WIPO Arbitration and Mediation Center

Subject to the forging, the Response does not deny that the domain name is identical to the Complainant's SCORPIONS registered trademark.

The domain name in issue was registered in November 1996. No notice of any dispute was raised until this Complaint was filed in June 2001, some 4Ѕ years later. The Respondent cites a dissenting opinion in Bank United Corp .v. Build Pro Communications [FA95158] where a delay of just under 3Ѕ years was said to constitute

… the equivalent of laches in the fast moving worlds of the Internet.

Etam .v. Alberta Hot Rods [Case No. D2000-1654]. There the domain name was <tammy.com> which, as in this case, was used to redirect traffic to the <Red1.com> adult entertainment website. The Complainant had extensive registered trademark rights for TAMMY for clothing. The Complaint failed in relation to legitimate interest in the <tammy.com> domain name, the Decision stated:

Drew Bernstein .v. Action Advertising [Case No. D2000-0706].

There the domain name was <lipservice.com> registered in December 1995. The Complainant had used LIPSERVICE as a trademark for clothing since 1985 and a US registered trademark was obtained in 1990. The Respondent was in the business of purchasing domain names and deriving income from them through linking, inter alia, to adult entertainment websites. Here, the <lipservice.com> domain name had been linked to a third party adult entertainment website, <slut dot com>, since registration in 1995. In relation to rights and legitimate interest, the Decision stated:

… the Policy does not specify that a domain name must itself be displayed on the registrant's website in order for there to be a legitimate interest in its use in connection with a bona fide offering of goods and services.

In view of the evidence showing that the Respondent has used the domain name for several years in connection with websites providing advertising links to adult entertainment websites and because the term "lip service" is susceptible of a meaning that is arguably, as Respondent has asserted, "apt" for the services offered, the Panel finds that the Complainants have failed to carry the burden of proof as to Respondent's lack of "right or legitimate interest" in the domain name under paragraph 4a(ii) of the Policy.

Porto Chico Stores .v. Otavio Zambon [Case No. D2000-1270].

There the domain name in issue was <lovelygirls.com>, used for the Respondent's adult entertainment website, which bore the heading Lovelygirls Virtual Erotic Magazine. The Complainant had manufactured and sold, inter alia, women's clothing under the LOVELY GIRLS mark since 1979. The Complainant also held a number of US registered trademarks for LOVELY GIRLS dating from 1982. In relation to rights and legitimate interests, the Panel stated:

Here the disputed domain name is being used in connection with a pornographic website. The words "lovely girls" are descriptive. The site contains pictures, some of which, no doubt, are of women to whom that description applies. There is no evidence that the Respondent knew of the Complainant's trademark at the time of registration of the disputed domain name nor subsequently. There is nothing illegitimate about offering pornography on a website.

Sweeps Vacuum & Repair Center .v. Nett Corp [Case No. D2001-0031]

There the domain name in issue was <sweeps.com> used in relation to a website on which was located a directory page featuring links to various sites involving sweepstakes and related games. The Complainant had used the service mark SWEEPS in relation to retail store services featuring vacuum cleaners since 1990 and had obtained a US service mark registration for SWEEPS in 2000. The Decision states:

… Respondent was using the domain name not in the trademark sense, but in the descriptive sense describing the types of businesses (sweepstakes related) listed on the directory page. This Respondent is entitled to do.

Shirmax Retail .v. CES Marketing [Case No. AF-0104]

There the domain name in issue was <thyme.com>. The Respondent had registered other generic names, for example, <dill.com>. Two years before registration of the domain name in issue, the Complainant had obtained THYME as a trademark in Canada, which it used in relation to maternity clothing. For some time, the Respondent used the domain name in issue to redirect to a different site, at the domain name <cesmarketing.com>, the business of which was the development and marketing of valuable domain names. Finding that the Respondent had established rights and legitimate interests, the Panel stated:

Where the domain name and trademark in question are generic - and in particular where they comprise no more than a single, short, common word - the rights / interests inquiry is more likely to favour the domain name owner.

Bosco Products .v. Bosco E-Mail Services [NAF Case No. F94828] FA0005000094828

There the domain name in issue was <bosco.com> registered in 1996, Bosco being a common surname, which the Respondent used in its vanity email business along with numerous other domain names containing common surnames. This business comprised a Mail Bank, which leased those domain names to individuals in a shared domain email service, so that its customers included, for example, <John@bosco.com> and <Marianne@bosco.com>. The Panel held that this established rights and legitimate interests in the domain name <bosco.com>, notwithstanding that the Complainant had used the mark BOSCO for, inter alia, chocolate syrups since 1928 and had held a US trademark for BOSCO since 1987.

