1984
(viii) The PAUL & SHARK YACHTING® trademark is advertised extensively throughout the United States and Italy, as well as throughout Europe and Asia via mass media, and throughout the world on the Internet. Damaís web site may be found at <www.paulshark.it>.
(ix) Since 1980, Dama has expended approximately $1 million in connection with the advertising of its goods and services offered under the PAUL & SHARK YACHTING® trademark.
(x) In the first half year of 2001, ending June 30, 2001, Dama realized revenues of over $55 million resulting from its business and services offered in connection with the PAUL & SHARK YACHTING® trademark. The revenue for the year 2000 was approximately $85 million.
(xi) As a result of the considerable advertising, promotion and sales by Dama, the PAUL & SHARK YACHTING® trademark has become one of the most famous, celebrated, and well-regarded brand identifiers within the genre of high-end menís and womenís apparel and accessories. PAUL & SHARK YACHTING® is readily recognized by the public as the Complainantís trademark and as representing the quality products offered by Dama worldwide. Clearly, Dama has built a valuable reputation and extensive goodwill for itself and for its the PAUL & SHARK YACHTING® trademark, and the PAUL & SHARK YACHTING® trademark serves to distinguish the goods and business of Dama from the goods and business of others in the marketplace.
(xii) Based upon information and belief, Respondent, NAK Group Ltd. ("NAK"), is a New York corporation. It is unclear what type of business NAK is engaged in. NAK operates two web sites under the domain names < www.paulandshark.net > and <www.paulandshark.org>.
(xiii) The <www.paulandshark.net> domain address resolves to a screen that contains the following language: "This site is for the research of sharks and is currently being worked on. Paul our shark researcher is working hard to make updates and changes."
(xiv) The <www.paulandshar.org> domain address resolves to a screen that contains the following language: "This web site is for shark research and is currently being built. Our shark researcher Paul will keep you informed as he makes progress."
(xv) Based upon information and belief, on January 21, 2000, the domain names <paulandshark.org> and <paulandshark.net> were registered by NAK with the registrar, Network Solutions, Inc ("NSI"). The administrative contact listed in the domain name registration is NAK Group Ltd.
(xvi) Respondent is not a licensee of Complainant and was at no time authorized by Dama to use the PAUL & SHARK YACHTING® trademark or to register the <paulandshark.net> or <paulandshark.org> domain names.
(xvii) On July 17, 2000, Annie Borello, an attorney for Dama, sent a cease and desist letter to Mr. Navin Hemrajani of NAK asserting Damaís rights in the PAUL & SHARK YACHTING® mark, and notifying Mr. Hemrajani that NAKís registration of the <paulandshark.org> and <paulandshark.net> domain names was in violation of Damaís rights in the mark.
(xviii) On or about April 2, 2001, V. David Rivkin, another attorney for Dama, telephoned Mr. Hemrajani. Mr. Hemrajani claimed not to have received the July 17, 2001 letter. In this telephone conversation, Mr. Rivkin reiterated that NAKís registration of the domain names remained unlawful, and demanded that NAK cancel or transfer the domain names to Dama. Mr. Rivkin also offered to pay NAK reasonable out-of-pocket expenses associated with the transfer of the domain names to Dama.
(xix) Mr. Rivkin followed up the April 2, 2001 telephone conversation with a letter to Mr. Hemrajani.
(xx) On April 4, 2001, Complainantís attorneys received a fax from Mr. Hemrajani, in which he wrote that he was out of town the week of April 4, 2001, but that he would call the following week to discuss Mr. Rivkinís proposal to transfer the domain names to Dama in exchange for reasonable out-of-pocket expenses associated with such a transfer.
(xxi) In a telephone conversation held approximately a week later, Mr. Hemrajani claimed that NAK was about to begin operating web sites using the <paulandshark.net> and <paulandshark.org> domain names, which web sites would offer for sale shark related merchandise and paraphernalia such as "shark tooth charms."
