WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WorId Emblem International, Inc. v. Daniel Yang
Case No. D2011-0290
1. The Parties
Complainant is WorId Emblem International, Inc. of Miami, Florida, United States of America, represented by K&L Gates LLP, United States of America.
Respondent is Daniel Yang of Diamond Bar, California, United States of America, self represented.
2. The Domain Name and Registrar
The disputed domain name <worldemblems.com> is registered with FastDomain, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2011. On February 11, 2011, the Center transmitted by email to FastDomain, Inc.
a request for registrar verification in connection with the disputed domain name. On February 11, 2011, FastDomain, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2011. The Response was filed with the Center on March 7, 2011.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on March 16, 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
On or before September 8, 1993, Complainant World Emblem International, Inc. began using the WORLD EMBLEM mark in connection with providing precision-embroidered and screen-printed emblems; custom transfers; direct screen-printing; direct embroidery; ID tapes; reflective emblems; sublimation printing; blockers; thread; heat seal strips; and clothing for promotional and advertising purposes.
On May 3, 1996, Complainant registered the domain name <worldemblem.com>. Complaint, Annex E. Visitors to such website are directed to Complainant’s primary ecommerce website at “www.weicatalog.com”, which receives about 30,000 hits each year. Complainant’s Internet sites prominently display Complainant’s WORLD EMBLEM mark in connection with Complainant’s goods and services. In addition to its online presence, Complainant operates physical facilities in the United States, Mexico, and the United Kingdom of Great Britain and Northern Ireland.
On November 25, 2003, Complainant filed an application with the United States Patent and Trademark Office seeking registration of the mark WORLD EMBLEM & DESIGN. The application matured into United States Registration No. 2,965,037 in July 2005. Complaint, Annex D.
The disputed domain name <worldemblems.com> was registered by Respondent on May 6, 2009. See Complaint, Annex A and confirmation from the concerned registrar. Respondent’s website offers for sale custom embroidered emblems in direct competition with Complainant’s business. See Complaint, Annex C; Affidavit of Randy Carr.
5. Parties’ Contentions
Complainant asserts that the disputed domain name is confusingly similar to Complainant’s trademark and is likely to cause confusion in the marketplace. Complainant contends that “Respondent should not be permitted to add an “s” to Complainant’s domain name and thereby improperly divert Internet traffic from World Emblem’s “www.worldemblem.com” website to the website at the disputed domain name, <worldemblems.com>.”
According to Complainant, where the only difference between its mark and the disputed domain name is the letter “s”, “there is no question that the disputed domain name is confusingly similar to Complainant’s mark.”
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. It maintains that the use of a domain name consisting of another trademark constitutes trademark infringement and, therefore, is not a legitimate or justifiable use. Complainant further asserts, upon information and belief, that Respondent has no trademark rights in the subject domain name and is not commonly known by the domain name.
Finally, Complainant advances three arguments as to why it should be determined that the disputed domain name was registered and is being used in bad faith. First, that the registration of a domain name, by a competitor, that contains a complainant’s mark has been held under paragraph 4(b)(iv) of the Policy to be evidence of bad faith registration. Second, that Respondent’s use of Complainant’s mark constitutes a violation of United States trademark law and that such use should be considered bad faith use. Third, Respondent’s registration of a domain name that is in all relevant respects identical to Complainant’s mark “is nothing more than a blatant attempt to disrupt and capitalize on Complainant’s existing business. This is the essence of bad faith.” Complainant further asserts that issuance to it of a United States trademark registration for the WORLD EMBLEM & DESIGN mark serves as constructive notice to Respondent of Complainant’s rights and, as such, “it is proper to conclude that Respondent registered the subject domain in order to attract Complainant’s customers to Respondent’s website thereby disrupting Complainant’s business.”
Respondent, in his Response, notes that his company, World Embroidered Emblems Co., was established in 1970, was officially registered as an international trade company in March 1977, and has clients all over the world, including the United States, Sweden, Germany and Australia. World Embroidered Emblems Co. is based in Taiwan, Province of China. Respondent asserts that his company is frequently referred to as “World Emblems Company” because, in addition to making embroidered emblems, the company also makes metal emblems and lapel pins.
