WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nilson Group AB v. Domain Admin, Frontline Media
Case No. D2016-0334
1. The Parties
The Complainant is Nilson Group AB of Varberg, Sweden, represented by Domain and Intellectual Property Consultants, DIPCON AB, Sweden.
The Respondent is Domain Admin, Frontline Media of San Diego, California, United States of America ("US"), represented by ESQwire.com PC, US.
2. The Domain Name and Registrar
The disputed domain name <feetfirst.com> is registered with Uniregistrar Corp (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 19, 2016. On February 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 22, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on March 2, 2016. On March 14, 2016, the Respondent requested an extension of the Response due date. In accordance with the Rules, paragraph 5(b), the Center extended the Response due date to March 26, 2016. The Response was filed with the Center on March 25, 2016.
The Center appointed Adam Taylor, Johan Sjöbeck and The Hon Neil Brown Q.C. as panelists in this matter on April 28, 2016. 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.
On May 13, 2016, the Panel issued a Procedural Order extending the due date for rendering its decision.
4. Factual Background
The Complainant, a limited liability company incorporated in Sweden, was established in 1955.
The Complainant is one of the leading shoe retailers in Scandinavia with turnover in 2014 exceeding 3 billion SEK. The Complainant owns 330 shoe stores in Scandinavia under various brands such as "Ecco".
Since 2007, the Complainant has owned and operated a shoe galleria in Stockholm called "FeetFirst".
The Complainant operates a website "www.putfeetfirst.se" offering its various branded shoes for sale.
The Complainant owns the following registered trade marks:
1. Norwegian Trade Mark No. 241133 for "NILSON GROUP - FEET FIRST" dated March 6, 2007 in classes 18 and 25;
2. EU Trade Mark No. 011595411 for "PUT FEETFIRST" dated February 22, 2013 in classes 18, 25 and 35; and
3. EU Trade Mark No. 014222641 for "FEETFIRST" dated June 8, 2015 in classes 18, 25 and 35.
The Respondent acquired the disputed domain name in auction on October 9, 2014.
The Respondent has used the disputed domain name for a website with a landing page containing the following shoe-related headings: "Buy Shoes Online", "Collectible Shoes", "Cycling Shoes", "Extra Wide Shoes", "Footwear", "Hiking Shoes", "Just the Right Shoes", "Narrow Shoes", "Online Shoes Store" and "Roller Shoes". These headings link to pages displaying a range of shoe-related websites including shoe retailers.
5. Parties' Contentions
A summary of the Complainant's contentions is as follows:
The Complainant has spent a lot of money advertising the name "Feet First" in newspapers, billboards and public transport including some 1.2 million SEK in 2007. Because of its extensive use in advertising and on store entrances, the Complainant is strongly associated with that trade mark.
The disputed domain name is confusingly similar to the Complainant's trade marks.
The Respondent is not a licensee of the Complainant. Nor has the Complainant granted the Respondent permission to register the trade mark as a domain name.
The website at the disputed domain name indicates that the Respondent lacks legitimate interests in the disputed domain name. It contains links to the Complainant's competitors. This suggests that the disputed domain name was registered to commercially profit by misleading consumers searching for information about the Complainant's business.
The Respondent owns at least 1,100 domain names, indicating that the Respondent trades in domain names with the intent of selling domain names to their rightful owners.
There is no evidence that the Respondent has been commonly known by the disputed domain name or that it is making legitimate noncommercial use of the disputed domain name.
The disputed domain name has been registered and used in bad faith.
When the Respondent acquired the disputed domain name, the Complainant was trading under the domain name <putfeetfirst.com>, which was registered in 2007.
A summary of the Respondent's contentions is as follows:
Only one of the Complainant's trade marks is for the standalone term "FEETFIRST" and this was registered after the Respondent acquired the disputed domain name.
The Respondent acquired the disputed domain name because it consists of two common dictionary terms and refers to a common expression: "jumping in feet first".
The Respondent did not register the disputed domain name with the Complainant's trade mark in mind. The Respondent was unaware of the Complainant at that time.
The Respondent owns thousands of generic domain names.
The Respondent used the disputed domain name to display descriptive advertising links relating to the keywords in the disputed domain name. There are no links relating to the Complainant or its business. The links are automatically generated by Google and are constantly changing depending on the relevant algorithms.
There is extensive use of the term "feet first" by organisations relating to footwear and foot care including shoe stores, podiatric services and dance studios.
The Respondent has rights and legitimate interests in the disputed domain name, which reflects a common descriptive term.
The Respondent is entitled to use the disputed domain name to attract traffic based on the appeal of a common descriptive term, even if the domain name is confusingly similar to a trade mark. The key issue is whether a respondent is using the disputed domain name to describe its product / business or profit from the generic value of the word without intending to take advantage of the Complainant's rights in that term.
The Respondent has used the disputed domain name to display links relating to the generic term comprised in the disputed domain name. The links are naturally associated with the disputed domain name.