(xxii) Mr. Hemrajani further commented that NAK has spent "at least $12,000" to set up these web sites. Mr. Hemrajani also said that had it not been for Mr. Rivkinís phone call and letter of April 2, 2001, NAKís "shark related" web sites would have been up and running immediately.
(xxiii) Mr. Rivkin told Mr. Hemrajani to provide Dama with an itemized list of expenses associated with the development of NAKís web sites for its alleged "shark related merchandise" business.
(xxiv) Mr. Hemrajani said that he would have to confer with "Paul," NAKís alleged "research biologist" (Mr. Hemrajani did not know or would not divulge "Paulís" last name) to compile such a list of expenses. Mr. Hemrajani also said that he would be in touch with Damaís attorneys in short order.
(xxv) Since April 2001, neither Dama nor its attorneys have heard from Mr. Hemrajani.
(xxvi) Since the last contact with Mr. Hemrajani the <paulandshark.org> or <paulandshark.net> web sites have undergone no changes in either content or appearance. Needless to say, it does not appear that NAKís imminent "shark related merchandise" business has begun to operate.
B. The Relevant Standards
(xxvii) In order to prevail in this proceeding, Complainant must prove each of the following three elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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.
UDRP ß 4(a).
(xxviii) Evidence that the domain name has been registered and is being used in bad faith is shown in the following circumstances:
(i) [Respondent has registered or acquired] the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondentís] documented out-of-pocket costs directly related to the domain name; or
(ii) [Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondentís] 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 [Respondentís] web site or location or of a product or service on [Respondentís] web site or location.
UDRP ß 4(b).
(xxix) Alternatively, Respondent may demonstrate its rights to and legitimate interests in the domain name if it can prove:
(i) before any notice to [Respondent] of the dispute, [Respondentís] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [Respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) [Respondent is]making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
UDRP ß 4(c).
THE DOMAIN NAME IS IDENTICAL OR CONFUSINGLY SIMILAR TO A TRADEMARK OR SERVICE MARK IN WHICH THE COMPLAINANT HAS RIGHTS.
a. The Complainant has enforceable rights in the Paul and Shark Yachting® trademark.
(xxx) Complainant has established rights in its PAUL & SHARK YACHTING® trademark by virtue of its federal trademark registrations of the mark. Under U.S. trademark law, a registration of a trademark on the Principal Register in the U.S. Patent and Trademark Office ("PTO") constitutes "prima facie evidence of the validity of the registered mark . . . of the registrantís ownership of the mark, and of the registrantís exclusive right to use the registered mark in commerce . . . ." 15 U.S.C. ß 1115(a) (2000), Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1047 (9th Cir. 1999); Gateway, Inc. v. David Ayers, WIPO Admin. Panel Dec., Case No. D2000-0106 (2000).
(xxxi) The strength of Complainantís trademark rights in the PAUL & SHARK YACHTING® trademark is reinforced by its continuous and exclusive use of the mark since 1977, the fact that the Complainant has invested millions of dollars in advertising and promoting the mark, and the fact that Complainant has realized substantial revenues from sales of products and services under the mark. Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Admin. Panel Dec., Case No. D2000-0275 (2000).
b. The domain names in question are confusingly similar to the Paul and Shark Yachting® trademark.
(xxxii) Upon comparison of the <paulandshark.net> and <paulandshark.org> domain names with the Paul and Shark Yachting® trademark, there can be no question as to the domain namesí confusing similarity, if not virtual identity, with the mark. The domain names differ from Complainantís mark only in the deletion of the work "Yachting" and the addition of the ".net" and ".org." generic top-level domain ("gTLD") extension. These differences do little, if anything, to distinguish Respondentís domain names from Complainantís mark.
