WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Carphone Warehouse Limited and The Phone House B.V.
v. Navigation Catalyst Systems, Inc.
Case No. D2008-0483
1. The Parties
The Complainants are The Carphone Warehouse Limited, London, United Kingdom of Great Britain and Northern Ireland (the “First Complainant”), and The Phone House B.V., Amersfoort, Netherlands (the “Second Complainant”). Both Complainants are represented by Yoann Fouquet, of the United Kingdom of Great Britain and Northern Ireland.
The Respondent is Navigation Catalyst Systems, Inc., of El Segundo, California, United States of America, represented by Lewis & Hand, LLP, United States of America.
2. The Domain Names and Registrars
The disputed domain name <thecarephonewarehouse.com> is registered with GoDaddy.com, Inc.
The other 17 disputed domain names are all registered with Basic Fusion, Inc. They are:
For convenience, the 18 disputed domain names are referred to collectively in this decision as “the Domain Names”, and individually as the “Domain Name [name of the particular domain name]”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2008. On March 31, 2008, the Center transmitted by email to GoDaddy.com, Inc. and to Basic Fusion, Inc, requests for registrar verification in connection with the Domain Names. Basic Fusion, Inc. and GoDaddy.com, Inc. transmitted by email to the Center their respective verification responses, confirming that the Respondent is listed as the registrant of the Domain Names and providing the contact details. 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 proceeding commenced April 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2008. The Response was filed with the Center May 7, 2008.
The Center appointed Warwick Smith, John Swinson and David E. Sorkin as panelists in this matter on June 6, 2008. The Panel finds that it was properly constituted. Each member of 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 Complainants are wholly-owned subsidiaries of an English company called The Carphone Warehouse Group plc, which carries on business as a provider of telecommunications products and services. A webpage from a website operated by the Carphone Warehouse group, refers to the group as “the world’s largest independent telecommunications retailer”. This website asserts that “over 100 million customers have already chosen The Phone House, The Carphone Warehouse and joint venture Best Buy Mobile in America”. The web page indicates that the Complainant group operates a total of 2,300 stores in 10 European countries, including Ireland, and operates under a “Best Buy Mobile” brand in the United States of America.
The Complainants’ Domain Names
The group of companies of which the Complainants are part, operates a website at “www.phonehouse.com”. The First Complainant also owns the domain name <carphonewarehouse.com>. The Whois records for these domain names shows that both were created in 1997.
The Complainants have produced copies of Whois database extracts showing that the First Complainant is the owner of numerous other domain names incorporating the expressions “carphone” and “warehouse”. For example, the First Complainant owns the following domain names:
<carphone-warehouse.net> (registered January 2000),
<carphonewarehouse-accessories.com> (registered March 2001), and
<carphone-warehouse.com> (registered November 1998).
A number of other domain names registered by the Complainants have generic or descriptive expressions – e.g. “tariffs”, “upgrades”, “clearance”, “ring tones”, “phones”, and “networks” – added to the basic “carphonewarehouse” root.
In addition to its various “carphonewarehouse” domain names, the First Complainant owns the domain name <cameraphonewarehouse.com>. This Domain Name was registered on April 19, 2004.
The Complainants’ Trade Marks
According to the complaint, the Complainants have been using the trade mark CARPHONE WAREHOUSE since 1989, and the trade mark PHONE HOUSE since 1997, either directly or through license agreements with other companies within the Carphone Warehouse Group.
The First Complainant is the registered proprietor of the marks PHONE HOUSE and CARPHONE WAREHOUSE, in the United Kingdom of Great Britain and Northern Ireland. The PHONE HOUSE registration covers a variety of goods and services in International Classes 9, 36, 37, and 38. The CARPHONE WAREHOUSE registration covers similar goods and services in those classes. Both registrations have been in force in the United Kingdom since October 1997.
The Second Complainant holds Community Trade Mark registrations for PHONE HOUSE and CARPHONE WAREHOUSE. Community Trade Mark No 001814052 for PHONE HOUSE was filed in August 2000, and it covers goods and services in International Classes 9, 36, 37 and 38. Certain additional products (including services in International Classes 35 and 42) were covered by a second PHONE HOUSE application filed on November 16, 2000.
The Second Complainant’s two CARPHONE WAREHOUSE Community Trade Marks, are held under registrations made on separate applications filed in October and November of 2000. These registrations cover a range of goods and services in International Classes 9, 35, 36, 37, 38 and 42.
All of the Complainants’ registered marks referred to above are word marks, and the Complainants say they are not descriptive or generic – the Complainants have produced extracts from the website at “www.reference.com”, stating that there are no (English) dictionary entries for “phone house”, nor any for “carphone warehouse”.
The Claim to Rights in “Camera Phone Warehouse”
The Complainants say that in July 2004, the First Complainant introduced a new advertising slogan “Camera Phone Warehouse” (“the Slogan”) as part of the First Complainant’s new promotion of camera phones. The Complainants have produced a copy of a July 2004 “Buyers’ Guide”, showing use of the Slogan. This Buyers’ Guide has the words “The Camera”, in stylized form, written diagonally over (and obscuring) the “Car” part of the heading “Carphone Warehouse”. (The word “The” appears rotated 90° upwards and in much smaller print, before the “C” in the word “Camera”, and both words are in white lettering against a dark background.) At the foot of the same page, a reference to the Complainants’ website at “www.carphonewarehouse.com” has the expression “cameraphone” written diagonally over the “carphone” part of the domain name. Again, “cameraphone” appears in white lettering against a dark background. There is a white rectangle around “cameraphone”. The first of these two devices (i.e., the stylized “The Camera” superimposed over the “Car” part of “Carphone Warehouse”) is used in several other parts of the July 2004 Buyers’ Guide.
