8th Aug 2013

ADMINISTRATIVE PANEL DECISION

TOGU Gebruder Obermaier oHG v. Whois Privacy Protection Service, Inc. / PortMedia Domains

Case No. D2013-0914

1. The Parties

Complainant is TOGU Gebruder Obermaier oHG of Prien-Bachham, Germany, represented by Axinn | Veltrop | Harkrider | LLP, United States of America (“US”).

Respondent is Whois Privacy Protection Service, Inc. of Bellevue, Washington, US / PortMedia Domains of Hong Kong, China, represented by Esquire.com, US.

2. The Domain Name and Registrar

The disputed domain name <togu.com> is registered with eNom (the “Registar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2013. On May 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 24, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 3, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 4, 2013.

The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on June 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2013. The Response was filed on June 25, 2013.

The Center appointed Miguel B. O’Farrell, Christopher J. Pibus and The Hon Neil Brown Q.C. as panelists in this matter on July 17, 2013. 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.

On July 15, 2013, Complainant filed a supplementary submission. On July 19, 2013, the Panel issued Administrative Procedural Order No. 1 by which it invited Respondent to submit to the Center its comments in reply to Complainant’s supplementary submission by July 24, 2013, and extended the date for the decision until August 5, 2013. On July 24, 2013, Respondent filed a supplementary submission. In the exercise of its discretion the Panel has decided to take both supplementary submissions into account in the course of its deliberations.

4. Factual Background

Complainant is a German company that also operates in the United States of America in the field of supplying products that it describes as “toys, sport balls and exercise and training devices, and also with medical devices designed for therapy and rehabilitation”. Complainant’s business originated in Germany. It has two United States trademarks for TOGU which were applied for on April 19, 2000 and registered on September 3, 2002, both of which dates are later than the acquisition of the disputed domain name which occurred on March 7, 2000. Respondent Port Media Domains is a Hong Kong company whose business is to acquire domain names and develop or sell them to other entities. Since it acquired the disputed domain name it has been used in general for links to goods and services of a general nature.

5. Parties’ Contentions

A. Complainant

 

Complainant made the following contentions.

1. The disputed domain name is identical to trademarks in which Complainant has rights.

(a) Complainant is the owner of two registered United States Federal Trademarks, Registration Nos. 2613895 and 2613897 with priority dates of October 19, 1999, for the word mark TOGU.

(b) Complainant uses this mark in the United States in conjunction with toys, sport balls and exercise and training devices, and also with medical devices designed for therapy and rehabilitation.

(c) Respondent has registered the disputed domain name which is identical to the trademark owned by Complainant.

2. Respondent has no rights or legitimate interests in respect of the disputed domain name.

(a) Respondent has no rights or legitimate interests in the disputed domain name as it is not, and has not, used the mark TOGU in any commercial aspect.

(b) Respondent does not own any trademark registrations for any marks similar to TOGU and has not used such a mark in relation with any commercial products. Nor has Respondent become known under the name TOGU. Since its 2000 creation, Respondent’s website has not been functional in any way, commercial or otherwise. It has simply been a blank site accepting bids to acquire the disputed domain name from a more legitimate party.

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

(a) Respondent registered the disputed domain name in had faith and continues to maintain it in bad faith.

(b) Since its creation 2000, the disputed domain name has not been used for any commercial, or noncommercial, purpose.

(c) Furthermore, since at least March 2004, Respondent has openly advertised selling the disputed domain name. It is clear from this behavior that Respondent has no intention of using the disputed domain name for any purpose other than to exploit the TOGU mark.

(d) Respondent’s bad faith is further shown by communications that Complainant has had with Respondent or Respondent’s agents. In order to end the dispute and transfer the disputed domain name, Complainant has reached out twice to Respondent to offer to buy the disputed domain name. The first offer resulted in a statement that only a “five figure price range” would be considered as an offer. By failing to answer Complainant’s second email, Respondent again shows bad faith registration of the disputed domain name.

B. Respondent

 

Respondent made the following contentions.

1. Whether Complainant’s trademark is identical or confusingly similar to the disputed domain name.

Respondent does not take a position on the enforceability of Complainant’s trademark, only to note the existence of third party use of “togu,” which supports Respondent in both the legitimate interest and bad faith sections of the Policy because there is no basis for inferring Respondent targeted Complainant’s trademark.

