Woot, Inc. v. Catalin Lascut
Claim Number: FA1009001347022
Complainant is Woot, Inc. ("Complainant"), represented by Linda M. Novak of Fish & Richardson P.C., Texas, USA. Respondent is Catalin Lascut ("Respondent"), represented by Matthew J. Ladenheim of Trego, Hines & Ladenheim, PLLC, North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wootlook.com>, registered with Register.com Inc.
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.
Jeffrey M. Samuels, Hon. Carolyn Marks Johnson, and David A. Einhorn, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 17, 2010; the National Arbitration Forum received payment on September 20, 2010.
On September 21, 2010, Register.com Inc. confirmed by e-mail to the National Arbitration Forum that the <wootlook.com> domain name is registered with Register.com Inc. and that Respondent is the current registrant of the names. Register.com Inc. has verified that Respondent is bound by the Register.com Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@wootlook.com. Also on September 29, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 19, 2010.
A timely Additional Submission was received from Complainant and determined to be complete on October 25, 2010.
A timely Additional Submission was received from Respondent and determined to be complete on October 30, 2010.
On October 28, 2010, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels, Hon. Carolyn Marks Johnson, and David A. Einhorn, as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant Woot, Inc., a Texas corporation, owns a number of U.S. trademark registrations incorporating in whole or in part the mark WOOT, as used in connection with social networking services, among other goods and services. See Complaint, Exhibits C, D, and E. The mark was first used throughout the U.S. at least as early as July 13, 2004.
Complainant also owns the domain name <woot.com>, which it registered in January 2006. See Complaint, Exhibit G. Complainant has operated an active website at this domain name for retail sales and online forums since 2004. Since 2009, Complainant has used its mark DEALS.WOOT! in connection with its social networking site at <deals.woot.com>, on which members discuss product deals.
Complainant asserts that the disputed domain name, <wootlook.com>, is confusingly similar to Complainant’s marks WOOT, WOOT,! and DEALS.WOOT! “because the Subject Domain Name is merely a combination of Complainant’s registered mark WOOT and the generic or merely descriptive term ‘look.’”
Complainant further contends that Respondent has no rights or legitimate interests in the <wootlook.com> domain name. Complainant states that it has not authorized Respondent to use the WOOT mark in the subject domain name or on the website to which the domain name resolves.
Complainant notes that Respondent did not register or use the domain name before Complainant’s registration of its WOOT marks. In this regard, Complainant points out that its WOOT mark was registered with the United States Patent and Trademark Office (“USPTO”) on November 8, 2005, and that the <wootlook.com> domain name was not registered by Respondent until November 15, 2009.
Complainant asserts that Respondent is not making any legitimate noncommercial or fair use of the disputed domain name. The subject domain name, Complainant points out, resolves to a website at which Respondent promotes its services in the field of social networking. “Clearly, Respondent is using Woot’s WOOT Marks without authorization to catapult itself into the relevant social networking community for its commercial gain,” Complainant declares.
Complainant maintains that the disputed domain name was registered and is being used in bad faith because: (1) Respondent was on notice of Complainant’s rights in its marks at the time the domain name was registered; and (2) Respondent uses the domain name for commercial purposes to attract internet users to its social networking website by creating a likelihood of confusion with Complainant’s WOOT marks.
By way of further explanation, Complainant indicates that its renown is such that it was identified by Inc.com magazine as the “Top Retail Company of 2008” (see Complaint, Exhibit I) and that it had operated under its WOOT mark for nearly five years before Respondent registered the disputed domain name. Complainant further observes that Respondent’s website features a social networking community the same and/or similar to the social networking community on Complainant’s <woot.com> website. See Complaint, Exhibits H, F, and J.
B. Respondent
As a threshold matter, Respondent, Catalin Lascut, argues that the parties’ dispute is not appropriate for resolution under the UDRP. In support for this position, Respondent submitted the expert declaration of trademark attorney J. Scott Evans who opined that, based on his review of certain documents, “the dispute between Complainant and Respondent implicates complex issues of trademark law and is not appropriate for resolution under the UDRP.” Respondent notes that Mr. Evans was one of the members of the five-member drafting committee that finalized the UDRP and the Rules of Procedure.
