Charles Letts & Co Limited. V.
Citipublications
Claim Number: FA0604000692150
PARTIES
Complainant is Charles Letts & Co Limited (“Complainant”), represented by Fritz L. Schweitzer, of Schweitzer Cornman Gross & Bondell LLP, 292 Madison Avenue - 19th Fl., New York, NY 10017. Respondent is Citipublications (“Respondent”), represented by Michael Leventhal, of Praxis LLP, 11700 National Boulevard, Suite L, #106, Los Angeles, CA 90064.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lettsoflondon.com>, <lettsoflondondiaries.com> and <lettsoflondonusa.com>, registered with Network Solutions, Inc.
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
G. Gervaise Davis, III, David P. Miranda and Dr. Reinhard Schanda,
Chair, as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically
on April 26, 2006; the National Arbitration Forum received a hard copy of the
Complaint on April 28, 2006.
On April 27, 2006, Network Solutions, Inc. confirmed by e-mail to the
National Arbitration Forum that the <lettsoflondon.com>, <lettsoflondondiaries.com>
and <lettsoflondonusa.com> domain names are registered with Network
Solutions, Inc. and that the Respondent is the current registrant of the
name. Network Solutions, Inc. has
verified that Respondent is bound by the Network Solutions, 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 May 4, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of May 24, 2006 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@lettsoflondon.com,
postmaster@lettsoflondondiaries.com and postmaster@lettsoflondonusa.com by
e-mail.
On May 18, 2006, Respondent sent the National Arbitration Forum a
Request for Extension of Time to Respond to the Complaint because Respondent
was out of the country when it received the Complainant and did not have
adequate time to respond. Complainant
consented to Respondent’s request. On
May 22, 2006, the National Arbitration Forum granted Respondent’s request,
setting a new deadline for Response of June 13, 2006.
A timely Response was received and determined to be complete on June
13, 2006.
A timely Additional Submission from Complainant was received and determined
to be in compliance with Supplemental Rule #7 on June 19, 2006.
A timely Additional Submission from Respondent was received and
determined to be in compliance with Supplemental Rule #7 on June 26, 2006.
On June 28, 2006, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed G. Gervaise Davis, III, David P. Miranda and
Dr. Reinhard Schanda, Chair, as Panelists.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant makes the following assertions:
Complainant is the owner of U.S. Trademark Registration No. 1,186,714 for the mark LETTS OF LONDON (Stylized) for use in connection with desk diaries, appointment diaries, pocket diaries, wallet diaries, leisure, travel and holiday guides, and notebooks, address books and diary-type wall charts for recording future events and appointments, in International Class 016.
Complainant is also the owner of U.S. Trademark Registration No. 1,236,228 for the mark LETTS for use in connection with wallets in International Class 018 and diaries, engagement books, almanacs notebooks, bill books, address books, photograph albums, diary type wall charts, in International Class 016.
Complainant also owns U.S. Trademark Registration No. 832,007 for the mark LETTS for use in connection with diaries and notebooks in International Class 016.
Complainant also has similar registrations in Canada and on the CTM registry. Due to its long-standing use of the mark, Complainant also owns substantial State and Federal common-law rights to the mark LETTS OF LONDON for the above-stated goods.
In addition, Complainant is the beneficial owner (either directly or through subsidiaries) of numerous domain names including: <letts.dk>, <letts.se>, <letts.fi>, <letts.it>, <letts.fr>, <letts.com.au>, <letts.co.uk>, <letts-kalender.de>, <lettscanada.com> and <letts.eu>.
Due to the substantial and exclusive use of the mark LETTS OF LONDON, the mark has become well-known and famous in connection with the above-stated goods, and the mark is, therefore, entitled to substantial protection in the specified and related fields.
Complainant and its predecessors-in-interest have been using the mark LETTS OF LONDON for over 25 years in connection with desk diaries, appointment diaries, pocket diaries, wallet diaries, leisure, travel and holiday guides, and notebooks, address books and diary-type wall charts for recording future events and appointments. Due to Complainant’s long-standing and exclusive use of LETTS OF LONDON, the mark has become well-known and famous in connection with these goods.
Respondent’s <lettsoflondon.com>, <lettsoflondonusa.com> and <lettsoflondondiaries.com> domain names are identical/confusingly similar to Complainant’s LETTS OF LONDON mark.
