WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Anomaly Action Sports S.R.L. Con Sigla AAS S.r.l. v. Jonathan Kruse
Case No. D2013-0276
1. The Parties
1.1 The Complainant is Anomaly Action Sports S.R.L. Con Sigla AAS S.r.l. of Venezia-Mestre, Italy, represented by Avvocati Associati Feltrinelli & Brogi, Italy.
1.2 The Respondent is Jonathan Kruse of Camarillo, California, United States of America (the “United States” or “US”).
2. The Domain Names and Registrar
2.1 The disputed domain names <shredclothing.com> and <shrednews.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2013. On February 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On the same date, 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.
3.2 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”).
3.3 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 February 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2013. The Respondent sent an email communication to the Center on February 17, 2013 asking for the Complaint to be emailed to a certain address. The Center complied with that request on February 18, 2013. No response was filed by March 5, 2013 and on March 6, 2013 the Center sent a notification to the parties (including to the email address identified by the Respondent) that the Center would proceed to panel appointment.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on March 12, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
4.1 The Complainant is an Italian company and is the successor in business to Cersal S.r.l. a company that has manufactured ski products for approximately 80 years. It manufactures sports goods such as clothes, goggles, helmets, sunglasses and other accessories.
4.2 The Shred “brand” was established by Skiing World Champion and Olymipic medalist Ted Ligety through the company Shred Optics in or about 2006. According to material supplied by the Complainant the business “[o]riginally started with goggles” but “shred now makes helmets, sunglasses and outerwear”. The Complainant has assumed the ownership and operations of the brand. Products under this brand are currently distributed and sold around the world, including through multiple outlets in the United States.
4.3 The Complainant is the owner of various trade marks around the world that comprise or incorporate the term “shred”. These include:
(i) International trade mark no. 911687 filed on November 14, 2006 and designation the European Union, Japan and the United States for the word mark SHRED. The mark proceeded to registration in the United States on January 6, 2009 in classes 9, 25 and 28. The class 9 registration covers sunglasses, and the classes 25 and 28 registration various types of clothing; and
(ii) Canadian trade mark registration TMA811883 filed on November 1, 2006 and registered on November 17, 2011 for the word mark SHRED in respect of “eyeglasses, sunglasses, eyeglass chains, eyeglass cords, eyeglass frames, eyepieces; goggles for sports, headphones, protective ski helmets, optical lenses; wristbands”.
4.4 The Complainant operates websites from various domain names including <shredoptics.com>, <shredsports.com> and <shredoptic.com>. The earliest of these <shredoptics.com> was initially registered by Ted Ligety on September 18, 2006, with the others being registered in 2009 or later.
4.5 The Respondent would appear to be an individual based in the United States. The <shredclothing.com> Domain Name was registered on December 30, 2007 and the <shrednews.com> Domain Name was registered on April 22, 2009.
4.6 The <shredclothing.com> Domain Name has been used at least recently for a website with the heading “Welcome to Shred – We make badass shirts”. As at February 2013 it contains a number of posts, the most recent of which was May 6, 2010. It clearly offered for sale T-shirts with what can perhaps be described as heavy metal style designs many (if not all) of which incorporated a stylised version of the word “Shred” as part of the design. It also prominently carried the text “View all our products in our store”. When that text was clicked upon it linked to a page on a website operating from the url “shred.storenvey.com”. That page offered for sale not only the T-shirts featuring on the website operating from the <shredclothing.com> Domain Name, but also offered for sale glasses and sunglasses.
4.7 The <shrednews.com> Domain Name has been used at least recently for what appears to be a blog with music related posts. As at February 2013, the last of the most recent of these posts was dated July 16, 2010. However, as at February 2013, it also contained a link with the name “store” that linked to the same website offering T-shirts and glasses as that linked to by the <shredclothing.com> Domain Name.
4.8 As at the date of this decision the Domain Names continue to link to and carry the same content as that accessible in February 2013, save that the webpage operating from the url “shred.storenvey.com” no longer offers for sale glasses or sunglasses. However, the fact that these products were previously offered for sale is clear from the links to be found at the top of that page. These read “Home (6) Shirts (6) Sunglasses (0) All Products (6)”.
