WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Masai Clothing Company ApS v. Ashantiplc Ltd.
Case No. D2012-0271
1. The Parties
Complainant is Masai Clothing Company ApS of Copenhagen, Denmark, represented by Zacco Denmark A/S, Denmark.
Respondent is Ashantiplc Ltd. of Hong Kong, SAR of the People's Republic of China, represented by John Berryhill, Ph.d., Esq., United States of America.
2. The Domain Name and Registrar
The disputed domain name <masai.com> is registered with Backslap Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2012. On February 13, 2012, the Center transmitted by email to Backslap Domains, Inc. a request for registrar verification in connection with the disputed domain name. On February 14, 2012, Backslap Domains, 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 February 20, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On the same date, Complainant filed an amended Complaint.
The Center verified that the Complaint together with the amended 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 February 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response March 13, 2012. The Response was filed with the Center on March 13, 2012.
On March 19, 2012, Complainant sent an email communication to the Center, requesting the right to respond to the Respondent’s allegations.1 On March 19, 2012, Respondent submitted its objection to Complainant’s request to make a supplemental filing. On the same date, the Center acknowledged receipt of Complainant’s request and Respondent’s objection, and informed the parties that the Complainant’s email communication as well as the Respondent’s objection would be forwarded to the Panel, once appointed, for its consideration.
The Center appointed Nasser A. Khasawneh, Knud Wallberg and Sir Ian Barker as panelists in this matter on April 30, 2012. 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.
On May 1, 2012, Complainant submitted an additional request to file a supplemental pleading to address the Response.2 On the same date, Respondent submitted an objection to Complainant’s request. The Center acknowledged receipt of the parties’ communications and noted that the request would be forwarded to the Panel for its sole discretion. The Panel addresses the question of supplemental pleadings below.
4. Factual Background
Complainant is owner of the trademark MASAI with a number of international registrations including, for example Community Trademark Registration No. 000619981 in Classes 3, 24 and 25 with a registration date of February 22, 1999. Complainant’s Community Trademark includes seniority grant dates from several European countries dating from the early and mid 1990s.
The disputed domain name was originally registered on May 15, 2000. It currently routes to a website posting directory links to sites related to Africa and travel.3
According to archives available at “www.archive.org”, the website in 2000 advertised a Chicago-based software services company named “Masai Management.” From 2001 to 2005 the website displayed instead text-generated directory links referring to a number of categories (often travel related). In September 2005, the website displayed an African animal scene banner, then later in 2005, the site displayed numerous links relating to African travel destinations. Near the end of 2005, there are no available archives. In later years, there is an indication that the site was not crawled by the Internet Archive’s Wayback machine, due to the existence of robot.txt files.
Screen captures of the website on September 15, 2008 show a photo of what appears to be African tribes-people, with a search box, an appearance that is consistent until September 2009. Online archives of the website after 2009 are not available to the Panel at this time.
5. Parties’ Contentions
Complainant avers that it has operated a clothing design, production and sales company using its MASAI trademark since the mid-1980s and that its products are sold in Australia, Belgium, Denmark, Estonia, Finland, France, Germany, Greece, Iceland, Ireland, Italy, Netherlands, Norway, Portugal, Russia, Spain, Sweden, Switzerland, the United Kingdom and the United States.
In its legal allegations, Complainant contends, first, that the disputed domain name is identical or confusingly similar to the MASAI marks.
Second, with respect to rights or legitimate interests, the Complaint borrows heavily from the language of the Policy paragraph 4(c), without reference to particularized facts. The Complaint’s allegations addressing rights or legitimate interests are brief, therefore set forth verbatim:
“The Respondent has no known rights or legitimate interests in respect of the disputed domain name. There is no evidence of the Respondent’s 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.
“There is no evidence that the Respondent has made any legitimate use of the name ‘MASAI’ as a trademark or service mark, nor is there any evidence that the Respondent is commonly known as ‘MASAI’.
