WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rakuten Kobo Inc. v. World Public Library
Case No. D2016-1708
1. The Parties
The Complainant is Rakuten Kobo Inc. of Toronto, Ontario, Canada, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America (“United States”).
The Respondent is World Public Library of Honolulu, Hawaii, United States, represented by Cades Schutte LLP, United States.
2. The Domain Names and Registrar
The disputed domain names <kobolibrary.com> and <kobolibrary.org> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2016. On August 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On August 23, 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 proceedings commenced on August 31, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2016. The Response was filed with the Center on September 17, 2016.
The Complainant filed an unsolicited Supplemental Filing on September 23, 2016. The Respondent filed an unsolicited Supplemental Filing in response on September 27, 2016.
The Center appointed Nick J. Gardner as the sole panelist in this matter on October 5, 2016. 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
The facts in this matter are relatively straightforward and in the main undisputed. The issues arising from those facts are however hotly disputed. Based upon the filed evidence (not including anything contained in the Parties’ respective supplemental statements – see below) the Panel finds the following to be the undisputed factual background.
The Complainant is a Canadian corporation. It was founded in 2009 and is one of the world’s leading providers of books in electronic format (“e-books”) which can be read on suitable electronic devices (“e-readers”). The Complainant itself provides a range of e-readers suitable for reading e-books. The Complaint offers via its website more than 5 million e-books and magazines. The Complainant’s e-readers are “open platform” and support the most popular electronic file formats for e-books and magazines, including EPUB, EPUB3 and PDF file formats. This allows users of the Complainant’s e-readers to buy and read digital content from a variety of sources.
The Complainant is the proprietor of a number of registered trademarks for KOBO (e.g., United States federal trademark registration 4,355,823, filed on December 2, 2009 and registered on June 25, 2013) (hereafter the “KOBO trademark”).
The Complainant promotes its business through its website at “www.kobo.com”, which averages over 1.7 million unique visitors per month.
The Respondent registered the Disputed Domain Names on March 16, 2011. The Complainant has not authorized the Respondent to register the Disputed Domain Names or to use the KOBO trademark.
The Disputed Domain Names resolve to identical websites (the “Respondent’s Websites”). The Respondent’s Websites make available a range of e-books in a range of formats. Many of these e-books are in PDF format and as such are suitable for use on a wide range of e-readers including but not limited to those of the Complainant. None of these e-books are provided by the Complainant.
The Respondent charges an annual membership fee of USD 8.95 (or less for groups). Upon payment of this fee a member can then download from the Respondent’s Website an unlimited number of e-books and keep each e-book for as long as the member wishes (including indefinitely if desired) without any restriction.
The Respondent’s Websites also carry contextual advertising for which it receives revenue.
The Respondent owns a number of other domain names which combine the word library with third-party registered trademarks including <google-library.com>, <iphonelibrary.net>, <sonyebooklibrary.com> and <nook-library.net>. Substantially the same content is available at each of the websites linked to these domain names (the “Respondent’s Other Websites”) so that for example the same file corresponding to Great Expectations by Charles Dickens is available at the Respondent’s Websites and the Respondent’s Other Websites.
On January 5, 2016, the Complainant wrote to the Respondent objecting to its use of the Disputed Domain Names and the content of the Respondent’s Websites. On May 16, 2016, the Complainant’s legal representatives wrote to the Respondent complaining further about the Disputed Domain Names. Subsequent correspondence failed to result in any agreement being reached.
5. Parties’ Contentions
The Complaint relies upon the above factual background. It also relies upon what it says are relevant further facts, as follows.
Subsequent to the Complainant’s letter of May 16, 2016, the Respondent’s Websites were changed. Changes included the introduction of a disclaimer, and deletion of tutorials and other videos concerning e-reader devices other than those made by the Complainant. The Complainant says these changes, introduced after notice of the Complainant’s objection, should be ignored by the Panel and refers to various earlier UDRP decisions in support of this argument.
The Complainant’s case in relation to the Policy can be summarised as follows.
