WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Shoeby Franchise B.V. v. Shoebuy.com, Inc. / SHOEBUY.COM
Case No. D2010-2142
1. The Parties
The Complainant is Shoeby Franchise B.V. of Rosmalen, the Netherlands, represented by Bogaerts en Groenen Advocaten, the Netherlands.
The Respondent is Shoebuy.com, Inc. / SHOEBUY.COM of Boston, Massachusetts, United States of America (“USA”), represented by Covington & Burling LLP, USA.
2. The Domain Name and Registrar
The disputed domain name <shoeby.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2010.
The Center transmitted its request for registrar verification to the Registrar on December 10, 2010. The Registrar replied the same day confirming that it was the registrar of the Domain Name and providing the full contact details held on its database in respect of the registration. The Registrar also confirmed that the language of the registration agreement was English, that the registrant had submitted in the registration agreement to the jurisdiction at the location of the Registrar’s principal office for court adjudication of disputes concerning or arising from the use of the Domain Name, that in accordance with paragraph 7 of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) the Registrar would not change the status of the registration except under paragraph 3 of the UDRP and that the Domain Name would remain on registrar lock during this proceeding.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 17, 2010. In accordance with paragraph 5(a) of the Rules, the due date for the Response was January 6, 2011. By agreement of the Parties, the due date for the Response was extended until January 13, 2011. The Response was filed with the Center on January 13, 2011. The Response included a request by the Respondent that a three-member Panel be appointed.
On January 19, 2011, the Parties submitted a joint request that the proceeding be suspended for 14 days to allow settlement discussions; accordingly, the Center suspended the proceeding until February 7, 2011. The Complainant subsequently requested an extension of the suspension until February 14, 2011, which the Center granted. The Complainant informed the Center on February 14, 2011, that an amicable resolution had not been reached and requested that the proceeding be reinstituted. Following receipt of signed confirmation of this request, the Center reinstituted the proceeding on February 15, 2011.
The Center appointed Jonathan Turner, Dinant T.L. Oosterbaan and Richard G. Lyon as panelists in this matter on March 10, 2011. 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 paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint and Response complied with applicable formal requirements and have been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
The Panel notes a minor discrepancy between the name of the Respondent in the Complaint and Response on the one hand and the contact details provided by the Registrar on the other (Shoebuy.com, Inc. as opposed to SHOEBUY.COM). However, the Panel is satisfied that the Response is from the true registrant of the Domain Name and that the discrepancy is immaterial.
4. Factual Background
The Complainant operates and franchises shops selling clothing, shoes, bags, jewelry and accessories under the names “Shoeby” and “Shoeby Fashion”. The Complainant commenced its business in 1982 and now operates or franchises 194 shops in the Netherlands and 6 in Belgium. The Complainant also operates an Internet shop at “www.shoebyfashion.nl”.
The Complainant registered SHOEBY SHOPS as a Benelux trademark in November 1996 and has since registered various other marks containing or consisting of “SHOEBY” at the Benelux office and, more recently, internationally (in 2008) and at OHIM (in 2011). The Complainant registered the domain name <shoeby-shops.nl> in 1998, although this domain name is currently directed to the Complainant’s website at “www.shoebyfashion.nl”.
The Respondent has carried on business as an online retailer of footwear through a website at “www.shoebuy.com” since 1999, having registered the domain name <shoebuy.com> in early 1999. Its website is now accessed by about 8 million unique visitors each month.
The Respondent registered SHOEBUY.COM and SHOEBUY as trademarks on the Principal Register of the USPTO in December 2001, with a date of first use in commerce in 1999, and August 2004, with a date of first use in commerce in 2002, respectively.
Since 1999 the Respondent has registered about 140 domain names which are misspellings of or phonetically similar to its domain name <shoebuy.com> or consist of that domain name combined with a descriptive word, such as “childrens”. These include the Domain Name in dispute, which the Complainant registered in May 1999, and which automatically redirects Internet users to the Respondent’s website at “www.shoebuy.com”.
On May 22, 2008, the Respondent received an objection by the Complainant to a pending trademark application for SHOEBUY which it had made to OHIM. The Complainant’s application was subsequently rejected by the Examining Division and Board of Appeal of OHIM on the grounds that the mark SHOEBUY was inherently descriptive and there was insufficient evidence that it had acquired a distinctive character in the EU.
The Complainant did not raise any objection to the Respondent’s registration of the Domain Name until January 26, 2010, when the Complainant’s representative sent a letter of complaint demanding transfer of the Domain Name. A representative of the Respondent replied on February 15, 2010, drawing attention to the Respondent’s use of the mark SHOEBUY since 1999 and stating that the Respondent was not aware of any instances of confusion. The letter also stated that the Respondent was prepared to discuss the Complainant’s concerns with a view to reaching agreement regarding continued co-existence in the EU and that if the Complainant wished to acquire the Domain Name it should set out in simple and commercial terms what it wished to achieve in a form which would lead to an amicable discussion. The Complainant’s representative responded on July 16, 2010, emphasizing that the Complainant had prior rights and offering to buy the Domain Name for EUR 250 to cover the costs of transfer.
