6th Feb 2006

WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lana Sociedad Cooperativa Ltda. v. Alberta Hot Rods

Case No. D2005-1200

 

1. The Parties

The Complainant is Lana Sociedad Cooperativa Ltda., Oñati, Gipúzcoa, Spain, represented by Clarke, Modet & Co., Spain.

The Respondent is Alberta Hot Rods, High Prairie, Alberta, Canada, represented by ESQwire.com Law Firm, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <lana.com> is registered with CORE Internet Council of Registrars.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2005. On November 21, 2005, the Center transmitted by email to CORE Internet Council of Registrars a request for registrar verification in connection with the domain name at issue. On November 23, 2005, CORE Internet Council of Registrars 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 25, 2005. 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 on November 29, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was December 19, 2005. The Response was filed with the Center on December 18, 2005.

The Center appointed James A. Barker, Marino Porzio and David E. Sorkin as panelists in this matter on January 23, 2006. 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 following facts, derived from the Complaint, are not contested.

The Complainant is registered as a corporation in Oñati, Gipúzcoa, Spain. The Complainant is a company which belongs to Mondragon Corporación Corporativa (“MCC”), a group comprising 260 companies and other bodies of which approximately half are co-operatives.

MCC operates in different countries such as Germany, Brazil, China, France, India, Italy, Mexico, Morocco, Poland, United Kingdom, Czech Republic, Romania, Thailand and Turkey. The Complainant is involved in various fields of business, including the manufacture and commercialization of planking boards, furniture boards, boards for structural use and three layer boards.

The Complainant has registered rights in the trademark LANA, in a number of different classes, and in a number of European countries including Spain, Germany, Benelux, France, Italy and Portugal. The Complainant first registered LANA as a trade name in Spain on March 21, 1980. The Complainant first registered LANA as an international mark on April 23, 1996, in Spain on July 5, 1995, and then subsequently in the other countries mentioned above and in the EU.

 

5. Parties’ Contentions

A. The Complainant

The following is summarized from the Complaint.

Identical or confusingly similar

The disputed domain name is identical to the Complainant’s trademark LANA.

A search of a registrar’s Whois database indicates that the disputed domain name was registered on June 24, 1997, some years after the first registration of the Complainant’s trademark LANA.

The Complainant searched for the word LANA in the Collins Dictionary, and found no meaning for it. The Complainant is a highly reputable company in the building sector, exporting goods to countries such as Portugal, France, Slovenia, Germany and Austria, and participating in the International Building Sector Trade Fair. The Complainant participates in international trade fairs related to the building sector, such as SMOPYC 2002 held in Zaragoza, Spain and CONSTRUMAT 1999 held in Barcelona, Spain.

The disputed domain name is linked to a pornographic website, a use that damages the Complainant’s image.

Rights or legitimate interests

The Respondent has no rights or legitimate interests in the disputed domain name.

In accordance with the views expressed in Estee Lauder Cosmetics Ltd; Make-Up Art Cosmetics Inc. v. Telmex Management Services, WIPO Case No. D2001-1428, “courts have recognized that consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or marks. See e.g. Panavision Int’l, L.P. v. Toeppen, 141 F 3d 1316, 1327 (9th Cir. 1998) (‘A customer who is unsure about a company’s domain name will often guess that the domain name is also the company’s name… [A] domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base.’)”.

The Complainant never authorized the Respondent or any other person to use the mark LANA.

The Complainant also refers to a number of cases decided under the Policy (including prior cases involving the Respondent), which found that the redirection of Internet traffic to a third party website does not establish a respondent’s legitimate interest.

Bad faith

The disputed domain name was registered and is being used in bad faith.

The Respondent carries out a practice of registering domain names which correspond to either registered trademarks or to the names of celebrities. Such pattern of conduct indicates that the Respondent registers domain names for profit. The Complainant points to the involvement of the Respondent in a large number of complaints brought under the Policy.

