WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
K-2 Corporation v. HTM Sport GmbH
Case No. D2011-1709
1. The Parties
The Complainant is K-2 Corporation of Seattle, Washington, United States of America, represented by Davis Wright Tremaine LLP, United States of America.
The Respondent is HTM Sport GmbH, of Schwechat, Austria, represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States of America.
2. The Domain Name and Registrar
The Disputed Domain Name <ridehead.com> is registered with Ascio Technologies Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2011. On October 10, 2011, the Center transmitted by email to Ascio Technologies Inc. a request for registrar verification in connection with the Disputed Domain Name. On October 14, 2011, Ascio Technologies Inc. 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 October 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2011. The Response was filed with the Center on November 4, 2011. On November 10, 2011, the Center received a supplemental filing in which the Complainant submits a reply to the Respondent’s Response. On the same date, the Center sent a communication to the parties informing the parties that the supplemental filing request would be forwarded to the Panel, once appointed, for determination pursuant to its discretion.
The Center appointed Alistair Payne as the sole panelist in this matter on November 18, 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.
On November 22, 2011, the Center received a Complainant’s supplemental filing. On November 23, 2011, the Center sent a communication to the parties informing the parties that the supplemental filing request would be forwarded to the Panel for determination pursuant to its discretion. On November 28, 2011, the Center received a supplemental filing in which the Respondent submits a reply to the previous Complainant’s supplemental filing. On November 29, 2011, the Center sent a communication to the parties informing the parties that the supplemental filing request would be forwarded to the Panel for determination pursuant to its discretion. On December 1, 2011, the Center received a new Complainant’s supplemental filing. On the same date, the Center sent a communication to the parties informing the parties that the supplemental filing request would be forwarded to the Panel for determination pursuant to its discretion.
4. Factual Background
The Complainant is a well-known, worldwide provider of high-quality sports equipment including skis, snowboards, in-line skates, boots, clothing and related goods. It is the owner of U.S. Trademark Registration No. 1,878,248 for the mark RIDE for snowboards and accessories for snowboards, namely, snowboard boots, snowboard bindings, and parts therefore, snowboard boot bags, and snowboard leashes, in International Class 28. The Complainant operates one of its key websites at “ridesnowboards.com”.
Head Technology GmbH owns the famous HEAD trademark and trade name, and licenses the HEAD trademark to various Head companies, including its parent company Head Sport GmbH and to the Respondent. It has registered the HEAD trade mark in numerous jurisdictions worldwide and has used the HEAD mark for winter sports products since 1948. The Disputed Domain Name is registered to the Respondent.
5. Parties’ Contentions
The Complainant submits that it owns registered trade mark rights in the RIDE mark in the United States as set out above and has acquired all of the assets previously owned by Ride Snowboard Company, which it operates as the Ride Snowboard Company. It says that the Ride Snowboard Company has used the mark RIDE in association with the sale of snowboards, snowboard boots, and snowboard clothing continuously for many years, commencing in 1992 and has sold more than 2 million snowboards under the mark. It further submits that the RIDE name and mark have achieved widespread recognition and secondary meaning through the Complainant's extensive advertising and promotion of the names and marks which has involved expenditure of more than USD 15 million worldwide.
The Complainant also states that the Disputed Domain Name was first registered on December 20, 1996. It says that the website associated with the Disputed Domain Name has received 3,588,983 visits and 25,639,712 page views from January 1, 2009 to August 1, 2011 and that a search using Google’s web search engine for the words "ride snowboards" returns more than 749,000 results, substantially all of which refer to "ride" in the trademark sense as a mark associated with the Complainant and/or the Complainant's products.
Essentially, the Complainant submits that the Disputed Domain Name is confusingly similar to its RIDE trademark because the Disputed Domain Name wholly incorporates the Complainant's RIDE mark and in circumstances that the Complainant and Respondent are direct competitors and both sell snowboard and related equipment there is a substantial risk that confusion is exacerbated and that a consumer may well conclude that the parties have a business relationship, when in fact they are competitors.