2. Whether Respondent has rights and legitimate interests in the disputed domain name.

(a) “Togu” is simply a 4-letter combination and a common acronym for many entities unrelated to Complainant. It is well-established that, like common words, anyone is entitled to register domain names incorporating letter combinations to which Complainant does not have exclusive rights and Respondents’ legitimate interest is established per se.

(b) Under appropriate circumstances the offering for sale of a domain name can itself constitute a bona fide offering of goods or services for purposes of paragraph 4(c)(i) of the Policy. Respondent’s legitimate interest is bolstered by the fact that it uses the disputed domain name in connection with the bona fide provision of advertising services. Respondent uses the disputed domain name to post advertising links for general topics of interest. Accordingly, because Respondent has a legitimate interest in the disputed domain name, the Complaint should be denied.

3. Whether the disputed domain name was registered and is being used In bad faith

(a) As noted, “togu” is a common 4-letter acronym. Because of the substantial third-party use of the term, Complainant must produce specific evidence of bad faith since there is no proof that Complainant’s mark was the reason Respondent registered the disputed domain name. Complainant has failed to provide such evidence. Absent direct proof that a common term or combined letter disputed domain name was registered or acquired solely for the purpose of profiting from Complainant’s trademark rights, there can be no finding of bad faith registration or use.

(b) Use of a link for an offer to sell a domain name is not evidence of bad faith.

(c) The long delay in bringing this proceeding also raises the defence of laches or alternatively an inference that Complainant did not truly believe Respondent engaged in bad faith registration.

C. Supplementary submission by Complainant

 

Complainant filed a supplementary submission in which it made the following contentions.

1. Respondent does not have legitimate business interests in the disputed domain name and has acted in bad faith by registering it. Respondent has been hiding behind a privacy protection service and if it intended to make a legitimate business from registering domain names and parking them, it would not hide its name from the public that may wish to engage with it and develop its business further.

2. Respondent’s bad faith is also shown by the blatant competitive advertising links that run on the website to which the disputed domain name resolves. It claims that the links relate “to topics of general interest”, but the links are not random and the links for “Gym Balls” and “Fitness Balls” are always on the website. Thus, Respondent has used the identical trademark of TOGU to lead consumers to its website where they can then be led to “gym balls” and “fitness balls” in direct competition with Togu’s business.

3. Respondent claims that it “had no knowledge of Complainant, its website, its business name or trademark” when registering the disputed domain name. However, the fact that of all the possible “random” combinations such as <togb.com>, only <togu.com> was chosen, points to bad faith on the part of Respondent.

4. Laches does not apply to UDRP proceedings. Moreover, Respondent has suffered no harm in what it perceives as a “long delay” in bringing this proceeding.

5. The conclusion is that Respondent has registered a domain name identical to Complainant’s trademark, Respondent has not shown any legitimate business interests in the disputed domain name, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services and nor has it become known as “Togu”, thus showing that it is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers. Moreover, Complainant has established that Respondent has acted in bad faith by at least showing circumstances indicating that Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location. Respondent also attempted to exploit Complainant when Complainant attempted good faith negotiations to purchase the disputed domain name.

D. Supplementary submission by Respondent

Respondent filed a supplementary submission in which it made the following contentions.

1. The word “togu” is a common 4-letter acronym. Because of the substantial third-party use of the term, Complainant must produce specific evidence of bad faith since there is no proof that Complainant’s mark was the reason Respondent registered the disputed domain name. Complainant has failed to provide such evidence either in the Complaint or its Supplementary submission (after being placed on notice). Accordingly, its claim must fail.

2. “Togu” is an Italian word for the country “Togo” and is merely an acronym and not a well-known fanciful trademark. Consumers certainly do not see Complainant’s mark as the exclusive meaning for the letters “togu.”

3. There is no logic to the allegation that Respondent targeted Complainant when it registered the disputed domain name in 2000. It is implausible that Respondent, which does not operate in Germany, would have had a reason to believe that Complainant, or any third party, had a superior right to, or interest, in the disputed domain name. It is settled that absent direct proof that a common term or combined letter domain name was registered or acquired solely for the purpose of profiting from complainant’s trademark rights, there can be no finding of bad faith registration or use.

4. Use of a privacy service and a link to an offer to sell are not evidence of bad faith.

5. Offering a domain name for sale is not evidence of bad faith. It only constitutes bad faith registration to register a domain name with the intent to sell it to the trademark owner. There is absolutely no evidence the disputed domain name was registered with this intent.

6. Links related to a few products of Complainant are not evidence of bad faith. Links to “Gym Ball” and “Fitness Ball” are isolated and not evidence of bad faith. Moreover any such links are irrelevant in determining Respondent’s mindset in 2000 when it registered the disputed domain name.

