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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Media Image, Inc., Casual Day.Com, and Rodney Williams
Case No. D2002-0322
1. The Parties
The Complainant in this administrative proceeding is Russell Specialties Corporation whose principal place of business is located at 720 Industrial Drive, Suite 115, Cary, Illinois 60013, United States of America. The Respondent in this case is Media Image, Inc., Casual Day.Com, and Rodney Williams whose principal place of business is 2733 152nd Avenue NE, Redmond, Washington 98052, United States of America.
2. The Domain Names and Registrars
The domain names at issue are
which are registered with Network Solutions in Herndon, Virginia, United States of America and Register.com in New York, New York, United States of America.
3. Procedural History
A Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on April 4, 2002. On April 22, 2002, the WIPO Center notified the Respondent of the commencement of this administrative proceeding and set a deadline for Response of May 13, 2002. The WIPO Center received the Response by email on May 13, 2002. On May 23, 2002, the WIPO Center notified the parties of the appointment of the Panel.
The Complainant filed a supplemental filing, which was forwarded by the WIPO Center to the Panel on May 24, 2002. The Panel was informed of the WIPO Center’s receipt of this supplemental filing and the Panel has discretion as to whether to consider the supplemental filing in rendering its decision. The Panel has elected to review Complainant’s additional filing which consisted of the following three annexes: (1) declaration of attorney Vigil in response to attorney Christie’s declaration; (2) a page from Plaintiff’s (Complainant’s) trial brief; and (3) a motion "to be filed soon asking the Federal Court to compel the Defendants (Respondents) to cease use of the domain name ‘<casualday.com>.’" As these materials directly respond to points raised by Respondent, and, in the case of the motion to be filed, raise new information not available when the Complaint was filed, the Panel finds them to be helpful in reaching the decision below, and thus has elected to admit and consider them.
4. Factual Background
Complainant, a promotional products distributor and supplier, is the owner of the mark CASUAL DAY. Complainant learned about <casualday.com> in December 1999 and in August 2000 sent a cease-and-desist letter to Respondent. Complainant then filed suit in United States District Court, Western District of Washington in November 2000 (hereafter the "Federal Court case").
Respondent, also a promotional products distributor, registered <casualday.com> on December 2, 1997. In January or February of 1998 Respondent discovered Complainant’s CASUAL DAY mark. Respondent sought no legal advice or opinions before continuing with his business plans and use of <casualday.com>.
In October 2001, following a bench trial, the Federal Court ruled that Respondent infringed on Complainant’s mark and ordered Respondent to "remove all references to Casual Day.com and cease to use this domain name." Russell Specialties Corp v. Media Image, Inc. No. C00-1961P (W.D. Wash 2001). However, the Federal Court allowed Respondent to post a closure notice and reference to a new site for a period of six months.
Apparently not satisfied with the resolution, Complainant requested that the court order Respondent to assign the domain name <casualday.com> along with <casualday.net>, <casualday.org>or, <casual-day.com>, <casual-day.net>, and <casual-day.org> to Complainant. The Court denied Complainant’s request, stating that Complainant was belatedly requesting relief that it had not requested at or prior to trial.
5. Parties’ Contentions
Complainant contends that Respondent has registered multiple domain names that are identical to and confusingly similar to a trademark and service mark in which Complainant has rights.
Further, Complainant submits that the court’s order to Respondent to "remove all references to CasualDay.com and cease to use this domain name" clearly shows that Respondent has no legitimate rights or interests in the mark CASUAL DAY or domain names including "casualday" or "casual-day." Thus, according to Complainant, Respondent has no legitimate rights or interests in any of the disputed domain names.
While Complainant concedes that the domain name <casualday.com> "may have initially been registered in good faith," Complainant argues that Respondent learned of Complainant and Complainant’s registered marks before offering any services using the disputed domain name. Complainant asserts that this behavior constituted bad faith. Further, Complainant argues that Respondent is continuing that bad faith by registering closely related domain names and renewing the <casualday.com> domain name despite the Federal Court’s order to cease use of that name. Complainant claims that Respondent’s continued effort to try to capture the term "casualday" in the various domain name combinations is clear evidence of bad faith.
Additionally, Complainant asserts that Respondent is holding the domain names for ransom to Complainant or the highest bidder. Complainant also argues that Respondent’s domain name registrations prevent Complainant from reflecting its mark in a corresponding domain name.
Respondent argues that the remedy requested by Complainant has already been denied by the Federal Court, and thus this remedy is not properly before this tribunal. Respondent claims that it is not appropriate for Complainant to use this tribunal as an alternate means to attempt to obtain the very relief that has already been denied by a court, and/or to ask this panel to review the correctness of the Federal Court’s decisions.