Accordingly, the Respondent's use of the disputed domain name is in connection with a bona fide offering of goods and services.
There is no evidence of registration and use in bad faith. The disputed domain name is simply one of many descriptive domain names purchased by the Respondent. There is no proof of intent to profit from the Complainant's mark. The Respondent is using the disputed domain name in connection with its common meaning.
Because the disputed domain name is comprised of common words, there is no proof that the Respondent registered the disputed domain name because of the Complainant's mark. The Complainant's claim otherwise is illogical as it was deleted and offered for sale before being acquired by the Respondent.
The Complainant cannot show that the Respondent used the disputed domain name to target the Complainant because the Respondent used it for a site with links relating the natural meaning of the disputed domain name.
The Complainant is guilty of reverse domain name hijacking. The Complainant had an obligation to understand the rules and present a valid claim. Any amount of due diligence would have shown this was a claim designed to steal a valuable domain name from its rightful owner.
The Complainant knew when it filed the Complaint that it could not prove at least two of the three required elements. Reverse domain name hijacking has been found where a respondent's use of a domain name could not under any fair interpretation of the facts have constituted bad faith or where a reasonable investigation would have revealed the weaknesses in any potential complaint.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has rights in the mark "FEET FIRST" by virtue of its registered trade mark for that term.
The Complainant has also established unregistered rights in that term deriving from its use as the name of a shoe store in Stockholm since 2007 together with attendant advertising.
The Complainant's trade mark is identical to the disputed domain name, disregarding the domain name suffix.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Question, Second Edition ("WIPO Overview 2.0") explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant."
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
The Panel considers that the disputed domain name is associated with the common English expression: "jumping in feet first". Furthermore, the Respondent has established that the phrase "feet first" is a generic term in extensive use by organisations in the field of footwear and foot care including shoe stores, podiatric services and dance studios.
Further, the shoe-related headings on the Respondent's landing page (see section 4 above) flow naturally from the descriptive words comprised in the disputed domain name. There is nothing to suggest that these diverse links capitalise on trade mark value. In the Panel's view, to the extent that the links lead to pages which include the Complainant's competitors, that arises from the descriptive nature of the disputed domain name and not the Complainant's trade mark.
In the Panel's view, the foregoing is sufficient to constitute rights or legitimate interests on the part of the Respondent.
The Panel concludes the Complainant has failed to establish the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Although the Complaint has failed, it is necessary for the Panel to address the third element under the Policy given the Respondent's assertion of reverse domain name hijacking.
The Complainant has given the Panel little reason to think that the Respondent was likely to have been aware of the Complainant on registration of the disputed domain name.
The Complainant operates some substantial shoe brands but there is limited evidence of its association with the term "feet first".
In the Panel's view the Complainant's use of the website "www.putfeetfirst.com", branded with that domain name, does not assist the Complainant. The Panel has not been provided with any website statistics showing the extent of visitor numbers to the site or user geographic data. In any case, when dealing with a term as descriptive / common as "feet first", even a comparatively minor difference such as the Complainant's use of the prefix "put" weighs against the likelihood that the Respondent registered the disputed domain name with the Complainant in mind.
Nor has the Complainant satisfied the Panel that the Respondent was likely to have been aware of the Complainant's Stockholm store named "Feet First". There is evidence of some Complainant advertising in 2007, around the time that the store was launched, but nothing indicating that the store has at any point gained any substantial reputation outside Stockholm.
The Complainant's registered EU Trade Mark for "FEET FIRST" postdates registration of the disputed domain name.
In addition, the association of "feet first" with the common expression "jumping in feet first" as well as extensive use of the term "feet first" by others, as mentioned above, cast further doubt on the likelihood that the Respondent was aware of the Complainant on registration of the disputed domain name.
The Complainant asserts that the Respondent owns at least 1,100 domain names, claiming that this indicates that the Respondent trades in domain names with the intent of selling domain names to their rightful owners. However, this assertion is undermined by a lack of evidence of the Respondent's ownership of domain names which plainly reflect third party trade marks. On the contrary, the Respondent has supplied evidence of registration of a substantial number of descriptive domains. This serves to support the Respondent's claim that it registered the disputed domain name for its descriptive / generic qualities and not by reference to the Complainant's trade mark.
Accordingly, the Panel is not satisfied that the Respondent registered the disputed domain name in bad faith.
Nor, for reasons explained in section 6B, does the Panel consider that the Respondent's parking page constitutes use in bad faith.
The Panel concludes the Complainant has failed to establish the third element of paragraph 4(a) of the Policy.
D. Reverse Domain Name Hijacking ("RDNH")
"Paragraph 15(e) of the UDRP Rules provides that, 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 under the UDRP Rules as 'using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name'.
WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. To establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant's lack of relevant trademark rights, or of the respondent's rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name...
