WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mile, Inc. v. Michael Burg
Case No. D2010-2011
1. The Parties
The Complainant is Mile, Inc. of Worthington, Ohio, United States of America represented by Schottenstein, Zox & Dunn, Co., L.P.A., United States of America.
The Respondent is Michael Burg of Lebanon, New Hampshire, United States of America, represented by AlvaradoSmith, APC, United States of America.
2. The Domain Name and Registrar
The disputed domain name <lionsden.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 November 22, 2010. On November 23, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 23, 2011, 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 November 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response December 19, 2010. The Response was filed with the Center on December 19, 2010. On January 12, 2011, the Complainant filed a Supplemental Submission.
The Center appointed W. Scott Blackmer, David H. Bernstein, and David E. Sorkin as panelists in this matter on January 14, 2011. 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, a retailer of adult videos, sex products, and lingerie, is a corporation organized under Ohio law and headquartered in Worthington, Ohio, United States of America. The Complainant operates 40 retail stores in 18 states of the United States, as well as a commercial website at "www.lionsdenadult.com."
The Complainant uses the service mark THE LION'S DEN to identify its stores and website, holding United States Trademark Registration No. 2,301,567 for this standard-character mark. The mark was registered December 21, 1999, with commercial use claimed since February 1971.
The Domain Name was registered on May 8, 1995. According to the Response and the Declaration of Mr. Burg, the Respondent is an individual residing in Lebanon, New Hampshire, United States of America. The Respondent states that he registered the Domain Name for personal use and has continuously owned the Domain Name since May 1995. The Respondent states that he owns some fifteen domain names, including another incorporating the word "lions" (<lionsburg.com>), and uses them for "family email, personal projects, and hobbies."
It is undisputed that, in October and November 2010, the Domain Name resolved to a pay-per-click ("PPC") advertising website with links to a variety of commercial and informational websites. As demonstrated by screenshots furnished with the Complaint, the PPC website has at times prominently featured links for adult products such as "sexy lingerie" competing with products sold by the Complainant. Links on the PPC website have in some instances been labeled similarly to the Complainant's mark, such as "Lions Den Adult Superstore" and "Lions Den Retail Store." One printout shows that the PPC website formerly included a link to the Complainant's website. Currently, the website associated with the Domain Name displays only unrelated banner advertising.
5. Parties' Contentions
A. Complainant
The Complainant asserts that the Domain Name is confusingly similar to its mark THE LION'S DEN, for which it claims common law protection since 1971, and that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant infers from the PPC website formerly associated with the Domain Name that the Respondent registered and used the Domain Name in bad faith, in an attempt to mislead Internet users and exploit the Complainant's mark for commercial gain.
B. Respondent
The Respondent argues that the Complainant does not have exclusive rights to use the phrase "the lion's den" and that the Respondent is not a competitor and has not infringed on the Complainant's trademark rights.
The Respondent denies any knowledge of the Complainant or its mark prior to this dispute. He observes that the mark was not registered until four and a half years after the Domain Name registration and also that the Complainant does not operate retail stores in New Hampshire, where the Respondent resides, or, indeed, in the New England region.
The Respondent contends that he used the Domain Name for years as an email address and for a personal website and only recently subscribed to Google Adsense to obtain PPC advertising revenue from a website associated with the Domain Name. The Respondent refers to the Internet Archive's Wayback Machine for evidence of his previous personal website. However, the Wayback Machine currently indicates that access to historical versions of the website associated with the Domain Name has been "blocked by the site owner via robots.txt."
The Respondent also asks the Panel to apply the equitable doctrine of laches to deny the Complaint, which was brought fifteen years after the Respondent first registered the Domain Name.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules:
"A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
A. Supplemental Submission
The Policy contemplates prompt, efficient resolution of domain name disputes on a narrow range of issues and with only two limited remedies, transfer or cancellation of a domain name. Accordingly, the Rules and Supplemental Rules contemplate only a complaint and response, with strict time and page limits. There is no explicit provision for additional filings except for further statements or documents provided in response to a request from the Panel (Rules, paragraph 12). Paragraph 10 of the Rules directs the Panel to conduct the proceeding "with due expedition" and empowers the Panel to "determine the admissibility, relevance, materiality and weight of the evidence." Panels are consequently reluctant to encourage delay through additional rounds of pleading and typically accept supplemental filings only to consider new evidence or provide a fair opportunity to respond to new arguments. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447, which ably describes appropriate criteria for considering supplemental filings.