Respondent does not dispute that the domain name is identical or confusingly similar to a mark in which Complainant has rights. Instead, Respondent asserts that it has a legitimate interest in the domain names due to the non-commercial, fair use that the Respondent is making of the domain names.
Respondent asserts that, during a conference call among counsel for the parties and the judge in the Federal Court case, the judge acknowledged that the proper means by which the domain names could be transferred and/or assigned would be through Complainant’s purchase of the domain names. (The specifics of this account are disputed by Complainant in its supplemental materials, which assert that counsel for Respondent, not the judge, suggested that Complainant should purchase the domain name from respondent.) Respondent contends that there have been no negotiations for the sale or purchase of the disputed domain names and that Complainant’s assertion regarding Respondent’s holding of the domain names for ransom is unwarranted.
Respondent argues that the Court’s ruling negates a finding of bad faith. In denying Complainant’s motion for attorney’s fees, the court indicated that Respondent’s actions were not malicious, deliberate or willful and that Respondent, while infringing on Complainant’s trademarks, did not do so with the intent to profit by confusing Complainant’s customers.
Finally, Respondent argues that it registered the domain name <casualday.com> on December 12, 1997, in connection with a bona fide offering of goods and services before notice of a dispute from Complainant.
6. Discussion and Findings
Respondent raises a jurisdictional challenge based on Federal Court case, Russell Specialties Corp v. Media Image, Inc. No. C00-1961P (W.D. Wash 2001). Respondent argues that "[a]lthough it is undisputed that the domain names that are the subject of the Complaint are covered by the UDRP adopted by ICANN, the remedy requested by Complainant has already been denied by the" Federal Court and that the Panel "should not now act as a reviewing body to determine whether the U.S. Federal Court decision was erroneous." The Panel agrees that it should not act as an appellate court or otherwise to review the correctness of the Court’s rulings. However, the purposes behind and standards governing this UDRP case are not the same as those applicable to a federal court trial. The appropriate outcome in this case under the UDRP Policy and Rules may or may not be the same as the outcome of the Federal Court case. Indeed, both the Policy (¶ 4k) and the Rules (¶ 18) expressly contemplate that the parties may choose to resort to the courts for relief before or after a UDRP proceeding. Moreover, since Respondent itself apparently attributes Complainant’s inability to gain a transfer order from the Court to a "procedural blunder by Complainant," even if the substantive standard to be employed by the this Panel and the Federal Court were identical to the UDRP, the outcome might not be. As Respondent concedes, all 12 domain names are subject to the UDRP and the Complainant has invoked the procedure correctly. Accordingly, the Panel finds that it has jurisdiction.
Despite the fact that jurisdiction exists, Rule 18(a) gives the Panel discretion to suspend or terminate this proceeding or to proceed to a decision. As there has been a trial and the Federal Court issued on October 4, 2001, its findings of fact and conclusions of law, a ruling that now appears to be final, the time for appeal having past, the Panel sees no reason to delay proceedings. The choice is between termination or proceeding to a decision. For the reasons discussed above, the Panel will proceed to a decision.
B. Applicable Rules and Principles of Law
Paragraph 15(a) of the Rules sets out the principles this Panel is to use in rendering its decision: "A Panelist shall 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 directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights; and,
(ii) that the Respondent has no legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
C. Application of Paragraph 4(a) to the Facts
Regarding <casualday.com> the Panel finds that Complainant has failed to show bad faith registration and use. The following allegations from the Complaint would seem to rule out a finding of bad faith registration for <casualday.com>.
Briefly Respondent registered the domain name "<casualday.com>" on December 2, 1997. Several months later Respondent learned about Complainant’s registered trademark and did nothing, namely did not investigate further about the busines [sic] of Complainant and did not obtain an opinion regarding infringement of Complainant’s registered trademark.
While the domain name may have initially been registered in good faith, as soon as Respondent learned of Complainant and Complainant’s registered trademark, before offering any services on its domain name website, it acted in bad faith and continued that bad faith through the trial.
Thus Complainant concedes, apparently based on the facts developed in the trial, that at the time of registration Complainant was not acting in bad faith. Complainant attempts to fill this hole by arguing that bad faith registration is shown retroactively by Respondent’s "continuing that bad faith now by registering closely related domain names and renewing domain names the Court told them to cease using, even after the Court Order was entered on Oct. 4, 2001." While the later registrations do appear to have been made with the requisite bad faith, that bad faith does not transfer back to the <causalday.com> registration.