7. There simply is no evidence that Respondent targeted Complainant when it registered the disputed domain name or that it targeted any trademark.

6. Discussion and Findings

 

A. Identical or Confusingly Similar

 

The first question that arises is whether Complainant has a trademark or service mark on which it may rely. Complainant has provided evidence that it is the owner of two registered United States Federal Trademarks, Registration Nos. 2613895 and 2613897 for the word mark TOGU (the “TOGU trademark”). Each trademark was applied for on April 19, 2000, and registered on September 3, 2002. The Panel has examined the certificates of registration of those two trademarks and finds that they are valid registrations although they are not in the precise name of Complainant. Complainant says its name is TOGU Gebruder Obermaier oHG and it may well be, but the trademarks are in the name of Gebruder Obermaier oHG and no explanation has been given for the difference. On the balance of probabilities, the Panel will accept that Complainant is the owner of the two trademarks referred to and finds accordingly that Complainant has satisfied this first requirement. It is of course noted that the two trademarks were applied for and registered after Respondent acquired the disputed domain name on March 7, 2000; however, paragraph 4(a)(i) of the Policy makes it clear that a complainant must establish that there is a trademark “in which the complainant has rights”, i.e. has rights at the time of the filing of the Complaint, which Complainant in this case has done.

In its supplementary submission, Complainant raised for the first time the proposition that it also had a common law trademark in TOGU. No reason was given as to why this issue had not been raised in Complainant’s original submission in the Complaint, which must cast doubt on how convinced Complainant is about its submission. Moreover, although Complainant has alleged in its supplementary submission that it has a common law trademark for TOGU, no evidence was submitted that would enable the Panel to accept that submission. There was no evidence on matters such as why consumers should think that TOGU identified Complainant as the source of any particular goods and sources and no evidence at all as to whether and, if so, how Complainant has advertised or promoted the name or been recognized in the commercial community as the source of goods or services sold under that name; indeed, Respondent’s evidence that the word “togu” is in extensive use as the Italian spelling of the African country Togo, a surname and as a name widely used in business makes it inherently unlikely the public would associate the word exclusively with Complainant or, for that matter, with anyone else. It is far more likely that the word is a random collection of letters that form one of those words that are becoming increasingly valuable as domain names as businesses adopt short, memorable groups of letters to use as business and professional names. In any event, the Panel finds there is no evidence tending to suggest that Complainant has a common law trademark in TOGU. However, Complainant has proved its two US trademarks and has therefore satisfied this essential requirement.

The second question that arises is whether the disputed domain name is identical or confusingly similar to the TOGU trademark. As the spelling, sound and appearance of the disputed domain name is exactly the same as the spelling, sound and appearance of the TOGU trademark, the Panel finds that they are identical.

Complainant has thus made out the first of the three elements that it must establish.

B. Rights or Legitimate Interests

 

In view of the conclusion reached by the Panel on the question of whether the disputed domain name was registered and used in bad faith, it is not necessary for the Panel to deal with the question whether Respondent has rights or legitimate interests in the disputed domain name. However, it will be seen that some of the issues that are discussed in the next section dealing with bad faith are also relevant to rights and legitimate interests.

 

C. Registered and Used in Bad Faith

 

Paragraph 4(b) of the Policy sets out four non-exclusory circumstances that are taken to be evidence of bad faith registration and use which are:

“(i) circumstances indicating that you (Respondent) have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you (Respondent) have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you (Respondent) have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you (Respondent) have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

Clearly, paragraph 4(b)(i) of the Policy could not be relied on in the present case. That is because there is no evidence that Respondent acquired the disputed domain name primarily for the purpose of selling or renting it to Complainant or one of its competitors, that Respondent knew of Complainant or its trademark, or even that Complainant was in business in the United States at the time Respondent registered the disputed domain name. Nor is there any evidence from which the Panel could responsibly draw an inference that Respondent was or could have been so motivated. Nor could paragraph 4(b)(ii) of the Policy be relied on, as if Respondent did not know of Complainant’s trademark, which seems probable, it could scarcely have registered a domain name to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, there also being no evidence of a pattern of such conduct. Paragraph 4(b)(iii) of the Policy is equally unsupported by any evidence or inference.

