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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Etam, plc v. Alberta Hot Rods

WIPO Case No. D2000-1654

 

1. The Parties

Complainant is Etam, plc ("Etam"), an English company with parent companies registered in Luxembourg and France.

Respondent is Alberta Hot Rods, a Canadian business based in Alberta.

 

2. Domain Name and Registrar

The domain name at issue is < tammy.com>.

The Registrar of the domain name at issue is CORE (Internet Council of Registrars).

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received Etam’s complaint (the "Complaint") by email on November 28, 2000 and in hardcopy on November 30, 2000. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The formal date of the commencement of this administrative proceeding was December 11, 2000.

The Response was received by the Center by email on December 30, 2000 and in hardcopy on January 11, 2001. On January 24, 2001, after clearing for potential conflicts, the Center appointed Professors Christian-Andre Le Stanc and David E. Sorkin as Panelists and David H. Bernstein as the Presiding Panelist in this matter.

 

4. Factual Background

Complainant is the owner of the mark TAMMY, registered in the United Kingdom for use in connection with women’s and children’s clothing, leather bags and luggage, jewelry, cosmetics, soaps, and other personal grooming products. In addition, Complainant owns a registration for TAMMY from France and a CTM registration from the Office for Harmonization in the Internal Market, and has filed for registration in Saudi Arabia, Bahrain, the United Arab Emirates, Japan, Germany, Spain, Italy, and Kuwait.

Respondent, since 1997, has used <tammy.com> to redirect visitors to an adult website.

 

5. Parties’ Contentions

Complainant contends that the domain name at issue is identical or confusingly similar to Complainant’s marks, which it alleges are inherently distinctive and famous.

Complainant further alleges that Respondent lacks any rights or legitimate interests in the domain name. Complainant contends that Respondent has made no use of the domain name in connection with a bona fide offering of goods or services, instead redirecting traffic to "Red1.com." Complainant also states that Respondent has not been commonly known by the domain name or sold products or services under that mark, and that Respondent is not making a bona fide noncommercial or fair use of the domain name.

To show bad faith, Complainant states that, when it first contacted Respondent about the domain name, Respondent refused to transfer the name and instead offered it for sale for $100,000. Complainant contends that, given the notoriety of its mark, Respondent was aware of the mark at the time Respondent registered the domain name, and that Respondent’s only or primary intention was to sell the domain name to Complainant or one of its competitors, or otherwise prevent Complainant from using the domain name.

In its defense, Respondent alleges that, well before Complainant notified Respondent of its interest in the domain name, Respondent had been using the domain name to direct traffic to an adult entertainment website. Moreover, Respondent states that Complainant’s mark is based on a first name shared by numerous women, such that the mark is very weak.

Respondent contends that Complainant cannot show either bad faith registration or bad faith use. With respect to bad faith registration, Respondent claims that it neither knew nor should have known about Complainant’s mark at the time it registered the domain name. Respondent is based in Canada, where Complainant has no registered trademarks and conducts no business. Respondent’s administrative contact states in an affidavit that he had never heard of Complainant or its mark at the time he registered the domain name at issue.

Respondent alleges that it was uninterested in selling the domain name, and that only after repeated approaches by Complainant did it suggest a figure, as was its right given its previously developed legitimate interest in the domain name.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, a Complainant must prove each of the following:

(1) that 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) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) that the Respondent has registered and used the domain name in bad faith.

A. The Domain Names are Identical or Confusingly Similar to Complainant’s Trademarks

Respondent does not contest this element of the Policy. Obviously, the domain name <tammy.com> is identical to Complainant’s TAMMY trademark.

B. Legitimate Interest in the Domain Names

Complainant has alleged that its TAMMY mark is famous, but has provided no evidence to that effect, particularly with respect to its penetration in Canada, where Respondent is located. Though TAMMY may be inherently distinctive as applied to Complainant’s goods, that does not make the mark strong. As Respondent points out, to many English speakers, "Tammy" is readily recognizable as a name for a woman. Because it cannot be said that Complainant has exclusive rights to this fairly short, non-fanciful name, Respondent may legitimately develop its own use of the name in an unrelated field. Cf. Goldline International, Inc. v. Gold Line, Case No. D2000-1151 (WIPO Jan. 4, 2001) (respondent could have legitimate interest in developing mark identical to complainant’s where mark was weak and respondent operated in unrelated field); Shirmax Retail Ltd. v. CES Marketing, Inc., Case No. AF-0104 (eResolution Mar. 20, 2000) (registrant may more easily develop legitimate interest in single, short, common word).

The Panel concludes that Respondent has demonstrated that it was making a legitimate use of the domain name since 1997, before it had notice of the dispute. The Panel accepts Respondent’s explanation that, rather than attempting to trade on Complainant’s mark, it registered several domain names, all common English-language women’s names, in order to redirect to an adult site. Response Exh. A (Affidavit of Jeffrey Burgar) para 7. Though many people may well find Respondent’s activities distasteful, there is no suggestion that they are illegal. Respondent’s redirection to a site logically related to the domain name at issue (here, related because of the rather crude but unfortunately common equation of people’s first names with adult content) constitutes a legitimate "use" under the Policy, just as redirection can constitute bad faith "use." See Bernstein v. Action Advertising, Inc., Case No. D2000-0706 (WIPO Sept. 28, 2000) (redirection of "lipservice.com" to adult website created legitimate interest); cf. Talk City, Inc. v. Michael Robertson, Case No. D2000-0009 (WIPO Feb. 29, 2000) (redirection to unrelated site was bad faith "use").

C. Bad Faith

For similar reasons, the Panel finds that Respondent did not register and use the domain name in bad faith. The Panel credits Respondent’s contention that, as a Canadian business, it had neither actual nor constructive knowledge of Complainant’s mark at the time it registered the domain name. Complainant’s mark is not registered in Canada, nor did Complainant provide any evidence that its mark is otherwise known in that country. See VZ VermögensZentrum AG v. Anything.com, Case No. D2000-0527 (WIPO Aug. 22, 2000) (finding no evidence of bad faith where complainant’s mark was not registered in registrant’s country and there was no other evidence that mark would be known in registrant’s country); Allocation Network GmbH v. Gregory, Case No. D2000-0016 (WIPO Mar. 24, 2000) (similar result).

Respondent’s offer to sell the domain name does not constitute bad faith, in light of the fact that it has a legitimate interest in the domain name. The Panel does not rely on the circumstance that Complainant initiated the negotiations, since a bad-faith cybersquatter may also wait for a trademark owner to act before making demands. Because of Respondent’s legitimate interest in using the domain name for goods or services, the domain name is a business asset, and the negotiations between the parties simply do not show bad faith. See, e.g., General Machine Products Company, Inc. v. Prime Domains, Case No. FA0001000092531 (NAF, filed Jan. 26, 2000) (no decision date given) (offers to sell are not evidence of bad faith where registrant has independent legitimate interest); cf. Magnum Piering, Inc. v. Mudjackers, Case No. D2000-1525 (WIPO Jan. 29, 2001).

 

7. Decision

For all of the foregoing reasons, the Panel decides that Complainant has failed to meet its burden of proof under paragraph four of the Policy. Accordingly, this Panel declines to order the transfer of the domain name at issue to the Complainant.

 

 

David H. Bernstein
Presiding Panelist

Christian-Andre Le Stanc
Panelist

David E. Sorkin
Panelist

Dated: January 31, 2001