WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Levi Strauss & Co. v. Domain Hostmaster, Customer ID: 64322845027211Domain Admin: Damon Nelson - Manager Quantec, LLC / Novo Point, LLC
Case No. D2014-1097
1. The Parties
Complainant is Levi Strauss & Co. of San Francisco, California, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
Respondents are Domain Hostmaster, Customer ID: 64322845027211 Domain Admin of Queensland, Australia: Damon Nelson - Manager Quantec, LLC / Novo Point, LLC / of Dallas, Texas, United States of America, represented by Gary N. Schepps, United States of America.
2. The Domain Name and Registrar
The disputed domain name <dockersoutlet.com> is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2014. On June 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 26, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In a further email also on June 26, 2014, the Registrar advised the Center that the domain names owned by the disclosed registrant Quantec, LLC / Novo Point, LLC, including the disputed domain name are subject of a Court Order. (A copy of the Court Order was attached to this communication and the communication was copied to the authorized agents). On June 26, 2014 the email communication with attached Court Order was forwarded to Complainant. Complainant was requested to provide any comments it might wish to make on the attached communication, by June 30, 2014. On June 30, 2014, Complainant filed its reply requesting that the UDRP proceeding should go forward. The Center sent an email communication to Complainant on July 7, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 12, 2014.
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 Respondent of the Complaint, and the proceedings commenced on July 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2014. The Response was filed with the Center on August 4, 2014.
The Center appointed Michael A. Albert as the sole panelist in this matter on August 19, 2014. 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.
Complainant submitted an unsolicited supplemental submission to the Response on August 20, 2014. Respondent requested the opportunity to submit its own supplemental submission in reply to Complainant’s on August 25, 2014. The Panel finds the record to already be sufficiently complete for it to make an informed decision. It will neither consider Complainant’s supplemental submission nor grant Respondent’s request to submit a supplemental submission.
4. Factual Background
Complainant is a clothing company that was founded in 1853. Complainant has registered eight trademarks in the United States and Australia on the DOCKERS and DOCKERS.COM marks. Complainant first used the DOCKERS mark in 1986 and first registered it in 1987. It first used the DOCKERS.COM mark in 1996 and first registered it in 2000. It owns and operates outlet stores for products sold under the DOCKERS mark. It refers to these stores as “Dockers® Outlets.”
Respondent owns a portfolio of domain names. It registered the disputed domain name, <dockersoutlet.com>, on March 19, 2005. At the time Complainant filed its original complaint, Respondent was using a privacy service that concealed registrant information. After that complaint was filed, it became known that Mr. Damon Nelson, manager of Novo Point, LLC and Quantec, LLC, was listed as the registrant.
In late 2010, Respondent became subject to the receivership of United States District Court for the Northern District of Texas. During the proceedings, the Court appointed Mr. Peter Vogel as Receiver; it appointed Ms. Lisa Katz as the manager of the portfolio of domain names controlled by the receivership; and, it appointed Mr. Damon Nelson as the interim and permanent manager of Novo Point, LLC and Quantec, LLC. On February 28, 2014, the Court dismissed the case for lack of jurisdiction, vacated its previous orders, and scheduled a process for “winding down” the receivership. This “winding down” process was to be completed by March 7, 2014 with respect to all assets other than the cash held by the Receiver for fees and other like expenses. In an email to the Center on June 26, 2014, Ms. Katz confirmed that her position, as appointed by the Court, had been vacated.
5. Parties’ Contentions
Complainant contends that it has exclusive rights to the DOCKERS mark. It asserts that it first used the DOCKERS mark in 1986 and the DOCKERS.COM mark in 1996, and that the two were registered in 1987 and 2000, respectively. Complainant asserts that the marks are famous and widely-used. Complainant further asserts that it has registered and used the <dockers.com> domain name. Complainant contends that this establishes its right in the DOCKERS and DOCKERS.COM marks, and that this right was violated by Respondent who engaged in cybersquatting with the purpose of leveraging Complainant’s marks to redirect traffic away from Complainant and to Respondent.
