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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Prestige Brands Holdings, Inc., and Prestige Brands International, Inc. v. The domain is not for sale / Motohisa Ohno

Case No. D2006-0608

 

1. The Parties

The Complainants are Prestige Brands Holdings, Inc., Irvington, New York, United States of America and Prestige Brands International, Inc., Bonita Springs, Florida, United States of America (“the Complainants”), represented by McCarter & English, LLP, United States of America.

The Respondent is The domain is not for sale / Motohisa Ohno, of , Tokyo, Japan (“the Respondent”).

 

2. The Domain Name and Registrar

The disputed domain name, <prell.com>, (“the Domain Name”) is registered with eNom (“the Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2006. On May 17, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day the Registrar 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 26, 2006.

The Center verified that the Complaint together with the amendment to 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 29, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2006. A preliminary Response was filed with the Center on June 6, 2006. However, it subsequently transpired that due to an inadvertent typographical error the Respondent had not received all the email communications from the Center. Accordingly, his time for filing the Response was extended until July 11, 2006. The Response was filed with the Center on July 8, 2006.

The Center appointed Tony Willoughby as the sole panelist in this matter on June 16, 2006. 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

The Second Complainant is a wholly owned subsidiary of the First Complainant.

The Complainants are the proprietors of the PRELL brand of shampoos and conditioners well-known in the United States of America. The brand dates back to 1944. The earliest of the Complainants’ United States trademark registrations of the mark is dated October 10, 1944.

The Respondent is the proprietor of well over 1,000 domain names, many of them featuring the names and/or trademarks of other parties. He has been involved in a number of previous cases under the UDRP (Pier 1 Imports, Inc., Pier 1 Services Company and Pier 1 Holdings, Inc. v. Motohisa Ohno, WIPO Case No. D2004-0623, Investone Retirement Specialists, Inc. v. Motohisa Ohno, WIPO Case No. D2005-0643, Cloer Elektrogerдte GmbH v. Motohisa Ohno, WIPO Case No. D2006-0026 and Reebok International Limited v Motohisa Ohno, NAF Case No. FA 0507000511463). Following an unsatisfactory result in one of those cases (see WIPO Case No. D2006-0026, above) he no longer puts his domain name registrations up for sale. He leaves them with a parking service and earns ‘revenue-per-click’ income.

The Domain Name was registered on September 6, 2002. The Respondent originally parked the Domain Name with NameRenters, but now has it parked with DomainSpa.

On November 28, 2002, the Domain Name was parked on a NameRenters parking page. The principal categories of products featured on that page were shampoos and other hair care products.

On January 24, 2005, the Domain Name featured on the Afternic auction site indicating that the Domain Name was for sale and inviting offers.

On October 31, 2005, the Domain Name was linked to a site featuring links to sites featuring, amongst other things, hair care products. The “hair care products” link led visitors to another webpage featuring further links, but links to products competing with the Complainants’ products.

On December 2, 2005, the Complainant’s representative sent a cease and desist letter seeking transfer of the Domain Name. In that letter the Complainants’ representative pointed out that the Domain Name had been connected to a site featuring links to other sites advertising shampoos and other hair care products.

By December 14, 2005, the Respondent’s website was exclusively devoted to dietary/weight loss goods and services.

On December 18, 2005, the Respondent replied by email to the cease and desist letter referred to above pointing out that the website in question was a parking page and that the links had been assigned automatically by the parking service he had been using. The Respondent pointed out that he had now modified the settings on the site to “food/recipes” and that the site would soon change.

By January 7, 2006, the Respondent’s website was exclusively devoted to food/recipes.

 

5. Parties’ Contentions

A. Complainants

The Complainants contend that the Domain Name is identical to the Complainants’ trade mark PRELL.

The Complainants further contend that the Respondent has no rights or legitimate interest in respect of the Domain Name. The Complainants point to the fact that they have not licensed the use of their trademark. They observe that the Respondent is not known by the name Prell and they refer also to the use that the Respondent has made of the Domain Name, parking it with parking service providers and at one time offering it for sale.

The Complainants assert that the Respondent registered the Domain Name primarily with a view to selling it and pending sale to earn ‘revenue-per-click’ income. This revenue is derived largely through Internet users visiting the Respondent’s site expecting to reach a site associated with the Complainants.

