WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Guru Denim Inc. v. Ibrahim Ali Ibrahim Abu-Harb
Case No. D2013-1324
1. The Parties
The Complainant is Guru Denim Inc. of Vernon, California, United States of America (the “USA”), represented by Christie, Parker & Hale, LLP, USA.
The Respondent is Ibrahim Ali Ibrahim Abu-Harb of Riyadh, Saudi Arabia, self-represented.
2. The Domain Name and Registrar
The disputed domain name <truereligion.com> is registered with Domain.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2013. On July 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced July 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response August 14, 2013. The Response was filed with the Center August 14, 2013. The Complainant filed a supplementary submission and exhibit in response on August 19, 2013.
The Center appointed Alistair Payne, M. Scott Donahey and Dan Hunter as panelists in this matter on September 16, 2013. 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.
4. Factual Background
The Complainant is a clothing manufacturer that sells denim and sportswear under its TRUE RELIGION mark in very many stores throughout the United States and in 31 international stores. It commenced its business in California in 2002 and owns numerous trade mark registrations for or incorporating its TRUE RELIGION mark including, in particular, US word mark registration 3628973.
The Respondent registered the disputed domain name on November 11, 1998.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is identical to its TRUE RELIGION trade mark in respect of which it has various registrations as noted above. It says that its mark has attracted considerable repute since it commenced its business in 2002 and is now known throughout the United States and internationally.
The Complainant admits that the Respondent used the disputed domain name for several years prior to the commencement of the Complainant’s business and that it resolved to a website entitled “Understanding Islam”. It says that it was only when the Complainant’s mark became well known that the Respondent started using the disputed domain name to divert Internet users to its website by causing confusion with the Complainant’s trade mark, displaying “True Religion Jeans” and links to a “True Religion Men’s Store” and to a “True Religion Women’s’ Store” and pictures of the Complainant’s goods and to earn income from Amazon as an affiliate of its “www.amazon.com” website. The Complainant notes that the Respondent also used the metatags “jeans” and “clothes” in order to attract additional traffic to its website. Overall the Complainant says that the Respondent’s conduct does not amount to a bona fide provision of goods and services in relation to the disputed domain name, that it is not known by the “True Religion” name and that it is not making a noncommercial or fair use of the disputed domain name.
As far as bad faith is concerned the Complainant’s argument is essentially that the Respondent’s use amounts to conduct that fulfills the requirements of paragraph 4(b)(iv) of the Policy and that this is evidence of both registration and use under the Policy. The Complainant says that its argument to impute bad faith in this case is consistent with the requirement under the Policy that the registrant must not knowingly use the domain name in violation of applicable laws and that based on the circumstances as outlined above the Respondent had prior knowledge of the Complainant’s rights but nevertheless chose to use the disputed domain name to infringe the Complainant’s rights and that even though there was no initial registration in bad faith the Respondent’s subsequent conduct is sufficient to fulfill the requirements of the third limb of the Policy.
The Respondent says that the Complainant has been using the “True Religion Brand Jeans” mark as set out in the Complaint and on its website and that it first registered the “True Religion” mark in 2006 and further says that the Complainant only changed the brand on its website to “True Religion” a few days after lodging the Complaint which is indicative of the Complainant’s bad faith.
The Respondent submits that he registered the disputed domain name in 1998 well before the Complainant admits to having first started its business in 2002 and yet the Complainant proceeded with its use of “True Religion Brand Jeans” regardless when based on a simple Internet search it should have been aware of the Respondent’s presence and prior use. He says that he registered several domain names related to his religious interests and for the promotion of Islam in 1997, 1998, and 1999 and that one of these was the disputed domain name and that he pointed all of these domain names to his website “www.islam-guide.com” which is based on his book “A Brief Illustrated Guide to Understanding Islam”. In 2006 the Respondent says that he launched another website for the same cause which is “www.islamreligion.com”. In 2011, he launched a third site which is “www.newmuslims.com”. He submits that all of these sites are administered by him and they have original content and significant numbers of daily visits.
