WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Boots Company Plc v. Challenge Services, Inc. (CSI)
Case No. DBIZ2002-00096
1. The Parties
The Complainant in this administrative proceeding is The Boots Company Plc ("Complainant"), a company incorporated under the laws of the United Kingdom, with its main business address at 1, Thane Road West, Nottingham Notts NG90 SGT, United Kingdom. Complainant's authorized representative is Net Searchers International Ltd, Cecilia Nielsen, Elysium House, 126-128 New Kingís Road, London SW6 4LZ, United Kingdom.
The Respondent in this administrative proceeding is Challenge Services, Inc. (CSI) ("Respondent"), a company incorporated under the laws of Texas, United States of America, with its main business address at 11821 Buckner, Austin, Texas 78726, United States of America. Respondentís authorized representative is Fulbright & Jaworski LLP, Arif H. Ali and Carmen Fitzgerald, 1301 McKinney, Suite 5100, Houston, Texas 77010-3095, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <boots.biz> ("Domain Name"), registered with GAL Communications Ltd. ("Registrar"), Pob 4602, Rishon Lezion, 75103, Israel.
3. Procedural History
A complaint (Complaint), pursuant to the Start-up Trademark Opposition Policy for .BIZ adopted by Neulevel, Inc. and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, ("the STOP Policy"), and under the Rules for Start-up Trademark Opposition Policy for .BIZ ("the STOP Rules"), implemented by ICANN on the same date, was submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") on April 26, 2002, by e-mail and was received on April 30, 2002, in hardcopy.
The Acknowledgement of Receipt of Complaint was submitted to the Complainant by the Center on May 2, 2002.
The Center completed a STOP Formal Requirements Compliance Checklist on May 5, 2002, without recording any formal deficiencies.
The Panel independently determines and agrees with the assessment of the Center that the Complaint is in formal compliance with the applicable requirements.
A Notification of Complaint and Commencement of Administrative Proceeding ("the Commencement Notification") was transmitted to the Respondent on May 5, 2002, setting a deadline of May 25, 2002, by which the Respondent could file a Response to the Complaint.
On May 26, 2002, the Center received the Response to the Complaint by e-mail and on May 31, 2002, in hardcopy. The Acknowledgement of Receipt of Response was submitted to the Respondent by the Center on May 27, 2002.
The Center invited the undersigned to serve as Sole Panelist in Case No. DBIZ2002-00096 on June 4, 2002, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence which was duly signed and returned to the Center on June 5, 2002.
The Center transmitted to the parties on June 5, 2002, a Notification of Appointment of Administrative Panel and Projected Decision Date as of June 19, 2002. The Administrative Panel finds that it was properly constituted and appointed in accordance with the STOP Policy, the STOP Rules and the WIPO Supplemental STOP Rules.
4. Factual Background
The following facts and statements appear from the Complaint and its annexed documents as well as from the Response and its enclosed documents:
Complainant, The Boots Company Plc, is maintaining a business mainly in the sector of healthcare and beauty products, but also for photographic processing and marketing of food, since 1888. Complainant is the holder of the well established trade mark BOOTS which is registered and used in 114 countries world-wide including the United States (Reg. No. 2515976 in Classes 6, 18, 44, 46, 51, 52; and Reg. No. 2427728 in Classes 1, 4, 6, 50, 51, 52). Its core business area is the United Kingdom. Complainant has registered over 220 domain names reflecting the trademark BOOTS under several different TLDs, such as <boots.com>, <boots.co.uk>, <boots.info>, <bootsalive.com>, or <bootswellbeing.com>. Most of these domain names are pointing to the main website <boots.com> / <wellbeing.com>. Complainant submitted an Intellectual Property (IP) Claim with Neulevel and found out about Respondentís attempt to register the Domain Name <boots.biz>. Since Respondent proceeded with the registration of the Domain Name after being informed of Complainantís trademark rights to the name BOOTS, Complainant filed a STOP Complaint in order to protect its brand on the Internet.
Respondent, Challenge Services, Inc. (CSI), is a business, that was incorporated in Texas in 1988. Respondent offers a fundraising program based on a catalog sales business model. As part of an effort to increase sales, Respondent is developing a program to recycle boots and other footwear. Fundraisers will receive extra points for prizes for donating outgrown boots and shoes. The donated boots and shoes will be provided to lower income families. Respondent expects that fundraising groups may be more inclined to participate in a fundraising program that not only allows them to earn money, but also provides them with the opportunity to be of service to their community. Respondent registered the Domain Name at issue to market this program. The word "boots" was chosen as opposed to a more general term such as "footwear" because of the simple fact that <boots.biz> is catchier and has more marketing appeal than, for example, <outgrownfootwear.biz> or <shoes.biz>.
