4.A.2 The Complainant’s BENDON trademarks are used primarily for underwear, specifically brassieres and underpants. The Complainant’s predecessor in business coined the BENDON name in 1947, and the present Complainant has been trading under that name since June 1989. The Complainant states that the BENDON mark is a coined, fanciful word in which it has developed a significant reputation by virtue of the continuous and extensive use of that mark in numerous countries.

4.A.3 The Complainant is also the registered proprietor of the following domain names, all of which incorporate the BENDON mark:

4.A.4 The Complainant, previously known as Bendon Hickory Limited, registered the domain name in issue, <bendon.com> on August 7, 1997. However, according to the Complaint, that domain name was accidentally released in December 2000. It was then, registered by Hilton Enterprise Co. Ltd., which, in turn, subsequently released the domain name in December 2002. It was then registered by Compana LLC,. the Second Respondent, on January 14, 2003. As stated above, the Second Respondent transferred the domain name to the First Respondent on October 1, 2004.

4.A.5 In about January 2003, – when the Second Respondent registered the domain name – the present Complainant [Bendon Limited] was in the process of acquiring the BENDON business and was unaware that the original 1997, domain name registration had inadvertently been released due to the failure by the original registrant to operate adequate administrative procedures and systems.

4.A.6 On June 8, 2004, Sedo GmbH (as an undisclosed agent of the Complainant) emailed the Second Respondent with an offer to purchase the domain name in issue for US$4,500.00. The Second Respondent replied to the effect that it would not consider that offer without first receiving a representation from the would-be purchaser” “… that there are no trademark claims regarding this name … .”. Further attempts by Sedo to contact the Second Respondent in this respect were, apparently, unsuccessful. Eventually, Sedo managed to make a final offer to the Second Respondent but reported on June 26, 2004, to the Complainant that

“He (the Second Respondent) feels that you might have trademark claims on the name and therefore he will not negotiate.”

4.A.7. Then on July 8, 2004, the Complainant’s New Zealand lawyers addressed a cease and desist email to the Second Respondent. No reply was received and the Complainant’s lawyers sent a follow-up email on July 26, 2004. Mr. Jeff Baron of Compana LLC replied the following day, July 27, 2004. In that email the Second Respondent denied infringing the Complainant’s registered trademarks and added:

“Although Compana categorically denies infringing on any trademark, we would like to make an offer in show of our good faith. We will offer to consent to an agreement stating that our company will not provide goods or services at BENDON.COM that are similar to those protected by your client’s trademark. If this would resolve your concerns, please let me know, and I will ask our legal counsel draft a proposed agreement.”

There the correspondence apparently ended and the original Complaint was (as stated) received by the Center on October 18, 2004.

4.B The First Respondent

In the absence of a Response, the only information given about the First Respondent, NetSphere Inc is briefly stated in the US Court Complaint. Namely, its business deals with Internet Search engines and advertising: paragraph 3 above.

4.C The Second Respondent

Again, in the absence of a response, all that is known about the Second Respondent, Compana LLC, is that it is the Registrar and former proprietor of the domain name in issue.

Additional information relating to the Respondents is referred to below under Section 5A of this Decision.

5. Parties’ Contentions

5.A Complainant

5.A.1 The Complainant’s case is that the domain name in issue incorporates entirely its trademark, its domain names and its business name. Accordingly, the domain name in issue is identical to the Complainant’s BENDON trademark and the requirement of paragraph 4(a)(i) of the Policy is met.

5.A.2 The Respondents have, the Complainant says, no rights or legitimate interests in the domain name in issue and that, consequently, the requirements of paragraph 4(a)(ii) of the Policy are also met. In that respect the Complainant puts its case as follows:

5.A.3 First, neither Respondent has ever been known as, or traded under the name or mark BENDON. Second, neither Respondent is the registered proprietor of any BENDON trademark. Third, neither Respondent has used the domain name in issue in association with any goods or services. Fourth, BENDON is not a generic term with an independent meaning. It is a coined, fanciful word: paragraph 4.A.2 above. It is not a surname listed in New Zealand at all, and the Bendon surname has only 22 listings in Australia out of a population of over 20 million (less than 0.00011% of that population) and only 651 listings in the United States out of a population of over 294 million (less than 0.00023% of that population).