The text of the July 2004 Buyers’ Guide included the statement:
“And at the Carphone Warehouse we sell more camera phones than anyone else, … [text obscured] never know some people may even start calling us The Cameraphone Warehouse!”
The First Complainant registered two domain names incorporating the Slogan (<cameraphonewarehouse.com> and <cameraphonewarehouse.co.uk>), on April 19, 2004.
The Complainants have not provided evidence of use of the Slogan beyond the use in the July 2004 Buyers’ Guide and the registration of the two domain names just mentioned. They nevertheless assert that the Slogan was in July 2004, and is still nowadays, associated in the minds of the general public with the First Complainant and its business.
The Domain Names
According to the Whois particulars produced by the Complainants, the Domain Names were created on the following dates:
<craphonewarehouse.com> March 12, 2004
<caphonewarehouse.com> April 15, 2004
<phonehause.com> April 23, 2004
<thecarephonewarehouse.com> May 3, 2004
<mycarephonewarehouse.com> June 2, 2004
<carwarehousephone.com> July 7, 2004
<camraphonewarehouse.com> August 5, 2004
<carphonewaarehouse.com> August 26, 2004
<carphonewarehpuse.com> September 8, 2004
<carphoewarehouse.com> September 13, 2004
<carphonewareshouse.com> September 27, 2004
<carhponewarehouse.com> March 4, 2005
<carphonewraehouse.com> March 23, 2005
<mycarphonecarewarehouse.com> November 28, 2005
<caraphonewarehouse.com> January 3, 2006
<carphonewarehouseireland.com> August 25, 2006
<thephonehpuse.com> August 26, 2006
<carphone-wharehouse.com> September 25, 2006
The Websites to which the Domain Names Resolve
In their Complaint, the Complainants say that the Domain Names resolve to a commercial web directory or directories displaying links to other providers of telecommunication products and services, including some that are in direct competition with the Complainants (e.g. The Link, Phone4U, T-Mobile, Vodafone and Dial-A-Phone). The Complainants have produced screenshots from the websites to which the various Domain Names resolve. The screenshots appear to have been printed on various dates between November 22, 2007 and January 18, 2008. It is not necessary to refer to the content of all of them; it is enough to say that each of the Domain Names resolved to a website consisting of a landing page, with click-through links grouped under various categories. Many of these categories were directly related to mobile phone communications. Typical click-on links were “Mobile”, “Free SMS”, “Mobile Phone Insurance”, “Cheap International Call”, “Dial a Phone”, “Phone 4 Y”, and “Mobile Phone Game”.
On a website to which 7 of the Domain Names resolved, those links were grouped under a heading: “Top Searches”. In addition to the various “Top Searches” categories, there were click-through “Popular Links” on this website grouped under the headings “Travel”, “Finance”, “Services”, and “Entertainment”.
The web pages produced by the Complainants show the following Domain Names resolving to a website or websites containing a “Carphone Warehouse” link:
“www.carhponewarehouse.com” (accessed through the website at “www.exoticphones.com”).
A number of the Domain Names (<caphonewarehouse.com>, <caraphonewarehouse.com>, <carphonewaarehouse.com>, and <carphonewarepouse.com>) resolved to a website called “Welcome to Mobile Phones”. The “Welcome to Mobile Phones” website contained click-through links to third party websites, grouped under categories such as: “UK Mobile Phones For Less”, Vodafone Business Plans”, “Mobile Phone Offers”, “O2 Phone and Tariff Deals”.
On January 16, 2008, the <carphonewarehouseireland.com> Domain Name pointed to a landing page consisting of the “Top Searches” categories referred to above (including “Carphone Warehouse”).
The <camraphonewarehouse.com> Domain Name resolved to a website at “www.celphoneaccessoryy.com”. This website appeared to consist of no more than a landing page, with click-on categories linking to third party websites, all of which appeared to be connected in one way or another with mobile telecommunications.
The Respondent says in its Response that it is in the business of registering domain names, many of which consist of one or more common use, generic and dictionary words, as well as phonetic equivalents and typographic misspellings of dictionary words.
Annexed to the Response, the Respondent provided a declaration by Seth Jacoby, a Vice-President of the Respondent and an employee of the Respondent’s parent company, Connexus Corporation (“Connexus”). The following information is taken from Mr. Jacoby’s declaration.
The Respondent is an online media company that provides website information to consumers and advertising revenue to its customers, as well as Internet directory and search capabilities in numerous different verticals. The Respondent’s search engine system is based on a keyword system that delivers relevant advertisements and search listings based on relationships between certain keywords. The Respondent publishes the advertisements that advertisers bid on at Overture Search Marketing – it does not itself pick and choose the advertisements that show up on the pages of its websites. By way of example, if there were several advertisers who bid on the keywords “phones” or “cellphones”, those advertisers’ ads would show up on one or more of the websites for any of the Domain Names which contained the word “phone” (or a misspelled equivalent).
As an additional part of its business, the Respondent acts as an investor in domain names which it sees as having the potential to be developed into premium web destinations. The Respondent views registration of keyword “variance”, typographical misspellings, and phonetical equivalents of generic domain names, as a logical part of its business of developing potential new premium web destinations. It has a complete business team fully dedicated to creating “store fronts and rich-content websites”.
The Respondent has processes in place to screen out well-known or registered trade mark names, and it has been investigating ways to improve those processes.
