WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Johnson & Johnson v. Chad Wright, WebQuest.com, Inc.
Case No. D2012-0010
1. The Parties
Complainant is Johnson & Johnson of New Brunswick, New Jersey, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, USA.
Respondent is Chad Wright, WebQuest.com, Inc., of Modesto, California, USA, represented by Lewis & Lin, LLC, USA.
2. The Domain Name and Registrar
The disputed domain name <tucks.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2012. On January 5, 2012, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On January 5, 2012, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on January 11, 2012. Center verified that the Complaint together with the amendment to the Complaint/amended 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 January 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response February 2, 2012. The Response was filed with the Center February 1, 2012.
On February 7, 2012, Complainant filed with the Center a Motion to Suspend Proceedings for 30 days to permit the opportunity for settlement discussions between the parties. On February 8, 2012, the Center notified suspension of the proceedings through March 9, 2012.
On March 2, 2012, Complainant submitted a request to reinstitute proceedings, representing that settlement discussion had been unsuccessful. Complainant’s request also included supplemental filings essentially consisting of citations to cases finding bad faith under Policy paragraph 4(b)(ii) and a group of five prior UDRP cases finding against Respondent and in favor of transfer. Respondent on March 2, 2012 objected to Complainant’s supplemental filing on the basis it was untimely, but added to its objection a list of six prior UDRP cases decided in Respondent’s favor. The Center reinstated proceedings on March 5, 2012.
The Center appointed Jeffrey D. Steinhardt, William R. Towns and Diane Cabell as panelists in this matter on March 26, 2012. 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
Complainant owns numerous registrations in the USA and internationally that include the trademark TUCKS, including, for example United States Trademark Registration No. 887,379 in International Class 5, with a first use in commerce of October 19, 1965. Complainant also owns domain names that include the TUCKS trademark, including <tucks.info>, <tucks.biz> and <tucksbrand.com>.
The disputed domain name was registered May 13, 2002. Beginning in 2002, and in 2004 and 2005, the website to which the disputed domain name routed displayed the statement that the site was under development along with a general directory page with content unrelated to the term “tucks” or the TUCKS trademark.1 In September 2007, and through later months in 2007, the website displayed a number of commercial link references to the word “tucks” in the context of cosmetic surgery. In early February 2008, while keeping these references, more links were added referring to “Tuck” as a proper name.
5. Parties’ Contentions
Complainant alleges that it’s “TUCKS product line dates back almost half a century and is among the most popular brands in its category, with annual US sales in excess of $ 20 million. Through extensive use and advertising over many years, the TUCKS Mark has become famous and is uniquely identified with Complainants products.” Complainant contends that Respondent is using the TUCKS mark to attract users to Respondent’s “parking” website to generate “pay-per-click” revenue. Complainant avers that Respondent’s website links to websites of third parties that advertise products and goods in direct competition with Complainant’s hemorrhoid-related products marketed under the TUCKS mark.
Complaint’s legal allegations under the Policy include:
1. That the disputed domain name is confusingly similar to Complainant’s TUCKS mark. In another allegation, Complainant contends that the disputed domain name wholly incorporates and is identical to Complainant’s marks.
2. That Respondent has no rights or legitimate interests since Respondent enjoys no license, permission or authorization to use the disputed domain name, Respondent is not commonly known by the disputed domain name, and that “the only reason that Respondent could have for registering and using the Domain Name is that Respondent knew of the TUCKS Mark and wanted to trade on Complainant’s renown to lure consumers to its website.” The Complaint continues, stating upon information and belief that “Respondent’s only use of the Domain Name is in connection with the conduct described above, i.e., 1) first to redirect users to Respondent’s e-commerce website where he sold products in direct competition with Complainant and then 2) in association with what is essentially a non-functional holding website posted by the Registrar. Neither of these uses demonstrates a bona fide offering of goods or services nor a legitimate interest in the Domain Name.”
3. That Respondent’s bad faith is demonstrated by its improper commercial exploitation of the TUCKS marks to make gain through consumer confusion and by linking to websites that directly compete with Complainant. Complainant also alleges that “[t]hese activities demonstrate bad faith registration and use of the Domain Name in violation of the Policy as set forth in paragraphs 4(b)(i) and 4(b)(ii).”