WIPO panels have found Reverse Domain Name Hijacking in circumstances including where: the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP … or … misled the panel; a respondent's use of a domain name could not, under any fair interpretation of the reasonably available facts, have constituted bad faith; the complainant knew that the respondent used the disputed domain name as part of a bona fide business for which the respondent obtained a domain name prior to the complainant having relevant trademark rights…
WIPO panels have declined to find Reverse Domain Name Hijacking in circumstances including where: the complainant has succeeded in establishing each of the three essential elements required under the UDRP; the complainant's argument under a required element of the UDRP fails, but not by such an obvious margin that the complainant must have appreciated that this would be the case at the time of filing the complaint; there is a question of clean hands or factual accuracy on the part of both parties; the respondent's website contains commercial links explicitly referable to the complainant for the purpose of generating revenue, providing a basis for the complainant to be aggrieved; or there appears to be another relevant factual basis for filing the complaint."
In the view of a majority of the Panel, RDNH has not been established. While this is undoubtedly a weak case, it is clear from WIPO Overview 2.0 that lack of success is not itself sufficient for a finding of RDNH. The Complainant appears to have overestimated the importance and reputation of its trade marks and underestimated the fact that the term "feet first" is a common English expression. Marginally in the Complainant's favour as regards RDNH is that it at least possessed common law rights in the term "Feet First" which long pre-dated the disputed domain name and that the Respondent's website did include links to shoe-retail websites. The Complainant's arguments have failed but not in circumstances which convince a majority of the Panel that the Complaint was brought in bad faith.
The minority view is set out below.
For the foregoing reasons, the Complaint is denied.
The Hon Neil Brown Q.C.
Panelist (Concurring in part and Dissenting in part)
Date: May 19, 2016
Separate Opinion Concurring in Part and Dissenting in Part
Contrary to what some might think, this Panelist only rarely makes a finding of RDNH. An unsuccessful case is certainly not enough, without more, to justify such a finding. Even an over-optimistic case will not normally justify a finding of RDNH, as many trademark owners, when they see a domain name similar to their trademark, will be justified in making a claim and may well be motivated solely by a legitimate desire to defend their trademark. A finding of RDNH will only be justified, generally speaking, when the case is hopeless, was known to be so or should with reasonable diligence have been known to be so, and before the Complaint was filed.
The present case falls clearly into the latter category. Those who have brought the claim clearly went into it feet first, when a moment's reflection and even a cursory investigation of the facts would have told them that there was no case and that bringing one on no evidence ran the risk of a finding that the complainant was motivated by a desire to intimidate or harass the domain name holder into giving up the domain name simply because it was convenient for the Complainant to own it.
In the present case the Complainant was represented by a firm holding itself out, by virtue of its name, to be an expert in the field. The Panel is therefore entitled to assume that some enquiries were made as to whether the case was justified and whether there was any evidence to support it. No such investigation, thorough or otherwise, could conceivably have justified any such conclusion being reached. The Complainant would or should have noticed that its trade mark was only applied for some months after the Respondent had acquired the domain name and 8 years or so after the original registrant of the domain name had registered it. Even a layman should have realised that this was no foundation on which to bring a complaint, especially one where the Complainant makes a bare allegation of bad faith against a domain name registrant who seems to have done no wrong.
Other aspects of the Complainant's case are so weak that they raise the presumption that it was not motivated by defending a trade mark for FEET FIRST but by something else. For instance, it did not allege that it had a common law trade mark in that expression and there is no evidence, and not even an allegation, that it sells shoes under the brand FEET FIRST. Its own evidence is that its brands and labels are not "Feet First" but "DinSko", "Nilsen Shoes", "Skopunken", "Jerus", "Radical Sports" and "Ecco Stores". Its own evidence and website shows that it sells brands including Adidas, Birkenstock and others and that, although it has opened a "galleria" called Feet First, this apparently consists of "concept stores" and there is no evidence that it sells shoes there under the disputed name. Moreover, the Complainant's case is that it is prominent in Scandinavia, which it may well be, but there is no evidence that it was or could have been known of in the US, where the Respondent operates, or that it exports to that country under the name "Feet First" or any other name. For that reason, the conclusion that the Respondent has used the disputed domain name to sell the goods of the Complainant's "competitors" is entirely unjustified; the argument of the Complainant is that it sells shoes, the domain name is used to sell shoes, and therefore the parties are competitors, a conclusion that is highly unlikely and unjustified in the absence of evidence, of which there is, in the present case, none.
These points are made not to show that the Complainant's case is and always was weak, as that is obvious from this decision, but that no reasonable observer could possibly have come to the conclusion that any grounds existed for bringing the claim, either under the UDRP or even as a matter of common sense or fairness.
That raises the inference that the claim was brought to pressurise the Respondent into transferring the domain name, where there is no evidence to suggest that such an inference should not be drawn and plenty of evidence to suggest that it should.
I would therefore find RDNH.
The Hon Neil Brown Q.C.
Date: May 19, 2016