Respondent has an active website at the domain <lettsoflondon.com> that is used to sell Complainant’s products. Respondent is using <lettsoflondonusa.com> to redirect visitors to its own website at <citidiaries.com> where it sells Respondent’s products. Respondent has placed a parking page on <lettsoflondondiaries.com>.
Respondent is an authorized distributor of Complainant’s products, but was never allowed to register and use without Complainant’s authorization, the domain names <lettsoflondon.com>, <lettsoflondonusa.com> and <lettsoflondondiaries.com>.
Respondent’s use of the websites at <lettsoflondon.com> and <lettsoflondonusa.com> is misleading because the websites contain no clarifying information concerning Respondent's relationship to Complainant.
Respondent does not take any steps to prevent confusion and visitors to Respondent's website are likely to believe that the domain name owner is the mark owner and that the merchandise offered on its website is being offered directly by the trademark owner.
The parking of the domain name <lettsoflondondiaries.com> constitutes a passive use, which supports a finding that Respondent has no legitimate interest in this domain. As a result Respondent has no rights or legitimate interests in the domain names at dispute.
Furthermore, Respondent tried to sell the domain names to Complainant for $500,000, which is evidence enough for Respondent’s bad faith registration and use of the domain names.
Due to the registration of multiple domain names containing Complainant’s trade mark, Respondent’s confusing usage of Complainant’s trade mark on its website and Respondent’s passive holding of the domain name <lettsoflondondiaries.com> it is clear that Respondent has registered and is using the domain names in bad faith.
B. Respondent
Respondent contends that it has been a reseller of Complainant’s products for 28 years. Some time prior to September 18, 2001, Complainant’s U.S. distributor purposely abandoned the domain name <www.lettsoflondon.com>. Starting on or about September 18, 2001, with the knowledge, acquiescence, and implied consent of Complainant, Respondent registered and began to use the domain names at issue herein for the purpose of selling Complainant’s products. Almost three years later, Complainant changed its mind regarding the terms of this consent.
Respondent further contends that Complainant’s major United States distributor intentionally abandoned the domain name <lettsoflondon.com>, and Respondent, who was and, as of 2001, had been in the business of distributing Complainant’s products (and no other products) in the United States for 23 years, registered it for the benefit of its company and Complainant, with the full knowledge of executives of Complainant who had the authority to bind the company. This registration took place in 2001, and the website has been operated with the full knowledge, acquiescence and implied consent of Complainant since that time, until August 9, 2004, at which point the management of Complainant changed its attitude towards Respondent’s operation of the domain names at issue in the Complaint.
Respondent denies that the domain names are confusingly similar, as customers understand that they are buying LETTS OF LONDON products, as opposed to a “Citidiaries product” which does not exist, and Respondent’s entire business is the sale of Complainant’s products. Further, Respondent asserts that the “confusingly similar” analysis is not relevant, as Respondent is operating these domain names under an implied license from Complainant.
Respondent uses the domain name <www.lettsoflondon.com> as a primary portal for the sales of these products. It has placed no domain names with a parking service, and retains the other two domain names in the event they are needed, and to protect against cybersquatters taking them.
Respondent specifically denies the fabricated allegation that Mr. Linge offered to sell Mr. DiBella the domain names for any amount of money, let alone $500,000. In fact, Mr. Linge has repeatedly offered to Mr. Presly, CEO of Charles Letts & Co, and Mr. DiBella to give the domain names to Complainant when he retires.
Furthermore, Respondent denies it is a “typo domain name pirate,” but instead is a legitimate retailer of Complainant’s product who actually notified Complainant of its use of Complainant’s mark and did not receive an objection to the domain name for nearly three years after the fact. Respondent is just using the same phrasing in its advertising that Complainant uses in its products.
Respondent admits that it has held the domain name <lettsoflondondiaries.com>
for over two years without developing the site, and rejects any implication of
bad faith in this behavior. This domain
name has not been used illegitimately; it is undeveloped with Network
Solutions, for which it receives no revenues.
C. Additional Submissions
In Complainant’s Reply Memorandum, Complainant contends that it had no prior knowledge of Respondent's registration and use of the domain names and did not give Respondent a license or its consent. Furthermore, Complainant denies the existence of an implied license between the parties.
Complainant contends that Respondent uses the slogan "Publisher of Letts of London CitidiariesTM" to describe itself on the front page of the domain name <citidiaries.com>. In fact, Complainant is the publisher of the goods sold on the website and Respondent does not publish any of these products. This affirmative representation by Respondent causes confusion as to the source of the products offered on Respondent's website and is further evidence of Respondent's bad faith usage of the domain names.
