11th Apr 2010

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

C Brewer and Sons Limited v. Vertical Axis Inc. / wallpaperdirect.com/ c/o Nameview Inc. Whois IDentity Shield

Case No. D2009-1759

1. The Parties

The Complainant is C Brewer and Sons Limited, East Sussex, United Kingdom, represented by asb law, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Vertical Axis Inc. / wallpaperdirect.com/ c/o Nameview Inc. Whois IDentity Shield, Barbados, represented by Esqwire.com Law Firm, United States of America.

2. The Domain Name and Registrar

The disputed domain name <wallpaperdirect.com> is registered with Nameview Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2009. On December 23, 2009, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the disputed domain name. On January 7, 2010, Nameview Inc. transmitted by email to the Center its verification 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 the Complainant on January 12, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 22, 2010. The Center has verified that the amended Complaint satisfies 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 the Respondent of the Complaint, and the proceeding commenced on January 25, 2010. On February 12, 2010 the Respondent representative requested an extension to the due date of the Response for the purpose of investigation of an amicable resolution of this matter. On the same day the Complainant representative confirmed agreement to an extension of the due date of the response to February 19, 2010. The Response was filed with the Center on February 19, 2010.

The Center appointed Sebastian Hughes, David H. Tatham and The Hon Neil Brown QC as panelists in this matter on March 30, 2010. 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

A. The Complainant

The Complainant is a company incorporated in the United Kingdom and the owner of a registration for the WALLPAPERDIRECT device trade mark in the United Kingdom (“the Trade Mark”), registered with a priority date of July 26, 2000.

B. The Respondent

The Respondent is a company incorporated in Barbados.

The disputed domain name <wallpaperdirect.com> was registered on May 3, 2002.

5. Parties’ Contentions

A. Complainant

The following facts are alleged by the Complainant in the Complaint.

The Complainant has since September 2000 been operating its online business under the Trade Mark via its “www.wallpaperdirect.co.uk” Website (“the Complainant’s Website”), offering for sale wallpaper and wall coverings to customers predominantly in the United Kingdom. Presently at least 20% of the Complainant’s customers are located outside the United Kingdom and this number is growing annually.

The disputed domain name is identical to the Trade Mark save that the suffix “.com” has been added.

The Complainant has established rights in the Trade Mark both as a result of its registration and also under the law of passing off as a result of the goodwill it has acquired through the use of the Trade Mark.

The Trade Mark is very well-known and is distinctive of the Complainant.

The colour scheme used on the Respondent’s Website is similar to the colours in respect of which the Trade Mark has been registered, and the wording “wallpaperdirect” used by the Respondent on the Respondent’s Website appears in a lower case font similar to the font used by the Complainant in the Trade Mark.

The disputed domain name was registered in May 2002 and it is resolved to a website offering similar services to those offered by the Complainant under the Trade Mark (“the Respondent’s Website”). The Respondent is not a supplier of wallpaper, but is using the Respondent’s Website to advertise competing suppliers of wallpaper and wall covering products.

The Complainant has not authorised the Respondent to use the Trade Mark for any purpose.

According to searches conducted by the Complainant, the Respondent has not registered any “wallpaperdirect” trade marks in the United States of America or the European Union.

The Respondent is infringing the Complainant’s rights in the Trade Mark by advertising suppliers of wallpaper products in competition with the Complainant, and is therefore using the disputed domain name to attract for commercial gain Internet users to the Respondent’s Website, by creating a likelihood of confusion with the Trade Mark as to the source or endorsement of the Respondent’s Website or a product or service on the Respondent’s Website.

The Complaint has previously tried to obtain transfer of the disputed domain name from the Respondent without the need for filing a Complainant, but the Respondent did not respond to letters from the Complainant’s lawyers and trade mark attorneys.

The Respondent has been subject to a number of UDRP proceedings whereby domain names registered by the Respondent have been transferred to complainants.

The Respondent has a history of registering domain names in bad faith with the aim of gaining unfair benefit or enrichment by using the existing and established marks of others. The Respondent is not in the business of supplying wallpaper products and is instead merely using the disputed domain name in respect of a “pay-per-click” advertising portal, in common with the previous complaints filed against the Respondent.

B. Respondent

The following facts are alleged by the Respondent in the Response.

The Respondent registered the disputed domain name in May 2002 when the previous registration for the disputed domain name expired. There is no evidence that the Respondent registered the disputed domain name with the Complainant in mind, or that it had heard of the Complainant or the Trade Mark when it registered the disputed domain name.

The disputed domain name includes the descriptive term “wallpaper direct”. The Respondent has registered more than 140 domain names including the word “wallpaper” and more than 50 domain names comprising the word “direct”. The Respondent is using the disputed domain name in a descriptive manner by posting pay-per-click advertising links relating to wallpaper products. The Respondent registered the disputed domain name solely because it incorporates the common descriptive term “wallpaper direct” and without intent to target the Trade Mark.

The colours on the Respondent’s Website were selected independently and not based upon the Trade Mark.

Whilst the Complainant has listed 6 proceedings brought against the Respondent in which the subject domain name was transferred to the complainant in question, the Respondent has won far more cases than it has lost, including 21 decisions listed in the Response where the complaint was denied.

The long delay in initiating action raises the inference the Complainant did not believe the Respondent had engaged in bad faith registration or use.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name.

It is commonly accepted that top level domains are to be discounted in determining the question of confusing similarity or identity.

The Panel finds that the disputed domain name is identical to the Trade Mark.

