WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bacchus Gate Corporation d/b/a International Wine Accessories v. CKV and Port Media, Inc.
Case No. D2008-0321
1. The Parties
1.1 The Complainant is Bacchus Gate Corporation d/b/a International Wine Accessories, with its principal place of business in Dallas, Texas, United States of America.
1.2 The Respondent would appear to be “Port Media, Inc” or “Port Media” of uncertain address in Hong Kong acting through its authorized representative ESQuire.com Law Firm of New Jersey, United States of America. According to the Registrar, the registrant of record is an entity called “CKV” with an address in Hong Kong, SAR of China.
2. The Domain Name and Registrar
2.1 The disputed domain name is <internationalwineaccessories.com> (the “Domain Name”) and it is registered with Nameview Inc. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2008. At that time the named Respondent was “Internationalwineaccessories.com c/o Whois Identity Shield” with an address in Vancouver, Canada. These were the details given for the registrant in the WhoIs output for the Domain Name.
3.2 On March 4, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 11, 2008, the Registrar transmitted by email to the Center its verification response and informed the Center that the registrant’s contact details were different to those listed in the WhoIs results for the Domain Name. According to the Registrar, the registrant was an entity called “CKV” whose contact details were “CKV, Domain Administrator” with an address in Hong Kong, SAR of China (“CKV”).
3.3 On March 12, 2008, and in light of the information provided by the Registrar as to the identity of the registrant, the Center invited the Complainant to amend its Complaint. The Complainant duly filed an amendment to the Complaint on March 17, 2008. The Complaint as amended named both “Internationalwineaccessories.com c/o Whois Identity Shield” and CKV as the Respondent. The Center verified that the Complaint together with the amendment to 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”).
3.4 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced March 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for the Response was April 14, 2008. The Response was filed with the Center on April 14, 2008 in the name of Port Media, Inc. (“Port Media”) by that entity’s authorized representative. The only address given for Port Media is a post office box (i.e. GPO 8828) in Central Hong Kong, SAR of China.
3.5 The Center appointed Matthew S. Harris, M. Scott Donahey and Diane Cabell as panelists in this matter on May 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
4.1 The Complainant is Bacchus Gate Corporation d/b/a International Wine Accessories, which is a Californian corporation with principal place of business in Dallas, Texas.
4.2 The Complainant has used the name “International Wine Accessories” since 1983 and is the owner of a number of US federal trademarks and a US trademark application. The trademarks include the word mark “International Wine Accessories” in International class 35 for “mail order catalogue services and computerized retail services featuring wine, cigars, coffee and food related products and gift items” (Federal Reg. No. 2671225) with registration date January, 7, 2003.
4.3 The identity of the registrant of the Domain Name was initially masked by the use of a domain name privacy service. As has already been described above, the Registrar claimed that the “true” registrar of record in this case was CKV, but a Response has been submitted by an entity going by the name of “Port Media” (with or without an “Inc.” suffix) as the Respondent. Who and what exactly “Port Media” is remains unclear but it appears to be an entity owned or controlled by one “Peter Ho” who described himself as “the director of Port Media”.
4.4 Save where is otherwise apparent, when the Panel refers in this decision to the Respondent, reference is made to Port Media or those person or persons behind Port Media who have de facto controlled the Domain Name since registration1.
4.5 The WhoIs out-put for the Domain Name records the Domain Name as having been registered on November 30, 2001.
4.6 Neither the Complainant or the Respondent has provided screen-shots of the web-site to which the Domain Name resolves. However, it would seem to be common ground that at all relevant times the Domain Name has been used to display sponsored search results and that the Respondent has received a share of the revenue generated by the sponsored links displayed.
4.7 As at the date the papers were forwarded to the Panel in this matter, the website operating from the Domain Name took the following form. At the top of the home page operating from the site is the heading “INTERNATIONALWINEACCESORIES.COM” under which is to be found the tag line “For resources and information on International wine accessory and Wine making supply” and a large picture of wine bottles and glasses. On the left hand side of, and underneath that picture are various wine related links such as “Online wine store”, “Napa wines”, and “The wine enthusiast” etc. When clicked upon the links take the user to pages where sponsored search results are displayed.
4.8 The website pages carry the copyright notice “©2008 internationalwineaccesories.com”, but nowhere on the website is to be found details of the person or persons behind the pages in question.
5. Parties’ Contentions
A. Complainant
5.1 The Complaint is rather short. It provides some details of the Complainant’s alleged registered trademarks but little information as to the nature or extent of the Complainant’s business or reputation or the use made of the Domain Name by the Respondent.
5.2 The Complainant has attached to the Complaint copies of a cease and desist letter dated November 2007 in which slightly more information is given about the Complainant’s business. For example, the letter claims that the Complainant “has been in the business of selling high quality wine accessories to the wine industry and wine lovers around the world since 1983” and, over the years, “has expended significant amounts of money promoting and advertising its products sold in connection with [its] marks. As a result of its marketing efforts, [the Complainant] is extremely well-known and has come to be associated with high quality products in the minds of the wine industry and the purchasing public”. However, no further evidence is provided to support these assertions and the exact extent of the Complainant’s reputation outside of the United States of America is not made clear.
5.3 Turning now to the three specific requirements at paragraph 4 of the Policy that the Complainant must prove to win its case, the Complainant makes the following submissions:
Identical or Confusingly Similar
5.4 The Complainant submits that the Domain Name is identical to the INTERNATIONAL WINE ACCESSORIES trade mark (US Federal Reg. No, 2671225) in which the Complainant has rights.
