WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Alberto-Culver Company v. Pritpal Singh Channa

Case No. D2002-0757

 

1. The Parties

The Complainant is Alberto-Culver Company, Melrose Park, Illinois, United States of America.

The Respondent is Mr. Pritpal Singh Channa, Ilford, Essex, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Names and Registrar

The domain names in issue are <staticguard.com> and <staticguards.com> (hereafter the "domain names").

The domain names were registered with Easyspace, Ltd., United Kingdom of Great Britain and Northern Ireland.

The domain names were registered on February 24, 2000, (the first domain name) and February 19, 2000, (the second domain name).

 

3. Procedural History

(1) The Complaint in this case was filed in email form on August 14, 2002, and in hardcopy on August 20, 2002.

(2) The WIPO Arbitration and Mediation Center ("the Center") has found that:

- The Complaint was filed in accordance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules");

- Payment for filing was properly made;

- The Complaint complied with the formal requirements;

- The Complaint was properly notified in accordance with the Rules, paragraph 2(a);

- The Respondent requested an extension of time to file a Response, which the Center granted;

- A Response to the Complaint was filed within the amended deadline;

- The Administrative Panel was properly constituted.

As Panelist, I accept these findings.

(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

(4) No extensions have been granted or orders issued in advance of this decision.

(5) The language of the proceedings is English.

 

4. Factual Background

A. The Complainant and its mark

The Complainant is the owner of 29 trademark registrations and 3 trademark applications for the mark STATIC GUARD. These registrations and applications cover 28 countries, plus the Benelux countries and all of the countries of the European Union. By virtue of its European Union registration, protection of the mark extends to each of the 15 European Union countries, including the United Kingdom.

Complainant first started using its STATIC GUARD mark in 1976, in the U.S. and has since expanded its use to a number of countries throughout the world, including Canada, Saudi Arabia, Egypt, and Hong Kong. Sales of goods under the mark last year are in excess of $13 million and sales since inception have exceeded $200 million. Complainant has spent approximately $1.5 million in each of the last four years to promote and advertise its mark to ensure customer recognition of its valuable STATIC GUARD mark. To date, Complainant has spent over $30 million to advertise and promote its STATIC GUARD mark.

B. The Respondent

The Respondent is an individual who asserts that he operates a security-related business.

C. The Use of the Domain Names

The domain names resolve to a placeholder site provided by the Registrar, indicating that the names have been registered.

 

5. Partiesí Contentions

A. The Complainantís assertions

The Complainant asserts that the Respondentís domain names are identical or confusingly similar to the Complainantís mark. Specifically, the Complainant asserts:

(1) The Respondent's domain name registrations (disregarding the gTLD), STATICGUARD and STATICGUARDS, are identical or virtually identical to Complainantís STATIC GUARD trademark.

(2) The domain names are presented as the slavish, or at least quasi-slavish, reproduction of Complainantís trademark STATIC GUARD. See Bodegas Vega Sicilia, S.A. v. www.portaldedominios.com, WIPO Case No. D2000-1026.

The Complainant asserts that the Respondent has no legitimate interests or rights in the domain names. Specifically, the Complainant asserts:

(1) The only "content" on the sites accessed at <staticguard.com> and <staticguards.com> is an acknowledgement by Respondentís registrar that the domain names have been registered. The sites are not active in the bona fide offering of goods or services and it does not appear that they have ever been active in connection with any bona fide activity by the Respondent. While Complainant concedes that a registrant should be given sufficient time to make preparations to use a new domain name registration, the failure to make such preparations for almost 2 years after registration of the domain names at issue, is indicative of Respondentís bad faith registration and use. See Chernow Communications v. Jonathan D. Kimball, WIPO Case No. D2000-0119. Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384.

