WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Interbasic Holding S.A. v. Shocking
Case No. D2012-0654
1. The Parties
The Complainant is Interbasic Holding S.A. of Luxembourg, Luxembourg, represented by Laura Turini of Studio Legale Turini, Italy.
The Respondent is Shocking (a registered fictitious business name of The Diamond Lane Group, Inc.) of Chico, California, United States of America ("US").
2. The Domain Name and Registrar
The disputed domain name <shocking.com> (the "Disputed Domain Name") is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2012. On March 29, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Disputed Domain Name. On March 29, 2012, GoDaddy.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 April 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2012. Upon the Respondent’s request of April 20, 2012, the Center extended the due date for the Response to April 27, 2012. The Respondent filed the Response with the Center on April 27, 2012.
The Center appointed Gabriela Kennedy, Luca Barbero and Diane Cabell as panelists in this matter on May 23, 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
The trade mark on which the Complaint is based is SHOCKING. The Complainant is an Italian company that owns trade mark registrations for SHOCKING in various classes of goods and services. The first US trade mark registration for SHOCKING was registered on March 30, 1937 by Italian fashion designer, Elsa Schiaparelli, following the creation of the "Shocking!" perfume in 1936. The Complainant subsequently acquired the SHOCKING trade mark from Elsa Schiaparelli.
The Respondent is a registered fictitious trading name of the US company “The Diamond Lane Group, Inc.” (the "Group"). The Group owns and operates a group of Internet Service Providers ("ISPs"), which include “The Diamond Lane”, “Chico.net”, “Stormnet.com”, and “Shocking.com”.
The Disputed Domain Name was originally registered by a third party on December 5, 1995 and was used in connection with the Northern California-based ISP “Shocking.com”. Between 1996 and 1998, the Disputed Domain Name resolved to a website (the "Website") that amongst other things provided Internet users with information on comparative prices for different Internet services under the heading “Shocking Prices”. In 2009, the Website changed but was still used to advertise ISP-related services, including Internet access, web hosting, email accounts, and domain name registration services ("ISP-related Services").
On August 31, 2011, the Respondent acquired the Disputed Domain Name (along with various other domain names) from the previous registrant as part of an acquisition of the previous registrant's assets. By a sworn affidavit, the President of the Group said that the Respondent continued to service the Website’s customers by providing ISP-related Services following the purchase of the Disputed Domain Name. At the date of this Decision, the Disputed Domain Name resolved to a simple webpage that advertised and offered for sale ISP-related Services. The links on the Website automatically re-direct users to the “www.chico.net” website which contains information on ISP-related Services.
5. Parties’ Contentions
The Complainant's contentions can be summarised as follows:
(a) The Disputed Domain Name is composed of the same word "shocking", for which the Complainant owns trade mark registrations dating back to 1937.
(b) The Respondent does not have rights or legitimate interests in the Disputed Domain Name:
(i) the status for Shocking.com, Inc., the only company in the California State Archive incorporating the name "shocking", was suspended as at the date of the Complaint; and
(ii) the Respondent was not authorised, licensed or otherwise allowed by the Complainant to use the name "Shocking" or apply for any domain name incorporating the SHOCKING mark.
(c) The Disputed Domain Name has been registered and is being used in bad faith:
(i) the Respondent knew or should have known of the Complainant and its right in the SHOCKING mark because the Respondent is located in the US and the Complainant owns US trade mark registrations, the first of which had been registered for more than 50 years before the registration of the Disputed Domain Name;
(ii) there is no evidence that the Respondent has made any efforts to find out about third party rights in the Disputed Domain Name;
(iii) the Respondent is not offering a bona fide offering of goods or services as the Website leads to a webpage showing general advertisements regarding Internet services and appears to be a provisional page to avoid recovery of the Disputed Domain Name;
(iv) the site to which the Disputed Domain Name resolved was used as a parking page in 1996 and showed advertisements of different products and services, with clear intent for commercial gain;
(v) as of the date of the Complaint, the Website showed an Internet page advertising services provided by a suspended business entity (an entity that cannot be operating in California); and
(vi) the Respondent refused to transfer the Disputed Domain Name when the Complainant offered to purchase the Disputed Domain Name for EUR 2,500 and never responded to the Complainant's requests.
