WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barnes & Noble College Bookstores Inc. v. Language Direct
Case No. D2003-0142
1. The Parties
The Complainant is Barnes & Noble College Bookstores Inc. ("Barnes & Noble"). It is an American corporation of New York,. It carries on business as a retail and on-line bookstore. It is represented in the proceeding by Erik Wolff Kahn of Bryan Cave, LLP, New York, NY, United States.
The Respondent is identified as Language Direct, Tokyo, Japan. Its administrative contact is shown as Ian Hewitt at the same address with an alternative address of California, United States of America.
2. The Domain Name and Registrar
The domain names the subject of the dispute are:
The Registrar with which the domain name is registered is Melbourne IT Limited, trading as Internet Name Worldwide.
The date on which the primary domain name <barnesandnoble.com> was registered appears to be August 10, 1995.
3. Procedural History
On February 25, 2003, the Complaint was received by email.On February 25, 2003, Registrar Verification was requested. On February 27, 2003, the Registrar responded to the Verification request. On February 27, 2003, a Complaint Deficiency Notification was issued. On February 27, 2003, an amendment to the Complaint was received.On March 4, 2003, a formal Notification of Complaint and Commencement of Administrative Proceeding was notified. On March 25, 2003, a Notification of Respondent Default was issued. On April 3, 2003, a Notification of Appointment to Administrative Panel and Projected Decision Date was advised.
An administrative panel of John Katz QC of Auckland, New Zealand, as sole Panelist was notified. The Panelist having accepted the appointment and having considered the papers delivers the following administrative panel decision.
4. Factual Background
The Complainant, is a large corporate entity based in the United States. It owns and operates an on-line bookstore <barnesandnoble.com>. It also owns and operates over 1,000 retail bookstores including college and university bookstores.
The Complainant's association with the retail bookstore industry stretches back for over a quarter of a century. It has been using the Barnes & Noble name in connection with its on-line bookstore since 1997.
The Complainant has various US registered trade marks which are in evidence (annexure 6). These include BARNES & NOBLE and BARNESANDNOBLE.COM. All the US marks are current and the two referenced marks were registered in 1980 (with use claimed since March 1975) in the one instance, and 1999 (with use claimed since May 1997) in the other case.
The Complainant also has a number of trade mark registrations for BARNES & NOBLE in other jurisdictions (see annexure 7), in countries as diverse as Taiwan and Tajikistan. They include Japan.
The Complainant owns a website for which it is the registrant of the domain names <barnesandnoble.com> and <bn.com>, both registered as of August 1995 and October 1994 respectively (see annexure 5). The Complainant also operates an affiliate partner programme (see annexure 9) in terms of which the Complainant granted to the Respondent a limited right to use the Respondent's website and a hyper-link to the Complainant's website <barnesandnoble.com>. That is a commercially structured agreement which contains express terms as to its use and limitations (see annexure 9).
The Respondent was a member of or grantee under the Complainant's Affiliate Partner Agreement. The terms expressly limit the ability of the grantee to
(a) use the Barnes & Noble trade marks
(b) adopt as its own domain name any reference to the trade marks "BARNES", "NOBLE", "BARNES&NOBLE.COM", "B&N.COM" and "BN" or any combination thereof
(c) use or abuse of the intellectual property rights of Barnes & Noble including in particular Barnes & Noble's trade marks
(d) holding itself out as in any way associated with or entitled to any Barnes & Noble proprietary rights.
In or about September 2002, the Complainant became aware that the Respondent had registered the disputed domain names. The Complainant sent a cease and desist letter and some correspondence ensued.
Little is known about the Respondent. It appears to be based in Tokyo, Japan but has contact details for administrative purposes through a Mr. Ian Hewitt of ESL Games of Fremont, California, United States. There is in evidence (see annexure 11) email traffic from Mr. Hewitt which indicates an awareness of the issues.
Nothing further has been put before the Panelist with respect to the Respondent. It has filed no formal response.
5. The Parties' Contentions
The Complainant addresses the issues in a very comprehensive manner with detailed citation of authority.
It claims to be the owner of all proprietary rights to what are compendiously called the Barnes & Noble trade marks. It says it owns the goodwill in these trade marks worldwide due to the United States and foreign trade marks it has registered. Moreover, it refers to its website through which books, CDs, DVDs, video cassettes, music, magazines, computer games and other similar items are purchased by the public. Importantly, these transactions are internet based and by definition are borderless. The website in extract form is in evidence.