In its Complaint, Complainant did not rely on paragraph 4(b)(iv) of the Policy, although it opened up a new front in its supplementary submission by raising it as an additional ground of bad faith. The basis on which Complainant says this paragraph has been met is apparently that two of the links on Respondent’s website have been “gym balls” and “fitness balls” and that, as Complainant sells gym balls and fitness balls, this must be an attempt to give the impression that the website to which the disputed domain name resolves is Complainant’s website or one approved by it and that it is a deceptive means of drawing business away from Complainant to Respondent or its associates. This is of course possible, but in the opinion of the Panel it is unlikely. One of the two trademarks relates to “sports balls” so the products overlap and it is clear that Complainant makes and sells gym balls and sports balls. But the website to which the disputed domain name leads is clearly one the substance of which has been to promote general goods and services, not the goods of the sort sold by Complainant. If the intention was to give the impression that the website was a website of Complainant or that it was using Complainant’s name to endorse the products of others, it seems a remarkably half hearted and unpersuasive effort at doing so and one where the full range of the products of Complainant is not promoted. Two passing references in 13 years to one of the products of Complainant suggests that Respondent was not trying to mislead consumers, in the words of the Policy “intentionally”. The matter is not entirely free from doubt but on the evidence the Panel is unable to draw an inference that that Respondent intended to create confusion as to the source, sponsorship, affiliation, or endorsement of its website or of goods promoted on it.

Complainant has, however, gone further than the criteria in paragraph 4(b)(iv) of the Policy, as it is entitled to do and has relied on other grounds to show bad faith. Complainant’s case for maintaining that Respondent has registered and used the disputed domain name in bad faith is put on three bases.

The first basis is that since its creation in 2000, the disputed domain name has not been used for any commercial, or noncommercial, purpose. However, Respondent has submitted and tendered evidence that its business is the registration of generic and descriptive common word and 2, 3, and 4 letter domain names, their commercial development and then the possible reselling of those names because they are attractive commercial propositions. Moreover, Respondent’s submission and evidence is to the effect that this is what it was doing with respect to the disputed domain name and that it accounts for the advertising links on its website. In the Panel’s view, Respondent’s activity in this regard is legitimate and lawful provided that it does not target or trade off Complainant’s trademark or engage in any other inappropriate conduct. In the present case, there is no evidence that Respondent was either attempting to take part in or did take part in an abusive registration of the disputed domain name. Not only is there a distinct lack of evidence to that effect but the history of events is such that it would have been difficult if not impossible for Respondent to engage in such an abusive registration even if it had been so inclined. That is so because the two US trademarks relied on by Complainant (the only trademarks it relied on) were filed on April 19, 2000, and registered on September 3, 2002, both of which of course are after the disputed domain name was registered on March 7, 2000. Complainant claims that the two US trademarks have a “priority” from 19 October 1999. That appears to be a “claimed priority” based on the fact that there were also German trademarks obtained by Complainant. Even if such German trademarks were registered prior to the registration of the disputed domain name, which is by means clear, there is no evidence that Respondent was aware of this or could have become aware of it before the disputed domain name was registered. That being so and Complainant’s case being unpersuasive, Respondent’s position is at least plausible and more likely than not to have occurred, i.e. that it registered the disputed domain name not to harm Complainant but because it was a potentially valuable short name that could be developed and which, being an acronym, might well become attractive to potential buyers. Although it is difficult to be definitive about such matters that go to the intention of Respondent some 13 years ago, the Panel concludes that there is no evidence that the registration of the disputed domain name and its subsequent use were carried out for any improper or illegitimate purpose.

The second basis on which the allegations of bad faith are put is that since at least March 2004, Respondent has openly advertised the disputed domain name for sale. Obviously, in some circumstances the conduct of a registrant with respect to selling a domain name has to be looked at closely, but in the present case there is no evidence from which an inference can be drawn that offering the disputed domain name for sale was an act of bad faith. Indeed, offering the disputed domain name to the highest bidder seems to be consistent with Respondent’s business and, as Respondent points out, UDRP panels have taken the view that it is legitimate to buy and sell domain names, as was noted in Audiopoint, Inc. v. eCorp a/k/a Chad Folkening, WIPO Case No. D2001-0509 (“Indeed, speculation in domain names when done without any intent to profit from others’ trade mark rights may itself constitute a bona fide activity under paragraph 4(c)(i)”).

