WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Owens Corning v. NA
Case No. D2007-1143
1. The Parties
The Complainant is Owens Corning, of Toledo, Ohio, United States of America, represented by Davies Collison Cave, Australia.
The Respondent is NA, of Glen Iris, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <pinkbatts.com> (the “Domain Name”) is registered with GoDaddy Software.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2007. On August 3, 2007, the Center transmitted by email to GoDaddy Software a request for registrar verification in connection with the domain name at issue. On August 8, 2007, GoDaddy Software 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”), 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”).
3.2 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 August 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 6, 2007. The Respondent submitted a form of Response on September 7, 2007.
3.3 The Center appointed Matthew S. Harris as the sole panelist in this matter on September 17, 2007. 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
4.1 The Complainant is a corporation, incorporated under the laws of Delaware in the United States of America.
4.2 The Complainant is the owner of various registered trademarks in Australia that incorporate in one way or another the word “Pink”. These include Australian registered trademark No. 334006 for the words PINK BATTS in relation to “insulating batts for use in walls on ceilings of buildings” in class 17 (the “Trademark”).
4.3 Whilst the Trademark was registered on June 12, 1979, the Complainant has used the words “Pink Batts” in Australia since the mid 1960s, through various exclusive licensees. The current licensee in Australia is Fletcher Insulation (Vic) Pty Ltd (“Fletcher Insulation”).
4.4 Total wholesale sales of product under the mark since the mid 1960s exceed “$500 million in current dollar terms” and in 2005-2006 Fletcher Insulation sold goods and related services under the mark of AUS$30.3 million. This represents a 30% market share in Australia for home insulation products made of glass wool and a 25% market share of total home insulation products.
4.5 Over the years significant sums of money have been spent advertising products and services under the mark, and current annual spend is in the region of $1.5 million.
4.6 The Domain Name was registered in the name of “NA” by Natalie Jevric on December 12, 2003. Ms. Jevric had previously registered the domain name <pinkbatts.com.au> on behalf of Cosy Insulation Pty Ltd (“Cosy Insulation”), one of Fletcher Insulations’ customers.
4.7 The Domain Name did not resolve to an active web page until April 2004. From April 2004 to January 2005 the Domain Name resolved to a single webpage featuring the words “Coming Soon - Site Designed by Farbound”.
4.8 On April 18, 2007, the Domain Name resolved to a “domain name parking” webpage provided by GoDaddy.com. That webpage incorporated a series of “sponsored” links to businesses associated in some way or other with insulation.
4.9 On May 18, 2007, the Complainant’s solicitors sent a letter before action to the Respondent demanding the transfer of the Domain Name to the Complainant. On May 21, 2007, the Respondent responded by email in the following terms:
“I have had the domain name www.pinkbatts.com for at least 5 years now.
Recently I let www.godaddy.com host it for me, which is a free service however it appears they advertise on these free spaces. I didn’t realize that the advertising was a problem therefore I have now moved the domain name. Under no circumstances did I intend to mislead or be deceptive in any way.
DNS may take up to 48 hours to propagate over the internet.”
4.10 In response to a further letter from the Complainant’s solicitors, on May 22, 2007, the Respondent sent an email to the Complainant’s New Zealand licensee as follows:
“I am the owner of www.pinkbatts.com
I originally purchased the domain name for a company that I was creating a website for however they decided they only wanted www.pinkbatts.com.au.
In any case I have just received a letter from a company called Owens Corning who want the domain name. Before I did anything or sort legal advice I was wondering if pinkbatts.co.nz would be interested in the domain name.”
4.11 By May 25, 2007, the webpage to which the Domain Name resolved had changed to that of a simple page that featured no text or graphics save for the words “pinkbatts.com”, “pink batts”, “pinkbatts”, “pink batt”, “pink bat” and “pinkbat”. This webpage is still operating from the Domain Name as at the date of this decision.