(xxxiii) In determining the identity or confusing similarity between an asserted trademark and the accused domain name, it has become clear that the addition of a gTLD extension to a trademark does not create a relevant distinction. Royal Crown Co. v. Bishop Marketing, WIPO Admin. Panel Dec., Case No. D2000-0094 (2000) ("Since the top-level domain Ď.comí has no source-indicating significance, the domain name [DIET-RITE.COM] is essentially identical to Complainantís registered trademark [DIET-RITE]."); Aurora Foods Inc. v. David Paul Jaros, WIPO Admin. Panel Dec., Case No. D2000-0274 (2000) ("The addition of the generic top-level domain (gTLD) name Ď.comí is likewise without legal significance since use of a gTLD is required of domain name registrants."); Brookfield, 174 F.3d at 1055 (MOVIE BUFF and MOVIEBUFF.COM hled to be "for all intents and purposes, identical").
(xxxiv) Based upon the high degree of similarity, if not virtual identity, between Respondent's domain names and Damaís PAUL & SHARK YACHTING® trademark, Internet users and consumers are likely to be confused into believing there is some affiliation, connection, sponsorship, approval or association between Respondent and Dama when in fact no such affiliation or association exists. Slep-Tone Entertainment Corp. v. Sound Choice Disc Jockeys, Inc., Natíl Arb. Forum, Forum File No.: FA#2002000093636 (2000).
(xxxv) Thus, Complainant has established the first required element in this proceeding: each of the contested domain names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Respondent has no rights or legitimate interests in respect of the domain name.
(xxxvi) Complainant commenced use of the PAUL & SHARK YACHTING® trademark in 1977, and registered two U.S. trademarks covering various categories of menís and womenís apparel in 1982 and 1986. These registrations establish that Complainant acquired rights in the mark prior to the registration of the domain names on January 21, 2000, by Respondent. Respondent is not a licensee of Complainant and was at no time authorized by Dama to use the PAUL & SHARK YACHTING® trademark or to register the <paulandshark.org> and <paulandshark.net> domain names. Accordingly, Respondent has no rights or legitimate interests in the domain names.
(xxxvii) Nevertheless, the UDRP sets forth three circumstances, which, if shown by the Respondent, may constitute evidence that the Respondent has rights or legitimate interests in respect of the domain name. UDRP ß 4(c). None of these three circumstances, however, is present in the case at hand.
(xxxviii) The first circumstance exists where "before any notice to [Respondent] of the dispute, [Respondent can show] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services." UDRP ß 4(c)(i).
(xxxix) To Complainantís knowledge, Respondent has made no use of the domain names to date, other than posting a notification on its web sites that domain names in question will in the future resolve to web sites which will purportedly be dedicated to the research of sharks and will, of course, be operated by a researcher named "Paul."
(xl) The second circumstance showing that Respondent may have rights to or a legitimate interest in the domain name occurs when Respondent "(as an individual, business, or other organization) [has] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights." UDRP ß 4(c)(ii).
(xli) As stated above, Complainant has no knowledge of any use of the <paulandshark.net> or <paulandshark.org> names by Respondent, nor that Respondent is commonly known by either of those names.
(xlii) Third, Respondent may establish rights or legitimate interests in the name if it can show it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. UDRP ß 4(c)(iii).
(xliii) While NAKís web sites purport to be the future homes of "shark research,
(xliv) Mr. Hemrajaniís statement to Damaís attorneys that NAK intends to operate a web site that will sell "shark related merchandise and paraphernalia" removes the domain names in question from any non-commercial or fair use status. One can only presume that Respondent registered the domain name for its potential to mislead and divert consumers.
(xlv) Accordingly, Respondent cannot claim to have any rights or legitimate interests in the <paulandshark.org> and <paulandshark.net> domain names.
The Domain Names Have Been Registered And Are Being Used In Bad Faith
(xlvi) The UDRP sets forth four circumstances, the presence of any one of which is indicative of bad faith use and registration of a domain name. UDRP ß 4(b). The circumstances set forth in Section 4(b) are not exhaustive. The facts in this case clearly establish NAKís bad faith in the use and registration of the domain names in question.