(2) The continued ownership of a site after Respondent has abandoned the site for its own business purposes constitutes a "passive holding which is evidence of bad faith." See State Automobile Mutual Insurance Company v. Lr3 Enterprises, Inc., NAF Claim No. FA0012000096256 citing Cruzeiro Licenciamentos Ltda. v. Sallen Enterprises and J.D. Sallen Enterprises, WIPO Case No. D2000-0715 and DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232. In the instant case, it appears that Respondent has held the domain name for almost 2.5 years, without ever making any legitimate use of the name STATIC GUARD (or STATIC GUARDS) or the domain names <staticguard.com> or <staticguards.com>. Therefore, it is a reasonable conclusion that Respondent registered, and is using and holding the domain names for some other bad faith reason (e.g., to profit from the sale of the domain names to another party and/or to eventually use the site to "catch" internet users looking for Complainant and/or Complainantís STATIC GUARD product).

(3) As alluded to above, Respondent has no legitimate rights in and to the terms STATIC GUARD or STATIC GUARDS (or any variations thereof) and has not had any legitimate rights. There is no indication that Respondent operates under the trade name STATIC GUARD/ STATIC GUARDS, or any formatives thereof, nor is Respondent known by STATIC GUARD/ STATIC GUARDS or STATICGUARD.COM/ STATICGUARDS.COM. Respondent does not use any trademarks that contain STATIC GUARD or any formatives thereof and it does not appear that Respondent has sought trademark registrations for any trademark including the term. Rather, Respondent has not promoted any goods or services under or in connection with the name STATIC GUARD, STATIC GUARDS and/or the domain names <staticguard.com> and <staticguards.com>.

The Complainant asserts that the Respondent registered the domain names and is using them in bad faith. Specifically, the Complainant asserts:

(1) The mere fact that the Complainantís mark is composed of two common words is not indicative that the mark is not entitled to protection from cybersquatting. See, e.g., Red Bull GmbH v. Tony Marinelli, WIPO Case No. D2001-0522 (Complainantís rights in RED BULL were sufficient to have the domain names including "red bull" transferred to it); J. Crew International, Inc. v. crew.com, WIPO Case No. D2000-0054 (Complainantís rights in the generic term "crew" were sufficient to entitle it to a transfer of <crew.com> from Respondent); TPI Holdings Inc. v. JB Designs, WIPO Case No. D2000Ė0216 (Complainantís rights in the trademark YACHT TRADER entitled it to have <yachtrader.com> and yachtrader.net transferred to it); Corinthians Licenciamentos LTDA v. David Sallen, Sallen Enterprises, and J. D. Sallen Enterprises, WIPO Case No. D2000-0461 (Complainant had significant rights in the term CORINTHIANS to succeed in its claim to <Corinthians.com>).

(2) The Complainantís STATIC GUARD products are available in a number of countries. Thus, it is virtually impossible that Respondent was not aware of Complainantís famous STATIC GUARD mark and its rights in connection with the STATIC GUARD mark. Further, Respondent had constructive notice of Complainantís trademark rights prior to filing the domain name registrations by virtue of Complainantís application for STATIC GUARD in the European Union. This filing predates the subject domain name registrations by more than one year. Since the United Kingdom, the Respondentís domicile, is part of the European Union, the Complainantís EU trademark registration grants Complainant rights in the U.K. Thus, Respondent had, at least, constructive notice of Complainantís rights and thus, its registrations were improper and in bad faith (Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384).

(3) In light of the above, it appears likely that the Respondent was aware of Complainantís rights in STATIC GUARD at the time the Respondent registered its domain names. Thus, it appears likely that the Respondent submitted its domain name registrations with full knowledge that the domain names infringed on the valuable intellectual property rights of another. These actions were in violation of the Respondentís domain name registration agreement and also constituted bad faith registration on the part of the Respondent.

(4) It has been frequently held that passive holding of a web site can also constitute a bad faith "use." Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Accordingly, the Complainant submits that the Panel should order that the domain names be transferred to the Complainant.

B. The Respondentís assertions

The Respondent asserts that his domain names are not identical or confusingly similar to the Complainantís mark. Specifically, the Respondent asserts:

(1) The nature of the product for Complainantís trademark registration is for a "spray for eliminating static electricity." It would therefore only have the inherent claim to stop others using this style or similar style in the field of "spray for eliminating static electricity" and closely related activities as defined in their various registrations.

(2) By virtue of its restricted registrations of the trademark in various jurisdictions the Complainant is attempting to extend its claims by common law to other activities without proving secondary meaning or inherent distinction.

