World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Administradora de Marcas y Franquicias, S. A. de C. V. v. Marchex Sales, Inc./Brendhan Hight

Case No. D2012-1572

1. The Parties

The Complainant is Administradora de Marcas y Franquicias, S. A. de C. V. of Mexico D. F., Mexico, represented by Lex Informática Abogados, S. C, Mexico.

The Respondent is Marchex Sales, Inc./Brendhan Hight of Las Vegas, Nevada, United States of America, represented by Dr. John Berryhill, Esq., United States of America.

2. The Domain Name and Registrar

The disputed domain name <priceshoes.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2012. On August 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2012, the Registrar 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 August 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response August 29, 2012. The Response was filed with the Center on August 29, 2012.

The Center appointed Torsten Bettinger, The Hon. Neil Brown Q. C. and Paul M. DeCicco as panelists in this matter on October 5, 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.

Due to unforeseen circumstances, and the detailed nature of the filings by both parties, the panel extended the due date for the decision.

4. Factual Background

The Complainant is a catalog-based sales company, incorporated in Mexico in May 1996, which is engaged in the sale of footwear. The Complainant has secured numerous trademark registrations for its PRICE SHOES mark, the earliest of which is a Mexican word mark issued in 1996. The Complainant was granted a United States word-plus-design mark for a stylized drawing of the PRICE SHOES text in 2011. The Complainant maintains a web presence at “www.priceshoes.com.mx”, which it has operated since March 4, 1999.

The Respondent is a professional domain name registrant who specializes in the registration, monetization and sale of generic-word domain names. The Respondent registered the disputed domain name through a batch acquisition in 2005, and has used it in connection with pay-per-click (PPC) advertising.

The disputed domain name was registered on June 5, 2003.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements of paragraph 4(a) of the Policy has been satisfied.

With regard to the first element under the Policy, the Complainant notes that the textual string of the disputed domain name is identical to its registered PRICE SHOES word marks, as well as to the textual elements of its word-plus design marks.

With regard to the second element, the Complainant states that the Respondent does not appear to be known by the name “price shoes”, that the Complainant has not authorized the Respondent to use its trademarks in any fashion, that the Respondent does not appear to be using the domain name in connection with a bona fide offering of goods or services, and that the Respondent does not appear to be the owner of any registered “price shoes” mark(s). The Complainant notes that the only use to which the Respondent has put the disputed domain name is to display PPC links, many of which connect to the websites of the Complainant’s direct competitors. Additionally, a number of these links connect to websites offering adult content, which appear to bear no relation to the terms “price” or “shoes”. Finally, the Complainant alleges that the Respondent is not making a legitimate noncommercial or fair use of the domain name.

Concerning the third element of the Policy, the Complainant avers that the Respondent knew or should have known of the Complainant’s pre-existing rights in its PRICE SHOES trademark, as the Complainant had been operating a website at “www. priceshoes. com. mx” for a number of years prior to the Respondent’s selection of the disputed domain name. The Complainant submitted a time-restricted Google search as evidence that its online presence would have been easily discoverable in 2003, prior to time the Respondent selected the domain name for registration. The Complainant additionally alleges that the Respondent’s asking price for the domain name, advertised on the Respondent’s PPC landing page, was so high as to indicate that the Respondent’s primary intent in selecting the domain name was to sell at a profit. The Complainant alleges that the Respondent’s use of “robots. txt” software provides additional evidence of the Respondent’s bad faith, by preventing access to the historical archives of the domain name. Noting the Respondent’s prior history as a UDRP respondent, and the close similarity of the domain name to its mark, the Complainant further alleges that the Respondent selected the domain name in order to prevent the Complainant from reflecting its mark in a domain name under paragraph 4(b)(ii) of the Policy. Finally, the Complainant notes the Respondent’s use of the domain name in connection with PPC links related to the Complainant’s area of business, and in many cases the websites of its direct competitors, and alleges that the Respondent’s actions constitute bad faith under paragraph 4(b)(iv) of the Policy.

B. Respondent

The Respondent contends that the requisite elements under paragraph 4(a) of the Policy have not been established by the Complainant, and requests the Panel to deny the requested relief.