5. Parties’ Contentions
Identical or confusingly similar
5.1 The Domain Name is said to be identical to the “Complainant’s PINK BATTS trademark”.
Rights or legitimate interests
5.2 The Complainant contends that the Respondent has no right or legitimate interest in the Domain Name. In particular, the Complainant claims as follows:
(i) The Respondent has no connection with the Complainant and has not been licensed or authorised by the Complainant to use the PINK BATTS trademark as part of the Domain Name or in any other way.
(ii) The Respondent has not made a bona fide use of or demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with an offering of goods and services. Initially, the Domain Name did not resolve to a website. From April 18, 2007, the Domain Name has resolved to active websites but none of those websites relate to any bona fide business.
(iii) The Complainant’s investigations have failed to detect any evidence of demonstrable steps taken by the Respondent to commence business activities associated with the Domain Name.
(iv) The Respondent does not have registered trademark rights in the words “Pink Batts” and there is no evidence that the Respondent is commonly known by the Domain Name.
(v) The Respondent is not making a legitimate or commercial fair use of the Domain Name without intent for commercial gain.
Registered and used in Bad Faith
5.3 The Complainant contends that the Respondent has registered and is using the Domain Name in bad faith. In particular, the Complainant claims as follows:
(i) The fame of the PINK BATTS trademark is such that the Respondent, as an Australian resident, “certainly would be aware of the Complainant’s reputation in the trademark”.
(ii) The use of inaccurate or incomplete contact details for the purposes of its Domain Name registration is evident that the Domain Name is registered and used in bad faith pursuant to Paragraph 4(b) of the Policy. The Complainant cites the decision of Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003 in this respect.
(iii) The combination of the reputation of PINK BATTS in Australia, the fact that the Respondent has not used the Domain Name in connection with a bona fide business and the failure to provide full identity details, results in the “inevitable inference” that the Domain Name was registered and used in bad faith.
(iv) The Respondent is said to have registered the Domain Name “primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor for valuable consideration in excess of out-of-pocket costs. The Complainant alleges that the Respondent registered the Domain Name with the intention of transferring it to Cosy Insulations. The Complainant also refers to the (a) email sent by the Respondent on May 22, 2007, to the Complainant’s New Zealand licensee with a view to selling the Domain Name and (b) a telephone conversation on June 7, 2007, with an employee of the Complainant’s representatives in which the Respondent said she would “give up” the Domain Name for financial compensation but rejected the suggestion that she transfer the Domain Name in exchange for payment of her out-of-pocket expenses.
5.4 The Respondent’s Response was initially filed electronically. The Respondent appears to have taken the Center’s pro forma response and filled in aspects of this document.
5.5 In this document, the Respondent confirms that she is Natalie Jevric and provides various contact details. Inserted in the document are a few paragraphs of text that set out the Respondent’s substantive contentions in relation to the Complaint. It is convenient simply to reproduce this verbatim. She states as follows:
“I have had pinkbatts.com registered since 2003. Prior this Insulation Solutions Pty Ltd had the name registered and let it lapse. I contacted their marketing department and informed them that I was interested in the domain name (pinkbatts.com) and they told me that they were now using ECOpink and they no longer required that particular domain name.
I then registered the domain name, and set it up with a hosting service.
I am aware pinkbatts are insulation bats sold in Australia, which they are now labeled with ECOpink I have never advertised insulation on this site, however once for around a week I was changing hosting services and had GoDaddy host my site while I found a new hosting server, and they have automatic advertising which included insulation.
Seeing Pinkbatts is an "Australian" & not a Worldwide Trademark I am astounded that they want me to give up the site I have resisted for 4 years.
I registered this site for my own personal interests.
I had also created a website for Michael Penney www.pinkbatts.com.au however I don’t think this is relevant.”
5.6 The Respondent submits no further evidence in support of these submissions.
5.7 As has been already described above, the Respondent submitted this document one day after the deadline for service of a response. In DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers, WIPO Case No. D2003-0780 and 1099 Pro, Inc. v. Convey Compliance Systems, Inc., WIPO Case No. D2003-0033 the panel concluded that late responses should be disregarded “absent good cause”. Similarly in Museum of Science v Jason Dare, WIPO Case No. D2004-0614, the panel noted that “many panels have disregarded late filed responses making clear that it is important to apply the Rules as written, absent a good reason, otherwise parties will feel free to disregard deadlines and Respondents will regularly submit late responses”.