Rights or Legitimate Interests
5.5 The Complainant claims the Respondent has no rights or legitimate interests in the Domain Name, and points to the following three factors:
(1) The Respondent acts under anonymity and does not use (nor appear to be making demonstrable preparations to use) the Domain Name in connection with a bona fide offering of goods and services;
(2) The Respondent has not been commonly known by the Domain Name before taking over the Domain Name and “it also appears that the Respondent has acquired no trademark rights in the Domain Name”;
(3) “It appears that the Respondent is not making legitimate non-commercial or fair use of the Domain Name without intent for commercial gain” and is using it “misleadingly to divert consumers or tarnish the Trademark at issue, as the website is set up solely as an advertising service for products similar to those offered by the Complainant”.
Registered and Used in Bad Faith
5.6 The Complainant claims the Domain Name should be considered as having been registered and used in bad faith, and points to the following four factors:
(1) The Domain Name appears to be registered and used “for the sole purpose of providing advertising services for competitors of the Complainant”. The Complainant refers to links and advertising on the web-site at the Domain Name relating to its direct competitors “The Wine Enthusiast, Grotto Custom Wine Cellars and Cabinets, and BeverageFactory.com”;
(2) The Respondent is attempting to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark (which the Panel notes corresponds to the example of bad faith use at paragraph 4(b)(iv) of the Policy);
(3) The fact that there was no response to the cease and desist letter sent to the address given for the registrant in the WhoIs record, and the fact that two email addresses to which the letter was also sent (which presumably were recorded in the WhoIs record for the Domain Name at that time) were invalid;
(4) The fact that the telephone number provided in the WhoIs search results for the Domain Name only gave access to a general voicemail box which did not identify the owner.
B. Respondent
5.7 The Respondent is named on the face of the Response as “Port Media Inc”. Included with the Response is a signed declaration by Peter Ho an alleged director of “Port Media” (omitting the “Inc.” suffix) apparently originating from “Central Hong Kong”. The statement is headed with a declaration of truth and is stated to be “proffered under penalty of law for making false statements”.
5.8 In his signed declaration, Mr. Ho states that Port Media registered the Domain Name “because it was a descriptive term to which we believed no party could claim exclusive rights” and that the registration was made when the Domain Name “expired and was deleted by the registrar and became available for anyone to register”. He expressly states that “we did not register the Domain with Complainant’s trademark in mind and had no knowledge of Complainant, its web site, its business name or trademark when it registered the domain name”. He freely admits that the Domain Name has been used to display sponsored search results provided by Yahoo.com and to generate associated “click-through” revenue.
5.9 Mr. Ho also claims that Port Media has registered various domain names which incorporate the words “international”, “wine” or “accessories”. The examples given are <internationalgiftshop.com>, <internationalautoparts.com>, <internationalbarter.com>, <internationaldiamonds.com>, <internationalenzymes.com>, <internationalhealthcare.com>, <chinesewines.com>, <iwineshop.com>, <winesurvey.com>, <accessoryavenue.com>, <accessorystreet.com>, <internationalwineaccessories.com>. On the requirements of the Policy the Respondent’s position is as follows:
Identical or Confusingly Similar
5.10 The Respondent claims that the Domain Name constitutes a descriptive term “international wine accessories” on its face and that the Complainant’s corresponding trademark is descriptive and is used by the Complainant in a wholly descriptive manner to sell wine accessories. In support, the Respondent points to the record for trademark Reg. No. 2671225 showing it was registered pursuant to Section 2(f) of the Trademark Act and so “was deemed descriptive but permitted to be registered based on acquired distinctiveness”. The Respondent also points to the express disclaimer of the exclusive right to use “WINEACCESSORIES” apart from the trademark as registered. The Complainant is said to sell wine accessories and, on its web-site (at <iwawine.com>), “to tout itself as “the leader in wine accessories and storage””. The Respondent also cites Goldberg & Osborne v. The Advisory Board Forum, Inc., WIPO Case No. D2001-0711 and American Airlines, Inc. v. WebWide Internet Communication GmbH, NAF Claim No. FA112518.
5.11 The Respondent claims the alleged descriptiveness of the Domain Name (and the Complainant’s Trademark and trademark use) is relevant because a “Panel may find a trademark is generic or descriptive and deem it unenforceable under the Policy, notwithstanding that a complainant has secured a registered trademark”. Further, there is alleged to be a “strong rationale” for a panel to place a “higher standard for enforceability under the Policy” than for trademark registration, because (unlike a trademark) a Domain Name gives a monopoly on use for all purposes. Further, a “panel should refrain from stripping domain names away from parties based on weak descriptive marks, where there is not evidence of abusive domain registration and use”. Accordingly, it is claimed “the Panel should deem Complainant’s mark to be descriptive and unenforceable”.
Rights or Legitimate Interests
5.12 The Respondent claims that the registration of descriptive domain names like the Domain Name “ipso facto establishes the Respondent’s legitimate interest” (citing Energy Source Inc. v. Your Energy Source, NAF Claim No. FA96364).