“The Complainant has not authorized or licensed the Respondent’s use of its MASAI trademark.”
Finally, respecting bad faith under the Policy, Complainant contends that the use of the disputed domain name in connection with pay-per-click links to women’s fashion clothes is prima facie evidence of bad faith.
The Complaint appends as Annexes 8 and 9 pages allegedly taken from Respondent’s website. The Complaint appears to suggest that the annexes show Respondent’s web pages as they appeared at the time the Complaint was filed.
One of these unlabeled, undated annexes appears to show a computer screen with many visible collapsed window tabs; Respondent’s website is open in a browser (presumably the home page at <masai.com>), displaying ten directory links and a search box. Five of the links relate to Africa, safaris or the Masai; one link reads “Barefoot Shoes”; two links are called out with arrows in the exhibit, highlighting entries that state “Womens Fashion Clothing” and “Fashion Women Clothing”; and the rest are related to exercise or footwear.
The other annexed web pages display sponsored directory listings, with the date of screen capture apparently generated by the browser at the bottom of the screen prints (February 13, 2012, shortly before filing of the Complaint). The Panel infers these to be the pages to which the women’s fashion clothing links on the other annex presumably direct users. The first page displays a first column listing general directory entries related to clothing, Africa and travel, in some cases mentioning “safaris” and “Masai.” The second column, which continues throughout the four pages of the exhibit consists of sponsored listings relating to fashion clothing.
Complainant contends that Respondent’s use of the disputed domain name disrupts Complainant’s business and that Respondent is intentionally attracting Internet users to its website by confusing consumers for commercial gain.
On the basis of these allegations, Complainant requests that the disputed domain name be transferred.
The Response does not address the question of identity or substantial similarity, noting instead that Complainant has adopted as its trademark the name of an African tribe of “high repute.”
The Response explains that the Masai are well known for their physical fitness, long distance running and barefoot running. The Response states that “[o]ne might gather from the outset that the Respondent has a particular interest in African tribes, given that the Respondent’s corporate name is itself derived from the “Ashanti“ Respondent also alleges that around the time Respondent acquired the disputed domain name, it also acquired registered trademark rights in the USA to the mark ASHANTI (the name of another African tribe) for use in connection with jewelry and perfume.4
Respondent avers that it acquired the disputed domain name in December 2005 on the secondary market. Respondent avers that over a period several years “prior to notice of a dispute” and before Complainant’s “snapshot taken just prior to filing of the Complaint,” the disputed domain name routed to a website displaying links that were indirectly related to the Masai tribe, not to clothing.
Denying any intention to register or use the disputed domain name in bad faith, the Response states that “[a] recent change in service providers by the Respondent caused a brief and incidental display of subject matter relating to clothing among the other Africana in evidence in the screenshot provided by the Complainant.” Respondent also avers that once the clothing-related links were brought to Respondent’s attention, the website was changed to eliminate those links.
Respondent states that “the historical record of use of the domain name is documented by the Internet Archive, beginning long prior to notice of this dispute, in September 2008 and forward, as shown in Exhibit C, until mid-2010. While the Archive rendering of the page appears to be incomplete, it can be clearly seen that for the two years for which data is available, the most prominent feature thereof is a photograph of Masai tribesmen, and the suggestion to search for information in relation to the Masai.”5 Respondent also notes that the header graphic of the screen display in Annex 8 to the Complaint, which shows African game and earthenware, “is obviously intended to be suggestive of subject matter relating to Africa, and not to clothing.”
Finally, Respondent contends that cases under the Policy have denied finding bad faith registration in appropriate cases involving the inadvertent display of links to competitors of a Complainant, citing Experimental Aircraft Association (EAA) v. EAA.COM, NAF Claim No. 0310000206309, Boutique Tristan & Iseut Inc. v. B & B, WIPO Case No. D2007-1816, and Costas Spiliadis v. Nicholas Androulidakis NAF Claim No. 0708001072907.