(a) The Disputed Domain Names are each confusingly similar to the KOBO trademarks as (i) they incorporate in their entirety the Complainant’s well-known and distinctive KOBO trademark, and (ii) the combination thereof with generic terminology – the word “library” – is insufficient to distinguish the Disputed Domain Names from the Complainant’s KOBO trademark.
(b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Names. Insofar as the Respondent claims to be within the principles set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the “Oki Data principles” (see below)) it fails to satisfy the relevant tests. Additionally, insofar as the Respondent claims it is a “not-for-profit” business, that does not establish a legitimate interest given that the Respondent operates commercial websites as it charges its members an annual fee, and receives revenue from advertising placed on the Respondent’s Websites.
(c) The Respondent uses the Disputed Domain Names in bad faith. The Complainant says its KOBO trademark enjoys wide recognition and it is inconceivable that the Respondent was unaware of Complainant’s rights in the KOBO trademark when registering the Disputed Domain Names. It says that the Respondent was “banking on the established good will and consumer recognition of the KOBO Mark to drive traffic to its site in order to sell memberships and derive revenue through pay-per-click advertising”. It also says the Respondent does not need the Disputed Domain Names for its business as it has at least 60 other domain names uses which all offer the same catalogue of e-books for download. It says consumers will assume the Disputed Domain Names are those of the Complainant and will be confused. It also says the Respondent has engaged in a pattern of registering domain names which include third-party trademarks which is further evidence of bad faith.
The Respondent’s arguments are primarily based on the nature of its activities and what it says is its status as a not-for-profit organization. It puts this as follows:
“World Public Library is the world’s largest aggregator of eBooks. Founded in 1996, the World Public Library is a global coordinated effort to preserve and disseminate historical books, classic works of literature, serials, bibliographies, dictionaries, encyclopedias, and other heritage works in a number of languages and countries around the world. World Public Library is an IRC 501(c)(4) Organization, operated exclusively for the promotion of social welfare. World Public Library’s mission is to serve and aid the public, students, and educators, by providing the world’s most complete collection of electronic books, documents, and articles online, as well as offer a variety of services and resources that support and strengthen the instructional programs of education, elementary through post-baccalaureate studies.”
The Respondent says its activities are analogous to a public library, and argues that some such libraries charge users an annual fee for membership.
Although in earlier correspondence the Respondent’s counsel argued that it satisfied the so called Oki Data principles, it does not pursue that line of argument in its Response. Instead it says that the Complainant fails to establish each of the elements required under paragraph 4(a) of the Policy. Taking each element in turn the Respondent argues as follows.
Identity or confusing similarity:
The Respondent says the word “library” is merely tangential to, and therefore not descriptive of, or a generic term for, the Complainant’s goods and services and says that therefore “library” is distinctive in this context and cannot be ignored in an analysis of likelihood of confusion. It points out that the Complainant itself has said in the Complaint where it argues that the Disputed Domain Names are confusingly similar to its KOBO trademark “that ‘Library’ refers, at least tangentially, to the goods and services listed in Complainant’s trademark registrations.”
Rights or legitimate interests:
The Respondent says that in accordance with paragraph 4(c)(iii) of the Policy it can demonstrate it has rights to and legitimate interests in the Disputed Domain Names as it 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.” It says it does not as a business make a profit, has not made a profit out of the Disputed Domain Names and it does not sell e-books but makes them available to its members.
It also says its use of the KOBO trademark in the Disputed Domain Names is “nominative fair use” and cites various previous UDRP cases in this regard. It points out this doctrine has been applied in previous UDRP cases involving non-United States parties. (These cases are discussed further below.)
Registration and use in bad faith:
The Respondent says that this point is moot, given it has established a legitimate interest, but in any event denies it registered the Disputed Domain Names in bad faith.
It says it did not register the Disputed Domain Names for the purpose of selling them or transferring them to the Complainant and notes that it used them for some five years before the Complainant objected.
It says it has not prevented the Complainant from reflecting its mark and says its case is “remarkably similar” to Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481 (<porsche-buy.com> and <porschebuy.com>). (This case is discussed further below.)
The Respondent denies that the Disputed Domain Names were registered to disrupt the Complainant’s business.
