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
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.
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
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
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).
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.
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
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
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