6. Discussion and Findings
A. Supplemental Filings
The Panel has considered the parties’ respective submissions (described above) respecting Complainant’s request to make supplemental filings. On May 4, 2012, the Panel denied Complainant’s requests.
Under the UDRP’s summary procedures, each party is entitled as of right to submit only one single pleading. Paragraphs 10 and 12 of the Rules grant the Panel discretion to determine the admissibility of supplemental filings, including further statements or documents.
Neither of the two requests by Complainant's counsel offered any compelling grounds for supplementing the record. There has been no indication that there are exceptional circumstances, new developments, arguments or evidence that were not available to Complainant before. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (discussing considerations to balance in determining whether exceptional circumstances exist sufficient to admit supplemental filings in light of the Policy’s overriding goal of efficiency), cited in Anachusa Ltd. v. Ashantiplc Limited / Ashantiplc Ltd., WIPO Case No. D2011-0005.
Complainant cited the length of the Response as a ground for submitting supplemental filings. However, as noted by Respondent in its objection to granting Complainant’s request, the Response contains only about half the number of words permitted under the Supplemental Rules, paragraph 11(b). The Panel is of the view that, having alleged that the disputed domain name was registered in 2000, Complainant should have anticipated that a key question would likely be Respondent’s use of the disputed domain name for several years before notice of this dispute.6
Even if there had been an offer of proof relating to new developments or other matters that could not have been included in the original Complaint, it is not a foregone conclusion that the Panel would have granted Complainant’s request because of the need to respect the summary nature of proceedings under the UDRP.
In light of the record that already exists without any supplemental filings, the Panel doubts that any further submissions by Complainant would materially impact the outcome of this proceeding.
B. Substantive Elements of the Decision
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a).
Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(1) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
C. Identical or Confusingly Similar
The Panel agrees with Complainant that the disputed domain name <masai.com> is identical to the MASAI marks in which Complainant has rights.
Panels disregard the gTLD suffix in determining whether a domain name is identical or similar to a complainant’s marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
The Panel concludes, therefore, that the Complaint establishes the first element of paragraph 4(a) of the Policy.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once the complainant has made a prima facie showing, the burden to come forward with evidence establishing rights or legitimate interests shifts to the respondent. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
Complainant in essence alleges that Respondent is taking advantage of consumer confusion by using Complainant’s trademark to attract Internet users to visit Respondent’s website. The Complaint contends that Respondent does not have legitimate interests because Complainant has not authorized Respondent to use Complainant’s trademarks, that Respondent is not commonly known by the disputed domain name, and that Respondent has used the disputed domain name to display links to competitors of Complainant in the field of clothing.
Complainant also alleges that “[t[here is no evidence of the Respondent’s ‘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’” (quoting directly from the language of Policy paragraph 4(c)).
Respondent does not dispute that Respondent is not authorized by Complainant and that Respondent is not commonly known by the disputed domain name; the Panel therefore accepts these facts as presented by Complainant.
However, Respondent contends that “prior to notice of this dispute . . . for a significantly long period of time, the domain name has been consistently configured and used in connection with material clearly intended to relate to the African tribe known as the Masai . ,. . . , which is further consistent with other commercial efforts of the Respondent. The Respondent, whose corporate name is itself a derivate of another well-known African tribe, has used the domain name in clear and evident connection with subject matter relating to the African tribe”.
The Panel accepts generally that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive term, even when the domain name is confusingly similar to a complainant’s registered mark. E.g., National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031.
However, that domain name must have been registered because of its attraction as a dictionary word or descriptive term, and not because of any value corresponding to a trademark; the use of the domain name must also be consistent with its attraction as a dictionary word or descriptive term. Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062. Consequently, in this proceeding, whether Respondent adopted and used the disputed domain name because of its trademark value or because of its descriptive value would determine the extent to which Respondent has a legitimate interest.