Following a telephone conversation between representatives of the parties on October 1, 2010, the Respondent’s representative sent a “without prejudice” letter to the Complainant. After explaining that the Respondent’s domain names were part of its protection against those who would seek to gain an advantage from using a closely similar domain name to gain business from it, the letter proposed an interstitial page at the Domain Name which would invite Internet users looking for the Complainant to click on a link which would redirect them to the Complainant’s website, failing which they would be automatically redirected to the Respondent’s website. The Complainant’s representative rejected this proposal by letter of October 19, 2010.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical to its mark SHOEBY and confusingly similar to its mark SHOEBY SHOPS.
The Complainant denies that the Respondent has any rights or legitimate interests in respect of the Domain Name. It notes that the Respondent’s application to register “SHOEBUY” as a trademark at OHIM was rejected by OHIM and submits that the Respondent has no intellectual property rights in the Domain Name. The Complainant points out that it has been using the name “Shoeby” or “Shoeby Shops” since 1982, that “Shoeby” is not a generic name for the goods which it sells, and that the Respondent has caused the Domain Name to resolve to its website at which consumers are offered footwear. The Complainant contends that this is neither a bona fide offering of goods or services nor a fair non-commercial use of the Domain Name. The Complainant adds that the Respondent is not commonly known by the Domain Name.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant submits that by its use of the Domain Name the Respondent intentionally attempts to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of that website. The Complainant further contends that the Respondent registered the Domain Name to prevent the Complainant from using its mark in the Domain Name and to profit from it. In the Complainant’s view the Respondent should have known of the existence of its trademark registrations and domain name, which were matters of public record, before it registered the Domain Name.
The Complainant requests a decision that the Domain Name be transferred to it.
The Respondent states that it was not aware of the Complainant when it registered the Domain Name, which it did in a good faith attempt to protect itself from the very conduct that the UDRP was intended to cover. According to the Respondent it only became aware of the Complainant 9 years after registration of the Domain Name, a statement which is verified by a signed declaration of the Respondent’s Chief Marketing Officer. The Respondent submits that any dispute between the parties concerning their respective legitimate trademark rights is not a dispute of a kind which should be addressed by a Panel under the UDRP.
The Respondent states that since its inception it has recognized the dangers posed by cybersquatters and has adopted a defensive domain name registration policy pursuant to which the Domain Name and many other variants of its primary domain name, <shoebuy.com>, were registered. The Respondent emphasizes that the Complainant did not raise any objection for 10½ years following the Respondent’s registration of the Domain Name. In the ensuing correspondence the Respondent’s representative explained that the Respondent had used its SHOEBUY mark since 1999 and that the Domain Name and many other domain names were registered for the legitimate purpose of protecting this mark.
The Respondent submits that the Complainant has no rights in its SHOEBY trademarks in the United States and there is no evidence of confusion among Internet users.
The Respondent contends that it has rights and legitimate interests in the Domain Name. In particular, based on its rights in its SHOEBUY marks, the Respondent claims a legitimate interest in its registration of the Domain Name to protect itself from cybersquatters. The Respondent adds that it has used the Domain Name in connection with a bona fide offering of goods and services.
The Respondent denies that it registered and is using the Domain Name in bad faith. On the contrary, the Respondent avers that it registered and is using the Domain Name in good faith to protect itself from cybersquatters. According to the Respondent, it could not have registered the Domain Name in bad faith because it was not aware of the Complainant at the time. It adds that it did not register the Domain Name to prevent the Complainant from reflecting its mark in a corresponding domain name and that there is no evidence of any pattern of such conduct, the only pattern being its defensive registration of domain names which might otherwise be registered and used by cybersquatters to divert its own customers.
The Respondent denies registering the Domain Name in order to disrupt the Complainant’s business and adds that it does not compete with the Complainant. The Respondent also denies registering the Domain Name for sale to the Complainant or using it intentionally to attract consumers to its website for commercial gain by creating a likelihood of confusion with the Complainant’s marks. The Respondent adds that the Complainant’s delay for many years in objecting to Respondent’s registration of the Domain Name strengthens Respondent’s case that it has a legitimate interest in the Domain Name and that it has not registered and used it in bad faith.
The Respondent submits that the Complainant has engaged in reverse domain name hijacking. According to the Respondent, the Complainant has failed to disclose material information and filed the Complaint when it knew that the Respondent possessed a right and legitimate interest in the Domain Name and did not register and use it in bad faith. The Respondent alleges that the Complainant omitted the correspondence between the parties from the Complaint because the Complainant knew that if the Panel saw this correspondence it would not make a finding of bad faith against the Respondent. The Respondent also refers to the long delay between its registration of the Domain Name and the filing of the Complaint and the failure of the Complainant to disclose in the Complaint when it became aware of the registration of the Domain Name.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is clear that these are cumulative requirements and it is therefore appropriate to consider each of them in turn.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the marks SHOEBY and SHOEBY SHOPS within the meaning of paragraph 4(a)(i) of the UDRP. It is well established that a complaint under the UDRP can be based on rights in countries other than that where the respondent is based since the Internet is an international medium. It is also well established that a complaint can be based on rights acquired by the complainant after the disputed domain name was registered, although in this case the Panel is satisfied on the evidence that the Complainant had unregistered rights in both of these marks and a registered right in the mark SHOEBY SHOPS antedating the registration of the Domain Name in 1999.