Although not in evidence as to the actual amount of sales, nor the number of hits on the website each day, the Complainant alleges that its website is one of the most visited retail sites on the internet. As a result it contends that the Barnes & Noble trade marks have become distinctive of the goods and services it promotes (books, CDs etc). That gives it the exclusive right to the use of the Barnes & Noble trade marks.
The Complainant then says that whilst it agreed to the Respondent using a hypertext link to take visitors to the Barnes & Noble website such use by the Respondent was on a strictly limited terms basis as evidenced by the Affiliate Partner Agreement document. Having become aware of the Respondent's breaches the Complainant took action to terminate the agreement. The Respondent however still operates its website in breach of the agreement and to the claimed detriment to the Complainant.
The Complainant says the Respondent's domain names are merely iterations or intentional misspellings of the various Barnes & Noble trade marks, designed to secure for the Respondent commercial gain as presumably the Respondent derives revenue from its own website and the links it has established to other web sites, including competitors of the Complainant such as Amazon and Borders.
So, the Complainant says, the Respondent registered the disputed domain names in bad faith and is using them in bad faith. It has no legitimate interest in them and can therefore point to no justification for the registration and continued use of them.
The Respondent, having defaulted, has put in no evidence or response of any sort. It did however reply to the Complainant's cease and desist letter which letter at the time is in as evidence (annexure 11). All the Respondent says is that it had received authorisation to use the disputed domain names from Barnes & Noble. Its email letter reply is lacking in particularity. To this the Complainant sent an answer (see annexure 12) rejecting the Respondent's claims and pointing out that any such alleged authorisation would be in breach of company policy and the affiliate partner agreement. The correspondence then ended.
Although the Respondent has defaulted its email letter is in evidence. Further, no adverse presumptions should be made in the present case merely because a Respondent has defaulted. Whilst concepts of burden of proof are inappropriate under the ICANN procedure, it is still for the Complainant to make out its case.
6. Discussions and Findings
The policy adopted by ICANN is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process a Complainant must provide evidence and submissions in support of its complaint. The expectation is that the Complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the policy. The Respondent is given full opportunity to respond.
In this instance the Respondent has defaulted. As earlier indicated, no particular burden lies either way. Nevertheless, Rule 4(a) of the policy sets out three elements that must be established by Complainants to merit a finding that a Respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(i) The Respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has right; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Respondent's domain name has been registered and is being used in bad faith.
Each of three elements must be established by a Complainant to warrant relief.
A. The First Ground – Identical or Confusingly Similar.
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trade marks or service marks in which the Complainant has rights.
The Complainant must establish that it has such rights either to a common law or registered trade mark or service mark and that those rights are being violated by the Respondent. That violation can be by the adoption by the Respondent for itself of a trade mark which is nearly identical or confusingly similar.
The trade marks in suit need not be registered trade marks and a common law trade mark will suffice. What the Complainant must establish is that it owns intellectual property rights of one sort or another in a trade mark or trade marks and that rights exist in the territory where the Respondent operates or where the Respondent's use of the impugned trade marks will come into conflict with the rights of the Complainant. This is particularly relevant in connection with domain names and internet based transactions where effectively trade marks become borderless.
In trade mark law it is trite to describe some trade marks as famous or well known. Most jurisdictions afford protection to such trade marks (see for example Mostert, Famous and Well Known Marks, Butterworths, London, 1997). Any WIPO Panelist would be entitled to use and apply his/her own knowledge of what are such marks. This is not to substitute for proper evidence and argument from a Complainant but it would be idle to close the eyes to what are recognised worldwide as famous or well known marks. And this must particularly be so when the marks are used as identifiers for a business that trades heavily on the internet using its own domain name with which the Respondent seeks wrongly to claim or suggest an association.
It is a basic tenet of trade mark law, equally applicable under paragraph 4(a)(i) of the ICANN policy that one must look at a trade mark as a whole and compare the mark in suit with the alleged infringement. It is often asked, has the idea of the mark been taken, has the Respondent wrongly appropriated the essence or fundamental impression created by the mark.