The Respondent alleges that this case presents “an unusual issue in relation to territoriality of trademark rights”, in that the Complainant owns a word mark in its home jurisdiction (Mexico), but a later-registered word-plus-design mark in the Respondent’s location (the United States). The Respondent argues that since the Complainant has opted for the United States as its Mutual Jurisdiction election, the Complainant’s US mark should be more heavily weighted with regard to the findings of fact in the case, and that this bears some relevance to the finding of identity or confusing similarity under the circumstances. The Respondent does note, however, that the Complainant possesses rights in the PRICE SHOES mark, despite the descriptive nature of the words as used in the English language.

The Respondent alleges that it does possess rights and legitimate interests in the disputed domain name, as the textual string of the domain is comprised of two generic words. The Respondent notes that it is engaged in the purchase, trade, monetization and sale of dictionary-word domain names, and cites numerous previous UDRP cases in support of its legitimate business model.

The Respondent avers that, as the Complainant had not yet secured trademark protection in the United States at the time the Respondent registered the domain name in 2005, the Respondent cannot be held to have had any knowledge of the Complainant’s business activities at that time. The Respondent states that it “does review domain portfolio purchases against registered US trademarks of which the Respondent has a duty of notice”, and alleges that the Complainant's lack of a registered US mark in 2005 prevents the Respondent from being aware of the Complainant, its trademark, or its business. The Respondent does not indicate whether or not it performed a basic Google search for the Complainant, and makes no comment as to the similarity between the disputed domain name and the Complainant’s primary website.

The Respondent confirms that the parties did engage in some discussions concerning the sale of the domain name, and further that it was the Complainant who first sought contact in this regard. The Respondent states that its asking price for the domain name was both fair and reasonable, and that the negotiations between the parties do not constitute evidence of bad faith activity or intent.

Finally, the Respondent notes that there are numerous legitimate reasons for employing “robots. txt” to prevent web crawlers from mining data on its websites, and argues that the use of such programs cannot be held as evidence of bad faith.

6. Discussion and Findings

A. Identical or Confusingly Similar

In order to succeed under the first element of the Policy, the Complainant must demonstrate both its rights in the relevant trademark, and that the disputed domain name is identical or confusingly similar to said mark. Under the first element of the Policy, the jurisdiction of the Complainant’s trademark registration is not relevant, although (as will be discussed in more detail below) it may have implications with regard to the bad faith element under paragraph 4(a)(iii).

By virtue of its numerous trademark registrations for PRICE SHOES, the Panel is satisfied that the Complainant has demonstrated its rights in the mark for the purposes of the Policy.

The test for identity or confusing similarity is confined to a comparison of the textual string of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors generally considered in trademark infringement. See Europages v. Match Domains LLC, Domain Admin, WIPO Case No. D2011-1161 and Sierra HealthStyles LLC v. Modern Limited - Cayman Web Development, WIPO Case No. D2006-0020. It has furthermore been well established that a gTLD suffix, such as “. com”, is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy. See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

The textual string of the disputed domain name, “priceshoes”, represents the entirety of the Complainant’s trademark with the single omission of the space between the two component words. The removal of this space, which is incapable of being included in the textual string of a domain name, does nothing to distinguish the disputed domain name from the mark.

Accordingly, the Panel finds that the disputed domain name is identical to the Complainant’s PRICE SHOES trademark, and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. It is, however, the consensus view among WIPO UDRP panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name. See Belupo d. d. v. WACHEM d. o. o. , WIPO Case No. D2004-0110.

In this case, the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant confirms that it has not licensed or authorized the Respondent to use its PRICE SHOES mark in any fashion and that there is no connection between the Respondent and the Complainant. There is no evidence on the present record, or in the publicly-available WhoIs records, to indicate that the Respondent is commonly known by the domain name or a name corresponding to the domain name, and it is clear from the presence of PPC links that the Respondent is not making a legitimate non-commercial use of its associated website.

The Respondent has provided a thoughtful and well-organized Response to the Complainant’s contentions. The crux of the Respondent’s argument under this element is that the domain name text is merely the combination of two generic, English language words. The Respondent notes the extensive body of UDRP case law, indicating that the monetization of generic-word domain names, in connection with PPC advertising related solely and completely to the dictionary meaning of those words, constitutes a legitimate business practice under the Policy.

The Panel does not dispute that the use of PPC monetization in connection with wholly generic domain names, which follow the guidelines for use set out in previous UDRP decisions, may indeed constitute a right and/or legitimate interest in a domain name. There are, however, three critical factors to consider in this regard, under the particular circumstances of this case, which must be addressed in turn.

