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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allen-Edmonds Shoe Corporation v. Takin’ Care of Business
Case No. D2002-0799
1. The Parties
The Complainant in this administrative proceeding is Allen-Edmonds Shoe Corporation, incorporated in the State of Wisconsin and having its principal place of business in Port Washington, WI 53074-0998, United States of America.
The Respondent in this administrative proceeding is Takin' Care of Business, with an address in Clearwater, Florida 33756, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <allenedmondsshoes.com> which is registered with Tucows, Inc., 96 Mowat Avenue, Toronto, ON, M6K 3M1, 14455, Canada.
3. Procedural History
A Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on August 26, 2002.
On August 27, 2002, the Center determined that the Complaint contained formal deficiencies under the requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy (the "Supplemental Rules") and notified Complainant of the deficiencies. The Center received a revised complaint by email on August 28, 2002, and a hardcopy on August 30, 2002. On August 30, 2002, the Center determined that the Complaint met the formal requirements of the Policy and the Rules.
A copy of this Complaint, together with the cover sheet as prescribed by the Supplemental Rules, was transmitted to the Respondent on September 2, 2002. At that time, the Center notified the Respondent of the commencement of this administrative proceeding and set a deadline for the Response. The Response was timely received by the Center by email on September 20, 2002, and hardcopy on September 23, 2002.
4. Factual Background
Complainant owns two incontestable U. S. Trademark Registrations for "ALLENEDMONDS" for use in connection with men's shoes, shoe care products, leather articles for personal use, and footwear.
According to the whois database, Respondent is the registrant for <allenedmondsshoes.com> which was registered on October 4, 2000.
Complainant is a well-known shoemaker, and has been producing shoes since 1922. Complainant represents that it has operated its business under the name ALLEN-EDMONDS for over sixty-two years and Complainant's first use in interstate commerce of the Allen Edmonds trademark was 1936. Complainant operates an online retail store at <allenedmonds.com> where its customers may collect information and purchase Complainant's products.
Complainant sent cease and desist letters dated January 16, 2001, and February 20, 2001, to Respondent. About June 12, 2001, Respondent sent Complainant an email, offering to "park" the Domain Name if Respondent was reinstated as an authorized Allen Edmonds dealer. Complainant responded by restating its cease and desist demand.
5. Parties’ Contentions
Complainant asserts that the <allenedmonsshoes.com> domain name is clearly confusing with its trademarks and gives the false impression to consumers that it is sponsored by Complainant. Complainant alleges that there has been actual confusion, with a dissatisfied customer of Respondent contacting Complainant under the mistaken belief that the <allenedmondsshoes.com> was affiliated with Complainant.
Complainant argues that use of its trademark ALLEN EDMONDS has not been authorized and that Respondent's use does not qualify as a fair use.
Complainant concedes that Respondent "is operating as a reseller/retailer" of apparently genuine Allen Edmonds shoes, but denies that Respondent is an authorized Allen Edmonds dealer. Further, Complainant argues that, in any event, none of its over 3000 dealers may sell shoes on-line unless they comply with its dealer website guidelines, which, among other things expressly precludes use of the ALLEN EDMONDS trademark as part of any domain name.
Respondent concedes that the Complainant owns the name and trademark ALLEN EDMONDS, but relies on "nominative fair use" which allows an entity or person to truthfully and legally use another's trademark under limited circumstances. Respondent contends the use of "allenedmondsshoes" in the domain name is such a fair use.
Respondent concedes that it is not an authorized dealer of Allen Edmonds. It argues instead that it is a legitimate agent of an authorized dealer, Hurricane Pass Outfitters. Respondent says that this relationship is documented by two affidavits from Hurricane Pass Outfitters: one from its President stating that Hurricane Pass is a customer of Respondent who it authorizes "to procure domain names;" the other from its bookkeeper attesting to over $30,000 in purchases from Allen Edmonds to fill orders placed on the <allenedmondsshoes.com> site.
Respondent contends that its use of <allenedmondsshoes.com> is therefore authorized. Respondent concedes that it used promotional materials on the website obtained from Complainant, and argues this is acceptable because they are being used as intended, and reiterates the claimed association with Hurricane Pass Outfitters, the allegedly authorized dealer.
Finally, Respondent asserts that the Complainant has engaged in "reverse domain name hijacking."
6. Discussion and Findings
A. 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 or service mark 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.