5.13 The Respondent’s legitimate interest is said to be bolstered because the Respondent uses the web-site at the Domain Name to display advertising links related to wine, the descriptive meaning of the Domain Name. The Respondent points to various cases as authority for the proposition that using a generic domain name to generate advertising revenue from advertising links related to that generic meaning constitutes a bona fide offering of goods and services and that neither the UDRP or ICANN registrar contracts preclude these types of domain name use (HP Hood LLC v. Hood.com, NAF Claim No. FA313566; Williams, Babbitt & Weisman, Inc. v. Ultimate Search, NAF Claim No. FA 98813; Roderick W. Accetta v. Domain Admin c/o Covanta Corporation, NAF Claim No. FA826565; Dial-a-Mattress Operating Corp. v. Ultimate Search, WIPO Case No. D2001-0764; Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654; GLB Serviços Interativos S.A. v. Ultimate Search Inc (aka Ult. Search Inc), WIPO Case No. D2002-0189; The Landmark Group v. Digimedia.com L.P., NAF Claim No. 285459; and Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031).
5.14 Accordingly, it is claimed “the Respondent has demonstrated that it has rights and a legitimate interest in the Domain and the Complaint must, therefore, be dismissed”.
Registered and Used in Bad Faith
5.15 In summary, the Respondent claims that it registers domain names (like the Domain Name) that happen to become available because they are deleted. It does not sift “through a list of trademarks to prey upon by registering domain names in which they are incorporated”. Indeed, “rather than targeting trademarks, Respondent took care to only register names that incorporate common words or descriptive terms”. The Respondent submits that such “non-trademark-directed registration of deleted domain names not only fails to support a finding of bad faith registration, it negates such a finding”.
5.16 The Respondent further submits that the expiration of a domain name is a signal that any trademark claim to the domain name is abandoned and it can be registered in good faith, and that (provided the use of the Domain Name is not competitive or disruptive) a trademark holder should be denied relief in such circumstances (Corbis Corporation v. Zest, NAF Claim No. FA98441 and CB Publishing, LLC v. Akway International Ltd c/o Hostmaster, NAF Claim No. FA926506).
5.17 The Respondent claims that “absent direct proof that a common word domain name was registered solely for the purpose of profiting from Complainant’s trademark rights, there can be no finding of bad faith registration and use” (Ultrafem, Inc. v. Warren R. Royal, NAF Claim No. FA97682; and CanadaDrugs.com Partnership carrying on business as CanadaDrugs.com v. ASM Bioventure, NAF Claim No. FA568743). There is said to be no evidence that the Respondent knew of the Complainant when it registered the Domain Name and therefore bad faith cannot be shown (Futureworld Consultancy (Pty) Limited v. Online advice, WIPO Case No. D2003-0297; Kis v. Anything.com Ltd., WIPO Case No. D2000-0770). Whatismore “substantial third party use of the mark” is said to lend credence to this argument (although no evidence of such use is provided). The Respondent also points to its other domain name registrations (see above) as evidence that it registered the Domain Name because of its descriptive nature and not because of the Complainant’s brand or business.
5.18 Finally, whilst admitting that laches is “not a defense normally recognized under the Policy”, the Respondent submits that it registered the Domain Name in 2001 and that the Complainant has waited six years to bring its Complaint. This is said to be evidence “that Complainant did not believe Respondent registered the Disputed Domain in bad faith” (Rolling Stone LLC v. Robbins Carnegie Inc., NAF Claim No. FA318048).
5.19 Accordingly, it is claimed the Complainant has failed to meet its burden of proving bad faith registration and use and, the Complaint must, therefore, be dismissed.
5.20 Nowhere in the Response or the evidence filled in support of the Response is to be found any explanation as to why Port Media uses a privacy shield for the WhoIs report for the Domain Name or why the registrant of record (according to the Registrar) is CKV.
6. Discussion and Findings
6.1 Paragraph 4(a) of the Policy states that the Complainant must prove the following:
(i) that the Domain Name registered by the Respondent 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.
6.2 Having reviewed the documents and annexes filed by the parties, the Panel sets out its findings in respect of each of these issues below.
A. Identical or Confusingly Similar
6.3 The Panel finds that the Complainant is the registered proprietor of US registered trademark No. 2671225 and this trademark is essentially identical to the Domain Name.
6.4 In doing so the Panel rejects the Respondent’s argument that, because of its descriptive nature, the Trademark should be treated as not enforceable for the purposes of paragraph 4(a)(i) of the Policy. This is because it is now well established that, save in very limited circumstances, where a complainant owns a registered trademark it satisfies the threshold requirement of having trademark rights for the purposes of paragraph 4(a)(i) (see paragraph 1.1 of the “Overview of WIPO Panel Views on Selected UDRP Questions” (the “WIPO Overview”)). It is not for the Panel to second guess the view of the relevant trademark registry in this respect.
6.5 The WIPO Overview notes that “registrations that are automatic or unexamined (such as US state registrations as opposed to US federal registrations) may not always be owed the same deference as examined registrations”. However, these circumstances do not apply in this case.
6.6 The fact that the trademark relied upon by the Complainant is subject to a disclaimer so far as the words “wine accessories” are concerned also makes no difference. Had the Domain Name taken the form of the words disclaimed and nothing more then that would have been highly relevant. In such a case the Complainant may not have been able to point to any trade mark right at all (see for example Minibar North America Inc. v. Ian Musk & GEMS Global Electronic Minibar Systems AS, WIPO Case No. D2005-0035). However, in this case the Domain Name is not <wineaccessories.com>, but <internationalwineaccessories.com>. The registered mark relied upon is reproduced in its entirety in the Domain Name.
