9th Jun 2009

 

National Arbitration Forum

 

DECISION

 

Shoe Land Group LLC v. Development, Services c/o Telepathy Inc.

Claim Number: FA0904001255365

 

PARTIES

Complainant is Shoe Land Group LLC (“Complainant”), represented by Li K. Wang, of Wang Law Firm Inc., Georgia, USA. Respondent is Development, Services c/o Telepathy Inc. (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <shoeland.com>, registered with Moniker Online Services, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Mr. Flip Petillion, Mr. Tyrus R. Atkinson, Jr.and The Honourable Neil Anthony Brown QC as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 31, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 3, 2009.

 

On April 10, 2009, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <shoeland.com> domain name is registered with Moniker Online Services, Inc. and that the Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On April 14, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 4, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@shoeland.com by e-mail. Upon application and payment by Respondent for an extension of time to respond, an Extension of Time to Respond to Complaint was granted with a new deadline of May 14, 2009.

 

A timely Response was received and determined to be complete on May 12, 2009.

 

An Additional Submission was received from Complainant on May 18, 2009, and deemed timely and complete in compliance with Supplemental Rule 7.

 

An Additional Submission in Reply to Complainant’s Additional Submission was received from Respondent on May 27, 2009, and deemed timely and complete in compliance with Supplemental Rule 7.

 

On 28 May 2009, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Mr. Flip Petillion, Judge Mr. Tyrus R. Atkinson, Jr. and The Honourable Neil Anthony Brown QC as Panelists.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Shoe Land Group, Inc. is a provider of retail store services in the field of footwear and related accessories. Complainant asserts that it has continuously used the ‘SHOE LAND’ trade mark in several states since March 1, 1997.

 

Shoe Land Group, Inc. owns the US registered service mark SHOE LAND since April 4, 2006.

 

Complainant argues that Respondent registered the domain name <shoeland.com> and has intentionally attempted to attract, for a commercial gain, Internet users to a website by diverting Internet users searching for Complainant’s services. 

 

Complainant contends that Respondent’s domain name is confusingly similar to Complainant’s registered mark and operating name. Complainant further contends that Respondent has no rights or legitimate interests in the domain name.  Complainant contends that Respondent registered and is using the domain name in bad faith.

 

Finally, Complainant argues that its complaint has not been brought in bad faith, as it is neither an attempt at Reverse Domain Name Hijacking, nor a complaint brought primarily to harass the domain name holder.

 

 

 

 

B. Respondent

 

Development Services c/o Telepathy, Inc. is a business that registers domain names with an intrinsic value, that generates revenue from pay-per-click advertising links. Respondent registered the domain name <shoeland.com> on September 6, 1998.

 

Respondent contends i) to have rights and a legitimate interest in the domain name, ii) that the domain name was not registered or used in bad faith. Respondent argues that Respondent had no basis for the Complaint and requests the Panel to issue a decision holding that Complainant has engaged in Reverse Domain Name Hijacking

 

C. Additional Submissions

 

In its additional submission, Complainant argues having common law trademark rights as of September 6, 1998, based on use, promotion, and enforcement since 1997. Complainant also contends that its trademark has secondary meaning.

 

Respondent responds to this by arguing that “Shoe Land” is a descriptive term without secondary meaning as of the registration date of the disputed domain name. It is argued that Complainant’s advertising expenditure in local newspapers for two Florida stores is not sufficient to create secondary meaning as of September 6, 1998.

 

FINDINGS

1.      Complainant is the owner of the following trademark registration:

 

U.S. Reg. No. 3,076,357 – SHOE LAND for retail store services in the field of footwear for men, women, and children, and related accessories such as handbags and belts in class 35 (U.S. CLS. 100, 101 and 102), registered April 4, 2006.

 

2.      Complainant first used its trademark on March 1, 1997.

 

3.      Respondent registered the domain name <shoeland.com> on September 6, 1998. At that time Complainant had locally advertised its two Florida stores.

 

4.      Respondent uses the domain name as a parking page with pay-per-click advertisements.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)   the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the Respondent has no rights or legitimate interests in respect of the domain name; and

(3)   the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant asserts its rights in the SHOE LAND mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) on April 4, 2006 (Reg. No. 3,076,357). The Panel finds that Complainant has sufficient rights in the mark under Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).

 

In its Complaint and Additional Submission, Complainant also asserts and provides evidence of its rights in the SHOE LAND mark through its continuous use of the mark in commerce since at least as early as March 1997. Nevertheless this use of the mark remained local, and does not provide the mark with secondary meaning. As a result, the Panel finds that Complainant does not have sufficient common law rights in the SHOE LAND mark under Policy ¶ 4(a)(i), dating back to March 1997. 

 

Complainant contends that the <shoeland.com> domain name is identical to Complainant’s SHOE LAND mark under Policy ¶ 4(a)(i) despite the removal of the space in the mark and the addition of the generic top-level domain “.com.” The Panel agrees with this and is of the opinion that the <shoeland.com> domain name is identical to the SHOE LAND mark under Policy ¶ 4(a)(i). See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); see also Snow Fun, Inc. v. O’Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark).