The Respondent says the Disputed Domain Names were not used or registered to intentionally attempt to attract Internet users for commercial gain. In this regard it repeats that it is a non-profit and noncommercial public library which it says makes no profit from the Disputed Domain Names and hence there is no bad faith under paragraph 4(b)(iv) of the Policy.
Reverse domain name hijacking:
The Respondent requests a finding of reverse domain name hijacking (“RDNH”). It says this is justified because it has explained in correspondence to the Complainant why its case cannot succeed, given the Respondent’s status as a not-for-profit organization, and if the Complainant nevertheless proceeds the Complaint is being bought in bad faith.
6. Discussion and Findings
6.1. Preliminary Issues
The Panel declines to admit the Supplemental Filings from each Party. It seems to the Panel that the Complainant’s Supplemental Filing addresses matters which it could have raised in the Complaint. In addition its contents do not affect the outcome of this proceeding. The Respondent’s Supplemental Filing is in effect simply objecting to the Complainant’s Supplemental Filing.
A further preliminary point arises to be decided, which is the question of the time at which the Panel should consider the evidence as to the contents of the Respondent’s Websites. The Complainant says that the Panel should consider matters based on the Respondent’s Websites as they existed before the Respondent received any notice of the Complaint. The Respondent disputes that this is the correct approach. The Panel does not need to resolve this point. It is of significance if the changes the Respondent made to the Respondent’s Websites (primarily the addition of a disclaimer) after it received notice of the Complaint would alter the Panel’s conclusions. The Panel concludes this is not the case (for reasons discussed below) and hence the Panel does not need to determine this issue.
6.2. Substantive Matters
Paragraph 4(a) of the Policy requires the Complainant to establish in respect of each of the Disputed Domain Names that:
(i) the Respondent’s domain name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the domain name;
(iii) the Respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of numerous trademarks consisting of the word KOBO.
The Panel holds that each of the Disputed Domain Names is confusingly similar to the KOBO trademark. The Disputed Domain Names, as registered by the Respondent, incorporate the KOBO trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of a generic term (such as here the word “library”) to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253). The Panel does not accept the Respondent’s arguments that the word “library” is distinctive. It is a word which normally refers to a collection of books which are available to the qualified membership (which may be members of the public or an appropriately qualified group such as students at a given university) either for loan, or to be consulted on the library premises. As such it is in the Panel’s view a generic term when used in relation to books, whether in paper or electronic form. There are manifestly many thousands of collections of books in libraries all around the world and the word is not, in the Panel’s opinion, on its own distinctive. Combining it with the Complainant’s KOBO trademark does not result in a word which is separately distinctive in a manner which is not confusingly similar to the KOBO trademark.
It is also well established that the generic Top-Level Domain (“gTLD”) (in this case “.com” and “.org”) generally does not affect the domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that each of the Disputed Domain Names is confusingly similar to the Complainant’s KOBO trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that may demonstrate a right or legitimate interest in the domain name:
(i) before any notice to you of the dispute, your 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) you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
Paragraph 4(c)(ii) of the Policy does not apply. The Respondent says that paragraphs 4(c)(i) and 4(c)(iii) apply. It is convenient to consider paragraph 4(c)(iii) first. This involves consideration of the Respondent’s status as a not-for-profit organization. As the Panel understands it, this status means that to the extent (if at all) that the Respondent’s business activities result in a surplus of income over expenditure, that surplus has to be reinvested in the business and cannot be distributed to the shareholders. The Panel has not been provided with any details as to the Respondent’s financial results but notes that it appears to be a substantial organization, describing itself as “the worlds largest aggregator of ebooks”. It charges each of its members an annual fee of USD 8.95 (or less for groups). The Panel does not know how many members it has. It also appears to derive revenue from contextual advertising, which is not necessarily related to the e-books it offers. The Panel tends to agree with the Complainant that the Respondent’s activities are not analogous to a conventional library. In return for a membership fee a member can download an unlimited number of books and never has to return them. Whilst not a library in the conventional sense, this seems to the Panel to be an understandable business model. The Respondent seeks to attract members and presumably hopes that the total membership fees it receives, together with other income from advertising, will defray the costs it incurs in making available its e-book catalog. No doubt the Respondent incurs costs, for example in terms of premises, staff and computer costs. All of this seems to suggest a substantial business, albeit one which at the end of the day does not make a profit in accounting terms.