First, Complainant contends that the disputed domain name <dockersoutlet.com> is confusingly similar to its DOCKERS and DOCKERS.COM marks. Complainant argues that the domain name is merely a composite of two things: a verbatim reproduction of the DOCKERS mark, and the generic term “outlet.” According to the Complainant, this is sufficient to make the domain name confusingly similar to Complainant’s mark. Complainant points out, as additional support, that it owns and operates outlets stores for products sold under the DOCKERS mark and that it refers to these stores as “Dockers® Outlets.” Complainant contends that this similarity between the Complainant’s business and the disputed domain name only increases the confusion customers might have in seeing the Complainant’s mark in the disputed domain name.
Second, Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. It alleges that it has never authorized Respondent to use the DOCKERS or DOCKERS.COM marks. It further alleges that the names of the Respondent parties – Mr. Nelson, Novo Point, LLC and Quantec, LLC – do not correspond to the disputed domain name. Complainant argues, additionally, that Respondent obtained and now uses the domain name only for click-through advertisements. Citing to Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com,” WIPO Case No. D2000-0847, Complainant contends that this activity cannot serve as the basis of a legitimate interest or a bona fide offering of goods or services. According to Complainant, Respondent only registered and used the domain name to profit from the confusion of Complainant’s customers who might mistake the disputed domain name with Complainant’s DOCKERS and DOCKERS.COM marks.
Third, Complainant alleges that the disputed domain name was registered in bad faith by Respondent. Respondent, allegedly, must have known of Complainant’s rights in its marks when it registered the disputed domain name. Complainant establishes this allegation on two observations: that Complainant had registered and used the mark for more than fifteen years prior to Respondent’s registration of the disputed domain name; and, that its mark was, at that time, already famous and widely used. Complainant argues, additionally, that Respondent’s use of a privacy service in registering the domain name is also indicative of bad faith. In support of this argument, Complainant cites to Société Nationale de Radiodiffusion Radio France v. France Info, WIPO Case No. D2002-1052 (“The Respondent has taken the deliberate steps to ensure that the true identity of the Registrant cannot be determined. Such behaviours demonstrated bad faith”). On this basis, Complainant alleges that Respondent registered and now uses the domain name for the purpose of leveraging the goodwill associated with Complainant’s DOCKERS and DOCKERS.COM marks to redirect customers away from Complainant and towards Respondent.
Respondent makes several arguments in its Response. First, it argues that, contrary to Complainant’s allegations, it had a legitimate interest in the disputed domain name, <dockersoutlet.com>. Respondent contends that “dockers outlet” is a generic, descriptive term not subject to the exclusive effect of a trademark. Dockers are, as Respondent observes, an instrument used in baking to minimize the occurrence of large bubbles in finished crust. The term “outlet” is a generic term for any direct-from-manufacturer store. Respondent argues that the combination of those two terms – each of which has a generic meaning – establishes a legitimate interest so long as the domain name is used in connection with that generic meaning. Respondent argues that this is exactly what is occurring here. It alleges that it registered and planned to use the disputed domain name for the purpose of selling pizza accessories. Attaching an exhibit of a three-by-four grid of dough dockers, Respondent apparently argues that it had made demonstrable preparations for such a use. It further argues that it could not execute these preparations because the receivership has not yet wound down.
Second, Respondent argues that it could not have possibly been acting in bad faith. It asserts that the Receiver registered and used the disputed domain name acting under court orders. Respondent thus argues that “[i]t is not credible that the U.S. District Court and its Federal Receiver acted with bad faith intent and knowingly registered or used the domain name in violation of the law.”
Third, Respondent argues that it used the privacy service for the domain name registration contact to prevent spam. It further alleges that the service was hired by the Receiver with approval of the contract by the United States District Court. This court approval, according to Respondent, precludes a finding of bad faith.
Respondent did not contest that (1) the disputed domain name was confusingly similar to Complainant’s mark, or that (2) it knew or should have known of Complainant’s mark at the time it registered the disputed domain name.
6. Discussion and Findings
Paragraph 15(a) of the Policy instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to
obtain an order that a disputed domain name should be cancelled or transferred:
(A) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(B) 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 in bad faith.
A. Identical or Confusingly Similar
The first element under paragraph 4(a) requires Complainant to establish that the disputed domain name registered by the Respondent is identical or confusingly similar to a mark in which it has rights. Maree Gaye Miller v. Peter Horner, WIPO Case No. D2008-1492.
