WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jeffrey S. Thompson d/b/a The Wedding Planner v. Weddingchannel.com, Inc.
Case No. D2002-0086
1. The Parties
The Complainant in this administrative proceeding is Jeffrey S. Thompson d/b/a The Wedding Planner whose contact information is P.O. Box 26498, Rochester, New York 14626, United States of America.
The Respondent is Weddingchannel.com, Inc. whose postal mailing address is 800 South Figueroa Street, Suite 700, Los Angeles, CA 90017, United States of America.
2. The Domain Names and Registrar
The domain names at issue are <weddingplanner.com> and <weddingplanner.net>, which are registered with Network Solutions in the United States of America.
3. Procedural History
A Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on January 28, 2002. On February 13, 2002, the WIPO Center determined that the Complaint was in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy (the "Supplemental Rules"). At that time, the WIPO Center notified the Respondent of the commencement of this administrative proceeding and set a deadline for Response of March 5, 2002. The WIPO Center received the Response on March 6, 2002. The Response was considered timely filed by the WIPO Center.
On April 30, 2002, the WIPO Center notified the parties of the appointment of the Panelists and the projected decision date. Taking into consideration the Panelist nominations made by the parties, the WIPO Center appointed Frederick M. Abbott and Frank L. Politano to serve as Panelists and Roderick M. Thompson to serve as Presiding Panelist. All three Panelists submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the WIPO Center. The Projected Decision Date, as determined by the WIPO Center and transmitted to the parties on April 30, 2002, was May 14, 2002.
The Complainant filed a supplemental filing which was forwarded by the WIPO Center to the Administrative Panel on May 6, 2002. The Administrative Panel was informed of the WIPO Centerís receipt of this supplemental filing and was given sole discretion to determine whether to admit and consider the supplemental filing in rendering its decision. The Panel elected to review Complainantís additional statement, and, based on the nature of the material contained therein, concluded that the supplemental filing did not contain any new factual information or special circumstances that would justify its consideration. The Panel will therefore proceed to a decision without considering Complainantís additional statement. Due to the time needed to examine the supplementary filing, the projected decision date was revised to May 21, 2002.
4. Factual Background
Complainant has provided evidence that it is the owner of a U.S. trademark registration for the mark WEDDING PLANNER for a magazine containing information and advertisements of interest to persons planning weddings and honeymoons. Complainantís trademark was initially registered on the Supplemental Register in 1991, and was subsequently registered on the Principal Register in 1997. Complainant has apparently published a magazine under the WEDDING PLANNER trademark since 1988 and offers the magazine on-line at <weddingplannermagazine.com>.
The Registrant of the disputed domain names is Wedcom, Inc. According to the Response, Wedcom, Inc. has merged with Della.com, Inc. with the resulting corporation being named WeddingChannel.Com, Inc.
Accordingly, WeddingChannel.Com, Inc. is the Respondent in this proceeding. Respondent is the owner of U.S. trademark registrations for the marks WEDDING CHANNEL and WEDDINGCHANNEL.COM, and operates an Internet site providing a wedding planner and other related wedding planning services.
5. Partiesí Contentions
Complainant asserts that the domain names <weddingplanner.com> and <weddingplanner.net> are identical or confusingly similar to Complainantís registered trademark WEDDING PLANNER.
Complainant alleges that Respondent has registered and used the domain names in bad faith because 1) Respondent was a competitor of Complainantís at the time it registered the domain names and therefore Respondent most likely knew of Complainantís mark; 2) Respondent had constructive notice of Complainantís registered trademark; 3) Respondent does not use the domain names to offer or sell goods, but merely uses them to divert potential consumers to its website located at <weddingchannel.com>; 4) Respondentís registration of the domain names prevents Complainant from using these domain names, which correspond to Complainantís trademark; 5) Respondentís use of the domain names is likely to confuse the public, interferes with a competitorís business, and constitutes a pattern of conduct that interferes with his competitorís business; and 6) there is no reason for Respondent to be using the domain names other than to prevent Complainant from registering names corresponding to his mark and to divert potential consumers.
Further, Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names because 1) Respondent is commonly known by the name Wedding Channel, not Wedding Planner; 2) Respondent is using the domain names for commercial gain to divert Complainantís customers to its website and therefore Respondent is unable to argue use or demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services before advance notice of the dispute; 3) Respondent had actual or constructive notice of this dispute prior to the filing of the dispute because it had actual or constructive notice of Complainantís trademark; and 4) Respondent does not offer goods or services at the disputed domain names, but merely uses them to divert Internet users to the website located at <weddingchannel.com>.
