WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aero Club v. Domain Admin - DomainGrabber.com
Case No. D2013-1656
1. The Parties
The Complainant is Aero Club of New Delhi, India, represented by Lall & Sethi Advocates, India.
The Respondent is Domain Admin - DomainGrabber.com of Dallas, Texas, United States of America (“USA”), represented by Pezzulli Barnes, LLP, USA.
2. The Domain Name and Registrar
The disputed domain name, <woodland.com> (the “Domain Name”), is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2013. On September 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 23, 2013, 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 sent an email communication to the Complainant on September 27, 2013, requesting it to amend the deficiencies found in its Complaint. On October 3, 2013, the Complainant filed an amended Complaint.
The Center verified that the Complaint together with the 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 the Respondent of the Complaint, and the proceedings commenced on October 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2013. The Response was filed with the Center on November 5, 2013.
The Center appointed Tony Willoughby as the sole panelist in this matter on November 13, 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.
On November 18, 2013 the Panel issued Procedural Order No. 1 seeking clarification from the Complainant of certain of the Complainant’s evidence derived from the Internet Archive WayBackMachine. The Complainant was given until November 20, 2013 to respond and the Respondent was given until November 22, 2013 to file with the Center any further submission in response that it might wish to file. The Complainant appeared to misunderstand the timetable so the Panel extended the time limits by one working day. The Complainant submitted its response to the Center on November 21, 2013. The Respondent did not respond.
4. Factual Background
The Domain Name was registered on November 26, 1999 and is connected to a parking page featuring advertising links selected by Google. It appears from the evidence before the Panel that the Domain Name has never been connected to an active website.
The Complainant is an Indian partnership, which commenced business with two retail outlets in New Delhi in 1992. It is engaged in the sale of footwear, casual wear and accessories under the name “Woodland”.
The Complainant is the registered proprietor of a large number of trade mark registrations featuring the name “Woodland” in one shape or form, some of them being WOODLAND word marks. The territories covered by these registrations run mainly East from Eastern Europe, but the Panel noted a Norwegian registration, a Jamaican registration, a St. Lucian registration and a Venezuelan registration, a registration in the Dominican Republic and a few registrations in North and East Africa. While the Complaint features a table listing the registrations, it does not date them. The earliest legible registration that the Panel has been able to locate from the voluminous annexes is Indian trade mark Registration No. 710548 dated July 23, 1996, for a device mark comprising the name “Woodland”, the device of a tree and the slogan “leather that weathers”. There is also Indian trade mark Registration No. 573949 dated May 25, 1992, for a device not legible in the exhibit, which the Complainant states is a device mark comprising the name “Woodland” and the device of a tree. For the purposes of this Decision, the Panel accepts that the 1992 registration is for the mark as described by the Complainant. Both registrations are in class 25 and cover footwear and other clothing.
The Complainant operates a website connected to its domain name, <woodlandworldwide.com>, which it registered in 2002.
On January 31, 2013, the Complainant’s representatives wrote to the Respondent drawing the Respondent’s attention to the Complainant’s rights, accusing the Respondent of violation of those rights and demanding inter alia transfer of the Domain Name.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical to its WOODLAND trade mark, that the Respondent has no rights or legitimate interest in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
The Complainant contends that the fame of its WOODLAND trade mark was such that the Respondent registered the Domain Name with knowledge of the Complainant’s trade mark and with knowledge of the value of fostering an association with the Complainant’s trade mark and with a view to “making unlawful commercial gain” thereby.
The Complainant also relies upon the Respondent’s failure to respond to the Complainant’s cease and desist letter, the fact that the Respondent attempted to sell the Domain Name and quoted EUR 100,000 when the Complainant sought to purchase the Domain Name and the fact that on August 28, 2013, the Respondent’s website featured an advertising link mentioning the Complainant’s brand of footwear and other competing brands of footwear.
The Response was filed on behalf of Emphasys Technologies, Inc. of Dallas, Texas, USA (“Emphasys”), which claims to be the Respondent and which from the evidence filed by the Complainant appears to be the entity using the Domain Name. Moreover, certain key aspects of the Respondent’s contact details on the Registrar’s WhoIs database (e.g., telephone number and PO Box No.) coincide with those given for Emphasys. In the circumstances, the Panel is prepared to treat Domain Admin - DomainGrabber.com and Emphasys as one and all references below to the “Respondent” are references to both entities.