The Complainants exhibit a list of domain names said to be held in the name of the Respondent including <harrisonford.net>, <ciscorouters.com>, <sonyweb.com>, <cnnaol.com> and <disneyworld.net>.

B. Respondent

The Respondent accepts that the Domain Name is identical to the Complainants’ trademark.

The Respondent says that when he registered the Domain Name he had no knowledge of the Complainants’ brand. He claims to have learnt of the brand shortly after he registered the Domain Name. He says that at the time he registered the Domain Name he thought it was simply a common German name. He denies that the Complainants have exclusive rights to the name and draws attention to a number of other domain names featuring the name PRELL which are owned by third parties.

The Respondent denies that he registered the Domain Name in bad faith. He says the complaint must fail because when he registered the Domain Name he was unaware of the existence of the Complainants’ brand.

In responding to the allegations that at one time the Domain Name was connected to a website featuring links to sites advertising products competing with the Complainants’ products the Respondent says:

“At DomainSpa the content is automatically assigned a setting according to the visitor’s inputs not assigned by me manually at the beginning”.

The Respondent admits to being the proprietor of the names in the list exhibited by the Complainants. He knows that they include in their number domain names featuring the names of others. Examples of the explanations he gives for having registered them are “cnnaol.com … Yes, CNN acquired AOL!”, “ciscorouters.com … It’s a good domain to sell Cisco routers”, “smithsonian.net … great museum but the museum didn’t extend this domain registration”.

The Respondent asserts that PRELL does not fall into the same category as those identified above as it is simply a common German surname.

The Respondent expresses surprise at the Complainants having been able to produce a list of all the Respondent’s domain name registrations and suggests that it must have been obtained unlawfully. The Respondent contends that if that is the case, the Complainant is guilty of reverse domain name hijacking within the meaning of paragraph 15(e) of the Rules.

 

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:

“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding.”

Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as meaning “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”

B. Identical or Confusingly Similar

There is no dispute that the domain name, absent the generic domain suffix, is identical to the Complainants’ trademark, PRELL and the Panel so finds.

C. Rights or Legitimate Interests

The Respondent registered the Domain Name with a view to selling it and pending sale has been using it commercially to derive ‘revenue-per-click’ income via a parking page service.

As the Respondent states, there is nothing inherently wrong with registering domain names with a view to selling them; nor is there anything inherently wrong with using them to earn ‘revenue-per-click’ income.

However, the mere fact that a respondent’s motives/behaviour in respect of the domain name in issue may be unobjectionable does not necessarily mean that the respondent has rights or legitimate interests in respect of that domain name.

Here, the Respondent has no rights in respect of the Domain Name whether by registration or otherwise. The use to which the Domain Name is being put is a commercial use in that the Respondent is earning money from it, but it cannot be categorized as a bona fide use within the meaning of Paragraph 4(c)(i) of the Policy. That paragraph of the Policy is intended to protect registrants conducting genuine business under the domain name in question. In this Panel’s view, registration of a domain name for no reason other than to sell it on or to connect it to a parking page for ‘revenue-per-click’ income cannot of itself give rise to a legitimate interest in respect of the domain name in issue.

The Respondent is not commonly known under or by reference to the name PRELL and the Respondent has come forward with no explanation as to why he might reasonably be said to have legitimate interests in respect of the Domain Name.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D. Registered and Used in Bad Faith

Two fundamental questions are:

1) Is respondent’s knowledge of the complainant’s trade mark at time of registration a pre-requisite for a finding of bad faith registration and use under paragraph 4(a)(iii) of the Policy?

2) If so, will constructive knowledge suffice or must it be actual knowledge?

These questions are potentially relevant here because the Respondent denies that he was aware of the Complainants’ brand when he registered the Domain Name.

Paragraph 4(b) of the Policy contains a non-exclusive list of examples of what shall be evidence of the registration and use of a domain name in bad faith. There are four examples. The first three all call for knowledge of the complainant and/or his trademark at time of registration of the domain name. The fourth does not, but to the best of the Panel’s belief the vast majority of panelists read this example, too, as one requiring knowledge of the complainant and/or his trade mark at time of registration. For a discussion on the topic see eResolution case No AF-0104 (Shirmax Retail v. CES Marketing). Accordingly, the Panel answers the first question in the affirmative.