5. Partiesí Contentions
Complainant contends that:
- the Domain Name is identical to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the Domain Name; and
- the Domain Name was registered and is being used in bad faith; and
- the Domain Name <boots.biz> should be transferred to the Complainant.
Additional contentions of the Complainant may be contained in the following discussions and findings.
Respondent disputes the above contentions. As a result, the Domain Name <boots.biz> should remain with the Respondent.
Additional contentions of the Respondent may be contained in the following discussions and findings.
6. Discussion and Findings
Paragraph 4(a) of the STOP Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered or is being used in bad faith."
Identical Domain Name: STOP Policy 4(a)(i)
The Domain Name at issue is <boots.biz>. Complainant is the holder of registered trade marks for stylized versions of the word "boots". As emphasized by this Panel in Cantiere Nautico Cranchi S.R.L. v. Rapier USA, Inc., WIPO Case No. D2002-0060 (March 12, 2002), design elements cannot be part of a domain name which only consists of letters and numbers. The same is true for stylized versions of a word. Yet, the Domain Name at issue <boots.biz> is confusingly similar or even identical to the word part of the registered stylized versions of the word "boots" of Complainant. Nevertheless, the STOP Policy imposes an affirmative burden on the Complainant to establish that the disputed domain name is identical to Complainantís trade or service mark. The standard of confusing similarity found in the Uniform Domain Name Dispute Resolution Policy (UDRP) was specifically excluded from the STOP Policy as it is a dispute policy for start-up .biz registrations and was put in place to address only the most clear-cut cases of abusive domain name registrations.
As this Panel learns from the Response and its annexed documents, the US Patent and Trademark Office (USPTO) issued a final refusal to Complainantís attempt to register a stand-alone service mark for the word "boots". This is not surprising as the word "boots" is a generic term describing a certain type of footwear. It has been used in the past also for the sale of other items as can be seen from the websites <boots.net> and <boots.org> belonging to third parties, as well as three registrations of other companies with the USPTO in respect of the word "boots" in connection with the sale of books, cigarettes and alcoholic beverages.
In consideration of these facts, it is unclear if the Domain Name <boots.biz> can or must be considered to be identical to Complainantís stylized trademark and it is questionable if Complainant sufficiently established element (i) of the STOP Policyís paragraph 4 (a). Nevertheless, in view of the following remarks concerning the other conditions of the STOP Policy, the question of identity does not have to be decided.
Respondent's Rights or Legitimate Interests in the Domain Name: STOP Policy 4(a)(ii)
It is first convenient to recall that, according to paragraph 4(c) of the STOP Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
"(i) You are the owner or beneficiary of a trade or service mark that is identical to the Domain Name; or
(ii) Before any notice to you of the dispute, your 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
(iii) You (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights."
Respondent maintains to have registered the Domain Name to promote a program involving the recycling of outgrown boots and shoes. As evidence of its preparations to use the Domain Name at issue for this purpose before notification of this proceeding, Respondent submitted an affidavit of Mr. Shawn Findlay, President of Triad Hosting, a web development company. Mr. Findlay certified that beginning in February 2001, Mr. David Wright, founder and CEO of Respondent, and himself began discussions concerning the transfer of hosting services for certain websites belonging to Respondent to Triad Hosting as well as web site development services. Among Mr. Wrightís ideas to promote awareness of and interest in his company was a plan to organize a charitable activity. Specifically, he communicated his interest in encouraging donations of unneeded footwear. According to Mr. Findlay, the chosen domain name for the web page promoting this program was <boots.biz>. Between February 2001 and April 2002, the <boots.biz> web page was not fully developed because of the uncertainty as to whether or not Respondent would receive the domain name. In March or April 2002, Mr. Wright informed Mr. Findlay that he had been granted the Domain Name at issue, and shortly thereafter notified him that the project should, once again, be put on hold because of a dispute regarding rights to the Domain Name. Commencement of the development of the <boots.biz> web site shall be as soon as Respondentís rights to the Domain Name have been confirmed.