The Respondent's contentions can be summarised as follows:
(a) The Respondent does not dispute that the Disputed Domain Name is confusingly similar to the Complainant's SHOCKING trade mark but states that the trade mark registration was issued in respect of perfumes, toilet waters, rouge, lipstick and face creams.
(b) The Respondent has rights and legitimate interests in respect of the Disputed Domain Name:
(i) "Shocking" is a generic dictionary word:
i. the Respondent had the right to register the Disputed Domain Name because it is comprised of a dictionary word, capable of multiple uses, and was to the Respondent’s knowledge not associated with any one company;
ii. the Complainant’s trade mark rights are limited to the scope of the Complainant’s trade mark registration;
iii. the Complainant’s business is not exclusively associated with the word “shocking” and its trade mark registration does not grant the Complainant monopolistic rights;
iv. domain names incorporating common dictionary words are available for registration on a first come first served basis;
(ii) the Respondent is known as Shocking.com:
i. the Respondent is the successor of an ISP business that started in 1996;
ii. since acquiring the ISP business, the Respondent has continued to serve the business’ customers by operating the ISP business;
(iii) the Respondent made a bona fide use of the Disputed Domain Name in connection with its ISP business prior to notification of this Complaint;
i. the Group has been in the ISP business since 1994 and has been using the Disputed Domain Name in connection with the operation of an ISP;
ii. “Shocking.com” itself has been in use as an ISP since 1996;
iii. The fact that the Disputed Domain was originally registered by a third party does not diminish rights because the Respondent acquired all rights and goodwill accrued by the registrant through the asset purchase agreement;
(iv) the Respondent does not use the Disputed Domain Name to compete against Complainant and did not know about the Complainant when it registered the Disputed Domain Name;
i. the Complainant’s trade mark registration is for fragrances, toilet water, and lipstick and the Respondent uses the Disputed Domain Name in connection with the operation of an ISP;
ii. the Respondent had never heard of the Complainant prior to the filing of the Complaint; and
iii. the Complainant has produced no evidence showing that the SHOCKING mark is currently famous or in widespread use, such that constructive knowledge might be inferred.
(c) The Respondent registered and used the Disputed Domain Name in good faith and the Complainant has failed to produce evidence supporting any of the bad faith factors as set out in paragraph 4(a)(iii) of the Policy:
(i) the Respondent did not register the Disputed Domain Name to sell it to the Complainant;
i. the Respondent never offered to sell the Disputed Domain Name to the Complainant;
(ii) the Respondent has not engaged in a pattern of conduct to prevent the Complainant from reflecting its marks in domain names;
i. the Respondent owns and operates a number of small, independent ISPs in Northern California and there is no evidence to show that the Respondent has registered a domain name to prevent a trade mark holder from registering it;
(iii) the Respondent did not seek to disrupt the business of a competitor;
i. the Respondent and the Complainant are not competitors;
ii. during the 16 years in which the Respondent (and the previous registrant) have operated the Website, the Complainant took no steps to protect its mark and allowed the previous registrant of the Disputed Domain Name to accrue goodwill in connection with its use of "SHOCKING" as a common law mark;
(iv) the Respondent has not intentionally attempted to attract the Complainant's Internet customers to the Website for commercial gain;
i. the circumstances (i.e. the Respondent paid nearly USD 60,000 to purchase the business of the previous registrant of the Disputed Domain Name, which included several ISPs, many IP addresses and a number of domain names) shows that the Respondent has not intentionally attempted to attract the Complainant’s Internet customers for commercial gain;
ii. the mere existence of the Complainant’s trade mark rights at the time the Respondent registered the Disputed Domain Name does not create a presumption of knowledge;
iii. dictionary words are less likely to coincide with a registered trade mark because dictionary word trade marks are generally afforded a more narrow scope of protection;
iv. the Respondent is offering bona fide goods and services and the Disputed Domain Name has been used for nearly 15 years to provide ISP-related Services; and
v. the Respondent never received a cease and desist letter from the Complainant.