The Complainant says that it has not granted the Respondent a licence nor has it otherwise permitted the Respondent to use its well-known trademark or to apply for any domain name incorporating the mark. Nor, according to the Complainant, is the Respondent commonly known by the Disputed Domain Name. It further submits that there be cannot be a bona fide offering of goods and services where the Disputed Domain Name directs viewers to a website that offers products that compete with the Complainant's products and that this conduct is objectionable and amounts to a form of “bait and switch” selling, trades on the Complainant’s goodwill and amounts to intentionally attempting to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's marks and trade name.
The Complainant submits that the Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor in terms of paragraph 4(b)(iii) of the Policy. It submits that the Respondent adopted the Disputed Domain Name to sell the snowboards in competition with the Complainant’s RIDE snowboards. It says that the Respondent has created a domain name that combines the distinctive trademark RIDE with the Respondent's name HEAD to bring to mind the Complainant’s snowboards and that the Respondent is obviously using the Complainant's RIDE mark to either outright confuse customers into believing its products are RIDE products, or believing that the products sold at the website are somehow associated with RIDE products.
The Complainant further says that the Respondent has engaged in this sort of conduct previously by using the mark “SWEET ONE” on snow skis long after the Complainant had adopted its “SWEET LUV” and “ONE LUV” marks. It says that the Respondent obviously created “SWEET ONE” by combining a distinctive element from each of the Complainant's marks to create a new mark that creates the impression among customers that the product originates from the Complainant.
The Complainant says that this conduct fits squarely within paragraph 4(b)(iv) of the Policy in that the Respondent is a competitor that is using a confusingly similar domain name to disrupt a competitor's business by diverting traffic to its own competing website which is causing damage to the Complainant. Further, the fact that the Respondent has registered and is using a domain name that completely incorporates the Complainant's mark and chose to register this domain name when it knew or had constructive notice of the Complainant’s trade mark registrations for its well-known mark, only reinforces the Respondent’s bad faith.
The Respondent says that operating since 1948, it has numerous trademark registrations for its famous HEAD mark worldwide and that it and its licensees have sold billions of dollars’ worth of sports equipment, apparel, bags, footwear, and related products worldwide under this mark. It says that it had worldwide sales in excess of EUR 215,000,000 in 2006; 201,500,000 in 2007; 213,500,000 in 2008; 213,500,000 in 2009; and 227,000,000 in 2010. It also says that it has offered snowboard-related products under the HEAD mark since as early as 2001, including snowboards, bindings, boots, bags, helmets, and body protection gear. In addition, it has spent hundreds of millions of dollars over the years to extensively advertise and promote its products worldwide under the HEAD mark, including advertising of HEAD snowboarding products.
The Respondent submits that the generic term “ride” is defined in the dictionary as a transitive verb meaning “to travel on” such as “ride a bike”. It is also a noun meaning “an act of riding”. In the context of the sport of snowboarding, “ride” is used as the generic verb for the act of using a snowboard. It is also used as the generic noun for the event of using a snowboard (i.e., “go for a snowboard ride”), and the related term “rider” is the generic term for an individual who rides a snowboard. The Complainant says that the term “ride” continues to be commonly used today generically for the act of using a snowboard and in this regard submits that a Google search for the phrase “ride a snowboard” revealed nearly 100,000 hits.
It says that it registered the Disputed Domain Name in good faith nearly 11 years ago, on November 22, 2000. It says that it selected and registered the Disputed Domain Name because it incorporated both the Respondent’s famous HEAD trademark and the term “ride,” which is the generic term for the act of using a snowboard. The Respondent says that it used the Disputed Domain Name in good faith as early as October 2001 and has used the Disputed Domain Name continuously since that time, for its website dedicated exclusively to the Respondent’s HEAD-branded snowboards and snowboard-related products.
The Respondent says that it has used the Disputed Domain Name for its website for more than 10 years before the Complainant filed its Complaint and that the Complainant should have known of this use.
