WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TKS, S.A. v. Huang Li Technology Corp.
Case No. D2012-2367
1. The Parties
1.1 The Complainant is TKS, S.A., Brussels, Belgium, represented by V.V. Dehin & Associés, Belgium.
1.2 The Respondent is Huang Li Technology Corp. Initially the address provided for the respondent was c/o PO Box 701, San Mateo, California, United States of America. More recently information provided by the Registrar suggests that the Respondent is based in Shenzhen, China.
2. The Domain Name and Registrar
2.1 The disputed domain name <ice-watches.com> (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2012. The WhoIs details accompanying that complaint were dated October 23, 2012, and showed that at that date registrant of the Domain Name to be “Huang Li Technology Corp, c/o Dynadot Privacy”. The address provided for the Respondent was a PO Box number in California, which appears to be the address for the Registrar’s privacy service. However, these WhoIs details also recorded that the Domain Name would “expire” on November 22, 2012.
3.2 On November 30, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 2, 2012, the Registrar transmitted by email to the Center its verification response stating that the registration had expired, the “respondent was the Registrant when the [Domain Name] expired” and that the current Whois data recorded the registrant as “Pending Renewal or Deletion”.
3.3 On December 3, 2012, the Center noted that the Domain Name had expired and the current WhoIs details and asked for confirmation that the Domain Name had been “placed in Registrar Lock status” and requesting that the Registrar confirm:
“whether any action is required by the parties (either now by the Respondent, or by the Complainant in the event that the [D]omain [N[ame is deleted or expires during the dispute) to keep the [D]omain [N]ame under Registrar LOCK so that the administrative procedure can continue as required under the UDRP”
3.4 The Registrar responded on December 5, 2012, that “[t]he [Domain Name] will remain locked until the proceedings are comleted” had been done and that “[n]o action is necessary by either party to keep the domain locked”.
3.5 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”).
3.6 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 December 14, 2012.
3.7 In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2013.
3.8 On January 16, 2013 the Center sent an email to the Registrar attaching a screenshot taken from the publically available WhoIs data then available which suggested that the Domain Name had entered into its redemption period and was not locked. It sought an explanation. The Registrar responded in two separate emails the same day. In the first it contended that the Domain Name was still registered with it. In the second, it stated that the Domain Name was in the “redemption period”. In that second email it added:
“The UDRP policy doesn't seem to require that we keep the domain active or registered during a UDRP proceeding. In fact, it allows that a domain may expire or be deleted during a proceeding, especially if the domain is close to expiration.
Your emails to us in early December support this belief, as you sent this section from the UDRP policy in an email on December 5, "the Complainant in the UDRP dispute will have the option to renew or restore the name under the same commercial terms as the registrant."
The UDRP policy seems to, allow the Complainant the option to renew and/or restore the domain under the same policies the Registrant has. They (the Complainant) have not contacted us in order to exercise this option.”
3.9 On January 17, 2013, the Center sent a further email to the Registrar. It pointed out that under the ICANN Expired Domain Deletion Policy and in particular paragraph 188.8.131.52 of that Policy that provides if a domain name expires or is deleted in the course of a UDRP dispute, the complainant in the UDRP dispute has the option to renew or restore the name under the same commercial terms as the registrant. It also referred to its email to the Registrar of December 3 and December 5, 2012 and reminded the Registrar that on December 5, 2012 the Registrar had stated that nothing further was required of the parties in this respect at that time.
3.10 By January 22, 2013, the Center had heard nothing further from the Registrar and it sent an email to the parties stating that urgent action might be necessary to ensure that the Domain Name was renewed and recommending that the parties contact the concerned Registrar as soon as possible in that regard.
3.11 On January 26, 2013 the Registrar sent an email to the Center stating that the Complainant had contacted it but it had “not completed the steps required to restore the [D]omain Name”. This email was forwarded by the Center to the parties on January 28, 2012.
3.12 On February 1, 2013 the Registrar confirmed that the Domain Name had been restored. At that point or shortly thereafter the WhoIs details for the Domain Name changed to recorded the registrant as Huang Li Technology Corp with an address in Shenzen China.
3.13 The Center appointed Matthew S. Harris as the sole panelist in this matter on February 6, 2013. 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.
3.14 Shortly prior to the date that the Panel was due to give a decision in this matter, it was informed by the Center that it had come to its attention that the Respondent although provided with a copy of the Complaint had not been provided with copies of some of the Annexes to the Complaint.