The Complainant's Supplemental Submission offers rebuttal arguments on several issues, including the Respondent's asserted defense of laches, and challenges certain factual assertions in the Response concerning the registration and use of the Domain Name. The Supplemental Submission does not offer evidence that was previously unavailable on these points. The Panel considers the Complainant's reply to the Respondent's laches argument (an issue Complainant may not have anticipated being raised), which is discussed further below, but otherwise declines to accept the Supplemental Submission as a part of the record in this proceeding.
B. Laches
The Respondent argues that the Complaint should be denied because the Complainant has allowed the Domain Name to be used unchallenged for fifteen years:
"At some point, a domain name registrant is entitled to quiet enjoyment of his domain name, free from the fear that a trademark owner can take it from him by a UDRP."
The parties in the current proceeding are both located in the United States, where courts recognize the equitable doctrine of laches, which can result in the dismissal of a complaint for undue delay in asserting legal claims. However, in the United States, the defense of laches typically bars the recovery of damages incurred before the filing of a lawsuit, and courts have concluded that the rationale behind the doctrine of laches does not militate against injunctive relief in a trademark action that seeks to avoid future confusion in the marketplace. See 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4th ed. 2005) §31:10, p. 31-35 and cases cited therein. The remedies under the Policy are similarly injunctive rather than compensatory in nature, and the focus is on avoiding confusion in the future as to the source of goods or services. Thus, UDRP panels have generally declined to apply the doctrine of laches. See, e.g., Progman Consulting Oy v. Whois Watchdog, WIPO Case No. D2010-1393 ("It is by now well established that trademark doctrines of laches or estoppel have not been incorporated into the Policy"); The E.W. Scripps Company, supra (the Policy does not contemplate a defense of laches, which is inimical to the Policy's purposes); see also cases cited in the Index of WIPO UDRP Panel Decisions, sec. III(G)(1)(c).
The Respondent cites a recent UDRP decision, The New York Times Company v. Name Administration Inc. (BVI), NAF Claim No. 1349045. There, the panel rejected the complainant's contentions that the respondent had no rights or legitimate interests in the disputed domain name, and that the respondent had registered the domain name in bad faith, because the panel found that "Respondent's rights are senior to Complainant's." The panel also concluded that "the circumstances of this case are the type that support a decision for the Respondent based on laches." The panel opined that "the doctrine of laches should be expressly recognized as a valid defense in any domain dispute where the facts so warrant," on the theory that an administrative proceeding offering an essentially equitable remedy (transfer of a disputed domain name) should also recognize equitable defenses such as laches.
The Panel in the current proceeding declines to endorse this approach. As noted above, the Policy offers a limited remedy to avoid future confusion in the marketplace, and it does not contemplate that such a remedy would be unavailable because of delay in instituting a Policy proceeding. However, the Panel observes that lengthy delays in seeking legal or administrative remedies can often have the effect of eroding or undermining the complainant's arguments with respect to the respondent's rights or legitimate interests in the disputed domain name, or the respondent's alleged bad faith in registering and using the domain name. The Panel considers it more appropriate to address such issues squarely within the terms of paragraphs 4(a)(ii) and (iii) of the Policy, rather than analyzing them under the equitable doctrine of laches.
A. Identical or Confusingly Similar
The Complainant indisputably has rights in the registered mark THE LION'S DEN. The Domain Name is nearly identical, omitting only the article "the" and the punctuation and spaces that are not technically possible to include in DNS addresses.