6.7 The Goldberg & Osborne v. The Advisory Board Forum, Inc. WIPO Case No. D2001-0711 case cited by the Respondent does not actually assist it in this respect. The panel in this case simply did not address the issue of paragraph 4(a)(i) of the Policy. This leaves the American Airlines, Inc. v. WebWide Internet Communication GmbH, NAF Claim No. FA112518) cited by the Respondent. The reasoning in this case is a little hard to follow and the Panel notes that it was a case under the .biz STOP procedure. Insofar as the panelist in the American Airlines case held that for the purposes of the Policy rights in a registered trademark can be ignored if the trademark comprises a “generic” or “descriptive terms” only, then this Panel is of the view that this is wrong and that the view set out in paragraph 1.1 of the WIPO Overview is to be preferred.
6.8 For the above reasons, the Panel has little difficulty in finding that the Complainant has made out paragraph 4(a)(i) of the Policy.
6.9 According to the WhoIs record for the Domain Name it was registered in 2001 and the Respondent submits, and the Panel accepts, that it was the Respondent who made that registration.
6.10 The Panel accepts the Respondent’s contention that the Domain Name consists of words which have a potential descriptive / generic usage relating to wine and/or wine accessories. The Panel does not, however, accept the Respondent’s argument that the registration of a descriptive domain name (like the Domain Name) “ipso facto” establishes the Respondent’s legitimate interest in that domain name. It is well established that a respondent may lack a legitimate interest in a domain name, even if it is a domain name comprised of a generic word. The key is whether a respondent registered and is using such a domain name to describe his product/business or to profit from the generic value of the word without intending to take advantage of a complainant’s rights in that word. If that is the case, then the respondent may have a legitimate interest (see the WIPO Overview at paragraph 2.2 in this respect). On the other hand, if the domain name in question was chosen because of the similarity to a name in which a complainant has an interest and in order to capitalize or otherwise take advantage of that similarity, then such registration and use does not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of three person panel in Express Scripts, Inc. v Windgather Investments Ltd.,/Mr. Cartwright, WIPO Case No. D2007-0267).
6.11 Essentially, therefore, in a case such as this the assessment boils down to the questions: did the Respondent register the Domain Name with the Complainant’s interest in the mark INTERNATIONAL WINE ACCESSORIES in mind and has it deliberately used it to take advantage of the Complainant’s reputation in that name? These are also precisely the questions that have to be addressed in assessing the question of bad faith registration and use and a separate assessment of the question of rights and legitimate interests adds very little.
6.12 For the reasons that are explained later on in this decision (and notwithstanding the fact that there are a number of troubling aspects about the way in which the Respondent has carried on its activities and put its case), the majority of the Panel are of the view that the Complainant has failed to show that it was with the Complainant in mind that the Domain Name was registered. On this basis the Complainant has failed to show that the Domain Name was registered in bad faith and the Complaint fails on that basis. In the circumstances, no further consideration of the issue of rights or legitimate interests is necessary.
C. Registered and Used in Bad Faith
6.13 In support of its argument of bad faith, the Complainant alleges the Domain Name was registered and used solely to advertise the Complainant’s competitors. Although, as has already been described, the Complainant does not attach copies of pages from the relevant website to show this, the competitors in question are identified by the Complainant and the Respondent does not seem to take issue with this aspect of the Complainant’s case. Therefore, for the purposes of these proceedings the Panel is prepared to accept that this is correct.
6.14 The relevance of this is that the deliberate inclusion of such links particularly with a view to obtaining “click-through” revenue will ordinarily fall within the scope of paragraph 4(b)(iv) of the Policy, because it evidences knowledge on the part of the respondent of the complainant and an intention to take advantage of the reputation that the complainant has developed in the relevant name . Further, whilst the Policy requires bad faith registration and use, it will often be possible to infer as a matter of fact from bad faith use of this sort that it was with this use in mind that the registration was made.
6.15 Sometimes, it is argued by respondents that the links in question were automatically generated by some domain name parking service or the like and as a consequence it is simply not possible to draw the relevant inferences of intent from the existence of these links. It is not at all clear whether this is what the Respondent contends, but given the reference to the fact that the links displayed from the Domain Name were “provided by Yahoo.com” this may be the case.
6.16 In fact in many cases these sorts of arguments are unconvincing given that it is frequently possible for the owner of a domain name to influence the sponsored links produced by the choice of key words, meta tags and the like. If there is no obvious connection between the words incorporated into the domain name itself and the links that are produced, then it may still be possible to infer from these links that the domain name was registered with the trademark owner in mind.
6.17 The difficulty, however, for the Complainant is the descriptive nature of the words “international”, “wine” and “accessories”. It is frankly not surprising given that that sponsored links generated by Yahoo in connection with that Domain Name are likely to relate to dealings in wine, wine accessories and related services2.
6.18 Also this is not a case where the Respondent has stayed silent and has not put forward any explanation as to the circumstances surrounding the registration of the Domain Name. A named officer of Port Media has stated emphatically and unambiguously in a signed declaration that it did not know about the Complainant or its mark when it registered the Domain Name. Further, the Respondent explains that it registered the Domain Name because it had become available and not because of any strategy to target domain names with trademark significance. On the contrary, the Respondent claims to have taken care to only register names that, like the Domain Name, incorporate common words or descriptive terms. In support of this the Respondent points to 11 other domain names consisting of the words “international” “wine” and/ or “accessory” said to belong to the Respondent.
6.19 If these claims by the Respondent that it did not register the Domain Name with the Complainant in mind are correct, then the Domain Name cannot have been registered in bad faith and the Complainant’s case inevitably fails.
