WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
P&M Products Limited v. Color
Case No. D2002-0652
1. The Parties
The Complainant is P&M Products Limited ("P&M" or "Complainant"), a limited liability company having its principal place of business and registered office at 23-25 Bell Street, Reigate, Surrey, England RH2 7AD, United Kingdom.
The Respondent is Color, located at No. 24866, West Street, ShaTou Zone, Chang Dong, Dong, China ("Respondent").
2. The Domain Name and Registrar
The domain name at issue is <colorworkshop.com> (the "Domain Name"). The registrar of the Domain Name is Network Solutions, Inc (the "Registrar").
3. Procedural History
A Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy (the "Policy") and the Rules for the Uniform Domain Name Dispute Resolution Policy (the "Rules") was received by the WIPO Arbitration and Mediation Center (the "Center") by e-mail on July 12, 2002. The hard copy of the Complaint and its annexes was received by the Center on July 17, 2002.
On July 16, 2002, the Center sent an Acknowledgment of Receipt of Complaint to the Complainant. On the same day, a Request for Registrar Verification was sent to the Registrar requesting inter alia verification of registration data relating to the Domain Name, the Respondentís registration and contact details so as to allow the Center to comply with the requirements of paragraphs 2(a) and 4 of the Rules.
On July 19, 2002, the Registrar responded, confirming that the Domain Name was registered with it, that the Respondent was the current registrant of the Domain Name and advising that the Respondent had entered into the Registrarís Service Agreement in English.
Thereafter, upon the Complaint having been verified by the Center as complying with the formal requirements of the Policy, the Rules and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), and the appropriate fee for a one person administrative panel having been paid by the Complainant, a Notification of Complaint and Commencement of Administrative Proceeding was sent to the Respondent by courier, facsimile and email on July 23, 2002, advising that the Response was due within 20 calendar days, ie, by August 11, 2002. Copies were also sent to the Complainant, the Registrar and ICANN.
No Response was received by August 11, 2002. On August 12, 2002, the Center advised the Respondent that it was in default in failing to file its Response by the deadline specified in the aforesaid notification.
The Center then appointed Richard Tan, the undersigned, as the panelist in this case and sent to him a Request for Statement of Acceptance and Declaration of Impartiality and Independence. On August 19, 2002, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence, the Center notified the parties of the appointment of the undersigned as the Sole Panelist.
Upon reviewing the documents received by the Panel, the Panel noted that the Complainant had in its Complaint identified the registrar with whom the Domain Name was registered as "HiChina Web Solutions Limited", whilst the Center had ascertained that the registrar of the Domain Name was in fact Network Solutions, Inc. The latter had in response to the Centerís Request for Registrar Verification also confirmed that it was the registrar of the Domain Name.
As the registrar ought to be correctly identified for the purposes of the Complaint, and in particular, as required by Paragraph 4(k) of the Policy and Paragraph 3(b)(xiii) of the Rules, for the purpose of determining the jurisdiction to which the Complainant has agreed to submit with respect to any challenges to the decision of the Panel (as set out in paragraph 15 of the Complaint), the Panel then issued, pursuant to the powers vested in it under Paragraph 12 of the Rules, an Administrative Panel Procedural Order No. 1 on September 2, 2002, inviting the Complainant to amend the references to the Registrar in the Complaint to Network Solutions, Inc.
The Complainant duly submitted an amendment to the Complaint to the Center, copied to the Respondent, on September 4, 2002 to reflect that the Registrar was indeed Network Solutions, Inc.
The Panel regards the amendment as a formal modification of the Complaint that would not cause prejudice to the Respondent. With this amendment, this Panel was satisfied that the formal requirements of the administrative proceeding had been met.
4. Factual Background
The Complainant is a manufacturer and distributor of childrenís colouring products. Since 2000, it has used the marks "Colour Workshop" and "Color Workshop" in connection with the marketing and promotion of its colouring products, which are sold worldwide through various retail channels, including the Internet.
The Complainant holds trade mark registrations and pending applications for "Colour Workshop" and "Color Workshop" in various countries throughout the world, including the USA, Europe and China. These marks have been secured in various classes, including in respect of arts and craft paint kits, paint brushes, pens, pencils, crayons and drawing instruments, stencils, drawing pads greeting cards, pictures, posters ("the Subject Marks").
The Complainant has also registered various domain names incorporating the Subject Marks including:
<color-workshop.com>, <color-workshop.co.uk>, <colorworkshopusa.com>, <colorworkshop.co.uk>, <colorworkshop.biz>, <colorworkshop.info>, <colorworkshop.net>, <colorworkshop.org>, <colorworkshop.tv>, <colorworkshop.ws>, <colour-workshop.com>, <colour-workshop.co.uk>, <colourworkshop.com>, <colourworkshop.co.uk>.
These domain names were registered between March 1999 and April 2002.
The Respondent registered the domain name <colorworkshop.com> on December 5, 2001. The Complainant asserts that it had not at any time licensed or otherwise permitted the Respondent to incorporate its "Color Workshop" trade mark as part of the Domain Name.