It seems to the Panel that paragraph 4(c)(ii) of the Policy can only apply if the use of a domain name is (a) legitimate; and (b) noncommercial or fair; and (c) without intent for commercial gain. Were it necessary to reach a conclusion on the matter the Panel would hold that the Respondent’s use of the Disputed Domain Names is commercial (see further below), and for commercial gain, notwithstanding its asserted not-for-profit status, given the nature and size of its activities as described above. However the Panel does not need to determine this point so far as paragraph 4(c)(iii) is concerned as in any event the Panel holds the Respondent’s use of the Disputed Domain Names is not legitimate. This is for the following reasons:
- The Respondent does not need to use the Disputed Domain Names to provide its services if it is, or claims to be, the world’s largest aggregator of e-books, and its name is the “World Public Library”. A domain name based upon its name would be a much more natural and obvious name to use. Indeed as appears from the correspondence the Respondent does own and use <worldlibrary.net> as at least one of its other domain names.
- Use of the Complainant’s KOBO trademark as part of the Disputed Domain Names is clearly intended to attract visitors to the Respondent’s Website and is clearly part of a methodology which seeks to attract new members to join the Respondent’s service.
- This methodology seeks to use a variety of domain names incorporating the trademarks of third parties well known for electronic books and/or e-readers, all similarly seeking to attract members to use the Respondent’s service.
- The Respondent does not offer at the Respondent’s Websites products which originate from the Complainant. Instead it offers products (e-books) which to a greater or lesser degree must compete with products offered by the Complainant. Put simply a user of a KOBO e-reader will from time to time need content for that device. If an online search results in that user arriving at the Respondent’s Websites he or she may take advantage of the Respondent’s membership scheme and use that to obtain content. That may have deprived the Complainant of the opportunity to provide content to that user. Whilst it is no doubt legitimate for the Respondent to seek to compete with the Complainant in providing content to users of KOBO devices, what is not, in the Panel’s view, legitimate, is to use the Complaint’s KOBO trademark, in combination with a generic term, as the Disputed Domain Names in order to attract such users in the first place.
- The Disputed Domain Names <kobolibrary.org> and <kobolibrary.com> comprise the combination of a well-known and distinctive trademark with a generic term and are, in the Panel’s view, likely to be taken by at least some Internet users as being those of the Complainant, or authorised by the Complainant. That will result in at least some such users visiting the Respondent’s Websites when they would not otherwise have done so.
- The fact that the Respondent may replicate this arrangement on a similar scale with the Respondent’s other Websites reinforces the Panel’s view, particularly given the fact that the websites concerned allegedly make available substantially the same content.1 This indicates that this is not an arrangement the Respondent needs to provide the services in question, but an artificial structure designed to attract new members, by use of the trademarks in question as part of the domain names concerned.
Taking all of the above into account the Panel concludes the Respondent’s use of the Disputed Domain Names is not a legitimate noncommercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy. Put shortly the Respondent is using the Complainant’s well-known and distinctive trademark, as part of the Disputed Domain Names, in a confusing manner which suggest it either is, or is authorised by, the Complainant, in order to attract new members who will pay to use its service. The fact that its business is allegedly operated on a not-for-profit basis does not, in the present case, alter that analysis.
The Panel does not consider that the disclaimer on the Respondent’s Websites alters this analysis (assuming in the Respondent’s favour that it is the current version of the Respondent’s Websites which is to be considered). The Panel accepts the disclaimer is prominent and makes clear the Respondent’s Websites are unconnected with the Complainant. In some factual circumstances a website disclaimer may be relevant. In the present case, however, it seems to the Panel that not withstanding the disclaimer there are likely to be instances where users seeking content for their KOBO e-reader will arrive at the Respondent’s Websites because of the nature of the Disputed Domain Names (see above) and will proceed then to become a member of the Respondent’s service notwithstanding the disclaimer. In this regard the Panel adopts the consensus view set out in paragraph 3.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which states as follows:
“What is the role of a disclaimer on the web page of a disputed domain name?