The evidence suggests that the Respondent registered the disputed domain name with the intent of trading on the reputation of and goodwill associated with the Complainant.

Numerous panels have held that the registration and use of an infringing domain name in connection with a website that offers adult services or materials is evidence of bad faith. The Complainant cites a number of prior decisions under the Policy, including that in National Association of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, WIPO Case No. D2001-1387. The Complainant cites the following statement from the panel in that case:

“Evidence of this [diverting Internet users by confusion with a mark] may be found in the click-through advertising on the site, especially since this advertising is pornographic. The presence of pornographic material of itself is not, in my opinion, sufficient to establish bad faith. However it is now well-known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques.”

B. The Respondent

The following is summarized from the Response.

Identical or confusingly similar

The Respondent does not deny that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.

Rights or legitimate interests

The Complainant’s trademark LANA corresponds to the common first name, “Lana”. The fact that the Respondent registered the disputed domain name because it is a common woman’s name, as opposed to a trademark, is corroborated by the fact that the Respondent has registered numerous other women’s names as domain names, including <candace.com>, <deborah.com>, and <delores.com>.

A complainant does not have exclusive rights to a trademark identical to a common personal name. See Rusconi Editore S.p.A v. FreeView Publishing Inc., WIPO Case No. D2001-0875. The first to register a domain name containing a common personal name has a legitimate interest in it, notwithstanding that it is identical to a trademark.

The same principle was recognized in another case involving the Respondent: Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654. In that case, the Respondent had registered a domain name incorporating “Tammy”, another common woman’s name and, like in this case, used it to redirect Internet users to an adult website.

Bad faith

The third element that the Complainant must show is the Respondent’s bad faith registration and use of the disputed domain name. The Complainant cannot meet its burden of proving bad faith registration and use. There simply is no evidence, whatsoever, that the Respondent registered the disputed domain name for the purpose of selling, renting or transferring it to the Complainant; to prevent the Complainant from reflecting its trademark in a domain name, together with a pattern of such conduct; or to disrupt the Complainant’s business or attract customers seeking to purchase its products. Nor is there any evidence that the Respondent had any knowledge of the Complainant or its mark when it registered the disputed domain name – or at any time prior to the initiation of this dispute.

In Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654, the panel found that the Respondent did not engage in bad faith registration or use when it registered and used the domain name <tammy.com> to redirect to an adult website. The facts here are identical and the Panel should reach the same conclusion. The fact that “Lana” is a common woman’s name weighs heavily against a finding of bad faith.

Moreover, because the Respondent resides in Canada and the Complainant has no trademark registered in Canada and is not known there, there is no basis for the Respondent to have had knowledge of the Complainant.

Reverse domain name hijacking

A finding of reverse domain name hijacking is warranted where “the Complainant knew or should have known at the time it filed the Complaint that it could not prove that the domain name was registered in bad faith.” Futureworld Consultancy (Pty) Limited v. Online advice, WIPO Case No. D2003-0297. The Complainant conducted extensive research to locate other decisions involving the Respondent. It is inconceivable that the Complainant did not review the Etam, plc v. Alberta Hot Rods case before filing the Complaint. That case made it clear that the Respondent’s use of a domain name incorporating a common woman’s name in connection with an adult affiliate program established the Respondent’s legitimate interest and did not constitute bad faith registration and use.

 

6. Discussion and Findings

Under the Policy, paragraphs 4(a)(i) to (iii), for the Complainant to succeed and have the disputed domain name transferred to it, the Complainant must prove that:

– the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

– the Respondent has no rights or legitimate interests in respect of the domain name; and

– the domain name was registered and is being used in bad faith.

Paragraph 4(a) of the Policy provides that the Complainant must prove all of these three elements, which are discussed as follows.

A. Identical or Confusingly Similar

The Complainant provided substantial evidence of its registered rights in the trademark LANA. The Respondent did not deny that the disputed domain name is identical to the Complainant’s mark. The Panel accordingly makes that finding.