Respondent does not dispute that the domain names are identical or confusingly similar to a trademark in which Complainant has rights.
Respondent asserts that the term wedding planner is used as a generic term for people and/or companies to provide wedding planning services. Respondent searched for the phrase wedding planner on the Internet and found 122,000 hits for this phrase. Further, Respondent notes that Complainantís trademark was initially registered only on the Supplemental Register, indicating that the PTO did not find the mark eligible for registration on the Principal Register because it was descriptive of Complainantís goods. According to Respondent, the PTO has consistently required other entities seeking to register marks including the term "wedding planner" to disclaim that term or to obtain registration on the Supplemental Register. Respondent argues, therefore, that the PTO finds the phrase "wedding planner" to be descriptive of goods and services related to wedding planning.
Respondent contends that it has a legitimate interest in the domain names because Respondent is simply using a common phrase that describes its services. According to Respondent, its core business is providing an on-line wedding planner and offering wedding planning services at its website. Respondent began offering its services in 1997 and claims that it is now one of the top two wedding planning sites on the Internet.
Respondent claims that it is making fair use of the term "wedding planner" to describe its services and that it consequently has a legitimate interest in the domain names. Respondent claims that Internet users who are searching for an on-line wedding planner and who enter either of the disputed domain names into their browser will be directed to Respondentís website which provides an on-line wedding planner. According to Respondent, United States courts have consistently held that the descriptive fair use defense applies to the registration of descriptive or generic terms as domain names.
Further, Respondent argues that it has a legitimate interest in the names because its use of the names to direct Internet users to its wedding planning website constitutes a bona fide offering of goods and services.
Respondent denies Complainantís allegations of bad faith registration and use. Respondent denies that its knowledge, whether constructive or actual, of Complainantís wedding planner mark constitutes bad faith. Respondent argues that constructive or actual knowledge of the mark does not preclude domain name registrants from registering domain names for use in a descriptive sense, particularly where the trademark is not famous. Respondent notes that it has not offered to sell the domain names to Complainant and instead actively uses the disputed domain names in connection with its wedding planning website.
Respondent claims that it is not using the domain names to trade on Complainantís goodwill. Further, Respondent argues that its use of the domain names is not likely to cause confusion since Respondent does not copy Complainantís trade dress or refer to Complainantís magazine on its website.
6. Discussion and Findings
A. Applicable Rules and Principles of Law
Paragraph 15(a) of the Rules sets out the principles this Panel is to use in rendering its decision: "A Panelist shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights;
(ii) that the Respondent has no legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and used in bad faith.
B. Application of Paragraph 4(a) to the Facts
(i) Registration and Use in Bad Faith.
Paragraph 4(a)(iii) of the Policy requires the Complainant to show that the domain name has been registered and used in bad faith. To satisfy this requirement Complainant made multiple allegations as set forth in section 5(A) above. Each allegation is addressed below.
(1) Actual or Constructive Knowledge.
Complainant alleges that Respondent has registered and used the domain names in bad faith because Respondent was a competitor of Complainantís at the time it registered the domain names and therefore Respondent most likely knew of Complainantís mark. Alternatively, Complainant argues that Respondent had constructive notice of Complainantís mark because it is a registered trademark. Respondent does not refute that it had either actual or constructive knowledge. However, mere knowledge of a trademark registration does not constitute bad faith where, as here, the term is used descriptively (if not generically).
Since the expression "wedding planner" appears to be descriptive of Respondentís business, it is reasonable to accept Respondentís assertion that Respondent registered the domain names as a descriptive means of identifying Respondentís services. (The descriptive (if not generic) nature of the term "wedding planner" is evidenced, inter alia, by the apparently common disclaimer of that term in other PTO registrations.)
(2) Merely a Redirect
Complainant asserts that Respondent has acted in bad faith because it does not use the domain names to offer or sell goods, but merely uses them to divert potential consumers to its website located at <weddingchannel.com>. Use of a domain name to redirect consumers is a common practice. It does not necessarily evidence bad faith. In this proceeding, the Panel determines that Respondentís use of the alleged mark in the domain names is descriptive and not wrongful. The redirection does not therefore evidence bad faith.
(3) Preventing Complainant from Registering Domain Names Corresponding to Its Trademark.