The third basis on which Complainant put its case for bad faith was that Respondent has been “hiding behind Respondent WhoIs Privacy.” Again, in some circumstances the use of a privacy service together with other facts may suggest bad faith. But the Panel is also aware that privacy services are widely used for legitimate purposes and in any event the actual registrant has emerged without any apparent difficulty and the proceedings have not been handicapped. Nor are there any other facts that might tend to show from the use of the privacy service any abusive intent on the part of Respondent toward Complainant. Indeed, the only rational conclusion from the evidence is that Respondent more likely than not did not know of Complainant or its trademark even after the trademark was registered, let alone before it was registered.

In general, the Panel’s view is that this case is not one that appears to have any of the hallmarks of an abusive registration. Although the word “togu” itself would be said by some to be inherently distinctive, the evidence fails to establish that it is or was at any relevant time well known, particularly at the time of registration of the disputed domain name. There is evidence that Complainant started business in 1956, but not, so far as the evidence goes, under the name TOGU until 2000 or perhaps 1999 in Germany; there is, however, no evidence that Complainant was known as TOGU in the US or was even in the US at all until roughly the time the disputed domain name was registered or perhaps even after it was registered. Moreover, there is no evidence of any conduct indicating that Respondent was or is attempting to trade on an association with Complainant’s business reputation in the TOGU brand. The disputed domain name was registered so long ago that, on the evidence, the crucial fact appears to be that the early registration of the disputed domain name was prior to any evidence of international reputation in the TOGU trademark, and prior to the filing of the US application by Complainant. Taking considerations like the foregoing into account shows that it would be unsafe to infer a bad faith intention on virtually no evidence.

Accordingly, Complainant has not made out the third element that it is required to establish.

D. Laches

Respondent has submitted that Complainant should be dismissed on the ground of laches or delay, or that the “delay” of 13 years since Respondent acquired the disputed domain name and before the Complaint was filed should be taken into account. One of the points made by Respondent is that Complainant did not explain in its supplementary submission why the delay occurred, despite its having been made a live issue in the Response. It is true that Complainant in its supplementary submission contented itself with the arguments that laches has no place in the UDRP, has been widely regarded as such and that Respondent had not shown any detriment.

It is certainly true that since the inception of the UDRP, panels have been reluctant to apply laches as a bar to these proceedings. However, the Panel notes the following recent decisions: The New York Times Company v. Name Administration, Inc. (BVI), NAF Claim No. 1349045 where the delay was only six years and the three person panel unanimously held that “the circumstances of this case are the type that support a decision for Respondent based on laches.” Reflections of that transition are to be found in such cases as C. Brewer and Sons Ltd. v. Vertical Axis, Inc., WIPO Case No. D2009-1759; Vanguard Trademark Holdings USA LLC v. Nett Corp., NAF Claim No. 1262162; Libertad Servicios Fiancieros, S.A. de C.V.S.P.F. v. Telepathy, Inc., WIPO Case No. D2011-1635; UTV Limited v. Unitedeurope Consulting, Kwang Pyo Kim, WIPO Case No. D2011-2293 and Professional Rodeo Cowboys Association, Inc. v. Alternative Advertising Concepts, Inc. / Kenneth Forman, NAF Claim No. 1440736 where laches was found to be “a defence”.

The Panel would not suggest that laches is now universally accepted as a bar to proceedings, but rather that unexplained delays may be considered in deciding difficult questions of rights and legitimate interests and bad faith when so much time has passed since the registration of the domain name that it is made very difficult to decide, years after the event, what the intention or motivation of Respondent was at the time it registered the disputed domain name. Delay may therefore, together with other factors, play a role in reaching conclusions on those difficult questions and may, in some cases, militate against the interests of the party responsible for the delay; see, for example, Victoria’s Secret Stores Brand Mgmt., Inc. v. Linda Cameron Pickard, Linda Watson, WIPO Case No. DAU2012-0015, noting the comment in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that “Panels have also noted that a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements” of the Policy. Indeed, in that last mentioned decision, the panel went further and held that “…(t)his Panel further believes that delay can, in exceptional circumstances, contribute to the Respondent acquiring through its subsequent bona fide use a right or legitimate interest in a domain name even though it had no such right or legitimate interest at an earlier time.”

In the present case, the Complaint fails because the evidence does not show Respondent registered and used the disputed domain name in bad faith and the Panel therefore need not make a definitive ruling on laches or delay. However, it is well to remember that whether it is called laches or not, delay and its effects may still play a role.

7. Decision

For the foregoing reasons, the Complaint is denied.

Miguel B. O’Farrell

Presiding Panelist

Christopher J. Pibus

Panelist

The Hon Neil Brown QC

Panelist

Date: August 8, 2013