It further submits that the Complainant mistakenly and misleadingly claims that it registered the Disputed Domain Name in 2007 when the Respondent in fact registered it on November 22, 2000. The Respondent says that it originally registered the Domain Name in the name of its related company HTM Sport Freizeit AG, and changed the registrant to HTM Sport GmbH in 2010 and that historical WhoIs records reflect those facts. It says that the Complainant must have known the WhoIs history for the Disputed Domain Name because the Complainant erroneously listed the prior registrant name HTM Sport Freizeit AG as the Respondent in the caption of its Complaint, but correctly listed the current registrant HTM Sport GmbH in the body of its Complaint.
The Respondent submits that the Disputed Domain Name is not confusingly similar to the Complainant’s mark because it incorporates the word “ride” used as a verb in a generic sense together with the Respondent’s well known trade mark HEAD. For similar reasons the Respondent says that it is making a bona fide use of the Disputed Domain Name and has every right to use its own trade mark together with a generic word such as “ride”. Finally the Respondent says that as demonstrated above it registered the Disputed Domain Name in good faith and many years ago in relation to a website promoting its own goods and services and it says that it has not entered into any pattern of conduct to trade off the Complainant’s marks. It says that its mark “SWEET ONE” was part of a “ONE” series of marks which it agreed to phase out in 2010 in any event at the Complainant’s request.
The Respondent requests that the Panel make a finding of reverse domain name hijacking on the basis that the Complainant never mentioned the Respondent’s use of its famous HEAD mark, because in the snowboard business “ride” must be able to be used generically and lastly because of the Respondent’s very long period of use prior to this Complaint being made.
6. Discussion and Findings
Both parties have made supplementary filings in this case out of time and the Panel having considered these filings exercises its discretion under the Rules to refuse their admission to these proceedings.
A. Identical or Confusingly Similar
As noted above, the Complainant has demonstrated that it owns registered trade mark rights in the United States for the trade mark RIDE under registration number 1,878,248. Is the Disputed Domain Name confusingly similar to the Complainant’s mark?
The test for confusing similarity requires an objective side by side comparison of the Disputed Domain Name against the Complainant’s trade mark. Where the Disputed Domain Name wholly incorporates the Complainant’s mark, then unless there is an element that sufficiently distinguishes the Disputed Domain Name it will be confusingly similar for the purposes of this element of the Policy.
In this case, the Complainant’s mark is wholly incorporated in the Disputed Domain Name. The only other element in the Disputed Domain name is the common word “head” which also happens to be a well-known registered trade mark of the Respondent. This creates an extremely unusual circumstance for determination under the first element of the Policy. Namely, the Panel has to consider confusing similarity in circumstances that not only the Complainant’s registered trade mark is wholly incorporated into the Disputed Domain Name but the only other element comprises the Respondent’s well known registered trade mark. In addition, either mark individually comprises a commonly used word in the English language and the combination of the words in the Disputed Domain Name is such that the Complainant’s mark is used as a verb as in the expression “ride head”. The Panel notes that it has been unable to find an analogous case example in WIPO’s index of past cases.
The classical analysis under the first Policy element requires a consideration as to whether the addition of the common word “head” to the Complainant’s registered trade mark RIDE distinguishes the Disputed Domain Name or not. In the usual course, panels have found that the mere addition of a common or generic word in circumstances that a complainant’s registered trade mark has been wholly incorporated in the disputed domain name is not an adequate distinguisher and consequently the disputed domain name is found to be confusingly similar to the complainant’s trade mark.
The Panel accepts that in many cases a common or generic word such as “head” would not function as an adequate distinguisher for the purposes of the Policy. However, in view of the secondary meaning attaching to the HEAD mark, of its fame in particular in relation to ski equipment and of the combination of elements in the Disputed Domain Name such that the “ride” element is used in a verbal sense in front of the Respondent’s HEAD mark, the Panel doubts whether on balance confusing similarity has been established under the first element of the Policy in this particular case.
In other words, the Panel views it just as likely, if not more so, that Internet users would consider that the Disputed Domain Name would lead them to the Respondent’s website as to the Complainant’s. In these circumstances, the Panel notes that there is a limited possibility of the doctrine of initial interest confusion operating, although on balance the Panel doubts that most Internet users would be confused.