Complainant strongly disagrees with Respondent's contention that the alleged offer to sell one or more of the domain names for $500,000 was fabricated by Complainant.
Again Complainant contends that Respondent's use of the websites at the <lettsoflondon.com> and <lettsoflondonusa.com> domain names is misleading because the websites contain no clarifying information concerning Respondent's relationship to Complainant. Respondent does not take any steps to prevent visitors from believing that the owner of the domain names is the mark owner and the merchandise is being offered directly by the trademark owner.
While Complainant appreciates its relationship with Respondent as a distributor of Complainant's goods, this relationship does not give Respondent the right to register and use the domain names at issue without Complainant's consent.
Respondent had actual and constructive notice of Complainant's federal trademark rights issued long before Respondent's registration and use of the domain names.
As a result Complainant never granted Respondent a license, express or implied, or consented in any form to its use of the domain names.
In Respondent’s Additional Submission, Respondent contends once again that the registration and use of a domain name was repeatedly approved by the Complainant. For approximately three years, Respondent continued to use the domain names in question with the full knowledge of Complainant and without ever receiving notice, either written or oral, that Complainant did not approve of such a use. At no time was an offer made to sell the domain names in question for $500,000.
FINDINGS
The Panel finds that:
1.
The Domain
Names <lettsoflondon.com>, <lettsoflondondiaries.com> and <lettsoflondonusa.com>
are confusingly similar to the Complainant’s registered trade marks.
2.
Respondent has
not established any right or legitimate interest in the Domain Names <lettsoflondon.com>, <lettsoflondondiaries.com> and <lettsoflondonusa.com>
and
3.
Respondent has
registered and is using the Domain Names <lettsoflondondiaries.com> and <lettsoflondonusa.com> in bad faith.
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.
Complainant claims that it has registered the LETTS OF LONDON mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,186,714 issued January 19, 1982). The Panel finds that Complainant’s federal trademark registration demonstrates its rights in the LETTS OF LONDON mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Morgan Stanley v. Fitz-James (CT2341-RSC) Cititrust Grp. Ltd., FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (“The Panel finds from a preponderance of the evidence that Complainant has registered its mark with national trademark authorities. The Panel has determined that such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Furthermore, Complainant asserts
that Respondent’s <lettsoflondon.com> domain name is identical to
Complainant’s LETTS OF LONDON mark because the domain name fully incorporates
the registered mark and merely adds the generic top-level domain (“gTLD”)
“.com.” The Panel finds that the mere
addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis and thus the
<lettsoflondon.com> domain name is identical to Complainant’s
LETTS OF LONDON mark. See Reebok
Int’l Ltd. v. Motohisa Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005)
(holding that the <reebok.net> domain name was identical to the
complainant’s REEBOK mark because it fully incorporates the mark and merely
adds a generic top-level domain); see also Entrepreneur Media, Inc. v. Smith,
279 F.3d 1135, 1146 (9th Cir. 2002) (“Internet users searching
for a company’s Web site often assume, as a rule of thumb, that the domain name
of a particular company will be the company name or trademark followed by
‘.com.’”).
Complainant also maintains that the
<lettsoflondondiaries.com> and <lettsoflondonusa.com>
domain names are confusingly similar to its LETTS OF LONDON mark because the
disputed domain names contain the entire registered mark and simply add common
terms to the end. The Panel finds that
these additions to Complainant’s LETTS OF LONDON mark in the disputed domain
names renders the domain names confusingly similar to the mark pursuant to
Policy ¶ 4(a)(i). See Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar.
13, 2000) (finding that the respondent’s domain name <marriott-hotel.com>
is confusingly similar to the complainant’s MARRIOTT mark); see also
PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that
“Respondent does not by adding the common descriptive or generic terms ‘corp’,
‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in
which it has rights or legitimate interests, nor does it alter the underlying
[PG&E] mark held by Complainant”).
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made 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 prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that Complainant has discharged the onus of proof for the second criterion: Respondent has failed to demonstrate any legitimate right or legitimate interest.
According to the majority of Panel decisions, this Panel also takes the position that while Complainant has the burden of proof on this issue, once Complainant has made a prima facie showing, the burden of production shifts to Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain names at issue. See Document Technologies, Inc. v. Int’l Elec. Commc’ns, Inc., D2000-0270 (WIPO June 6, 2000); see also Inter-Continental Hotel Corp. v. Khaled Ali Soussi, D2000-0252 (WIPO July 5, 2000); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”).