Complainant provided sufficient evidence that it is the owner of the DOCKERS and DOCKERS.COM marks. It demonstrated that it had first used the DOCKERS mark in 1986 and the DOCKERS.COM mark in 1996, and that the two were registered in 1987 and 2000, respectively. It further demonstrated that these marks were widely-used by the time Respondent registered the disputed domain name. Complainant has registered and made use of the domain name <dockers.com>. From this evidence, the Panel is convinced that Complainant has demonstrated that it had rights in the DOCKERS and DOCKERS.COM marks by the time the disputed domain name was registered on March 19, 2005.
The disputed domain name is made up of three elements: (1) the DOCKERS mark; (2) the generic term “outlet;” and, (3) the generic Top level Domain (“gTLD”) suffix “.com.” Complainant has demonstrated its rights in the DOCKERS.COM mark, which covers the “.com” suffix. Furthermore, it is well-established that this third element – the gTLD name (“.com”) – should be disregarded for the purposes of determining the similarity of Complainant’s mark and the contested domain name. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561.
It is further established that the combination of a trademark with generic terms – the remaining two elements of the disputed domain name – will do little to avoid the conclusion that the contested domain name is confusingly similar to that mark. Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923 (The mere addition of words “your” and “shop” before and after the Complainant's mark does little to avoid the conclusion that the contested domain name is confusingly similar to the Complainant’s TAMIFLU mark). This conclusion is particularly applicable here, where the Complainant has previously combined its trademark with the same generic term Respondent now depends on to distinguish the disputed domain name.
For the foregoing reasons, this Panel finds that the disputed domain name is confusingly similar to Complainant’s DOCKERS mark, in which Complainant has established rights. Respondent has offered no reason why this might not be the case. Therefore, the Panel finds that Complainant has proven the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to present – at a minimum – a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Maree Gaye Miller v. Peter Horner, WIPO Case No. D2008-1492. “Once the Complainant has made a prima facie case, the burden shifts to the Respondent to refute the Complainant's averments and to show that it has rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy.” Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393 (citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), Question 2.1). Under paragraph 4(c) of the Policy, a legitimate interest can be proved by demonstrating:
i. before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
ii. [Respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
iii. [Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant alleged that Respondent has no rights or legitimate interests to the disputed domain name, and has put forward all the evidence that could reasonably be expected, considering such evidence is peculiarly within the knowledge of the Respondent. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110. Complainant has asserted that it has never authorized Respondent to make use of the DOCKERS or DOCKERS.COM marks. Complainant has asserted that Respondent has never been known by or engaged in business related to any of the terms in the disputed domain name. And, finally, Complainant has asserted that Respondent uses the disputed domain name only to post click-through advertisements, which is not an activity that can confer rights or legitimate interests. See WIPO Overview 2.0, Question 2.6. The Panel finds that the record supports Complainant’s assertions. For this reason, Complainant has established a prima facie case that Respondent must now refute.
Respondent asserts that both terms in the disputed domain name are generic, dictionary words over which Complainant cannot have an exclusive interest. Respondent further asserts that it plans on using the domain name as it relates to the generic meaning of these dictionary words. Such use can help establish a right or legitimate interest in the disputed domain name. Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964. Respondent’s arguments will thus rise or fall according to the relationship of the generic meaning of “dockers outlet” and Respondent’s use of the domain name, when viewed under the framework paragraph 4(c) of the Policy, supra.
Respondent argued that it had registered the domain name for the purpose of selling pizza accessories. The Panel agrees with Respondent that such a use would fall under the generic meaning of “dockers outlet.” Respondent concedes that it had not yet begun its sale of pizza accessories by the time Complainant had given notice of the dispute. Thus, Respondent must prove that it had made demonstrable preparations to use the disputed domain name with a bona fide offering of goods or services. As evidence, Respondent only provided – and without any description whatsoever – a single exhibit depicting twelve products displayed in a three-by-four grid. The Panel finds this insufficient without context. See Comerica Bank v. Cachgold Inc., WIPO Case No. D2014-0526 (“It appears to the Panel that such a showing could have been easily slapped together solely for the purposes of this proceeding. The Panel questions why there is no submission of marketing analyses, financial projections, construction plans, menus, etc.”).