The Panel further finds that the Domain Name is effectively identical to the mark SHOEBY and confusingly similar to the mark SHOEBY SHOPS. It is well established that the generic top level domain suffix should be discounted when making the comparison required by paragraph 4(a)(i) of the UDRP; and the omission of the generic word “shops” is clearly insufficient to avoid confusion with the latter mark.
The first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
The Panel finds that the Respondent registered the Domain Name in 1999 as part of a policy of protecting itself against cybersquatters by the defensive registration of a large number of domain names similar to its own which might be used (if registered by others) to divert its customers or otherwise to damage its business. The Panel further finds that the Respondent has directed the Domain Name to its website at “www.shoebuy.com” through which it has carried on a business of selling shoes since 1999.
The Panel also accepts the Respondent’s verified evidence that the Respondent did not know of the Complainant when it registered the Domain Name in 1999 or until the Complainant objected to the Respondent’s Community Trademark application in 2008.
It is arguable that the circumstances described above fall within the specific terms of paragraph 4(c)(i) of the UDRP and must be regarded, pursuant to that provision, as demonstrating that the Respondent has a right or legitimate interest in the Domain Name. In any case it is clear from the wording of paragraph 4(c) of the UDRP that the examples provided in that paragraph are not exhaustive of the conditions in which a right or legitimate interest in a domain name may be recognized. In all the circumstances the Panel considers that the Respondent has a legitimate interest in the Domain Name.
The second requirement of the UDRP is not satisfied.
C. Registered and Used in Bad Faith
In the light of the findings stated above, the circumstances of this case do not fall within the terms of any of the examples in which bad faith may be inferred under paragraph 4(b) of the UDRP. It is clear from these findings that the Domain Name was not registered or acquired primarily for the purpose of sale or other transfer at a profit to the Complainant or any of its competitors; or to prevent the Complainant as the owner of the SHOEBY mark from reflecting that mark in a corresponding domain name; or for the purpose of disrupting the business of the Complainant (even if it could be regarded as a competitor). Nor, on the evidence, has the Domain Name been used intentionally to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark (even though this could be a consequence of the Respondent’s use of the Domain Name).
The examples in paragraph 4(b) of the UDRP are not exhaustive and the Panel has therefore considered in the round whether the Respondent’s registration and use of the Domain Name have been in bad faith. In all the circumstances, the Panel considers that the Respondent’s registration and use of the Domain Name have been in good faith as part of a legitimate policy of protecting itself from abusive registrations by third parties.
There may well be a potential conflict between the Complainant and the Respondent arising out of their adoption of similar marks, the growth of their businesses and the globalization of trade of which the Internet is part. However, this potential conflict between bona fide businesses is not a matter to be resolved under the UDRP.
The third requirement of the UDRP is not satisfied.
D. Reverse Domain Name Hijacking
In accordance with paragraph 15(e) of the Rules, “if after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking […] the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
The application of that definition has been discussed in a number of cases. In Ville de Paris v. Salient Properties LLC, WIPO Case No. D2009-1279, the Panel observed:
“In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309, the majority of the three-member panel noted that the onus of proving that a complainant has acted in bad faith is on the Respondent, and that mere lack of success of the complaint is not of itself sufficient to constitute reverse domain name hijacking. The majority in Al Jazeera went on to note that:
‘Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151). See also Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant’s relevant trademark registrations.
The three-member panel in Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091 noted that whether a complainant should have appreciated at the outset that its complaint could not succeed, will often be an important consideration.’”
Those observations were approved by a three-member panel in Prime Pictures LLC v. DigiMedia.com L.P., WIPO Case No. D2010-1877. The present Panel similarly considers that these observations accurately reflect the purpose of paragraph 15(e) of the Rules and the intention of those who framed and adopted the Rules in including this provision.
In the present case, the Panel considers that the Respondent’s registration of the Domain Name could not have been in bad faith on any fair interpretation of the facts, and that the Complainant should have appreciated at the outset that its Complaint was bound to fail. The Panel notes that the Complaint failed to mention or to attempt to address critical points made in prior correspondence by the Respondent’s representatives. Particularly as the Complainant was represented by professional advisers, in these circumstances it appears to the Panel that these points were deliberately ignored in framing the Complaint. In all the circumstances, the Panel finds that the Complaint was brought in bad faith, in an attempt at Reverse Domain Name Hijacking, and constitutes an abuse of this proceeding.
For all the foregoing reasons, the Complaint is denied and the Panel declares that it was brought in bad faith and constitutes an abuse of this proceeding.
Dinant T. L. Oosterbaan
Richard G. Lyon
Dated: March 20, 2011