3.15 Accordingly on February 20, 2013 the Panel issued a Procedural Order. In that Order it noted that the missing annexes would have been apparent to the Respondent and that the Respondent had not made any complaint about this. It also recorded that it had formed the preliminary view as follows:
- the failure to provide certain annexes to the Respondent is a procedural irregularity that can be remedied by the Panel suitably exercising its powers under paragraph 10 of the Rules;
- the missing annexes should be provided to the Respondent and the respondent given an opportunity to indicate to the Center whether it wishes to submit a Response in light of the same;
- if the Respondent wishes to file a response, further directions should then be given by the Panel as to the manner and circumstances in which that response can be filed;
- in the absence of any such indication from the Respondent the Panel can and should proceed to issue its decision in this matter.
3.16 The Procedural Order also instructed the Center to send a further copy of the Complaint, together with all Annexes, to the Respondent and giving it an opportunity to indicate whether it wished to file a Response in light of this material and/or otherwise address the issues raised in the Procedural Order. The Procedural Order also extended the time for the issuing of a decision in this matter to February 25, 2013.
3.17 The Respondent did not inform the Center that it wished to participate further in the proceedings. Accordingly, the Panel has proceeded to issue a decision in this matter.
4. Factual Background
4.1 The Complainant is a company registered in Belgium which deals in watches. It currently sells “up to 250,000 pieces per month” and its watches are sold in more than 80 countries in over 8,000 outlets. It products have since 2008 featured in numerous magazines and other publications.
4.2 The Complainant is the owner of various registered trade marks around the world that incorporate the words “ICE WATCH” in a figurative device in the following form:
4.3. These marks include (i) Chinese Trade Mark Registration No 01330713 in class 14 effective from October 1, 2008; and (ii) registrations in class 14 in various countries deriving from International Trade Mark Registration No 1029087 dated January 7, 2010. Some of these marks are subject to forms of reservation. For example, the certificate for the Chinese trade mark states that “the term ‘WATCH’ is not within the right of exclusive use of the trade[ ]mark”.
4.4 The Complainant operates a website from the domain name <ice-watch.com>.
4.5 The Domain Name was registered on November 22, 2009. As at around the date of the Complaint, if not earlier, the web page displayed from the Domain Name has borne all the hallmarks of being a “pay per click” web page. The “related searches” listed on the left hand side of the page included “Ice Watches” and “Montre ICE WATCH” and various other terms with a watch connection.
4.6 As at the date of this decision a similar “pay per click” web page is operating from the Domain Name.
5. Parties’ Contentions
5.1 The Complainant relies upon various registered trade marks. In the list of the Complainant’s marks relied upon is a Community trade mark registration No. 005549209 for the word term “icewatch” in class 14, which was applied for on December 13, 2006 and proceeded to registration on August 31, 2012. However, this trade mark is registered in the name of ICE IP S.A. No explanation is provided as to the connection between ICE IP S.A and the Complainant.
5.2 The Complainant also appears to rely upon a number of trade mark applications that the Complainant contends can be “taken into account” as unregistered trade marks for the purposes of these proceedings. In this respect it relies upon the decision in S.N.C. Jesta Fontainebleau v. Po Ser, WIPO Case No. D2009-1394 and then contends that (a) the Complainant’s watches “enjoy a great reputation all over the world under [the] sign ICE-WATCH; (b) that the Respondent’s use of the Domain Name and its associated website would cause deception in the marketplace; and (c) the Complainant is likely to suffer damage as a result.
5.3 It further contends that its trade mark is “totally included in the domain name” and relying on various decisions including The Price Company v. Price Club, also known as Tsung-Pei Chang, WIPO Case No. D2000-0664, it maintains that there is a “dramatic likelihood of confusion” between the Domain Name and the Complainant’s marks. It also claims that confusion will arise from the content of the website operating from the Domain Name.
5.4 The Complaint states that the Respondent does not have any rights or legitimate interests in respect of the Domain Name and in particular that the Respondent’s activities do not fall within any of the circumstances listed in paragraph 4(c) of the Policy.
5.5 As to the issue of bad faith, the Complainant claims that the Respondent “knew, or at least ought to [have] known [about] the existence of the reputed trade marks of the Complainant”. It refers in this respect to the Community Trade Mark in the name of ICE IP S.A. and the fact that this was registered in 2006. It also claims that the Respondent is seeking to take unfair advantage of confusion with the Complainant’s marks. In particular, it contends that the Complainant’s marks were “the very reason why the Respondent chose to register the domain name and to build a website redirecting to possibly counterfeited goods.” Further, it maintains that the Respondent has intentionally attempted to attract for commercial gain Internet users to the Respondent’s website by creating “a likelihood of confusion with the Complainant’s reputed trade marks as to the products referred by the Respondent’s website”.
5.6 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of any person to lodge a Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark 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 Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
A. Procedural Issues
6.4 This case is unusual in that proceedings were commenced after the Domain Name had expired, in the sense that it had entered the “Redemption Grace Period”, but before it had entered in the “Redemption Period”.
6.5 Paragraph 184.108.40.206 of the ICANN Registrar Accreditation Agreement (the “RAA”) provides:
“In the event that a domain which is the subject of a UDRP dispute is deleted or expires during the course of the dispute, the complainant in the UDRP dispute will have the option to renew or restore the name under the same commercial terms as the registrant. If the complainant renews or restores the name, the name will be placed in Registrar HOLD and Registrar LOCK status, the WHOIS contact information for the registrant will be removed, and the WHOIS entry will indicate that the name is subject to dispute. If the complaint is terminated, or the UDRP dispute finds against the complainant, the name will be deleted within 45 days. The registrant retains the right under the existing redemption grace period provisions to recover the name at any time during the Redemption Grace Period, and retains the right to renew the name before it is deleted”.
6.6 The intent seems to be that if a domain name is going through the expiry or deletion process whilst UDRP proceedings are ongoing, a complainant is able to step into the shoes of the respondent and take such steps as are necessary to stop this happening. Unfortunately, what event constitutes “expiry” or “deletion” for the purposes of Paragraph 220.127.116.11 of the RAA is far from clear. For example, is expiry the point at which it enters the “Redemption Grace Period” or the “Redemption Period”? There are other aspects of the wording of the paragraph that are not ideal. In particular, rather being triggered by a certain status of a domain name, it appears to require the event of expiry or deletion to take place before the complainant can take advantage of this provision.
6.7 Matters were further complicated in this case by the Registrar somewhat unhelpfully suggested to the Center that even though the Domain Name had already entered the ”Redemption Grace Period” , “no action is necessary by either party to keep the [D]omain [Name] locked” when this was not the case. Luckily, the fact that the Domain Name had passed into the redemption period was spotted due to the vigilance of the Center and the Domain Name was then reactivated and placed on hold, so that the Panel may render its decision in the matter.
B. Identical or Confusingly Similar
6.8 The Complainant owns various registered trade marks around the world for a device that for the most part comprises the words “ice” and “watch” in combination, with the term “ice” in larger letters placed on top of the word “watch”. Those words are present in their entirety in the Domain Name which can only be sensibly read as the words “ice” and “watches” in combination with the “.com” TLD. The term “watch” is obviously descriptive of many of the goods in respect of which the Complainant’s marks are registered but that cannot be said of the term “ice” with which it is combined. In the circumstances, the Panel holds that the Domain Name is confusingly similar (as that term is understood for the purposes of the Policy) with a number of trade marks in which the Complainant owns rights.
6.9 The Domain Name is also confusingly similar to the Community trade mark registration no. 005549209 for the word “icewatch”, and presumably ICE IP S.A. is in some manner connected with the Complainant. However, in the absence of any explanation from the Complainant as to what that connection is, the Panel places no reliance on that mark for the purposes of these proceedings.
6.10 Similarly, the Panel rejects the Complainant’s contention that it can rely upon its trade mark applications as rights for the purposes of the Policy. The Complainant contends that this is linked to it claim to unregistered rights, but the question of whether an entity has unregistered trade marks rights and has made an application for a registered trade mark are logically distinct.
6.11 The Complainant’s contention that it has unregistered trade mark rights is more difficult and at times a little confused. The Complaint appears to be arguing (based on a reading of the S.N.C. Jesta Fontainebleau case) that it is appropriate to apply the English law test for passing off action and this test would be satisfied in this case in respect of the Complainant’s worldwide activities. This confuses the question of whether the Complainant has sufficient goodwill in a term to enable it to bring an action in passing off (which would be the test that would determine whether there are “unregistered trade mark rights” under English law for the purposes of the Policy), with whether in a particular set of circumstances, passing off has actually occurred.
6.12 More fundamentally, there is no such thing as a test for worldwide unregistered trade mark rights. There either are or are not rights in a specific jurisdiction that amount to unregistered trade mark rights for the Policy.
6.13 In determining whether such rights exist in any particular jurisdiction, most UDRP panelists have adopted a relatively liberal approach. As the S.N.C. Jesta Fontainebleau case that the Complainant cites makes clear, unregistered trade mark rights for the purposes of the Policy are not restricted to common law jurisdictions where some form of claim in passing off is possible. As the panelist in that case stated:
“In a civil law jurisdiction such as France, the Panel believes that the Complainant could achieve a result comparable to that available under an action for passing off by way of an unfair competition action, provided of course that it could prove a reputation and goodwill in respect of the name, the deceptive activity of the defendant and the likelihood of damage. In other words, albeit by way of a somewhat different route, the Complainant's rights in respect of its name are potentially no different from those of a trader in a common law jurisdiction.”
6.14 It is an approach which is driven by an understandable desire to ensure given the global nature of the UDRP that business based in civil law jurisdictions are not placed at a significant disadvantage under the Policy in comparison to their common law counterpart1. Nevertheless, in this Panel’s opinion it is going too far to decouple the concept of “trade mark rights” for the purposes of the Policy from any national foundation. Ultimately, if unregistered trade mark rights are claimed, a complainant must be able to point to at least one jurisdiction in which it has in one form or another rights.
6.15 The Panel suspects that such unregistered trade mark rights for the purposes of the Policy exist in at least one if not a number of states in this particular case. The Complainant’s business activities appear to be substantial and extend across numerous countries. However, the Complainant does not go so far as to identify the extent of its operations in this or any other country, or why it is under the laws of any particular state unregistered rights exist. In the absence of any further explanation the Panel declines to consider the question of unregistered rights any further. This is not necessary in this case given the Panel’s findings so far as the Complainant’s registered rights are concerned.
6.16 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
6.17 It is reasonably clear in this case that the Domain Name is being used by the Respondent in connection with a “domain name parking” or “pay-per-click” service. It is possible for use of a domain name for a parking site with advertising revenue generating sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a registrant intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a third party’s rights and reputation in that term, then it may have a legitimate interest in the domain name (see paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). On the other hand, if the owner of the domain name in question is using it with such a service in order to unfairly capitalise upon or otherwise take advantage of a similarity with another’s mark then such use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267). Indeed, such a finding is a positive indicator of the fact that no rights or legitimate interests exist (see Premier Farnell Corp. v. BlueHost.com, Bluehost Inc / Newark del Peru S.A., WIPO Case No. D2010-2111).
6.18 Essentially, therefore, in this case the assessment of rights or legitimate interests boils down to the question: is the Respondent using the Domain Name with the Complainant’s marks in mind and with a view to taking unfair advantage of the reputation of those marks?
6.19 This is a question that is addressed in greater detail when assessing the question of bad faith. For the reasons that are explained under that heading below, the Panel has reached the conclusion that the Domain Name has been both registered and used with a view to taking unfair advantage of the reputation of the Complainant’s trade marks. In the circumstances, the Panel also finds that the Respondent has no rights or legitimate interests in the Domain Name. Accordingly, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
6.20 At various stages in its Complaint, the Complainant suggests that the Domain Name is being used to further sales of counterfeit watches under the Complainant’s mark. Registration and use of a domain name for such a purpose would undoubtedly be registration and use in bad faith.
6.21 However, the Complainant’s allegations in this respect are somewhat equivocal. For example the Complainant contends at one point that the “Respondent chose to register the [D]omain [N]ame and to build a website redirecting to possible counterfeited goods”. Also there is no evidence of and little reasoning offered as to why this is the case.
6.22 In fact, the webpage screenshots provided by the Complainant suggest that the current and recent uses of the Domain Name have been somewhat more mundane. In particular, the pages in question displayed various “related searches” and “sponsored listings”, which are consistent with the use of a “pay-per-click domain name parking” or “pay-per-click” service. How these sorts of website operate is now well known. If Internet users click on the sponsored listings, this will normally generate a small payment for the entity generating the parking page that may be shared with the domain name owner.
6.23 Given that there is no evidence before the Panel to suggest that the term “ice-watches” might have any generic or descriptive meaning that is not associated with the Complainant’s mark and business, the Panel concludes that the Domain Name is currently being used in a manner to take advantage of the reputation of the Complainant’s marks to attract Internet users to that page in the hope that some of those users would click on those links and thereby generate revenues. Such use in this case falls with the scope of paragraph 4(b)(iv) of the Policy and constitutes use in bad faith.
6.24 The Domain Name was registered over three years ago and there is no evidence before the Panel as to how it was initially used at the time of registration. However, the nature of the Domain Name and the current use suggest that it was registered either with such pay-per-click use in mind or some other use that sought to take unfair advantage of the Complainant’s trade marks.
6.25 In the circumstances the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <ice-watches.com> be transferred to the Complainant.
Matthew S. Harris
Date: February 25, 2013
1 It appears to the Panel to now represent the majority view among panelists. Accordingly, it would appear that in practice the UDRP now effectively provides protection for trade names, notwithstanding that the suggestion that the UDRP be expressly modified to provide such protection was rejected in the Report of the Second WIPO Internet Domain Name Process published by WIPO in September 2001.