When the Domain Names were registered, the Respondent vetted potential domain names against the publicly available database issued by the United States Patent and Trade Mark Office (USPTO). In the seven years from Connexus’s founding in 1999 through to September 25, 2006 (when the last of the Domain Names was registered), the Respondent never experienced an adverse decision on a complaint under the Policy. When it registered the Domain Names, it had no reason to believe that its system of screening domain name registrations against the USPTO database might be deemed inadequate.
The Domain Names were not acquired for the purpose of selling, renting, or transferring them to the Complainants, and the Respondent had no intention of interfering with the Complainants’ business or alleged trade mark rights.
Finally in his declaration, Mr. Jacoby stated that the Respondent and the group of which it is part, have offices solely within the United States of America. He said that, during the period between March 12, 2004 and September 25, 2006, the Respondent had never heard of the Complainants or their services, and had no knowledge of their United Kingdom or European trade marks. He said that the Respondent registered the Domain Names based on its own screening process, what it regarded as the generic nature of the Domain Names, and in the belief that the Domain Names were available for registration by any party.
In its response, the Respondent states that the Second Complainant’s application to register the CARPHONE WAREHOUSE mark in the European Union, proceeded to registration only on the basis of evidence of use of the mark within the European Union, sufficient to prove that the mark had become distinctive of the Second Complainant’s products in that jurisdiction. The Respondent also notes that, in the United States of America, the Complainants filed 10 applications to register CARPHONE WAREHOUSE and PHONE HOUSE, but abandoned each application at some point between 2001 and 2003. Each of those applications was based on “intent to use”. The Respondent notes further that it was not until November 11, 2005 that the Complainants re-applied to register PHONE HOUSE and CARPHONE WAREHOUSE with the USPTO, again on the basis of “intent to use”. By that date, 13 of the 18 Domain Names had been registered by the Respondent. The November 11, 2005 applications were still pending when the last 5 Domain Names were registered by the Respondent. The Respondent points out that the CARPHONE WAREHOUSE mark was not registered in the United States of America until January 9, 2007, and then only on the Supplemental Register (designated for registration of descriptive marks where no secondary meaning has been proved at the time of application).
Pre-Commencement Correspondence between the Parties
The Complainant has produced copies of correspondence passing between the parties in the period between August 2007 and January 2008. The Complainants’ representative appears to have first written to the Respondent drawing attention to the Complainants’ claimed rights, on August 17, 2007. At that stage, the Complainants’ concern appears to have been only with the Domain Name <carphone-wharehouse.com> (concerns about the other Domain Names were raised at a later stage when they came to the Complainants’ attention). The Complainants’ representative referred to the First Complainant’s registered CARPHONE WAREHOUSE mark, and requested the Respondent’s advice as to whether it had registered any other domain names that were identical or similar to any of the First Complainant’s trade marks.
Connexus replied on the Respondent’s behalf, by letter dated August 21, 2007, rejecting the First Complainant’s claims. The August 21 letter asserted that the Domain Name <carphone-wharehouse.com> was neither identical nor confusingly similar to the First Complainant’s alleged trade mark. It advised that the Respondent provides website information to consumers and advertising revenue to its customers, as well as internet directory and search capabilities. The letter referred to a number of previous Panel decisions under the Policy, in support of the argument that its use of the <carphone-wharehouse.com> Domain Name was legitimate. The letter included denials of any bad faith, and concluded that the First Complainant’s complaint was without merit.
There was further correspondence between the parties in October and November of 2007, and by early December 2007 the Complainants appear to have identified the Respondent’s registrations of all of the Domain Names. Connexus wrote a second letter to the Complainants’ representative on November 16, 2007. Apart from the date and the heading “Re: <Carphone-Warehouse.com>”, the November 16 letter appears to be identical to the letter Connexus had sent to the Complainants’ representative on August 21, 2007 (the letter appears to be in standard form, with alterations made for different domain names, dates, and addressee).
The Complainant’s representative sent an email to the Respondent on December 6, 2007, reiterating its complaints about the registration of the Domain Names. When it received no reply, it sent a follow-up email on January 15, 2008. Connexus replied through its general counsel on January 18, 2008, accusing the Complainants of attempting to expand their trade mark rights beyond their intended scope. Connexus asserted that the Complainants’ registration of generic combinations of words as trade marks did not entitle them to monopolistic rights to exclude others from registering those generic terms and using them in a non-infringing manner. The January 18, 2008 email asserted that the Domain Names had been registered with no prior knowledge of the Complainants’ trade marks. Connexus referred to previous successes it had achieved in proceedings under the Policy, and concluded with advice that, if the Complainants did commence legal action, the Respondent would seek all such relief as was available to it under the law, including a claim for reverse domain name hijacking under the Anti-Cybersquatting Consumer Protection Act (15 U.S.C.§(1125d)).
5. Parties’ Contentions
The Complainants contend:
1. The Complainants have rights in the registered marks CARPHONE WAREHOUSE and PHONE HOUSE. Those marks are highly distinctive of the Complainants’ products and services.
2. The Slogan was in July 2004, and still is, associated in the minds of the general public with the First Complainant and its business.
3. The Domain Names are visually, conceptually, and phonetically highly similar to the Complainants’ trade marks, domain names, and the Slogan. The Domain Names are essentially composed of misspelling variations of the Complainants’ trade marks or the Slogan. In the case of the Domain Name <carphonewarehouseireland.com>, the term “Ireland” simply describes the Irish arm of the Complainants’ business operations. The addition of such a descriptive term does not make that particular Domain Name distinct from the Complainants’ CARPHONE WAREHOUSE mark.