The Respondent's contentions concerning priority and non-infringing use are inapposite. The Policy is not based on proof of trademark infringement. Rather, this "standing" element of the Policy concerns only the identity or confusing similarity of the Domain Name and a mark in which the Complainant currently has rights. UDRP panels typically apply a "low threshold" test for confusing similarity under the first element of a Policy complaint, proceeding to the merits of the case under the other elements of the Policy if there is "sufficient similarity" between the disputed domain name and the relevant trademark. See, e.g., Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227; Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647. This is commonly tested by comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression.
In cases involving slight differences in punctuation or spelling, UDRP panels regularly find sufficient similarity to proceed to a consideration of the other Policy elements. See, e.g., Teva Pharmaceutical USA, Inc. v. Mode L, WIPO Case No. D2007-0369 (finding the domain name <adipexp.com> confusingly similar to the trademark ADIPEX-P because they are "pronounced in the same way despite the removal of the dash"). As stated in Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743:
"Panels have routinely held that the question under paragraph 4(a)(i) of the Policy is simply whether the alphanumeric string comprising the challenged domain name is identical to the Complainant's mark or sufficiently approximates it, visually or phonetically, so that the domain name on its face is 'confusingly similar' to the mark."
The Panel finds that the Domain Name is visually and phonetically confusingly similar to the Complainant's mark and concludes that this element of the Policy has been satisfied.
B. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the Domain Name, once the Complainant has made a prima facie showing indicating the absence of such rights or interests. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
Here, the Complainant relies on the fact that there is no evidence, apart from the Burg Declaration, that the Respondent used the Domain Name for anything but a PPC website, which in some instances advertised competing products. This effectively shifts the burden to the Respondent to demonstrate rights or legitimate interests in the Domain Name.
The Response says that the Domain Name was chosen with reference to the "lions den" from which the ancient prophet Daniel was delivered in the Biblical account (which is the source of a common expression for being placed in dire circumstances). This is not mentioned in the Burg Declaration, however, and the Respondent has not offered evidence of any planned use of the Domain Name consistent with this generic meaning. Screenshots of the PPC website formerly associated with the Domain Name indicate that Google Adsense servers automatically displayed links to the Complainant and to competitors, as well as to biblical websites and unrelated commercial websites.
The Burg Declaration claims the Respondent's interest in using the Domain Name for a "personal" website and email. But the Respondent offers as supporting evidence of such use only a link to archived versions of the website, which the Respondent has now apparently disabled with robots.txt.
On the present record, then, the Panel does not find that the Respondent has presented sufficient evidence of rights or legitimate interests in the Domain Name to rebut the Complainant's prima facie case to the contrary. The Panel concludes that the second element of the Complaint has been established.
C. Registered and Used in Bad Faith
The Policy's non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following:
"(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
The Complainant argues that this is precisely how the Respondent has used the Domain Name, at least since associating it with a PPC advertising service that prominently featured links to the Complainant and its competitors. The Burg Declaration denies such intent. However, given the Panel's conclusion below on the issue of bad faith in the registration of the Domain Name, it is unnecessary to address the issue of the Respondent's responsibility for the automated PPC advertising links displayed on the website that was associated with the Domain Name for some period of time.
The Policy, paragraph 4(a)(iii), obliges the Complainant to establish that the Domain Name "has been registered and is being used in bad faith." The consensus view since the Policy was implemented in 1999 has been that the conjunctive "and" indicates that there must be bad faith both at the time of registration and subsequently. Apart from unusual cases of a respondent's advance knowledge of a trademark, it is not logically possible for a respondent to register a domain name in bad faith contemplation of a mark that does not yet exist or of which the respondent is not aware. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.1, and cases cited therein ("Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant's non-existent right.") By contrast, the dispute resolution policies for some top-level domains, such as ".eu" and ".uk", state the requirement disjunctively, expressly providing that a complainant may prevail by establishing bad faith in the registration "or" use of the domain name.