5.8 It is for the party seeking to submit a late submission to provide justification for doing so, even if that delay is very short, and the Respondent offers no explanation in this case. Therefore, the Panel would be entitled to disregard the Response in its entirety. Nevertheless, on this occasion the Panel has decided not to adopt that course. The Complainant has suffered no prejudice by reason of the 24 hour delay and the material included in the Response provides some insight into the Respondent’s intentions at the time of registration. Also, for reasons that will become apparent, consideration of this material makes no difference to the Panel’s decision in this case.
6. Discussion and Findings
6.1 The Panel has reviewed the Complaint and the documents annexed to the Complaint. In light of this material, the Panel sets out its findings below.
6.2 In proceedings under the Policy the Complainant bears the burden of proof. In particular the Complaint must show each of the constituent elements of paragraph 4(a) of the Policy i.e.:
(i) the Disputed Domain is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain (paragraph 4(a)(ii)); and
(iii) the Disputed Domain has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 The Panel deals with each of these requirements in turn.
A. Identical or Confusingly Similar
6.4 The Complainant has supplied evidence that it is the owner of the Trademark, which as has already been explained is a word mark in class 17 for the words PINK BATTS. It is appropriate in this case, when comparing the Domain Name and the Trademark to disregard the “.com” TLD suffix. Accordingly, the only difference between the Domain Name and the Trademark is that the Domain Name does not contain a space. However, it is not possible to include a space in a domain name and therefore it is common practice when representing more than word in a domain name either to omit the spaces between the words or to replace them with some other suitable character. In the circumstances, the Panel is of the view that for the purposes of the Policy the Domain Name and the Trademark are identical.
6.5 Accordingly, the Complainant has made out paragraph 4(a)(i) of the Policy. In light of this finding it is not necessary to consider the Complainant’s contentions in relation to its other registered trademarks.
B. Rights or Legitimate Interests
6.6 The Panel accepts the Complainant’s contentions that the Respondent has no legitimate right or interest in the Domain Name. The Respondent is not the owner of any registered trademark in the words “Pink Batts” and has never traded under the “Pink Batts” name.
6.7 The Respondent appears to have made no substantive use of the Domain Name whether in connection with a business or otherwise. There is one possible exception in this respect. It would appear that for a short period of time the Domain Name was “parked” with a “domain parking service”. It is common knowledge that the way in which many of these services operate is that the domain parking service operators obtain “click through revenue” when Internet users click on the “sponsored links” on the displayed page. Many of these services will then provide the domain name registrant with part of that “click through” revenue.
6.8 There is nothing per se illegitimate in using a domain parking service. However, linking a domain name to such a service with a trademark owner’s name in mind and in the hope and expectation that Internet users searching for information about the business activities of the trademark owner will be directed to the parking service page, is a different matter. Such activity does not provide a legitimate interest in that domain name under the Policy (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Limited/Mr Cartwright WIPO Case No. D2007-0267).
6.9 As the Panel describes in under the “good faith” heading below, the Panel believes this was the intention of the Respondent when linking the Domain Name to the domain parking service. In the circumstances, and in the absence of any further substantive explanation from the Respondent as to why it is that the Domain Name was registered, the Panel concludes that the Respondent has no right or legitimate interest in the Domain Name and that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy
C. Registered and Used in Bad Faith
6.10 It is incumbent upon a complainant if it is to succeed under the Policy to show that the relevant domain name was both registered in bad faith and used in bad faith. Often it is possible to infer bad faith registration from bad faith use. Nevertheless, each of these aspects of the Policy is distinct and both must be shown.
6.11 In this case, there is ample evidence of bad faith use. There is little doubt in this case that at all times the Respondent was aware that the term “Pink Batts” referred to the Complainant’s products and that it was a term that enjoyed a substantial reputation in Australia. The conjunction of the words “Pink” and “Batts” is an inherently unusual one and is not an obvious choice for a domain name unless there is an intention to use the Domain Name in some way connected with the Complainant’s products. Further, whilst the explanations as to why she chose the Domain Name given in the Response and in a letter from the Respondent to the Complainant’s New Zealand licensee are hard to reconcile, the Respondent does not deny the Complainant’s claim that at she had such knowledge. Indeed, she claims in the Response that prior to registration she discussed with Insulation Solutions, the then licensee of the Complainant, that licensee’s use of the Domain Name.