Energy Source Inc .v. Your Energy Source [NAF Case No. F96364] FA0101000096364

There the domain name was <yourenergysource.com>. The Complainant had since 1991 used the ENERGY SOURCE mark - a US registered trademark issued in 1993 but cancelled in 2000 - originally for the sale of video tapes featuring energy efficient information and instructions for building energy efficient structures and more recently for the buying and selling of goods and services in energy related markets over a global network. In relation to legitimate interests, the Respondent asserted that it was making fair use of generic terms. The Panel found:

Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms and, in any event, is not exclusively associated with Complainant's business.

Shirmax Retail, quoting the passage from the Decision extracted above,.

General Machine Products Company Inc .v. Prime Domains [NAF Case No. F92531]. FA0001000092531

There the domain name in issue was <craftwork.com>. The Complainant had obtained US trademark registrations for CRAFTWORK for hand tools in 1990. The Panel held:

General Machines has not proven, however, that Prime Domains has no legitimate interests in respect of the domain name <craftwork.com>. General Machines' trademark is not fanciful or arbitrary, and General Machines has submitted no evidence to establish either fame or strong secondary meaning in its mark such that consumers are likely to associate <craftwork.com> only with General Machines. As Prime Domains has demonstrated, the term "craftwork" is in widespread use in a descriptive sense. The Panel finds therefore that Prime Domains has rebutted General Machines' arguments and has proven that it is in the business of selling generic and descriptive domain names such as <craftwork.com>. As a result, Prime Domains does have a legitimate interest in the domain name. That Prime Domains has offered to sell this descriptive, non-source identifying domain name does not make its interest illegitimate.

Car Toys Inc .v. Informa Unlimited Inc [NAF Case No. F93682] FA0002000093682

There the domain name in issue was <cartoys.net>. The Complainant had sold automobile accessory products and services since 1987 under the CAR TOYS trademark, which was a US registered trademark / service mark. The Complainant also owned the domain names <cartoys.com> and <cartoys.org>. The Respondent was in the business of acquiring domain names of common words for development and sale. The Panel held:

Car Toys Inc., has not proven that Informa has no legitimate interests in respect of the domain name <cartoys.net>. The CAR TOYS trademark is not fanciful or arbitrary, and Car Toys has submitted no evidence to establish either fame or secondary meaning in its mark such that customers are likely to associate <cartoys.net> with CAR TOYS. Informa has demonstrated that the name is in use elsewhere. The arbitrator finds, therefore, that Informa has rebutted Car Toys' arguments and has shown that it is in the business of selling descriptive domain names such as <cartoys.net>. As a result, Informa does have a legitimate interest in the domain name. That Informa has offered to sell this domain name to Complainant after enquiry by Complainant does not make its interest illegitimate.

CRS Technology .v. Condenet Inc [NAF Case No. F9347] FA0002000093547

There the domain name was <concierge.com> used in relation to providing online travel services. The Complainant had a registered trademark for CONCIERGE for computer software application program interfaces using intelligent technologies which provide access to travel services. The Panel held that the Complaint failed under paragraph 4a(ii) of the Policy.

This is not a case in which CondeNet selected a domain name incorporating a famous or distinctive mark that, it should have known, it was not entitled to use. Rather, CondeNet selected as it domain name a mark that is somewhat descriptive and is meant to communicate some aspect of the services provided (i.e. the kind of assistance one could expect from a hotel concierge). The very reason it is attracted to this domain name is because of the positive image associated with the word, and not at all because of any desire to cause confusion with CRS' trademark rights. In these circumstances, the first to register a domain name containing a generic or descriptive mark should prevail absent bad faith and lack of legitimate interest.

Nicholas V Perricone .v. Martin Hirst [NAF Case No. FD95104] FA0007000095104

There the domain names were <wrinklecure.com> and <wrinklecure.com>. The Complainant was the author of a popular book entitled The Wrinkle Cure. The Respondent's website indicated that beauty products and cosmetics would soon be available online. In a majority decision, the Respondent was found to have rights and a legitimate interest in the domain names.

This is not a case where Mr. Hirst selected domain names incorporating a famous or distinctive mark that he should have known he was entitled to use. Rather, he selected descriptive, if not generic, domain names that are descriptive of products or services that could be sold under the domain names. The first to register such domain names, even if done with intent to profit from the registration, should prevail absent bad faith in the registration.