On the basis of these allegations, Complainant seeks transfer of the disputed domain name.
Respondent concedes that the disputed domain name is identical to a trademark in which Complainant has rights. Respondent alleges, however, that it was unaware of the existence of the TUCKS mark when registering, and that it registered the disputed domain name as a part of its business, which invests and trades in descriptive, generic, dictionary word, and keyword domain names.
With support in the Declaration of its president, Chad Wright, Respondent avers the following:
1. That it purchased the disputed domain name in good faith for around USD 1,000 when it expired in 2002, registering it solely for its value as a dictionary word and plural of the last name “Tuck.”
2. That Respondent’s president, at the time of registration, “had never heard of Tucks brand medicated pads.”
3. That for nearly nine years, Respondent “used the [disputed domain name] in connection with pay-per-click advertising of generic goods and services, none of which mentioned or were competitive with Complainant’s TUCKS® brand medicated pads.”
4. That Respondent did not register the disputed domain name with the intent to sell it to Complainant or a competitor, and that Respondent “did not target Complainant.”
5. That “at some point after [Respondent] switched to a new parking company, DomainNameSales.com, in June 2011, the web page associated with the [disputed domain name] apparently displayed advertisements for Complainant’s Tucks® medicated pads and competing products. As soon as Respondent learned of these ads - after the commencement of this action - it had the site redirected to a generic parked page.”
Based on these alleged facts, Respondent contends that it has rights and a legitimate interest to register and use the disputed domain name, which is a dictionary word. Respondent notes that Complainant objected to Respondent’s ownership and use of the disputed domain name only after ads for hemorrhoid products were “inadvertently” displayed. Respondent contends therefore that the Panel “may infer that Complainant itself, whose predecessors in interest registered the domain names <Tucks.biz> and <Tucks.info> in March 2003, was on notice of Respondent’s ownership and use of the [disputed domain name], but did not believe it to be illegitimate at that time.” (emphasis in original).
Finally, Respondent contends that: (1) the Complaint fails to fulfill the requirement under Policy paragraph 4(a)(iii) of proving bad faith use and registration; (2) that the Complaint fails to establish any of the circumstances listed in Policy paragraph 4(b)(i)-(iv); and (3) that “[t]he only issue is whether the appearance of competitive pay-per-click advertising on a web page associated with the [disputed domain name] from June 2011 to January 2012 is sufficient to satisfy the dual requirement of registration and use in bad faith… . The brief appearance of competitive advertisements in 2011 sheds no light on Respondent’s original intent in registering the [disputed domain name].”
6. Discussion and Findings
A. Supplemental Filings
The Panel has considered the parties’ respective supplemental submissions made on March 2, 2012, and has decided to accept the submissions into the record.
Paragraphs 10 and 12 of the Rules grant the Panel discretion to determine the admissibility of supplemental filings, including further statements or documents. As noted above, the submissions consist almost entirely of references to cases considering Policy paragraph 4(b)(ii) and copies of prior UDRP decisions of public record involving Respondent.
The Panel has determined that no prejudice to the parties will result from accepting and considering Complainant’s and Respondent’s supplemental submissions. None of the submissions raise new allegations as to which the parties might need further to respond.
B. Substantive Decision
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a).
Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(1) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
C. Identical or Confusingly Similar
The Panel agrees with both parties that the disputed domain name <tucks.com> is identical to the TUCKS mark, in which Complainant has rights.
Panels disregard the gTLD suffix in determining whether a disputed domain name is identical or similar to a complainant’s marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
The Panel concludes, therefore, that the Complaint establishes the first element of paragraph 4(a) of the Policy.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once the complainant has made a prima facie showing, the burden to come forward with evidence establishing rights or legitimate interests shifts to the respondent. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
Complainant alleges that Respondent is taking advantage of Complainant’s trademarks to attract Internet users to visit Respondent’s website. The Complaint alleges that Respondent does not have legitimate interests because Complainant has not authorized Respondent to use Complainant’s trademarks, that Respondent is not commonly known by the disputed domain name, and that Respondent has used the disputed domain name to display links to competitors of Complainant.
