16th May 2007
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fin-Men S.p.A. v. Star Access Inc. (SAI) Domains / Whois Data Shield
Case No. D2007-0112
1. The Parties
The Complainant is Fin-Men S.p.A., Dosson di Casier (TV), Italy, represented by Law Offices of Barton S. Selden, United States of America.
The Respondent is Star Access Inc. (SAI) Domains / Whois Data Shield, FL, United States of America, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name <came.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January28,2007. On January29,2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On January30,2007, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. A Notice of Change in Registrant Contact Information was issued on February7,2007 and on February11,2007 an Amendment to Complaint was filed. The Center verified that the Complaint, together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 February14,2007. In accordance with the Rules, paragraph 5(a), the due date for Response March26,2007. The Response was filed with the Center March26, 2007.
The Center appointed Christopher J. Pibus, Maxim H. Waldbaum and David E. Sorkin as panelists in this matter on May2,2007. 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.
The Complainant filed on March31,2007, a Request for Leave to file a Reply to the Respondent’s Response.
4. Factual Background
The Complainant owns U.S. Trademark Registration No. 2,610,615 for the mark CAME for electric gates, metal doors and sliding doors and associated equipment and control mechanisms for gates and doors. The application for the trademark CAME was filed on September19,2000, and issued to registration on November20,2001. The Complainant also owns a Community Trademark Registration for the mark CAME dated December1,2006. Complainant’s corporate affiliate, Came Cancelli Automatici, S.p.A. holds registrations for the mark CAME in other territories, including Italy and the United Kingdom.
The Respondent registered the domain name <came.com> on September16,1999. At the date of the Complaint, the Respondent was operating a website under this name that provides links to other companies’ goods and services as a “click-through” site.
5. Parties’ Contentions
(a) Identical or Confusingly Similar
The Complaint contends that the domain name <came.com> is identical to the Complainant’s CAME trademark.
(b) Rights or Legitimate Interests
The Complaint contends that the Respondent has no rights or legitimate interest in respect of the domain name <came.com>. The Complainant owns a U.S. Trademark Registration for the mark CAME. The Complainant contends that the trademark registration was based on a date of first use of October, 1995 and therefore the Complainant’s rights were established prior to the Respondent’s registration of the domain name <came.com> by a period of four years. The Complainant further contends that its affiliate Came Cancelli Automatici, S.p.A. owns registrations in Italy and the United Kingdom that date back to 1993, thereby establishing rights in the trademark CAME dating back to 1993. The Complainant submits that the Respondent’s use of the domain name in connection with a “click-through” site does not establish a legitimate right or interest in the domain name. The Complainant also submits that the Respondent was never authorized as a dealer, distributor or licensee of the Complainant.
(c) Registered and Use in Bad Faith
The Complainant contends that the domain name <came.com> was registered and is being used in bad faith based on the following factors: (i) website use of the initial and dominant heading “For resources and information on Came Electric Gates and Accounting Software”, which uses the CAME trademark to entice Internet users to products of Complainant’s competitors; (ii) the use of an identical and confusing mark to that of the Complainant’s trademark to attract Internet users to Respondent’s website through a “click-through” scheme; and (iii) unauthorized use of an identical and confusing trademark for commercial gain.
The Respondent filed a full response to the Complaint, as follows:
(a) Identical or Confusingly Similar
The Respondent takes no position as to the enforceability of the Complainant’s trademarks in this proceeding, but contends that the name “came” is primarily a common word, which lacks trademark significance. The Respondent submits that the word “came” is defined as the past tense of the verb to “come”. The Respondent further contends that the word “came” is used by many third parties on the Internet, citing a Google search that revealed 500 million third party web pages containing the term. The Respondent also submits that the Complainant applied for its trademark in the U.S. (where the Respondent is located), 1 year after the registration of the domain name.
(b) Rights or Legitimate Interests
The Respondent contends that it does have a legitimate interest in the domain name <came.com> in that “came” is a common word in the English language. The Respondent contends that the Complainant does not have exclusive rights to the common term “came”. The Respondent submits that the domain name <came.com> was registered 1 year before the Complainant applied for its trademark application and that at the time of registration Respondent had no knowledge of the Complainant or its use of the word “came” in connection with its wares and services. The Respondent contends that at the time of registration it had a legitimate interest in the domain name <came.com> and that subsequent registration of a complainant’s trademark does not then make what was once a legitimate interest illegitimate. The Respondent contends that the mere use of a domain name in connection with a “pay-per-click” service does not establish an illegitimate interest in a domain name. The Respondent further contends that it uses a third party “Pay-Per-Click” service and does not select the links for the website in connection with the domain name in question.
(c) Registered and Used in Bad Faith
The Respondent contends that it had no knowledge of the existence of the Complainant or its trademark at the time of the registration of the <came.com> domain name. The Respondent notes that the Complainant only filed for its trademark application in the U.S. 1 year after the registration of the domain name and that Respondent had no way of knowing about the Complainant’s rights in other countries. The Respondent further contends that the Complainant has not provided any evidence that would indicate the Respondent did have knowledge of the Complainant’s rights at the time the domain name was registered. The Respondent submits that it uses a “Pay-Per-Click Service” and does not select the links which are posted on the website in connection with the <came.com> domain name. The Respondent further submits that the Complainant waited 7 years before filing a Complaint, with no explanation as to the delay, and that this delay infers that the Complainant knew its claim was not warranted.