6.20 Unfortunately for the Complainant, it provides very little material from which it is possible for a majority of the Panel to conclude that the Respondent’s claims in this respect are untrue. Crucially, very little detail is given about the reputation the Complainant has in the “International Wine Accessories” name. The Panel accepts that this mark has been used since 1983 and was registered in the United States of America because it had acquired the necessary degree of distinctiveness there. The Panel also notes the Complainant’s assertions (in letters before action but not the Complaint) that it has sold its wine accessories around the world and, as a result of marketing and advertising under the International Wine Accessories name, is “extremely well known”. However, these are simply bald assertions that in many respects beg yet further questions. For example, where exactly is the name “extremely well known”? No supporting evidence (such as financial data / turnover of the Complainant’s business or details of its marketing / advertising spend in various territories) is provided which might lead a panel to conclude that the reputation of the business was such that the Respondent (who appears to be based in Hong Kong, SAR of China) is more likely than not to have known about it at the time that the Domain Name was registered.
6.21 There is then crucially the nature of the Domain Name itself. It comprises three ordinary English words. Of course there are many cases where ordinary English words can in an unusual combination obviously suggest some form of trademark use. Here, however, this is not the case. It is difficult to see the words “wine accessories” as anything other than purely descriptive of products and, whilst the addition of the word “international” to that might conceivably give the phrase a slightly more trade mark flavour, it is far from obvious that this phrase reflects a trademark. If the Respondent was, as it claims, registering lapsed domain names that incorporated ordinary words, then, so far as the majority of the Panel is concerned, it is simply not possible to say that when the Respondent came across this domain name it ought to have thought that this was someone’s trademark.
6.22 That is not to say that there are aspects of the Respondent’s activities in this case that the Panel does not find troubling. One is the great lengths that the Respondent seems to have gone to hide its identity. If the Respondent was solely engaged in the legitimate registration of descriptive terms for the purposes of generating “click-through” revenue, it is difficult to understand why it is that the Respondent is so secretive about its activities.
6.23 First there is the Respondent’s use of a WhoIs privacy service. There have now been a large number of cases under the Policy in which panels held that the use of a such a service can be indicator of bad faith. For example, in Canadian Tire Corporation Limited v. CK Aspen, WIPO Case No. DTV2007-0015, the panel stated as follows:
“6.23 The Panel also accepts that another factor that weighs in the Complainant’s favour on the issue of bad faith is the use by the Respondent of a Domain Name privacy service to hide his identity.
6.24 It is sometimes argued by those who use such services that the provision of registration and contact details that are accessible through WhoIs services may result in unsolicited e-mails, regular mail or even phone calls. To hide one’s contact details so as to prevent such unsolicited contact is said to be legitimate (particularly if the registrant is an individual). Therefore, it is argued that no inference of bad faith can be drawn from the use of these services. However, even if this argument were accepted by this Panel, it is difficult to see why it would justify the masking of a registrant’s identity as opposed to just its contact details. Further, it is becoming an increasingly common practice for registrants to use these services to mask their identity from those who might wish to bring proceedings against them, whether under the UDRP or otherwise. In the circumstances, whilst the use of such a service may not by itself be sufficient to justify a finding of bad faith, the Panel accepts that, in the absence of any explanation from a respondent, it is a factor that may often point in that direction.
6.25 The Panel believes that its approach on the question of the use of domain name privacy services is consistent with the decision of other panels on this issue including TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services, WIPO Case No. D2006-1620 and The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438 as well as the Fox News Network, L.L.C. v. C&D International Ltd. and Whois Privacy Protection Service, WIPO Case No. D2004-0108 and Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei, WIPO Case No. D2005-0642, cases cited on this issue by the Complainant.”
6.24 In the present case not only has there been use of a privacy service but it would appear on the Respondent’s own case that the identity details given to the Registrar and revealed to the Center were wrong. Further, the secrecy does not end there. It is still unclear who actually controls the Domain Name. In the papers filed by the Respondent, there is a reference to both “Port Media Inc” and “Port Media” and no explanation is provided as to whether this is simply a trading name or is actually an incorporated legal entity. Further, no proper address is volunteered for the Respondent. There is simply a reference to a post office box in Hong Kong in Mr. Ho’s declaration. It is hard to see the justification for a respondent not being prepared to disclose its address to a panel.
6.25 Further, no information as to who is behind the registration is to be found on the website operating from the Domain Name. All there is, is a copyright notice in the form “© internationalwineaccessories.com” and this notice is of itself misleading. On the Respondent’s own case there is no “internationalwineaccessories.com” business. The Domain Name is simply being used to display Yahoo sponsored searches with a view to generating “click-through” revenue.
6.26 Not only does this secrecy cast serious doubts on the Respondent’s motives but it also undermines the Respondent’s own case when it comes to its assertions regarding the registration of other domain names that incorporate the words “international”, “wine” and “accessories”. The Respondent lists a series of domain names that it claims to have registered, but WhoIs searches against those names simply reveal further WhoIs privacy service entries. There are admittedly some common factors between the registration details for these domain names and the initial registration details for the Domain Name. All were registered around 2001 and 2002, and all now appear to identify the same computer servers. However, this is scant basis upon which to reach a conclusion that there is common ownership. No doubt had the Complainant identified registrations that incorporated well-known marks with the same domain name privacy generated WhoIs details and claimed that this evidenced a pattern of abusive registration by the Respondent, the Respondent would have objected that it does not. Why then is the Respondent conversely to be given the benefit of the doubt in this case where no other evidence of ownership is offered other than a bare assertion from Mr. Ho in a declaration?
