The Complainant is Wink NYC, Inc. of New York, New York, United States of America, represented by Tucker & Latifi, LLP, United States of America.
The Respondent is Wink New York, Inc. of Farmingdale New York, United States, represented by Susan Suyama, United States of America.
The disputed domain names <winknewyork.com> and <winkny.com> (the “Disputed Domain Names”) are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2008. On August 18, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain names at issue. On August 18, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on August 28, 2008. The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on September 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2008. The Response was filed with the Center on September 26, 2008 and a Revised Response correcting the lettering of several Annexes was filed on September 29, 2008. Complainant filed a Reply to the Revised Response on October 3, 2008.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on October 16, 2008. 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.
Complainant currently operates three retail stores in New York City selling shoes, apparel, jewelry, handbags, and other fashion accessories. In connection with this business, Complainant is the owner of a number of registered United States trademarks, including the mark WINK in international class 25 for women's sportswear, namely, jackets, jeans, t-shirts, dresses, skirts, slacks, shoes, and tops. Complainant's predecessor in interest filed an application for this trademark on May 27, 1999 (registered on April 11, 2000), with a first use in commerce listed as August 1995. Complainant registered the domain name <winknyc.com> on March 2, 2005.
Respondent operates a retail store selling similar types of clothing and accessories in Rockville Center, New York, approximately 20 miles away. Respondent registered the Disputed Domain Names on December 13, 2002.
Complainant alleges that the Disputed Domain Names are confusingly similar to its trademarks and service marks (collectively referred to as the WINK mark). Respondent has no rights or legitimate interests in the Disputed Domain Names because Respondent registered and began using the Disputed Domain Names long after the registration date of Complainant's WINK trademark. Complainant has achieved commercial success in selling WINK-branded and other clothing and accessories in its three retail stores in Manhattan, its web site at “www.winknyc.com”, and other stores. Due to extensive advertising and unsolicited editorial pieces, Complainant's products and stores have gained notoriety in the New York fashion scene.
The Disputed Domain Names are confusingly similar to Complainant's domain name <winknyc.com>. Complainant has gone to great lengths to protect and enforce its trademark rights under the WINK mark. Respondent registered and used the Disputed Domain Names long after Complainant's registration and use of the WINK mark. On January 28, 2008, counsel for Complainant sent a demand letter to Respondent seeking the assignment of ownership of the Disputed Domain Names to Complainant.
The Disputed Domain Names were registered and used in bad faith because Respondent registered and used them long after the registration and use of the WINK mark, because there can be no legitimate business reason for Respondent's use of the WINK mark in the Disputed Domain Names, and because Respondent is intentionally attempting to attract for commercial gain, Internet users to Respondent's web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on the Respondent's web site.
The Disputed Domain Names are not confusingly similar to the WINK mark. Complainant is not the owner of marks covering Wink New York or Wink NY, but simply WINK. Complainant does not sell products under the mark Wink NYC, but only WINK. Respondent has the right to do business as Wink New York, as it is the lawful name of incorporation, and as Wink NY, as it is a common abbreviation thereof.
Respondent registered the Disputed Domain Names long before Complainant opened its retail stores in November 2005 or registered its domain name in March 2005. Respondent has only done business as Wink New York since its inception. Respondent conducted a thorough Internet search in 2002 prior to registering the Disputed Domain Names. Respondent posted a disclaimer on its website after being contacted by Complainant to mitigate any consumer confusion.
Respondent could not have acted in bad faith in registering and using the Disputed Domain Names because at the time, Respondent's intent was to register them for future online commerce. The website is still information only and cannot divert sales from customers who were looking for Complainant's products.
Complainant and Respondent are currently embroiled in a lawsuit filed by Complainant in United States federal court on April 17, 2008. Paragraph 18(a) of the Rules allows the Panel to suspend or terminate the UDRP proceeding in its discretion where, as here, the Disputed Domain Name are the subject of other legal proceedings. Because neither party has requested that the proceedings be suspended or terminated and because the Panel's decision has no binding precedential effect on the court proceedings, the Panel elects to issue a decision in this UDRP dispute.
With respect to the reply filed by the Complainant, the Policy provides that supplementary filings are only allowed at the discretion of the Panel. The Panel believes that supplemental filings should only be allowed in exceptional circumstances, for example in situations where a response raises facts that the complainant could not have been expected to address in the complaint. The Panel does not believe that exceptional circumstances exist in the instant case, and therefore disregards the supplemental filing in reaching its decision. However, it should be noted that the issues raised in the supplemental filing are not relevant to the dispositive issue and would not have changed the Panel's decision had it been considered.
