WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hanover Company Store, LLC v. Domains by Proxy, Inc. / Martha Osborne
Case No. D2010-1182
1. The Parties
Complainant is Hanover Company Store, LLC of Weehawken, New Jersey, United States of America, represented by Ladas & Parry LLP, United States of America.
Respondent is Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America / Martha Osborne of Harvey, Louisiana, United States of America, represented by Robert Anderson, United States of America.
2. The Domain Name and Registrar
The disputed domain name <companystore.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2010. On July 19, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 20, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 21, 2010, providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 27, 2010. The Center verified that the Complaint, together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on July 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2010. The Response was filed with the Center on August 18, 2010.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on August 26, 2010. 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
Complainant Hanover Company Store, LLC is the owner of the online and catalog retailer “The Company Store”. Complainant began operating under the name “The Company Store” at least as early as 1974. Complainant’s product assortment includes a large selection of fashion bedding, home décor, and apparel for both adults and children.
Complainant owns a number of trademark registrations around the world that incorporate the term “Company Store”. These registrations include United States Trademark Registration Nos. 1,263,272, 1,284,377, and 2,573,439 for the mark THE COMPANY STORE. See Complaint, Annex E. The ‘272 registration lists a first use date of 1976 in connection with retail outlet and mail order services for articles of clothing and comforters.
Complainant registered the domain name <thecompanystore.com> on April 2, 1996, through which it offers its goods for sale. See Complaint, Annexes F and G.
Respondent registered the disputed domain name <companystore.com> on April 23, 1996, 21 days after Complainant registered <thecompanystore.com>. See Complaint, Annex A. The site at the disputed domain name remained inactive for nearly one decade. The domain name today resolves to a domain monetization site featuring pay-per-click links, some of which direct Internet users to websites of Complainant’s competitors. See Complaint, Annexes M-S. For example, the offending site directs users to web pages that offer various types of comforters for sale.
Complainant sent a cease and desist letter to Respondent Domains by Proxy, which forwarded the letter to Respondent, Martha Osborne. Respondent Osborne replied with an email address. Complainant followed up by sending an email seeking transfer of the disputed domain name; however, no reply was received.
5. Parties’ Contentions
Complainant asserts that the disputed domain name is confusingly similar to the THE COMPANY STORE mark. Complainant notes that the domain name <companystore.com> incorporates the distinctive portion of the THE COMPANY STORE mark in its entirety and that the addition of the gTLD “.com” serves no purpose in distinguishing the disputed domain name from THE COMPANY STORE since gTLDs are a functional necessity rather than an arbitrary trademark choice.
Complainant further notes that it owns trademark registrations for the mark THE COMPANY STORE worldwide and contends that these registrations demonstrate its rights in the mark under the Policy.
Complainant maintains that Respondent Martha Osborne has no rights or legitimate interests in the disputed domain name. Complainant indicates that it has not authorized, licensed, or consented to Respondent’s registration and use of a domain name incorporating the THE COMPANY STORE mark, or any confusingly similar variation of Complainant’s mark.
Respondent’s use of a confusingly similar domain name in connection with a pay-per-click site, Complainant argues, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Moreover, Complainant adds, there is no evidence that Respondent is commonly known by the disputed domain name.
With respect to the issue of “bad faith” registration and use, Complainant argues that Respondent’s use of a confusingly similar domain name in connection with its pay-per-click site, which directs users to websites that offer bedding and other home products for sale, violates paragraphs 4(b)(iii) and (iv) of the Policy. Complainant further contends that the requisite “bad faith” is established as a result of Respondent’s: (1) actual or constructive knowledge of Complainant’s trademark rights; (2) use of a proxy service to register the disputed domain name; (3) failure to reply to the cease and desist letter; and (4) registration of the disputed domain name a mere 21 days after Complainant registered the domain name <thecompanystore.com>.
