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WIPO Arbitration and Mediation Center
Wolter Verwaltungs and Kanner Corporation v. Susan Yocom
Case No. D2004-0021
1. The Parties
The Complainant is Wolter Verwaltungs of Hassfurt, Main, Germany and Kanner Corporation of Newbury Park, California, United States of America, represented by Seyfarth Shaw, United States of America.
The Respondent is Susan Yocom of Fulton, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <finncomfort.com> is registered with TierraNet d/b/a DomainDiscover.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 13, 2004. On January 13, 2004, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the domain name at issue. On January 16, 2004, TierraNet d/b/a DomainDiscover transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 19, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2004.
The Center appointed Angela Fox as the sole panelist in this matter on February 16, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Wolter Verwaltungs ("Complainant Wolter") is a German shoe manufacturer, whose products include a range of comfort footwear sold under the name FINN COMFORT.
A stylised version of FINN COMFORT is registered as a trademark for shoes in the name of Complainant Wolter in the United States, under number 2409676. It was filed on April 5, 1995. The Complainant exhibited to the Complaint a print-out of the registration details taken from the United States Patent and Trademark Office website.
Complainant Wolter claims ownership of a further 17 registrations of the FINN COMFORT trademark in territories set out in a list attached to the Complaint. These include Australia, Benelux, Denmark, Germany, France, Italy, Japan, Canada, Korea, Norway, Sweden, Spain, South Africa and Taiwan. All bear dates of 1999 or earlier.
Kanner Corporation ("Complainant Kanner") is the exclusive licensee of the FINN COMFORT trademark in the United States. Together, the Complainants assert continuous use of the FINN COMFORT trademark in the United States for shoes since at least as early as 1986.
The disputed domain name <finncomfort.com> was registered on March 30, 2000, in the name of Susan Yocom. The Complainants identify Ms Yocom as the sister of Robert Yocom, who had been purchasing the Complainants' FINN COMFORT shoes for re-sale in his California retail store, A Step Ahead, since 1993.
The commercial relationship between the Complainants and Robert Yocom had begun to break down by mid-2003. Although it is not clear precisely when the Complainants became aware of the Respondent's domain name registration, it seems they were aware at the latest by June 4, 2003. The Complainants assert that on that date, there was a telephone conversation between Complainant Kanner's Operations/IT Manager, David Parisien, and Robert Yocom, in which Mr. Yocom allegedly admitted that he had registered the disputed domain name in March 2000 in his sister's name, in the hope of receiving payment for it from the Complainants. According to the Complainants, Mr. Yocom indicated that he would transfer the domain name to Complainant Kanner if the Complainants promised him the revenue from all sales of shoes made through a website to be linked to the domain name. The Complainants assert that the disputed domain name has never in fact resolved to any website.
Following formal demand letters to Mr. Yocom and the Respondent in September 2003, the Complainants brought these proceedings on January 12, 2004.
5. Parties’ Contentions
The Complainants contend that the disputed domain name is identical to the FINN COMFORT trademark in which Complainant Wolter has rights. The only element that is different is the non-distinctive top-level domain name suffix, ".com."
The Complainants further contend that the Respondent has no rights or legitimate interests in the domain name. Although the Respondent's brother had been an authorised re-seller of the Complainants' FINN COMFORT shoes, the Respondent herself had no such connection. The disputed domain name had never resolved to a website and had never been used in connection with a bona fide offering of goods. The Complainants had not authorised the Respondent’s registration and the Respondent is not commonly known by a name corresponding to the domain name.
Finally, the Complainants assert that the domain name was registered and has been used in bad faith. They point in particular to Robert Yocom's offer to transfer the domain name to the Complainants in exchange for revenues arising from Internet sales of footwear on a website to be linked to the domain name. The Complainants claim that the domain name was registered primarily for the purpose of sale to the Complainants for valuable consideration exceeding the Respondent’s documented out-of-pocket expenses directly associated with the domain name, and therefore manifested registration and use in bad faith under Paragraph 4 (b) (i) of the Policy.
The Complainants ask that the disputed domain name be transferred to Complainant Kanner.
The Respondent did not reply to the Complaint and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with Paragraphs 14 (a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.
