WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
H.D. Lee Company, Inc. v. Jordan H. Richland
Case No. DBIZ2002-00201
1. The Parties
The Complainant is H. D. Lee, Company Inc., a corporation organized and existing under the laws of the State of Deleware, with a principle place of business at 3411 Silverside Road, Wilmington DE 19810, United States of America. The Complainant is represented in this proceeding by Steven M. Weinberg, Greenberg Traurig, LLP, 2375 E. Camelback Road, Suite 700, Phoenix AZ 85016, United States of America.
The Respondent in this proceeding is Jordan H. Richland, an individual whose address is 6205 Beachway Drive, Falls Church, Virgina 22041, United States of America.
2. The Domain Name and Registrar
The domain name in dispute is <lee.biz>.
The registrar for the disputed domain name is Namescout.com Corporation, Whitepark House, White Park Road, Bridgetown, Barbados.
3. Procedural History
This dispute is to be resolved in accordance with the Start-up Trademark Opposition Policy for .BIZ (STOP) adopted by NeuLevel, Inc. and approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on May 11, 2001, the Rules for Start-up Trademark Opposition Policy for .BIZ adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 (the STOP Rules), and the WIPO Arbitration and Mediation Centerís Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (the Center, the Supplemental STOP Rules).
The Complaint was filed on April 28, 2002, by e-mail, and on May 3, 2002, in hard copy. On June 5, 2002, the Center forwarded a copy of the Complaint to the Respondent by registered mail and by e-mail and this proceeding officially began.
Respondent sent a STOP Response to the Center on June 5, 2002, by e-mail, and on June 10, 2002, in hard copy.
The Administrative Panel submitted a Declaration of Impartiality and Independence on June 27, 2002, and the Center proceeded to appoint the Panel on July 1, 2002. The Panel finds the Center has adhered to STOP, the STOP Rules and the Supplemental STOP Rules in administering this Case.
The due date of this Decision is July 15, 2002.
4. Factual Background
Complainant has made and sold apparel products for many years. Its products are currently sold in many countries, and its brand name, "Lee", is well known throughout the world. Complainant has spent large sums of money advertising and promoting its products.
Complainant owns several registered United States trademarks in "Lee" (collectively referred to hereinafter as the "Complainant Trademark"). In addition, Complainant has registered and uses the domain name, <lee.com>, to advertise and promote its products.
Respondent is listed as the Registrant of the disputed domain name. The record of registration was created on March 27, 2002. Respondent has been president of a health care organization in the past (Exhibit A of the Response). In addition to the disputed domain name, Respondent has recently registered another sixteen .BIZ domain names under health industry related names and seven .BIZ domain names under proper names.
5. The Partiesí Contentions (Summarized)
- Since 1916, Complainant has used the "Lee" mark in the business of producing and selling apparel products. Complainant's products are sold and are known worldwide under that mark.
- Complainant owns many registered United States trademarks for "Lee", and many registered trade or service marks containing the word "Lee" in many other countries.
- Complainant has also registered the domain name, <lee.com>, for advertising and promotion of its products.
- Respondentís domain name is identical to the Complainant Trademark and to Complainant's registered domain name. The Complainant Trademark and Complainant's domain name were registered before Respondent registered the disputed domain name.
- Respondent has no rights or legitimate interest in the disputed domain name. Respondent is not identified with the disputed domain name, has made no use of it and has no apparent plans to do so.
- The Respondent registered the <lee.biz> domain name in bad faith. Respondent chose the domain name, <lee.biz>, with full knowledge of Complainantís rights in that name. Respondent possessed notice and actual knowledge of the Complainant Trademark and its use on a variety of apparel.
- Respondent has recently registered a number of domain names, some names related to the health care industry and others to proper names. All bear some relation to Respondent's professional activities or to people associated with him. "Lee" is the last name of Respondent's personal physician.
- Respondent's plans to use the skills and experience gained from his assistance in creating web sites for his past and present employer to serve as a basis for the development of a web site corresponding to the domain names Respondent has registered, including the disputed domain name. Respondent has already begun developing a web site at his registered domain name, <chronicdisease.biz>. It is Respondent's "hope and expectation that Respondent will develop a future health care-related web siteÖwith his physician" in conjunction with the disputed domain name.
- There is no evidence that Respondent's use of the disputed domain name will compete with Complainant's use of the Complainant Trademark or Complainant's registered domain name.
- There is no evidence that there will be confusion to internet users caused by Respondent's use of the disputed domain name.
- "Lee" is a common term to which Complainant does not have exclusive rights. "Lee" is also a very common surname found in Virginia, Respondent's state of residence. There are many web sites found at domain names not owned by Complainant containing "lee" which do not cause Complainant material injury or damage.
- Respondent did not register the disputed domain name in bad faith. Respondent's responsible use of his other registered domain names is evidence that good, not bad, faith is involved.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain name <lee.biz> transferred to it, Complainant must prove the following (STOP, paragraphs 4(a)(i-iii):
- 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 or is being used in bad faith
The Panel finds that Complainant owns many registrations of the trademark "Lee" in the United States (e.g., U.S. Registration Nos. 0967611 for apparel, and 0991466 for apparel).