According to Respondent, World Embroidered Emblems Co. opened a branch office in California in 1986, and shipped goods to the United States as early as 1992. (Letter of Agreement, dated October 9, 1986, authorizing opening of bank account in California and Export Permit, submitted as unnumbered annexes to Response.)
Respondent submits that he decided to purchase the disputed domain name in May 2009 because it best represented his company – “we do all sort of emblems. We do business worldwide. This domain name […] is the best choice for our clients to remember and visit company web pages.” Respondent notes that he waited a year after purchasing the domain name before uploading any contents and that Complainant had 12 months to complain regarding the use of the domain name. “They never did.”
Respondent concludes by expressing his belief that World Embroidered Emblem Co. is the rightful owner of the disputed domain name. He points out that the contents of his website are different from that found at Complainant’s site, that his company was established and known in the emblems industry in numerous countries 20 years before Complainant, and that the domain name fits his company’s business mission and images.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <worldemblems.com> is at least confusingly similar to the WORLD EMBLEM mark. The domain name differs from the mark only in the addition of the letter “s” and the top-level domain “.com”. Such differences clearly are too insubstantial to defeat a determination of confusing similarity.
The evidence also establishes that Complainant has rights in the WORLD EMBLEM mark. Such rights are established by its ownership of a United States registration for the mark WORLD EMBLEM & DESIGN, as well as its many years of use of the mark.
B. Rights or Legitimate Interests
The Panel concludes that the evidence establishes that Respondent has rights or legitimate interests in the disputed domain name. In fact, this appears to be a rare case in which each of the circumstances set forth in paragraph 4(c) of the Policy may be found to exist.
The Panel finds that, long prior to notice of this dispute, Respondent was using the domain name in connection with a bona fide offering of goods and services. The evidence reveals that Respondent’s World Embroidered Emblems Co. was established in 1970 for the purpose of making and selling on a worldwide basis embroidered emblems, metal emblems, and lapel pins and opened an office in California in 1986. All these events took place prior to Complainant’s first use of the WORLD EMBLEM mark. The fact that the disputed domain name was not registered by Respondent until years after Complainant’s first use and registration of the WORLD EMBLEM mark does not necessarily defeat the bona fide nature of Respondent’s use.
Moreover, Respondent was apparently referred to by clients as “World Emblems Co.” and sells emblems throughout the world. Thus the Panel further determines that Respondent is commonly known by the disputed domain name and that its use of the domain name constitutes a fair (i.e., merely descriptive) use under the Policy.
C. Registered and Used in Bad Faith
With respect to this element of the Policy, the Panel finds that the disputed domain name was not registered and is not being used in bad faith. The evidence does not support a determination that Respondent intentionally attempted to attract, for commercial gain, Internet users to its site by creating a likelihood of confusion with Complainant’s mark. Rather, as noted above, the evidence indicates that Respondent registered the domain name, at least in part, because such domain name describes the nature of his company’s business. While Complainant asserts that Respondent’s use of the domain name constitutes trademark infringement, such a claim falls outside the jurisdiction of this Panel. A UDRP proceeding is not a substitute for a trademark infringement suit. The focus of a UDRP proceeding is on whether the evidence establishes an abusive domain name registration, not on the issue of likelihood of confusion.1 In the Panel’s opinion, the evidence does not establish an abusive registration of <worldemblems.com>.
While Complainant owns a United States registration for WORLD EMBLEMS & DESIGN, which registration constitutes constructive notice to the world of Complainant’s rights in the mark, most UDRP panels have declined to introduce the concept of constructive use into the UDRP. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.4.
In addition to the above, the record reveals none of the species of activity normally associated with abusive registrations, such as warehousing, holding the domain name for sale, use entirely for click-through revenues, or use of the domain name in connection with other than normal business activity. While the absence of such activity does not alone establish legitimate use or good faith, it, along with the other evidence presented in this case, provides sufficient factual basis for a determination that Respondent did not register and is not using the domain name in bad faith.
For all the foregoing reasons, the Complaint is denied.
Jeffrey M. Samuels
Dated: March 28, 2011
1 See Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, paragrapg 4.1c (Oct. 25, 1999) (“Except in cases involving `abusive registrations’ made with bad-faithintent to profit commercially form others’ trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts ….” )