The Complainant also expressly argues that the Court erred:
While the Court did not order an assignment of the domain name, it appears that this was due to the courts [sic] incorrect impression that such relief had not been requested, although it had been requested, but inartfully so, in combination with othe [sic] items of relief sought in pargraph [sic] 7 of Plaintiff’s (complianant’s [sic]) prayer for relief in Complainant’s trial brief which is set forth below:
"7…that as a result of the likelihood of confusion, defendant is permanently enjoined from using casualday.com and is hereby ordered to change their corporate name from "casual day.com, inc." to a name which is not confusingly similar to or a colorable imitation of "CASUAL DAY" and to assign their "casualday.com" domain name registrations and any domain name which is confusingly similar to or a colorable imitation of "CASUAL DAY" to plaintiff."
For the reasons explained above, the Panel will not review the correctness of actions taken by the Federal Court but merely accepts them as part of the factual background presented. Because Complainant concedes that Respondent’s initial registration of <casualday.com> was not made in bad faith, this Panel finds that Respondent has not met its burden of showing that <casualday.com> was registered in bad faith.
As noted, Complainant alleges that Respondent’s renewal of the <casualday.com> domain name constitutes bad faith. Under the Policy, however, Complainant must provide evidence that the domain name "has been registered and is being used in bad faith" in order to justify a transfer of the name. Although the examples of bad faith set forth in the Policy have led to the interpretation in some other contexts that actual use may not always be required to satisfy the Policy (but instead that mere nonuse or an intent to sell could satisfy the use requirement) here there is no justification for straying from the plain wording of the Policy and allowing bad faith renewal to satisfy the bad faith registration requirement. As Complainant has failed to show bad faith, the Panel does not reach Respondent’s assertion that its current use of the <casualday.com> domain name is a non-commercial fair use.
II. Domain Names 2-12
The arguments set forth above regarding <casualday.com> do not apply to the domain names 2-12 which Respondent registered after it had learned of Complainant’s rights in the mark CASUAL DAY. Consequently, the Panel must analyze whether Complainant has met its burden regarding these domain names.
a) Identical or Confusingly Similar to Trademark
Complainant is required under Paragraph 4(a)(i) of the Policy to prove that the domain names are identical or confusingly similar to a trademark in which Complainant has rights. Complainant has demonstrated that it has U.S. trademark rights to the mark CASUAL DAY for wearing apparel. The second level domains for domain names 2-12 include the following terms: 1) casualday, 2) casualdays, 3) casual-day and 4) casual-days, which are either identical to Complainant’s trademark, merely add a hyphen or make the term plural.
Respondent does not dispute that the first element of the policy, the requirement that the domain names be identical or confusingly similar to a mark in which the Complainant has rights, is satisfied. Consequently, the Panel finds that Complainant has met its burden of showing that domain names 2-12 are identical or confusingly similar to a mark in which Complainant has rights.
b) Respondent’s Rights and Legitimate Interests in the Domain Name
Under Paragraph 4(a) of the Policy Complainant must prove that the Respondent has no legitimate interest in the domain name. Here, Complainant argues that the Court’s ruling that Respondent "remove all reference to Casual Day.com and cease to use this domain name" shows that Respondent has no legitimate rights or interests in the mark CASUAL DAY or domain names including "casualday" or "casual-day."
In its findings of fact and conclusions of law the Court found that the Respondent had conceded that it had infringed Complainant’s trademark. The Court also found that Respondent infringed Complainant’s service mark.
Respondent argues that it is making a legitimate, non-commercial, fair use of the domain names 2-12. In support of this argument, however, Respondent submits only a printout of the <casualday.com> web page. The contents of this page include a photo of a man reclining in a hammock on the beach. Under the photo is text stating that casual days are enjoyable, informal, relaxed, etc. Respondent does not provide any evidence regarding use of any of the domain names 2-12, but invited the Panel to review the web pages associated with those domain names to "verify the web page content and/or lack thereof." The Panel reviewed the web pages associated with domain names 2-12 and found that Respondent had not posted any content on these pages.
Respondent argues that the Lanham Act prohibits only commercial use of the registered mark and that Respondent is not using the web pages in conjunction with any commercial use for wearing apparel. Respondent also claims that its use of the domain names is afforded First Amendment protection. However, Respondent does not offer any evidence that its use, or lack thereof, generates First Amendment protection. In fact Respondent does not appear to be using the domain names at all.
In this case a court has found that Respondent’s actions have infringed upon Complainant’s trademark rights, Respondent asserts no identifiable legitimate rights or interest in the name, Respondent has been ordered by a court to cease using the domain name <casualday.com> and does not appear to be using any of the other related domain names. Consequently, the Panel finds that Complainant has met its burden of showing that Respondent does not have any legitimate interest or rights in domain names 2-12.
c. Registration and Use in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant show that the domain names have been registered and used in bad faith. According to the court’s findings of fact and conclusions of law, Respondent discovered Complainant’s CASUAL DAY trademark in January or February of 1998. After learning of Complainant’s mark, Respondent then registered domain names 2-12 between May 1998 and November 2001. Complainant argues that Respondent’s registration of these domain names after learning of Complainant’s trademark rights constitutes registration and use in bad faith.