5. Parties’ Contentions
5.1 The Complainant contends that the Domain Names are identical or confusingly similar to the Complainant’s trade marks in that they each incorporate the Complainant’s SHRED trade mark combined with generic and descriptive words “clothing” and “news”. It cites various cases under the Policy where the panel held that the combination of a registered trade mark with a generic term did not sufficiently differentiate the domain name from the mark and led to a finding of confusing similarity.
5.2 On the issue of rights and legitimate interests the Complainant denies that the Respondent has used the Domain Names in connection with a bona fide offering of goods or services, has been commonly known by the Domain Names or engaged in legitimate noncommercial or fair use of the Domain Names. It claims that Mr. Kruse has no registered trade mark, that the term “Shred” does not correspond to his name and that the Complainant has not authorised the use of its marks. It contends that it “do[es] not know where [the products offered for sale on the Respondent’s websites] – bearing the Complainant’s SHRED trade[ ]mark – come from as the Respondent does not specify this fact on his web sites”.
5.3 As to bad faith registration, the Complainant contends that the Domain Names’ registrations post-date the Complainant’s marks and their first use in commerce, which is said to be 2006.
5.4 It further contends that:
“Given that the trademark SHRED was created in collaboration with the worldwide famous American skier Ted Ligety - who has been using and promoting in various sporting events goods bearing the SHRED trademark since the very beginning - it is quite impossible to believe that the Respondent, an American citizen, did not know of the registration and the use as well as the fame of the trademark prior to register to identical domain names.”
5.5 It cites the decisions of Façonnable SAS v. Names4Sale, WIPO Case No. D2001-1365 and Vakko Holding Anonim Sti. v. Esat Ist, WIPO Case No. D2001-1173 as authority for the proposition that there can be a finding of bad faith where a respondent “knew or should have known of the registration and use of the trademark prior to registering the domains”.
5.6 It goes on to assert that it believes that “after having realised how popular the SHRED trade mark became” it “decided to create a new line of T-shirts and sunglasses for young people” and that the Respondent registered the Domain Names with the primary intention of disrupting the business of a competitor within the scope of paragraph 4(b) of the Policy.
5.7 It further claims that the decision in Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, WIPO Case No. D2009-0776, is authority for the proposition that:
“According to the most important case law, but also to the rules of the single national laws, the registration of a domain name should, above all, avoid confusion with a prior trademark, in particular when that trademark is obviously notorious through the use of Internet search engines like the most popular ones, Google or Yahoo.”
5.8 So far as bad faith use is concerned the Complainant claims that the Domain Names are being used to divert traffic to the webpages operated by the Respondent to sell the Respondent’s products in such a manner as falls within the scope of paragraph 4(b)(iv) of the Policy.
5.9 The Respondent did not provide any substantive reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of any person to lodge a Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
6.4 The Panel accepts that the Domain Names can be most sensible read as the term “Shred”, combined with the words “news” and “clothing” and the “.com” Top-Level Domain. The Complainant is the owner of a number of trade marks that comprise the word “Shred”. Given the way that the term “confusingly similar” is understood under the Policy (as to which see Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227), the Panel finds that each of the Domain Names is confusingly similar to a trade mark or marks in which the Complainant has rights. In the circumstances the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.5 Given the Panel’s findings on the issue of bad faith it is not necessary to consider the issue of rights or legitimate interests.
C. Registered and Used in Bad Faith
6.6 There seems to be little doubt that the Respondent is engaged and has for some time been engaged in business activity in the United States under the Shred name and that business activity primarily takes the form of the sale of T-Shirts with heavy metal style designs that are not derived from and have not been authorised by the Complainant. That activity has at least in part been conducted and promoted through websites operating from the Domain Names.
6.7 Further, in the Panel’s view, this appears to be a genuine business, in the sense that there is no suggestion that the business is a sham designed to mask the true motives for the registration and holding of the Domain Names. Screenshots provided from the websites operating from the Domain Names and in particular the dates of a number of blog posts that appear on those pages, suggest that the content of those websites has not been significantly updated since 2010. So far as the “news” that is provided from the <shrednews.com> Domain Name is concerned, there is little there now that is new. However, it does not follow from this that the owner of the Domain Names has not engaged in the past in genuine independent economic activity under the Shred name from those sites, and perhaps even now that economic activity continues.