Consensus view: The existence of a disclaimer cannot by itself cure bad faith, when bad faith has been established by other factors. This is typically explained by UDRP panels with reference to the probability of Internet user ‘initial interest confusion’ – by the time such user reaches and reads any disclaimer under the domain name, any registrant objective of attracting visitors for financial advantage to its website through use of the trademark in the domain name will generally have been achieved. A disclaimer can also show that the respondent had prior knowledge of the complainant’s trademark. However a disclaimer, especially if it is sufficiently clear and prominent, may sometimes be found to support other factors indicating good faith or legitimate interest.”
The Panel does not consider in the present case that there are other factors indicating good faith, rights or legitimate interests which are supported by the disclaimer.
So far as paragraph 4(c)(i) of the Policy is concerned the Panel concludes that the Respondent’s offering of its service by using the Disputed Domain Names is not bona fide for the same reasons as explained above.
The Respondent also argues its use is legitimate and fair because it amounts to “nominative fair use”. It cites the United States case of The New Kids on the Block, v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992) (the “New Kids case”) which it says has been applied in previous UDRP cases. The Panel is not persuaded that the doctrine of nominative fair use applies in cases were one or both of the parties are based outside the United States, but even assuming in the Respondent’s favour that it does, the Panel does not consider the cases the Respondent has cited support its case.
The Respondent explains the New Kids case as follows: “In New Kids two newspapers conducted a readers’ poll regarding the popular band New Kids. The newspapers used the bands name and trademark “New Kids” in the polls. The Ninth Circuit held that the nominative fair use doctrine applies where (1) the trademark owner’s product or service cannot be readily identified without using the mark, (2) the mark is used only so much as is necessary for such identification, and (3) such use does not suggest sponsorship or endorsement by the mark owner”.
It does not seem to the Panel that the fact that it is nominative fair use to use the trademarked name of a band in conducting a poll, necessarily supports the position that it is nominative fair use to use a trademark as part of a domain name. The Panel has therefore considered the UDRP cases cited by the Respondent in this regard.
The Respondent says that Acitica International, Inc. v. YouCanSave.com, Inc., WIPO Case No. D2002-0018 (<epilstopspray.com>) supports the proposition that the doctrine of nominative fair use as explained in the New Kids case, was applicable to UDRP disputes. In fact in the Acitica case the panel expressly declines to apply the doctrine. To quote from the panel’s reasoning in that case:
“The Policy indicates that a registrant may have a legitimate interest in a domain name if it was making use of the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. Here, it appears that Respondent has used the Domain Name to offer goods for sale. That use, however, should not be considered bona fide if it is a deliberate infringement of Complainant’s rights.
The Policy also indicates that a registrant may have a legitimate interest in a domain name if it is making fair use of the domain name. Here, it is clear that Respondent use the Domain Name as a nominative reference to Complainant’s product. Nominative references constitute fair use if only so much of the mark is used as is reasonably necessary to identify the product or service and if the users do nothing to suggest sponsorship or endorsement by the trademark holder. The New Kids on the Block, v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992).
I find that Respondent’s use exceeds the scope of permissible fair use. First, it is not necessary that Respondent use Complainant’s mark in its domain name. The business is known by the name ‘Carlita’s’. It would be more appropriate for Respondent to use a domain name comprised of the name ‘Carlita’s’ and to limit the use of Complainant’s mark to text within the web site.Second, the use of the Domain Name and the web site create confusion as to whether or not Respondent is authorized or licensed by Complainant.Deep within the web site is indication that Respondent is an ‘independent’ distributor. This is insufficient avoid the confusion over authorization or sponsorship created by the Domain Name and home page. Based on the facts presented, I find that Respondent lacks any right or legitimate interest in the Domain Name.
Respondent has not denied Complainant’s allegation that the Domain Name has been registered and used in bad faith. The Domain Name appears to be a deliberate attempt to attract for commercial gain Internet users to Respondent’s web site by creating confusion as to Complainant’s authorization or approval of Respondent’s web site. Although users will not be confused about the product available at Respondent’s site, since the product appears to be genuine, its likely users will mistakenly believe the site is licensed or operated by Complainant. I believe Respondent’s deliberate attempt to benefit commercially from that confusion constitutes bad faith registration and use under the Policy.”