The evidence submitted by Complainant in the two annexes described above, consisting of Respondent’s use of a disputed domain name to display the two highlighted “women’s fashion clothing” links to competitors, could be seen to establish a prima facie case here. However, the determination of Respondent's intent in employing the disputed domain name -- whether for its trademark or for its dictionary value -- is also closely related to the question of Respondent's intention at the time that the disputed domain name was registered to Respondent. Johnson & Johnson v. Chad Wright, WebQuest.com, Inc., WIPO Case No. D2012-0010 (citing Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964). This is a question that the Panel must explore under the third element of paragraph 4(a) of the Policy.
As elaborated below, the Panel finds that the Complaint falls short of establishing that Respondent registered the disputed domain name in bad faith as required under Policy paragraph 4 (a)(iii). Therefore, the Panel refrains from ruling on whether the Complaint establishes a prima facie case and whether Respondent has proven the existence of rights or legitimate interests in the disputed domain name.
E. Registered and Used in Bad Faith
The Policy sets out four illustrative circumstances that evidence the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy:
(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The circumstances listed in paragraph 4(b) of the Policy are not exclusive, as paragraph 4(b) expressly provides. Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether there is no response to the complaint, a lack of active content appearing on the respondent’s website, concealment of identity, and other circumstances. See e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In the Panel’s view, the record suggests that the circumstances described in paragraph 4(b)(ii), 4(b)(iii) and 4(b)(iv) of the Policy are most relevant to this proceeding. In any case, however, for Complainant to prevail, it is well established that both the elements of bad faith registration and bad faith use must be shown. E.g., E. & J.Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615.
Displaying commercial links to competitors of a complainant is frequently found to be evidence of bad faith use by respondents in UDRP proceedings. See, e.g., mVisible Technologies, Inc. v. Navigation Catalyst Sys., Inc., supra; Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (citing Google, Inc v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400). Such links appear to be in evidence in Complaint Annexes 8 and 9, although the period of time during which those links were displayed is not clear.
Respondent contends that the links were generated by a third-party search result service provider. Respondent also appears to make the debatable assertion that a Respondent absolves itself of responsibility for the appearance of its website if a third party actually generates the content. Although Complaint Annexes 8 and 9 are ambiguously presented, the Response nonetheless concedes that “[a] recent change in service providers by the Respondent caused a brief and incidental display of subject matter relating to clothing.”
Based upon this concession, Complainant’s evidence, and other evidence bearing upon the appearance of the website during years prior to the time of Complainant’s Annexes 8 and 9, the Panel finds that there was a brief display of links on Respondent’s website that directed users to Complainant’s competitors in the recent past. Those links are no longer present.
Whether or not that recent display of links to competitors was a deliberate act for which Respondent has responsibility does not, in the Panel’s view, shed light on the question of bad faith registration nearly six and one-half years ago. The Panel appreciates that it can be difficult for a complainant to prove a respondent’s intention at the time of registration. A panel must often infer the respondent’s state of mind based on the totality of circumstances. Dell Inc. v. Derick Appert, WIPO Case No. D2005-0177; Ganesh Hegde v. Darshan Kapadia, WIPO Case No. D2009-0069. It remains the case, though, that the Complaint does not address the earlier appearance of Respondent’s website closer to the time of registration to Respondent, and makes no specific factual allegations respecting bad faith registration.
The only allegations touching on the element of bad faith registration are limited to the following: “It is held that the Respondent has registered and used the domain name to disrupt the Complainant’s business. The website is disruptive to the Complainant’s business since it results in potential customers being confused or misled into believing that the website is somehow affiliated with, or sponsored by, the Complainant.”
The Panel rules that the Complaint fails to establish bad faith registration directly, since it does not provide any evidence relating to bad faith registration. Likewise, although the Complaint alleges customer confusion and disruption to Complainant’s business, there is no evidence submitted to support these allegations. Further, the Complaint provides no evidence of the scope of public recognition for Complainant’s mark or any other circumstances that could potentially support the Panel making an inference of bad faith registration.