Respondent argued that it could not execute its preparations for the domain name because its assets were controlled by the Receiver. The Panel finds this argument to be less than compelling. As discussed infra, the disputed domain name was registered in 2005, five years before Respondent became subject to receivership. Additionally, as discussed supra, the Court ordered that the winding down process of the receivership to be complete by March 7, 2014. Furthermore, Ms. Katz, manager of Respondent’s portfolio of domain names during the receivership, confirmed on June 26, 2014 that her position had been vacated. It is clear that Respondent had ample time both before and after receivership to execute its alleged preparations. The Panel reiterates that Respondent made no demonstrable preparations for use of the disputed domain name. The Panel concludes, moreover, that even if Respondent had made demonstrable preparations, it had no basis for withholding implementation.
Respondent’s exhibit, moreover, is suspiciously similar to those appearing on a third-party website, “www.peachsuite.com”. The prices, sales, images, item numbers and list of products exactly resembles that of the third page of “www.peachsuite.com” after one searches for “dockers” and sorts by “popularity.” Furthermore, that website displays its products in a three-by-four grid, identical to Respondent’s.
Respondent has failed to rebut the prima facie case. The Panel thus finds that the Respondent has no rights or legitimate interest in the disputed domain name.
C. Registered and Used in Bad Faith
“The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name was registered and used in bad faith by the Respondent.” Maree Gaye Miller v. Peter Horner, WIPO Case No. D2008-1492. The Policy states, in paragraph 4(b)(iv), that bad faith exists where the Respondent “intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location.”
Complainant had registered its trademark on the DOCKERS and DOCKERS.COM marks more than fifteen years before Respondent registered the disputed domain name. Complainant demonstrated, and Respondent did not dispute, that, at that time, the marks were well-known and widely used. For these reasons, it seems that Respondent knew of Complainant and its DOCKERS and DOCKERS.COM marks when it registered the disputed domain name. Respondent does not dispute this fact. And, as other panels have held, a “finding of bad faith may be made where the Respondent "knew or should have known" of the registration and/or use of the trademark prior to registering the domain name.” Myer Stores Limited v. David John Singh, WIPO Case No. D2001-0763; see also SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092. This Panel will hold similarly. Respondent knew or should have known of Complainant’s marks and may be presumed to have acted in bad faith when it registered a domain name that was confusingly similar.
Complainant has demonstrated also that the disputed domain name is attached to a website with click-through advertising, including advertisements for Complainant’s competitors. Respondent is ultimately responsible for these advertisements. Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396. The Panel agrees with Complainant that Respondent registered the disputed domain name with the intent of directing traffic away from Complainant’s webpage and to Respondent’s webpage for the purpose of commercial gain. This provides, as a result, an alternate basis for the Panel’s finding of bad faith.
Respondent argues that it could not possibly have acted in bad faith because the registration of the disputed domain name and subsequent use were conducted under orders of a United States District Court. The Panel need not opine on the effect a court’s involvement in receivership might have on the bad faith element under paragraph 4(a) of the Policy. It is clear that Respondent’s statement is factually incorrect. The record shows that the disputed domain name was registered five years before Respondent became subject to the receivership of the Court, making it impossible that the act of registration was sanctioned by the Court. Furthermore, Respondent conceded that it passively held onto the domain name during the duration of its receivership, removing the possibility that the Court may have sanctioned any particular activities related to the domain name. The Panel thus concludes that the Court had no role in the management of the disputed domain name for the purposes of this decision.
Similar issues arise in another of Respondent’s arguments. Complainant argued that bad faith could be inferred from Respondent’s decision to conceal its identity before the Registrar by use of a privacy service. Respondent argued that the Receiver hired the service to prevent spam. It further alleges the Court specifically approved this contract. This Court approval, according to Respondent, precludes a finding of bad faith for the particular action of concealing Respondent’s identity. Because the Panel has already found sufficient evidence that Respondent acted in bad faith, it need not decide this issue.
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii) of the Policy.
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, <dockersoutlet.com> be transferred to the Complainant.
Michael A. Albert
Date: September 2, 2014