Finally, Complainant recognizes that it opted to delay in bringing this Complaint, and contends that it did so for strategic purposes. However, Complainant argues, the equitable doctrine of laches is not applicable to proceedings under the Policy.
Respondent Martha Osborne notes that she currently owns 109 domain names, one-half of which are adoption-related. Respondent asserts that non-adoption-related sites were acquired with the intent of developing domain specific content.
Respondent points out that Complainant attempted earlier to register the disputed domain name and to purchase the domain name from Respondent. Respondent declined the offer. See Response, Annex A. Complainant then retained a law firm but dropped the matter four years ago when Respondent indicated there was a possibility of reverse domain name hijacking (“RDNH”).
Respondent indicates that Complainant has not registered the term “company store” and that the term “the company store” is a common one, used by many others. See Response, Annex E. Respondent further argues that there is nothing improper in utilizing the services of Domains by Proxy, that she has responded to Complainant’s demands on numerous occasions, that in order for an Internet user to access a site that sold bedding, nine links would have to be accessed,1 that the reason the disputed domain name was registered was because it could be used for a business site and was composed of common names.
Respondent emphasizes that she has been clear that the disputed domain name is not for sale, that her primary business is international adoption, that she has no interest in Complainant’s business, and that she only authorized her site with the understanding that no bedding would be featured.
Respondent, apparently, also contends that the doctrine of laches should bar relief in favor of Complainant and that, as a result of Complainant’s failure to include information that would establish Respondent’s “good faith” efforts in this matter, a finding of RDNH should be considered.
C. Supplemental Submissions
Both parties filed a Supplemental Filing.
Complainant contends that, to the extent Respondent argues that THE COMPANY STORE is generic, the evidence establishes that the mark is distinctive based on Complainant’s longstanding use of the mark in United States commerce for over thirty (30) years and that no evidence of genericness has been presented. Complainant asserts that “[i]t is of no bearing on this case whether other third parties have legitimate trademark rights in the terms `company store’ or whether the terms `company store’ could potentially have meaning outside of Complainant’s trademark rights.”
Complainant further contends that Respondent failed to establish “demonstrable preparations” to make a bona fide use of the domain name, within the meaning of paragraph 4(c)(i) of the Policy, and that even if a majority of the content accessible from the disputed site is not bedding-related, such fact is irrelevant where, as here, the evidence indicates that the disputed domain name redirects Internet users to the websites of Complainant’s competitors.
With respect to Respondent’s RDNH claim, Complainant contends there is no evidence that Respondent has any rights or legitimate interests in the disputed domain name, let alone that Complainant knew of such rights or interests, and that its limited contacts with Respondent do not amount to the level of “harassment” necessary for a finding of RDNH.
In her Supplemental Filing, Respondent reiterates that Complainant does not use the term “company store.” She also insists that she informed Complainant what the intended “future use” would be (see Response, Annex C) but had neither the time nor resources to develop the intended site. Respondent asserts that she engaged a third party to establish an interactive presence with the understanding that it would not be confusing to Complainant’s customers and she has no interest in competing with Complainant. See Response, Annex H.
On the issue of RDNH, Respondent maintains that Complainant did not include correspondence between Respondent and Complainant’s former legal counsel that would establish Respondent’s good faith. See Response, Annexes B and C.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name, <companystore.com>, is confusingly similar, if not identical, to the mark THE COMPANY STORE. As noted by Complainant, the domain name incorporates the distinctive portion of THE COMPANY STORE mark in its entirety. To the extent differences exist, they relate to non-distinctive matter and, thus, are insufficient to avoid a finding of confusing similarity.
The Panel further rules that Complainant has established rights in THE COMPANY STORE. The evidence reveals that Complainant has a number of registrations for such mark and has used the mark for over thirty (30) years. See Janus Interantional Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (Mar. 5, 2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity….”)