4. For the foregoing reasons, the Domain Names are confusingly similar to the Complainants’ PHONE HOUSE and CARPHONE WAREHOUSE marks, or (in the case of the Domain Name <camraphonewarehouse.com>) to the Slogan.
5. The Respondent has no rights or legitimate interests in respect of the Domain Names:
(i) Neither of the Complainants has authorized, licensed, or otherwise consented to the Respondent’s use of the Complainants’ marks, whether by incorporation into the Domain Name or at all.
(ii) The Complainants have prior rights in the CARPHONE WAREHOUSE and PHONE HOUSE trade marks, in the Slogan, and in the Complainants’ domain names.
(iii) To the Complainants’ knowledge, the Respondent is not acting under any of the company names “Phone House”, “Carphone Warehouse”, or “Camra Phone Warehouse”, and is not commonly known by any of those names or by any of the Domain Names.
(iv) The Respondent does not have any registered trade mark for the names “Phone House”, “Carphone Warehouse”, or “Camra Phone Warehouse”.
(v) The Respondent is not using the Domain Names in connection with a bona fide offering of goods or services, or a legitimate non-commercial or fair use under paragraphs 4(c)(i) or 4(c)(iii) of the Policy. The Respondent has been using the Domain Names to maintain a commercial web directory displaying links to other providers of telecommunication products and services that are in direct competition with the Complainants. The Respondent is generating click-through fees for each consumer it diverts to the competing websites, and it is not therefore using the Domain Names in connection with a legitimate non-commercial or fair use.
(vi) The Respondent does not offer any products or services by reference to any PHONE HOUSE, CARPHONE WAREHOUSE, or CAMRA PHONE WAREHOUSE trade marks.
6. The Domain Names were registered and are being used in bad faith:
(i) The Respondent is using the Domain Names, which are confusingly similar to the Complainants’ marks, to operate a commercial web directory featuring links to the websites of other companies providing competing services. This means that Internet users searching for the Complainants’ sites and mis-typing the Complainants’ domain names, will be redirected to competitors’ websites due to the Respondent’s activities. In those circumstances, the Respondent has registered and is using the Domain Names for the primary purpose of disturbing the Complainants’ business. That constitutes bad faith registration and use under paragraph 4(b)(iii) of the Policy.
(ii) Had the Respondent conducted some good faith searches before registering the Domain Names, it would readily have found references to the Complainants’ trade marks. A search on the Google search engine for the Domain Names shows numerous references to the Complainants. A Google search on “The Phone Hpuse” even suggests the correct wording – “The Phone House”. None of the Domain Names is generic or descriptive – they are not comprised of dictionary words, and they have no meaning at all. If the Respondent had intended to register generic or descriptive domain names, the Respondent would not have registered Domain Names that are composed of misspelled terms and thus have no meaning. The sole value of the Domain Names, and the sole reason they were registered, is their close approximation to existing trade marks. The Domain Names are used to attract Internet users to websites where the Respondent is earning click-through fees. It is the reputation of the Complainants’ trade marks that attracts customers, and the Respondent is profiting from such reputation. In the foregoing circumstances, the Respondent’s conduct constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The Respondent contends:
1. The Complainants have no trade mark rights in “Camra Phone Warehouse”. They do not claim to have any registered rights in that expression, and the claimed mark is purely descriptive. The Complainants have failed to prove that the claimed mark has been used to identify the source of their goods or services, or prove any strong consumer identification of the claimed mark as an indicator of goods or services of the Complainants.
2. The Respondent does not dispute the validity of the United Kingdom and European Union registrations of PHONE HOUSE and CARPHONE WAREHOUSE. However, it contests the strength and expansiveness of the Complainants’ rights under those marks. Both marks are arguably merely generic of the “communication and telecommunication products and services” which the Complainants emphasize in their Complaint, as well as of the cellphone-related links provided by the Respondent on the websites it hosts at the Domain Names.
3. Even under United Kingdom trade mark law, the more descriptive the name, the more by way of evidence a Court will require to establish reputation and goodwill. Moreover, the more descriptive the name, the narrower the ambit of protection that a Court will afford to the name (citing UK Betting plc v. Pam Oldfield, WIPO Case No. D2005-0637, holding that the disputed domain names <ukbet.com> and <ukbet.org> were not confusingly similar to the complainant’s mark UK BETTING).
4. Based on the USPTO database records at the times the Domain Names were registered, the Respondent could not possibly have known that the Complainants could claim trade mark rights in the generic words “car phone warehouse”, or “phone house”. Having regard to the Complainants’ abandonment of their application to the USPTO to register those expressions as trade marks, it was reasonable for the Respondent to have believed that the Domain Names were available for registration.
5. When the last 5 Domain Names were registered by the Respondent, the Complainants’ November 2005 applications were still pending with USPTO. Pending trade mark applications do not in themselves establish protectable rights under the Policy.
6. Having regard to the foregoing contentions, the Panel should conclude that the evidence available to the Respondent when it registered the Domain Names strongly suggested that the Complainants lacked any rights in the CARPHONE WAREHOUSE and PHONE HOUSE marks.