6.27 The Respondent’s secrecy appears not to end even there. When one of the panelists in this case attempted to investigate using the Way-Back Machine what pages have historically appeared at the Domain Name since its registration, he discovered that the Respondent had set up a “robot.txt” file on the website so as to prevent the Way-Back Machine from recording or revealing that information3. There sometimes may be good reasons why a legitimate commercial entity may wish to set up a “robot.txt” file in this fashion, but the Panel has some difficulty in understanding why it is that the operator of a website that provides sponsored search results would ever wish to do so. The natural inference in these circumstances is that the Respondent has something to hide and again this is suggestive of bad faith.
6.28 In other circumstances these factors may well have been determinative. Nevertheless, ultimately the majority of the Panel is of the view given the lack of evidence of the fame of the Complainant’s mark and the potentially descriptive nature of the Domain Name, that the Complainant has failed to make out its case that the Respondent was aware of the Complainant’s interest in the term “International Wine Accessories” at the time that the Domain Name was registered. Accordingly, the Complainant has failed to show that the Domain Name was registered in bad faith and has failed to make out the requirements of paragraph 4(a)(iii) of the Policy.
6.29 There are a number of further points to make. Whilst the Respondent in this case claims that it is engaged in the activity of registering expired or deleted domain names and that in doing so it “[takes] care to only register names that incorporate common words or descriptive terms”, no explanation is offered as to what actual processes were and are actually followed. The Panel is mindful that there have been a number of cases under the Policy which have held that simply because an automated process has been adopted and no human being has positively chosen the domain name in question this does not provide a respondent with a defence to a finding of bad faith registration (see, for example, Nature et Decouvertes v. XB NetVentures Inc., WIPO Case No. D2007-1305). Whether the Respondent used automated processes in this case is unknown, but it is not on this basis that the Respondent has succeeded in this case. The Panel accepts that a respondent cannot avoid a finding of bad faith registration simply because the registration resulted from an automated process in circumstances where, if he had made the registration directly, he would have been aware of the trademark significance of the Domain Name.
6.30 Similarly, the Panel finds unconvincing the Respondents’ argument that a domain name registrant can be more confident that an abandoned or lapsed domain name is subject to a competing trademark claim than a domain name that was previously registered. There are a whole host of reasons why a domain name may lapse or be abandoned ranging from administrative error through to a deliberate policy by a company to register certain variations on a brand and not others. It is simply not possible to lay down a general rule that the mere fact that a domain name has been allowed to lapse means that it is somehow safer to register.
6.31 The Respondent cites two cases in this respect. One is CB Publishing LLC v Akway International Ltd c/o Hostmaster, NAF Claim No. FA926506 and the other is Corbis Corporation v. Zest, NAF Claim No. FA98441. In fact both the quotations relied upon by the Respondent initially come from the Corbis Corporation case. In that case the respondent had registered the domain name <digitalstock.com> after the complainant had allowed it to lapse. The complainant appears to have contended that registration after lapse positively indicated bad faith. This the panel rejected stating that registration after lapse was in and of itself “entirely irrelevant to the questions of legitimate interests and faith”. The panel, however, then does go on to make a number of statements to the effect that the fact that a domain name has lapsed means that a domain name registrant should be “more confident, not less so, that there is no competing trademark claim to the domain name”.
6.32 Very little reasoning is offered in support of that proposition, save perhaps for an earlier statement that it was possible to infer from the fact that the complainant had let the domain name lapse “that the prior holder of the name was abandoning any interest in the domain name”. With all due respect to the panel in that case, the logic here is somewhat difficult to follow. First, it is questionable that because a domain name has been allowed to lapse that the original registrant has “abandoned any interest” in it, whatever that may mean. Second, even if a party has allowed a domain name to lapse it certainly does not follow that this entity has in someway given up its right to rely upon its trademark rights to object to any re-registration of that domain name with a view to taking advantage of the reputation of that mark. Third, the statement carries with it the assumption that the original owner of the registration is necessarily the same person as the entity that subsequently brings proceedings under the Policy. That may have been so on the particular facts in the Corbis case but it does not follow in all cases where a domain name has lapsed that this will be the case.
6.33 In the circumstances, the Panel does not accept that the Corbis case is good authority for the proposition that the mere fact that a domain name has been allowed to lapsed means that it is somehow safer to register.
6.34 Instead, the majority of the Panel has reached its conclusions in this case on somewhat more conventional grounds. Regardless of the exact method used to register the Domain Name and regardless of why it is that a pre-existing registration for the Domain Name originally lapsed, the majority of the Panel finds that the Complainant has failed to show that at the time of registration the Registrant was aware of the Complainant’s interest in the “International Wine Accessories” name. In the circumstances, the claim of bad faith registration fails.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Matthew S. Harris | |
M. Scott Donahey | Diane Cabell |
Dated: May 20, 2008
DISSENTING OPINION
Given the great respect I have for my learned colleagues in the majority in this matter, it is with considerable reluctance that I dissent in this matter. I find myself in general agreement with most of the majority’s findings as to confusing similarity and rights and interests in respect of the Domain Name, however I must disagree with their finding of no bad faith registration and use. In doing so, I acknowledge that my approach is informed by both my desire to do justice between the parties and my training in American law. However, I do not think my approach to be fundamentally antithetical to the approach of my esteemed co-panelists.
