WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rosefield Watches B.V. v. Bryan Wick, Cheapyellowpages.com
Case No. D2016-2187
1. The Parties
The Complainant is Rosefield Watches B.V. of Amsterdam, Netherlands, represented by Chiever B.V., Netherlands.
The Respondent is Bryan Wick, Cheapyellowpages.com of Denver, Colorado, of United States of America, self-represented.
2. The Domain Name and Registrar
The disputed domain name <rosefield.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2016. On October 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 November 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2016. The Response was filed with the Center November 8, 2016.
The Center appointed Luca Barbero, M. Scott Donahey and Diane Cabell as panelists in this matter on November 30, 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.
4. Factual Background
The Complainant manufactures and sells watches and accessories under the trademark ROSEFIELD.
The Complainant is the owner of trademark registrations and applications for ROSEFIELD and ROSEFIELD AMS | NYC, including the following:
- Benelux trademark registration No. 0970739 for ROSEFIELD AMS | NYC, filed on February 23, 2015, for goods in class 14;
- International trademark registration No. 1311932 for ROSEFIELD AMS | NYC, registered on July 14, 2016, for goods in class 14, designating Switzerland, India, Japan, Republic of Korea, Norway, Russian Federation and Singapore;
- European Union trademark registration No. 015660939 for ROSEFIELD, filed on July 14, 2016 and registered on December 5, 2016, for goods in class 14;
- Australian trademark registration No. 1783531 for ROSEFIELD, filed on July 14, 2016 and registered on September 22, 2016, for goods in in class 14;
- Canadian trademark application No. 1791634 for ROSEFIELD, filed on July 15, 2016;
- United States trademark application No. 87109175 for ROSEFIELD, filed on July 19, 2016 for goods in International class 14, claiming first use in commerce on May 6, 2015.
The Complainant operates a website at the domain name <rosefieldwatches.com>, registered on December 5, 2014.
The disputed domain name <rosefield.com> was registered on August 13, 2002 and is pointed to a web site providing purported real estate listings and displaying sponsored banners and links to other online locations.
5. Parties’ Contentions
The Complainant states that it designs, manufactures, distributes and sells watches and accessories globally under its brand name ROSEFIELD since 2014 and that, in a short period of time, the ROSEFIELD products have become very popular and successful in many countries throughout the world.
The Complainant points out that the disputed domain name fully incorporates the word “rosefield” and is therefore identical or highly similar to the Complainant’s trademark and company name, since the suffixes “AMS|NYC” in the Complainant’s trademark registration and “.com” in the disputed domain name should be disregarded being, respectively, a descriptive reference to the cities of Amsterdam and New York and a mere technical requirement of registration.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name since:
i) To the best of the Complainant’s knowledge, no person or entity anywhere in the world, other than the Complainant, has the legal right to use any mark that includes ROSEFIELD to identify watches, accessories and services related thereto;
ii) The Respondent has no connection or affiliation of any kind with the Complainant, nor has the Complainant ever granted the Respondent license or consent, express or implied, to use the ROSEFIELD mark in any manner;
iii) The Respondent does not use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services nor is the Respondent known by the disputed domain name; and
iv) The Complainant has exclusive rights in the name ROSEFIELD, and the unauthorized use by the Respondent is intended to misleadingly divert Internet users away from the Complainant’s true website.