5.A.4 The Complainant refers to five (5) earlier Complaints brought under the Policy against the Second Respondent, Compana LLC. In each of those, the Second Respondent asserted that the Complainant’s trademark was generic. The trademarks asserted in those cases were NEUTRALIZER (NAF Case No. FA0101000096562): AGILE (WIPO Case No. D2001-0545): LFO (WIPO Case No. D2002-0105): NEN (NAF Case No. FA0209000124752); and SOIGNON (WIPO Case No. D2004-0270). In the first three Complaints, the request to transfer the disputed domain name was denied. In the third and fourth, the Panel upheld the Complaints and ordered the transfer of the disputed domain names.

5.A.5 The Complainant also points to the fact that, apparently, no use was made of the domain name in issue by the Second Respondent for some 20 months; in other words, from the date of registration in January 2003, until transfer to the First Respondent in October 2004. That being the case, the Complainant says that the Second Respondent had no rights or legitimate interests in the domain name in issue to transfer to the First Respondent.

5.A.6 The Complainant asserts that the domain name was registered and is being used in bad faith by the Respondents as required by paragraph 4(a)(iii) of the Policy. Its evidence in this respect is presented as follows.

5.A.7 First, it is to be inferred from the dialogue with the Second Respondent earlier in 2004 (described in Section 4.A.6 and 7 above) that Compana LLC originally registered the domain name in January 2003, primarily for the purpose of selling it to the Complainant for valuable consideration in excess of the out-of-pocket costs directly related to that domain name. For example, the Second Respondent wanted to know if the Complainant asserted trademark rights in BENDON since, if that was the case, it would be able to leverage a higher price in negotiations than the sums offered by the Complainant’s agent, Sedo GmbH.

5.A.8 Second, the fact that, as contended above, the Second Respondent had no rights or legitimate interests in the domain name itself evidences bad faith registration. This was compounded by transfer of that domain name in October 2004, after the Second Respondent had been put on notice of the Complainant’s trademark rights by its lawyers’ cease and desist letter dated July 8, 2004, (referred to in Section 4.A.7 above). The latter also constitutes use in bad faith.

5.A.9 Third, registration of the domain name prevents the Complainant as the owner of the BENDON trademark from reflecting that mark in a corresponding domain name. Presumably, in this respect, the Complainant relies upon the Decisions in the NEN and SOIGNON Complaints referred to in Section 5.A.4 above.

5.A.10 Fourth, the Complainant relies on passive holding / warehousing of the domain name, which has never been used in relation to an active website. A simple search for the word BENDON on a variety of search engines would readily have alerted the Respondents to the existence of the Complainant and thereby its trademark rights.

5.A.11 Fifth, the Complainant refers to Lyons Partnership, L.P. and HIT Entertainment PLC v. NetSphere, Inc., WIPO Case No. D2004-0118. The fact pattern in that case was not dissimilar to the background in this case. The Complainant failed to renew the domain name in issue, <barneyonline.com>, which allowed Compana LLC to become the new registrant of that name. In relevant part, the Decision in WIPO Case No. 2004-0118 reads:

“Compana LLC is believed by the Complainant to be set up to scan for expiring domain names which have a good search engine position and have many daily hits. If the domain name becomes available Compana LLC will register it and sell it to the highest bidder. In about November 2003, the Respondent acquired the registration from Compana LLC.”

5.B Respondents

5.B.1 As noted, no Responses have been received from either Respondent despite the Panel’s Procedural Order No. 1 extending time for Response until December 21, 2004. It is to be noted that both Respondents were notified of the Complaint on October 29, 2004: Section 3 above.

