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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dowluck Limited v. evisu.com
Case No. D2001-0898
1. The Parties
1.1. This Complaint was filed by Dowluck Limited, a company incorporated and existing under the laws of Japan and having its registered office at 2-21-85 Ousu, Nakaku, Nagoyashi, Aichiken, Japan ("Complainant").
1.2. The Respondent is evisu.com, an entity the legal status of which is not clear, purportedly contactable at Bird Inn House, Wylam, Northumberland NE41 8AQ United Kingdom ("Respondent").
2. The Domain Name and Registrar
2.1. The domain name that is the subject of this Complaint is <evisu.com> ("domain name").
2.2. The registrar of this domain name is Tucows.com, Inc., of Toronto, Ontario, Canada ("Registrar").
3. Procedural History
Issuance of Complaint
3.1. On July 13, 2001, the Complainant by email and by courier submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") a Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy ("Uniform Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy ("Uniform Rules"), both of which were implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999. The copy of the Complaint submitted by email was received on July 13, 2001, and the copy of the Complaint submitted by courier was received on July 16, 2001. An acknowledgement of receipt of Complaint was sent by the WIPO Center to the Complainant and to the Respondent by email on July 18, 2001.
Confirmation of Registration Details
3.2. A Request for Registrar Verification was dispatched by the WIPO Center to the Registrar by email on July 18, 2001. By email to the WIPO Center on July 19, 2001, the Registrar confirmed that it had received a copy of the Complaint from the Complainant; confirmed that it was the registrar of the domain name that is the subject of this Complaint; confirmed that the current registrant of the domain name is the Respondent, and provided a postal contact address for the Respondent; provided the name, email, and postal addresses, of the Administrative, Technical and Billing contacts of the Respondent ("Respondent’s Contacts"); confirmed that the Uniform Policy applies to the domain name that is the subject of this Complaint; and informed that the current status of the domain name is "on hold".
Notification to Respondent
3.3. On July 20, 2001, having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, and that payment of the filing fee had been properly made, the WIPO Center issued to the Respondent a Notification of Complaint and Commencement of Administrative Proceeding, by courier to the postal address of the Respondent and the Respondent’s Contacts as provided by the Registrar (this address being the same), and by email to the email address of the Respondent and the Respondent’s Contacts as provided by the Registrar (again, this address being the same). Copies of this Notification of Complaint were sent by email to the Complainant, the Registrar and ICANN on that date. Records of the WIPO Center show that the courier packages and emails to the Respondent and the Respondent’s Contacts were delivered.
3.4. This Administrative Panel finds that the WIPO Center has discharged its responsibility under Rule 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent".
Filing of Response
3.5. No Response was filed by the Respondent by the time specified in the Notification of Complaint. As at the date of this decision, no communication has been received from the Respondent. On August 14, 2001, the WIPO Center dispatched to the Respondent by email a Notification of Respondent Default.
Constitution of Administrative Panel
3.6. In accordance with the request in the Complaint, the WIPO Center proceeded to appoint a single Panelist, and invited Andrew F. Christie to so act. On August 21, 2001, the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date, stating that Dr. Christie had submitted a Statement of Acceptance and Declaration of Impartiality and Independence and had been appointed the sole Panelist in this case, and informing that absent exceptional circumstances a decision would be provided by this Administrative Panel by September 4, 2001. The case before this Administrative Panel was conducted in the English language, this being the language of the registration agreement applicable to the domain name in issue.
Compliance with the formalities of the Uniform Policy and the Uniform Rules
3.7. Having reviewed the Case File in this matter, this Administrative Panel concurs with the assessment by the WIPO Center that the Complaint complies with the formal requirements of the Uniform Policy and Uniform Rules.
4. Factual Background to this Complaint
Complainant’s Activities and Trademarks
4.1. The Complainant asserted, and generally provided evidence in support of, the following facts. Unless otherwise specified, this Administrative Panel finds these facts established. The Complainant is the registered owner of the trademark EVISU in Europe, Hong Kong, and the United Kingdom, and is the applicant for registration of the trademark in China and the USA, in class 25 (clothing, footwear, headgear) and/or class 18 (leather goods). A schedule of all EVISU trademark registrations and applications for registration owned by the Complainant is provided as Annex 5 to the Complaint.
4.2. The Complainant has been engaged in the design, manufacture and sale of denim clothing in Japan for approximately 11 years, and denim clothing bearing the EVISU trademark has been available in Europe since 1996. The Complainant has granted Evisu International S.R.L., a licence to manufacture and distribute EVISU clothing throughout the world (excluding Japan).