The Complainant submits the following circumstances to demonstrate that the disputed domain name was registered and used by the Respondent in bad faith:
i) There are many cases naming the current Respondent as respondent in UDRP procedures. Apparently, an important part of the Respondent’s business model is to register domain names that contain third party’s trademarks or company names in order to sell these domain names to the trade mark owners against considerable costs;
ii) The Complainant tried to buy the disputed domain name in August 2016 and got into contact with a domain name broker representing the Respondent. The Complainant indicated that it was willing to pay up to USD 2,000 for the disputed domain name but the Respondent did not react to this offer;
iii) The disputed domain name was parked and offered pay-per-click advertising links to watches and related goods and services of competitors of the Complainant. This circumstance would prove that the Respondent was aware of the successful trademark of the Complainant and that the aim of the registration of the disputed domain name was to take advantage of the confusion between the disputed domain name and the Complainant’s rights;
iv) The Complainant sent a cease-and-desist letter to the Respondent, on October 10, 2016, demanding the voluntary transfer of the disputed domain name to the Complainant. The Complainant offered USD 100 as compensation for the transfer of the disputed domain name. On October 17, 2016, the Respondent informed the Complainant that it saw no reason to comply with the Complainant’s request to transfer the disputed domain name, stating that “Rosefield” is a common geographic name and that the pay-per-click links offered on the website were triggered by an algorithm;
v) Upon receipt of the Complainant’s cease and desist letter, the Respondent replaced the trademark infringing pay-per-click website for a seemingly legitimate one and, by doing so, implicitly admitted its trademark infringement;
vi) The current website is obviously not genuine since it contains only one page claiming to be a complete real estate listing in the Rosefield and the NLarea, which it is not. The Complainant notes that “NL” is the abbreviation of The Netherlands, whereas Rosefield is a town in the United States of America. In addition, no actual real estate is offered on the website since, next to the basic information on the town of Rosefield, the webpage is not functional at all. The Complainant also states that, according to the website itself, there are only 1085 households in Rosefield, making it highly implausible that the Respondent is actually interested in the Rosefield real estate business;
vii) The historic webpages available make it clear that the Respondent never used the disputed domain name for anything else than a parking website and that the Respondent never actively used the disputed domain name until the Complainant started its brand ROSEFIELD in 2014. The Respondent thus capitalized on the Complainant’s trademark value as soon as it could by using the disputed domain name for a pay-per-click-website offering watches of third parties and did so up until the day the Complainant sent Respondent the cease-and-desist letter;
viii) In its response to the cease-and-desist letter, the Respondent argues that the infringing pay-per-click links were generated by an algorithm. Even if this is true, it does not make the pay-per-click links less infringing or the Respondent less accountable for the infringement.
The Respondent states that, since 1999, it has been active in the business of marketing, developing, buying and selling several thousand generic, intuitive, geographic, surname and commonly used Internet domains, and specifies that it operates in the United States only.
The Respondent claims that, until the Complainant’s October 10, 2016 email, the Respondent was unaware of the Complainant and had no reason to be aware of the Complainant. It also asserts that the Complainant does not have exclusive rights in ROSEFIELD and does not even have exclusive rights in its ROSEFIELD mark for its goods and services since another company filed its ROSEFIELD trademark applicationwith the United States Patent and Trademark Office (“USPTO”) on June 23, 2016, one month earlier than the Complainant, and with a start of business date earlier than the Complainant, and is offering essentially the same goods and services as the Complainant.
The Respondent states that it acquired the disputed domain name on September 20, 2011 - four years before the Complainant formed its “start-up” business - in the secondary market from an auction at NameJet.com. The disputed domain name was allegedly acquired by the Respondent due to the nature of the term “Rosefield” which corresponds to:
- The geographic name of places located in the United States, such as Rosefield, Illinois, Rosefield, North Dakota, Rosefield, South Dakota and Rosefield, Louisiana;
- A generic expression meaning “in roses” or a field of roses;
- A generic term used in numerous unrelated trademarks worldwide;
- A surname.
The Respondent highlights that the Complainant’s trademark applications were filed only in 2016, and states that the Complainant has not submitted evidence to support its claim that its trademark ROSEFIELD is used worldwide, including in the United States. The Respondent, therefore, concludes that the Complainant cannot claim a secondary meaning. In addition, the Respondent asserts that the Complainant does not have exclusive worldwide rights in ROSEFIELD even within The Netherlands, the European Union or the United States of America.
The Respondent rejects the Complainant’s claims that the disputed domain name is not used in connection with a bona fide offering of goods or services, stressing that it was unaware of the Complainant and its ROSEFIELD trademark applications until it received the Complainant’s October 10, 2016 email and the Respondent purchased the disputed domain name in an auction in 2011, four years prior to the existence of the Complainant, since “Rosefield” is generic, intuitive, geographic, a surname and commonly used.
The Respondent informs the Panel that it uses the vast majority of its domain names, such as the disputed domain name, for pay-per-click websites and/or to collect and sell leads and offers in the United States relating to computers, automotive, medical, insurance, real estate, repairs, accounting, remodeling, legal, rentals, loans, banking, jewelry, foreclosures and essentially every other product and service. The Respondent highlights that this is a very common business model for domain owners and registrars.
The Respondent also states that historical screenshots of the website available at the disputed domain name taken from Archive.org and DomainTools.com from 2011 to present (submitted as annex to the Response) document the Respondent’s bona fide use of the disputed domain name in rotating pay-per-click and lead generation sites.
As to the change in the use of the disputed domain name made after receipt of the Complainant’s cease and desist letter, the Respondent states that, upon receiving the Complainant’s email on October 10, 2016 threatening possible legal measures, “common business sense” dictated the Respondent immediately change its use of the disputed domain name to a previous rotating use until further research could be done as to the strength, if any, of the Complainant’s ROSEFIELD trademark application claim.
