WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gail Guarulhos Indústria e Comércio Ltda. v. Kevin Watson
Case No. D2006-0655
1. The Parties
The Complainant is Gail Guarulhos Indústria e Comércio Ltda. (“Gail GICL”), Guarulhos, SP, Brazil, represented by Edmundo Brunner Propriedade Intelectual, Brazil.
The Respondent is Kevin Watson, La Canada-Flintridge, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <gail.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2006. On May 26, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On May 26, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 1, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 21, 2006. The Response was filed with the Center on June 20, 2006.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on June 23, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant has provided a detailed history of its business, dating back to the founding of its parent company in Germany, in 1891. The Complainant carries on business in Brazil, and other South American countries, as a manufacturer and distributor of ceramic products for architectural use. It appears that the Complainant began its current business in 1972, adopting the corporate name GAIL Arquitetura em Cerâmica in 1975. Export sales were made to the U.S. and other countries by the Complainant from 1980 until 1990.
The Complainant first filed the trademark GAIL in Brazil on October 23, 1974, and the registration was granted on April 25, 1976, for local classes 19.10 and 19.20, to distinguish “materials for construction non metallic, pavement, ceramic coverings”. The Complainant also has four other registrations in Brazil incorporating the mark GAIL. Internationally, the trademark GAIL is registered under class 19 in Peru, Equador, Uruguay, Paraguay, Argentina, Chile, Colombia, Venezuela and Bolivia.
The Complainant’s related company Gail Architektur-Keramik GmbH (“GAIL GmbH”) operates a website at <www.gail.de>, and appears to carry on business under the GAIL trademark internationally, except for South America, where the Complainant operates. Although the Complaint is filed only in the name of Gail GICL, the Complainant appears to rely on the use of the GAIL mark by its related company GAIL GmbH.
The Respondent registered the domain name <gail.com> on April 4, 1996, named after his wife’s given name, as a birthday present for his wife. The Respondent’s wife has been commonly known by the name “Gail” for nearly 50 years. At the time the Complaint was initiated, the Respondent concedes that the homepage corresponding to the domain name under dispute was under construction, but states that all HTTP content was hidden to conserve DSL bandwidth and that the domain has been used for email traffic for which the Respondent has logs dating back to 1998. At the time of this decision, the homepage corresponding to <gail.com> shows a photo of the Respondent’s wife and links to various NASA websites, where she is apparently employed.
5. Parties’ Contentions
The Complainant’s submissions can be summarized as follows:
(a) Identical or Confusingly Similar
The domain name in dispute is identical to the Complainant’s registered trademark and corporate name. Adding the suffix “.com” does not distinguish a domain name from being confusingly similar to a trademark. Furthermore, incorporating the entirety of a mark into a domain name is sufficient to conclude that a domain name is confusingly similar to the registered mark.
(b) Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the domain name in dispute name because: i) GAIL is neither a generic term, a common word, dictionary word, descriptive of the Respondent’s products, nor does it appear to be the Respondent’s trade name, surname or nickname; ii) the corporate name GAIL has been used by the Complainant and related companies since 1891 and the Respondent’s use is not associated with a bona fide offering of goods or services; iii) the Respondent registered the domain name <gail.com> at the same time the Complainant was increasing its sales around the world; iv) the Respondent is not, and never has been a representative of the licensee of the Complainant, nor is otherwise authorized to use the Complainant’s mark; v) the use of the disputed domain name conflicts with the Complainant’s trademark; vi) the domain name in dispute is confusingly similar with the Complainant’s trademark and was registered by the Respondent without permission, which cannot be regarded as a bona fide offering of goods and services; vii) it is unlikely that the Respondent was unaware of the Complainant’s trademark considering the fame and tradition of the trademark GAIL; and viii) the Respondent does not run any business associated with the disputed domain name and therefore the use of the domain name <gail.com> cannot be considered a legitimate use in connection with bona fide offering of goods and services.
(c) Registered and Used in Bad Faith
The Respondent’s domain name was registered and is being used in bad faith. The domain name <gail.com> is nearly identical to the trademarks owned by the Complainant and was registered to prevent the Complainant from reflecting the trademark GAIL in a corresponding domain name. Furthermore, because the Respondent registered the domain name exactly when the Complainant increased its sales of GAIL products to the United States, this should be identified as an abusive practice. Lastly, the Respondent knew about the existence of the Complainant and of its GAIL trademark and nevertheless proceeded with the registration of the domain name.
The Respondent provided the following arguments in response:
(a) Identical or Confusingly Similar
The Respondent recognizes that the Complainant holds the trademark GAIL in the field of extruded coverings and ceramic coverings but submits that the name “Gail” is also an extremely common female name and that a company cannot have exclusive rights to a trademark which is also a common name or word.
