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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Global Esprit Inc. v. Living 4

Case No. D2004-0318

 

1. The Parties

The Complainant is Global Esprit Inc. of Taiwan, Province of China, represented by fJ Cleveland, of London, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Living 4 c/o Nicholas Boyden, Victoria, Australia.

 

2. The Domain Names and Registrar

The disputed domain names <lane-4-speedsuits.com> and <lane-4-wetsuits.com> are registered with eNom (the “Disputed Domain Names”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2004. On April 30, 2004, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain names at issue. On April 30, 2004, eNom, Inc. transmitted by email to the Center a partial verification response confirming that the language of the proceedings is English and that the domain names would remain under Registrar Lock throughout the proceeding. In addition to eNom, Inc.’s partial response, the Center made WHOIS printouts, which showed that the disputed Domain Names were registered with eNom Inc., and that Respondent, Living 4, was the current registrant of the disputed Domain Names. 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 May 17, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2004.

The Center appointed Richard Tan as the sole panelist in this matter on June 30, 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.

On July 7, 2004, the Complainant requested that the proceedings be suspended for a period of one month for the parties to carry out settlement negotiations. On August 2, 2004, the Panel issued Procedural Order No 1 ordering that the proceedings be suspended until August 9, 2004, and that in the event that the parties did not reach a settlement by that date, the Panel would notify its decision to the parties.

 

4. Factual Background

The Complainant has registered the trade mark LANE 4 in many countries throughout the world in Classes 9 and 25. The Class 9 specifications are typically in respect of swimming goggles and protective eyewear for sports and industrial use, whereas the Class 25 specifications are typically clothing, headgear and footwear, swimwear, swimming costumes, armbands, swimming gloves, swimming socks, pool shoes and sandals. In a number of countries, the Complainant has also secured or applied for registration of the mark in Class 28 in respect of, inter alia, swim masks, diving masks, snorkels, kick boards, fins and the like.

The Complainant's trade mark registrations and/or applications in respect of LANE 4 extend to various countries throughout the world, including Argentina, Australia, Brazil, Canada, Chile, Colombia, Croatia, CTM, Czech Republic, Egypt, Hungary, Iceland, India, Indonesia, Israel, Japan, Malaysia, Mexico, New Zealand, Norway, Panama, Paraguay, Philippines, Poland, Republic of Korea, Romania, Russian Federation, Saudi Arabia, Singapore, Slovak Republic, Slovenia, South Africa, Switzerland, Thailand, Turkey, United Kingdom, Ukraine, United Arab Emirates, United States of America, Uruguay and Vietnam.

The earliest of these registrations was in August 1996, being a registration for the mark in Australia (No. 715531) in Class 25 for “Clothing, headgear, footwear.” In 1999, the Complainant filed a second trade mark application in Australia (No. 812822) in Class 25 in respect of “Articles of clothing, headgear and footwear; T-shirts, sweatshirts, windbreakers and jackets; shorts; bathrobes and dressing gowns; caps, swimming caps, swimwear; swimming costumes, armbands, swimming gloves, swimming socks, pool shoes, sandals,” and also in Class 9 (No. 784280), in respect of “Sports goggles; swimming goggles; protective eyewear for sports and industrial use; protective eyewear; masks for diving and for swimming; protective ear plugs; nose clips; buoyancy aids for swimming.”

The Respondent appears to be in the business of selling wetsuits and speedsuits under the brand name “Living 4.” The Respondent operates a website at “www.living4.com.au” where it provides product and other information about its wetsuits.

The Respondent registered the domain names <lane-4-speedsuits.com> and <lane-4-wetsuits.com> on June 25, 2001. At the time of the filing of the Complaint, both of these domain names resolved to a website which appears to be identical to the Respondent’s website at “www.living4.com.au.”

