WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Webe Web Corporation v. Website Holdings Corporation
Case No. D2002-1057
1. The Parties
The Complainant is Webe Web Corporation of Fort Lauderdale, Florida, USA. It is a Florida Corporation. It is represented by Michael B. Chesal of Kluger, Peretz, Kaplan & Berlin.
The Respondent is Website Holdings Corporation of Cap D'Agde, France.
2. The Domain Names and Registrar
The domain names in dispute are <lilamber-childsupermodel.com>, <stephanie-childsupermodel.com>.
The Registrar is Gandi Sarl of 38, Rue Notre-Dame De Nazareth, Paris, France.
3. Procedural History
The Complaint was received by e-mail by the Center on November 18, 2002. Acknowledgement of receipt of the Complaint was given on the November 19, 2002. On the same date the Center made a request for Registrar verification. This was given on November 20, 2002, by the above named Registrar in respect of both domain names. The Registrar confirmed that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applied to the two domain names.
Notification of the Complaint and the commencement of the administrative proceedings was given to the Respondent on November 21, 2002. A Response was received by e-mail on the December 10, 2002, together with a letter written by Mr. Barrie Dickman who states that he holds Power of Attorney on behalf of the Respondent. He indicated that the Response "stands on its merits" but stated that "what we have shown within the Response is Webe's ability to deceive the Arbitration and Mediation Board by omitting certain salient facts regarding this complaint".
On December 19, 2002, an administrative panel consisting of a sole panelist, Mr. Clive Duncan Thorne was appointed with a projected decision date of January 3, 2003. The panel has requested a 7 day extension of time until the January 10, 2003, for delivery of the decision. This request was due to the Christmas and New Year public holiday period and a delay in the panel receiving the hard copy of the Complaint and Response.
No interim orders have been made by the panel. The panel is satisfied that the panel has jurisdiction under the Policy and that all necessary fees have been paid. The language of the reference is English.
4. Factual Background
Having read the Complaint and Response, the panel is aware that the reference to the panel is part of a long running dispute between the parties. It is also clear that there is animosity between the parties and that the facts are somewhat complicated. Indeed the Respondent in the Response talks about "a large argument that caused the split of the two companies" i.e. the Complainant and the Respondent. Given the fact that the matters before the panel appear only to be one part of the overall dispute between the parties, the panel notes that the WIPO procedure is not ideal for determining the issues before it. Nevertheless, with that caveat, the panel proceeds to decide the future of the domain names in dispute in accordance with the Policy. The panel is of course not concerned with determining the greater dispute between the parties.
It is also true, as is shown by the extract from Mr. Dickman's letter referred to above, that there is differing interpretation of the facts by the parties. The panel is not well placed to resolve such conflicts of evidence.
According to the Complainant, it is the owner of the trade marks "LILAMBER.COM" and "STEPHANIECHILD-MODEL.COM" both of which are registered with the State of Florida under Registration Numbers '849 and '848. Both marks are registered "for computer services, namely providing an on-line service featuring models, stories and news relating to child modelling". Copies of the registration certificates are annexed to the Complaint at Exhibit C.
The Complainant asserts that it created and began using in commerce the trade mark "LILAMBER.COM" in February 2000, to market its computer services for the purposes of providing on-line models, stories and news related to child modelling through a website located at "www.lilamber.com". It also asserts that it created and began using, its trade mark, "STEPHANIE-CHILD-MODEL.COM" in February 2001, to market computer services, "namely providing on-line models, stories and news relating to child modelling through a website located at "stephanie-child-model.com". However, it should be noted that this is disputed by the Respondent which points out that the domain name <stephanie-child-model.com> was not registered as claimed by the Complainant (at paragraph 14 of the Complaint) in February 2000, but one year later in February 2001. This appears to be evidenced by Exhibit 0 to the Response.
The Complainant asserts that since its adoption of the marks "LILAMBER.COM" and "STEPHANIE-CHILD-MODEL.COM" it has developed substantial public goodwill and a widespread reputation for excellence in on-line child modelling services.