In any event, for reasons described further below, the Panel finds that the Complaint fails for other reasons under the second element of the Policy.
B. Rights or Legitimate Interests
On the evidence before the Panel in these proceedings it considers that Complainant has not made out its case that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Firstly, the Panel accepts that the Disputed Domain Name incorporates the Respondent’s well known HEAD trademark and that the verb “ride” is commonly used in the context “riding a snowboard”. In this light the Respondent’s registration of the Disputed Domain Name is logical and appears to be a bona fide use of its trade mark preceded, as noted earlier, by a commonly used English verb. Further, there is nothing before the Panel to suggest that the Respondent has ever used the Disputed Domain Name other than for bona fide purposes in relation to its own goods and services.
Secondly, the Panel accepts the Respondent’s submission that the Disputed Domain Name was registered in 2000 through one of its group companies and was subsequently transferred to the Respondent. It appears that the Complainant was in fact aware of this but has not explained why it has not brought this Complaint earlier. There is no suggestion that the Respondent’s use of the website to which the Disputed Domain Name resolves has changed in the interim period in a way that the Complainant felt so objectionable that it prompted the Complainant to bring this Complaint now. The Panel finds that the Complainant’s substantial delay while the Respondent used the Disputed Domain Name to promote its own goods and services mitigates against a finding that the Respondent has no bona fide interest in the Disputed Domain Name.
Finally, the Complainant alleges that Respondent has engaged in this sort of conduct previously by using the mark “SWEET ONE” on snow skis long after the Complainant had adopted its “SWEET LUV” and “ONE LUV” marks and that its use is therefore no bona fide. While the Panel does not necessarily accept the Complainant’s version of events concerning these marks over and above the Respondent’s, it does not in any event consider that this case constitutes part of any such pattern of conduct under the Policy. As noted above, in circumstances that the Respondent’s well known HEAD trade mark is incorporated into the Disputed Domain Name and that the word “ride” is employed in the Disputed Domain Name as a commonly used verb in relation to the Respondent’s mark, the Panel finds that the Respondent’s use of the Disputed Domain Name is legitimate in so far as the second element of the Policy is concerned.
In choosing as a trade mark a word that is commonly used in the English language as a verb in relation to snowboarding, the Complainant had to accept the fact that the scope of protection of its registration was likely to be limited, and would not extend to protect against the use of the word in expressions where it was used as a verb, for example in the expression “ride HEAD” (emphasis added) as incorporated into the Disputed Domain Name. For the reasons set out above and in the particular and unusual circumstances of this case, the Panel considers that use in this expression does not import an illegitimate reference to the Complainant and is more likely than not to indicate to Internet users a reference to the Respondent. In these circumstances, the Panel does not consider that the Complainant has fulfilled the onus of proof upon it of demonstrating that the Respondent has no rights or legitimate interests in the Disputed Domain Name and accordingly, the Complaint also fails in relation to the second element of the Policy.
The Panel notes that the circumstances of this case are very rare and this decision needs to be viewed in its own factual context. As noted above, the Panel is unaware of any other decision under the Policy based upon a domain name which is a combination of two registered trade marks, each owned by one of the parties and each of which may also function as a common word used in daily language. The fact that the Respondent’s mark is very well known and is used in a context which the Panel considers is likely to be viewed as a verbal expression, makes the circumstances of this case even more unusual. For these reasons the Panel notes that this decision must be viewed on its own merits and as a case which at the end of the day does not involve cybersquatting in terms of the Policy.
In the unusual circumstances of this case that the Disputed Domain Name incorporates the registered trademarks of both parties and that both these marks are also commonly used words in the English language, the Panel declines to make a finding of reverse domain name hijacking as requested by the Respondent, which it notes should be reserved for cases in which the Complaint clearly had no reasonable chance of success from the outset.
For all the foregoing reasons, the Complaint is denied.
Dated: November 27, 2011