Respondent argues that the Federal Court made findings that specifically contradict any finding of bad faith conduct on the part of Respondent. Specifically, Respondent points to the following court rulings regarding Respondent’s conduct:
- Respondent’s actions were not malicious, deliberate or willful in the context of deciding whether or not to award attorney’s fees to the Complainant.
- "Although the Court ultimately ruled for the Plaintiff, a number of equities favored the Defendants. For example, the Court found no examples of confusion, and that customers probably could distinguish between brands of wearing apparel in question. Furthermore, the Court did not find that the Defendants intended to gain advantage by confusing Plaintiff’s customers."
- Respondent, while infringing on the Complainant’s trademarks, "did not do so with the intent to profit by confusing the Plaintiff’s customers. Rather, the Defendants sought to use the trademarked name of "Casual Day" along with the ".com" ending, to build their own marketing plan."
The policy sets forth examples of behavior that constitutes bad faith registration and use. One such example involves using the domain name to attract Internet users by creating a likelihood of confusion with the Complainant’s mark. The Court’s findings indicate that Respondent did not intentionally attempt to create confusion. The fact that this one example of bad faith registration and use does not apply to Respondent’s behavior, however, does not lead to the conclusion that Respondent did not register and use domain names 2 through 12 in bad faith. Respondent registered these domain names after becoming aware of Complainant’s mark. Many of them were registered after Respondent received Complainant’s cease-and-desist letter, and some were even registered after the Court found that Respondent’s use of the <casualday.com> domain name infringed Complainant’s mark.
Registration of a domain name after becoming aware of another’s trademark rights does not necessarily, by itself, constitute bad faith registration and use of that domain name. In this case, however, Respondent was aware that a direct competitor, another promotional products distributor, in exactly the product line had trademark rights to the term CASUAL DAY and should have been aware that these rights were superior to Respondent’s rights. In fact, Respondent conceded in the litigation that there was trademark infringement. Yet Respondent continued to register domain names 2-12 that incorporate Complainant’s trademark, and, as noted, Respondent does not deny that the domain names are confusingly similar to Complainants trademark. Further, Respondent offers no justification for its multiple registrations, and instead offers only a First Amendment argument as to its use of <casualday.com>. Under the circumstances, the Panel finds that Complainant has provided sufficient information to support an inference that Respondent’s registrations of domain names 2-12 was primarily made for the purpose of disrupting a competitor’s (Complainant’s) business.
In this case, Respondent does not appear to have ever used domains names 2-12 to resolve to a web page. Although the Policy requires bad faith registration and use, several of the examples of bad faith registration and use set forth in the Policy only directly include bad faith registration, not use. Registration of the domain name primarily for the purpose of disrupting a competitor is listed as an example of bad faith registration and use. See 4(b)(iii). Further, registering the domain name in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name is evidence of bad faith use provided that the registrant has engaged in a pattern of such behavior. See 4(b)(ii). These examples have led to the interpretation that actual use need not always be required to satisfy the elements of the Policy.
Respondent registered multiple domain names that are almost identical to a trademark of which it was aware while engaging in a business that directly competed with Complainant’s business. Respondent specifically argues that an appropriate means by which the domain names can be transferred would be through Complainant’s "purchase of the domain names." Further, Respondent asserts that "The sale and purchase of domain names for fair market value is not a novel concept or, nor an illegal act." Response at 9. However, evidence that a domain name was registered or acquired primarily for the purpose of selling it at a price greater than out of pocket costs is first example of evidence of bad faith registration and use listed in the Policy (¶ 4B(i)). While there is conflicting evidence as to whether the suggestion to sell the domain names first came from the Federal Court or counsel for Respondent, it is clear that Respondent has made clear its willingness to sell the names for market value. Respondent merely denies that it is holding the names for ransom, without offering any other purpose for its of the holding the 11 domain names.
This Panel therefore finds that Respondent has registered and used domain names 2-12 in bad faith.
This Panel finds that Complainant has not shown that the domain name <casualday.com> was registered in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, this Panel requires that the registration of the domain name <casualday.com> remain with Respondent.
This Panel finds that Complainant has shown that domain names 2-12 have been registered and used in bad faith, that the Respondent does not have a legitimate interest in the domain names, and that domain names are identical or confusingly similar trademark in which Complainant has rights. Accordingly, pursuant to Paragraph 4(i) of the Policy, this Panel requires that the registration of domain names 2-12 be transferred to Complainant.
Roderick M. Thompson
Dated: June 9, 2002