6. Discussion and Findings
Under Paragraph 4 (a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the Panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the domain name;
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Procedural Issue
According to the Complaint, the Respondent’s brother, Robert Yocom, asserted to Complainant Kanner that he had registered the domain name in the Respondent’s name and outlined the circumstances in which he would be prepared to transfer it to Complainant Kanner. In the Panel’s view, Mr. Yocom’s statements, together with his known relationship with the Complainants, would have justified his being named as a further respondent in this administrative proceeding. However, the fact that Mr. Yocom was not added as a respondent does not affect the outcome of this case.
The reasons for this are as follows. First, there is no evidence that Mr. Yocom claimed to have registered the domain name solely for his benefit, only to have registered it in the Respondent’s name. Such a statement is not incompatible with the Respondent having some interest in the domain name. Second, Mr. Yocom’s offer to transfer the domain name to Complainant Kanner would ultimately have required the consent of the Respondent to be realised. That offer went to the heart of the Respondent’s registered rights in the domain name, and the Respondent’s failure to deny that Mr. Yocom had actual authority to speak on her behalf allows the Panel to infer, under Paragraph 14 (b) of the Rules, that she accepts Mr. Yocom’s acts and statements in respect of the domain name as her own.
In the Panel’s view, therefore, Robert Yocom’s statements and conduct concerning the disputed domain name are compatible with the conduct of an agent acting on the Respondent’s behalf, and as such may reasonably be imputed to the Respondent.
B. Identical or Confusingly Similar
The Complainants have shown to the Panel’s satisfaction that Complainant Wolter is the proprietor of a United States federal trademark registration for FINN COMFORT.
The disputed domain name contains the whole of that trademark and the top-level domain name suffix ".com." It is well-established that top-level domain name suffixes are non-distinctive and do not affect the assessment of whether the domain name is identical or confusingly similar to a trademark in which a complainant has rights.
The Panel therefore finds that the disputed domain name is identical to a trademark in which one of the Complainants has rights.
C. Rights or Legitimate Interests
The Complainants have made a prima facie showing that the Respondent lacks rights or legitimate interests in the domain name.
The Complainants did not authorise the Respondent to register the domain name, or to instruct another to register it on her behalf. The domain name does not correspond to any name by which the Respondent appears to be commonly known. Neither the Respondent nor anyone acting under her direction appears to have used the disputed domain name in connection with a bona fide offering of goods at any time. Indeed, despite the passage of nearly four years between registration of the domain name and the filing of this administrative proceeding, there appears to have been no use of the domain name at all before notice to the Respondent of the dispute. The Respondent’s only known connection to the Complainants, namely her brother’s purchase of FINN COMFORT footwear for sale in his retail shop, does not amount to a right or legitimate interest in the domain name under Paragraph 4 (c) of the Policy.
The Complainants have done all that was reasonably possible to show that, on the balance of probabilities, the Respondent has no rights or legitimate interests in the domain name. The Panel so finds.
D. Registered and Used in Bad Faith
Under Paragraph 4 (b) (i) of the Policy, it shall be evidence of both registration and use of a domain name in bad faith if there are circumstances indicating that the domain name was registered or acquired primarily for the purpose of sale, rental, or other transferral to the trademark owner or a competitor of his, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.
The Complainant has filed evidence that Robert Yocom offered to transfer the disputed domain name to Complainant Kanner if the Complainants agreed that a website selling FINN COMFORT footwear would be linked to the domain name and that Mr. Yocom would receive revenue from sales through that site. As discussed above, the Panel is satisfied that Mr. Yocom’s acts and statements were compatible with those of an agent acting on the Respondent’s behalf, and that the Respondent’s failure to deny Mr. Yocom’s authority permits an inference in this case that he did indeed have it.
The Panel accepts that Mr. Yocom’s representations amount to a demand on behalf of the Respondent for valuable consideration in exchange for transfer of the domain name to the Complainants. Although the value of the consideration sought was unstated, the demanded revenues clearly had the potential vastly to outstrip the Respondent’s out-of-pocket expenses directly related to an unused domain name.
The Panel therefore finds that the disputed domain name was both registered and used in bad faith under Paragraph 4 (b) (i) of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <finncomfort.com> be transferred to Complainant Kanner.
Date: February 29, 2004