The fact that third parties may have trademark rights in THE COMPANY STORE does not defeat Complainant’s claim that it owns rights in the mark, as used on or in connection with particular goods and/or services. Moreover, there is no evidence in support of any assertion that Complainant’s mark is generic. Indeed, issuance of United States registrations for THE COMPANY STORE creates a presumption that the mark is valid. This presumption has not been rebutted by Respondent.
B. Rights or Legitimate Interests
The Panel finds that Complainant has met its burden of establishing that Respondent does not have rights or legitimate interests in the disputed domain name.
The evidence indicates that the disputed domain name, which is confusingly similar to Complainant’s THE COMPANY STORE mark, is used in connection with a website featuring pay-per-click links, from which Internet users may eventually access sites relating to products sold by Complainant’s competitors. While the term “company store” may be a common one, many common terms, as used on or in connection with goods and/or services, are protected as marks. APPLE, for computers, and SHELL, for an oil company, come readily to mind. Respondent does not appear to argue, nor does the Panel find, that, as used in connection with the disputed site, Respondent is making fair use of the term. There is no material on Respondent’s pay-per-click page indicating Respondent operates a “company store”, and there is no evidence of record of Respondent having undertaken demonstrable steps towards developing “company store”-related content for a website at the disputed domain name.
Based on the above, the Panel determines that it cannot be held that Respondent is using, or is engaged in “demonstrable preparations” to use, the disputed domain name in connection with a bona fide offering of goods or services. There also is no evidence that Respondent is commonly known by the domain name or is making a noncommercial use of the domain name.
C. Registered and Used in Bad Faith
The Panel concludes that the evidence supports a determination that the disputed domain name was registered and is being used in bad faith. The Panel concludes that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s site and/or with the goods found on such site, within the meaning of paragraph 4(b)(iv) of the Policy. See, e.g., Maricopa Community College District v. College.com, LLC c/o Jason Levine, NAF Claim No. FA536190 (Sept. 22, 2005). While there is evidence that Respondent may not have intended for bedding products to be sold on the pay-per-click links, the Panel notes that, under paragraph 4(b)(iv) the Policy, a likelihood of confusion as to the source of the site, in combination with intent for commercial gain, may be sufficient to result in a finding of bad faith registration and use. (“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 web site or location” (emphasis added)). Previous panels have also found that, particularly in the case of pay-per-click landing pages, a respondent will typically be found ultimately responsible for the content of its website even where generated by a domain sponsor’s technology. See e.g., Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448.
With respect to laches, the Panel finds that such a defense is not applicable under the Policy. See The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616 (Oct. 7, 2002) (“The Policy is part of the domain name registration agreement. The Administrative Proceeding is brought pursuant to that agreement, the issue for determination being whether the grounds set out in the Policy for transfer or cancellation have been established. There is no limitation period in the Policy. The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”)
D. Reverse Domain Name Hijacking
Based on the above, there is no basis upon which the Panel may find that Complainant used the Policy in bad faith in an attempt to deprive Respondent of the disputed domain name. Thus, Respondent’s claim of reverse domain name hijacking must be dismissed.2
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 <companystore.com> be transferred to Complainant.
Jeffrey M. Samuels
Dated: September 7, 2010
1 The Panel notes, however, that the home page of Respondent’s site features a picture of goods, apparently a couch or sofa, that are closely related to the goods sold under Complainant’s mark.
2 The Panel has reviewed the letters set forth in Annexes B and C of the Response, which Respondent relies upon in an effort to establish that Complainant’s failure to disclose such letters to the Panel supports a finding of RDNH. The letters, written by Respondent’s counsel to Complainant’s former counsel, state, in part, that Complainant had previously unsuccessfully attempted to use the dispute resolution policy adopted by Network Solutions, Inc. (NSI) in an effort to obtain transfer of the disputed domain name. However, as the February 21, 2006, letter from Respondent’s counsel points out, the UDRP was not developed at the time Complainant previously sought transfer of the domain name. The Panel takes notice of the fact that NSI’s policy was different from that set forth in the UDRP with respect to the requirements for transfer or cancellation of a domain name.