On May 17, 2004, following the transmission of the Complaint to the Respondent by WIPO, one Nicholas Boyden (who is also identified on the WHOIS reports as the administrative and technical contact of both Disputed Domain Names) responded via e-mail stating that he had advised the Complainant’s solicitors that he had decided to relinquish the Disputed Domain Names.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Disputed Domain Names consist of the identical elements “lane 4,” together with the words “speedsuits” or “wetsuits,” respectively, which are descriptive and non-distinctive, and the top level domain name ‘.com.’ The Complainant also contends that the goods and services of interest to the parties are identical. In view of the similar, if not identical nature of the trade marks and the domain names and the identical nature of the goods and services, the Complainant asserts that the general public would almost certainly confuse the marks or expect the goods to emanate from a common source.

The Complainant also contends that the Respondent has no rights or legitimate interests in respect of the domain names, on the basis that the Respondent’s use of the domain names was simply to mislead the public that the goods and services available on the Respondent’s website emanated from the Complainant. In particular, the Complainant has on this point sought to rely on the use and registration of the Disputed Domain Names having commenced after the Complainant’s own use and registration of the trade mark LANE 4, not only worldwide, but specifically in Australia (the Respondent’s home country). The Complainant further asserts that there is no evidence to suggest that the Respondent has come to be commonly known by reference to “LANE 4,” nor has the Respondent made any attempt to register the same as a trade mark and/or as a company name.

The Complainant further contended that the Disputed Domain Names were registered and have been used in bad faith on the ground that they were registered in order to create confusion amongst the general public as to the source of the goods and services.

In particular, the Complainant asserts that given the identical nature of the trade marks and domain names and the goods, potential customers would visit the website referenced by the Disputed Domain Names and assume that the goods and services sold on the sites and, indeed, the sites themselves, were provided by the Complainant. In addition, it was submitted by the Complainant that the Disputed Domain Names were registered and used in order to divert business from the Complainant and disrupt the Complainant’s business.

B. Respondent

The Respondent has not filed any Response to the Complainant’s contentions.

 

6. Discussion and Findings

The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the Disputed Domain Names

“(i) that the Registrant’s domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and

(ii) that the Registrant has no rights or legitimate interests in respect of the domain name; and

(iii) that the Registrant’s domain name has been registered and is being used in bad faith”.

The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, Rule 5(e) provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint.” Rule 14(b) further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences” from the Respondent’s failure to comply with the Rules “as it considers appropriate.”

As the Respondent has not submitted a Response, and there having been no exceptional circumstances brought to the attention of the Panel, in accordance with paragraph 5(e) of the Rules, this Panel is entitled to decide the dispute based on the Complaint and to accept as true the factual averments of the Complaint for the purposes of these proceedings: Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

The Respondent’s default, however, does not lead to an automatic ruling in favour of the Complainant. The burden remains on the Complainant to establish, on a balance of probabilities, that it is entitled to a transfer of the domain name: World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Digital Vision, Ltd v. Advanced Chemill Systems, WIPO Case No. D2001-0827.

A. Identical or Confusingly Similar

The Complainant has furnished prima facie evidence that it is the owner of a number of trade marks and pending trade mark applications in respect of LANE 4 as set out above, and accordingly has rights in the same.

This Panel finds that each of the Disputed Domain Names is confusingly similar to the Complainant’s LANE 4 trade marks. Each Disputed Domain Name incorporates the Complainant’s mark in full. The addition of the words “speedsuits” and “wetsuits,” respectively, being descriptive of the products that the Complainant sells, does not reduce the confusing similarity of each Disputed Domain Name with the Complainant’s mark: see for example, Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046.

The Panel accordingly finds that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

The Complainant is also required under paragraph 4(a)(ii) of the Policy to prove that the Respondent has no rights or legitimate interests in the domain names. The onus is initially on the Complainant to establish a prima facie case, and once this has been done, the onus shifts to the Respondent to prove the contrary. See Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini, WIPO Case No. D2001-0700.