7. The Respondent registers predominantly generic and descriptive domain names, and misspellings thereof, which Internet users rely upon as search terms for contextual advertising to find the goods and services that they seek. It is neither remarkable, nor a showing of bad faith, that advertisers choose to populate the landing pages with links to advertisements relevant to the generic and descriptive meanings of the words that Internet users type into their Web browsers from to time. Use of the Domain Names to display links to search results related to businesses marketing phone products and phone-related services is fully consistent with the generic or descriptive meanings of the Domain Names. Indeed, the registration and use of common words and misspellings of dictionary words, used in their dictionary sense, is recognized as a legitimate use (citing Dial-a-Mattress Operating Corp v. Ultimate Search, WIPO Case No. D2001-0764, and Kaleidoscope Imaging Inc v. V Entertainment aka Slavik Viner, FA 203-207, and National Trust for Historic Pres v. Preston, WIPO Case No. D2005-0424).
8. The Respondent, without any knowledge of the Complainants or their non-US marks, registered the Domain Names for short-term use in connection with keyword search, and possible long-term development in the category of mobile phones or car phones. To the Respondent’s knowledge, the Domain Names were simply combinations of dictionary words, such as “car”, “phone”, “camera”, “warehouse”, and “my”, or “the”, and close typographical misspellings of those words.
9. The Google search results produced by the Complainants should not be deemed relevant, as they were generated in 2008, not 2 to 4 years ago when the Domain Names were registered.
10. The onus of proving that a respondent in country A ought to have known of a trade mark registered in country B, is on the complainant trade mark owner. Registration of the mark in country A can assist a panel in making a bad faith registration inference, as can evidence of complainant’s presence and marketing of its product in country A (citing Pfizer Inc v. Ivan Glukhov (Gulucotrol Administrator WWW.Server, WIPO Case No. D2001-1465). In this case, neither CARPHONE WAREHOUSE nor PHONE HOUSE were registered in the United States of America, and neither was so well-known that the Respondent should have known of them. More significantly, the Complainants lack any protectable rights in those terms in the United States, and have no rights under United States trade mark law to stop others from using those terms in commerce in the United States of America (citing 21 Club Inc v. 21 Club, WIPO Case D2000-1159).
11. The Respondent’s registration of what appeared to be generic, dictionary words and misspellings of dictionary words – held to be non-distinctive in the United States – cannot have been in bad faith.
6. Discussion and Findings
A. Relevant Provisions of the Policy - General
Under Paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) That the Domain Name is identical or confusingly similar 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 and is being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
B. Identical or Confusingly Similar
The Complainants have proved that they are the registered proprietors of the marks CARPHONE WAREHOUSE and PHONE HOUSE, in the United Kingdom of Great Britain and Northern Ireland and in the European Union. The Respondent does not challenge the validity of those registrations.
Proof of ownership of a registered trade mark or service mark is sufficient for a complainant to establish a “right” in that trade mark or service mark, for the purposes of paragraph 4(a)(i) of the Policy. The location of the registered trade mark and the goods and/or services it is registered for, are irrelevant when considering the complainant’s rights in that mark (see the consensus view of WIPO Panels deciding cases under the Policy, as reported at paragraph 1.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”). The Complainants have sufficiently established rights in the marks CARPHONE WAREHOUSE and PHONE HOUSE.
However, the Panel is not satisfied that the Complainants have proved that either of them has rights in the expression “Camera Phone Warehouse”. First, the Complainants do not rely on any registered rights in that expression. The claimed rights are common law rights, based on claimed use of the expression (to such extent that the expression has become distinctive of the Complainants’ goods or services provided by reference to it). In Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121, the Panel considered that the easiest way to define a common law trade mark in the United Kingdom, was to say that it consists of an unregistered mark used by its proprietor in the course of trade, the unauthorized use (or imitation) of which by another trader would lead to a successful action in the tort of passing off. The panel in Julian Barnes went on to observe:
“Traditionally, in the context of passing off, one only needs to consider the question of secondary meaning where the primary meaning is descriptive and does not indicate the claimant. The claimant has to prove that the descriptive primary meaning has been displaced by a secondary meaning …”
In this case, the expression “Camera Phone Warehouse”, if it is registrable as a trade mark or service mark at all, would certainly be towards the descriptive end of the spectrum of registrable marks (i.e. the spectrum ranging from inherently distinctive, made-up, expressions at one end, to purely descriptive or generic expressions at the other). In such cases, there needs to be compelling evidence that the complainant has made sufficient use of the expression that it has acquired a secondary meaning as an identifier of the complainant’s products (in that regard, see the three-member Panel decision in Orbis Holdings Limited v. Lu a Feng (First Respondent) and Orbis Search (Second Respondent), WIPO Case No. D2007-0515, where the Panel said:
“Being a dictionary word, and not inherently distinctive, there is an onus on the complainant to present the Panel with compelling evidence of secondary meaning and distinctiveness through extensive use”.
There is no such “compelling evidence” here. All there is, is a copy of the July 2004 Buyers Guide, which includes a handful of examples of the First Complainant using a stylized version of the expression “The Camera Phone Warehouse”, one use of the expression “www.cameraphonewarehouse.com”, and the registration of the two <cameraphonewarehouse> domain names. There is no evidence of any use of the Slogan by either Complainant before July 2004, nor any evidence of use of the Slogan after that date. Nor is there any evidence that the Complainants’ <cameraphonewarehouse> domain names resolve to an active website through which goods or services are promoted by reference to the Slogan. In summary, the evidence falls far short of establishing that either Complainant enjoys any right in the Slogan which would qualify as a “right” for the purposes of paragraph 4(a)(i) of the Policy.