Respondent notes that he is a Romanian citizen domiciled in Romania and owns two advertising agencies. Mr. Lascut indicates that he selected the <wootlook.com> domain name because it more clearly conveyed the sense of happiness and triumph that participants are likely to feel when they use the site to reach a target audience. In this regard, he notes that the Urban Dictionary defines the term “woot” as an “exclamation of victory or triumph over an obstacle.” Mr. Lacsut also points out that the challenged site was launched in May-June 2010 after approximately two years of work and an investment of about $800,000 (USD). He also asserts that “[t]he first time that [he] became aware of Complainant or even knew of its existence was when he received a copy of the Complaint.”
Respondent argues that the disputed domain name is visually and phonetically distinct from each of Complainant’s marks. Nor is it confusingly similar to any of Complainant’s marks. In this regard, Respondent notes that he is an associate/shareholder and attorney-in-fact for Lawrin LLC which filed an application (No. 85/070531) with the USPTO on June 24, 2010, to register the mark WOOTLOOK (stylized). See Response, Exhibit D. Respondent points out that the USPTO, in examining Lawrin’s WOOTLOOK mark, found no conflicting marks that would serve as a basis to refuse registration under the likelihood of confusion provision of Section 2(d) of the Lanham Act, 15 U.S.C. §1052(d). See Response, Exhibit E.
Respondent also contends that he has legitimate rights in, and is making bona fide use of, its WOOTLOOK mark and domain name. Exhibit B to the Response consists of an English translation of Mr. Lascut’s sworn declaration in which he indicates that he was making bona fide use of the WOOTLOOK mark and domain name long before he heard of Complainant and that he has invested over two years and about $800,000 (USD) in its WOOTLOOK service mark. He notes that he acquired the disputed domain name on or about November 15, 2009, that the website went active in May-June 2010, that Lawrin sought a registration for the WOOTLOOK mark with the Community Trade Mark Office on May 7, 2010 and with the USPTO on June 24, 2010. “All of this occurred prior to September 29, 2010 – the date when Respondent first learned of Complainant’s existence.” (emphasis in original).
Finally, Respondent argues that there is no evidence that the disputed domain name was registered or is being used in bad faith. There is no evidence, Respondent asserts, that he attempted to attract web traffic to his site by creating a likelihood of confusion between its mark and those of Complainant. “Rather, Complainant repeatedly asks the panel to infer that the disputed domain was registered and used in bad faith because: (1) the Respondent ‘should have known’ of its alleged rights in the ‘WOOT’ marks based on its U.S. trademark registrations; (2) because Complainant was identified by Inc.com as “The Top Retail Company of 2008,” and (3) because Respondent offers social networking services. However, such an inference would be wholly inappropriate. Respondent, a Romanian citizen, has presented a sworn statement that it did not know of Complainant’s existence until it received a copy of the Complaint, i.e., on or about September 29, 2010. Further, there is no evidence that suggests Inc.com is a universally recognized source of information such that a reference on its site would constitute world-wide constructive notice as to the existence of Complainant. Finally, the fact that Complainant and Respondent both happen to offer social networking services – under marks that are visually and phonetically distinct – is hardly a basis for concluding that the disputed domain was registered and used in bad faith.”
C. Additional Submissions[1]
In its Additional Submission, Complainant argues that the instant dispute is properly before this forum because it is limited in scope and addresses only the rights to a domain name. Complainant also notes that Mr. Evans did not indicate that he had reviewed Lawrin’s application to register WOOTLOOK with the USPTO and that, had he done so, he would have realized that the recitation of services in such application was just vague enough to escape the attention of the Examiner as to any conflict with Complainant’s WOOT marks. Moreover, Complainant asserts, the process for registration of Respondent’s WOOTLOOK mark is not complete and registration of such mark will be opposed by Complainant.
Complainant also contends that Mr. Lascut’s declaration is not credible in a number of respects. Complainant insists, based on its considerable knowledge and experience in web development, that it is “implausible” that Respondent invested $800,000 (USD) in developing its <wootlook.com> site. Complainant further argues that Respondent’s ownership of two advertising agencies should have put him on notice of Complainant’s trademark rights and “hugely popular” <woot.com> website.
In its Additional Submission, Respondent asserts that “Complainant’s position – that the Office Action [by the USPTO] should be disregarded because Complainant thinks it is possible the Examiner made a mistake – is simply too incredible to be given serious consideration.”
