The Complainant is Takko Holding GmbH of Telgte, Germany, represented by Siebeke Lange Wilbert, Germany.
The Respondent is Ashantiplc Limited of Hong Kong, China, represented by John Berryhill, United States of America.
The disputed domain name <takko.com> (the “Domain Name”) is registered with Backslap Domains, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2010, identifying the respondent as Security Shield LLC.
The Center transmitted its request for registrar verification to the Registrar on March 15, 2010. The Registrar replied on March 16, 2010, confirming that the Domain Name was registered with it, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to it, that it would expire on April 4, 2011, that it was on Registrar Lock, and that the registration agreement was in English. The Registrar identified the registrant as Ashantiplc Limited and provided the full contact details held on its WhoIs database in respect of the Domain Name. The Registrar stated that it had not received a copy of the Complaint and did not dispute that the registration agreement contained a jurisdiction clause as required by ICANN.
The Center informed the Complainant on March 17, 2010, of the information provided by the Registrar as to the identity of the registrant and invited the Complainant to amend the Complaint accordingly, without treating it as a formal deficiency or requiring such an amendment. The Complainant filed an amended Complaint against the Respondent on March 22, 2010.
The Center verified that the amended Complaint satisfied the formal requirements of the UDRP, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 22, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 11, 2010. The Response was filed with the Center on April 11, 2010. In the Response the Respondent elected to have the dispute determined by a three-member panel.
The Center appointed Jonathan Turner, Thomas Hoeren and The Hon Neil Brown QC as panelists in this matter on May 6, 2010. 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 paragraph 7 of the Rules. Having reviewed the file, the Panel finds that the amended Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
The Complainant is a discount retailer of fashionwear with over 1300 stores in Germany and other European countries. It was founded in 1982 and has more than 10,000 employees. It has registered TAKKO as a trademark in Germany as of December 2, 1992, and in other countries and in the Office for Harmonisation in the Internal Market (OHIM) at various dates since then.
The Complainant has used the name TAKKO in connection with its stores since 1998. When the Domain Name was registered on April 4, 2001, it had more than 440 stores operating under this name.
The Complainant operates a website at “www.takko-fashion.com” and has registered various country code domain names comprising “takko” as the second level domain name, which are pointed to its website.
The Domain Name is pointed to a website containing a variety of links, mostly unrelated to fashionwear, although buttons currently on the home page labeled “Vêtement Mode” and “Spy Mode Sunglasses” are linked to pages which contain links relating to fashionwear under the heading “Sponsored Listings”. However, the web pages annexed to the Complaint and the Amended Complaint do not include such buttons.
The Complainant contends that it has registered and unregistered rights in the mark TAKKO and that the Domain Name is identical or, at the very least, confusingly similar to this mark.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. It points out that it is required to put forward only a prima facie case on this issue, after which the burden shifts to the Respondent to show that it has rights or legitimate interests in respect of the Domain Name.
The Complainant refers at this point in the amended Complaint to the Respondent or the previous owner of the Domain Name, but comparison with the original Complaint confirms that “the previous owner” refers to the identity shield which had previously been identified as the registrant. The Panel regards these as references as referring in substance to the Respondent.
The Complainant states that the Respondent has not owned any trademark rights or licence to use its mark; that the Respondent never sought or obtained consent from it to register the Domain Name; that the Respondent has not used or prepared to use the Domain Name in connection with a bona fide offering of goods or services; that the Respondent has not been commonly known by the Domain Name; and that the Respondent is not making legitimate non-commercial or fair use of the Domain Name. The Complainant submits that use of the Domain Name for a parking website does not constitute a bona fide non-commercial use in accordance with paragraph 4(c)(iii) of the UDRP.
The Complainant further contends that the Domain Name was registered and is being used in bad faith. According to the Complainant the choice of a domain name incorporating a well known and distinctive trademark in the absence of any evidence of rights or legitimate interests is indicative of bad faith registration. The Complainant asserts that the Respondent intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's mark. The Complainant also accuses the Respondent of cyberflight noting the identification of the Respondent as the registrant in place of the privacy shield following the Complaint. The Complainant draws attention to other cases involving the same privacy shield where bad faith was found.
The Complainant requests a decision that the Domain Name be transferred to it.
The Respondent submits that the dispute concerns a term of primary significance as a surname and as a geographic term which corresponds to a trademark owned by the Complainant for a line of clothing and that the Complainant's allegation of bad faith is premised on the Respondent's use of a privacy service.