The real issue, then, is whether the Domain Names are confusingly similar to the CARPHONE WAREHOUSE and PHONE HOUSE marks in which the Complainants have established rights. The Panel is satisfied that the < camraphonewarehouse.com> Domain Name is not confusingly similar to either of those marks. The Panel accepts the proposition advanced by the Respondent, based on the UK Betting plc v. Pam Oldfield case (supra), that rather less will be required to distinguish a disputed domain name from a complainant’s trade mark which is substantially descriptive, than is required where the complainant’s mark is inherently distinctive. In this case, the Domain Name <camraphonewarehouse.com> conveys a different impression, or idea, than that conveyed by either CARPHONE WAREHOUSE or PHONE HOUSE. While the word “warehouse” is common to this particular Domain Name and the Complainants’ CARPHONE WAREHOUSE mark, the stronger part of that mark is clearly the word “CARPHONE”. “Camraphone” is, in the Panel’s view, sufficiently distant in meaning, sound, and appearance from “car phone”, that the two cannot be considered confusingly similar. Accordingly, the Complaint must be denied insofar as it relates to the Domain Name <camraphonewarehouse.com>.
However, the Panel is satisfied that each of the other Domain Names (“the remaining Domain Names”) is confusingly similar to one of the Complainants’ registered marks. The Domain Names <phonehause.com>, and <thephonepuse.com>, are confusingly similar to the Complainants’ PHONE HOUSE mark. Leaving aside the generic suffix “.com”, which is not to be taken into account in the comparison, the first of these two Domain Names differs from the Complainants’ PHONE HOUSE mark only in that the letter “a” has been substituted for the letter “o” in the “house” part of the Complainants’ mark. In the second of these two Domain Names, the letter “p” has been substituted for “o” in “house”, and the non-distinctive article “the” has been added at the front of the Domain Name. Both visually and phonetically, these two Domain Names are very similar to the Complainants’ PHONE HOUSE mark, and both names would convey precisely the same meaning to a significant number of Internet users, as the Complainants’ PHONE HOUSE mark.
The other Domain Names all contain minor, non-distinctive variations from the Complainant’s CARPHONE WAREHOUSE mark (e.g. the addition or deletion of a single letter, the transposition of two letters, or the addition of non-distinctive expressions such as “the”, “my”, or “care”), or in one case the addition of the name of a country (Ireland). Many of the minor variations would not be picked up by Internet users, or if they were picked up, they would immediately be recognized as mistakes or minor typographical differences from the Complainants’ CARPHONE WAREHOUSE mark (or the First Complainant’s <carphonewarehouse.com> domain name). The “Ireland” Domain Name, would convey the meaning of a large carphone business operating in Ireland. Each of the other “carphone” Domain Names would convey to Internet users precisely the same meaning, or idea, as that conveyed by the Complainants’ CARPHONE WAREHOUSE mark, and none of them differs significantly from that mark, either visually or phonetically. The variations are insignificant, and would not bring the Respondent within the category of case described in UK Betting plc v. Pam Oldfield.
Accordingly, the Panel finds that the remaining Domain Names are all confusingly similar to trade marks or service marks in which the Complainants have rights. The <camraphonewarehouse.com> Domain Name is not identical or confusingly similar to any such mark, and the Complaint in respect of that Domain Name will be denied under the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests in the Domain Name on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that the Respondent does have a right or a legitimate interest in the Domain Name.
That approach is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
In this case, the Complainants have not authorized the Respondent to use the Complainants’ CARPHONE WAREHOUSE and PHONE HOUSE marks (or any confusingly similar expressions), whether by incorporating them into the Domain Names or otherwise. The Respondent does not claim any relevant trade mark or service mark rights in any of the Domain Names, and there is no suggestion that the Respondent has been commonly known by any of the Domain Names. Nor has the Respondent been using the Domain Names in a non-commercial or fair way, without intent for commercial gain. The examples of rights or legitimate interests which are provided at subparagraphs 4(c)(ii) and (iii) of the Policy, therefore have no application in this case.
In the foregoing circumstances, the Complainants have made out a sufficient prima facie case of “no rights or legitimate interests”, and the evidential burden shifts to the Respondent to establish any rights or legitimate interests it might have.
In its response, the Respondent contends that it has been using the Domain Names to provide a perfectly legitimate service, namely the establishment of directory websites at domain names which are generic and/or descriptive, with links to advertisements which are relevant to the generic and descriptive meanings of the words that Internet users type into their Web browsers from time to time. The Respondent contends that there is a recognized market need for descriptive keyword browser search services, and that it is one of many companies helping to fill that need. It says that where generic, non-protectable typos are concerned, it provides a useful service to users by suggesting alternative search results.
In essence, the Respondent is contending that its use of the Domain Names, before it received any notice of the present dispute, has been a use “in connection with a bona fide offering of services” (Policy, paragraph 4(c)(i)). The critical question is whether the Respondent’s activities with respect to the remaining Domain Names have been bona fide.
In the Panel’s view, the Respondent’s use of the remaining Domain Names has not been in connection with any bona fide offering of goods or services, and the Respondent has failed to establish any rights or legitimate interests under paragraph 4(c)(i) of the Policy. The Panel’s reasons for that finding are the same reasons which have led the Panel to conclude that the remaining Domain Names were registered and have been used in bad faith. Those reasons are set out in section 6D of this decision.
The Respondent not having advanced any other possible basis for a claim to rights or legitimate interests in the remaining Domain Names, the Panel finds that the Complainants have proved this part of the Complaint insofar as it relates to the remaining Domain Names.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Panel is also satisfied that the Complainants have proved this part of their Complaint, as it relates to the remaining Domain Names. The Panel’s reasons for coming to that view are as follows:
1. The remaining Domain Names are all confusingly similar to one or other of the Complainants’ CARPHONE WAREHOUSE and PHONE HOUSE marks.