Section 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, sets out the consensus view on whether the Panel can perform independent research when reaching a decision:
“A panel may visit the internet site linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name. The panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision. If the panel feels that it requires further information to make a decision in a proceeding then it can issue a panel order to the parties.”
This is consistent with the United States Federal Court’s view of taking judicial notice of adjudicative facts. Federal Rules of Evidence, Rule 201(b) provides that “a judicially noticed fact must be one not subject to reasonable dispute in that it is either (1) generally known within the territorial jurisdiction of the trial court or (2) capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably questioned.” As Panelists, our “territorial jurisdiction” may be said to be the Internet as it relates to the registration and use of domain names. A federal court is permitted to take judicial notice, whether requested or not. Federal Rules Evidence, Rule 201(c). A party is entitled upon request to be heard as to the propriety of taking judicial notice, and this request may be made after judicial notice has been taken. Federal Rules Evidence, Rule 201(e).
Given my view of the proper approach to take to do justice between the parties to the litigation, I proceed to contrast what Respondent has said with what Respondent has done and/or with what the publicly available facts show. In my view, the contrast is so striking as to lead to no other conclusion but that Respondent has registered and is using the Domain Name at issue in bad faith. In my analysis I ignore all of Complainant’s allegations, and focus entirely on what Respondent has alleged, what Respondent has done, and what the publicly available evidence shows.
What did Respondent allege? Respondent submitted the Declaration of Peter Ho, who identified himself as “the director of Port Media,” which entity (“Port Media, Inc.” or “Port Media”? See Majority Opinion, para. 6.24) claimed to be the registrant of the Domain Name at issue after Complainant amended its complaint to substitute the entity identified by the privacy service shown in the WhoIs as the actual registrant, “CKV, Domain Administrator.” This “director” of the entity hiding behind the double blind of the privacy service and the registrant that the privacy service identified as the registrant stated, “We registered the Domain because it as a descriptive term to which we believed no party could claim exclusive rights.”4
Clearly, Respondent believed that it had the right to register and use the Domain Name at issue even if a pre-existing valid trademark existed. Ironically, despite this belief that a pre-existing trademark could not defeat Respondent’s rights and legitimate interest in the descriptive term, Mr. Ho went on to state that “we did not register the Domain with Complainant’s trademark in mind and had no knowledge of Complainant, its web site, its business name or trademark when it registered the domain name.”5
Respondent argued that it targeted descriptive domain names that had expired. It argued that “international wine accessories” is merely descriptive, despite the fact that similar domain names are recognized as world famous.6 Respondent argued that it targeted domain names that had expired, and were therefore deleted, and the expired domain names that it targeted had descriptive terms. Respondent cited decisions by panels for the National Arbitration Forum to the effect that expired domain names indicate abandonment by the prior registrant and that the registrant of an expired domain name “should be denied relief.” See Corbis Corporation v. Zest, NAF Claim No. FA98441 and C.B. Publishing, LLC v. Akway International Ltd c/o Hostmaster, NAF Claim No. FA926506.7
That is what Respondent said. But what did Respondent do? Respondent, who believed that it had the absolute right to use the Domain Name, even if a prior trademark existed, not only retained a privacy service to shield the identity of the real registrant from the public, but also apparently supplied the privacy service with a false name for the actual registrant. Majority opinion, para. 6.24.
Respondent activated robots.txt, which, because it is voluntarily respected by Alexa, the operator of the Internet Archive (the”Wayback Machine”), prevents the public (and the Panel in a domain name dispute) from viewing how the Domain Name has been used over time.8 This has been held in and of itself to be a factor in determining bad faith. The iFranchise Group v. Jay Bean/MDNH, Inc./Moniker Privacy Services [23658]., WIPO Case No. D2007-1438.
Respondent uses the Domain Name at issue to resolve to a web site with links to Complainant’s competitors, but not to Complainant. Majority Opinion, para. 6.13. Such use of a domain name has been held in and of itself to establish bad faith registration and use. Asian World of Martial Arts, Inc. v. Texas International Property Associates, Inc., WIPO Case No. D2007-1415.
Respondent uses the Domain Name at issue to resolve to a web site including a copyright notice in the form, “© internationalwineaccessories.com.” Respondent never argued or alleged that there was any business “internationalwineaccessories.com.” Majority opinion, para. 6.25.
What is the rationale of the majority for failing to find that the Domain Name at issue was registered and is being used in bad faith? First, the majority says that, based on the representations made by Respondent, the links to Complainant’s competitors may have been provided by Yahoo.com. Majority opinion, para. 6.15. Second, the words “international,” “wine,” and “accessories” are descriptive in nature. “It is frankly not surprising given that the sponsored links generated by Yahoo in connection with that Domain Name are likely to relate to dealings in wine, wine accessories and related services.” Majority opinion, para. 6.17. (However, this does not explain why such (assumed) Yahoo-generated links do not include links to Complainant, as well). Third, Respondent replied to Complainant’s allegations and stated that it registered other domain names incorporating common descriptive terms, including many domain names which included the term, “international.” Majority opinion, para. 6.18. Fourth, Complainant did not show that Respondent had used automated processes to register the expired Domain Name at issue. Majority opinion, para. 6.29. Complainant failed to produce evidence that could cause the Panel to conclude that Respondent’s claims were untrue. Majority opinion, para. 6.20. The majority fails to say how Complainant could produce evidence that Respondent (whose identity Complainant did not know, and who went so far as to supply false contact information to the privacy service it used) knew of Complainant, or that Respondent used an automated process to register the Domain Name at issue when it expired.