The Respondent denies that the Domain Name is identical or confusingly similar to the Complainant’s trade mark on the basis that the Complainant’s trade mark is a dictionary word, such marks are only afforded very limited protection and members of the public would not be confused. Members of the public would see the Domain Name as use of the dictionary word rather than the Complainant’s trade mark.
The Respondent contends that its use of the Domain Name as part of a web development business founded in 1992 helps to establish its legitimate interest in respect of the Domain Name, which is an ordinary dictionary word.
The Respondent denies that the Domain Name was registered and is being used in bad faith. The Respondent’s fundamental position is that none of the Complainant’s allegations of bad faith stand up because when the Respondent registered the Domain Name in 1999, it was unaware of the Complainant’s brand and was not under any obligation to conduct trade mark searches in India to see if the name was registered.
The Respondent states that the cease and desist letter was not sent to an address (or email address) given on the Registrar’s Whois database. The Respondent denies that it has ever attempted to sell the Domain Name.
The Respondent states that the landing page features advertising links arranged by Google and asserts that visitors would not be confused by third party advertisements appearing on the page.
The Respondent asserts that the fact that the Complainant waited 14 years before filing this Complaint is evidence that the Complainant does not believe that its claims are truly warranted.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Moreover, in writing its Decision, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
“If after considering the submissions the 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 constitutes an abuse of the Administrative Proceeding.”
Reverse Domain Name Hijacking is defined in 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”.
B. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s trade mark WOODLAND and the generic Top-Level Domain (“gTLD”) “.com”. For the purposes of assessing identity and confusing similarity under this element of the Policy, it is permissible for UDRP panels to ignore the gTLD identifier.
The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
In light of the Panel’s finding under D below it is unnecessary for the Panel to address this issue.
D. Registered and Used in Bad Faith
The Complainant’s contentions as to the Respondent’s bad faith intent at the time of registration of the Domain Name in November 1999 depend exclusively upon the Complainant’s claim that at that time the Complainant’s trade mark was not merely famous in India, but sufficiently famous for its fame not only to have reached the Respondent in Dallas, Texas, USA, but also to have motivated the Respondent to seek to exploit the value of the Complainant’s trade mark by way of the Domain Name.
The Complaint contains the following claims relating to the fame of the Complainant’s trade mark:
“Through long established and widespread use in many countries of the world, the aforesaid trade mark of the Complainant enjoys worldwide reputation.”
“By virtue of extensive sales and sales promotion activities carried out by the Complainant internationally, the trade mark WOODLAND is exclusively associated with the Complainant and the Complainant alone and has acquired an enviable reputation and goodwill.”
“By virtue of its extensive worldwide use, the Complainant’s trade mark WOODLAND has become a well-known trade mark and was also recognized by a court in India.”
“Furthermore, at the time the Respondent registered the Domain Name, the Complainant’s WOODLAND trade mark had acquired the status of a well-known mark.”
“Since the Complainant’s Mark is well-known and the Respondent has no rights in the mark WOODLAND, it is evident that the Respondent registered the said domain with the sole intention of making unlawful commercial gain.”
“It is precisely because of this association with Complainant’s Mark that the Respondent saw immense value in the Disputed Domain Name and registered it.”
“Given the fame of the Complainant’s Marks as a trade mark and domain name, it is not possible to conceive of a use by Respondents No. 1 and/or No. 2 of the Disputed Domain Name that would not constitute an infringement of Complainant’s rights in its Trade Marks.”
These are very powerful claims both as to the widespread fame of the Complainant’s trade mark and as to the bad faith of the Respondent, but they face some formidable obstacles.
First, the trade mark is an ordinary English dictionary word in common use in English-speaking countries and it is notorious that where a mark is an ordinary dictionary word it requires very substantial cogent evidence to demonstrate (a) that the Complainant’s trade mark has acquired a secondary meaning sufficient to displace its primary meaning and (b) that the allegedly offending use being made of the word/mark is likely to be taken to be a use of the Complainant’s trade mark with its secondary meaning and not a use of the word with its primary meaning. Mere unsupported assertions are not enough.
Secondly, when did the Complainant’s trade mark achieve its status as an internationally well-known, famous mark? For the Complaint to succeed under the Policy on this basis (i.e. the international fame of the Complainant’s trade mark), the Complainant has to establish, as it has asserted, that this status had been achieved by November 1999 when the Respondent registered the Domain Name. Evidence is needed as to the international fame of the Complainant’s trade mark at that date. Mere unsupported assertions are not enough.