The Respondent states that it acquired the Domain Name in 2002 on the expiry of an earlier registration. It acknowledges that the Complainant has prior registrations of a corresponding mark, but contends that TAKKO is not inherently distinctive, in that it is primarily a surname in Japan and Finland.
The Respondent observes that legitimate interests for the purpose of the second requirement of the UDRP include legitimate use of a common word associated with its primary meaning. The Respondent points out that it has owned the Domain Name for nearly a decade and that the Complainant does not seem to indicate that it is being used in infringement of the Complainant's rights in its registered mark for clothing. On the contrary, the Respondent emphasises that the Complainant's exhibits show that the Domain Name was used for search terms lacking any reference to the goods traded by the Complainant. In these circumstances the Respondent submits that its registration of the Domain Name cannot be regarded as illegitimate.
The Respondent further maintains that the third element of the UDRP requires a specific intent directed towards the Complainant and arising from rights known by the Respondent to belong to the Complainant when the disputed domain name was registered. The Respondent states that prior to this dispute it had never heard of the Complainant and that in future it will monitor operation of the Domain Name to ensure that it remains devoid of references to clothing.
According to the Respondent, since the Domain Name is not inherently distinctive, something more than correspondence with a trademark is required to show registration and use in bad faith. The Respondent reiterates that the only other basis for the allegation of bad faith in the Complaint is its use of the privacy service. The Respondent denies any connection with the registrants in other cases cited in the Complaint involving the same privacy service where bad faith was found, and points out that, on the contrary, complaints against it were rejected in a number of previous cases.
The Respondent contends that the mere use of a privacy service does not constitute evidence of bad faith and that there is no evidence in this case that a privacy service was used to evade responsibility for bad faith use of the Domain Name. The Respondent states that it uses a privacy service to avoid spam and other online harassment. The Respondent acknowledges that it has a portfolio of domain names which it has operated for nearly a decade and has never been found to be acting in bad faith.
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (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.
These requirements will be considered in turn.
The Panel finds on the evidence that the Complainant has registered and unregistered rights in the mark TAKKO. The Domain Name is identical to this mark apart from the generic top level domain suffix which is normally discounted when assessing whether a domain name is identical or confusingly to a complainant's mark for the purpose of the UDRP. The Panel considers that many Internet users familiar with the Complainant's mark would assume that the Domain Name belongs to the Complainant. The first requirement of the UDRP is satisfied.
A majority of the Panel considers that the Respondent's use of the Domain Name by directing it to a website which displays apparently automatically generated links does not constitute a use of it in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the UDRP. On this point, the majority of the Panel respectfully adopts the analysis set out in Trade Me Limited v. Vertical Axis Inc., WIPO Case No. D2009-0093 and followed in Intersections Inc. v. Jasper Developments Pty. Ltd., WIPO Case No. D2009-0795; LEGO Juris A/S v. Above.com Domain Privacy, Host Master / Transure Enterprise Ltd, Host Master, WIPO Case No. D2009-0907; and the majority in eDreams, Inc. v. CK Ventures Inc., WIPO Case No. D2009-1508.
It is clear that the Respondent is not commonly known by the Domain Name and that the Respondent cannot (and, indeed, does not) rely on paragraph 4(c)(ii) of the UDRP. The Respondent's reference to a small town in the north of Japan called “Takko” is without substance as the Respondent did not provide any evidence that it was connected in any way to this place. In general, using Internet tools like Wikipedia to identify a corresponding place name somewhere in the world is insufficient to justify a domain name. The same applies to the Respondent's reference to the surname “Takko”.
A majority of the Panel further considers that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name within the meaning of paragraph 4(c)(iii) of the UDRP; again the majority of the Panel follows Trade Me Limited v. Vertical Axis Inc., WIPO Case No. D2009-0093, on this point.
A majority of the Panel further finds that the Respondent does not have rights or legitimate interests independently of paragraph 4(c) of the UDRP. On this point, the majority of the Panel does not agree with the view expressed in Trade Me Limited v. Vertical Axis Inc., WIPO Case No. D2009-0093, that mere use of a domain name to display automatically generated links suffices to confer on the registrant a legitimate interest in the domain name in the absence of any infringement of rights in a corresponding mark. The majority considers that the concept of a right or legitimate interest specified in paragraph 4(a)(ii) of the UDRP and exemplified in its paragraph 4(c) refers to some form of positive entitlement rather than a mere absence of liability.
In any case, and in line with the view of the panel in Trade Me Limited v. Vertical Axis Inc., WIPO Case No. D2009-0093, the existence of a right or legitimate interest arising from good faith use is negated by the majority's finding below that the Respondent has used the Domain Name in bad faith.