The Policy sets forth examples, in paragraph 4(b), of circumstances that demonstrate Respondentís registration and use of the domain name in bad faith. One such circumstance is registration of the domain name in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct. Complainant alleges that Respondentís registration of the domain names prevents Complainant from registering domain names that correspond to Complainantís trademark. Since the Panel determines that Respondent has engaged in descriptive (if not generic) use of the alleged mark in the domain names, evidence is lacking that Respondent registered the domain names in order to prevent Complainant from reflecting its mark in the domain name.
(4) Confusion, Interference, and Diverting Consumers.
Complainant alleges that Respondentís use of the domain names is likely to confuse the public and interfere with a competitorís business. Complainant also claims that there is no reason for Respondent to be using the domain names other than to prevent Complainant from registering names corresponding to his mark and to divert potential consumers. However, Complainant does not offer any evidence to support these allegations. Instead, Respondentís argument that Respondent registered the names as descriptive of its offerings is plausible as the names seem to accurately depict Respondentís business. Respondent is using the expression "wedding planner" not as a mark but in good faith to describe the services it offers.
Although Complainant has alleged bad faith, Complainant has not provided sufficient proof that Respondent has registered and used the domain name in bad faith. The Panel therefore finds that Complainant has not carried its burden of proving bad faith registration and use of the domain names.
(ii) Respondentís Rights and Legitimate Interests in the Domain Name.
To succeed in its request for transfer, Complainant must show that Respondent does not have any rights or legitimate interest in the contested domain names. In an effort to satisfy this requirement, Complainant has made multiple allegations refuting Respondentís legitimate interests. Each of these is addressed separately below.
(1) Respondent Is Commonly Known by the Name Wedding Channel and Not Wedding Planner.
The Respondent need not be commonly known by the domain name in order to have a legitimate interest. In this case, Respondent has asserted a legitimate interest resulting from its descriptive use of a common term. Respondent is using the term "wedding planner" to describe its on-line wedding planner and wedding planning services. Thus, as Respondent notes, Internet users who are searching for an on-line wedding planner and who enter either of the disputed domain names into their browser will be directed to Respondentís website which provides an on-line wedding planner.
(2) Diverting Customers.
Complainant alleges that Respondent lacks a legitimate interest because Respondent is using the domain names for commercial gain to divert Complainantís customers to its website. As noted above, however, there is no evidence that Respondent intended to divert Complainantís customers to its website.
(3) Actual or Constructive Notice of the Dispute.
Complainant alleges that Respondent had actual or constructive notice of this dispute prior to commencement of this proceeding because it had actual or constructive notice of Complainantís trademark. Again, however, mere knowledge of a trademark registration, without more, is not sufficient to repudiate a legitimate interest. Further, knowledge of a trademark registration does not necessarily constitute knowledge of a "dispute" as that term is used in Section 4(c)(i) of the Policy.
(4) Mere Redirect.
Finally, Complainant asserts that Respondent does not offer goods or services at the disputed domain names, but merely uses them to divert Internet users to the website located at <weddingchannel.com>. Here, the redirect links users to Respondent's website offering bona fide wedding planning services. As discussed earlier, redirection is a common practice among domain name registrants. The Panel determines that Respondent is using a descriptive (if not generic) term in the domain names. Under the circumstances, Respondent is entitled to redirect Internet users to a single website that consolidates its commercial activities.
Respondent has asserted a plausible legitimate interest in the names and Complainant has not offered sufficient evidence to refute Respondentís claim. Thus the Panel finds that Complainant has not carried its burden of showing that Respondent does not have any right or legitimate interest in the domain names.
(iii) Identical or Confusingly Similar to Trademark.
Given the Panelís conclusion that Complainant has not met its burden in relation to showing the existence of bad faith and an absence of legitimate interests under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy, it is not necessary for the Panel to determine whether the term "wedding planner" as used by Complainant is generic or whether the domain names are confusingly similar to a trademark in which the Complainant has rights.
This Panel decides that Complainant has not shown that the Respondent registered the names in bad faith and that Respondent lacks legitimate interest in the names. Accordingly, pursuant to Paragraph 4(i) of the Policy, this Panel requires that that the registration of the domain names <weddingplanner.com> and <weddingplanner.net> remain with the Respondent.
Roderick M. Thompson
Frank L. Politano
Frederick M. Abbott
Dated: May 21, 2002