First, where a complainant’s trademark registration is of a more descriptive nature, it can become difficult for a panel to draw a line between the use of the domain name in connection with its generic meaning, and use of the domain name in a trademark sense. In this case, where the Complainant uses the mark PRICE SHOES to sell shoes, and the Respondent has provided PPC advertising to various shoe retailers, it is difficult to determine in which “sense” the predominate use has occurred. As will be shown below, however, other aspects of the case preclude a hair-splitting decision on this point.

Second, it is unclear whether the domain name can, indeed be considered truly “generic”. Where a domain name consists of a single word, such as a noun or verb, there can be little confusion as to whether or not the domain has been used by its registrant in connection with a trademark or in connection with its dictionary meaning. As it is impossible to, for example, trademark the term “soda” in connection with soft drink beverages, the use of a website at “www.soda.com” for information or PPC advertising for beverages would indeed be considered a generic use. In this case, however, the domain name does not consist of a single dictionary term. Instead, it consists of two terms, combined together in precisely the same configuration as the Complainant’s pre-existing mark. It also combines the terms in exactly the same manner as the Complainant’s primary website, which had been registered for roughly six years prior to the Respondent’s acquisition of the domain name in 2005. Perhaps most importantly, the Complainant has secured registration for its PRICE SHOES mark in numerous jurisdictions, indicating that the combination itself is not wholly generic. A URDP panel will not generally “look behind” a trademark registration granted under the authority of a sovereign nation, and this Panel is likewise not inclined to do so.

It has been posited that the domain name may be viewed as the combined term “price shoes”, which is suggestive of a comparative sales website for footwear. As the Respondent’s site has offered inter alia advertising for shoes, it is plausible that this use might potentially fall with the scope of more traditional “generic” UDRP cases, but the question is debatable on either side of the argument.

The third point is, perhaps, the most directly relevant to the questions raised by the parties, and provides a solution to the generic use question in this case. In order to meet the requirements of this “safe harbor” exception, the domain name must be used only and entirely in connection with the generic or dictionary-related meaning of the textual string. See Caisse Nationale des Allocations Familiales v. Domain Discreet Privacy Service / Medya Grup, Ozaltin Haydar, WIPO Case No. D2012-0877; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; and HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062.

The Complainant provided a number of screen-shots of the links available on the disputed domain name. While many of them related to shoes, shoe retailers and shoe sellers (which, naturally, do compete with the Complainant’s business, but are also logically connected with the meaning of the words comprising the domain name’s textual string), many of the links are entirely unrelated. On October 21, the Presiding Panelist also visited the website active at the disputed domain name, and found the following links thereon (in addition to a number of shoe-related hits): Chicas Para Ligar (girls for flirting), Fotos de Mujeres (pictures of women), Videos Mujeres (videos of women), Mujeres Para Chatear (women for chatting), Marcos Para Fotos (photo frames), Descargar Juegos Para Movil (download mobile game), Juegos Para Celular (mobile games).

It is clear that these PPC ads are in no way related to the generic or dictionary meaning of the disputed domain name. Furthermore, a number of these links connect Internet visitors with advertising for adult content, which has been held in many prior cases under the Policy to constitute evidence of Respondent bad faith. See Holding Soprema (Société Anonyme) v. Registrant [3121]: Reserved for Customers MustNeed. com, WIPO Case No. D2010-1048; GAP (Apparel), LLC v. Cher Fang Lim, WIPO Case No. D2005-1165; Koninklijke Philips Electronics N. V. v. CredoNIC. com / Domain For Sale, Domain Administrator, WIPO Case No. D2005-0763; and Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022.

The Respondent has provided no explanation for its inclusion of PPC links unrelated to the generic meaning of the terms which comprise the domain name, and has not answered the Complainant’s allegations in connection to the provision of adult content on a website containing its registered mark.

Accordingly, for all of the above reasons, the Panel finds that the domain name has not been used in a manner consistent with rights or legitimate interests on the part of the Respondent, and thus that the Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

With regard to the final element of the Policy, it is necessary for the Complainant to demonstrate that the disputed domain name was both registered and used in bad faith. In order to demonstrate the first of these requirements, the Complainant must show that the Respondent either selected the domain name while aware of the Complainant’s rights in the PRICE SHOES mark, or that the Respondent had reason to know of the Complainant’s mark and was willfully negligent in discovering the Complainant’s rights.