In support of its argument that he made a substantial investment in his <wootlook.com> site prior to commencement of this proceeding, Respondent submitted a copy of its website development and maintenance agreement with GT3 Custom Software, dated April 12, 2009 and September 14, 2009, respectively. See Additional Submission, Exhibits J and K. Attached as Exhibit L is a representative sampling of invoices received in connection with the WOOTLOOK brand.
The Panel finds that (1) it has jurisdiction over this dispute; (2) Respondent has rights or legitimate interests in the subject domain name; and (3) Complainant failed to establish that the domain name in dispute was registered and is being used in bad faith.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
The Panel concludes that the instant matter may be resolved under the UDRP. Mr. Evans asserts that the dispute “implicates complex issues of trademark law” and refers to the USPTO’s Office action as demonstrative of the fact that “this case is not appropriate for disposition under the UDRP.” However, neither Complainant nor Mr. Evans identifies the “complex issue” raised in this dispute, and the Panel is not convinced that any such issue exists. Our jurisdiction is limited to determining whether the domain name in dispute should be transferred or cancelled. We have not been called upon to determine any complex issue of trademark law and have no need to decide any such issue in reaching our decision. The fact that the parties may soon be involved in an opposition proceeding before the USPTO does not divest this panel of jurisdiction. The focus of any USPTO proceeding will be on the registrability of Respondent’s WOOTLOOK mark (i.e., whether such mark, as intended to be used, will result in a likelihood of confusion with any of Complainant’s marks) and not on whether the <wootlook.com> domain name constitutes an abusive registration under the UDRP. See Telebrands Corp. v. Khalid, FA 467079 (Nat. Arb. Forum May 31, 2005) (panel decided to proceed with UDRP dispute even though each party had registered marks because panel deemed it unfair and costly to treat case as trademark dispute when gravamen of proceeding was alleged misuse of disputed domain name.) Further, the Panel notes that the issue of likelihood of confusion before the USPTO will be decided on criteria not relevant to consideration of the issue of confusing similarity under the UDRP.[2]
The Panel finds that the evidence establishes that Respondent has rights or legitimate interests in the subject domain name. The evidence, including Respondent’s sworn declaration, supports a determination that Respondent spent considerable sums[3] over a period of years in developing its site without any knowledge of Complainant. Thus, the evidence supports a determination that Respondent, before any notice of the dispute, was engaged in demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services, within the meaning of Paragraph 4(c)(i) of the Policy.
Paragraph 4(b)(iv) of the Policy, upon which Complainant principally relies in contending that the subject domain name was registered and is being used in bad faith, requires that Respondent have “intentionally” attempted to attract, for commercial gain, Internet users to his site by creating a likelihood of confusion as to the source of such site or of the goods and/or services found thereon.
The Panel finds that Complainant has failed to meet its burden of establishing the requisite intent. Rather, as noted above, the evidence supports a determination that Respondent spent a considerable amount of money over a two-year period in designing and developing its site without any knowledge of Complainant’s existence. There is also evidence that Respondent selected the domain name due to the connection between its site and a dictionary definition of the term “woot,” as opposed to any attempt to trade on the goodwill associated with Complainant’s marks.
To the extent Complainant is relying on the constructive notice provision of U.S. trademark law to demonstrate the requisite “bad faith,” the Panel notes that the prevailing view among ICANN panels is that constructive use may not be relied upon to establish bad faith, especially where, as here, the respondent is located outside the U.S. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 3.4.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <wootlook.com> domain name REMAIN WITH Respondent.
Jeffrey M. Samuels (Chair), Hon. Carolyn Marks Johnson, David A. Einhorn,
Panelists
Dated: November 11, 2010
[1] To a large extent, the Additional Submissions by both parties restate arguments set forth in the Complaint or Response. The Panel sees little point in rehashing such arguments. Its discussion of the parties’ Additional Submissions will be limited to those arguments not previously advanced.
[2] Most ICANN panels have held that the test for confusing similarity under the UDRP should be based on a comparison between the complainant’s mark and the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 1.2. The issue of likelihood of confusion before the USPTO is based on a number of relevant factors in addition to the similarity between the parties’ marks.
[3] The Panel reviewed the agreements included as exhibits to Respondent’s Additional Submission. While such invoices do not appear to support Respondent’s contention that he spent about $800,000 (USD) in developing the disputed site, they do indicate that a not insubstantial sum of money was expended.
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