The consensus view that the Policy requires bad faith at the time of registration of the domain name has been challenged in some recent UDRP decisions, prominently City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643 ("Mummygold") and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786 ("Octogen"); see also Ville de Paris v. Jeff Walter, WIPO Case No. D2009-1278; Jappy GmbH v. Satoshi Shimoshita, WIPO Case No. D2010-1001. These decisions treat the requirement to establish that the respondent "registered and used the domain name in bad faith" as a "unified concept."
The Mummygold/Octogen approach draws support from the fact that the example of bad faith given in paragraph 4(b)(iv) of the Policy describes a use of the domain name at some time following registration. In the view of the current Panel, however, this example does not alter the conjunctive requirement of paragraph 4(a)(iii). Evidence of subsequent use as described in paragraph 4(a)(iii) often gives rise to an inference of the respondent's intent to make such use of the domain name from the time the Respondent selected and registered it. Moreover, paragraph 4(b)(iv) is listed as "evidence of the registration and use in bad faith"; it is not listed as conclusively demonstrating registration and use in bad faith. (Compare Policy paragraph 4(c), which lists examples of conduct that "shall demonstrate your rights or legitimate interests")1 .
More fundamentally, the Mummygold/Octogen decisions depend on the Respondent's representation and warranty in the registration agreement (in language mandated by the Policy, paragraph 2) that in registering a domain name, and in maintaining or renewing a registration:
"you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name infringes or violates someone else's rights."
The Mummygold/Octogen panels observed that this warranty could be breached by post-registration abuses and concluded, as expressed in Octogen, that such conduct "may be deemed to be retroactive bad faith registration."
The current Panel recognizes the value, in appropriate cases, of inferences of original intent based on subsequent conduct. But the Panel does not find a compelling Policy or legal basis for retroactively characterizing later abuses as bad faith in the "registration" of a domain name. In company with other panels that have critiqued the Mummygold/Octogen decisions, this Panel is unwilling to overlook the plain language of paragraph 4(a)(iii) of the Policy requiring a conclusion that the domain name has been "registered" and "used" in bad faith. See, e.g., Validas, LLC v. SMVS Consultancy Private Limited, WIPO Case No. D2009-1413; Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688. In the Panel's opinion, reading "registered" as a continuous act that can be abused at any time would appear to make it essentially synonymous with "use" and deprive the conjunctive phrase of its full meaning.
The Panel is concerned as well that the Mummygold/Octogen reasoning runs counter to a decade of decisions addressing the UDRP's conjunctive requirements for a demonstration of bad faith. This Panel subscribes to the ideal of striving for a reasonable degree of predictability in Policy decisions, to guide domain name registrants and trademark owners. As articulated in the WIPO Overview, paragraph 4.1:
"The UDRP does not operate on a strict doctrine of precedent. However panels consider it desirable that their decisions are consistent with prior panel decisions dealing with similar fact situations. This ensures that the UDRP system operates in a fair, effective and predictable manner for all parties."
If a consensus developed that a line of prior decisions had reached the wrong result, and if panels generally adopted a new approach on an issue, this Panel also would be open to considering whether a new approach was appropriate, both substantively under the Policy and in order to promote consistency. However, the Mummygold/Octogen reasoning has not prompted any such consensus; to the contrary, a number of decisions have expressly considered and rejected it. See, e.g., Validas, supra; Eastman Sporto, supra; Torus Insurance Holdings Limited v. Torus Computer Resources, WIPO Case No. D2009-1455; Camon S.p.A. v. Intelli-Pet, LLC, WIPO Case No. D2009-1716; Tata Communications International Pte Ltd (f/k/a VSNL International Pte Ltd) v. Portmedia Inc. / TRUEROOTS.COM c/o Nameview Inc. Whois, WIPO Case No. D2010-0217 (majority opinion); Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470; A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc., WIPO Case No. D2010-0800 (majority opinion). The fact that so many panelists have declined to follow the Mummygold/Octogen approach argues against an emerging consensus to overturn a long-established doctrine and provides yet another reason for this Panel to decline to adopt the Mummygold/Octogen reasoning.