In that regard, the Respondent has put forward a number of arguments concerning the jurisdiction of the Complainant’s trademark, indicating that it was under no duty to search for marks registered in foreign countries. The Panel agrees. To impose a duty on registrants, even professional registrants who are engaged in the business of domain name monetization, to search the trademark databases of the entire world would, in the Panel’s view, be entirely too burdensome. Furthermore, as only certain jurisdictions around the world provide for free, open-access trademark searching, such a requirement could also lead to situations of unequal protection for rights-holders.

That said, however, it is clear that registrants, and in particular professional domain name registrants, have a duty to avoid infringing the rights of others under paragraph 2(d) of the Policy. Professional registrants cannot avoid liability for their actions by simply electing to remain “willfully blind” to the rights of others. This question has been addressed in numerous decisions to date, and it appears that the most commonly-accepted, lowest-standard requirement for professional registrants is a basic online Google search of the term or terms which comprise the textual string of the domain. See, for example, Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; Compart AG v. Compart. com / Vertical Axis, Inc. , WIPO Case No. D2009-0462; The Law Society v. RareNames WebReg / Rarenames, Inc. , WIPO Case No. D2009-0720; and mVisible Technologies, Inc., supra.

Thus, the question remains, whether the Respondent would have discovered the Complainant and been put on notice of the Complainant’s trademark rights, had it conducted a minimal due diligence investigation through the use of a basic online search when it acquired the domain name in 2005. This question is made rather more difficult as the Complainant has elected to delay the filing of its Complaint for roughly seven years, and it is now harder to ascertain what a Google search might have returned within the relevant time frame.

That said, however, the Complainant has provided a time-limited historical Google search, showing hits which would have been returned on or around the date on which the domain name was originally registered (potentially by the Respondent’s predecessor-in-interest) in 2003. The Complainant’s website is the first hit in the search results, and thus (particularly absent any rebuttal or refutation of the Complainant’s evidence or arguments in this regard), it seems clear that a basic Internet search would have put the Respondent on notice of the Complainant’s rights in the PRICE SHOES term. The Complainant’s domain name had, at that time, been registered for roughly six years, and the Complainant had been conducting its business under the Price Shoes name for nearly ten years.

Accordingly, the Panel finds that the disputed domain name was registered in bad faith by the Respondent.

The final remaining issue in this case, then, concerns the bad faith use of the domain name. The Complainant has argued that bad faith may be inferred either by the Respondent’s asking price for the domain name, or by the Respondent’s use of the “robots. txt” software. The Panel finds both of these arguments to be unconvincing. The Respondent has already gone to great lengths (in Rba Edipresse, S. L. v. Brendhan Hight / MDNH Inc., WIPO Case No. D2009-1580) to demonstrate to the interested UDRP community the many and varied valid reasons for employing web-crawler blocking mechanisms, and the Panel agrees that the use of such programs may be entirely legitimate.

Likewise, the parties’ deliberations concerning the potential sale of the domain name do not indicate wrongdoing by either side. It is apparent that the Respondent did not seek out the Complainant to solicit a sale of the domain name, and the amount requested by the Respondent (in a free market exchange) does not give rise to questions of impropriety.

That said, however, the Respondent has clearly used a domain name containing the registered trademark of another entity, in which it holds no rights or legitimate interests, for the generation of revenue. Such use is consistent with the bad faith activities outlined under paragraph 4(b)(iv) of the Policy, and, therefore, the final element has been satisfied.

The only remaining question concerns the impact of the Complainant’s long delay in the filing of the Complaint. The Complainant waited a long time to act on its rights in the PRICE SHOES mark, and did not file its Complaint until seven years after the Respondent took possession of the domain name. The Panel would certainly have expected to be provided with some explanation from the Complainant as to the reason for this delay, but unfortunately, none was forthcoming from the materials in the case file. Given the particular facts and circumstances of the case, however, the Panel is not inclined to deny the case on the basis of Complainant delay and laches, for a number of reasons. The Panel notes initially that many (although not all) UDRP panelists have generally declined to introduce the equitable doctrine of laches into the UDRP. See WIPO Overview 2.0, paragraph 4.10, and cases cited therein. Furthermore, to the extent relevant, the Respondent did not request such equitable relief, and similarly did not provide the necessary evidence to establish detrimental reliance. Additionally, the disputed domain name has been used at all times in connection with a PPC landing page which (from a programming standpoint) does not require a good deal of ongoing development. The initial input of effort, in setting up the site, would be the same regardless of how long the Complainant delayed the filing of its case, and accordingly there would seem to be little in the way of time-induced harm to the Respondent.