2. For the Complainants to succeed on this part of the Complaint, they must persuade the Panel that, in registering the remaining Domain Names, the Respondent was targeting the Complainants and their marks, or at least had the Complainants or their marks in mind and intended to derive commercial or other benefits, not from the attractiveness of the remaining Domain Names as close approximations of common descriptive expressions, but from their value as close approximations of the Complainants’ trade marks. That approach is now well established by numerous panel decisions under the Policy. See, for example, the decision of the three-member Panel in a case decided in 2007 involving the Respondent, mVisible Technologies Inc v. Navigation Catalyst Systems Inc, WIPO Case No. D2007-1141. In that case, the Panel said:
“If the links on a given landing page are truly based on the generic value of the domain name, such use may be bona fide because there are no trade mark rights implicated by the landing page. See e.g. Landmark Group v. Digi Media.com NAF Claim No. 285459 (PPC) [pay-per-click] landing pages are legitimate if ‘the domain names have been registered because of their attraction as dictionary words, and not because of their value as trade marks’); see also National Trust for Historic Preservation v. Barry Preston, WIPO Case D2005-0424. If, though, the links are based on the trade mark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally do constitute abusive cybersquatting. See e.g. Champagne Lanson v. Development Services/MailPlanet.com Inc, WIPO Case No. D2006-0006 (PPC landing page not legitimate where ads are keyed to the trade mark value of the domain name); The Knot, Inc v. In Knot We Trust Limited, WIPO Case No. D2006-0340 (same); Brink’s Network, Inc v. Asproductions, WIPO Case No. D2007-0353 (same).”
3. Other cases to similar effect, include The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743, Asian World of Martial Arts Inc v. Texas International Property Associates, WIPO Case No. D2007-1415, Alpine Entertainment Group Inc. v. Walter Alvarez, WIPO Case No. D2007-1082, Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448, and Christian Dior Couture v. Paul Farley, WIPO Case No. D2008-0008.
4. The first major hurdle the Complainants face in proving that the Respondent has targeted their marks (in the sense discussed in the panel decisions just referred to), is that the Respondent denies that it had any knowledge of the Complainants or their marks when it registered the Domain Names. For the following reasons, the Panel does not find that claim by the Respondent credible:
4.1 The First Complainant registered the domain name <cameraphonewarehouse.com>, on April 19, 2004. Four months later the Respondent registered the almost-identical Domain Name <camraphonewarehouse.com>, an obvious “typo” of “cameraphonewarehouse.com”. The First Complainant is also the owner of the domain names <carphonewarehouse.com> and <phonehouse.com>, registered in 1997. The remaining Domain Names are either misspellings of one or other of those domain names, or consist of those domain names with a non-distinctive expression (“my”, “the”, or “care”), or the country “Ireland”, added.
The Respondent is an experienced, professional acquirer and user of domain names. It must be keenly interested in the possible value of domain names it seeks to acquire, and in those circumstances it is not credible that the Respondent would have registered domain names consisting of obviously misspelled English expressions, without first inquiring who owned the domain names consisting of the corresponding correctly spelled expressions. Is the Respondent seriously suggesting that, when it registered Domain Names such as <carphonewraehouse.com> and <camraphonewarehouse.com>, it did not turn its mind to the questions of who owned the domain names <carphonewarehouse.com> and <cameraphonewarehouse.com>, and whether websites might be established at those domain names?
4.2 One of the Domain Names is <carphonewarehouseireland.com>. Adopting the singular form of the expression “Carphone Warehouse” in this Domain Name tends to suggest that the Respondent had in mind some particular “Carphone Warehouse” in Ireland, rather than some category of Irish retail or wholesale outlets that could be described generically as “carphone warehouses”. In those circumstances it seems to the Panel to be most unlikely that the Respondent would not have carried out a simple Google or other Internet search to find out if there was such a business. Unlike the other Domain Names, the Respondent elected with this Domain Name to incorporate in the Domain Name reference to a specific country, outside of the United States, where the Complainants’ group carries on business and holds a registered mark corresponding exactly with the Domain Name (minus the “Ireland” addition). Indeed, one of the Complainants’ OHIM documents dated in March 2002, which was produced by the Respondent in Exhibit “E” to the Response, asserted that “Carphone Warehouse” had by March 2002 acquired a “massive reputation” in Great Britain and in the Republic of Ireland (with 26 stores in the latter country). The Respondent has failed to offer an explanation for its choice of this Domain Name, in circumstances where an explanation was clearly called for. The Panel can only sensibly infer that any honest explanation the Respondent might have provided, would not have assisted its case.
4.3 The remaining Domain Names were registered over a period of 2½ years, between March 12, 2004 and September 25, 2006. Three of the early registrations (in April and May of 2004), were the Domain Names <caphonewarehouse.com>, <phonehause.com>, and <thecarephonewarehouse.com>. The screenshots which the Complainants produced from the websites to which these Domain Names resolved between November 2007 and mid-January 2008, all show a click-on link “Carphone Warehouse”. In addition, the January 2008 web page to which the domain name <caphonewarehouse.com> resolves, contains some click-through links which are specifically focused on the United Kingdom (e.g. “Expedia.co.uk”, and “Mobile Phone UK”). In view of the apparent strength of the First Complainant’s CARPHONE WAREHOUSE mark in Great Britain, it seems probable that the “Carphone Warehouse” link on the web pages for these three Domain Names, is a link to the Complainants’ website.