B. Application of Paragraph 4(a) to the Facts
I. Identical or Confusingly Similar to Trademark or Service Mark
The domain name in dispute merely adds the product (shoes) to Complainant's trademark (ALLEN EDMONDS). Further, both Complainant and Respondent sell Allen Edmonds shoes on line at their respective websites: <allenedmonds.com> and <allenedmondsshoes.com>. The Panel finds that the requisite confusing similarity exists. Respondent has taken steps in at least a superficial attempt to avoid confusion.
Although the timing of the effort is not clear, the site <allenedmondsshoes.com> now includes an elaborate disclaimer entitled "Consumer Information," including "All the Legal 'Mumbo Jumbo' Being Covered As To Avoid Confusion." Respondent, however, does not deny that <allenedmondsshoes.com> could (and according to Complainant did) create actual confusion with Complainant. As Complainant points out, the ALLEN EDMONDS trademark and shoes are displayed throughout the website in a manner clearly in excess of the least usage necessary to identify the trademarked product being sold (i.e., Allen Edmonds shoes). The attempted disclaimer is not effective to avoid the confusing similarity.
II. 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, which has the burden of proof, avers that Respondent is not an authorized dealer, and even if he were, authorized dealers are never authorized to use ALLEN EDMONDS as part of a domain name. Respondent does not contest these points. Instead it makes two arguments.
A. Respondent’s Use Is Not "Nominative Fair Use."
Respondent claims that its use of the domain name is legitimate because it is protected by the "nominative fair use" doctrine. Pursuant to this doctrine, use of a trademark to identify the trademarked goods in a commercial context does not violate the trademark owner's rights if it meets the following three requirements: (a) the product cannot be readily identifiable without using the mark; (b) the defendant uses only so much of the mark as reasonably necessary to identify the product; and (c) the defendant does nothing that would, in conjunction with its use of the mark, suggest sponsorship or endorsement by the trademark holder. New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 308 (9th Cir. 1992); Toho Co. v. William Morrow & Co., 33 F.Supp.2d 1206, 1211 (D.C. Cal. 1998).
Respondent’s use is not protected by the nominative fair use doctrine because Respondent uses more of Complainant’s mark than reasonably necessary to identify Complainant’s product. Nominative fair use allows third parties to make use of proprietary trademarks to identify the products in a commercial setting. Anything beyond such use is not necessary and goes beyond the limited use allowed by the fair use defense. See Motorola Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079 (April 20, 2000) ("[T]he right to resell products does not create the right to use the mark more extensively than required to advertise and sell the product"). Respondent’s use of Complainant’s trademark as a domain name is not reasonably necessary to allow resale of Complainant’s products by Respondent. To the contrary, Respondent could use any domain name at all and still sell Complainant’s products on its website.
B. Authorization to Sell Complainant’s Products Does Not Make Respondent’s Use of Complainant’s Mark Legitimate.
Respondent also claims that its use of Complainant’s mark is legitimate because Respondent is "an agent of Hurricane Pass Outfitters . . . [which is] an authorized dealer of Allen Edmonds shoes." While the evidence submitted is insufficient to determine whether or not these assertions are true, even where a reseller is an authorized reseller, without a specific agreement between the parties, the reseller does not have the right to use the licensor’s trademark as a domain name. Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774 (February 26, 2001); 2 T.J. McCarthy, McCarthy on Trademarks and Unfair Competition, § 18:52 (4th Ed. 2000) ("licensee’s use [of a mark] inures to the benefit of the licensor-owner of the mark and the licensee acquires no ownership rights in the mark itself."). Thus, even if Respondent is acting on behalf of an "authorized" dealer (indeed, even if Respondent were itself an authorized dealer), its use of Complainant’s mark would not be legitimate absent a specific agreement between Complainant and Respondent to the contrary. There is no evidence of such an agreement here. The Panel finds that Complainant has shown that Respondent has no legitimate interest in the domain name.
III. Registration and Use in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant must show that the domain name both has been registered and is being used in bad faith.
Respondent does not deny awareness of Complainant's trademark rights at the time of the registration and ever since. Indeed, although the timing of the effort is not clear, the site <allenedmondsshoes.com> now includes an elaborate disclaimer entitled "Consumer Information," including "All the Legal 'Mumbo Jumbo' Being Covered As To Avoid Confusion." The evidence supports a finding that Respondent registered and has been using <allenedmondsshoes.com> with knowledge that it could (and according to Complaint did) create confusion. Bad faith registration and use is also established.
The Panel finds that Complainant has met the requirements of paragraph 4(a) of the Policy. Accordingly, pursuant to Paragraph 4(i) of the Policy, this Panel directs the Registrar to transfer the disputed domain name to the Complainant.
Roderick M. Thompson
Dated: October 10, 2002