B. Rights or Legitimate Interests

It is naturally more difficult for a complainant to establish that a respondent has no rights or legitimate interests in a domain name that incorporates a common personal name. Common names are not distinctive. In comparable cases, panels have found that common names, incorporated in a domain name that reverts to a website offering pornography, are open to anyone to register. See e.g. Deanna S.p.A. v. Worldwide Media Inc., WIPO Case No. D2003-0964, which denied the complaint. Similarly, the complaint was denied in Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654. That case involved the same Respondent and very similar facts to this case.

However, because of the Panel’s finding as to bad faith, it is unnecessary for the Panel to determine whether the Respondent has rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances in which bad faith may be found. Each of those circumstances requires, or implies, that a respondent must have known, or ought to have known, of a complainant’s rights.

There is no evidence in this case that the Respondent had such knowledge. The Complainant states, for example, that the Respondent registered the disputed domain name “with the intent of trading on the reputation and goodwill associated with the complainant”. But the Complainant gives no convincing evidence to support that claim. Rather, the evidence suggests otherwise. As noted by the Respondent, the Complainant has no registered trademark rights in Canada, where the Respondent resides. The Complainant does not argue, and there is no evidence, that its mark is famous. The Complainant’s mark is, in English, a personal name. It also appears that the Complainant’s business (relating to planking boards, furniture boards, and boards for structural use) is particular and defined. It is not a field of business that would seem to naturally be brought to the attention of the Respondent.

Paragraph 4(b) is not exclusive. A panel may find that other circumstances evidence bad faith. The Complainant points to a number of such other circumstances. The principal ones are as follows.

Firstly, the Complainant points to the Respondent’s prior conduct (evidenced by proceedings under the Policy) of “registering a bunch of domain names correlative of a third person’s right with the intention of obtaining some profit”. That observation also obscures the fact that the Respondent has been both successful and unsuccessful in various proceedings brought against it under the Policy. A mere record of being a prior respondent under the Policy as such does not demonstrate the Respondent’s bad faith in the particular circumstances of this case.

Secondly, the Complainant appears to suggest that, because the disputed domain name might be confused with its mark, there is evidence of bad faith. That argument is flawed. Accepting it would mean that proving the first requirement of the Policy (that the domain name is identical or confusingly similar to the Complainant’s mark) would automatically prove the third, distinct, element of the Policy (bad faith). The Complainant mistakenly points to a number of decisions under the Policy to support its argument. However, those cases were ones in which the respondents deliberately created confusion to profit. As noted above, there is no evidence that the Respondent intended to create confusion with the Complainant’s mark in this case.

Thirdly, the Complainant suggests that the reversion of the disputed domain name to a third party pornographic website is, itself, evidence of bad faith. The cases cited by the Complainant in this respect are misplaced. For example, the Complainant cites Fairchild Publications Inc. v. Saeid Yomtobian, WIPO Case No. D2000-1003. However, the panel in that case found that the respondent had actual and/or constructive knowledge of the relevant mark. Such a knowledge has not been established in this case. Further, there is no statement in the Fairchild case that the mere reversion of a domain name to a pornographic website is itself evidence of bad faith. Instead, there have been a number of previous panel findings to the contrary, involving similar facts to this case. Those cases are cited above, including at least one case cited by the Complainant itself (National Association of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, WIPO Case No. D2001-1387, quoted above.)

D. Reverse Domain Name Hijacking

Paragraph 15(e) of the Rules provides that the Panel may make a finding that the Complaint is brought in bad faith, for example in an attempt at reverse domain name hijacking. The Rules define “Reverse Domain Name Hijacking” as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.” The Respondent requests such a finding.

Although arguable, the Panel does not make such a finding. It is understandable for a party to argue its case selectively. On balance, the Complainant’s case suggests some misunderstanding, more than an actual or constructive knowledge that its case would not succeed.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.


James A. Barker
Presiding Panelist

Marino Porzio
Panelist

David E. Sorkin
Panelist

Dated: February 6, 2006