WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Western Glove Works v. Domain Manager
Case No. DCO2011-0030
1. The Parties
The Complainant is Western Glove Works of Winnipeg, Manitoba, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is Domain Manager of Los Angeles, California, United States of America, represented by Adam Modras.
2. The Domain Name and Registrar
The disputed domain name <silverjeans.co> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2011. On May 12, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On May 13, 2011, GoDaddy.com, Inc. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2011. The Response was filed with the Center on June 6, 2011.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on June 14, 2011. 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
According to the Complainant, it is a leading Canadian denim manufacturer and the owner of trademarks for SILVER JEANS and related trademarks in the context of clothing, including the following:
SILVER JEANS, United States Patent and Trademark Office, registration No. 3197044, registered January 9, 2007, international class 25;
SILVER JEANS, Canadian Intellectual Property Office (CIPO), registration No. TMA574810, registered January 30, 2003;
SILVER JEANS & Design, CIPO, registration No. TMA775179, registered August 20, 2010;
SILVER, CIPO, registration No. TMA500131, registered September 4, 1998;
SILVER'S CLUB, CIPO, registration No. TMA483255, registered September 29, 1997;
SILVER, CIPO, registration No. TMA483254, registered September 29, 1997;
SILVER JEANS, Community Trademark, registration No. 6335517, filed October 4, 2007, class 25;
SILVER JEANS & Design, Community Trademark, registration No. 8812646, filed January 15, 2010, class 25.
The Complainant has operated its own website “www.silverjeans.com” since 1998.
The Respondent does not state his business. He registered the disputed domain name on March 3, 2011.
5. Parties’ Contentions
The Complainant has produced copies of on-line search data in support of its claim to have rights in the trademarks listed above. It contends that the disputed domain name <silverjeans.co> incorporates the Complainant’s entire trademarks SILVER JEANS and SILVER, and the distinctive element SILVER JEANS of its trademarks, and is confusingly similar to its trademarks.
The Complainant further contends that the Respondent does not have a legitimate interest in the disputed domain name. There has never been any relationship between the Complainant and the Respondent and the Respondent has not been authorized to use the Complainant’s trademark. The Respondent cannot claim to have made a bona fide use of the disputed domain name or of a corresponding name for an offering of goods or services because, among other reasons, the website to which the disputed domain name resolved contained a copy of the Complainant’s website and was offered for sale.
The Complainant says there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name, or is making a legitimate non-commercial or fair use of it.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith in the terms of paragraphs 4(b)(i), (iii) and (iv) of the Policy.
With reference to paragraph 4(b)(i) of the Policy, the Complainant says the Respondent’s website, to which the disputed domain name resolved, stated: “This domain is more valuable than “www.silverjeans.com” and is for sale. Click here to purchase”. The Complainant has produced copies of correspondence in which it offered to buy the disputed domain name from the Respondent for USD 2500.00, later reduced to USD 1000.00. The Complainant has produced copies of correspondence from the Respondent offering to sell the disputed domain name to the Complainant for a firm price of USD 22,500.00, and in which the Respondent stated that three other businesses were interested in it.
The Complainant contends that the Respondent’s usage of the disputed domain name has been, among other things, to attract Internet visitors and direct them to the websites of the Complainant’s competitors such as Guess Jeans and Buffalo Jeans. This has been done by the click-through business model whereby the Respondent may receive a commission for such referrals, but not legitimately since he attracts visitors by confusion with the trademark of the Complainant. The Complainant contends that this is disruptive of the Complainant’s business, is damaging to the Complainant’s goodwill, and constitutes bad faith within the meaning of both paragraphs 4(b)(iii) and 4(b)(iv) of the Policy.
The Complainant contends that surrounding circumstances support a finding of bad faith, including the Respondent’s actual or constructive knowledge of the Complainant’s trademark rights at the time of registration of the disputed domain name.
The Complainant also says it is reasonable to conclude that the amendment of the registrant name from a personal name to Domain Manager was an attempt to evade legal proceedings.
The Complainant has submitted a number of citations of previous decisions under the UDRP that it wishes the Panel to treat as precedent.
The Complainant requests the transfer to it of the disputed domain name.
The Respondent denies the Complaint.
The Respondent contends there is a perfume company called “Silver Jeans” that maintains the trademark in Europe and the United States of America, and existed before the Complainant. An annexed letter dated April 12, 2011 from the Respondent’s representative to the Complainant elaborates that the other company is U.S. Perfume House, Inc., which holds U.S. Reg. 3122261 for “Silver Jeans” in class 003 for perfume. This letter also claims that the disputed domain name, by being parked, is not in use in commerce.
The Respondent says the frameset of the Complainant’s website reproduced on the Respondent’s website was done without his approval by an employee, and existed for less than 36 hours during which it received no hits.
The Respondent contends that he purchased the disputed domain name legitimately so that it could be made available to the other trademark holders, such as the perfume company.
The Respondent says the initial offer to purchase the disputed domain name came from the Complainant. He says he has no intention of selling the disputed domain name to the Complainant, so there is no cybersquatting or bad faith issue.
