13th Feb 2007

WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Storage Equipment Safety Service Limited v. Ashantiplc Limited

Case No. D2006-1424

 

1. The Parties

The Complainant is Storage Equipment Safety Service Limited, of Northumberland, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Ashantiplc Limited, of Hong Kong, China, represented by ESQwire.com Law Firm, United States of America.

 

2. The Domain Name and Registrar

The Disputed Domain Name <sess.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 November 8, 2006. On November 9, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On November 21, 2006, 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. In response to an email communication from the Center providing information from the registrar regarding the registrant’s identity and contact details in Hong Kong, China, the Complainant filed an amendment to the Complaint on November 28, 2006. 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 December 4, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2006. The Response was filed with the Center on December 21, 2006.

The Center appointed Alistair Payne, Antony Gold and David E. Sorkin as panelists in this matter on January 23, 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.

 

4. Factual Background

The Complainant, Storage Equipment Safety Service Limited, provides Safety Inspection Services for the Warehousing Logistics industry. The Complainant is the owner of trademark registrations for device marks, containing the word SESS, in the UK (trademark number 1486969) and the USA (trademark numbers 2725601 and 272555), copies of which are at Annex 3 of the Complaint (the “SESS Marks”). The earliest of the SESS Marks is the UK trademark, registered on December 31, 1991.

The Respondent registered the Disputed Domain Name on March 2, 2000.

 

5. Parties’ Contentions

A. Complainant

The Complainant states that it has been providing Safety Inspection Services for the Warehousing Logistics industry since 1987. The Complainant submits that the Disputed Domain Name is identical to the Complainant’s trademark.

The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has not licensed or permitted the Respondent to use its trademark or to apply for any incorporating mark.

The Complainant asserts that SESS is part of its company brand/identity and is a recognised name in the industry in which it operates. The Complainant states that it has invested heavily in marketing over the years, to include attendance at exhibitions, advertising in safety magazines, and in general building up its reputation by providing a professional service.

B. Respondent

The Respondent contends that the Complainant’s trademark is not identical or confusingly similar to the Disputed Domain Name as the Complainant’s trademarks are design marks with the word SESS incorporated. The Respondent refers to Cream Holding Ltd v. National Internet Source, Inc, WIPO Case No. D2001-0964, in which the Panel in that case found that, despite the presence of the word, in stylized form, as part of the trademark, the disputed domain name was not confusingly similar to the trademark in question.

The Respondent submits that it acquired the Disputed Domain Name because SESS is a common word which is slang for marijuana and submits that the Complainant does not have exclusive rights to this slang term. A “dictionary.com” definition of SESS is annexed as Exhibit 1 of the Response and a declaration of Aliza Sarid as to the Respondent’s intention when registering the Disputed Domain Name at Exhibit 2. The Respondent claims that SESS is also an antiquated term for “assessment”. An advanced Google search for SESS, carried out by the Respondent excluding references to the Complainant, yielded over 1.5 million third party uses of SESS, this search is annexed to the Response as Exhibit 3. SESS is an extremely common term and also used by many third parties as an acronym. The Respondent submits that the fact that SESS is subject to substantial third party use on the Internet establishes the Respondent’s legitimate interest in the Disputed Domain Name. In this respect the Respondent refers to Energy Source Inc. v. Your Energy Source, NAF Case No. 96364; HP Hood LLC v. hood.com, NAF Case No. 313566; Ultrafem, Inc. v. Warren R. Royal NAF Case No. 97682; and Target Brand, Inc. v. Eastwind Group, NAF Case No. 97682.

It is well established under the Policy that anyone is entitled to register a domain name incorporating a common word and that the first to register such a domain name has a legitimate interest in it, provided that it was not registered with the purpose of selling to the complainant, disrupting its business, preventing it from acquiring a domain name incorporating its mark, or to confuse users. The Respondent submits that it had no knowledge whatsoever of the Complainant or its trademark when it registered the Disputed Domain Name. The Respondent further submits that there is no evidence that it registered the Disputed Domain Name to prevent the Complainant from utilizing its trademark in a domain name.