5.B.2 However, effectively the Respondents’ case is set out in the First Respondent’s Complaint in the US Court Complaint and that case is summarised in Section 3 above. The First Respondent’s case pleaded in that Complaint is considered in the following section of this Decision.

6. Discussion and Findings

The US Court Complaint

6.1 It is, of course, a matter for the Superior Court of the State of California to evaluate the merit of the First Respondent’s case in the US Court Complaint. The Panel would only observe in that context that (as stated in Section 3 above) it considers that the Complaint is in conformity with the Rules and that it was properly notified to the First Respondent according to the Rules. Further, in its Procedural Order No. 1 of December 7, 2004, the Panel was at pains to give both Respondents every chance to file Responses. Indeed, as noted in Section 5.B.1 above, the Respondents effectively had 43 days (6 weeks) within which to prepare and submit Responses, the Rules paragraph 5(a) providing that ordinarily a Respondent should have no more than 20 days within which to submit a Response following the date of commencement of the administrative proceeding. In this case, that date was October 29, 2004. By extending the Respondents’ time to submit Responses by more than twice the period provided for by the Rules, the Panel was concerned to ensure that the Respondents (and each of them) were afforded more than a fair opportunity to present their cases: see, Rules paragraph 10(b). Although both of the Respondents undertook in their respective Registration Agreements when registering the domain name in issue to submit disputes to resolution under the Policy, the First Respondent now seeks to resolve this dispute by filing the US Court Complaint. The US Court will no doubt take these considerations into account insofar as it considers them to be relevant.

6.2 Be that as it may, this Panel will proceed to decide this case on its merits, mindful of the discretion to suspend or terminate the proceeding under Paragraph 18(a) of the Rules.

6.3 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

- that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- that the Respondent has no rights or legitimate interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

6.4 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the domain names in issue.

6.5 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall, be evidence of the registration and use of a domain name in bad faith.

Identical or Confusingly Similar

6.6 The Complainant clearly has trademark rights in the BENDON mark. It is not a generic term as proposed in the US Court Complaint. It is equally clear that the domain name in issue is identical to that mark. That the First Respondent does not sell lingerie or underwear under or by reference to the BENDON mark and that its business is quite different to the business of the Second Respondent, both as stated in the US Court Complaint, is not relevant to this requirement of the Policy. Accordingly, the Complainant meets the requirements of paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

6.7 There is no evidence either in Mr. Ridge’s or Mr. Jain’s communications with the Center, respectively on behalf of the Second Respondent and the First Respondent referred to in Section 3 above, which demonstrates that either Respondent has rights or legitimate interests in the domain name in issue, whether under paragraph 4(c) of the Policy or otherwise. Nor is there any such evidence in the US Court Complaint.

6.8 On the evidence provided by the Complainant, the Second Respondent’s registration of the domain name in issue was clearly fortuitous and a rudimentary trademark investigation would have alerted the Second Respondent to the Complainant and to its trademark position.

6.9 Further, the Complainant’s evidence summarised in Section 5.A.3 to 5.A.5 is compelling and has not been answered either in this administrative proceeding or in the US Court Complaint. Accordingly, the Panel finds that the Complaint satisfies the requirements of paragraph 4(a)(ii) of the Policy.

Registered and Used in Bad Faith

6.10 The case advanced in the Complaint (see, Section 5.A.7 to 5.A.11) is persuasive and is not answered by either Respondent in this administrative proceeding or by the First Respondent in the US Court Complaint. It is well established that passive holding of a domain name can, in appropriate cases, amount to bad faith use: see, for example, the Telstra case (WIPO Case No. D2000-0003). Accordingly, the Panel finds that the Complaint satisfies the twin requirements 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 name <bendon.com> be transferred to the Complainant.

David Perkins
Sole Panelist

Dated: January 14, 2005

Источник информации: https://internet-law.ru/intlaw/udrp/2004/d2004-0857.html

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