Thirdly, the fame has to have been likely to have reached the geographical area where the Respondent resides, namely the USA. Evidence is needed as to the Complainant’s trade and/or promotional endeavours in the USA as at November 1999. Mere unsupported assertions are not enough.
Fourthly, if any of the above evidence is weak, the Complainant will have to produce strong, cogent extraneous evidence to show that despite any shortcomings in the primary evidence, the Respondent is likely to have acted in bad faith when registering the Domain Name (e.g., that he is prone to adopting the well-known trade marks of others for commercial gain).
A striking feature of the Complaint is that apart from the evidence as to the Complainant’s trade mark registrations and the cease and desist letter sent on January 31, 2013, the Complaint is almost entirely made up of unsupported assertions. The Panel was given no evidence as to the Complainant’s sales or promotional expenditure whether in India or anywhere else. Indeed, the Complaint and its annexes contain no sales or promotional figures, nor do they contain any examples of advertisements or any third party evidence of the fame of the brand such as press cuttings or industry awards.
Even if one were to assume from the volume of the Complainant’s trade mark registrations that a significant amount of international trade had been undertaken under the WOODLAND trade mark, the Panel has no information at all as to what the volumes were as at 1999 when the Domain Name was registered. Nor significantly is there anything in the Complaint to indicate that the Complainant has ever traded or attempted to trade in the USA. The Complainant has no trade mark registration in the USA and in the Complaint the USA is not one of those countries expressly identified as a place where the Complainant conducts business. Indeed, apart from references to the Respondent’s and the Registrar’s addresses, the USA is not mentioned anywhere in the Complaint.
Despite these gaping holes in the evidence, has the Complainant nonetheless produced a sufficiently significant incriminating piece of evidence to show that the Respondent was in fact aware of the Complainant’s trade mark in November 1999 and is likely to have targeted that trade mark when registering the Domain Name? No, the Complainant has not.
The Complainant has left it 14 years before lodging the Complaint, which does not put the Complainant in a good starting position. It has complained about the Respondent’s failure to respond to its cease and desist letter of January 31, 2013, but it seems that that letter which was sent by post and by email was directed to the wrong addresses (not those on the Registrar’s Whois database). It has been alleged that the Respondent has tried to sell the Domain Name for an exorbitant sum, but the Respondent denies the allegation and the Panel has been unable to find any evidence in the case file to support the allegation. Finally, the Respondent has produced evidence to show that the Respondent’s parking page, visible to visitors situated in India1, once featured a link to a site mentioning the Complainant’s trade mark and some competing trademarks. However, the date of that page was August 28, 2013 which hardly supports the Complainant’s contention that the Respondent was out to profit on the back of the Complainant’s trade mark when registering the Domain Name back in 1999.
The Respondent denies that it had any knowledge of the existence of the Complainant and its WOODLAND trade mark in 1999 when registering the Domain Name. The Panel has found nothing in the Complaint to call that denial into question. The Panel sees no reason why a web development company in Dallas, Texas should have been aware in 1999 of the existence of an Indian “Woodland” footwear brand of no known repute. In so saying, the Panel is merely observing that the Complaint contained no evidence of any repute.
The Complainant’s response to the Administrative Panel Procedural Order has thrown a little more light on the background, but nothing that assists in explaining why in 1999, when the Respondent registered the Domain Name, it should have been aware of the existence of the Complainant or its WOODLAND trade mark.
Annex C to that response constitutes 152 invoices for the Complainant’s “Woodland” product dating from November 1993 to May, 2001. All are to customers with addresses in India. The Panel was not able to find any invoice addressed to anyone outside India.
Annex B, a decision of the Intellectual Property Office of Singapore, is said to support the claim that “the courts and Tribunals in India and in other jurisdictions have recognized and upheld the rights of the Complainant in respect of its well-known trade mark WOODLAND”. The problem for the Complainant is that while that decision certainly indicates that the Complainant’s trade mark is a household name in India and that the Complainant’s export territories comprise Singapore, Hong Kong, China, the United Arab Emirates (“UAE”), Bangladesh and Nepal, there is no mention of the USA and the date of the decision is September 2011. It does not therefore throw any light on the situation as at November 1999. Moreover, paragraph 108 of the decision describes the Complainant’s target audience in Singapore as “bargain hunters or migrant workers from the Indian sub-continent who frequent the Little India shopping belt”. Whether or not that is typical of the Complainant’s target audience elsewhere, the Panel does not know, but if the Complainant does have a market in the USA (as to which there is no information), it would help to explain why the Respondent might not have heard of the Complainant’s trade mark.