The Respondent hosts the Disputed Domain Name with <Hitfarm.com>, a domain name parking service that creates custom landing pages for domain names that present pay-per-click advertisements from Yahoo. <Hitfarm.com> pays domain name owners a share of the advertising revenue it earns from its hosted domain names. The Respondent submits that its legitimate interest in the Disputed Domain Name is further supported by its use of the Disputed Domain Name in connection with the provision of Yahoo advertising links through <Hitfarm.com> and referred to Williams, Babbitt & Weisman, Inc. v. Ultimate Search, NAF Case No. 98813; Dial-a-Mattress Operating Corp. v. Ultimate Search, WIPO Case No. D2001-0764; Etam, plc v. Alberta Hot Rods WIPO Case No. D2000-1654; GLB Servicos Interativos S.A. v. Ultimate Search, WIPO Case No. D2002-0189, Landmark Group v. Digimedia L.P., NAF Case No. 285459; Target Brands, Inc v. Eastwind Group, NAF Case No. 97682, Sweeps Vacuum & Repair Centre, Inc. v. Nett Corp, WIPO Case No. D2001-0031; Tire Discounters, Inc. v. TireDiscounter.com, NAF Case No. 679485; and HP Hood LLC v. hood.com, NAF Case No. 313566.

The Respondent asserts that as it had no knowledge of the Complainant, it could not have registered the Disputed Domain Name with mal intent or to disrupt the business of the Complainant. The Respondent submits that absent proof that it had knowledge of the Complainant’s mark when it registered the Disputed Domain Name, the Complaint must fail. It cannot be concluded that the Respondent selected the Disputed Domain Name with the Complainant’s trademark in mind and thus bad faith cannot be proven. The Respondent refers to BND Ent. d/b/a Dark Fire v. RN Web Reg et al, NAF Case No. 280502, Futureworld Consultancy PTY. Ltd v. Online Advice. WIPO Case No. D2003-0297, Kis v. Anything.com Ltd, and KCTS Television Inc. v. Get-on-the-Web Ltd WIPO Case No. D2001-0154.

The Respondent asserts that as SESS is a common term subject to substantial third party use, the Complainant must produce specific evidence of bad faith registration. This extensive third party use, according to the Respondent, is overwhelming evidence that the Complainant does not enjoy exclusive use of the Disputed Domain Name.

The Respondent submits that there is no evidence of any confusion between the Disputed Domain Name and the Complainant’s trademark, nor is there evidence of any intent to confuse on the part of the Respondent. There is no link on the Respondent’s website in any way related to “safety equipment service” or anything covered by the Complainant’s mark. The Respondent contends that, as the Complainant’s mark is a common term with substantial third party use, the Complainant must proffer evidence that demonstrates that the Respondent has specifically intended to confuse consumers seeking out the Complainant, and refers to Drew Bernstein et al v. Action Advertising, Inc. WIPO Case No. D2000-0706, Canned Foods, Inc v. Ult. Search Inc, NAF Case No. FA 96320, Lumena s-ka zo.o. v. Express Ventures LTD, NAF Case No. 9437).

The Respondent is seeking a finding that the Complainant has engaged in reverse domain name hijacking. The Respondent submits that the Complainant has abused the Policy by bringing a complaint wholly without merit. A finding of reverse domain name hijacking is warranted where the Complainant “knew or should have known at the time of the Complaint that it could not prove one of the essential elements required by the Policy” (Carsales.com.au Ltd v. Flanders, WIPO Case No. D2004-0047), Futureworld Consultancy, Pty Ltd v. On-line Advice, WIPO Case No. D2003-0297. There is no evidence that the Respondent had any knowledge of the Complainant or its trademark when it registered the Disputed Domain Name.

 

6. Discussion and Findings

If the Complainant is to succeed, it must prove each of the three elements referred to in Paragraph 4(a) of the Policy, namely that:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in Paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

There are two separate elements that the Complainant must prove under Paragraph 4(a)(i) of the Policy. First, that the Complainant has rights in a trademark or service mark, and second, that the Disputed Domain Name is identical or confusingly similar to the trademark in which the Complainant has rights.

The Panel notes that the Complainant has provided evidence that it is the proprietor of the SESS Marks which are all combined word and device marks. The earliest of the SESS Marks was registered on 31 December 1991. Accordingly, the Complainant has established that it has rights in the SESS Marks.

The dominant element of the Complainant’s SESS Marks is the word mark SESS. Obviously the Disputed Domain Name is not identical to the SESS Marks as they are combined device/word marks.