(xlvii) Respondentís actions show that it has intentionally attempted to attract, for commercial gain, Internet users to Respondentís web sites by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of Respondentís web site or of a product or service on Respondentís web site.
(xlviii) Since domain names are limited to textual characters (with the exception of foreign language character glyphs which are not relevant here), any stylized trademark that is to serve as the basis of a domain name must be reduced to textual form.
(xlix) An ordinary internet user familiar with Complainantís goods provided under its stylized mark PAUL & SHARK YACHTING® and who seeks information on those goods, may think to form a domain name by simply concatenating the words "Paul," "And" and "Shark" together, and follow it with a customary gTLD. See Awesome Kids LLC v. Selavy Communications, WIPO Admin. Panel Dec., Case No. D2001-0210 (2001). Consequently, an internet user who seeks the Complainantís web site but enters into a browser "PAULANDSHARK" coupled with the gTLD ".org" or ".net" would not be directed to the Complainantís site, but instead to the Respondentís site Ė a site that has no connection to the Complainant.
(l) The user would then likely be confused into thinking that an affiliation of some sort exists between the Complainant and the Respondent when, in fact, no such relationship exists. Id., citing Ticketmaster Corporation v. DiscoverNet, Inc. D2001-0252 (WIPO April 9, 2001), Dollar Financial Group, Inc. v. VQM NET FA 96191 (Nat. Arb. Forum January 25, 2000) (remaining citations omitted).
(li) This confusion would increase significantly were the Respondent actually to offer, in connection with the disputed domain names, goods competitive with those of Complainant. Respondent has informed Complainantís attorneys that it intends to offer "shark related merchandise" on web sites utilizing the disputed domain names.
(lii) Given that Complainantís PAUL & SHARK YACHTING® mark and logo were registered and were used in commerce for decades prior to the date on which Respondent registered the contested domain names, the Respondent was well aware of the Complainantís mark. In spite of that knowledge, Respondent chose to register the contested domain names that incorporated this mark, with the intent of misappropriating, and ultimately financially benefiting, from the ensuing consumer confusion and, to the detriment of the Complainant, from the goodwill inherent in, the Complainantís mark.
(liii) The Respondentís acts in registering the contested domain names constitute bad faith registration.
(liv) Furthermore, upon information and belief, since registering the contested domain names in January 2000, Respondentís only use of those domain names appears to be posting a single web page for each domain name, informing the internet user of a forthcoming "shark research" related web site.
(lv) Under the present facts, the Respondentís continuing retention and minimal use of the contested domain names over a period of twenty months, amounts to passive holding which, while being fully cognizant of the Complainantís trademark right, evidences bad faith use. Various panels have held that passive holding, coupled with knowledge of trademark rights of a complainant in the name being so held, can amount to bad faith use. Liberty Public Limited Company v. Thomas Guerrara FA 95103 (Nat. Arb. Forum August 17, 2000), V & S Vin & Spirit Aktibolag v. Gunnar Hedenlans Peer FA 95078 (Nat Arb. Forum August 9, 2000), and Telstra Corporation Limited v. Nuclear Marshmallows D2000-0003 (WIPO February 18, 2000).
(lvi) Respondentís post-registration activities regarding the contested domain name clearly constitute bad faith use.
(lvii) Furthermore, Respondent has registered the domain name primarily for the purpose of selling or transferring the registration to Complainant at a profit.
(lviii) Bad faith is established where "[Respondent has registered or acquired] the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondentís] documented out-of-pocket costs directly related to the domain name." UDRP ß 4(b)(i).
(lix) In the present case, Complainant offered to compensate Respondent for its demonstrable out-of-pocket costs in return for transferring the contested domain names to Complainant. Respondent informed Complainant that its out-of-pocket costs were "at least $12,000," a preposterous sum. Complainantís offer is corroborated by Complainantís attorneyís letter to Respondent, dated April 2, 2000.