For completeness, it should be mentioned that Annex D (comprising 205 pages of press cuttings, sample advertisements and the like) satisfies the Panel that by November 1999 the Complainant and its “Woodland” brand was well-known in India. The Panel had to hunt for references to the Complainant’s commercial activity outside India, but found very little. A press article on page 106 mentions that Europe accounts for about 80% of the Complainant’s export sales, but 50% of that is accounted for by the Complainant’s “Aerogreen” trade mark and much of the rest is accounted for by buyers who prefer to sell under their own labels. The Panel could not decipher the date of the article and found no reference in it to the “Woodland” brand. Nothing in this annex assisted the Panel in relation to the core question as to why in November 1999 when registering the Domain Name the Respondent should have been aware of the Complainant’s “Woodland” trade mark.
The Complainant has failed to satisfy the Panel that the Domain Name was registered in bad faith and the Panel very much doubts that the one sighting of an advertising link on the Respondent’s parking page featuring the Complainant’s brand is sufficient to constitute bad faith use of the Domain Name. However, given the Panel’s finding in relation to the Respondent’s intent when registering the Domain Name, it is unnecessary for the Panel to address the issue over use.
The Complaint fails.
E. Reverse Domain Name Hijacking
In this case, the Respondent has reacted with commendable restraint to the outrageously misconceived and unsupported allegations of bad faith directed at it and has not requested a finding of Reverse Domain Name Hijacking.
However, as this Panel recently stated in Timbermate Products Pty Ltd v. Domains by Proxy, LLC/Barry Gork, WIPO Case No. D2013-1603:
“For a finding of Reverse Domain Name Hijacking (“RDNH”) it is not necessary that the Respondent should have sought such a finding. As can be seen from paragraph 15(e) of the Rules, if the Panel finds that the Complaint was brought in bad faith, he is under an obligation to so declare in his decision. See Goway Travel Limited v. Tourism Australia, WIPO Case No. D2006-0344 (“The Rules specifically put the burden on the Panel to determine whether a complainant has tried to use ‘the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”). For a finding under this head, the Panel must conclude that the Complaint was brought in bad faith whether to deprive the Respondent of the Domain Name or to harass the Respondent or for some other reason.”
As with the Timbermate case, in this case too, the Complainant’s representative has cited previous UDRP decisions in support of its case. One of those cases was Veuve Clicquot Ponsardin, Maison Fondée en 1722 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and one only needs to look at the facts of that case to see how different they were from the facts of this case. Unlike this case, the complainant’s trade mark was not a dictionary word and unlike this case it is apparent that the complainant produced a wealth of detail to substantiate the fame of its mark. Moreover, unlike this case, the evidence showed that the respondent was a serial cybersquatter. Another case cited by the Complainant was Playboy Enterprises International, Inc v. Hector Rodriguez, WIPO Case No. D2000-1016, another case with a materially different factual background to this case. The domain names clearly targeted the complainant (<playboychannel.com> and <playboynetwork.com>), the complainant’s trade mark would have been very well-known to the respondent (both parties being USA residents) and the respondent’s explanation was found by the panel to lack credibility. Moreover, the evidence before the panel was such as to lead the panel to go so far as to state: “In this connection the Panel notes that in its opinion, the Respondent’s actions in registering and now retaining both of the contested domain names evince bad faith in violation of the Anti-Cybersquatting provisions of the Lanham Act (15 USC § 1125(d)(1) with various factors indicative of ‘bad faith’ given in 15 USC § 1125(d)(1)(B)(i) though limited by 15 USC § 1125(d)(1)(B)(ii).”
The above cases were not borderline cases. They were very clear cases of cybersquatting. This case too is not a borderline case, but for a very different reason. The evidence of bad faith registration is non-existent.
There is nothing in the evidence to establish the fame of the Complainant’s trade mark outside India and even if one were to assume that the trade mark registrations were evidence of commercial activity of the Complainant under the “Woodland” trade mark in the territories covered by those registrations, the USA is not one of those territories nor are any of the territories of North America. Moreover, the only registrations that the Panel has been able to discover from the annexes to the Complaint (many of which are not in English), which pre-date registration of the Domain Name, are the Indian registrations detailed in section 4 above and registrations in Sri Lanka and Thailand.