(b) Rights or Legitimate Interests
The Respondent has a legitimate interest in respect to the domain name <gail.com> in that it is his wife’s given name. Furthermore, since GAIL is a common name, even if his wife did not have the name, the Respondent would still have a legitimate interest in the domain name merely because he registered it. Lastly, the Respondent has been making a legitimate non-commercial use of the domain name (family photographs, emails), even though all HTTP content was hidden to conserve DSL bandwidth.
(c) Registered and Used in Bad Faith
The Complainant offered no evidence that the disputed domain name is being used in bad faith. Additionally, the Respondent was unaware of the Complainant’s company until, some years after he had registered the domain name <gail.com>, he was threatened with legal action by another party. The Respondent questions the importance of the disputed domain name to the Complainant since it did not register the domain name before the Respondent did and because it waited ten years to file this Complaint. Furthermore, the Respondent did not acquire the domain name for the purpose of selling, renting or otherwise transferring the domain name to the Complainant or a competitor of the Complainant. Although the Respondent has received numerous offers from various entities to purchase <gail.com>, he has summarily rejected each one. The Respondent has never offered to sell any domain name he has registered and has never been accused of cyber-squatting. Lastly, the Respondent is not in competition with the Complainant and has not used the domain name for commercial gain or to tarnish the Complainant’s trademark, disrupt the Complainant’s business or to otherwise mislead or divert potential customers.
(d) Reverse Domain Name Hijacking
The Respondent alleges that the Complainant is using the Policy in bad faith for reverse domain name hijacking.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has marks;
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first issue in this matter is whether the domain name <gail.com> is confusingly similar to the Complainant’s mark. There are two elements that must be satisfied to establish this: a) the Complainant has rights in the particular mark or marks; and b) the domain name in question is identical or confusingly similar to that mark.
The first element is readily established and independently verified by reference to the applicable trademarks register in Brazil and various South American countries, establishing that the Complainant holds the trademark GAIL in the field of extruded coverings and ceramic coverings. This fact is not contested by the Respondent.
The domain name <gail.com> is identical to the Complainant’s GAIL trademark, as the suffix “.com” is merely an attribute of the top level domain name. Virtual identity is sufficient for the purposes of satisfying the second element of the test.
The Panel therefore finds that the Complainant has satisfied the first requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant’s trademark GAIL is a commonly used female name in the English language, derived from the Hebrew name “Abigail”. In the United States, where the Respondent resides, the name is particularly common. According to Respondent’s evidence, data maintained by the U.S. Social Security Administration shows that “Gail” ranked within the top 500 given names for females between 1930 and 1978. Despite owning registered trademarks for GAIL in class 19 in various South American jurisdictions, Complainant cannot credibly assert exclusive rights to this “fairly short, non-fanciful name” beyond the field of architectural ceramics, and therefore the “Respondent may legitimately develop its own use of the name in an unrelated field” (See Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654, complaint denied for <tammy.com>). Accordingly, it is irrelevant that the Complainant has not authorized the Respondent to use its trademark as a domain name or to register the disputed domain name (See Rusconi Editors S.p.A. v. FreeView Publishing Inc., WIPO Case No. D2001-0875, complaint denied for <donna.com>).
Paragraph 4(c) of the Policy lists three non-exhaustive circumstances which can demonstrate the Respondent’s rights and legitimate interests in the domain name under dispute. The Respondent has satisfied paragraph 4(c)(iii) in demonstrating that he is making a legitimate non-commercial or fair use of <gail.com>, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. The Respondent registered the domain name <gail.com> to reflect his wife’s given name and has used the corresponding website to post family photographs and emails. The Panel finds this constitutes non-commercial use, especially given the fact that Respondent is not in competition with the Complainant and the fact that the Respondent has never attempted to use or actually used the domain name for any sort of commercial purpose.
Confirmation that the Respondent has a legitimate right and interest in the disputed domain name is supported by the fact that no evidence, other than a bare assertion by the Complainant, was presented showing that the Respondent was aware of the Complainant’s mark where he registered the domain name in 1996. The Panel accepts the Respondent’s evidence that he was unaware of any trademark rights in the brand GAIL, until a number of years after he registered the domain name, when he was apparently threatened with legal action by a third party claiming rights to the name.
The Panel therefore finds that the Complainant has not established that the Respondent has no right or legitimate interest in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds it unnecessary to provide any conclusions with respect to bad faith, in light of the ruling that the Respondent does possess a legitimate interest in the domain name.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that the Panel may make a finding that the Complaint is brought in bad faith in circumstances characterized as reverse domain name hijacking. Although arguable, the Panel declines to find that the Complainant used the Policy in bad faith to attempt to deprive the Respondent from using his domain name. The Panel is satisfied that the Complainant was attempting to assert its trademark rights, without bad faith, as it is entitled to do.
For all the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Dated: July 7, 2006