4.3. Clothes bearing the EVISU trademark have become a status symbol amongst followers of fashion trends as a result of their widely publicised popularity amongst such well-known celebrities as the England and Manchester United football player, David Beckham and pop stars, Madonna, Robbie Williams, All Saints and DJ Goldie. Because of the association with celebrities the brand has also received considerable attention from the media. Examples of media reports concerning this trend and the ever increasing popularity of the EVISU brand across the globe are provided as Annex 6 to the Complaint.
4.4. In keeping with its brand image, EVISU clothes are sold through several select establishments including Harrods and Harvey Nichols in the United Kingdom, Barneys in the USA, Seibu in Asia and Bon Marche in France. These distributors are in addition required to spend an agreed percentage of their turnover on marketing and promotion of the EVISU brand. The brand is also promoted by other distributors via the internet who frequently list EVISU with designers such as Gucci, Prada and Hugo Boss. Various examples of such marketing material are attached at Annex 8 to the Complaint.
4.5. The Complainant asserted, and generally provided evidence in support of, the following facts. Unless otherwise specified, this Administrative Panel finds these facts established. On March 25, 1999, Titan Hancocks registered the domain name evisu.com, as evidenced by a search of the Network Solutions Whois database dated July 20, 2000, provided as Annex 9 to the Complaint. As the first registrant of this domain name, Titan Hancocks provided the address, Bird Inn House, Wylam, Northumberland NE41 8AQ, United Kingdom. This is the same address as that provided by an intervening registrant, "email@example.com" and the current registrant, the Respondent. The administrative contact details of the Respondent remain the same as that of the original registrant, Titan Hancocks. The names of the successive registrants do not relate to any known legal entities and appear to be arbitrary nomenclature based on the email address of the registrant and the domain name itself.
4.6. The domain name <evisu.com> has never resolved to anything other than a holding website.
4.7. Having become aware of the registration of the domain name, the Complainant instructed its legal representative to arrange for a private investigator to make enquiries about the Respondent's reasons for registering the domain name. In order to maintain confidentiality, the private investigator purported to act on behalf of a party interested in acquiring the site. In response to the Private Investigator's enquiries, Titan Hancocks, the original registrant, advised that an entity referred to as "firstname.lastname@example.org" had become the registered owner of the domain name. There followed a series of email communications between the Private Investigator and email@example.com. Copies of these communications are attached as Annex 10 to the Complaint.
4.8. In these communications, firstname.lastname@example.org initially indicated that the domain name <evisu.com> was not for sale. However, in response to an email from the Complainant’s Private Investigator proposing to purchase the domain name for a sum of Ј5,000, email@example.com stated the following in an email on August 22, 2000:
"Thank you for your offer. On the site previously mentioned (www.GreatDomains.com), their homepage states that the average actual resale price achieved for dot come (sic) names so far this year is $36,287 (dollars). As we said in our previous emails, the domain was not registered for resale, but if you'd be willing to match this amount the we'd be willing to fully transfer the name to either you or your company."
4.9. The Complainant conducted a search dated March 28, 2001 on the Network Solutions Whois database, a copy of which is provided as Annex 11 to the Complaint, showing that Titan Hancocks previously registered <sampdoria.com>, and a number of descriptive domain names such as <globalexpressdelivery.com>, <mailcollect.com>, <financialpublishing.com>, <sharecenter.com> and <recruitmentservices.com>. All but one of these domain names resolve to a web site at the url http://www.firstsites.com. The registrant of the domain name <firstsites.com> is listed as "firstsites.com", according to a whois database report dated May 30, 2001, a copy of which is Annex 12 to the Complaint.
4.10. The web site at http://www.firstsites.com is an internet portal which additionally offers domain names for sale. The owner or moving force behind the business www.firstsites.com is Titan Hancocks. A copy of the home page of the www.firstsites.com website stating that the founder is Titan Hancocks, and a copy of the biography of Titan Hancocks to which that home page links, are provided as Annex 13 to the Complaint. The address of the registrant of the domain name <firstsites.com> is the same as that of the Respondent to this Complaint. It thus seems clear that Titan Hancocks is the alias for or driving force behind the Respondent and that this individual is engaged in a business of acquiring domain names for the purposes of resale.
4.11. On June 19, 2001, the legal representative for the Complainant wrote to the Respondent, requesting the transfer of the domain name. A copy of that letter is Annex 14 to the Complaint. No reply has been received to that letter.
5. Parties’ Contentions
5.1. The Complainant contends that each of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to the domain name that is the subject of this dispute, as follows.
5.2. In relation to element (i) of Paragraph 4(a) of the Uniform Policy, the Complainant contends that the domain name <evisu.com> is identical to the Complainant’s trademark EVISU.