6.12 It is also clear that the Respondent has recently sought to use the Domain Name in such a way as to seek to take advantage of that goodwill and reputation. For example, the Respondent does not deny that during a telephone conversation with an employee of the Complainant’s solicitors on June 7, 2007 she rejected the Complainant’s offer to transfer the Domain Name in exchange for payment of her out-of-pocket expenses and claimed that there were other “buyers” who would pay a substantial figure for the Domain Name. Since the Domain Name is not in any sensible sense generic, the only credible reason why any entity would be prepared to pay a “substantial figure” for the Domain Name is that it intended to use it in some manner to refer to the Complainant’s works and services.
6.13 The Panel is not saying that the Respondent had actually engaged in any discussion with other buyers. It suspects that she had not. The point is simply that the Respondent’s actions show that she was attempting to extract from the Complainant a sum of money that represented a value in the Domain Name that arose not out of competition from those who might independently use that domain legitimately, but from the goodwill that the Complainant and its licensees had built up in the PINK BATTS mark. This was in the Panel’s view, this was a clear example of bad faith use.
6.14 Further, the Panel is of the view that by placing the Domain Name with a domain name parking service, the Respondent deliberately attracted, for commercial gain, Internet users to the webpage created by GoDaddy by trading a likelihood of confusion with the Complainant’s mark. The Respondent contends that this was unintentional. However, her assertions in this respect are somewhat vague and unconvincing. The explanation offered is that “[she] was changing hosting services and had GoDaddy host [her] site while [she] found a new hosting server, and they [i.e. GoDaddy] have automatic advertising which included insulation”. This is a statement that is hard to understand and which poses as many questions as it provides answers. Why did the Respondent decide to change hosting services and why was it necessary to use GoDaddy on a temporary basis? Further, if the intention was that GoDaddy would host the Respondent’s limited pre-existing site, why did any sort of domain name parking page appear at all? In the absence of any further explanation the Panel conludes that the Respondent made a conscious decision to use GoDaddy’s Domain Name parking service.
6.15 Of course, this still leaves the Respondent’s contention that she was not responsible for the advertising that appeared on the page because GoDaddy automatically generated this advertising. The Panel is somewhat sceptical that the Respondent had no hand in choosing of the type of advertising that would appear. Domain name parking services will usually allow users to choose “keywords” to associate with a domain name so that the sponsored links that appear on the page are better aligned with the domain name in the hope that more “click through” revenue will be generated. In circumstances where a respondent does not disclose the exact manner in the domain name parking service web page has been set up and does not disclose exactly what keywords it has chosen, it is reasonable for the Panel to infer that the respondent had some influence upon the sponsored link selection process (see similar comments to this effect in the decisions of this Panel in Associated Professional Sleep Societies v. l.c./Li Chow, WIPO Case No. D2007-0695 and Columbia Insurance Company, Shaw Industries Group Inc. v. Adminstrator, Domain, WIPO Case No. D2007-0583). Therefore, in this case whilst it seems likely that the Respondent is correct when she asserts that these links were automatically generated, it does not necessarily follow that she had no influence over the type of links that appeared.
6.16 Even if the Respondent did not have any direct influence over what sponsored links were chosen, in this case it does not matter. The Respondent must have known that by using a parking service, some sponsored links would be generated. Since the Respondent knew that the term “Pink Batts” was one which could only be sensibly associated with the Complainant’s insulation products, she must also have known that any sponsored links generated by GoDaddy were likely to relate to insulation connected goods and services. Finally, even if the sponsored links had been to businesses unconnected with insulation, again in this case it would not matter. What is important is that the Respondent must have known that internet users seeking information about the Complainant’s products would then find themselves at a website upon which goods and services unrelated to the Complainant were advertised.