Complainant argues that Respondent
is not commonly known by the disputed domain names, because the WHOIS
information lists the registrant of the domain names as “Citipublications,” and
there is no other evidence in the record indicating that Respondent is commonly
known by the disputed domain names. The
Panel agrees that Respondent is not commonly known by the disputed domain names
and finds that Respondent does not have rights or legitimate interests in the
domain names pursuant to Policy ¶ 4(c)(ii).
See Broadcom Corp. v.
Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no
rights or legitimate interests because the respondent is not commonly known by
the disputed domain name or using the domain name in connection with a
legitimate or fair use); see also Wells Fargo
& Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant also
asserts that while Respondent is an authorized distributor of Complainant’s
products, Complainant never authorized or licensed Respondent to register or
use a domain name incorporating the LETTS OF LONDON mark or any variation. Complainant claims that it previously owned
the <lettsoflondon.com> domain name registration and that once the
registration expired, Respondent registered the <lettsoflondon.com>
domain name without Complainant’s authority and then subsequently registered
the <lettsoflondonusa.com> and <lettsoflondondiaries.com>
domain names. The Panel is of the view
that Respondent registered the disputed domain names without Complainant’s permission,
and the Panel therefore holds that Respondent does not have any rights or
legitimate interests in the disputed domain names. See Associated Materials, Inc. v.
Perma Well, Inc., FA 154121 (Nat. Arb.
Forum May 23, 2003) (finding that, although the respondent was a distributor of
the complainant’s product, the respondent did not have permission to use the
complainant’s mark in its registered domain name and, therefore, was not using
the domain name as a bona fide offering of goods or services or a legitimate
noncommercial or fair use); see also Carlon Meter Co. v. Jerman,
D2002-0553 (WIPO July 30, 2002) (“Respondent may well be an important
distributor of Complainant's products, but its right to use the trademarks of
Complainant do not necessarily extend to a right to use the globally extensive
domain name system by incorporating these trademarks in the Domain Names in a
manner which links them to Respondent's web site.”).
Moreover, Complainant asserts that Respondent is using the
<lettsoflondon.com> domain name to sell Complainant’s products and
the <lettsoflondonusa.com> domain name to sell competing products,
including the products of Respondent’s company. The Panels finds that Respondent’s use of the disputed domain
names to sell the products of Complainant and its competitors does not
constitute a bona fide offering of goods or services under Policy ¶
4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See Nike,
Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona
fide offering of goods or services where the respondent used the
complainant’s mark without authorization to attract Internet users to its
website, which offered both the complainant’s products and those of the
complainant’s competitors); see also Chanel,
Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of
the complainant’s mark to sell the complainant’s perfume, as well as other
brands of perfume, is not bona fide use).
Complainant also asserts that the <lettsoflondondiaries.com>
domain name resolves to a web directory displaying links to Complainant’s
competitors, and that Respondent is likely generating revenue from redirecting
Internet users to competing websites.
The Panel finds that Respondent’s parking of the <lettsoflondondiaries.com>
domain name for commercial gain does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
Herbalife Int’l, Inc. v. Farmana, D2005-0765
(WIPO Oct. 3, 2005) (parking of the domain name for many years constitutes no
more than a passive use or de
facto activity, which activity can
reinforce a finding of no legitimate interest); see also Bank of
Am. Corp. v. Nw. Free Cmty. Access, FA
180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to
divert Internet users seeking Complainant's website to a website of Respondent
and for Respondent's benefit is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).”).
Complainant claims that Respondent has offered to sell the disputed domain name registrations to Complainant for $500,000. The Panel may find that Respondent’s offer to sell demonstrates that Respondent lacks rights and legitimate interests in the disputed domain names. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
Complainant alleges that Respondent
has violated Policy ¶ 4(b)(iv) by registering and using the <lettsoflondonusa.com>
domain name to operate a website selling the diary products of Complainant and
its competitors. The Panel finds that
Respondent is taking advantage of the confusing similarity between the disputed
domain names and Complainant’s LETTS OF LONDON mark in order to profit from the
goodwill associated with the mark, which constitutes bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See
Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent
is using the domain name at issue in direct competition with Complainant, and
giving the impression of being affiliated with or sponsored by Complainant,
this circumstance qualifies as bad faith registration and use of the domain
name pursuant to Policy ¶ 4(b)(iv).”); see also Hunter Fan Co. v. MSS,
FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the
respondent used the disputed domain name to sell the complainant’s products
without permission and mislead Internet users by implying that the respondent
was affiliated with the complainant).