In all the circumstances, the majority of the Panel finds on the balance of probabilities that the Respondent does not have rights or legitimate interests in respect of the Domain Name. The second requirement of the UDRP is therefore satisfied.
The Panel accepts the Respondent's submission that its use of a privacy service and its identification by the privacy service following the complaint do not in themselves establish bad faith. There can indeed be legitimate reasons for a registrant to use a privacy service. On the other hand, the majority of the Panel notes the observation of the Panel in Automobili Lamborghini Holding S.p.A v. OneandOne Private Registration, and Jill Calangian, WIPO Case No. D2008-1443, that the use of a privacy service and the lack of any cogent justification for it may strengthen an overall impression of bad faith based on other circumstances of the case.
In this case the majority of the Panel is impressed by the fact that the Domain Name is identical (apart from the generic top level domain suffix) to a mark which has been in use by the Complainant on a very large scale since before the Respondent's registration of the Domain Name. Furthermore although this mark reflects a surname in certain languages, it does not appear to be descriptive of any goods or services.
In these circumstances, the majority of the Panel considers that any direction of the Domain Name to a website was and is inherently likely to attract Internet users to that website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of such website.
The Respondent has directed the Domain Name to a website displaying sponsored links and has not suggested that it registered the Domain Name with some other intention. Given that the natural and probable consequence of doing this was to attract Internet users to that website by creating a likelihood of confusion with the Complainant's mark and to obtain commercial gain thereby in the form of click-through commissions, the majority of the Panel considers that it is to be inferred that this was the Respondent's intention, unless this inference is rebutted by the Respondent's evidence.
The Respondent has not explained why it registered the Domain Name. Nor is any innocent explanation apparent from the circumstances: the Domain Name has evidently not been used, for example, for a fan site for the “quite well-known hockey player” mentioned by the Respondent in its Response.
The Respondent's central submission is that the Complainant has not proved its case. But if, as the majority considers, the evidence adduced by the Complainant raises an inference of bad faith on the part of the Respondent, the onus shifts to the Respondent to dispel that inference. Had the Respondent provided a credible explanation of why it registered the Domain Name and that explanation indicated good faith, the inference of bad faith would have been dispelled. But since the Respondent has not done so, one is left with the inference.
The majority also notes that it is not difficult for a respondent who has acted in good faith to explain why it registered the domain name and indeed it is natural for such a respondent to wish to do so.
In all the circumstances the majority of the Panel finds on the balance of probabilities that the Domain Name was registered and has been used intentionally to attract Internet users to the Respondent's website for commercial gain by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of that website. In accordance with paragraph 4(b)(iv) of the UDRP this constitutes evidence that the Domain Name was registered and has been used in bad faith, which the majority of the Panel considers to be unrebutted.
The majority of the Panel accordingly concludes that the Domain Name was registered and is being used in bad faith and that the third requirement of the UDRP is satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel (by a majority) orders that the Domain Name, <takko.com>, be transferred to the Complainant.
The Hon Neil Brown QC
Dated: May 19, 2010
I agree with the majority of the Panel with respect to the element set out in paragraph 4(a)(i) of the Policy.
However, I respectfully disagree with the majority concerning the elements set out in paragraph 4(a)(ii) and (ii), namely rights or legitimate interests and bad faith.
My view is that the Respondent has a right or legitimate interest in the domain name. That is so because the evidence is that it has been used for many years in connection with a bona fide offering of goods and services. The Complainant's argument against this is that the Respondent's use of the domain name is not bona fide because its website contains only ‘third party's offerings.' The site is used for that purpose, but such a use is in my opinion clearly within the plain meaning of the words of paragraph 4(c)(i) of the Policy, a provision that does not contain any such restriction or condition as that contended for by the Complainant.
Moreover, the view just expressed follows the decision in Trade Me Limited v.Vertical Axis Inc., WIPO Case No. D2009-0093. There are also other UDRP decisions such as EU Property Portfolio Ltd. v. Salvia Corporation, NAF Case No: FA0612000873726 to the effect that a legitimate interest may well be created by the use of a domain name to carry the offerings of third parties.
But in any event, the better course to resolve such issues is to try to apply the wording of the Policy to the facts of the case. If, in the application of those words, it is seen that the Respondent has targeted the trademark or its owner, its offering of goods or services will not have been bona fide.
In the present case, the question is largely a matter of inference one way or the other.
On the one hand, the evidence and submission of the Complainant is that TAKKO is its trademark and that, by inference, the Respondent was targeting the Complainant when it set up a domain name and website in that name.