(3) The domain names and trademarks are not confusing and the restricted trademark registrations do not extend a common law trademark right to the Complainant extending over generic common words in everyday language. The domain names registered are based on common words in everyday usage in the English language and not subject to proprietary trademark registrations and any attempts to secure this claim must fail.

The Respondent asserts that he has a legitimate interest or rights in the domain names. Specifically, the Respondent asserts:

(1) He registered the domain name <staticguards.com> on February 19, 2000, and the domain name <staticguard.com> on February 24, 2000, for his own use in the field of personnel and premises security. During the year 2000, he had discussions with SD Partners a computer development company who were requested to assist with the project management in the development of a security website.

(2) The website is in the process of development. He engaged a computer software and web site development company, HOBEKA, in 2001, to develop the staticguard website. A draft version of the front page was supplied to the Respondent in December 2001. He paid HOBEKA a partial advance and this is confirmed in their invoice on account submitted to the Respondent. Further development work on this project is still ongoing.

The Respondent asserts that he did not register the domain names or use them in bad faith. Specifically, the Respondent asserts:

(1) He was not aware of the Complainantsí product or trademark until he received the Complaint. The Complainant considerably overstates the "fame" value of the restricted mark and no evidence has been submitted to establish that the Respondent should have been aware of their mark or product by way of supplying details of national advertising or extensive market share in the United Kingdom.

(2) Since registering the domain names the Respondent has taken steps to have a website developed to promote the "Staticguard.com" security business.

(3) He has incurred expenditure and has set up a security company, namely Business Services Ltd., which is using the trade style "staticguard.com" in the promotion of its static guards for protecting property and personnel.

(4) He has never approached the Complainant or any other party with a view to selling or transferring his domain name registrations. The Complainant has not provided any evidence that the Respondent approached any one to sell, transfer or market his registrations.

(5) He does not sell or propose to sell anything remotely similar to the Complainantsí product and registered trademarks. Therefore he would derive no benefit from "catching" Internet users looking for the Complainantís product even if they did happen to come to his site.

Accordingly, the Respondent submits that the Panel should deny the Complainantís requested remedy.

 

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers on August 26, 1999, ("the Policy") applies to domain name registrations made in the <.com> namespace. Paragraph 4(a) of the Policy requires the Complainant to make out three elements to succeed in an administrative proceeding initiated under the Policy:

1. The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar (paragraph 4(a)(i)); and

2. The Respondent has no rights or legitimate interests in respect of the domain name (paragraph 4(a)(ii)); and

3. The Respondent registered and is using the domain name in bad faith (paragraph 4(a)(iii)).

1. The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar.

There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.

The Complainant provided registration documents for the "STATIC GUARD" mark, in multiple countries and classes. There is no question that the Complainant, as registered proprietor of those marks, has established rights in a trademark, sufficient for the purposes of paragraph 4(a)(i).

The second requirement is that the domain name be identical or confusingly similar to the mark. The domain name is identical to the Complainantís mark, with the absence of any spaces and the inclusion of the namespace identifier <.com>. Previous decisions in the Policy have, sensibly, concluded that mandatory or technical requirements of the domain name system (DNS) are not relevant to the consideration of identicality or confusing similarity. Thus, the absence of spaces has been ignored in assessing this question since it is not possible to render spaces in the DNS. The inclusion of the gTLD or ccTLD has, equally, been ignored since this is, obviously, necessary to distinguish one namespace from the other (see e.g. World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001). I have concluded similarly in the past, and I see no reason to alter this position. I therefore conclude that the domain names are, for the purposes of the Policy, identical to the Complainantís trademark.

The Respondent makes a number of assertions going to the restricted subject matter and exclusions as to monopoly on words of the Complainantís mark. However these issues are not relevant to the requirements of paragraph 4.a.(i). The Policy only asks whether the Complainant has a trademark and whether the domain name is identical or confusingly similar. It does not examine issues as to subject matter, restrictions as to scope provided by national systems, or any other limitation provided within the trademark law of any country. The Respondentís assertions here are without force.