6.8 The Complainant does not appear to suggest otherwise. Instead, its primary position is that after having realised how popular the SHRED trade mark had become the Respondent decided to “adopt that mark” for its own business and chose the Domain Names that incorporated that mark so as to trade off the reputation of the Complainant’s mark.
6.9 If this is correct, the registration of the Domain Names would most likely have been in bad faith. The difficulty for the Complainant is that this is not much more than assertion on the part of the Complainant.
6.10 The <shredclothing.com> Domain Name was registered in December 2007. There is no evidence before the Panel of the degree of fame of the Complainant’s SHRED mark as at that date. The Complainant refers to the fame of Ted Ligety, the sportsman who devised the brand. No doubt he was well known to many at that time, particularly those with an interest in skiing and/or winter sports. However, there is virtually no evidence before the Panel in this case that the fame of his business activities was so great that someone in the United States engaged in the sale of T-shirts of the sort promoted by the Respondent would have been likely to be aware at that time of Mr. Ligety’s business activity under the SHRED mark.
6.11 In particular, the Complainant gives no details of the extent of sales under the SHRED mark in the United States in 2007 or the range of products sold at that time. Further, no evidence is offered as to the degree of press or media coverage that the SHRED mark achieved in the United States in 2007. Similarly, no details are provided as to the reach of, and number of visitors to, the website operating from the one domain name (i.e. <shredoptics.com>) said to have been registered and used at that time by the Complainant’s predecessor in business in relation to the “Shred Optics” business.
6.12 The Complainant does offer printouts from various websites, but the earliest material provided is an article that appears to have been published on line in July 2009 which records the fact that Romain de Marchi had been sponsored by “Shred Optics” and which refers to the “Shred Omnibot Shades” product.
6.13 This would not matter if the SHRED mark was so inherently unusual or distinctive that the only credible reason for its choice of the term “shred” by the Respondent was because of its associations with the Complainant. However the word “shred” is an ordinary English word used both as a noun and a verb to indicate the act, and the results, of tearing or cutting of material such as cloth or paper. It is the sort of name that might well have been independently chosen by a business selling T-shirts of the sort sold by the Complainant.
6.14 That is not to say that there are not aspects of the Respondent’s conduct that are troubling. In particular, the Complainant’s evidence includes material which suggests that earlier this year the Respondent was also engaged in the sale of glasses and sunglasses. These products are of a very different character than the T-shirts that appear on the Respondent’s websites. They do not incorporate the “Shred” name in the same way as the T-shirts, and stylistically seem to have very little in common with those T-shirts. Indeed, it appears somewhat strange that they should be offered for sale at all by a business that describes itself as “We make badass shirts”.
6.15 That concern is reinforced by the fact that this offering of sunglasses has now been removed from the websites and the Respondent’s decision not to participate in these proceedings. The impression given is one of a business that realises that it has been caught out in wrongdoing and is now trying to cover its tracks.
6.16 Nevertheless the Panel is not prepared to come to a finding of bad faith registration on the basis of the glasses activities alone. Even if the Panel were prepared to accept in the Complainant’s favour that a seller of glasses and sunglasses in 2007 would have been more likely to have been aware of the marks that are now owned by the Complainant, there is no positive evidence before the Panel that the Respondent offered those products for sale at the time of the registration of the Domain Name in 2007. The Panel is also not prepared to infer that it was with the sale of glasses in mind that the Domain Names were registered. Indeed, given that the Domain Name <shredclothing.com> comprises a combination of the words “shred” and “clothing”, this strikes the Panel as inherently improbable.
6.17 In the circumstances, the Panel finds that the Complainant has failed to show that the Respondent chose the name “Shred” or registered the Domain Name <shredclothing.com> with knowledge of, or intent to trade unfairly off, the reputation of the Complainant’s marks.
6.18 The <shrednews.com> Domain Name was not registered until April 2009 and this Domain Name does not describe in the same way as <shredclothing.com> the likely products promoted through that site. However, this appears on its face to be simply an additional use of a name which had been chosen for the Respondent’s business in 2007. Again the Complainant has failed to establish that the <shrednews.com> was registered with the intent to trade unfairly off the reputation of the Complainant’s marks.