The Respondent claims to have rights and legitimate interests in the disputed domain name and asks the Panel to consider any relevant aspects included in, but not limited to, paragraph 4(c) of the Policy.
The Respondent contends that he did not purchase the disputed domain in bad faith, has not used it in bad faith and has made no money from links or parking. There has been no lost traffic to the Complainant as there have been no viewers except the Complainant and its representative.
The Panel is requested to deny transfer of the disputed domain name and to make a finding of reverse domain-name hijacking.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights in trademarks containing SILVER and SILVER JEANS. The disputed domain name is <silverjeans.co>, of which the gTLD component “.co” may be disregarded for the purpose of determining confusing similarity. The possible existence of any other company that uses the name or trademark SILVER JEANS for perfumes or in any class has no bearing on whether the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Panel finds the disputed domain name to be confusingly similar and identical to at least those of the Complainant’s trademarks comprising SILVER JEANS, in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant states that it has never had any relationship with the Respondent or authorized him to use its trademarks, and asserts that the Respondent has no legitimate interest in the disputed domain name. Whilst the onus of proof remains with the Complainant, paragraph 4(c) of the Policy sets out certain circumstances, without limitation, whereby the Respondent may be able to refute the Complainant’s prima facie case by seeking to establish rights or legitimate interests under paragraph 4(a)(ii) of the Policy, namely:
“(i) before any notice to you [the Respondent] 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 organization) 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.”
According to the evidence, the usage of the disputed domain name has included the operation or intended operation of a website that is advertised for sale, and that provides links to other websites including those of other companies that trade in jeans and may reasonably be regarded as competitors of the Complainant. The use of a disputed domain name comprising essentially the Complainant’s trademark without authority for this purpose negates any possibility that the Respondent’s usage has been bona fide within the meaning of paragraph 4(c)(i) of the Policy.
It is not reasonably within contemplation that the Respondent has been commonly known by the name “Silver Jeans” or has established any such ground under paragraph 4(c)(ii) of the Policy.
Two principal activities have been associated with the disputed domain name according to the evidence. One is to sell it, as crystalised in the Respondent’s statement: “Therefore I purchased silverjeans.com [sic] so that it could be made available to the other trademark holders – such as the perfume company based in Europe.” The other is an intention to earn revenue through the provision of pay-per-click links, for which a referring website operator may be paid commissions. Neither of these activities is found by the Panel to constitute a non-commercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy.
The Panel has found no other evidence that could support a claim by the Respondent to have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith, namely:
“(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith registration and use may be found otherwise.
The website to which the disputed domain name resolves has been promoted as being for sale, with the slogan: “This domain is more valuable than “www.silverjeans.com” and is for sale. Click here to purchase.” The Respondent explains his acquisition of the disputed domain name by stating, as quoted in 6B above, that he purchased it “so that it could be made available to the other trademark holders”. The Panel finds that “made available” may reasonably be interpreted as “sold”, and it is implausible, in the circumstances, that this would be done without the intention of making a profit over the costs of registration.
The Respondent’s intention to sell the domain name for a high price is confirmed by his refusal to accept USD 2500.00 (or later USD 1000.00) from the Complainant and to demand a price of USD 22,500.00. The Respondent’s email, dated March 25, 2011, was couched in these terms: “Please review my counter offer of USD $22,500.00. That offer is firm and there is no way you will be taking this domain from me any other way.” Thus, the Respondent’s assertion in the Response that he has “no intention of selling this domain to Silverjeans.com” is at variance with the evidence. The email adds, in what may be interpreted as leverage: “Either way I have three other businesses interested in this domain, so I will review whether we will be selling it to them with private registration so that you will have subpoena them for this domain”. Having regard to all the available evidence the Panel finds that the disputed domain name was registered and used by the Respondent primarily for the purpose of profitable sale to the Complainant or a competitor of the Complainant within the meaning of paragraph 4(b)(i) of the Policy.
The Respondent asserts in the letter of April 12, 2011 to the Complainant that the disputed domain name is not in use. It has long been accepted by the majority of Panels that where other circumstances indicate bad faith intent behind the registration of a domain name comprising a well-known trademark, the Respondent is unlikely to circumvent a finding of bad faith use by parking the domain name without manifest purpose (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The disputed domain name is in this case found to have been in use for at least the purposes of offering links and being offered for sale and the Panel does not accept that it is not in use.
The operation of a website in order to generate revenue through the pay-per-click business model, in which other website operators pay a commission for referrals or for the placement of advertisements, may be entirely legitimate. Such a business depends on the attraction of Internet visitors, commonly through search engine listings, and cannot be legitimate if the means of attracting visitors is the appropriation of another’s trademark against its objection and without authority. The Panel can find no plausible reason for the Respondent to have chosen to use the disputed domain name embodying the Complainant’s trademark in order to attract visitors, and is satisfied that the Respondent has attempted to rely on confusion with the Complainant’s trademark for commercial gain. Bad faith registration and use are found under paragraph 4(b)(iv) of the Policy.
Since the Decision is given for the Complainant and against the Respondent, it is not necessary to discuss the Respondent’s assertion of Reverse Domain Name Hijacking under paragraph 15(e) of the Rules.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <silverjeans.co> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Dated: June 28, 2011