The Complaint avers that Respondent registered the disputed domain name on May 13, 2005, long after the TUCKS trademark was well established, having been used by Complainant since 1965. Consequently, Complainant contends, Respondent bears the burden “to establish its rights or legitimate interests in the Infringing Domain Name.”2
Respondent does not dispute that Respondent is not authorized by Complainant and that Respondent is not commonly known by the disputed domain name; consequently, the Panel finds these facts as presented by the Complaint. Respondent also does not dispute that it is using the domain name commercially. Respondent concedes that it uses the website to which the disputed domain name routes for advertising links that generate pay-per-click revenues. Accordingly, the Panel also finds that Respondent is not making a noncommercial or fair use of the disputed domain name.
Whether Respondent has rights or a legitimate interest in using the disputed domain name because of its value as a dictionary or descriptive term presents a more involved question.
Respondent contends that its business of buying, selling, and developing generic, geographic, and dictionary word domain names is a legitimate business, citing the panel decisions in Electronic Arts Inc. v. Abstract Holdings International LTD / Sherene Blackett, NAF Claim No. 1415905 (“[t]he buying and selling of generic domain names is a bona fide offering of goods under Policy ¶ 4(c)(i)”) and Franklin Mint Federal Credit Union v. GNO, Inc., NAF Claim No. 860527.3
The Panel accepts generally that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive term, even when the domain name is confusingly similar to a complainant’s registered mark. E.g., 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.
However, that domain name must have been registered because of its attraction as a dictionary word or descriptive term, and not because of any value corresponding to a trademark; the use of the domain name must also be consistent with its attraction as a dictionary word or descriptive term. Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062.
Thus in the present proceeding, whether Respondent adopted and used the disputed domain name because of its trademark value or because of its descriptive value would determine the extent to which Respondent has a legitimate interest. That determination is closely related to the question of whether Respondent registered and uses the disputed domain name in bad faith under the third element of paragraph 4(a) of the Policy. Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964.4
Arguably, the evidence of use of a disputed domain name to display links to competitors establishes a prima facie case here. Two other combined circumstances could conceivably also support finding that a prima facie case is established: the facts that: (1) Respondent has a business trading in and using large numbers of domain names for targeted advertising through automatic programs and processes; and (2) there is no showing that Respondent attempted to search for potential pre-existing trademark interests in the disputed domain name before registering a domain name that includes Complainant’s trademark. See, e.g., mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141 (“[a] sophisticated domainer who regularly registers domain names for use as PPC landing pages cannot be willfully blind to whether a particular domain name may violate trademark rights. In this context, a failure to conduct adequate searching may give rise to an inference of knowledge.”); Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448 (“The Domain Name is a sufficiently unusual expression that, in the Panel’s judgment, searches of that kind should have been undertaken, and the Respondent was “willfully blind” in failing to do so.”); Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; but see Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 (“Such a query might not be considered necessary in registering a ‘dictionary’ domain name, but the likelihood of infringing the rights of a third party or creating a likelihood of confusion as to source is clearly greater where the domain name is not a dictionary word or descriptive phrase.”) This latter theory is not raised in the Complaint, however.
As elaborated below, the Panel has determined that the Complaint fails to establish that Respondent registered the disputed domain name in bad faith. Therefore, the Panel refrains from ruling on whether the Complaint establishes a prima facie case and whether Respondent has proven the existence of rights or legitimate interests in the disputed domain name.
E. Registered and Used in Bad Faith
The Policy sets out four illustrative circumstances that evidence the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) the 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 the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
Policy paragraph 4(b).
The circumstances listed in paragraph 4(b) of the Policy are not exclusive, as paragraph 4(b) expressly provides. Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether there is no response to the complaint, a lack of active content appearing on the respondent’s website, concealment of identity, and other circumstances. See e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Complaint alleges that bad faith is established in this proceeding through the existence of the circumstances described in paragraphs 4(b)(i) and 4(b)(ii) above. The Panel concludes otherwise.
First, there is nothing in the record reflecting Respondent’s intent to sell, rent or otherwise transfer the disputed domain name. The Complaint also does not show any circumstances upon which inferences of such an intention could be based. Therefore, the Panel rules that the Complaint fails to demonstrate circumstances that fall within Policy paragraph 4(b)(i).