Assertions are made in the Complaint to the effect that the marks "LILAMBER.COM" and "STEPHANIE-CHILD-MODEL.COM" have appeared in news articles relating to the child modelling industry, that there has been further expenditure in establishing those marks and an assertion that the use and promotion of the marks and consumer recognition of the marks has grown throughout the world as a result of access to consumers over the Internet.
In summary, the Complainant asserts that consumers with an interest in child modelling associate the marks "LILAMBER.COM" and "STEPHANIE-CHILD-MODEL.COM" with the Complainant as one of the "most well known high quality on-line child modelling service providers" and that the Complainant has built up strong trade mark rights in these marks in connection with on-line child modelling services. The panel notes, however, that beyond exhibiting the trade mark registrations referred to above, there is really no evidence adduced by the Complainant to prove its use and promotion of the marks.
At the heart of the dispute between the Complainant and Respondent is a contract concluded between the parties dated February 22, 2001, which is exhibited at Exhibit D to the Complaint. The Complainant asserts that this contract is a contract under which the Respondent agreed to provide the Complainant with electronic images, promotional materials and other content in exchange for a percentage of the income generated from the sale of memberships for the Complainant's services. As a result of the relationship created by the contract the Respondent had extensive access and control of the Complainant's website, customer lists and marketing strategy.
The panel has looked at Exhibit D and in particular paragraph 16 which reads:-
"all domains are property of CORPORATION (the "complainant"). All graphics, layouts and formats are property of CORPORATION".
The Complainant submits that unbeknowing to it and without its consent or authority in May 2002, the Respondent registered the domain names in dispute. It then copied the Complainant's content from the websites and created new websites under the registrations of the domain names in dispute.
This account is disputed in the Response. According to the Respondent the panel should consider the two websites separately because they have very different histories. The Respondent asserts that the website "stephanie-child-model.com" was a website jointly owned and operated from conception by the two parties and relies upon a notice exhibited as Exhibit M to the Response to explain this.
The Respondent asserts that the domain name <lilamber.com> was registered by the Complainant in February 2000, and operated solely by the Complainant for its first 10 months. The model, the subject of the website, Amber, apparently left the Complainant leaving the Complainant in a position where it had taken payment on credit cards in advance from subscribers for forthcoming uploads. According to the Respondent, the Complainant begged it to assist them in the circumstances by supplying the Respondent's models to play the role of Lilamber and this was agreed to buy the Respondent insisting that the Respondent should have full responsibility for the site, design and uploading. Work then apparently started on compiling a contract and a website "www.lilamber.com". This was apparently jointly run developed by the two parties for a period of 6 months using a new design referred to at Exhibit Q to the Response. However, the contract for Lilamber was apparently never signed.
5. Discussion and findings
In order to succeed in its complaint under paragraph 4(a) of the policy, the complainant has the burden of proof in showing existence of the following 3 elements:-
(i) The disputed domain names are identical or confusingly similar to a trade mark or service mark in which the complainants have rights;
(ii) The respondent has no rights or legitimate interest in respect of the disputed domain name; and
(iii) The disputed domain name is registered and is being used in bad faith.
The panel proceeds to deal with each of these elements in turn:-
(i) The Respondent's domain names are confusingly similar to the Complainant's trade marks.
The Complainant asserts that the two domain names are confusingly similar to the registered trade marks referred to above and that the domain names incorporate the trade marks "LILAMBER.COM" and "STEPHANIE-CHILD-MODEL.COM". The only difference with the Respondent's domain names is the addition of "child super model" to the mark "lilamber" and the insertion of the word "super" to the mark stephanie-child-model. It asserts that the Respondent's new domain names were formed solely by combining elements of the Complainant's registered trade marks and domain names with other generic terms.
The Respondent indicates that it contests the whole legitimacy of the registration of the name "STEPHANIE-CHILD-MODEL.COM" as a trade mark owned by the Complainant and that it has taken steps to try and prevent this. It sets out at length its interpretation of the relevant communications between the parties and exhibits certain correspondence and e-mails at Exhibits F-J to the Response which the panel has read.