Zero International Holding GmbH .v. Beyonet Services [WIPO Case No. D2000-0161]

There the domain name in issue was <zero.com>. The Respondent was a long time Internet enthusiast and professional network engineer, who for 7 years used the domain name for primarily email and file transfer functions associated with his profession as a computer network engineer. The Complainant had registrations for the ZERO trademark in Europe, where it operated a clothing company. The Panel found that the Respondent did have a legitimate interest in respect of the domain name and that his registration was not effected in bad faith.

The word zero is a common English words. Although any number of organisations (including the Complainant) may have trademark rights in such a word (and indeed the Respondent has produced evidence of numerous US trademarks which include or comprise the word zero) that does not preclude the Respondent effecting registration of a common word on the first come, first served basis which was available. The Respondent's reasons for doing so, namely that it was short, simple and easy to remember provide an entirely reasonable and proper explanation of the Respondent's choice of this word. The Panel further notes that the Respondent has not, on the evidence, registered any other domain names, and had never heard of the Complainant at the time he effected the registration.

Primedia Special Interest Publications .v. Treadway [WIPO Case No: D2000-0752]

There the domain name as <shutterbug.com>. The Respondent planned to set up a website focussing on the needs of hobbyists, amateur photographers and photography enthusiasts. The Complainant had published since 1972 a monthly SHUTTERBUG magazine for advanced amateur and professional photographers and since 1996 had hosted an Internet site, <shutterbug.net>. The Panel held:

The mark is a word, shutterbug, that is a common, generic term, descriptive of photographic enthusiasts. Complainant's mark extends only to magazines related to photography; ownership of the mark does not ipso facto give Complainant the exclusive right to the word shutterbug in all contexts relating to photography. Third party use of shutterbug and variations is widespread among businesses related to photography, and there is no evidence of action by Complainant to enjoin their use. There is also no evidence of any special association of the word with Complainant's magazine.

Either of Respondent's anticipated uses of the domain name relates to photography, and neither appears to constitute a magazine. Respondent has established a legitimate right to the domain name.

First American Funds Inc .v. Ult Search Inc [WIPO Case No: D2000-1840]

There the domain name was <firstamerican.com>, which was used by the Respondent (a Hong Kong company) for a portal site linking to other websites. The Complainant had used FIRST AMERICAN since 1982 as a trademark for a mutual fund investment service and held registered US FIRST AMERICAN trademark registrations in respect of mutual fund investment services. The majority of the Panel found that the words First American are widely adopted and used by a variety of different businesses extending across a spectrum of business activities and geographical locations. The dissenting Panelist, Scott Donahey, stated:

If the Respondent's citation to the number of registrants and users of the trademark FIRST AMERICAN is testimony to anything, it is testimony to the popularity and general knowledge of the use of the name in American commerce and of the need to trademark it. It defies credulity that Respondent was unaware of the mark's use in commerce, even if Respondent may not have known of Complainant's particular registration.

Kis .v. Anything.com Ltd [WIPO Case No. D2000-0770]

There the domain name in issue was <kis.com> which served as a portal to a Korean information site. The Complainant had since 1983 used KIS in relation to its business of manufacturing mini labs for picture and photo processing and held numerous registrations for KIS in Europe and in the United States. Finding that the Respondent had a legitimate interest in the domain name, the Panel stated

Under appropriate circumstances the offering for sale of a domain name can itself constitute a bone fide offering of goods or services for the purposes of paragraph 4c(i) of the Policy.

Allocation Network GmbH .v. Gregory [WIPO Case No: D2000-0016]

There the domain name in issue was <allocation.com>. The Respondent operated a website under the domain name <rockbottomdomains.com> where he offered for sale around 400 different domain names including the domain name in issue. The Complainant owned a German registered trademark ALLOCATION in Classes 9, 35 and 42 for computers and computer related services. Because the Complainant failed to show that the Respondent had chosen the domain name with intent to profit from or otherwise abuse the Complainant's trademark rights [i.e. there was no evidence of bad faith registration or use], the Panel held that registration of <allocation.com> for resale gave the Respondent a legitimate interest in the domain name.

The other two cases cited are confirmatory of that principle, namely News Today Printers .v. Inet U Inc [WIPO Case No. D2001-0085] and Audiopoint Inc .v. eCorp [WIPO Case No. D2001-0509].

The Respondent's case is that there is absolutely no evidence that any of the circumstances set out in paragraphs 4(b)(i) - (iv) of the Policy apply.

The mere fact a generic term is also the subject of a trademark registration (or registrations) in one or more jurisdictions does not mean that a party like Respondent, which has registered numerous domain names using words which may or may not also be used as trademarks, is automatically guilty of bad faith. Obviously, the use of such a word prevents the trademark owner from having a corresponding domain name, More, however, is required to establish the pattern referred to in paragraph 4b(ii) of the Policy.