In 2009 the Respondent says that he noticed that the disputed domain name was receiving up to 1000 hits per day but that it appeared that these visitors were seeking the Complainant’s clothing brand. This factor negatively affected the statistics of page visits on his Islam based sites so he says that he stopped directing its traffic to his Islamic websites and started making use of it through Google’s Adsense program. He submits that the current “for sale” price of the disputed domain name at USD 380,000 is a reasonable price for a domain name that is attracting 1000 hits per day.
Essentially the Respondent submits that it cannot be said that he has no rights or legitimate interests in the disputed domain name in the circumstances of his initial registration and use of the disputed domain name and that he is not trying to confuse consumers or divert the Complainant’s consumers into assuming that there is some connection or affiliation between his website and the Complainant or its brand and that it is apparent to consumers on the site that it links to an Amazon shopping site, that he put a disclaimer on the site on August 13, 2013 and that the sign on the website that the disputed domain name is for sale makes it apparent that it is not owned by the Complainant.
The Respondent says that at best consumers are coming to his website of their own accord and that through the Amazon shopping link they are in fact being directed for the purposes of purchasing the Complainant’s own bona fide products and that this is inconsistent with the theory that he is trying to confuse Internet users and does not amount to infringement.
He submits that in all of these circumstances he did not register the disputed domain name in bad faith and that neither his use of the disputed domain name over a ten year period for religious purposes was in bad faith and nor is his current use in relation to the Amazon affiliate program which ultimately only benefits the Complainant by assisting in the selling of more of its genuine products. He further submits that the disputed domain name is not taking any share of the traffic that is coming to the Complainant’s official site from search engines, referral sites, or online ads as the disputed domain name is creating its own traffic from direct visitors.
The Respondent alleges that this is a case of reverse domain name hijacking on the basis that the Complainant should have known of its use and interest in the disputed domain name when it started its own business and that this Complaint is conceived to try and obtain the disputed domain name after the fact and that the Complainant even tried this tactic in October 2009 at a time when the Respondent had only used the disputed domain name in relation to its religious websites and content.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has, as noted above, various trade mark registrations around the world for or incorporating its TRUE RELIGION mark, including in particular US word mark registration 3628973. Accordingly, the Complainant owns trademark rights for the purposes of this element of the Policy. The Panel notes in passing that the Complainant’s TRUE RELIGION mark appears to have developed significant repute since it was first used in 2002 both in the United States and elsewhere and whether the Complainant has also used the mark “True Religion Brand Jeans” does not alter this finding.
The substantive element of the disputed domain name is identical to the Complainant’s TRUE RELIGION mark. As a result the Panel has no difficulty in finding that the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
Under the second element of the Policy it is incumbent upon the Complainant to make out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and it is then for the Respondent to rebut this case. The majority of the Panel is of the view that on balance the Complainant has not succeeded in making out its case under this element of the Policy.
In the majority’s view, the fundamental difficulty for the Complainant is that it is very difficult to argue that the Respondent has “no rights or legitimate interests” in the disputed domain name in circumstances that the Respondent registered the disputed domain name in 1998, some years prior to the commencement of the Complainant’s business and used it for the bona fide purpose of bringing traffic to various religious interest websites. This state of affairs was maintained for ten years until 2009, at which time according to the Respondent, the site was receiving very many hits per day of Internet users apparently seeking the Complainant’s increasingly popular clothing brand. The Respondent says that this upset his religious website statistics and that as a result he started making use of Google’s Adsense program and subsequently of an Amazon affiliate program advertising the Complainant’s branded products. He admits that there was a commercial aim in this change of approach and it appears that as a result of the increased traffic to the website he has also advertised the disputed domain name for sale for a substantial sum.
The fact remains however that the Respondent used the disputed domain name for bona fide noncommercial legitimate purposes to resolve to religious websites for around ten years. Considering that the Respondent registered the disputed domain name several years prior to the Complainant’s business establishment and for his own religious purposes, it is clear that he had every right to obtain such registration.
In spite of the Respondent’s subsequent use of the disputed domain name for commercial purposes and in a manner that by the Respondent’s own admission, attracts traffic as a result of the Complainant’s success, the majority finds that on balance and in the particular circumstances of this case it is not possible to say that the Respondent has “no” rights or legitimate interests in the disputed domain name as required under this limb of the Policy and therefore finds that the Complaint fails in relation to the second element of the Policy.
Even if the majority was wrong in this regard the majority finds that the Complaint would still fail under the third element of the Policy. Although it is strictly unnecessary to go further, the majority sets out its reasoning below.
C. Registered and Used in Bad Faith
There are broadly two views of the interpretation of the requirements for bad faith under the third element of the Policy, namely the “unitary” and the “conjunctive” views. A synopsis of these views and of relevant decisions is set out at section 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). Suffice it to say here that the majority subscribes to the “conjunctive” view or in other words that the plain literal meaning of the third element of the Policy is that both registration and use in bad faith must be found individually before the requirements of that element are fulfilled.
As set out above in Section B the Complainant acknowledges and it is clear from the evidence before the Panel that the disputed domain name was registered some years before the Complainant even started its business and that as a result there can be no question that the Respondent registered the disputed domain name with knowledge of the Complainant’s rights, even if there is evidence of much later use in bad faith. In this regard the majority takes a similar view to the panel in Validas, LLC v. SMVS Consultancy Private Limited, WIPO Case No. D2009-1413.
The majority’s view of registration in good faith is only reinforced by the exceptional circumstance in this case that the Respondent made an apparently bona fide noncommercial use of the domain name for ten years after registration. It was only after this time that the Respondent started taking advantage of the opportunity to earn pay per click type advertising income from the increasing amount of Internet traffic seeking out the Complainant’s business and website. Even though the Respondent’s subsequent use might be considered to be a diversion of Internet users for commercial purposes in terms of paragraph 4(b)(iv) of the Policy, the majority, similar to the approach of the panel in the Validas decision, does not consider that this provision can be interpreted to deem evidence of use in bad faith as evidence of both registration and use in bad faith in circumstances that there is clear evidence of good faith registration.
Neither does the majority consider that the warranty concerning good faith use in the registration policy operates to overrule the conjunctive requirement. It seems to the majority that if the drafters of the Policy had intended there to be no conjunctive requirement then they would have used different language, such as the term “or”, but they did not do so. Until ICANN sees fit to facilitate a change the majority thinks that this element of the Policy must be interpreted according to its plain and literal meaning and therefore in accordance with a conjunctive requirement. In the meantime if the Complainant considers that its rights are being infringed then it should look to its remedies under relevant national laws.
As a result the majority finds that the Respondent did not register the disputed domain name in bad faith and that the Complaint therefore must fail under the third element of the Policy. In view of the unusual factual circumstances of this case, including the Respondent’s more recent use of the disputed domain name for commercial purposes after its long period of noncommercial use and in view of the divergence in panel opinion on the interpretation of the third element of the Policy, the majority is not prepared to find reverse domain name hijacking on this occasion.
For the foregoing reasons, the Complaint is denied.
M. Scott Donahey
Date: September 27, 2013
Dissenting Opinion of Panelist, Scott Donahey
The majority begins the defense of the majority position on bad faith with the statement:
“Suffice it to say here that the majority subscribes to the “conjunctive” view or in other words that the plain literal meaning of the third element of the Policy is that both registration and use in bad faith must be found individually before the requirements of that element are fulfilled.”
This panelist disagrees that “the plain literal meaning of the third element of the Policy is that both registration and use in bad faith must be found individually before the requirements of that element are fulfilled.” The third element of the Policy should be read as a unitary one or should be found to be ambiguous. If the Policy were to state clearly that both bad faith registration and bad faith use must be found individually, it would read: “your domain name has been registered [in bad faith] and is being used in bad faith,” the bracketed portion would necessarily have to be added to the third prong of the test (Policy, paragraph 4(a)(iii)) in order to attain the “plain literal meaning” that the majority purports to find. As written the phrase “in bad faith” modifies “has been registered and is being used”, clearly suggesting that bad faith applies to the entire concept of registration and use, not separately to each. But this panelist concedes it is not as clear as it should be; indeed, it may be said to be ambiguous. Thus one needs to look at other provisions and to the legislative history to determine precisely what is meant.
One must first look at what the draftspersons chose to give as examples of bad faith registration and use. Paragraph 4(b) of the Policy, entitled “Evidence of Registration and Use in Bad Faith” [and not “Evidence of Registration in Bad Faith and of Use in Bad Faith”]. It gives four examples of circumstances, which “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” The first three examples of bad faith registration and use speak only of registration, and say nothing of use. Policy, paragraphs 4(b)(i), (ii), and (iii). How can evidence concerning only the state of mind of the registrant at the time of registration be evidence of bad faith registration and use, if one is required to prove both bad faith registration and bad faith use? The fourth example focuses only on the ultimate use of the domain name, without reference to registration. Policy, paragraph 4(b)(iv). How can evidence concerning only the subsequent use of the domain name be evidence of bad faith registration and use, if one is required to prove both bad faith registration and bad faith use? Not a single example given in the Policy involves both bad faith registration and bad faith use.
The majority sets up a dispute that does not exist between the majority and minority view. The minority view has never contended that one need only prove bad faith registration or bad faith use. That would be a conflict between a conjunctive and disjunctive view, a view which the minority has never held. Rather the dispute is that the majority treats bad faith registration and use as a binary concept. One must separately prove bad faith registration, than separately prove bad faith use. Under the majority view one must prove one plus one. The minority view treats bad faith registration and use as a unitary concept. One is required to prove that under all the facts and circumstances that the respondent is acting in bad faith by intending to profit from the good will developed in the complainant’s trademark. There is no arithmetical calculation required.
The majority cites the decision in Validas, LLC v. SMVS Consultancy Private Limited, WIPO Case No. D2009-1413 in primary support of that decision. The panel in Validas correctly pointed out that the panel in the first decided UDRP case, World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001, determined that a finding of bad faith required both evidence of bad faith registration and also evidence of bad faith use, and cited the Second Staff Report on Implementation Documents for the Uniform Domain Name Dispute Resolution Policy for that proposition, a proposition that was faithfully followed for years by UDRP panelists. This panelist cannot deny that this is true, because this panelist was also the panelist in World Wrestling Federation Entertainment, Inc. v. Michael Bosman, supra. It would have spared this panelist much abuse had this panelist maintained this original position, rather than acknowledging the contrary evidence in later legislative history which was unavailable in 1999 at the time decision in World Wrestling Federation Entertainment, Inc. v. Michael Bosman, supra was written. However, this panelist did discover this later available legislative history, which contradicted the view of the Second Staff Report, and this panelist could not ignore it.
In any event this panelist believes that the subsequent legislative history, as set out most recently in the dissent in A. Natterman & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc. WIPO Case No. D2010-0800, should not be ignored, but rather should be considered by any panelist honestly confronting the debate between the traditional binary view of bad faith registration and bad faith use and the unitary concept of bad faith registration and use in the recent minority view. Therefore, I quote that portion of the dissent in the Natterman decision that concerns this later discovered legislative history:
“The minutes of the initial ICANN Board meeting includes a reference to the establishment of a “small drafting committee’ to assist in formulating the dispute resolution policy:
The President or his delegate should convene a small drafting committee including persons selected by him to express views and consider the interests of the registrar, non-commercial, individual, intellectual property, and business interests.
Internet Corporation for Assigned Names and Numbers, Minutes of Meeting of August 26, 1999, formally approved October 24, 1999, Resolution 99-83, at #2. The five members of the “small drafting committee” selected were (1) Kathryn A. Kleiman, of the Association for Computing Machinery’s Internet Governance Committee; Member DNSO Non-Commercial Domain Name Holders’ Constituency; Co-founder, Domain Name Rights Coalition; (2) Steven J. Metalitz, General Counsel, the International I.P. Alliance; Member, DNSO Trademark, Intellectual Property, and Anti-Counterfeiting Interests Constituency; (3) Rita A. Rodin, Skadden Arps, Slate Meagher & Flom, retained by AOL, a member of the DNSO Registrars Constituency; (4) A. Michael Froomkin, University of Miami School of Law; Former member, WIPO Panel of Experts; (5) J. Scott Evans, Adams Law Firm, P.A.; Member, International Trademark Association’s (INTA) Internet Committee; Chair, INTA DNS subcommittee. Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, posted September 29, 1999, corrected October 1, 1999.
The only record that this panelist was able to locate which references the work of this committee were two law review articles by Professor A. Michael Froomkin: Wrong Turn in Cyberspace, Using ICANN to Route Around the APA and the Constitution, 50 Duke L.J. 17 (2000) (“Duke Article”) and ICANN’s “Uniform Dispute Resolution Policy” – Causes and Partial Cures, 67 Brooklyn L.Rev. No. 3, 655 (2002) (the “Brooklyn Article”).[i]
Professor Froomkin states that the “small drafting committee was established in response to criticism arising from the DNSO Names Council forwarding the Working Group report to the ICANN Board for Approval. Brooklyn Article, at 652, n. 139. The person who represented the President was then ICANN Counsel Louis Touton. When the “small drafting committee” was unable to reach a consensus, Mr. Touton decided the matters independently, and his recommendations became those of the staff. Id.
In a number of important respects Professor Froomkin’s descriptions of the “small drafting committee’s activities coincides with that of the Second Staff Report. Professor Froomkin reported that the trademark interests pushed for bad faith registration or use. Brooklyn Article, at 655. The registrant interests responded that registration without use should not be actionable and insisted on the language bad faith registration and use. Id. However, unlike the Second Staff Report, Froomkin reports the reasoning behind the registrant interests’ advocacy of bad faith registration and use:
Registrant partisans countered that current trademark registration of a domain, without some kind of commercial use, did not constitute trademark infringement. Although courts had held that offering a domain for sale was commercial use, it could not follow that a plaintiff’s psychic conclusion that warehousing was in bad faith could substitute for actual conduct. They also argued that, large-scale cybersquatters excepted, the only way to tell that a registration was in bad faith was to look at subsequent conduct, i.e., use, and that the two therefore should not be separated.
Id., (emphasis added). This statement expressly sets forth the unitary nature of bad faith registration and use.”
It was the “Small Drafting Committee” that issued the final version of the Policy that was ultimately adopted by ICANN and made part of every registration agreement.
There are many other reasons that I believe the unitary interpretation of bad faith registration and use is the correct one, and they are most recently set out in the extensive dissent I filed in the Natterman case, and I commend it to anyone who is interested in learning the entire rationale for the unitary view. It would be much easier for this panelist to maintain that his original decision was correct, and not recant. But in view of the evidence, I am unable to do so.
In the present case, when the Respondent registered the disputed domain name, the trademark did not exist. Respondent was therefore entitled to continue using the domain name <truereligion.com> as he had been using it, or to use it for any purpose whatsoever, so long as he did not intentionally use it to profit from the goodwill associated with Complainant’s later created trademark. However, as the Respondent candidly admitted, he is now using the disputed domain name to profit from the good will the Complainant created in the mark. I defy any panelist to show me evidence from any portion of the legislative history or from any other provision of the Policy that would indicate that the drafts persons or the provisions of the Policy as drafted intended that a registrant could use a domain name to target a trademark and profit from its goodwill, so long as at the time that the domain name was registered, the registrant had no intention of doing so.
[i] In an email dated July 26, 2010, Professor Froomkin informed this panelist that no minutes of any of the meetings of the “small drafting committee” were ever taken.
M. Scott Donahey
Date: September 27, 2013