On the other hand, the evidence and submission of the Respondent is that TAKKO is also the name of an island in Japan and a family name and that the Respondent was entitled to use the word in either of those meanings, thus giving it a legitimate interest in the domain name.
The resolution of issues such as to whether, on the one hand, the TAKKO brand is so famous that the Respondent must have known of it or, on the other hand, that it was simply using a geographic or family name without targeting the Complainant, cannot be resolved by assessing the competing fame or popularity of the one or the other. A UDRP panel is not equipped to engage in such an exercise and it is not the task that is given to it.
The role of the panel is to decide if the limited evidence shows that the registrant has no right or legitimate interest in the domain name and, most importantly, to decide so on the balance of probabilities.
It is, of course, possible to conclude from the evidence that the Respondent registered the domain name because it is the Complainant's name. The Complainant is, after all, a large company and apparently well known, at least in parts of Europe; the Respondent also registered the domain name after the Complainant registered its trademark.
But on closer examination, the matter is not as clear as might be thought. For instance, the Complainant alleges that it was “founded in 1982”. This is literally true, but the inference that it has been in business under the name Takko since 1982 seems not to be true. According to the Complainant's website (www.takko-fashion.com/en/unternehmen/portraet/geschichte.php), when the company was founded in 1982, it was under the name “Modea”, not “Takko” and it was not until much later, in1999, that the company was renamed as Takko ModeMarkt GmbH & Co. KG. The domain name, it will be recalled was registered on April 4, 2001. Again, all of its trademarks other than the German and Austrian ones were registered after the registration of the domain name.
This still leaves open the possibility that the Respondent was targeting the Complainant, but diminishes the probability of its having done so.
The particular element that tilts the scales in favour of the Respondent is that, having registered the domain name, it used it to sell advertising for virtually every variety of goods and services except clothing, the only product sold by the Complainant.
The matter is not entirely free from doubt, but on balance I am not able to say that the Respondent targeted the Complainant or that it engaged in any other impropriety in registering and using the domain name. Accordingly, in the absence of such a finding, it is difficult to conclude that the Respondent does not have a right or legitimate interest in registering a domain name that merely reflects a geographic or personal name.
Alternatively, as the Respondent's offering of goods and services in fields other than those of the Complainant is bona fide and as it occurred well before the dispute arose, the case falls within paragraph 4(c)(i) of the policy; this gives the Respondent a defence to the Complaint.
With respect to bad faith, the Complainant makes only two allegations.
The first is that the domain name reflects the Complainant's trademark, which it does, but the submission that that fact alone shows bad faith is wrong. The policy makes it clear that such a consideration will usually prove the first of the three elements, but it is equally clear that for bad faith the Complainant must prove by one means or another that the Respondent was improperly motivated towards the Complainant and its mark and deliberately so. In the particular circumstances of this case, it does not show such an intention when a domain name uses the same word as a trade mark, but where the word has other meanings and where, in any event, the domain name has been used in connection with different goods and services than the trademarked goods and where the trademarked goods have in fact not been promoted by the domain name.
The second allegation is that the Respondent registered the domain name by using a privacy service. But the Respondent has not evaded being identified and has taken an active part in the proceedings, as it did in other proceedings cited in the Response, Kabushiki Kaisha Tenga v. Ashantiplc Limited, WIPO Case No. D2009-0422; Storage Equipment Safety Service Limited v. Ashantiplc Limited, WIPO Case No. D2006-1424; and The Eye Academy of America Limited v. Ashantiplc Limited, NAF Claim FAO602000644205 and Board of Certification of Genealogists v. Ashanti Limited, NAF Claim FAO911001296376. In all the circumstances its use of the privacy does not show bad faith either in registration or use.
Moreover, the “creation date” of the domain name was April 4, 2001, the Respondent says that it acquired it in 2002, the Complaint was filed on March 12, 2010 and there is no evidence that at any time during this interval the Complainant sent a cease and desist letter or took any other action against the Respondent. Yet, an examination of the history of the use of the website to which the domain name resolves, by means of the Wayback Machine at “www.archive.org”, shows that it has been used since 2001 to promote a very wide range of goods and services. It is true that there are occasional links to “apparel” and “fashion”. But such references are peripheral and the site has never been a site seeking customers for clothing. As such, there must be some doubt whether, during this long history, the Complainant ever believed that it was being targeted, that its trademark had been wrongly used or that the domain name had been either registered or used in bad faith.
Accordingly, the Complainant has not shown that the domain name was registered and used in bad faith.
The Hon Neil Brown QC
Dated: May 19, 2010