Second, the record demonstrates that Complainant owns two domain names that correspond directly to Complainant’s TUCKS trademark: <tucks.biz> and <tucks.info>. Without additional allegations by Complainant addressing the question, it appears to the Panel that the circumstances under Policy paragraph 4(b)(ii) are likewise not established.5
In the Panel’s view, the record suggests that the circumstances described in paragraph 4(b)(iv) of the Policy are potentially more germane. Under any circumstances, however, for Complainant to prevail, both the elements of bad faith use and bad faith registration must be established. E.g., E. & J.Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615.
The presence of commercial links on a respondent’s website to competitors of a complainant is often accepted as evidence of bad faith use in UDRP proceedings. See, e.g., mVisible Technologies, Inc. v. Navigation Catalyst Sys., Inc., supra; Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (citing Google, Inc v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400).
Such links are in evidence here. From June 2011 until January 2012, respondent’s website displayed commercial links based upon the TUCKS trademark, routing users to complainant’s competitors.
The record also shows that earlier, for much of the period from 2002 to 2007, the website was a general directory website. In 2007 and 2008, the website added several links using the descriptive term “tucks” related to cosmetic surgery and later, added links related to the proper name “Tuck.”
The Complaint does not address the significance of the use of the website before 2011, even though it appears that the website for nine years made no use of the disputed domain name in any way related to the TUCKS trademark.6 The only direct allegations respecting the element of bad faith registration are limited to the following: “The facts set forth above make clear that Respondent is exploiting the goodwill and fame of Complainant’s Marks in bad faith in order to improperly deceive Internet users and benefit Respondent financially. These activities demonstrate bad faith registration and use of the Domain Name in violation of the Policy as set forth in paragraphs 4(b)(i) and 4(b)(ii).”
The Panel appreciates that it can be difficult for a complainant to prove a respondent’s intention at the time of registration. A panel must often infer the respondent’s state of mind based on the totality of circumstances. Dell Inc. v. Derick Appert, WIPO Case No. D2005-0177; Ganesh Hegde v. Darshan Kapadia, WIPO Case No. D2009-0069. It remains the case, though, that the Complaint does not address the earlier appearance of Respondent’s website and makes no specific factual allegations respecting bad faith registration.
Having alleged elsewhere in the Complaint that the TUCKS mark is famous, the Panel construes the Complaint as implicitly relying on the theory that, along with other evidence of bad faith, registration of a domain name based on a well-known or famous mark prior to registration of the domain may support an inference of bad faith registration. See, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co, WIPO Case No. D2000-0163 (“Bad faith may be found where a domain name is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”); Nintendo of America v. Marco Beijin, Bejen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070 (“the word ‘POKÉMON’ is obviously a well-known mark” such that use “by someone with no connection or legal relationship with the Complainant suggests opportunistic bad faith”); Rediff.com India Ltd. v. Daniyal Waseem, WIPO Case No. 2010-0346 (“By incorporating wholly Complainant’s REDIFF trademark long after the mark had attained fame, it is suggestive of bad faith on the part of the Respondent.”); Nintendo of America, Inc. v. Pokemonplanet.net, Jerry Radl, and Fusion Media Solutions, Inc., WIPO Case No. D2001-1020 (cited by Complainant here in support of other propositions).
While it is certainly possible that the TUCKS mark is well known or famous, the Complaint lacks evidence to support these allegations. 7 Unlike the case with a less descriptive trademark, it cannot be said in this case that there is little chance that Respondent was not aware of the trademark when registering, since “tucks” is a common word. Compare Kahn Lucas Lancaster, Inc. v. Marketing Total S.A., WIPO Case No. D2007-1236 (“[i]t seems [highly] unlikely….that Respondent would have chosen this name [identical to complainant’s EMILY WEST trademark, used on children’s clothing] randomly.”)
Although the Panel has some reservations about the overall credibility of Respondent’s Declaration, the Panel accepts Respondent’s sworn statement that he was not aware of the TUCKS mark at the time of registration. However, even allowing that the trademark was known to Respondent, the registration could have been in good faith and for a legitimate purpose if Respondent’s use of a common word was intended to be descriptive, as explained above.