Additionally, Complainant alleges
that Respondent has registered and is using the <lettsoflondondiaries.com>
domain name in bad faith by linking it to a website displaying links to
Complainant’s competitors. The Panel
finds that Respondent is diverting Internet users seeking Complainant’s diary
products to Respondent’s own website for commercial gain, presumably by earning
click-through fees for each consumer Respondent diverts to other websites, and
thus Respondent has engaged in bad faith under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the
respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because the respondent was using the confusingly similar domain name
to attract Internet users to its commercial website); see also Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where the respondent directed Internet users seeking the
complainant’s site to its own website for commercial gain).
Respondent maintains that it did
not initially register the <lettsoflondon.com> domain name in bad
faith because Complainant consented to Respondent registering and using the
disputed domain name in 2001 and simply changed its mind several years
later. The Panel finds that because
Complainant originally authorized Respondent to register the <lettsoflondon.com>
domain name and Respondent used the domain name without Complainant’s objection
for several years, Respondent did at least not register the <lettsoflondon.com>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Thread.com, LLC v. Poploff,
D2000-1470 (WIPO Jan. 5, 2001) (finding that the respondent did not register
the disputed domain name in bad faith where it “registered the Domain Name with
the full consent and knowledge of Complainant” and therefore “did not have the
requisite bad faith when he registered the Domain Name, which is an express
requirement of the Policy”); see also Eddy’s (Nottingham) Ltd v. Smith,
D2000-0789 (WIPO Sept. 7, 2000) (finding no bad faith registration of the
domain name where the respondent registered the domain name in good faith,
without objection by the complainant, and in the interest of promoting the
complainant’s business).
In Fiskars Brands, Inc. v. Two Point Enterprise, FA 624367 (Nat. Arb. Forum Mar. 16, 2006) the Panel had to decide a very similar case and made the following statement, which is also applicable for this case:
This case distills down to a rather simple set of facts. Specifically, Respondent resells Complainant’s goods and has done so for more than two years. During that time, Respondent has built its sales to over $100,000 yearly. Complainant, after having directly supplied Complainant’s goods to Respondent (and presumably still doing so) now, over two years after Respondent registered the domain name, files this Complaint and seeks transfer.
With that in mind, we are not satisfied that the Respondent’s conduct constitutes bad faith registration or use of the name. Respondent was using the name prior to receiving notice of the dispute for over two years in the ordinary course of its ongoing business with Complainant. Legally reselling Complainant’s goods constitutes bona fide use. We are not dealing with a counterfeiting situation or an illegal distribution. This is an open and transparent business relationship between consenting business partners in an apparently mutually beneficial relationship.
Being that
Respondent is authorized to re-sell Complainant’s goods, by virtue of
Complainant knowingly selling its goods for that purpose to Respondent,
Respondent may register a name that includes the mark. See Koninklijke Phillips Elecs., N.V. v. Wang, D2000-1778 (WIPO Mar. 15, 2001) (owner of a trademark
cannot object to the resale of goods which it has placed on the market bearing
the mark); see also Le Creuset SA
v. Vineyards Direct Ltd,
D2004-0551 (WIPO Sept. 6, 2004) (mark may also be used to advertise the goods
in question, providing it is not used in a manner, which causes confusion, or
damage to the reputation of the mark); see also Schering AG v. Metagen GmbH, D2000-0728
(WIPO Sept. 11, 2000) (finding that a respondent did not register or use the
domain name <metagen.com> in bad faith where the respondent registered
the domain name in connection with a fair business interest and no likelihood
of confusion was created); see also DJF
Assoc., Inc. v. AIB Commc’ns, FA 95612 (Nat. Arb. Forum Nov. 1, 2000)
(finding a respondent has shown that it has a legitimate interest in the domain
name because the respondent selected the name in good faith for its website,
and was offering services under the domain name prior to the initiation of the
dispute).”
The Panel concludes that Complainant has not established that
Respondent registered the domain name <lettsoflondon.com> in bad
faith under paragraph 4(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED, with the exception of
the domain name <lettsoflondon.com>.
Accordingly, it is Ordered that the <lettsoflondondiaries.com>
and <lettsoflondonusa.com> domain names be TRANSFERRED from
Respondent to Complainant. The <lettsoflondon.com>
domain name shall remain registered to the Respondent.
G. Gervaise Davis, III, David P. Miranda and Dr. Reinhard Schanda,
Chair, Panelists.
Dated: July 17, 2006
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