The Complainant's various trade marks are without doubt well known or famous. Indeed, one would be hard pressed to find any internet based providers of books, CDs or similar material more widely known across the world than Barnes & Noble, Amazon or Borders.
The Respondent's domain names must be viewed in this context. They are no more than colourable and cheeky imitations of the Barnes & Noble trade marks. So much so that a casual glance can easily miss the difference, as subtle as it is.
But above all else, persons accessing the internet and wanting to find the Complainant's site, but being unfamiliar with it, are likely to type into a search engine "Barnes" followed by "Noble". The probability is that such a search would throw up both the Complainant's and Respondent's websites. This risk is enhanced where a person wishing to access the genuine Barnes & Noble website is going to be located in a foreign jurisdiction and for various reasons including language difficulties may not understand or even recognise subtle differences in the spellings or even if they were recognised to appreciate the significance of them.
Ground 4(a)(i) is accordingly made out.
B. Rights or Legitimate Interests
As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not appear to put forward in evidence any business or trading operation known as or by reference to any of the trade marks in suit, thereby justifying a proprietary right to the marks.
Under ground 4(a)(ii) a Respondent can justify its registration of the disputed name on certain grounds some of which are set out in paragraph 4(c) of the policy. Such grounds resolve broadly to own name use, bona fide use, legitimate non commercial or fair use and similar.
Here, all the Respondent has done by its email reply to the cease and desist letter is claim that the Complainant has given its consent to the registration and use of the disputed domain names. It has not asserted any other legitimate interest. The Complainant has addressed this ground fully and has satisfied the Panelist that the claimed permission was not given and that the Respondent's only interest in the disputed domain names is for the purposes of intentionally trading off the good will of Barnes & Noble. That must be so.
Ground 4(a)(ii) is accordingly made out.
C. Registration and Use in Bad Faith
As to the third ground, this requires that the name be registered and used in bad faith. As has previously been said in other Panelist's decisions together with earlier decisions of this Panelist, both elements must be made out. Thus, both registration and use in bad faith have to be established by the Complainant.
Given the enormous reputation and worldwide goodwill of Barnes & Noble the question inevitably arises for what legitimate purpose or genuine reason might the Respondent have registered and be using the disputed domain names or continue to use them.
Any registration of the disputed domain names immediately raises the question also why a Respondent would chose to register them. Absent any proper and reasonable explanation from the Respondent (other than a claimed permission which the Complainant denies) the Panelist is drawn to the irresistible inference that the registration was in bad faith.
But the Complainant must also establish use in bad faith. The Respondent's site is active. It still links to Barnes & Noble as well as to the Complainant's competitors, Amazon and Borders. That diverts traffic from the Complainant thereby providing commercial gain to the Respondent through the assumed commissions the Respondent derives from the competitors. Even although the Respondent has now apparently altered the website, any search of it and use of the hyper-link to Barnes & Noble still reveals the Respondent's site lying beneath. Framing in such a manner is not a legitimate activity as it all too readily allows a viewer to revert to the original website and access from there the competitors sites. Indeed a search of the website associated with some of the domain names highlights not Barnes & Noble but Abebooks, Amazon and Borders.
But the most telling evidence against the Respondent is its apparent trading on misspelled websites or typosquatting. Annexure 14 reveals a number of other domain names registered to the Respondent, one can only assume in similar circumstances to those existing in the present case. These other domain names also exhibit deliberate misspellings, some of which are misspellings engineered to take advantage of a one key mistype by somebody who has inadvertently pressed the wrong key on a keyboard. The subtlety of the Respondent's actions is exceptional and once again leads to the ineluctable conclusion that the Respondent typosquats and has registered and is using the present domain names in suit in bad faith.
Ground 4(a)(iii) is accordingly made out under both limbs.
For the reasons set out above the Panelist finds:
(a) The domain names in suit registered by the Respondent are identical or confusingly similar to trade marks to which the Complainant Barnes & Noble has rights; and
(b) The Respondent does not have any rights or legitimate interests in respect of the domain names; and
(c) The Respondent's domain names were registered and are being used in bad faith.
Accordingly, pursuant to clause 4(i) of The Policy, the Panelist requires that the registration of the following domain names be transferred to the Complainant Barnes & Noble College Bookstores Inc.:
John Katz QC
Dated: April 17, 2003