6.17 In the circumstances, the Panel finds the use of GoDaddy’s domain name parking service was a bad faith use of the Domain Name.
6.18 If that were the extent of the evidence before the Panel in this case, that would be the end of the matter. The Respondent’s knowledge of the Complainant’s interest in, and fame of, the Pink Batts name, combined with subsequent bad faith uses of the Domain Name would ordinarily be sufficient to allow the inference that the Domain name was also registered in bad faith. Exactly, what the Respondent’s intention was at the time of registration approximately 4 years ago may not have been known but the recent uses were such that it is reasonably possible to infer it was with this or at least a similar use in mind that took unfair advantage of the reputation and goodwill in the name.
6.19 However, here the Complainant contends something slightly different. It maintains that the Respondent registered the Domain name for Cosy Insulation. For the Complainant to allege this is unsurprising. As the Complainant explains, the Respondent had also registered the domain name <pinkbatts.com.au> for Cosy Insulation. This allegation is also reasonably consistent with the Respondent’s own words in the email she sent to the Complainant’s New Zealand licensee and in which she stated that she “originally purchased the domain name for a company that [she] was creating a website for”.
6.20 This adds a slight complication in that Cosy Insulation appears to have been a seller of genuine Pink Batt products. Whilst the issue remains controversial at least in relation to non-authorized resale arrangements, a majority of panels have held that a reseller of genuine products can in certain specific circumstances have a legitimate interest in a domain name that incorporates the name of those products (the point is discussed in some detail in paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions and in Oki Data Americas Inc v ASD Inc WIPO Case No. D2001-0903). If Cosy Insulation might have had a legitimate interest in use of the Domain Name, would it not follow that any registration of the Domain Name with Cosy Insulation in mind cannot have constituted bad faith registration?
6.21 However, this suggestion can be quickly dismissed. Even had the Respondent sought to raise this argument (and she does not) it would fail for the following reasons:
(i) Merely registering the Domain Name with possible use by a legitimate user in mind in this case would not be sufficient. The Respondent would need to show that the Domain Name had been registered at Cosy Insulation’s request. The Respondent does not do so and the evidence suggests otherwise. The Domain Name was registered in the name of “NA” and not the company. The Respondent at all times has claimed that she “owns” the Domain Name. In her email to the Complainant’s New Zealand licensee, she states that Cosy Insulation did not want the Domain Name. The Respondent also now appears to deny that the registration had any connection with Cosy Insulations. Instead, she maintains that she registered the Domain Name for her own “personal use”. Whilst she effectively admits that she registered another domain name for Cosy Insulations, this she claims is “irrelevant” to the current registration
(ii) Where an entity intends to argue that it is entitled to use a domain name in relation to genuine products it is incumbent upon that entity to bring evidence before the panel to the effect that the domain name has been, or will be, used in a manner that satisfies the conditions of use laid down in Oki Data. The Respondent has brought no such evidence before the panel in this case.
6.22 In summary, the evidence, such as it is, of the intentions of the Respondent at the time of registration, does not detract from the Panel’s conclusion that absent such evidence, the Domain Name was registered with an intention on the part of the Respondent to take advantage in some manner of the Complainant’s reputation and goodwill in the PINK BATTS name. In the circumstances, the Panel accepts that this registration was in bad faith.
6.23 Lastly, there is the issue of the use by the Respondent of false registration details. The evidence here is not exactly overwhelming. Whilst “NA” is obviously not the Respondent’s real name it appears that she did use her genuine address. Further, the Respondent is clearly named as both the technical and administrative contact for the Domain Name. Therefore, this does not appear to be a case where the Respondent has gone to any great lengths to disguise her identity. However, the fact that the Respondent has avoided using her real name and in the absence of any satisfactory explanation from the Respondent as to why she did not do so, the Panel accepts that this is another factor that weighs (albeit not particularly heavily) in favour of a finding of bad faith.
6.24 In the circumstances, the Claimant has made out the requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <pinkbatts.com> be transferred to the Complainant.
Matthew S. Harris
Dated: October 1, 2007