5.3. In relation to element (ii) of Paragraph 4(a) of the Uniform Policy, the Complaint contends that the Complainant has not licensed or otherwise permitted the Respondent to use its EVISU trademark nor has it licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating the trademark. The Respondent has not made any bona fide use of the domain name that is the subject of this Complaint, and the only reason why the Respondent has registered the domain name is in order to receive payment from the Complainant to recover the domain name.
5.4. In relation to element (iii) of Paragraph 4(a) of the Uniform Policy, the Complainant contends as follows. The word evisu was invented by Mr. Hidehiko Yamane. The word EVISU has become known only through use by the Complainant and has no other meaning or association with any other entity or product. The registration has been made by the Respondent with the intention of preventing the Complainant from registering that name itself and thereafter solely with the intention of making a profit by selling it to the Complainant. The registration by the Respondent not only has the effect of depriving the Complainant of its lawful right to make use of the trade mark as a domain name but has the potential to frustrate clients of the Complainant, who are familiar with the Complainants' trade mark EVISU from locating its presence on the internet. Many of the customers of the Complainant are young adults across the Complainant's key markets who will be familiar with the workings of the internet and who would in all likelihood wish to obtain information about the product by accessing the website linked to the domain name in dispute and who would reasonably expect the global TLD incorporating the Complainant’s trademark to be used by a company which markets and sells its goods internationally.
5.5. The Respondent did not file a Response.
6. Discussion and Findings
Domain Name is Identical or Confusingly Similar to Complainant’s Mark
6.1. In relation to the domain name <evisu.com>, the relevant part of this domain name is "evisu". The domain name is identical to the Complainant’s trademark.
Respondent’s Rights or Legitimate Interests in the Domain Name
6.2. The Complainant’s trademark appears to be invented, and to have no descriptive quality. The Complainant has never given the Respondent any license, permission or authorization to use the Complainant’s trademark. When these facts are combined with the facts (i) the Respondent is not using the domain names in connection with a bona fide offering of goods or services, (ii) the Respondent is not making a legitimate commercial, non-commercial or fair use of the domain names, and (iii) the Respondent has not provided evidence of or even asserted the existence of any other circumstance that would give rise to a right to or legitimate interest in the domain names, this Administrative Panel concludes that the Respondent has no rights or legitimate interests in the domain name the subject of this Complaint.
Domain Name Registered and Used in Bad Faith
6.3. The fact that the Respondent has chosen not to submit a Response is, in this Administrative Panel’s opinion, particularly relevant to the issue of whether the Respondent has registered and is using the domain name in bad faith. Rule 14(b) of the Uniform Rules provides that, in the absence of exceptional circumstances, a Panel shall draw such inferences as it considers appropriate from the failure of a party to comply with a provision or requirement of the Uniform Rules. This Administrative Panel finds there are no exceptional circumstances for the failure of the Respondent to submit a Response. This Administrative Panel draws from this failure the following two inferences: (i) the Respondent does not deny the facts which the Complainant asserts, and (ii) the Respondent does not deny the conclusions which the Complainant asserts can be drawn from these facts. Nevertheless, this Administrative Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts.
6.4. The facts discussed in paragraphs 4.5-4.11 above, which this Administrative Panel finds established, show as follows. Titan Hancocks, the alias for or driving force behind the Respondent, engages in the business of registering domain names (most, but not all, of which are descriptive) for sale. The Complainant’s registered trademark EVISU has a degree of notoriety such that, in the absence of evidence or even an assertion by the Respondent to the contrary, knowledge of the Complainant’s rights in the trademark can be imputed to the Respondent at the time of registration of the domain name. The Respondent has not a made any bona fide use of the domain name <evisu.com>. The Respondent, in response to an unsolicited offer from a third party (the Complainant’s Private Investigator), made a counter-offer to sell the domain name for a sum vastly in excess of out-of-pocket expenses incurred in registering the domain name. Taking all these facts into account, it is a reasonable inference that the Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant or a competitor of the Complainant. This Administrative Panel draws that inference.
6.5. Accordingly, there are sufficient grounds to persuade this Administrative Panel that the domain name <evisu.com> was registered and is being used by the Respondent in bad faith, in the sense contemplated by paragraph 4(a)(iii) of the Uniform Policy.
7.1. This Administrative Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the Uniform Policy in relation to the domain name that is the subject of this Complaint.
7.2. Pursuant to paragraph 4(i) of the Uniform Policy and paragraph 15 of the Uniform Rules, and in accordance with the request of the Complainant contained in paragraph 13 of the Complaint, this Administrative Panel requires that the Registrar, Tucows.com Inc., transfer to the Complainant, Dowluck Limited, the domain name <evisu.com>.
Andrew F. Christie
Dated: September 4, 2001