In the present case the Panel would have no difficulty in concluding that “nominative fair use” would allow the Respondent to refer to the Complainant’s products by the KOBO trademark in an appropriate context within the Respondent’s Website – for example in guides explaining how to download one of the Respondent’s e-books on to one of the Complainant’s KOBO readers. The Panel does not, however, see why the Respondent needs to use the KOBO trademark as part of the Disputed Domain Names for those purposes.
The Respondent also referred to Wal-Mart Stores, Inc. v. John Clark, WIPO Case No. D2004-0636 (<walmartsurplus.com>) as supporting the applicability of the doctrine of nominative fair use. Again this is a case where the panel declined to apply the doctrine and again the Panel finds the panel’s reasoning in that case instructive:
“The crux of this matter is whether Respondent has shown that he has a legitimate interest and fair use in using Complainant’s service mark as part of his domain name, due to the fact that his ‘Surplus Power Program’ informs readers how to buy surplus goods from Wal-Mart Stores, Inc.
In essence, Respondent claims that its use of the domain name is legitimate because it is protected by the ‘nominative fair use’ doctrine. Pursuant to this doctrine, use of a trademark to identify the trademarked goods in a commercial context does not violate the trademark owner’s rights if it meets the following three requirements: (a) the product cannot be readily identifiable without using the mark; (b) the defendant uses only so much of the mark as reasonably necessary to identify the product; and (c) the defendant does nothing that would, in conjunction with its use of the mark, suggest sponsorship or endorsement by the trademark holder. Allen-Edmonds Shoe Corporation v. Takin’ Care of Business, WIPO Case. No. D2002-0799; citing New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 308 (9th Cir. 1992); Toho Co. v. William Morrow & Co., 33 F.Supp.2d 1206, 1211 (D.C. Cal. 1998).
In this case, Respondent fails to meet at least the first two tests of the nominative fair use doctrine. Respondent’s own actions show that his product CAN be readily identifiable without using the Complainant’s mark, due to the fact that he titled his book ‘Surplus Power Program’. Similarly, the first part of his website discusses surplus goods generally before finally indicating that his program will enable one to buy surplus or salvaged goods that originated from Wal-Mart. Consequently, Respondent’s use of Complainant’s service mark as a domain name is not reasonably necessary to identify Respondent’s product, ‘Surplus Power Program’. Respondent easily could use a generic or descriptive domain name and still sell his book. See also The Rival Company v. DVO Enterprises, WIPO Case No. D2002-0265.
Respondent relies upon a recent WIPO decision, Dr. Ing. h. c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481, in which the Panel found that the Respondent had legitimate interests in using Complainant’s mark, PORSCHE, as part of the domain names <porschebuy.com> and <porsche-buy.com>.In that case, the Respondent used the domain name to operate a free service which brought together buyers and sellers of used PORSCHE cars. I find that that case is distinguishable from our current situation, because Respondent John Clark clearly operates his site for commercial gain, and has chosen a domain name that incorporates the Complainant’s service mark for the purpose of enticing customers to buy Respondent’s book.”
Similarly in the present case the Respondent can readily identify its service without using the Complainant’s trademark, and the service it offers does not provide books which originate from the Complainant. The case of Dr. Ing. h. c. F. Porsche AG v. Del Fabbro Laurent, supra, is discussed further below in relation to bad faith.