Unlike the case with a less descriptive trademark, it cannot be said in this case that there is little chance that Respondent was not aware of the trademark when registering, since “masai” is a dictionary word.7 And, even allowing the possibility that the trademark was known to Respondent at the time of registration, the registration could have been in good faith and for a legitimate purpose if Respondent’s use of a common word was intended to be descriptive, as explained above. See Johnson & Johnson v. Chad Wright, WebQuest.com, Inc., supra.
There is no proof that Respondent’s website referred to the MASAI trademark or advertised Complainant’s competitors for a number of years prior to the time of the Annexes 8 and 9 were prepared.8 The available proof from earlier periods shows that the website provided links indirectly related to the dictionary meaning of the “masai” term, before linking to Complainant’s competitors as shown in Annexes 8 and 9. 9 See 5B Investments, Inc. v. RareNames, WebReg, WIPO Case No. D2008-0146 (rejecting finding of constructive notice as a basis for bad faith registration where domain name was based on generic terms in light of evidence of use by respondent consistent with the term’s descriptive meaning).
As noted by another panel, “While a common or descriptive phrase may be a registered trademark and its owner surely may invoke the Policy based upon such a mark . . . that mark owner bears a heavier burden to establish that use of a similar phrase by another is illegitimate under paragraph 4(a)(ii) or in bad faith under 4(a)(iii).” PC Mall, Inc. v. NWPCMALL LLC, WIPO Case No. D2007-0420.
The Panel concludes that the Complaint fails for lack of evidence that the disputed domain name was registered in bad faith. The Complaint does not fulfill Complainant’s burden under Policy paragraph 4(a)(iii).10
For all the foregoing reasons, the Complaint is denied.
Nasser A. Khasawneh
Sir Ian Barker
Dated: May 10, 2012
1 Complainant’s counsel wrote: “I expect that my client would like to be granted the opportunity to file a response to the submission made by the Respondent. Please confirm that we may file such a response.”
2 “Considering the fact that the Respondent has submitted a lengthy response (20 pages with annexes), the Complainant hereby kindly asks for the Panel’s permission to submit a statement in response hereto.”
3 The Panel has undertaken limited research by visiting the website to which the disputed domain name routes, and archives of the website at <archive.org>, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 4.5. The appearance of the website in archives from September 2008 to September 2009 is consistent with its appearance and content in the screen captures annexed to the Response.
4 Exhibit B to the Response is a copy of Respondent’s registration to the ASHANTI mark, United States Trademark Registration No. 3,007,931 with a first use in commerce date of August 3, 2005.
5 The Panel notes that, contrary to Respondent’s allegations, Exhibit C does not visibly contain material referring to 2010 or any explicit suggestion to search for “information in relation to the Masai.” The webpages do contain a generic search box without more specific labeling.
6 Complainant’s other ground for submitting additional filings was to reply to the Response. A less exceptional circumstance for supplementing the pleadings in a UDRP proceeding would be difficult to image.
7 Compare Kahn Lucas Lancaster, Inc. v. Marketing Total S.A., WIPO Case No. D2007-1236 (“[i]t seems [highly] unlikely….that Respondent would have chosen this name [identical to complainant’s EMILY WEST trademark, used on children’s clothing] randomly.”)
8 In fact before, and at the time of acquisition of the disputed domain name by Respondent, the website was used as a general directory site displaying links related to Africa and travel.
9 The Panel notes its concern that the Complaint fails to acknowledge or address this earlier appearance of the website.
Archives show that the disputed domain name routed to a webpage with directory links to travel in Africa, while “masai” is a dictionary term describing a well-known tribe and frequent subject of interest for visitors to Africa. Thus, the Complaint’s allegation that “[t]here is no evidence of the Respondent’s 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” in the Panel’s view goes beyond the permissible realm of good-faith and reasonable argument under the Rules, paragraph 3(b)(xiv).
10 In light of this conclusion, it is unnecessary to address the element of good faith use any further.