The Respondent also indicates that, prior to buying the disputed domain name, as part of its thorough due diligence, the Respondent did a search on the USPTO database for ROSEFIELD and ROSE FIELD and found no results, including no results for the Complainant, and thus determined that given the obvious generic, intuitive, geographic, surname and common use nature of ROSEFIELD and ROSE FIELD, it would not be infringing on any service marks or trademarks.
With respect to the Complainant’s statement that the Respondent is not making a legitimate use of the disputed domain name because it apparently offered to buy the disputed domain name through a broker and apparently did not get a favorable response, the Respondent states that “it does not have to sell a domain name at any price if it wants to continue using it itself”, and that “even registrars offer new and secondary market domains for sale in auctions or otherwise”.
The Respondent rejects the Complainant’s claims that it owns and operates the disputed domain name in bad faith, reiterating that it did its proper due diligence at the time of registration, ascertaining that no registered or common law trademarks existed, including in the United States, where the Respondent only conducts its business. The Respondent highlights that the Complainant knew of the disputed domain name and its use by the Respondent in connection with pay-per-click links at the time it formed its start-up business in 2015.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of the Benelux trademark registration No. 0970739 for ROSEFIELD AMS | NYC, of the International trademark registration No. 1311932 for ROSEFIELD AMS | NYC, and other national trademark applications for ROSEFIELD filed in July 2015 in the European Union, Australia, Canada and United States of America. At the time of the drafting of this decision, the European Union and the Australian trademark applications of the Complainant have been granted by the competent Trademark Offices1 .
As stated in paragraph 1.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), ownership of a trademark generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration, and the goods and/or services for which it is registered, is irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.
In addition, as indicated in paragraph 1.11 of the WIPO Overview 2.0, figurative, stylized or design elements in a trademark are typically disregarded for the purpose of assessing identity or confusing similarity, being generally incapable of representation in a domain name.
The Panel finds that the disputed domain name is identical to the Complainant’s registered trademark ROSEFIELD since the generic Top-Level Domain suffix “.com” can be disregarded, being a mere technical requirement of registration without any particular relevance to the trademark in this matter.
The Panel also finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark ROSEFIELD AMS | NYC as the core of the trademark is constituted of the term “rosefield” encompassed in the disputed domain name and the acronyms added as suffix to “rosefield” can be considered as generic geographical indicators as asserted by the Complainant.
Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In light of the Panel’s findings below, it is not necessary to address the issue of whether the Respondent has rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds that the Complainant has failed to demonstrate that the disputed domain name was registered and used by the Respondent in bad faith.
The evidence on records shows that the disputed domain name was originally registered in 2002, many years before the Complainant claims to have first entered into business, and was transferred to the Respondent prior to that event as well. In addition, the trademark applications and registrations for ROSEFIELD and ROSEFIELD AMS | NYC owned by the Complainant, including its United States trademark application, were filed well after the Respondent’s registration of the disputed domain name. Therefore, the Respondent could not have been aware of the Complainant and its trademarks at the time of the registration.
The Panel also finds that there is no element in this case that could demonstrate that the Respondent, on balance of probabilities, intended to target the Complainant and its trademark though the use of the disputed domain name.
Indeed, the circumstances of the case suggest that the Respondent, which appears to purchase domain names in bulk to profit from their use, registered the disputed domain name for its inherent value as it is constituted of two common English language words, and it also corresponds to a common surname.
As to the use of a domain name corresponding to a generic or common term in connection with a parking service to derive pay-per-click revenue, the Panel notes that, as stated in a number of prior UDRP decisions, such use is not illegitimate to the extent that it does not capitalize on a trademark value. In the case at hand, upon being notified that its parking site was targeting the Complainant’s area of business, the Respondent promptly gave instructions to adjust the algorithm being used in order to remove the offending links from its website. In light of the circumstances of the case and the characteristics of the disputed domain name, the Panel does not find that the Respondent’s modification of the content displayed on the website at the disputed domain name after receipt of the Complainant’s cease and desist letter amounts to bad faith as alleged by the Complainant.
Neither the Respondent’s bad faith can be proven by the Complainant’s attempts to purchase the disputed domain name from the Respondent, since the negotiations were initiated by the Complainant and there is no evidence that the amounts proposed were equal to or exceeded the Respondent’s costs associated with its purchase and use of the disputed domain name.
For the foregoing reasons, the Complaint is denied.
M. Scott Donahey
Date: December 15, 2016
1 A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.5.