(d) The Complainant has brought the Complaint in bad faith in an attempt to obtain the Disputed Domain Name and the Respondent requests that the Panel to declare a finding of Reverse Domain Name Hijacking.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(a) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(c) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the SHOCKING trade mark on the basis of the US trade mark registrations owned by the Complainant for SHOCKING dating back to 1937.
The Disputed Domain Name incorporates the Complainant's SHOCKING mark in its entirety. It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case “.com” should be disregarded (Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
Accordingly, the Panel finds that the Disputed Domain Name is identical or confusingly similar to the SHOCKING trade mark in which the Complainant has rights in satisfaction of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (Second Edition) ("WIPO Overview 2.0") states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the onus shifts to the respondent who must discharge the burden of proving that it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant contends that the Respondent is not connected or associated with the Complainant's business and is not on any other basis licensed or authorised to use its SHOCKING mark. Accordingly, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and the Respondent has the burden of proving that it does possess such rights or legitimate interests.
There have been many previous decisions where a complainant’s request for transfer of a disputed domain name has been refused despite the fact that the Complainant owned trade mark registrations for the generic or descriptive terms that have been incorporated in the disputed domain name (see U.S. Nutraceuticals, LLC v. Telepathy, Inc. c/o Development Services, NAF Claim No. 365884 <naturedirect.com>; Kaleidoscope Imaging, Inc. v. V Entertainment a/k/a Slavik Viner, NAF Claim No. 203207 <kaleidoscope.com>; National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424 <historichotels.com>; The Landmark Group v. DigiMedia.com, L.P., NAF Claim No. 285459 <landmarks.com>; Sweeps Vaccuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031 <sweeps.com> and Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016 <allocation.com>). Furthermore, a respondent has the right to utilise generic words in any manner that does not violate the Complainant’s rights, even if such rights had been acquired earlier (see U.S. Nutraceuticals, LLC v. Telepathy, Inc. c/o Development Services, supra).
Paragraph 2.2 of the WIPO Overview 2.0 states that factors to look for when assessing whether a registrant may have rights or legitimate interests in respect of a generic domain name include the fame of the trade mark in question, whether the respondent has registered other domain names incorporating generic terms and whether the domain name is used in connection with a purpose relating to its generic meaning (and not, for example, to trade off third party rights in such word or phrase). The Panel notes that in addition to the Disputed Domain Name, the Respondent (or its related companies) is also the registrant of at least five other domain names incorporating generic terms (i.e. <chico.net>, <stormnet.com>, <2Interactive.com>, <chiconetworks.com>, <paradisenetworks.com> and <redbluff.net>). Further, in the first two years after the Disputed Domain Name was registered, it was indeed used in connection with a purpose relating to its generic meaning (i.e. the site provided comparative prices on Internet services under the heading “Shocking Prices”). After the Website was updated in 1999, it offered ISP-related services and no longer used the heading “Shocking Prices” on the Website. Although the use of a domain name in connection with its generic or descriptive meaning readily supports a finding of rights or legitimate interests, it has been held previously that registrants that register generic or descriptive domain names can have rights or legitimate interests in such domain names so long as they have been used in connection with a bona fide offering of goods and services before receiving notice of the complaint (see Allocation Network GmbH v. Steve Gregory, supra).
The Complainant contends that the Disputed Domain Name resolves to a webpage which appears to be a provisional page that was recently posted online to avoid the Disputed Domain Name from being recovered. After navigating through the Website, the Panel finds that although Internet users are redirected to “www.chico.net” upon clicking on any links displayed at the Website, there is no evidence to suggest that the ISP-related services advertised at “www.chico.net” are anything other than a bona fide offering of services. In fact, according to the snapshots available on “www.archive.org”, the Disputed Domain Name used to host a website advertising ISP-related services as early as 1996 and appears to have been used to provide a bona fide offering of services ever since. The Panel is satisfied that, between 1996 and 1998, the Website offered genuine information on comparative prices for different Internet services (which is evidenced by the fact that the Website contained detailed information on prices for various Internet services and a variety of webpage package deals, as well as terms and conditions relating to the services offered). Further, the Panel finds that although advertisements were displayed at the Website at this time, simply displaying advertisements on a website used predominantly to advertise bona fide services does not mean that the Disputed Domain Name is not being used in connection with a bona fide offering of goods or services. The Panel has not been provided with any evidence that the Respondent was operating a link farm or a parking page to display advertisements as contended by the Complainant. The Panel finds that the Respondent has rights in respect of the Disputed Domain Name as a result of its legitimate use of the Website in connection with ISP-related services.