The Respondent additionally referred to King.com Limited and Midasplayer.com Ltd. v. Peng Chan / WhoisGuard Protected, WIPO Case No. D2013-1405 (<candycrushsecrets.com>) as showing the doctrine of nominative fair use has been applied in UDRP decisions involving non-United States parties. Once again the panel in that case does not apply the doctrine. Once again the reasoning of the panel in the case is instructive:
“In particular, Respondent’s website is not fair use. While it is conceivable that a companion guide to a video game could be designed to comport with principles of nominative fair use, this website does not come close to respecting the limitations on such use. See New Kids on the Block v. News America Pub., Inc., 971 F. 2d 302 (9th Cir. 1992) and Century 21 Corp., LendingTree, Inc., 425 F.3d 211, 228 (3d Cir, 2005). It is universally required that the user limit its borrowing to ‘only so much of the mark as may be used as is reasonably necessary to identify the product or service…’, New Kids, 971 F.2d at 308. And the user must avoid the impression that its use sponsored or affiliated with the target brand. Id. Respondent here has made no attempt to respect either of these universal rules, taking much more than necessary to reference the CANDY CRUSH mark. Respondent has copied wholesale the distinctive graphics associated with the mark, as well as its iconic cartoon characters. It has also extensively copied copyrighted game images. In this Panel’s view, Respondent’s grayed out nearly invisible disclaimer buried deep on the last page of its promotional discourse is nearly [sic] does not prevent confusion.
Accordingly, Respondent does not have any rights or legitimate interests in using Complainant’s service mark as part of his domain name.”
In the present case the Panel similarly concludes the Respondent does not need to use the Complainant’s trademark to identify its service.
Accordingly even if the doctrine of nominative fair use is applicable to the present case, which the Panel doubts, the Panel declines to find that the Respondent’s activities are rendered fair or legitimate by virtue of that doctrine.
For the reasons above, the Panel concludes that the Respondent has no rights or legitimate interests in the Disputed Domain Names.
C. Registered and Used in Bad Faith
So far as the Policy is concerned, the Panel accepts the Respondent’s arguments that paragraphs 4(b)(i)-(iii) do not apply. So far as paragraph 4(b)(iv) of the Policy is concerned were it not for the Respondent’s apparent not-for-profit status, there would be no question in the Panel’s opinion that the Respondent’s activities fall within the relevant wording, namely: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.The question that arises is whether the Respondent’s apparent not-for-profit status means that its activities are not “for commercial gain”? The Panel concludes that they are for commercial gain – those activities are clearly aimed at attracting members and hence revenue, as well as supporting the Respondent earning advertising revenue. The adjective “commercial” is derived from the noun “commerce” which means “activities that relate to the buying and selling of goods and services”.2 In substance the Respondent is making available e-books to users who pay it an annual membership fee. That is in the opinion of the Panel in substance the selling of products or services. It is doing that on what appears to be a substantial international scale and there is no restriction at all on who can become a member. That activity seems to the Panel to be “commerce” and hence “commercial” notwithstanding that it may not at the end of the day result in the Respondent recording a profit in accounting terms because of how the Respondent’s business is organized. Even if the Panel’s view in this respect is incorrect the Panel would nevertheless find the Respondent’s activities to be in bad faith noting that the examples provided in paragraph 4(b) are non-exhaustive. That is for the same reasons as discussed in relation to lack of rights or legitimate interests above.
The Respondent has drawn attention to the panel decision in Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, supra, and says its case is “remarkably similar” to that case. The Panel disagrees. In that case the panel concluded that only the complainant’s products were offered at the website in question (“No other brands are offered so that this case does differ from those where a respondent is abusing of a certain domain name to entice Internet users to its site” and “no evidence has been produced by Complainant that Respondent is using the Domain Names in bad faith, just for a mere piggyback for other products, non-related to those referred to in the Domain-Names”). Further insofar as the respondent in that case operated various other websites using domain names such as <ferraribuy.com> and <jaguarbuy.com> the respondent was at those websites only offering the products of the trademark owners concerned. In the present case the Respondent’s Websites do not offer products sourced from the Complainant, and it appears tp operate multiple other websites all of which offer the same products, none of which are sourced from the trademark owner concerned. The Panel declines to apply the reasoning in Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent,supra, to the present case.
Accordingly the Panel concludes that the Disputed Domain Names have been registered and are being used in bad faith.
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 Names <kobolibrary.com> and <kobolibrary.org> be transferred to the Complainant. It follows that the Respondent’s request for a finding of RDNH fails.
Nick J. Gardner
Date: October 17, 2016
1 The Panel bases its finding in this regard on the reasonable assertions of the Complainant that the Respondent has not sought to dispute.
2 Definition from Merriam- Webster dictionary, similar definitions appear in other dictionaries