 

Rights or Legitimate Interests

 

The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).

 

Respondent contends that Complainant does not have common law rights dating back as far as September 1998, when Respondent registered the disputed domain name, because Complainant’s SHOE LAND mark had not acquired secondary meaning by that time. Respondent contends that the evidence put forth by Complainant fails to demonstrate that Complainant was well-known yet outside of the Orlando, Florida area, or that Complainant had spent much money promoting the SHOE LAND mark. 

 

The Panel agrees with this argument and it is of the opinion that Respondent had rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Warm Things, Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002) (finding that the complainant had not met its burden of proof to show respondent lacked rights or legitimate interests in a domain name when respondent’s registration of that domain name occurred before the complainant had established rights in its alleged mark); see also Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (finding that the respondent does have a legitimate interest in the domain name where the respondent registered the disputed domain name for a legitimate business purpose prior to complainant’s application for registration of the mark and the complainant has not proven any earlier use of the mark).

 

Respondent contends that it registered generic domain names as a business practice, and that this confers upon it rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel is of the opinion that the disputed domain name consists of generic terms, and also finds that registering such a generic domain name is a business practice that confers upon the practitioner rights or legitimate interests in that domain name. As a result, the Panel finds that Respondent established rights in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See EU Prop. Portfolio Ltd. v. Salvia Corp., FA 873726 (Nat. Arb. Forum Feb. 7, 2007) (holding that the respondent’s website usage of pay-per-click links was a bona fide offering of goods and services); see also Accetta v. Domain Admin, FA 826565 (Nat. Arb. Forum Jan. 2, 2007) (finding the respondent’s use of the disputed domain name to operate a pay-per-click search engine was a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) because the terms of the disputed domain name were of common usage and did not refer to the complainant or its products).

 

Registration and Use in Bad Faith

 

The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).

 

The Panel already established above that Respondent has rights or legitimate interests in the <shoeland.com> domain name pursuant to Policy ¶ 4(a)(ii). Since Respondent had rights or legitimate interest in the disputed domain name at the time of the registration of the disputed domain name, the registration was not in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).

 

The Panel finds that a respondent is free to register a domain name consisting of common terms, unless he is aware or should have been aware of the secondary meaning those common terms had at the time of the registration. 

 

Since the disputed domain name contains such common terms and as there was no secondary meaning at the time of the registration, the Panel is of the opinion that Respondent did not register  the <shoeland.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Zero Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (“Common words and descriptive terms are legitimately subject to registration as domain names on a ‘first-come, first-served’ basis.”); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).

 

Since it is established that the disputed domain name was not registered in bad faith, the question whether or not this domain name is used in bad faith has become irrelevant.

 

Reverse Domain Name Hijacking [1]

 

Complainant provides evidence in both its Complaint and its Additional Submission to support its contentions that Complainant has been actively promoting the SHOE LAND mark since at least as early as 1997, and so Complainant could not be engaged in reverse domain name hijacking of the disputed domain name. 

 

The Panel is of the opinion that Complainant has satisfied Policy ¶ 4(a)(i). Therefore, the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).

 

Since domain reverse name hijacking requires bad faith on the Complainant’s part and since no such bad faith is present, the Panel considers that Complainant did not bring the instant complaint in an attempt of reverse domain name hijacking. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).

 

DECISION

Having failed to establish all of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

SEPARATE DECISION BY THE HONOURABLE NEIL ANTHONY BROWN QC

ON THE ISSUE OF REVERSE DOMAIN NAME HIJACKING

 

I agree with my two panelists colleagues as to the result in this proceeding, that the Complaint should be denied and the grounds on which that decision is reached, namely that the Respondent has a right or legitimate interest in the disputed domain name and that the Respondent did not register the domain name in bad faith.

Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as:

“using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”

Paragraph 15(e) provides:

“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.”

 

I would have made a finding of Reverse Domain Name Hijacking for the following reasons.

 

First, the Complaint is a very dubious one, essentially based on a registered trademark that was applied for 7 years after the domain name was registered and registered 8 years after the domain name. It must, therefore, always have been apparent to Complainant that it would not have been able to establish that the domain name had been registered in bad faith. Despite this, it filed the Complaint.

 

Secondly, Complainant then proceeded to allege and argue for bad faith registration and use. Such allegations should not be made unless there is some reasonable basis for doing so and nor should they be persisted with when all the facts become known and it is clear that the allegations are unfounded.

 

In the present case Complainant must have known that there was no reasonable basis for making the allegation of bad faith in the first place. It alleged that it had established a common law trademark, based solely on some advertisements for its two retail stores in Orlando, Florida, but there is no evidence of consumers identifying the alleged mark with Complainant or its products and no evidence from which it could be inferred that Respondent would or could have heard of Complainant.

 

 It then alleged that Respondent must have registered the domain name in bad faith, “purposefully” to divert “Internet users searching for Complainant’s services”, an allegation that could not have been true. That allegation could not be true, as the domain name was registered 7 years before the registered trademark was applied for and the Respondent itself did not register an interest on the internet until four years later, when it registered the domain name <shoeland.net>[2] ; until then, internet users would have been searching in vain on the internet for Complainant’s services. Accordingly, it must have been apparent to Complainant that it was false to allege that the Respondent had registered the domain name with the intention of diverting internet users away from Complainant or even with Complainant in mind.