For Complainant to succeed, it must prove each of three elements referred to in paragraph 4(a) of the Policy:
i. the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
iii. the Disputed Domain Names have been registered and are being used in bad faith.
Here, the Disputed Domain Names are identical to Complainant's WINK mark, with the addition of “ny” or “newyork”. It is well established that the addition of geographical identifiers do nothing to mitigate the confusing similarity of a domain name with a trademark. See Harrods Limited v. John Griffin, WIPO Case No. D2002-0641. Furthermore, Complainant has shown some limited evidence of actual confusion by establishing that at least one magazine mistakenly listed one of the Disputed Domain Names in a piece relating to an item purchased from Complainant. Therefore, the Panel finds that Complainant has satisfied the first element.
Under the Policy, a party has a legitimate interest in the domain name if “before any notice . . . of the dispute [Respondent] use[s], or demonstra[tes] preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services . . .” Policy paragraph 4(c)(i). However, given the Panel's finding on bad faith, it is not necessary here to make a finding as to the second element. See e.g., Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964.
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, may serve as evidence of the registration and use of a domain name in bad faith:
(i) [the Respondent has] registered or [the Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of [the Respondent's] documented out-of-pocket costs directly related to the domain name; or
(ii) [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent's] web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent's] web site or location or of a product or service on [the Respondent's] web site or location.
Here, none of these four circumstances have been established by Complainant. In fact, Complainant offers the barest of evidence in support of its contention that Respondent registered and used the Disputed Domain Names in bad faith.
First, Complainant essentially argues that Respondent's registration and use of the Disputed Domain Names after the registration date of the WINK mark is itself evidence of bad faith. In certain limited circumstances constructive notice may be inferred by a trademark registration. In this case this alone is not enough to establish bad faith by Respondent. Respondent contends it searched for potentially conflicting business names used online, which search revealed no business on the web by the name “Wink New York” or “Wink NY”.
Next, Complainant states that Respondent cannot have any legitimate business reason for using the WINK mark in connection with the Disputed Domain Names. Complainant fails to support this statement with any evidence, and one can certainly conceive of situations where a party may do business under another's trademarked name without doing so in bad faith.
Finally, Complainant essentially restates the fourth paragraph above with no supporting evidence. Here, although the Disputed Domain Names are confusingly similar to Complainant's mark, it is not apparent that Respondent registered and used them to create consumer confusion with Complainant's own products and business. Respondent has shown that at the time of the registration of the Disputed Domain Names in 2002, Complainant did not operate any retail stores in New York. Complainant has offered no evidence of its use of the WINK Mark in New York or elsewhere prior to the registration of the Disputed Domain Names. Thus, it is highly unlikely that Respondent registered the Disputed Domain Names in an attempt to create a likelihood of consumer confusion between Respondent's and Complainant's stores. Respondent's website has very little content and does not offer any goods or services for sale online, making it difficult, as alleged by Complainant, to create “a likelihood of confusion with the source, sponsorship, affiliation, or endorsement of Respondent's web site or location or of a product or service on Respondent's web site.”
Respondent further points to a disclaimer that it posted on the bottom of its short website after being contacted by Complainant in January 2008 which states that “Wink New York is it's own entity located on the South Shore of Long Island and has no relation to any business in Manhattan or any other business with similar name.” While a disclaimer cannot cure bad faith where it has been established by other factors, the presence of a disclaimer on Respondent's website can be used to support a showing of good faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.5.
Given the paucity of proof submitted by Complainant in support, the Panel finds that the balance of evidence does not support a finding that Respondent registered or used the Disputed Domain Names in bad faith. Therefore, Complainant has failed to establish the third element.
The Policy is designed to address clear cases of cybersquatting, of which this does not appear to be one, especially where there are issues of fact which might be better served by evaluation of competing evidence through e.g., discovery and cross examination (which would be tested in the noted concurrent legal proceeding between the Parties). See e.g., Domisys SAS v. Wachter Consulting Inc., WIPO Case No. D2008-0767 and Eric Haddad Koenig v. All Ltd, Selena Kovalski, WIPO Case No. D2008-0322.
As to Respondent's conclusory allegations of reverse domain name hijacking, the Rules, paragraph 1, state that it “mean[s] using the Policy in bad faith to attempt to deprive a registered domain name holder of the domain name”.
Although Complainant failed to prove Respondent's bad faith, its claims are not so far-fetched to constitute bad faith conduct. Therefore, Respondent has not made a showing of reverse domain name hijacking.
Complainant has failed to prove all of the requirements of paragraph 4(a) of the Policy. Accordingly, the Complaint is denied.
Maxim H. Waldbaum
Dated: October 30, 2008