The Complainant has shown that it has rights in a trademark, and that the domain names are identical to this mark. I conclude therefore that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

2. The Respondent has no rights or legitimate interest in respect of the domain name.

The Complainant asserts that the Respondent has no rights or legitimate interests in the domain name, as required under paragraph 4(a)(ii) of the Policy. It makes a number of specific arguments on this point, essentially arguing that the Respondent has never offered any business or service at the domain names, and that the length of time which the names have remained unused should be considered indicative of an absence of legitimate interest on the part of the Respondent. (The Complainant makes a number of other less-compelling arguments which are irrelevant to the determination here.)

Against this the Respondent argues that it has been setting up a business to trade at the domain names. In the Response the Respondent indicates that it will provide evidence of this, suggesting that it has included invoices from a website developer, and an account from a client for whom it provided services. However, this evidence was not provided to the Center, and so the bare assertion must be weighed by itself.

As a result, I conclude that the Respondent has not provided any evidence that it has a right or legitimate interest in the domain names. Suggesting that it has engaged in a business and then providing no evidence of this is very damaging to the Respondent. I might well have concluded that the Respondent has every right to the concatenation of two common English words. However, once he opened up the issue to scrutiny on the basis of "bona fide offering of goods or services" this failure to provide any evidence leads me to conclude that he has no legitimate interest in the name.

As a result I conclude that the Respondent has not established any rights or legitimate interests in the domain names. I conclude that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

3. The Respondent registered and is using the domain name in bad faith.

The final issue is that of bad faith registration and use by the Respondent. For paragraph 4(a)(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith. The Complainant makes two basic submissions, amounting to suggestions that (1) the English-resident Respondent must have had constructive notice of the trademark by virtue of the EU registration or use in some countries, and (2) that the absence of use indicates passive holding as found in Telstra. Against this, the Respondent states that he was unaware of the Complainantís mark, that the Complainant has not established that he should have been aware of the mark by virtue of extensive advertising or market share, and that he is not intending to profit from the names in any of the ways indicated in paragraph 4.b. of the Policy.

Here, the Respondent carries the day. The Complainantís evidence of bad faith registration and use is exceedingly weak. I reject the idea that some sort of "constructive notice" is generated upon a trademark registration, and that this is sufficient to establish bad faith. To accept this idea is to accept that a trademark registrationówithout anything furtheróis enough to establish bad faith under the Policy. This is a ludicrous suggestion, and runs contrary to the clear intention of paragraph 4.a.(iii) which was intended to protect the interests of domain name holders who registered without bad faith. The evidence of advertising expenditures (some $1.5 million a year over multiple countries) does not indicate that the mark is particularly well known. Moreover, there is no indication of the amount spent on advertising in England. There is nothing to indicate that the Respondent was ever aware of the mark.

Apart from the misconceived reliance on "constructive notice" the Complainant relies on the idea of "passive holding" as established in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. This case established the proposition that doing nothing with a domain name may amount to bad faith registration and use. However the Panelist in that case was extremely careful to note that this principle does not apply to every example of passive holding. The specific circumstances in that case included false name information in the WHOIS record, false address information, failing to respond to the Complaint, an extremely famous mark within the geographical region of both the Complainant and Respondent, and a mark that was entirely invented. This case has none of those features: the Respondent has provided his name, and his address, and has responded within time to the Complaint. The Complainant has provided no evidence that its mark is so well known that any registration (without use) of a domain name cannot help but lead to the conclusion that the Respondent registered with male fides. And, unlike the mark in Telstra, the mark and the domain names here are the concatenation of two generic English words. I conclude therefore that the Telstra passive holding principle does not apply to the facts in this case.

I conclude therefore that there has been no bad faith registration and use in this case. I conclude that the Complainant has not satisfied paragraph 4(a)(iii) of the Policy.

 

7. Decision

The Complainant has not made out all of the elements of paragraph 4(a) of the Policy.

Pursuant to Paragraph 4(i) of the Policy and paragraph 15 of the Rules, the requested remedy is denied.

I hereby order that the domain names <staticguard.com> and <staticguards.com> remain with the Respondent.

 


 

Dan Hunter
Sole Panelist

Dated: October 7, 2002