(lx) Respondentís intimation that it would sell its domain name registrations for "at least $12,000" constitutes a clear effort to sell, rent or otherwise transfer the domain name registration for valuable consideration well in excess of any demonstrable out-of-pocket costs related to the domain name. Latham Entertainment v. Shurn, Natíl Arb. Forum, Forum File No.: A0002000094184 (2000); Georgia Gulf Corp. v. Ross Grp., WIPO Admin. Panel Dec., Case No. D2000-0218.
(lxi) Moreover, Respondentís apparent failure to make any use of the domain name other than the offer to sell it to Complainant creates the strong inference that Respondentís primary purpose in registering the domain name was to sell the name to Complainant at a price in excess of out-of-pocket expenses. Educational Testing Service v. TOEFL, WIPO Admin. Panel Dec., Case No. D2000-0044 (2000) ("As there is no evidence on the record that 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 Respondentís purpose for the registration."); Mondich v. Brown, WIPO Admin. Panel Dec., Case No. D2000-0004 (2000) (failure to make good faith use of the domain name creates an inference that purpose was to sell the domain name at a profit); Chernow Communications v. Kimball, WIPO Admin. Panel Dec., Case No. D2000-0119 ∂6.15 (2000) (failure over an extended period to make good faith use of a domain name is evidence of bad faith); accord, Sanrio Co. v. DLI, WIPO Admin. Panel Dec., Case No. D2000-0159 (2000).
(lxii) Based upon the foregoing, it is respectfully submitted that Complainant has satisfied all of the requirements of the UDRP, by proving that:
(a) The domain names, <paulandshark.org> and <paulandshark.net> are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) Respondent has no rights or legitimate interests in respect of the domain name; and
(c) The domain names were registered and are being used in bad faith.
VI. Remedies Requested
(Rules, para. 3(b)(x))
(1xiii) In accordance with Paragraph 4(b)(i) of the Policy, for the reasons described in Section V above, the Complainant requests the Administrative Panel appointed in this administrative proceeding issue a decision that the contested domain names be transferred to the Complainant.
The Respondent has not filed a Response and is in default.
6. Discussion and Findings
According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 Domain Name has been registered and is being used in bad faith.
A. Identical or confusing similarity
The Complainantís registered trade mark is Paul and Shark Yachting. However, the presentation of the Complainantís trade mark is such that prominence in use is given to the Paul and Shark element of the mark which appears in a bold arc at the top of the trade mark. The word yachting appears in a much less clear script in italics under the Complainantís logo. One could almost be forgiven for thinking that the Complainantís main trade mark in use was in fact Paul and Shark. I agree with the Complainant that the Domain Names are confusingly similar to the Complainantís trade mark.
B. Rights or Legitimate Interest of the Respondent
The Respondent has not filed a Response and does not appear to have any rights or legitimate interest in the Domain Names. There is no evidence to back up the story about the shark-related merchandise and the shark researcher called Paul. This appears to be a flimsy excuse fabricated by the Respondent to justify the registration of the Complainantís trade mark in the Domain Names.
C. Bad Faith
Paragraph 4 (b) of the Rules sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including "the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name".
It is the Complainantís case that the Respondent demanded "at least $12,000" for return of the Domain Names. In the absence of a Response from the Respondent, there appears to be no explanation of the facts other than that the Respondent registered the Complainantís trade marks as domain names with an intent to use them to demand unwarranted profit in bad faith.
In the light of the foregoing, the panelist decides that the Domain Names are confusingly similar to the Complainantís trade mark and the Respondent has no rights or legitimate interests relating to the Domain Names which were registered and used in bad faith.
Accordingly, in the light of the above, the panelist requires that the registrations of the Domain Names <paulandshark.org> and <paulandshark.net> be transferred to the Complainant.
Dated: November 14, 2001