The Complainant submits that Elsa Schiaparelli is an icon in the world of fashion whose fame is comparable to Coco Chanel, and her "Shocking!" perfume is very well known. The Panel notes that the Complainant has failed to provide sufficient evidence of the fame of the SHOCKING trade mark throughout the world and in particular in the US where the Respondent is located. One of the pieces of evidence that the Complainant submitted in support of this point is an article from Wikipedia (containing one paragraph discussing the fame of the "Shocking!" perfume in general terms), and the Panel questions the credibility of such evidence. The Complainant also submitted a picture of the "Shocking!" perfume showing its unique bottle shape and a poster of an exhibition of Elsa Schiaparelli's art and fashion at the Philadelphia Museum of Art. The Panel finds that the Complainant has failed to provide sufficient evidence regarding the fame of its SHOCKING trade mark in the US such that the Panel is not convinced that constructive knowledge on the Respondent may be inferred (see Car Toys, Inc. v. Informa Unlimited, Inc., NAF Claim No. 93682, in which the Panel found that the respondent had rights and legitimate interests in the generic domain name where the complainant submitted insufficient evidence to establish either fame or strong secondary meaning in the mark such that consumers are likely to associate the contested domain name <cartoys.net> with the complainant’s registered trade mark CAR TOYS). Although the Complainant contended that the SHOCKING trade mark was very well-known at the time that the Disputed Domain Name was registered, the Panel notes that no evidence has been adduced by the Complainant in support of such contentions. Absent such evidence, and in light of the Respondent's assertion of good faith use as supported by a record of bona fide use of the Disputed Domain Name for a number of years, the Panel is unable to find that the fame of the SHOCKING mark was such that the Respondent (a US-based entity) was more likely than not aware, or had knowledge, of the Complainant's mark at the time of registering the Disputed Domain Name. The Panel is therefore unable to find that the Respondent knew or should have known of the Complainant and its SHOCKING mark when acquiring and using the Disputed Domain Name.
The Panel is not convinced that the Respondent acquired the Disputed Domain name with the intent to profit from the Complainant's trade mark. The Respondent's business is so distinct from the business of the Complainant that Internet users or customers are unlikely to be confused as to whether the Respondent may be associated, affiliated or sponsored by the Complainant, which precludes the presumption that the Respondent acquired the Disputed Domain Name, expecting to profit from this confusion.
The Panel accordingly finds that the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name.
C. Registered and Used in Bad Faith
Since the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy, it is therefore not necessary for the Panel to consider whether the Respondent registered and used the Disputed Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
D. Reverse Domain Name Hijacking
The Respondent requests the Panel to make a finding of Reverse Domain Name Hijacking against the Complainant. “Reverse Domain Name Hijacking” is defined Paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
Under Paragraph 15(e) of the Rules, if after considering the submissions a panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and that such actions constitute an abuse of the administrative proceeding.
The onus of proving the complainant’s bad faith is generally on the respondent; the mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. The respondent would need to show knowledge on the part of the complainant of the complainant’s lack of relevant trademark rights, or of the respondent’s rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name.
The Panel is not persuaded that the circumstances of this case justify a finding of Reverse Domain Name Hijacking. The “Shocking!” perfume appears to be a well recognised perfume in Italy. The Complainant registered the trade mark SHOCKING in the US as early as 1937. The Disputed Domain Name incorporates the Complainant’s SHOCKING trade mark in its entirety. The Disputed Domain Name resolves to a rudimentary website re-directing users to the “www.chico.net” website, a fact which may in some circumstances indicate a dishonest attempt by the respondent to circumvent the operation of the policy. Under such circumstances, the Panel cannot find that the Complainant's case was so hopeless that it knew or should have known it would not succeed and thus declines to find that the Complainant has acted in bad faith in filing the Complaint, and so the Respondent’s application for a declaration to this effect is dismissed.
For all the foregoing reasons, the Complaint is denied.
Dated: June 7, 2012