6. Discussion and Findings
There are two preliminary issues that must be dealt with: (i) the identity of the Respondent and (ii) the Complainant’s Request for Leave to File a Reply.
The Complainant filed an Amended Complaint in response to information received from the Center that the Respondent Whois Data Shield is also known as Star Access Inc. (SAI) Domains, with a place of business located in Jupiter, Florida. The Complainant amended its Complaint to add Star Access Inc. (SAI) Domains as a named Respondent. The Respondent filed a response on behalf of both Respondents, and did not dispute this allegation. Accordingly, the Panel is prepared to accept that the Respondents Whois Data Shield and Star Access Inc. (SAI) Domains are properly named in the Complaint.
With respect to the Complainant’s Request for Leave to File a Reply, the Policy provides for supplementary filings only at the discretion of the Panel. The Panel is of the view that leave to file a reply should only be granted in exceptional circumstances, where a response raises facts that the complainant could not have been expected to address in the complaint. In the circumstances, the Panel does not believe exceptional circumstances exist and accordingly leave is not granted.
Pursuant to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has marks;
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights in the CAME trademark, by virtue of the United States of America and Community Trademark (European Union) trademark registrations, which cover the word “came” accompanied by a stylized door design. The Complainant has alleged that its corporate affiliate Came Cancelli Automatici, S.p.A. owns trademark registrations in Italy and the United Kingdom, but the documentation filed in support of this statement is inconsistent as to the identity of the registrants in those jurisdictions. Accordingly, the Panel makes no findings as to the trademark rights that may exist in those other jurisdictions.
The Panel finds that the disputed domain name <came.com> is identical or confusingly similar to the CAME trademark, as registered in the United States of America and Community Trademark (European Union), as it replicates the word element of Complainant’s trademark in its entirety.
The Panel, therefore, finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
In light of the Panel’s decision on bad faith, there is no need to reach any conclusions about rights or legitimate interests.
C. Registered and Used in Bad Faith
With respect to bad faith, the evidence relating to the Respondent’s knowledge of the trademark in question is very germane. In this regard, the principal of the Respondent – Jack Ford – has filed a sworn Declaration which directly addresses this issue.
The Ford Declaration states unequivocally that the domain name was chosen “because it incorporated the common word “came”. Ford states that he had “no knowledge of Complainant or its trademark” when he registered the domain in September, 1999.
Complainant claims use of its trademark in the United States of America as early as 1995, although it only filed its application to register the mark in the U.S. nearly 12months after the registration of the domain, in 2000. In the circumstances, there is an insufficient record to impute any knowledge of the CAME trademark to the Respondent at the material time. The Panel recognizes that it is possible for an unregistered mark to be well-known, but based on the evidence filed in this Complaint, there is no foundation to make such a finding with respect to the U.S. market, where Respondent maintains its business. Complainant has made a bald claim to use in the U.S. since 1995, but has not provided any evidence of sales, marketing, advertising or reputation in that jurisdiction. Complainant’s earlier trademark rights in other jurisdictions (Italy, United Kingdom) are not probative, in that the evidence about ownership is unclear (other parties are identified as owners).
The Respondent has also submitted that the word “came” is a common word in the English language, which is the past tense of the verb “to come”. The Respondent’s evidence shows that a Google search for the word “came” reveals 500 million third party web pages. The Panel is therefore prepared to find that the word “came” has a primary generic significance, and is far removed (at least in English speaking countries) from what would ordinarily be recognized as a brand or mark.
Accordingly, the Panel is prepared to find that at the time of registration of the domain name <came.com>, the name was chosen without any intention to trade on the reputation of the Complainant, and was registered in good faith.
The only substantive evidence of bad faith relates to the recently adopted practice of the Respondent to include specific references to the Complainant’s trademark on its website. The evidence shows that for a period of six years, the Respondent’s website contained no references to CAME as a trademark for electronic gates. The Panel finds therefore that when the domain name was registered, and thereafter for a significant period of time, there was no conduct which could be characterized in any way as bad faith. However, over the past year, the Respondent’s website has specifically promoted itself as a source “for resources and information on CAME electric gates and CCTV”, and offers links to sites for competitors’ products, not those of the Complainant.
This raises the issue of whether a finding can be made against a Respondent when the domain name was registered and initially used in good faith, but has subsequently been used in bad faith. In the Panel’s view, the content of websites is relevant, but only in the framework of abusive registration and use of domain names. The Panel agrees with the approach in Intuit Inc. v. NetCorp. WIPO D2005-1206 where the Panel held as follows:
“Respondent’s initial use of the domain name in an unrelated manner supports a finding that the domain name was registered neither for the purpose of exploiting Complainant’s goodwill nor with the Complainant in mind. The earliest evidence that could possibly amount to bad faith use is so long after registration that it cannot outweigh the evidence tending to show good faith registration.”
Accordingly, the Panel is not prepared to find that the recent website use of the Complainant’s trademark can outweigh the other factors described above with respect to bad faith. However, the Panel does not condone Respondent’s conduct and does not accept Respondent’s argument that it is not responsible for the content of its website merely because it is using a third party pay-per-click search engine provider. The Panel recognizes that there may be other remedies that the Complainant may choose to seek from other authorities in the circumstances.
For these reasons, the Panel finds that the Complainant has not satisfied the third requirement of paragraph 4(a) of the Policy.
For all the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Maxim H. Waldbaum
David E. Sorkin
Date: May 16, 2007