However, in the Panel’s view, this is not fatal because the Disputed Domain Name is confusingly similar to the SESS Marks. Previous Panels have found that since a domain name can in no way include a design element, any Internet user must find a website by searching the name they know, rather than the design element. Internet users, therefore, have to write SESS in the browser in order to reach a website pertaining to that trademark. Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s SESS Marks. See for example Park Place Entertainment Corporation v. Mike Gorman, WIPO Case No. D2000-0699; SWATCH AG v. Stefano Manfroi, WIPO Case No. D2003-0802; and Gewista-Werbedesellschaft mbH v. Unasi Inc., WIPO Case No. D2005-1051.

Accordingly, the Panel finds that the Complaint fulfills paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The burden of proof rests with the Complainant to establish at least 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 assertion with evidence of its rights or legitimate interests. See Document Technologies, Inc v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

The Complainant has established, prima facie, that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel accepts the Complainant’s assertion that there is no relationship between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant nor has it otherwise obtained consent to use the SESS Marks or to apply for any incorporating mark.

The Respondent asserts that its rights to the Disputed Domain Name are derived from the fact that SESS is, in their submission, a common term and its legitimate interest in the Disputed Domain Name is further supported by its use of the Disputed Domain Name in connection with the provision of Yahoo advertising links through <Hitfarm.com>.

In the Panel’s view, these assertions are inadequate to establish rights or a legitimate interest in the Disputed Domain Name. The Complainant has established a prima facie case that the Respondent has no rights or legitimate interest in respect of the Disputed Domain Name and the Respondent has not rebutted this assertion. Accordingly, the Panel finds that the Complainant has fulfilled Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances, without limitation, any of which if found by the Panel to be present shall be evidence of the registration or subsequent use of the Disputed Domain Name in bad faith. The Panel notes that the Complainant need only prove one of the four grounds set out in Paragraph 4(b) of the Policy in order to succeed in demonstrating that the Respondent has registered the Disputed Domain Name in bad faith.

The Panel, in this case on the available evidence, rejects the Complainant’s assertion that the Respondent, by using the domain name for a domain name parking service which employs pay per click advertising, is intentionally attracting Internet Users for its commercial gain creating a likelihood of confusion with the Complainant’s mark, pursuant to Paragraph 4(b)(iv) of the Policy. In this case there is no evidence of any confusion or of any intent to create confusion on the part of the Respondent. Nor is there any evidence that the Respondent registered the Disputed Domain Name with the intention of disrupting the Complainant’s business.

The Complaint’s trademarks are registered in the UK and USA, but the Complainant has offered no evidence that its trademark is known in Hong Kong or that the Respondent selected the Disputed Domain Name with knowledge of the Complainant’s trademarks. In the Panel’s view on the available evidence it is just as likely that the Respondent chose the Disputed Domain Name itself as it is that it knew of the Complainant’s marks. Overall there is inadequate evidence to demonstrate that the Disputed Domain Name was registered and used in bad faith by the Respondent.

Accordingly, the Panels finds that the Complaint does not fulfill Paragraph 4(a)(iii) of the Policy.

Reverse Domain Name Hijacking

The Respondent has asked for a finding of Reverse Domain Name Hijacking under paragraph 15(e) of the Rules.

A finding of Reverse Domain Name Hijacking may be made “if the Complainant knew or should have known at the time that it filed the Complaint that it could not prove that the domain name was registered in bad faith, see Futureworld Consultancy Opty Ltd v. Online Advice, WIPO Case No. D2003-0297.

Reverse domain name hijacking is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name”. Paragraph 15(e) of the Rules provides that “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 or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. The onus of proving bad faith is on the Respondent, and mere lack of success of the Complaint is not of itself sufficient to constitute reverse domain name hijacking, see Deutsche Post AG v. NJDomains, WIPO Case No. D2006-0001.

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.

While there is no evidence of bad faith registration on the part of the Respondent, neither is there sufficient evidence that the Complaint was brought in bad faith or that the Complainant knew or should have known at the time of the Complaint that it could not prove one of the essential elements required by the Policy. In the circumstances, the Panel is not prepared to go so far as to find that this is an attempt at reverse domain name hijacking.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

Alistair Payne
Presiding Panelist

Antony Gold
Panelist

David E. Sorkin
Panelist

Dated: February 13, 2007