6.19 The Complainant, however, appears to advance an alternate case. That is regardless of what the Respondent actually knew, it “should have known of the registration” of the Complainant’s marks at the time it registered the Domain Names. This appears to be an appeal to the doctrine of “constructive knowledge” or “constructive notice” that states that in certain circumstances a domain name registrant ought to have undertaken a trade mark search prior to adopting the domain name and is deemed to have knowledge of a trade mark even if it undertook no search. It is a doctrine that is indeed referred to in a number of decisions of the Policy and was particularly favoured by certain US panelists in the early days of the Policy.
6.20 However, the Panel is unconvinced that this is of any relevance in this case. For a start there is an interesting factual complication in that the earliest US trade mark relied upon is an International Registration. Although the international registration has a filing date of November 14, 2006, online United States Patent and Trademark Office (“USPTO”) records suggest that this mark was only published for opposition in the United States on October 21, 2008. That raises interesting questions as to where the Complainant thinks the Respondent should have searched and what exactly would have been the result of that search.
6.21 More importantly, the doctrine of constructive knowledge is one that now most UDRP panels have declined to recognise as forming part of the UDRP. The issue is addressed in some detail in paragraph 3.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
6.22 It is a doctrine that has no foundation in the wording of the Policy (see the comments of the panel in Advanced Drivers Education Products and Training, Inc v. MDNH, Inc. (Marchex), NAF Claim No. 0567039). In those few cases where it has been invoked it has tended to be on the basis that it is appropriate to import US trade mark notions into the Policy given the location of one or more of the parties to the proceedings. For the reasons that were set out in some detail by this Panel in 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461, this Panel is of the opinion that the importation into the Policy of local law doctrines based upon the location of the parties is both unwarranted and misconceived. Accordingly, it declines to hold that it is of any value in the circumstances of this case. This is so, notwithstanding the fact that the Respondent is based in the United States and the Complainant relies upon a United States mark.
6.23 In the circumstances, the Complainant has failed to show that either of the Domain Names were used in bad faith.
6.24 There is perhaps an argument based on the more recent sale of glasses by the Respondent that regardless of whether the Domain Names were registered in bad faith, they have been more recently used in bad faith. It is an argument that seems to the Panel to have some force. There is no obvious innocent explanation for the sale of these particular products. Even if the “Shred” name was initially chosen by the Respondent independently of the Complainant’s business, it is possible to see these sales as a later opportunistic addition to the Respondent’s range that sought to take advantage of the reputation of the Complainant’s SHRED trade marks once the Respondent became aware of the same. This would also be consistent with the Respondent’s recent removal of those products from its website.
6.25 However, it is reasonably clear that under the Policy a complainant must show both bad faith registration and bad faith use. By 2011 there were a number of decisions by some UDRP panels, which suggested that paragraph 4(a)(iii) of the Policy might be satisfied if only bad faith use could be shown. Those decisions are referred to in the context of paragraph 3.1 of the WIPO Overview 2.0 where this was described as “a developing area of UDRP jurisprudence”. Nevertheless this Panel believes it fair to say that subsequent decisions suggest that this view is one that has been rejected by the majority of panels. This Panel rejected the argument that it was sufficient to show bad faith use as part of a three person panel in Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
6.26 In the circumstances, the Panel finds that the Complainant has failed to make out the requirements of paragraph 4(a)(iii) of the Policy and accordingly the Complaint must fail.
6.27 Notwithstanding the Panel’s findings, it is important to point out that nothing in this decision is intended to suggest that the Complainant may not have a remedy in trade mark infringement under national law in relation to the activities of the Respondent. Indeed, the sale by the Respondent of glasses seems to fall within the scope of at least one of the Complainant’s US trade marks and it may be that the Respondent’s clothing sales also infringe the Complainant’s marks. However, that is a matter for the Complainant to take up in an appropriate court if it wishes to pursue this matter further. It is not a matter for the Policy.
7.1 For the foregoing reasons, the Complaint is denied.
Matthew S. Harris
Date: March 15, 2013