In any event, for all of the above-discussed reasons, the Panel holds that the domain name has also been used in bad faith, and that the dual-pronged requirement of the third element of the Policy is duly satisfied.

7. Decision

For 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 <priceshoes.com> be transferred to the Complainant.

Torsten Bettinger
Presiding Panelist

The Hon Neil Brown Q. C.
Panelist (Dissenting)

Paul M. DeCicco
Panelist

Date: October 30, 2012


Dissenting Opinion

Rights and Legitimate Interests

The main area of dispute in this case is whether the Respondent has shown a right or legitimate interest in the disputed domain name. In my opinion, it has done so by means of its showing on two issues.

The first is the nature of the expression “priceshoes. ” It should not require any evidence to establish that this expression is what is variously referred to as a generic or descriptive term using dictionary words. That is so because the expression is made up of two words that may be found in any dictionary. The first of them is “price”, which is a noun and a verb. As a noun, the word means in the English language the sum of money for which the seller will sell the goods in question to the buyer. As a verb, the word means the process of putting a price on goods or finding out what is the price of the goods. The second of the two words, “shoes” is clearly a noun and means footwear. All of this should be clear and beyond argument and should certainly not require either any direct evidence or further explanation. The Respondent, however, has volunteered more and has adduced evidence by way of published dictionary definitions of the word “price” as a verb, which is the form in which it is clearly used in the domain name. The Respondent’s evidence is specific and unequivocal and is to the effect that where “price” is used as a verb, it has the meaning of the process of ascertaining the price of something. Thus, the Respondent’s evidence includes both the actual meaning of the word and a practical example given from one of the custodians of the English language, The Cambridge University Press, which is as follows:

“ (T) to discover how much something costs.

We went around all the travel agents pricing the different tours. ”

Nor is it surprising that other dictionaries give the same meaning to “price” as a verb, for example, “estimate the value of” and “price oneself out of the market” (Concise Oxford) and “assess, cost, estimate, evaluate, offer, put, rate, valorize, value. ”(Websters).

A quick look at the internet also shows that the use of the word is in keeping with its dictionary definition when it is used in sentences such as Nor is it very surprising that a cursory look at the internet will produce expressions in the media such as “2 IPOs Set to Price This Week (and) The following IPOs are expected to price this week:…” 1 and can you help price this…”2

Accordingly, unless the Respondent’s evidence and the above additional material are simply to be ignored, it must be the starting point for the argument about the words in question. That evidence establishes that the Respondent, in choosing its domain name, has used two English words with clear and established meanings. In combination, in a domain name, they mean that it will lead to a website where shoes may be priced and the prices compared. The majority express the view that this interpretation is “plausible” and “debatable”, although I myself would say that it is well established and for the reasons given above.

The question remains, however, whether the Respondent has used the domain name for a website where shoes may be priced and prices compared and that is the second issue. The majority’s view is that it has not done so. My view is that it has. My reasons for so finding are as follows.

The majority maintain that, for the Respondent to succeed, it must show that the links on the website must be entirely related to shoes and their sale, whereas some of them are not. It also cites 3 decisions in support of that proposition. If the decision in this proceeding is to be determined by previous decisions, it should be said that the first of those decisions, Caisse Nationale des Allocations Familiales v. Domain Discreet Privacy Service / Medya Grup, Ozaltin Haydar, WIPO Case No. D2012-0877 is certainly not directly in point as the panel made the ruling in the decision that “In the instant case, there is no dictionary meaning for the term “caf”, which forms part of Complainant’s trademarks and the disputed domain name that is confusingly similar to these trademarks. “ In the present case , of course, the starting point, which the majority accept as being at least plausible, is that <priceshoes. com> is made up of two dictionary words that in fact do have very clear dictionary meanings. The second decision, mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141 also deals with domain names not based on dictionary meanings, rather than those that are so based as in the present case. As the panel said “Respondent’s domain names appear to be used for their trademark value and not for any descriptive value in the names. Indeed, “myxer”3 is not a dictionary word. ” The third decision, HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062 was correctly decided on its own facts which were facts that gave rise to a concern by the panel that the Respondent was in effect copying the services of the trademark owner and hence not using the domain name in its generic sense. More importantly, however, than analyzing previous decisions, the proposition that the website must be entirely devoted to the one subject covered by the words of the domain name is, with respect, an artificial one and has the potential for doing injustice to parties in the position of the present Respondent, who , even if they strive to keep the website to subjects covered by the generic domain name, also include additional content, whether by accident, issues of technology or even from a desire to provide some additional benefit for the user.