The panel, however, considers that it is entitled to rely upon the certificates of trade mark registration granted by the Florida Department of State for the marks "LILAMBER.COM" and "STEPHANIE-CHILD-MODEL.COM". In the panel's view these certificates are, by themselves, sufficient to show that the Complainant has trade mark rights. The panel is not in a position to go behind these certificates.
The second issue therefore for the panel to consider is whether the domain names in dispute are identical or confusingly similar to the registered trade marks. In the case of the registration of "lilamber.com" the difference between the trade mark and the domain name is the word "child super model". In the panel's view this word is essentially descriptive to the activities of the Complainant. The distinctive part of the trade mark is the word lilamber, which is common to the trade mark and to the domain name. In the panel's view, therefore, the domain name <lilamber-supermodel.com> is confusingly similar to the Complainant’s trade mark "LILAMBER.COM".
In the case of the trade mark stephanie-child-model.com the distinction between the trade mark and the domain name is the word "super" which qualifies as an adjective, the noun "child-model". In the panel's view therefore the domain name <stephanie-child-supermodel.com> is confusingly similar to the mark "STEPHANIE-CHILD-MODEL.COM".
It follows that the Complainant has established that the two domain names are confusingly similar to trade marks in which the Complainant has rights. The Complainant has therefore succeeded in relation to this element.
(ii) The Respondent has no rights or legitimate interest in respect of the domain names.
The Complainant submits that the Respondent should be considered as having no rights or legitimate interest in the domain names since these were copied from the Complainant's existing trade marks for the apparent purpose of confusing the public and benefiting from the Complainants goodwill. It submits that the Respondent has not established goodwill in the subject names and is not identified or commonly known by the names "lilamber-childsupermodel" or "stephanie-childsupermodel". It asserts that the Respondent's sole use of the names is in connection with its on-line child modelling services database.
In its Response the Respondent relies upon Exhibits M, K and L to the Response.
Exhibit M is headed "Here is a Rebuttal to some of Maxwell's Claims". It asserts that the domain names are the property of the Respondent who would appear to rely upon the terms of the agreement (Exhibit D to the Complaint).
Exhibits K and L are apparently statements addressed to the Complainant which it is said by the Respondent show the partnership split between the two companies before and after the contract ended. There are certain arrows and marks on these documents.
It is clear that the contract exhibited as Exhibit D to the Complaint recognised that the Respondent had rights in "all domains", although it is not clear that the contract embodied the domains the subject of the current dispute before the panel.
The panel's view of the long standing nature of the dispute between the parties makes it very difficult for the panel to accept that the Respondent has no rights at all or legitimate interest in the domain names. Having read the papers and the submissions the panel does not find that it can be safely said that the Respondent has no rights or legitimate interest in the domain names. Accordingly, the Complainant has failed in proving this element.
(iii) That the Respondent's domain names have been registered and are being used in bad faith.
In support of this head the Complainant submits that the domain names were registered and used in bad faith by the Respondent for the commercial purpose of attracting Internet users to its website by creating a likelihood of confusion with the Complainant as to the source sponsorship affiliation or endorsement of the website. It relies upon the so-called "integration" of the Complainant's trade marks and domain names into the Respondent's domain names, by the production of website content on to new websites owned by the Respondent and by public statements made by the Respondent, including that exhibited as Exhibit E to the Complaint.
In response the Respondent asserts that the only action of bad faith was that the Complainant closed the server and then on receipt of letters from Respondent's lawyers registered as a trade mark a jointly owned property, i.e. the domain names in their name.
In the panel's view, having considered the papers and in particular the exhibits annexed to the Complaint and Response, it does not find that the Complainant, which has the burden of proof, has established bad faith. There is a long running dispute between the parties, the merits of which may have to be considered by a court or tribunal elsewhere. On the evidence before it the panel does not find it possible to find that the Respondent registered and used the domain names in bad faith.
It follows that the Complainant fails in proving this element under paragraph 4(a) of the Policy and that it has also failed in its Complaint.
The panel finds that the Complaint has failed in its request for cancellation of the domain names <lilamber-childsupermodel.com> and <stephanie-childsupermodel.com>.
Clive Duncan Thorne
Dated: January 10, 2003