What does the publicly available information show? First, a search on the web site of the United States of America Patent and Trademark Office alone reveals that the word “international” in combination with other terms accounts for almost 2,500 registered trademarks. Yet, Respondent failed to determine whether an expiring domain name including the term “international” might be a trademarked term. Second, a Google search on the term “international wine accessories” reveals that the first 16 of 20 references are references to Complainant. Third, a Yahoo search on the term “international wine accessories,” not only lists Complainant’s web site as the first sponsored site, but also shows that nine out of the first eleven search results reference Complainant. Is it even conceivable that Yahoo generated search links would not include a link to Complainant? It is not.
It is common knowledge in the territory of the Internet as it relates to the registration and use of domain names that the registration of expired domain names is almost universally accomplished by the use of automatic domain grabber services. For example, the domainer web site “www. igoldrush.com” advises domainers that this is the case. “www.iugoldrush.com/expired3.htm”. While Complainant, even if it knew who the registrant of the Domain Name at issue was at the time it filed the complaint, could not have known precisely what mechanism Respondent employed to register the Domain Name at issue. Should Respondent have employed, as almost all domainers registering expired domain names do, an automated system, its failure to determine that the Domain Name at issue was trademarked would not insulate it from liability for bad faith registration and use.
“Paragraph 2 of the Policy implicitly requires some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy. Registering a domain name that is identical to the distinctive trademark of another and using the domain name to generate revenue by directing internet users to the websites of the trademark owner’s competitors, without exploring in a meaningful way the possibility of third-party rights, is inconsistent with this good faith requirement.”
HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062.
“A number of prior cases under the Policy have, however, made a finding of bad faith where a respondent ought to have known of the Complainant, and willfully avoided finding out. For example, as stated by the Panel in Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304:
“respondents cannot . . . shield their conduct by closing their eyes to whether domain names they are registering are identical or confusingly similar to trademarks . . . .[Where] a respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, such practices may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.”
Nature et Decouvertes v. XB NetVentures, Inc., WIPO Case No. D2007-1305.
iGoldrush.com advises domainers who are interested in registering expired domain names to do research into the prior registrants of the domain name:
“When hunting for expiring names, you also need to bear in mind who the previous owner of the name was, and what they were using the name for (if anything). While generally, expiring names can be considered “fair game” in that they are available to be registered by anyone, you doubtless wouldn’t wish to fall afoul of the legal department of a giant corporation such as Microsoft or IBM even if you eventually proved to be in the right.
So, often a little research into who the previous owner of an expiring domain name was, and what they were using the domain name for, can be both rewarding and reassuring.”
“www.igoldrush.com/expired2.htm”. So that even if Respondent did not employ an automated registration tool, it should have checked to see if the prior registrant(s) had a trademark interest in the Domain Name. A simple trademark search on a web site such as the USPTO web site would have accomplished this.
In the new era of privacy services, it is not appropriate to apply the same burdens of proof that were strictly insisted upon in the past. How is a complainant supposed to prove that a respondent has registered and is using the domain name in bad faith when, at the time of filing the complaint, the complainant does not even know who the respondent is? Moreover, in the present case, Respondent (whoever he, she, it, or they is) disguised Respondent’s identity even from the privacy service. With the adoption of privacy services, the rules of the game have changed. Panelists can no longer use the traditional approach. Panelists may be more proactive in determining the facts of the case. It is not always possible to exclusively rely on a complainant to provide proof where the respondent elects to mask its identity. Accordingly, I must respectfully dissent, and I would order that the Domain Name at issue be transferred to Complainant.
M. Scott Donahey
Panelist (Dissenting)
Dated: May 20, 2008
1 For the avoidance of doubt, the Panel wishes to make it clear that it does not follow that since the Complainant identifies some other entity as the Respondent that the proceedings are in some way deficient. It is sufficient for the purposes of the Policy that the Complaint names the entity or person listed on the publicly available WhoIs register at the time that the Complaint is forwarded to the relevant dispute resolution provider. For a more detailed consideration of the issues here, see Mrs. Eva Padberg v. Eurobox Ltd, WIPO Case No. D2007-1886.
2 The majority of the Panel note that the dissenting panelist comments that there is no explanation as to why the Yahoo-generated links do not include links to the Complainant as well. However, the Complainant does not allege that it has participated in any Yahoo sponsored link adverting and it is sponsored links rather than general search engine links that are relevant here.
3 This is not an issue that is addressed in either of the parties’ submissions and therefore the Respondent has not been given an opportunity to comment on this point. Therefore had the Panel’s finding here influenced the outcome of this decision, this is a point that the Panel would have been minded to put to the Respondent in advance of this decision. However, as is apparent, ultimately the Panel has decided this case in the Respondent’s favour and so it has not been necessary to do this.
4 It is unclear whether “we” refers to Port Media, Port Media, Inc., or is merely the regal “we.”
5 This panelist cannot and does not speculate as to the inconsistent references to “we” and “it.”
6 For example, INTERNATIONAL BUSINESS MACHINES and INTERNATIONAL HARVESTER.
7 The majority quite properly disapproved this view. Majority opinion. Paras. 6.31 and 6.32.
8 This panelist acknowledges that he accessed the Wayback Machine in an attempt to see how the domain name had actually been used in the past. See majority opinion, para. 6.27.