The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by almost two years. There is therefore a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Respondent has stated that it did not know of the Complainant or its registration for the Trade Mark when the Respondent registered the disputed domain name. Whilst the Complainant has included in the Complaint evidence of its sales in 2007, 2008 and 2009, evidence of its advertising expenditure in 2008 and 2009, and a reference to the Complaint being quoted in an April 2009 article in the United Kingdom broadsheet newspaper, “The Independent”, there has been no evidence filed as to the size of the Complainant’s business (and the corresponding goodwill and reputation in the Trade Mark) at the time the disputed domain name was registered, in May 2002 (some 21 months after the launch of the Complainant’s business).

The Respondent is in the business of registering multitudes of domain names which include generic or descriptive terms and earning revenue by setting up pay-per-click advertising links to third party websites. Not surprisingly, the Respondent has, as a result of its business model, been a Respondent in respect of numerous UDRP complaints. However, there is nothing under the Policy which prohibits such conduct, and there have been several decisions in which it has been held that operation of pay-per-click websites can amount to a bona fide offering of goods or services under the Policy (see, for example, Dial-a-Mattress Operating Corp. v. Ultimate Search WIPO Case No. D2001-0756).

The crucial issue in respect of this proceeding is whether the Respondent was aware of the Complainant and the Trade Mark at the time it registered the disputed domain name. In this regard, the lack of evidence of repute of the Trade Mark at the time the disputed domain name was registered does not assist the Complainant. The Respondent has stated that it did not know of the Complainant when it registered and commenced use of the disputed domain name in relation to third party wallpaper products on the Respondent’s Website. The lack of distinctiveness of the wording component of the Trade Mark lends further weight to the Respondent’s arguments, as does the fact the Respondent has registered so many domain names which include the words “wallpaper” or “direct”.

This proceeding is analogous to Exotiq Properties Ltd. v. David Smart, WIPO Case No. D2009-1672 in which it was held as follows:

“It is for the Complainant to establish… that the Respondent has no rights or legitimate interests in the disputed domain name. Where a disputed domain name corresponds to a less distinctive mark or group of marks, this burden tends to be higher than it might otherwise be. Although each case must be assessed on its own merits and evidence, in general it is inherently more likely that a respondent may have a legitimate interest in using a more descriptive domain name. Given the phonetically descriptive nature of the term “exotiq”, the Respondent’s evidence that it has indeed registered several other domain names containing the term “exotiq” (seemingly in combination with other descriptive terms such as “exotiqgirls”, “exotiqgirls”, “exotiqrentals”), the relatively scant evidence of distinctiveness provided by the Complainant, and the Respondent’s prima facie plausible claim to a legitimate interest in the use of the name, the Panel finds that the Complainant has not discharged its burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name”.

The Panel is not convinced on the facts of this case that the business conducted by the Respondent under the disputed domain name does not amount to a bona fide offering of goods or services. The Panel therefore concludes that the Respondent has produced sufficient evidence to establish its rights or legitimate interests in the disputed domain name. The Panel thus finds that the Complaint has failed to fulfill the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Having found that the Complainant has not satisfied the second limb under the Policy, it is not strictly necessary for the Panel to determine whether the disputed domain was registered and has been used in bad faith. However, the Panel finds, on the evidence, the Complainant has also failed to establish bad faith registration and use under the third limb of the Policy.

Whilst there are some similarities between the colour scheme and font used on the Respondent’s Website and the colour scheme and font in respect of which the Trade Mark has been registered, this in itself is not enough to establish bad faith. The Panel would further observe that the use of such colour schemes is likely quite common in respect of businesses related to the supply of wallpaper products, and the colour scheme and the font used by the Complainant in the Trade Mark are not particularly distinctive.

The fact the Respondent chose to ignore correspondence from the Complainant’s lawyers and trade mark attorneys is immaterial and does not help the Complainant in establishing bad faith.

The Respondent asserts that the Complainant’s delay of some eight (8) years in commencing this action shows that the Complainant was not confident of success in bringing a domain name proceeding against the Respondent, and did not genuinely believe the disputed domain name was registered in bad faith. It has been long-established that the doctrine of laches has no bearing on domain name proceedings filed under the Policy (The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616). Had, for example, there been no use of the disputed domain name by the Respondent, then the Respondent would have no grounds for defending this proceeding based solely on the Complainant’s delay. However, on the basis of the evidence filed by both parties in this proceeding, the Panel would note that the Complainant has not been assisted by its delay in filing the Complaint. The delay, together with the lack of evidence of goodwill and reputation in the Trade Mark when the disputed domain name was registered, and the Respondent’s assertion that it had never heard of the Complainant when it registered and commenced use of the disputed domain name, gives rise to the inference that the disputed domain name has not been registered and used in bad faith.

The Respondent is not a direct competitor of the Complainant in respect of the supply of wallpaper products seeking to disrupt the Complainant’s business, but is simply operating a pay-per-click website providing links to third party websites. The wording component of the Trade Mark is descriptive in this Panel’s view, and it is unlikely the UK Intellectual Property Office would have accepted the mark as a word mark absent the use of the distinguishing coloured device and font. It has been held that a respondent should be free to register a domain name comprising common or generic terms on a “first come, first served” basis as long as they are used descriptively (National Gardening Association, Inc. v. CK Ventures Inc., NAF Case No. FA0911001294457; Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, WIPO Case No. D2000-0161).

7. Decision

For all the foregoing reasons, the Complaint is denied.

Sebastian Hughes
Presiding Panelist

David H. Tatham
Panelist


The Hon Neil Brown QC
Panelist

Dated: April 11, 2010