 

For the same reasons, Complainant could not reasonably allege that the Respondent has been using the domain name in bad faith. In addition to the reasons given above, it should be noted that the domain name was registered on September 6, 1998 and that the present Complaint was not filed until over 10 years later, on March 31, 2009. Although, as Respondent concedes, laches is not generally recognized as a defence in UDRP proceedings, such a long delay shows on the balance of probabilities that when the Complaint was filed, Complainant itself did not believe the domain name had been used in bad faith. Alternatively, the delay of almost two years since Complainant evinced a desire to buy the domain name leads to the same result. More particularly, it can hardly be said that Complainant stood by during those periods of time believing that Respondent was actively siphoning off its potential customers and yet doing nothing of substance about it. As the panelist said in The New Piper Aircraft, Inc. v. Piper.com, FA 94367 (NAF May 2, 2000), one of the 3 cases cited by Respondent on this issue,

 

“Complainant’s waiting two years to complain after being advised of the existence of the site indicates that Complainant did not believe that Respondent intended to attract internet users to its site through confusion.”

 

Thirdly, the Complainant’s approach was compounded by divulging what were clearly “without prejudice” negotiations with the Respondent’s attorney on a possible sale of the domain name and hence a settlement of the dispute. The Complainant alleges that on one occasion when it offered to buy the domain name, “the Respondent countered with an offer that was quite exorbitant”, which is then revealed as $18,000 and is said to show Respondent’s bad faith. It now appears that this offer was contained in an email to Complainant’s counsel, that it was headed ‘Confidential – For Settlement Purposes Only’ and that it was itself countered by an offer from the Complainant higher than its previous proposal. As noted in the Procedural History above, the Complainant filed an Additional Submission and it is noteworthy that Complainant did not take the opportunity to deny the events just described. On general principles, the negotiations referred to should not have been revealed. More significantly, they should not have been relied on by Complainant to bolster a case for bad faith on the part of the Respondent that clearly did not exist.

 

Moreover, Complainant persisted with its allegations of bad faith throughout the proceedings, even repeating them in its Additional Submission when all of the facts were known. Its final allegation of bad faith against Respondent, that it registers ‘generic words that others may wish to use’ ( emphasis added), not only fails to show bad faith but is entirely misconceived.

 

In substance, this case is therefore analogous to the decision of the three person panel in the case cited by Respondent, Mess Enterprises v. Scott Enterprises, Ltd.,WIPO Case No. D2004-0964. In that case, as in the present case, “… any scenario under that the Respondent actually had or could have had any prior knowledge of Complainant’s mark at the time it registered the disputed domain name would have been simply impossible.” Likewise in that case, as in the present case, when Complainant could not buy the domain name, it proceeded to allege bad faith registration and use, without any reasonable basis for doing so. As the panel in those circumstances made a finding of reverse domain name jacking, so in the present case such a finding should be made.

 

It is true that Complainant has succeeded on one element of the Policy, namely that the disputed domain name is identical to the registered trademark. It is sometimes said on the basis of World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles (supra) and  Gallup, Inc. v. PC+s.p.r.l., (supra) that there should not be a finding of reverse domain name hijacking when the Complainant has been partly successful. But in the former case, Complainant had succeeded on all three elements, including a finding against Respondent of bad faith registration and use; it would have been inconceivable that a finding of reverse domain name hijacking could then have been made against Complainant. In the latter case, the trademark of the famous company had been registered 18 years before the domain name and there was a real dispute between the parties that justified the filing of the Complaint. None of those features are present in the instant case, which is essentially one where there was no reasonable ground for Complainant’s making the claim or alleging bad faith.

 

In any event, Complainant has succeeded on the first element only in the most notional way and on an issue that it did not really advance. Its allegation was not that the domain name was identical to the trademark; its argument was solely that the domain name was confusingly similar to the trademark, which it was not, for no reasonable bystander would assume that the ‘shoeland’ of the domain name was invoking the Shoe Land of Complainant, confined as it was to two stores in one city and with no presence of the internet. Accordingly, Complainant has not succeeded in any substantial sense on any of the issues in this proceeding

 

Those considerations show that within the meaning of Paragraph 15(e) of the Rules, the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking.

 

Obviously, a panel should not lightly make a finding of Reverse Domain Name Hijacking against a complainant, but nor should it shy away from making such a finding in a clear case. The present case is not a borderline but a clear case and the finding therefore should be made.

 

The Honourable Neil Anthony Brown QC

 

 

 

 

 

 

Mr. Flip Petillion, Mr. Tyrus R. Atkinson, Jr. and The Honourable Neil Anthony Brown QC,
Dated: June 9, 2009

 

National Arbitration Forum



 



[1] Panellist Brown has a different opinion on the issue of reverse domain name hijacking and has expressed his views in the separate decision appearing after the majority decision.

[2] See WHOIS at http://www.melbourneit.com.au/cc/whois/search