The Complainant asserts in this regard that the Respondent has no rights or legitimate interests in the Disputed Domain Names as the use and registration of the Disputed Domain Names commenced after the Complainant’s own use and registration of the trade mark LANE 4, not only worldwide, but also in the Respondent’s home country, Australia.

The Panel notes that the Complainant applied for registration of its LANE 4 trade mark in Class 25 in Australia in 1996, and filed a further application for the same mark in the same class in 1999, to cover swimwear and related products, whereas the Disputed Domain Names were only registered in 2001.

Even in the absence of a Response, however, this Panel remains obliged to consider whether any of the (non-exhaustive) circumstances provided in paragraph 4(c) of the Policy are present to support a finding of the Respondent having rights or legitimate interests in respect of the Disputed Domain Names, namely

“(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

If any of the above circumstances is established, the Registrant can be said to have rights to or legitimate interests in the domain name for the purposes of Paragraph 4(a)(ii) (see Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827), in which event, the Complaint must be denied.

The website referenced by the Disputed Domain Names relate entirely to the Respondent’s own “Living 4” branded wetsuits and speedsuits, and do not otherwise contain any reference to LANE 4.

In the absence of a Response, the Panel finds that whilst the Respondent had commenced use of the Disputed Domain Names, it may be inferred that the purpose of its having registered these domain names was to divert users to the Respondent’s website. Such use of the domain names would not constitute use in connection with a “bona fide offering of goods or services” within the meaning of paragraph 4(c)(i) of the Policy: AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000-0937.

Since the Respondent has not filed a Response, the Panel would also infer that the Respondent has no trade marks or service marks identical to LANE 4 (See Nat’l Academy of Recording Arts & Sciences Inc. v. Lsites, National Arbitration Forum, Case No. FA00103059. There is also no evidence to suggest that the Respondent has been commonly known by the Disputed Domain Names, even if it has not acquired any trade mark or service mark rights. Accordingly, paragraph 4(c)(ii) of the Policy does not apply.

The Disputed Domain Names have also been used in a commercial context. Paragraph 4(c)(iii) of the Policy is thus not applicable.

Based on the information available to the Panel in the Complaint, there is nothing to suggest that the Respondent has any rights or legitimate interests in the Disputed Domain Names. In the circumstances, the Panel finds that the Complainant has sufficiently discharged the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names, and that accordingly, paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, further demonstrate that the Disputed Domain Names have been registered and used in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”, namely

“(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.

The Complainant has submitted that because of the identical nature of the trade marks and domain names and the goods, potential customers would visit the website operated under the Disputed Domain Names and assume that the goods and services sold on the sites and indeed the sites themselves were provided by the Complainant. In addition, it was submitted by the Complainant that the Disputed Domain Names were registered and used in order to divert business from the Complainant and disrupt the Complainant’s business.

The Respondent has not submitted any evidence to rebut the Complainant’s claims. Both the Respondent and the Complainant are in the swimwear business, and are clearly competitors. The Respondent also does not appear to use or otherwise have any connection with “LANE 4” in the course of its business.

In the circumstances, an inference may be drawn that the Respondent has registered and used the Disputed Domain Names in bad faith, on account of the Respondent having registered the domain names primarily for the purpose of disrupting the business of a competitor as contemplated in paragraph 4(b)(iii) of the Policy, and/or that the Respondent had registered and used the Disputed Domain Names to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website as set forth in paragraph 4(b)(iv) of the Policy: see also Tuxedos By Rose v. Hector Nunez, National Arbitration Forum, Case No. FA0095248.

The Panel accordingly finds that the Disputed Domain Names have been registered and are being used in bad faith by the Respondent within the meaning of paragraph 4(a)(iii) of the Policy

 

7. Decision

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 names <lane-4-speedsuits.com> and <lane-4-wetsuits.com> be transferred to the Complainant

 


 

Richard Tan
Sole Panelist

Dated: August 24, 2004

 

Источник информации: https://internet-law.ru/intlaw/udrp/2004/d2004-0318.html

 

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