The Procedural Order referred to in section 3 above contained the question: “ [...] what evidence (apart from the fame of the Complainant’s brand) does the Complainant have to support its contention that on November 26, 1999 when the Respondent registered the Domain Name the Respondent had the Complainant’s brand in mind?”. All that the Complainant has done in response to that question is to seek to underline the international fame of the trade mark by (a) exhibiting a decision of the Intellectual Property Office of Singapore dated September 26, 2011, which post-dates the date of registration of the Domain Name by nearly 12 years; (b) introducing sales invoices (which, if they were thought to be relevant, should have been annexed to the original Complaint), which only relate to India; (c) introducing promotional material and press cuttings (which, if they were thought to be relevant, should have been annexed to the original Complaint), which are overwhelmingly concerned with India and shed no light on the international reputation of the “Woodland” brand in 1999, still less its reputation in the USA; and (d) reiterating the existence of the trade mark registrations annexed to the Complaint, which, so far as the Panel has been able to discover, covered only India, Sri Lanka and Thailand in 1999. Clearly, the answer to the above question in the Procedural Order should have been “Nothing”. Instead, the Panel was swamped with several hundred pages of material establishing little more than that the Complainant has a reputation and goodwill associated with its “Woodland” trade mark, which extends little further than the Indian sub-continent and migrants from that region.
Moreover, the Panel was less than impressed with the passage in the Complaint reading: “In light of the foregoing, Internet users are likely to believe that the Disputed Domain Name is related to, associated with, or authorized by the Complainant. Considering the Complainant already uses sites such as “www.woodlandworldwide.com”, the internet users would be confused into thinking that the Respondent enjoys authorization of the Complainant to do business. It is precisely because of this association with Complainant’s Mark that the Respondent saw immense value in the Disputed Domain Name and registered it”. When the Panel first read this, the Panel had assumed that the Complainant’s domain name <woodlandworldwide.com> pre-dated registration of the Domain Name. It was only in response to a question in the Procedural Order that it transpired that the Complainant’s domain name was not registered until 2002. The Panel fully appreciates that Internet users in territories where the Complainant’s trade mark is well-known may be confused by the Domain Name and that is a hazard for all owners of trade marks which are dictionary words, but the Complainant’s use of its domain name <woodlandworldwide.com>, which came into existence over 2 years after registration of the Domain Name, has no bearing whatever on the Respondent’s state of mind when it registered the Domain Name. The ambiguity evident in the above quote was unfortunate, particularly as the passage was in support of an allegation of bad faith against the Respondent.
Delay in filing a complaint under the UDRP is not necessarily fatal to the complaint, because there may be any number of understandable reasons for the delay. For example, the complainant may have had no reason to be aware of the existence of the domain name in issue. In this case, however, as the Panel has found (on the basis of the evidence annexed to the response to Procedural Order No.1), by 1999 the Complainant’s WOODLAND trade mark was an established brand in the Indian sub-continent. In 2002 the Complainant decided for the first time to register a domain name featuring its WOODLAND trade mark. It registered <woodlandworldwide.com>. Is it credible that the Complainant went straight for that domain name without first checking the availability of the Domain Name (<woodland.com>)? The Panel finds on the balance of probabilities that the Complainant was aware of the existence of the Domain Name in 2002 when it registered <woodlandworldwide.com> and knew then that it had no basis for attacking the Domain Name. The fact that a potentially objectionable advertising link appeared in August 2013 cannot, in the view of the Panel, in these circumstances sensibly be used to question the bona fides of the Respondent back in 1999.
Taking all the above into account, the Panel finds that in levelling manifestly wild and unsupported allegations of bad faith against the Respondent some 14 years after the Domain Name was first registered by the Respondent, the Complainant has brought the Complaint in bad faith and abused this administrative proceeding.
For the foregoing reasons, the Complaint is denied and the Panel makes a finding of reverse Domain Name Hijacking.
Date: November 28, 2013
1 The Panel observes that when he visited the Respondent’s website the advertising links were all United Kingdom of Great Britain and Northern Ireland-related links, none of them referred to the Complainant’s trade mark. The Panel suspects that the links are geo-targeted and that the page identified by the Complainant will be visible only in those areas where the Complainant’s trade mark is well-known.