The Respondent also cites Sudnif SA .v. Tulle [WIPO Case No. D2000-0807]. There the domain name in issue was <findus.com>, which the Respondent intended to use for a search engine. The Complainant had the FINDUS trademark widely registered for frozen foods. The Panel stated:

It is however, not in itself an act of bad faith to register and sell domain names. Bad faith only occurs if the domain name infringes rights belonging to someone else, and if the registration is made with the intent of somehow disrupting or damaging the business of the holder of the said right. If the Respondent has a legitimate interest in the domain name but nevertheless is willing to sell it to someone else who also has a legitimate interest in the domain name, this cannot be considered as an action performed in bad faith.

To construe 4b(iv) without a requirement of direct action by the Respondent against the Complainant would create a tremendous scope of protection around existing owners of marks of common words and mundane expressions, and prevent new entrants from using these words and terms - even in entirely different fields from existing uses. Such a result is inconsistent with existing trademark principles and with the limited language and scope of the Policy.

The Respondent also cites the Drew Bernstein case (Supra) where the Panel stated:

Certainly the Respondent had constructive knowledge of the Complainant's federally registered trademark, whatever the state of its actual knowledge. However, the evidence also shows that the term lip service used in the Respondent's domain name is not an arbitrary or coined term nor a distinctive trademark, but a common English phrase susceptible of more than one meaning or connotation, which can be and is used in many commercial contexts, and that one of those connotations is, as Respondent argues apt for the adult entertainment advertising engaged in by Respondent on the website accessed by the domain name. For this reason, the Panel finds that the evidence is insufficient to establish bad faith registration and use under paragraph 4b(iv) of the Policy.

Canned Foods Inc .v. Ult Search Inc [NAF Case No. F96320] FA0012000096320 is another case relied upon by the Respondent. There, the domain name in issue was <groceryoutlet.com>. The Complainant had been offering services under the common law service mark GROCERY OUTLET since 1987. Owing to a procedural slip the Complainant lost the domain name which thereby became available to the public, whereupon the Respondent obtained it. The Respondent was in the business of developing themed search portals and derived revenue from directing web traffic from the portal site to other portal sites. The Panel rejected the Complaint by reason of the Complainant's failure to show bad faith, stating:

Where the domain name is a generic term, it is difficult to conclude that there is a deliberate attempt to confuse. It is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied them.

The mere fact that Respondent gains income from the domain name is not, in itself, bad faith no more than is the fact that not all of Respondent's domain names resolve to useful or informative websites. It is not the ownership of multiple domains that constitutes bad faith, it is the intent to harm the mark owner that defines cybersquattering. Such intent was not established.

Finally, the Respondent cites Lumena S-Ka Z0-0 .v. Express Ventures [NAF Decision No. F94375]. FA0003000094375 There, the domain name in issue was <skarbiec.com>, which translates from Polish to treasure house. The Respondent managed over 1,000 domain names and the domain name in issue was intended for use by a Third Party for a website in Taiwan to promote lighting products and fixtures worldwide. The Complainant, owned the LUMENA trademark, registered in Poland and Russia, which it had used for 12 years in its business of information technology and electronic systems integration. The Panel found that the Respondent had shown sufficient evidence of intention to use the domain name in bona fide commerce to satisfy legitimate interest.

It did appear that Respondent was involved in the business of registering domain names with intent to resell them for a profit. If the domain name at issue were a common trademark such as IBM, evidence of this might well be sufficient to demonstrate a bad faith registration and use. <lumena.com>, however, involves a generic term, and there is no direct evidence that Respondent registered the domain name with the intent of capitalising on Complainant's trademark interest.

… Complainant operates its ventures in the field of information technology and is not associated with lighting products. The Panel therefore found that Complainant has failed to sustain its burden of proving that Respondent registered the domain name in bad faith.

A bad faith showing would require the Complainant to prove that the Respondent registered <instead.com> specifically to sell to the Complainant, or that the value of instead as a domain name derived exclusively from the fame of its trademark. Neither has been proven in this case. In the absence of an intent to capitalise on the Complainant's trademark interest, the Complainant cannot assert an exclusive right over a domain name that is a common generic term. Therefore, it does not constitute bad faith for a company making a legitimate use of a domain name to attempt to sell the domain name.

The Respondent also relies upon the evidence that before this Complaint it had never heard of the Complainant Band, that there is no evidence of a pattern of registering unique trademarks as domain names, that there is no evidence that it registered the domain name to trade off the alleged popularity of the Band, and that there is a plausible explanation for using the word SCORPIONS [with its wicked person connotation] for an adult website.

6.1 The Policy paragraph 4a provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding: