WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ECCO sko A/S v. Phalanx SEO Services, Don Bertelsmann Jr.
Case No. D2010-2038
1. The Parties
The Complainant is ECCO sko A/S of Bredebro, Denmark, represented internally.
The Respondent is Phalanx SEO Services, Don Bertelsmann Jr. of Clayton, Missouri, United States of America.
2. The Domain Name and Registrar
The disputed domain name <eccodiscount.com> (the “Disputed Domain Name”) is registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on November 24, 2010. On November 24, 2010, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the Disputed Domain Name. On November 24, 2010, Name.com LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the ”Policy” or ”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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2010.
The Center appointed Nicholas Weston as the sole panelist in this matter on January 12, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant, ECCO sko A/S, is a Danish company that has manufactured and sold shoes since 1963 and also engages in the manufacture and sale of bags, belts and shoe care products. The Complainant’s turnover is approximately USD 1billion and it employs in the region of 15,000 people.
The Complainant holds separate registrations for the ECCO mark and variations of it in more than 100 countries. In addition to these, it holds a Community Trademark and International (Madrid Protocol) Registration for the word mark ECCO and in logo form in class 25 for footwear. The ECCO mark is also registered in classes 03, 18 and 35.
The Complainant conducts business on the Internet using numerous domain names containing the word ECCO including <ecco.com> and <ecco.eu> with a footwear business website resolving from these domains. The Complainant also owns other domain names comprising the word “ecco” with a descriptor added, including <eccogolf.com> and <eccoreceptor.com>.
The Complainant is a well-known supplier of shoes.
On July 1, 2010 the Respondent registered the Disputed Domain Name <eccodiscount.com>.
The Respondent uses the Disputed Domain Name as of the date of this Decision to point to a web page that offers footwear information and contains advertisements which display links in connection with the Complaint’s products and other, unrelated goods or services.
5. Parties’ Contentions
The Complainant cites its worldwide registrations of the trademark ECCO including in the United States, European Union and related trademarks consisting of, or including this word, and, alternatively, its logo, as prima facie evidence of ownership.
The Complainant submits that its trademark is distinctive and well-known and that their rights in this mark predates the Respondent’s registration of the Disputed Domain Name <eccodiscount.com>. It submits that the Disputed Domain Name is confusingly similar to its trademarks, because the Disputed Domain Name incorporates in its entirety the trademark ECCO (presumably alluding to Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903) and that the similarity is not removed by the addition of the descriptive term “discount”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the Complainant’s trademarks (e.g: Nilfisk-Advance A/S v. Leong Tak Lang, WIPO Case No. D2000-1299). The Complainant also contends that use which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services (e.g.: Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847).
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, pursuant to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3). On the issue of registration, the Complainant contends that because the Disputed Domain Name <eccodiscount.com> wholly incorporates the Complainants registered trademark ECCO together with a descriptive term, the word “discount”, it was registered “to attract potential ECCO customers onto his website hereby generating internet traffic and income to himself.” On the issue of use, the Complainant contends that the Respondent uses the Disputed Domain Name for directing traffic to a page containing sponsored links or sponsored advertisements and that such use constitutes the kind of opportunistic bad faith that cases such as Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 considered impermissible.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
If a respondent does not submit a response, paragraph 5(e) of the Rules requires the panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the panel considers appropriate. The Panel has reviewed the record and finds that the Center has adequately discharged its responsibility to contact the joined Respondent by reasonable means.
A. Res Judicata / Re-filed Complaint
The Disputed Domain Name has already been the issue of a UDRP proceeding, namely ECCO sko A/S v. Protected Domain Services, WIPO Case No. D2010-1469. In that case, the Complainant identified the party acting as a privacy service indicated in a WhoIs report as the Respondent and elected not to amend the Complaint after being notified of the identity of the underlying registrant identified as Phalanx SEO Services.
Re-filing may only be allowed in exceptional circumstances (see: Grove Broadcasting Co. Ltd. v. Telesystems Communications Limited, WIPO Case No. D2000-0703; Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527). It is therefore incumbent on this Panel to take into account the previous case as part of the background for the Decision in the present dispute in determining whether this proceeding is Res Judicata.
Generally, a “Re-filed Complaint” within the scope of the Policy refers to a situation where the same Complainant files a Complaint against the same Respondent in relation to the same domain name considered by a panel in a previous matter.
The preceding Complaint in WIPO Case No. D2010-1469 was filed as against a different respondent. Therefore, the Complaint cannot be regarded as a re-filing and the Complaint is admissible. This Panel has not, and will not consider any evidence filed in the previous matter which was, in any event, determined not on its substantive merits but on a procedural point. The issue is put beyond doubt by the previous decision itself which states “A decision is being made on the procedural aspects of the Complaint only, which does not as such preclude the Complainant from filing a subsequent complaint with the Center in respect of the Disputed Domain Name”.
B. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark ECCO in the United States and numerous other countries. The Panel finds that the Complainant has rights in the mark ECCO that dates back, based on Registration Number 1935123 on the USPTO register, at a minimum, to 1995.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademarks, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant’s trademark ECCO (b) followed by the word “discount” (c) followed by the top level domain suffix “.com” all in one continuous domain name.
It is well-established that the top-level designation used as part of a domain name should be disregarded. The relevant comparison to be made is with the second-level portion of the Disputed Domain Name: “eccodiscount”.
It is also well-established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of descriptive words such as, in this case, “discount”. (see e.g. Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (addition of ordinary descriptive word as prefix or suffix to a world-famous mark such as SONY does not detract from overall impression of the dominant part of the name, the famous mark); America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184 (use of short phrases with well-known mark still found confusingly similar to that mark) and Carfax, Inc. d/b/a Carfax v. Auto Check USA, WIPO Case No. D2001-0929 (“[t]he mere addition of the generic word ‘discount’ in the [d]isputed [d]omain [n]ame does not avoid the likelihood of confusion under Policy Paragraph 4(a)(i)”). Panels have also found that combining a well-known trademark with a generic suffix tends to aggravate, not dispel, likelihood of confusion (see: Nintendo of America, Inc. v. Tyasho Industries and Thomas G. Watson, WIPO Case No. D2001-0976).
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the [w]ebsite, they have already been confused by the similarity between the domain name and the [c]omplainant’s mark into thinking they are on their way to the [c]omplainant’s [w]ebsite”. The Disputed Domain Name is therefore confusingly similar to the Complainant’s trademarks.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interest in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The evidential burden then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1).
It is well established that a respondent has a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). However, this business model is generally recognized under the Policy as legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that website is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (see: National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.2).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Complainant has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark. The Complainant further contends that “the Respondent unduly takes advantage of the Complainant’s brand value by using the domain name <eccodiscount.com> to attract potential ECCO customers onto his website hereby generating internet traffic and income to himself.” The Complainant provided evidence that typing in the Disputed Domain Name diverts traffic to a webpage containing advertisements and links for, amongst other things, footwear, including shoes. Prima facie, it appears that the Respondent is misleadingly directing Internet users to a page composed of advertisements and links in connection with the same industry sector as the Complainant’s trademarks and thereby seek some illegitimate commercial gain (see: Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 which states that “use which intentionally trades on the fame of another can not constitute a ‘bona fide’ offering of goods or services”).
In the absence of a substantive Response, the Panel finds for the Complainant on the second element of the Policy
D. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith.
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, [relevantly]:
(ii) [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 [respondent has] engaged in a pattern of such conduct; or
(iii) [respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or of a product or service on [respondent’s] web site or location.”
The evidence supports the Complainant’s contention that the Respondent registered and has used the Disputed Domain Name in bad faith. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see, Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; L’Oréal v. Domain Park Limited, WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141).
The trademark ECCO is so well known in the United States of America for footwear and shoes that it is inconceivable that the Respondent might have registered a domain name similar to or incorporating these marks without knowing of them.
Further, a gap of ten years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith. (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Complainant held direct United States registration for the trademark ECCO, U.S. Registration No. 1935123 from 1995 predating its rights from the Respondent’s registration by 15 years.
The diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions. (See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).
This Panel finds that the Respondent has taken the Complainant’s well-known trademark ECCO and incorporated that mark into the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademarks by diverting Internet users to a webpage for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <eccodiscount.com> be transferred to the Complainant.
Dated: January 25, 2011