The Panel emphasizes that its decision not to follow Mummygold and Octogen, does not discount the relevance of paragraph 2 of the Policy to the question of bad faith registration in appropriate cases. Paragraph 2 of the Policy requires a domain name registrant "to determine whether your domain name infringes or violates someone else's rights." That may create an obligation on a registrant to conduct some due diligence in order to determine whether the domain name at issue infringes any third party rights, especially if the registrant intends to use it for commercial purposes such as a PPC website. Cf. Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. In this case, though, Respondent has persuasively shown that he registered the Domain Name for personal purposes and was inspired by the biblical meaning and common usage of the Domain Name, not Complainant's trademark. In these circumstances, where the intended use at the time of registration was noncommercial and the Respondent is not a professional domainer, the registration cannot be considered to have been in bad faith because the use to which Respondent intended to put the Domain Name, at the time of registration, could not be considered infringing. Cf. mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141 ("[A] sophisticated domainer who regularly registers domain names for use as PPC landing pages cannot be willfully blind to whether a particular domain name may violate trademark rights. In this context, a failure to conduct adequate searching may give rise to an inference of knowledge.").
Having decided that the Complainant must adduce persuasive evidence of bad faith at the time of registration of the Domain Name, the Panel finds the Complaint fatally deficient2 . The Complainant contends that the Respondent must have been aware of the Complainant's mark when the Respondent registered or obtained the Domain Name. The mark was registered only in December 1999, however, four and a half years after the Domain Name was created in May 1995. The Burg Declaration states that the Respondent registered the Domain Name at that time and has continuously maintained the registration since, and that the Respondent was not aware of the Complainant or its mark in 1995.
The Complainant speculates that the Respondent actually may have obtained the registration at some later date, but there is no persuasive evidence of this in the record. The Complainant has not, for example, submitted archived versions of historical WhoIs database records, such as those that might be available from DomainTools.com, showing that the Domain Name was previously registered to another party. This is the sort of evidentiary issue that might be more fully explored in litigation than in a UDRP administrative proceeding in which there are no discovery procedures or evidentiary hearings. The Panel finds the statements in the Burg Declaration, signed under penalty of perjury, to be credible and consistent with the limited record available in this proceeding.
The Respondent plausibly denies prior knowledge of the Complainant's adult stores and website. He does not reside in a metropolitan area where one of the stores is located, and there is no evidence before the Panel indicating that the Complainant even operated a website in 1995. Indeed, according to the relevant Registrar's WhoIs database, the Complainant did not register the domain name currently used for its website until August 1999, more than four years after the Respondent registered the Domain Name. Thus, even if the Panel were to accept the Complainant's claim of common law trademark rights in 1995, there is no persuasive evidence that the Respondent was likely aware of the Complainant's mark. There is no evidence in the record, for example, of direct dealings between the Complainant and the Respondent or of pervasive advertising and publicity in 1995 that would cast doubt on the Respondent's denial. It appears from the record that the Respondent's PPC use of the Domain Name, with links relevant to the Complainant's business, did not commence until several years after the Respondent registered the Domain Name.
Accordingly, the Panel concludes that the Complainant has not met its burden of establishing the probability that the Respondent registered the Domain Name in a bad faith effort to exploit the Complainant's mark.
7. Decision
For all the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Presiding Panelist
David H. Bernstein
Panelist
David E. Sorkin
Panelist
Dated: February 7, 2011
1 "Section 6 above makes now reference to paragraph 4(b)(iv) of the Policy. When the decision was originally issued, paragraph 4(b)(iii) of the Policy was mentioned, but the typographical error has been subsequently identified and corrected."
2 The Panel notes that the representations required by paragraph 2 of the Policy apply to the renewal as well as the initial registration of a domain name: "By applying to register a domain name, or asking us to renew a domain name registration, you hereby represent and warrant to us that … (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name infringes or violates someone else's rights." Policy, paragraph 2 (emphasis added). However, it is not necessary for the Panel in this proceeding to determine whether the Respondent's intentions at the time of renewal reflect bad faith in the "registration" of the Domain Name, as there is no evidence in the record concerning the renewal of the Domain Name registration.