The Panel takes into consideration that Respondent’s website did not refer to the TUCKS trademark or advertise complainant’s competitors for a full nine years after Respondent’s registration. The record also shows that the website, for at least a few years, used a dictionary meaning of the “tucks” term, before linking to Complainant’s competitors during a six-month period in 2011. See 5B Investments, Inc. v. RareNames, WebReg, WIPO Case No. D2008-0146 (rejecting finding of constructive notice as a basis for bad faith registration where domain name was based on generic terms in light of evidence of use by respondent consistent with the term’s descriptive meaning).
On balance, the Panel concludes that the Complaint provides insufficient evidence to conclude that the disputed domain name was registered in bad faith.8 The Complaint therefore fails to fulfill Policy paragraph 4(a)(iii).
For all the foregoing reasons, the Complaint is denied.
Jeffrey D. Steinhardt
William R. Towns
Dated: April 5, 2012
1 The Panel has undertaken limited research by visiting the website to which the disputed domain name routes, and archives of the website at <archive.org>, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 4.5. The appearance of the website in archives is consistent with its appearance and content in the screen captures annexed to Respondent’s Response.
2 Contrary to the Complaint’s allegation, the record shows that the disputed domain name was not registered in 2005, but on May 13, 2002.
More significantly, Complainant makes the broad assertion that the burden of proof is on Respondent, citing PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174. However, this Panel is in agreement with the general consensus among UDRP panels that complainants bear the burden of proving that a respondent lacks rights or legitimate interests under the Policy. WIPO Overview 2.0, paragraph 2.1.
3 Respondent also cites the panel decision in Fifty Plus Media Corp. v. Digital Income, Inc., NAF Claim No. 94924. The relevance of that decision to this proceeding is not clear, however, given the brevity of discussion and the limited but significant finding of the panel that “Complainant offered no credible evidence to support its claim that Respondent registered the domain name in bad faith or that Respondent has no rights or legitimate interest in respect to the domain name.”
4 Prior cases involving this Respondent have explored this very issue. Sidestep, Inc. v. WebQuest.com, Inc., WIPO Case No. 2007-0549 (although Respondent submitted declaration that he was ignorant of the complainant’s trademark prior to registration – as Respondent has also declared in the present proceeding – panel rejected Respondent’s statement and found that content of the website indicated Respondent was aware of the complainant’s trademark therefore had no rights or legitimate interests).
5 Since Complainant owns domain names that include its TUCKS trademark, adding only gTLDs, the cases in Complainant’s supplemental submission of March 2, 2012 are inapposite.
That the Complaint does not address the earlier appearance of the website is a matter of some concern to the Panel. Moreover, the Complaint appears to mischaracterize the historical content on Respondent’s website. The allegation “upon information and belief” that Respondent’s website was used only to display competitive links or as a “non-functional holding website posted by the Registrar” is inconsistent with readily available archives at <archive.org>, showing substantial periods when the website displayed several links based on dictionary meanings of the “tucks” term. This heightens the Panel’s concerns in light of the obligation to certify accuracy of a Complaint under the Rules, paragraph 3(b)(xiv).
7 It is incumbent upon a complainant to provide evidence if it hopes to support a panel finding that a mark is well known or famous. Despite proof that the trademark was registered in the USA in 1965, and the bare allegation that Complainant earns USD 20 million in annual revenues from related products, reliable evidence connected with the trademark including any proof of those revenues, the extent of advertising, or customer-recognition data is absent from the record.
The Complaint does aver that Complainant’s “www.tucksbrand.com” website is the main website for information about TUCKS products, averaging “almost 20,000 unique visitors per month.” However, the annex submitted in support of that number appears to indicate a monthly average during a twelve-month period of 5,000 or less unique US visitors, with only an estimated 2,714 unique visitors in November 2011.
8 As noted by another panel, “While a common or descriptive phrase may be a registered trademark and its owner surely may invoke the Policy based upon such a mark . . . , that mark owner bears a heavier burden to establish that use of a similar phrase by another is illegitimate under paragraph 4(a)(ii) or in bad faith under 4(a)(iii).” PC Mall, Inc. v. NWPCMALL LLC, WIPO Case No. D2007-0420.