The Respondent contends that it had never heard of the Complainants or their marks when it registered the Domain Names. But a number of the web pages to which these three Domain Names have recently resolved have “Carphone Warehouse: ” links on them. If those links were present on the websites to which the three Domain Names resolved shortly after they were registered in April/May 2004, the Respondent could not credibly contend that it was unaware of the First Complainant or its CARPHONE WAREHOUSE mark when it later registered the rest of the Domain Names. The presence of these “Carphone Warehouse” links clearly called for some explanation from the Respondent (for example, a statement that those links were only placed on the relevant websites after the last of the Domain Names was registered, if that was the case). No such explanation has been provided. The Respondent simply disclaims responsibility for the links, saying: “It is neither remarkable, nor a showing of bad faith, that advertisers choose to populate the landing pages with links to advertisement relevant to the generic and descriptive meanings of the words that Internet users type into their Web browsers from time to time.” That statement does not address at all the questions of when the “Carphone Warehouse” links first appeared on websites to which some of the Domain Names have resolved, or (if the links were there in 2004) why the Panel should conclude that the Respondent was unaware of the content of the websites to which it had pointed the relevant Domain Names. The existence of the “Carphone Warehouse” links, and the Respondent’s election not to explain them in its Response, are further factors pointing to the implausibility of the Respondent’s claim that it had no knowledge of the Complainants or their marks.
4.4 The Respondent has advanced some arguments in its response which, as an experienced domain name professional and past participant in proceedings under the Policy, it must have known were hopeless. For example, the Respondent submitted: “More significantly, Complainant lacks any protectable rights in [the Complainants’ marks] in the United States and has no right under US trade mark law to stop others from using those terms in commerce in the United States”. First, the First Respondent’s election to register the “Ireland” Domain Name seems inconsistent with any suggestion that the Respondent’s focus was limited to the United States of America (as it appears to be trying to suggest). So also do the numerous links on websites at many of the Domain Names, which clearly have a United Kingdom focus. Secondly, the Respondent was the respondent in the mVisible Technologies Inc v. Navigation Catalyst Systems Inc. decision, and has been a respondent in other panel decisions under the Policy. It could hardly have failed to appreciate that this administrative proceeding is not concerned with whether or not United States trade mark law would permit the Complainants to stop others from using their CARPHONE WAREHOUSE and PHONE HOUSE marks in commerce in the United States. The Internet is worldwide, and the application of the Policy in a case such as this is not restricted to matters affecting commerce in the United States of America.
4.5 Mr. Jacoby said in his declaration that, when the Domain Names were registered, the Respondent vetted potential domain names against the USPTO database. The last five of the Domain Names to be registered, were registered on and after November 28, 2005. By that date, the Second Complainant had pending in the USPTO its applications to register PHONE HOUSE and CARPHONE WAREHOUSE as trade marks in the United States of America. The Respondent could not have failed to note the existence of those “live” applications when it vetted the USPTO database immediately before it registered those of the Domain Names which were registered on or after November 28, 2005. The fact that a pending application, based on “intent to use”, does not in itself create any rights, does not provide the Respondent with an answer to the more basic question of whether it had heard of the Complainants when it registered the last five of the Domain Names. If the Respondent had not in fact heard of the Complainants or their marks before November 28, 2005, it seems improbable that the Respondent, in the course of conducting the “vetting” exercise at the USPTO, would not have troubled to ascertain the identity of the applicant in the pending applications.
4.6 When considered with the other factors set out in this list, the Respondent’s claim that it selected 18 Domain Names which were almost identical to one or more of two separate trade marks and one slogan all owned or used by the same third party, without any prior knowledge of the existence of that third party or its marks, pushes the boundaries of coincidence too far. Such a claim is just not plausible.
5. For the foregoing reasons, the Panel rejects the Respondent’s contention that it had no knowledge of the Complainants and their marks when it registered the remaining Domain Names
6. It is a short step from that conclusion to infer that, in registering the remaining Domain Names, the Respondent was indeed targeting the Complainants and their CARPHONE WAREHOUSE and PHONE HOUSE marks. The substantial reputation of the Complainants’ group in the United Kingdom and Ireland, the presence of the unexplained “Carphone Warehouse” links on certain of the web pages to which some Domain Names have resolved, the inclusion of “Ireland” in one of the Domain Names, and the sheer implausibility of many of the Respondent’s contentions, are all pointers to the Respondent having been well aware of the Complainants’ marks, and having had the intention to profit from the Complainants’ reputation in those marks (by attracting additional Internet traffic to the websites at the remaining Domain Names, and thereby deriving additional click-through revenue from browsers going to linked third party websites).
7. Having regard to all of the foregoing, the Panel is satisfied that the Complaint relating to the remaining Domain Names falls squarely within the example of bad faith registration and use which is provided at paragraph 4(b)(iv) of the Policy. The Respondent has, for commercial gain, intentionally attempted to attract Internet users to the websites at the remaining Domain Names, by creating a likelihood of confusion with the Complainants’ CARPHONE WAREHOUSE and PHONE HOUSE marks, as to the source, sponsorship, affiliation, or endorsement of the websites to which the Respondent has pointed the remaining Domain Names.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names listed in the schedule to this decision be transferred to the First Complainant, the Carphone Warehouse Limited (the Complainants having nominated the First Complainant as transferee in the event of the Complaint being successful).
The Complaint in respect of the Domain Name <camraphonewarehouse.com> is denied.
David E. Sorkin
Dated: June 20, 2008
DOMAIN NAMES TO BE TRANSFERRED TO COMPLAINANTS
<thecarephonewarehouse.com> (date of implementation of Decision for the above Domain Name is July 14, 2008)