In view of this affidavit the Panel believes that demonstrable preparations have been established for a use of the Domain Name in connection with a bona fide offering of goods or services. Respondent, therefore, has shown sufficient grounds to assume its legitimate rights or interests in the Domain Name and Complainant has not fulfilled its burden of proof under paragraph 4(a)(ii) of the STOP Policy.
Domain Name Registered or Used in Bad Faith: STOP Policy 4(a)(iii)
The third element to be established by Complainant is that the Domain Name has been registered and used in bad faith.
Paragraph 4(b) states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the Domain Name:
"(i) Circumstances indicating that you have registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant or to a competitor of the 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 Complainant from reflecting the mark in a corresponding Domain Name; 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 Complainant's 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."
Complainant alleges that Respondent registered and used the Domain Name in bad faith.
One of Complainantís arguments in this respect is, that Respondent bears a considerable responsibility to investigate if any party has trademark rights in the alphanumeric string contained in the Domain Name. According to the holdings in MGM Mirage v. Young Joon Choi, WIPO Case No. DBIZ2001-00036 (February 14, 2002), a registrant should take "reasonable steps" to ensure that its domain name will not infringe upon the rights of another party, including a search of the United States Trademark Register if the registrant is from the United States. However, this argument unfavorably falls back on Complainant since, by suggesting that Respondent has an obligation to carry out a research before registering a new domain name, Complainant is accepting the real possibility that Respondent never heard of the Complainant's trademark prior to receipt of the IP Claim (see IMMEDIATE Software fur Marketing und Media and Uwe Czaia v. emmediate, WIPO Case No. DBIZ2001-00007 (February 13, 2002)). This is exactly what Respondent alleges. When beginning the application process, Respondent, a United States company based in Austin, Texas, alleges to not have known Complainantís company. This seems credible because Respondent conducts its business in Texas, United States of America, while Complainant primarily operates in the United Kingdom. According to a printout from Complainantís website (provided by Respondent in Appendix M to Response), the Boots Company does not ship its products to the United States of America.
Moreover, Complainant and Respondent do not compete with each other in goods or services offered. Hence Respondent had no reason to even contemplate attempting to disrupt Complainantís business, let alone know about Complainantís existence. Under these circumstances it neither can be said that Respondent, by using the Domain Name <boots.biz> intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation, or endorsement of its web site.
By citing from the case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000), Complainant further argues that Respondentís bad faith is evidenced by virtue of its passive holding of the Domain Name <boots.biz>. However, this Panel is of the opinion that Complainantís reliance on this decision is clearly misplaced as the Panel in the Telstra Case emphasized that an inactive web site may indicate bad faith under some circumstances, and then went on to point to four factors that support a finding of bad faith which are all not given in the present case. Even if inactivity can under certain circumstances be considered indicative of bad faith, the period of thirty-one days between the registration and the filing of the Complaint is not sufficient to establish inactivity.
As seen above, this Panel finds both arguments presented by Complainant to be without merits. Furthermore, the Panel cannot find any other reasonable grounds in the Complaint and its annexed documents for a finding that Respondent registered or is using the Domain Name in bad faith. In particular, there are no indications that Respondent registered the Domain Name for the purpose of selling or renting the Domain Name to Complainant or to a competitor of Complainant, nor are there any signs that Respondent intends to prevent Complainant from reflecting its trademark in the corresponding Domain Name. As rightly stated in Domain Bank, Inc. v. Sonic Co., Ltd., WIPO Case No. DBIZ2001-00014 (February 13, 2002), a trademark holder is not entitled to succeed in a domain name dispute over a .biz domain name, merely because Complainant has registered a series of corresponding other gTLD's.
In an overall assessment of the contentions and the facts mentioned above, the Panel concludes that the requirements of paragraph 4(a)(iii) of the STOP Policy have not been sufficiently made out by Complainant, and that Respondent's bad faith registration and use of the Domain Name have not been sufficiently established.
In view of the circumstances and facts discussed above, it is unclear whether the disputed Domain Name can or must be considered to be identical to the registered trade mark in which the Complainant has rights. However, Respondent has shown a legitimate interest in respect of the Domain Name, and in the absence of bad faith, the Panelist concludes according to paragraph 15(d) of the STOP Rules that the requirements of paragraph 4(a) of the STOP Policy are not fulfilled. Therefore, the remedy requested by Complainant pursuant to Paragraph 4(i) of the STOP Policy is denied. The Respondent shall not be required to transfer to Complainant the Domain Name in dispute.
Bernhard F. Meyer-Hauser
Dated: June 18, 2002