The Respondent does not appear to have made any active use of the Domain Name.
The Complainant has also submitted as part of its Complaint evidence of its correspondence with the Respondent relating to the registration of the Domain Name.
On January 21, 2002, the Complainant sent an e-mail to the Respondent expressing interest in acquiring the Domain Name from the Respondent, but did not receive any response to this e-mail.
The Complainant appears to have carried out investigations in China and ascertained that there was no evidence that the Respondent was ever known by or had ever carried on business by reference to the name "Color Workshop" prior to its registration of the Domain Name. Apart from a document in Chinese containing the Respondentís contact details and identifying a Mr. Luo as the Respondentís contact person, the Complainant states that no other information is known about the Respondent.
On March 15, 2002, the Complainant sent to Mr. Luo an e-mail enquiring if the Respondent was interested in transferring the Domain Name to the Complainant. A Mr. Law purportedly on behalf of the Respondent replied on April 11, 2002, by email stating:
"Ö. We are very interested for transfer the domain name registration request. We have not any idea in this time. We will take the meeting for decide asap. If you have any suggestion, please let me know."
In response to this e-mail, the Complainant offered a sum of $100 to cover the Respondentís out-of-pocket expenses and administration costs for the transfer of the Domain Name, but there was no response to this offer. The Complainant then sent to the Respondent a cease and desist letter on May 11, 2002. On or about June 28, 2002, Mr. Law sent an email on behalf of the Respondent to the Complainant stating:
"Very sorry to advise you, we are deciding to reject your request in this time. If you have a problem, please let me know."
The Respondent has not filed a Response to the Complaint or otherwise participated in these proceedings.
5. Partiesí Contentions
A. Complainantís contentions
i. The Complainant contends that the Subject Marks are widely known and have a good reputation. The Complainant further contends that they have become distinctive as a result of the Complainantís widespread use, advertising and promotion of the marks.
ii. The Complainant argues that as the Domain Name is identical with or confusingly similar to the Subject Marks there is a considerable risk that the average internet user would wrongly assume that some kind of business relationship or other affiliation exists between the Domain Name, Domain Name holder (the Respondent) and the Complainant, when in fact none exists.
iii. The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name is not known to the Complainant, and has not been licensed or otherwise permitted to register the Domain Name.
iv. The Complainant further contends that the Respondent registered and/or is using the Domain Names in bad faith on account of the following:
- it falsely represented in its registration agreement that its registration of the subject Domain Name did not infringe or violate the rights of any third party, when the use of the Domain name infringes the registered trademarks of the Complainant;
- the Respondent has failed to maintain accurate contact information for the registration;
- there is no evidence of the Respondentís use of, or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods and services;
- based on the correspondence between the Complainant and the Respondent, it would be reasonable to conclude that the Respondent has deliberately registered the Domain Name with the long-term intention of misleading customers to the Respondentís website for commercial gain, and/or for the primary purpose of selling it for profit.
- Although the Respondent has not made a demand for any sum of money for the transfer of the Domain Name, the Complainant contends that the Respondentís responses are highly suggestive that it will do so at some stage. Even if that proves not to be the case, for the Respondent to do nothing and simply "block" the Domain Name and the Complainantís access to it, is evidence of bad faith.
B. Respondentís contentions
The Respondent has not submitted a Response. The Respondentís default, however, does not lead to an automatic ruling in favour of the Complainant, as the burden lies on the Complainant to at least establish a prima facie case that it is entitled to a transfer of the domain name in accordance with the Policy.
6. Discussion and Findings
Under the Policy, the Complainant has the burden of proving that each of the three elements in paragraph 4(a) of the Policy thereof is satisfied viz that:
(i) the Respondentís domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the Respondentís domain name has been registered and is being used in bad faith.
(i) Identical or Confusingly Similar
The Complainant has furnished prima facie evidence that it is the owner of a number of trade marks and pending trade mark applications for "Color Workshop" and "Colour Workshop" as set out above, and accordingly has rights in the same.
This Panel accepts that the Domain Name is identical to the Complainantís "Color Workshop" trade marks and confusingly similar to the Complainantís "Colour Workshop" trade marks. The Domain Name in question differs from the latter marks only on account of the use of the American spelling of the word "color", as opposed to the common or standard English form, "colour". The inclusion of ".com" in the Domain Name is of no significance.
The Panel accordingly finds that paragraph 4(a)(i) of the Policy has been satisfied.
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name
The Complainant is required under paragraph 4(a)(ii) to prove that the registrant has no rights or legitimate interests in the domain name. The onus is initially on the Complainant to establish a prima facie case, and once this has been done, the onus shifts to the respondent to prove the contrary. See Lucasfilm Ltd and Lucas Licensing Ltd v. Cupcake City and John Zuccarini, WIPO Case No. D2001-0700.
The Complainant asserts in this regard that the Respondent has no rights or legitimate interests in the Domain Name, as the Respondent is not known to the Complainant, and it has not licensed or otherwise permitted the Respondent to register the Domain Name.