The majority point to material on the website that is not devoted to selling shoes. That is true, for there are some deviations from that ambit. The majority point to 7 items it has discovered, although the reality is that there are more than that number. However, the important point, surely, is not how many links can be found that are outside the dictionary definition of the price of shoes, but what that shows us about the substance of the site and what the site is really about and what it tells us about the intention and motives of the Respondent. That should be the proper area of inquiry by the Panel, as it is by courts and tribunals in analogous situations. The question really should be: has the Respondent produced a website that is in substance and reality a website about the prices of shoes or is it in reality something else? My examination of the site leads me to the conclusion that it is a website devoted principally and in substance to one subject, namely shoes, the price of shoes, the comparison between brands of shoes and the process of buying them. The overwhelming proportion and preponderance of the site deals with what must be hundreds of brands, styles and suppliers of shoes. It contains links to a broad range of suppliers of shoes, with prices marked so that the user may make comparisons and it contains links that provide information to be used by customers in making that comparison.

The Respondent has also added to the website other material outside the genre, but it is minor in numerical content, informative and in many cases socially useful. There are promotions for Common Focus, (a US neighbourhood conflict solving organisation), childrens’ health, a news service , the de Young Museum in San Francisco and the Catholic University of Louvin, among others. The number of such items is comparatively few and, if anything, their occasional appearance makes it clear that they are on a website that is predominantly and overwhelmingly a site for internet users who want to price shoes. Moreover, the site as a whole shows that the intention of those responsible for it has been, as it is now, to promote the sale of shoes by enabling the user of the site to price them.

As such and together with the time over which the Respondent has conducted this lawful business and the absence of any targeting of the Complainant, gives rise to a right or legitimate interest in the disputed domain name.

Bad Faith

I agree with many of the observations of the majority on bad faith and with its rejection of many of the Complainant’s arguments on this element. In particular, the majority has held that panelists should not read into the Policy a requirement for a registrant to conduct trademark searches in foreign jurisdictions and concludes that the Respondent was “under no duty to search for marks registered in foreign countries. “ There may be a case for requiring, in an appropriate case, what the majority describe as the “lowest-standard requirement” of a Google search. However, in the present case, that would seem to be a very dubious way of determining the intention of the Respondent at the time it acquired the disputed domain name. The inordinate delay of seven years by the Complainant in bringing this Complaint makes it virtually impossible to come to any conclusions on that issue one way or the other and at the very least is seems an inappropriate basis for denying to the Respondent property that it acquired lawfully many years ago and used lawfully ever since, without any objection from the Complainant. This is therefore a classic case of delay preventing a tribunal from reaching a responsible decision about the intention and motives of a party that were formed many years earlier. To this the majority say that the Respondent has not asked for delay or laches to be taken into account and that no detriment has been shown. However, the Panel has the power and the responsibility under paragraph 15 of the Rules to have regard to “any rules and principles of law that it deems applicable” and in the particular circumstances of this case the effect of delay, whether or not it is referred to as laches is, in my opinion applicable. Moreover, the detriment that a respondent suffers as the result of inordinate delay of the sort that has occurred in this case, without a skerrick of explanation from the Complainant, is the potential loss of a business it has been allowed to build up using the domain name over many years while the complainant slept on its rights.

On the issue of bad faith use, for the reasons given above I am of the opinion that the use of the disputed domain name has been legitimate and in good faith as it has been used in a balanced and lawful way to promote goods and services coming within the generally accepted meaning of the wording of the disputed domain name and without any pretense by the Respondent that it is the Complainant and without any targeting of the Complainant at all.

For these reasons I would deny the Complaint.

The Hon Neil Brown Q. C.
Panelist (Dissenting)
Dated: October 30, 2012


1 http://seekingalpha. com/article/252868-2-ipos-set-to-price-this-week

2 http://www. shaman-australis. com/forum/index. php?showtopic=33716

3 The basis of all 35 of the domain names at stake.

 

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