Complainant's rights in those trademarks pre-date by a significant number of years Respondent's registration of the disputed domain name. The disputed domain name <Lee.biz> is the same as the Complainantís trademark except for the addition of the gTLD ".biz". However, the inclusion of a gTLD is not materially relevant in determining domain name similarity because a gTLD is required of registrants (see, Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc., Nat. Arb. Forum FA 102811 (Feb. 8, 2001), and AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2001-1503 (April 3, 2002)).
In accordance with the STOP, paragraph 4(a)(i), the Panel finds that the disputed domain name is identical to a trademark or service mark in which the Complainant has rights.
No Rights or Legitimate Interests
Respondent has not submitted a satisfactory showing to the Panel that Respondent received a license, permission or consent from Complainant to use the Complainant Trademark. Also, Respondent has admitted in the Response that he neither owns a trade or service mark identical to the disputed domain name (STOP, paragraph 4(c)(i)), nor is commonly known by the disputed domain name (STOP, paragraph 4(c)(iii)).
Respondent has not furnished evidence to the Panel that Respondent has made use of the disputed domain name. Furthermore, the Panel concludes that Respondent has not demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods and services (STOP, paragraph 4(c)(ii)). Respondent's contention that he has the "hope and expectation that [he] will develop a future health care-related web siteÖwith his physician" falls far short of a demonstrated preparation sufficient to satisfy that standard.
Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
No creditable evidence has been submitted by Complainant to the Panel to suggest that Respondent has engaged in the bad faith registration of the disputed domain name based on the factors listed in paragraph 4(b)(i-iv) of STOP.
Respondent argues that his past responsible registration and use of domain names is evidence of his good faith in this instance. However, Respondent indicates that he has moved forward to develop only one of the twenty-four .BIZ domain names (including relatives' nicknames) he has recently registered. The Panel is inclined to view Respondent's volume approach to registration, without coherent plans to initiate development of the names registered, as conducive to bad rather than good faith because of the likelihood that at least some (if not most) of those names will never be used by Respondent.
Respondent also contends that many previous panels have held that there is no bad faith implicit in registering domain names composed of common words. However, unlike the words cited by those panels (e.g., zero, cream, craftwork, and carte blanche), the common word "lee" is more commonly thought of as an English surname. Respondent himself refers to the prevalence of the surname, "Lee", in Northern Virginia. While the taking note that in Northern Virginia the name "Lee" might be most closely associated with General Robert E. Lee, the Panel finds that throughout the world "Lee", a mark Complainant has used continuously for decades, is very closely associated with a variety of Complainant's products, particularly denim pants or "blue jeans."
This finding buttresses Complainant contention that the Complainant Trademark is so strong internationally that Respondentís very registration of the domain name without authorization is indicative of bad faith. The panel deciding under STOP in the case, Fiat Auto S.p.A. v. Search Hound, WIPO Case No. DBIZ2001-00023 (February 11, 2002), found bad faith registration with respect to the trademark "Lancia" based on "the notoriety of the Complainant's Mark; the subject domain name [being] identical to it; the Respondent [having] not used the subject domain name and, apparently, normallyÖnot [being] associated with it; these facts [having] not been refuted by the Respondent." These factors are all present in the instant case, Respondent's claim of a relationship with a physician named "Lee" notwithstanding. Numerous other previous panels under the Uniform Policy for Domain Name Dispute Resolution (the "Policy") have been willing to grant this status to a select group of internationally famous marks. (for example the mark "Veuve Cliquot" in Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No D2000-0163 (May 1, 2000); and the mark "Chanel" in Chanel, Inc. v. Buybeauty.com, WIPO Case No. D2000-1126 (November 22, 2000)). As a result, the Panel finds Complainant's contention persuasive in this instance.
While the reason above for reaching a conclusion of bad faith registration is not specifically referenced in STOP, STOPís listing is non-exhaustive by design and allows the Panel to find other grounds for bad faith in accordance with its authority under Paragraph 15(a) of the STOP Rules. The cases cited above, along with a host of similar decisions rendered under the Policy and STOP, provide the Panel with ample support for the Panelís conclusion in this case.
The Panel thus finds that the disputed domain name was registered in bad faith.
The Panel finds the disputed domain name, <lee.biz>, is confusingly similar to Complainantís "Lee" trade and service marks. The Panel also finds Respondent has no rights or legitimate interests in the disputed domain name. Finally, the Panel finds the Respondent registered the disputed domain name in bad faith because the Complainant Trademark falls within a class of marks so well known worldwide that Respondent doubtless knew that its domain name registration would precipitate unfair confusion with that mark.
In accordance with the Panel's foregoing findings and conclusions, Paragraph 4(i) of STOP and Paragraph 15 of the STOP Rules, the Panel orders that the disputed domain name, <lee.biz>, be transferred from Respondent, Jordan H. Richland, to Complainant, H. D. Lee Company, Inc.
Dennis A. Foster
Dated: July 15, 2002