In the absence of a Response, this Panel is entitled to and does accept as true the factual averments of the Complaint for the purposes of these proceedings: Talk City Inc. v. Robertson, WIPO Case No. D2000-0009 (February 29, 2000) (noting that Rule 14(b) provides that the Panel is entitled to "draw such inferences" from the Respondentís failure to comply with the rules "as it considers appropriate" and that under Rule 15(a), the Panel is to render its decision on the basis of the statements and documents submitted).
Nevertheless, even in the absence of a Response, this Panel remains obliged to consider whether any of the (non-exhaustive) circumstances provided in paragraph 4(c) of the Policy are present to support a finding of the Respondent having rights or legitimate interests in respect of the Domain Name, namely:
(i) before any notice to the Respondent of the dispute, the 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the 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.
If any of the above circumstances are established, the Registrant can be said to have rights to or legitimate interests in the domain name for the purposes of Paragraph 4(a)(ii) (see Digital Vision, Ltd v. Advanced Chemill Systems, WIPO Case No. D2001-0827), in which event, the Complaint must be denied.
There is no evidence which suggests that before any notice to the Respondent of the dispute, the Respondent had used or made 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. Paragraph 4(c)(i) is not established.
Since the Respondent has not filed a Response, the Panel would infer that the Respondent has no trademark or service marks identical to "Color Workshop" (See Natíl Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum February 11, 2002)). There is also no evidence to suggest that the Respondent has been commonly known by the domain name, even if it has not acquired any trademark or service mark rights. Accordingly, paragraph 4(c)(ii) is not established.
Furthermore, the Complainant avers that the Domain Name resolves to a "placeholder" website. Mere passive holding of a website does not amount to a "legitimate noncommercial or fair use of the domain name" within the meaning of paragraph 4(c)(iii) of the Policy: See Ziegenfelder Co. v. VMH Enterprises, Inc. WIPO Case No. D2000-0039 (March 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in said domain name); see also Ritz-Carlton Hotel v. Club Car Executive, WIPO Case No. D2000-0611 (September 18, 2000) (finding no legitimate rights or interests when Respondent has not used the domain names in connection with any type of bona fide offering of goods and services). Paragraph 4(c)(iii) is therefore also not established.
Based on the information available to the Panel in the Complaint, there is nothing to suggest that the Respondent has any rights or legitimate interest in the Domain Name. In the premises, the Panel finds that the Complainant has sufficiently discharged the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name, and that accordingly, paragraph 4(a)(ii) of the Policy has been satisfied.
(iii) Registration and Use of the Domain Name in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, further demonstrate that the Domain Name must have been registered and used in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which "if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith", namely:
(i) circumstances indicating that you [the Respondent] have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
In relation to paragraph 4(b)(i), the Respondent had in its e-mail of April 11, 2002, stated that it was "very interest" (sic) in transferring the Domain Name to the Complainant and would revert after having internally discussed the matter (but did not do so). In spite of this keen interest in transferring the Domain Name, the Respondent indicated it was not at that time agreeable to the Complainantís offer of $100 to cover the Respondentís administration fees in respect of the transfer of the Domain Name, but further suggested that if the Complainant "had a problem", it should "let [the Respondent] know".
Although the Respondent has not named a price for the transfer of the Domain Name, an inference might be drawn that there was some intent on the Respondentís part to induce the Complainant to offer more money for the Domain Name particularly when viewed in the context of the following facts, namely, that prior to the registration of the Domain Name, the Complainant had secured the Subject Marks in various countries (including China) and had also operated a website to market its products by reference to the Subject Marks under "www.colourworkshop.com", and that following registration of the Domain Name, the Respondent did not establish an active website.
Against these factors, the Panel is conscious that the Domain Name might not be regarded as particularly distinctive since it comprises a combination of generic English words. Panels have, where the domain name in question has not been particularly distinctive, declined to hold that the respondent has acted in bad faith: see, for example, Rusconi Editore SpA v Gfa Studioimmagine Di Ingegnieri Giuseppe, WIPO Case No. D2001-0759.
Nevertheless, given the facts set out above, and significantly, the fact that the Respondent has not filed a Response in answer to the Complainantís allegations, this Panel is of the opinion that appropriate inferences may be drawn against the Respondent. The Panel accordingly finds, on the balance of probabilities, that the Respondent has acted in bad faith. It is probable that the Respondent registered the Domain Name primarily for the purpose of transferring the same to the Complainant for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the Domain Name. Furthermore, as pointed out above, the Respondent has been passive in its holding of the Domain Name. In certain circumstances, inactivity by the Respondent may amount to the domain name being used in bad faith: Telstra Corporation Ltd v Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel thus finds that the Domain Name was registered and used in bad faith in contravention of paragraph 4(a)(iii) of the Policy.
The Panel concludes (a) that the Domain Name <colorworkshop.com> is identical with and confusingly similar to the Complainantís trade marks, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, the Panel orders that the Domain Name be transferred to the Complainant.
Dated: September 6, 2002