As to the second question, initially the majority of panelists took the view that there was no place for constructive knowledge under the Policy. Only actual knowledge would suffice. However, the practice of using automated processes to snap up lapsed domain names and then exploiting the value of those names by parking them on directory pages featuring links to sites ‘appropriate’ to the domain names in question and earning pay-per-click/view revenue has provoked some panelists to take a different line. See for example Red Nacional De Los Ferrocarriles Espanoles v Ox90, WIPO Case No. D2001-0981, in which this panelist was in a dissenting minority. For a more recent exposition on the topic the following passage in the decision in Mobile Communication Service Inc. v. Webreg, RN, WIPO Case No. D2005-1304 is of interest:

“….. it appears that Respondent’s business practice includes the registration of domain names containing fanciful trademarks (e.g., SINTEF), trademarks created by the joinder of common or dictionary words (e.g., THE TEXAS LOTTERY), and or that have expired, see SystemSoft Corp. v. RareNames, WebReg, Claim No. 474793 (June 28, 2005), followed by efforts to resell those names. Although this Panel has held (including in a number of cases in which Respondent’s counsel represented the respondent) that it is not bad faith to resell domain names that incorporate common dictionary terms if the respondent was unaware of complainant’s trademark rights at the time of registration, e.g., National Trust for Historic Preservation v. Preston, WIPO Case No. D2005-0424 (August 10, 2005); Landmark Group v. DigiMedia.com, L.P., NAF Claim No. 28549 (August 6, 2004); HQ Holdings, LLC v. EquiCorp, Inc., NAF Claim No. 256402 (June 15, 2004), respondents cannot rely on this precedent to shield their conduct by closing their eyes to whether domain names they are registering are identical or confusingly similar to trademarks. In other words, where a respondent has registered a domain name consisting of a dictionary term because the respondent has a good faith belief that the domain name’s value derives from its generic qualities, that may constitute a legitimate interest and the offer to sell such a domain name is not necessarily a sign of bad faith. Where, in contrast, a respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, such practices may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.

On the record of this case, the Panel believes it a fair inference that Respondent’s conduct falls into the latter category. Respondent has been a respondent in a number of UDRP proceedings; in the majority of those cases, the domain names have been transferred. Moreover, the Domain Name in this case, MOBILCOM, is not a dictionary word, and even a cursory search on search engines like Yahoo! and Google would have shown that MOBILCOM is a trademark. The Panel thus concludes that Respondent has registered this Domain Name to prevent Complainant from reflecting its mark in the corresponding .com Domain Name, and that Respondent is engaged in a pattern of such conduct.”

In his Response, the Respondent makes reference to the fact that one of the domain names in his portfolio, <stanleymowers.com>, was “picked up by [his] own program”. He says “this was the one which I didn’t understand why I registered it”. It appears that the Respondent might fall into precisely the same category as the respondent in the above-quoted case, but it seems unlikely that the Domain Name was snapped up by an automated process. The Respondent appears to have registered it because “I thought it was just a popular surname at that time.”

At all events, the Panel is not persuaded that anything less than actual knowledge will suffice and stands by the view that he expressed in his dissenting opinion in WIPO Case No. D2001-0981 referred to above.

From that starting point the issue here is a very simple one. If the Respondent is telling the truth when he says that when he registered the Domain Name he had no knowledge of the Complainants’ PRELL brand of hair care products, the Complaint must fail.

If, on the other hand, the Respondent knew of the Complainants’ brand at time of registration of the Domain Name, there can be no question but that the registration is abusive within the meaning of Paragraphs 4(b)(i) and (iv) of the Policy. In putting the Domain Name up for sale, the Respondent will have known that the Complainants would have been the most likely purchasers. Moreover, the Respondent will have appreciated that in using the Domain Name as he has, Internet users visiting his site will be likely to be people hoping to reach a site associated with the Complainants’ PRELL brand of products.

What evidence is there to suggest that the Respondent was aware of the Complainants’ brand at time of registration of the Domain Name?

First, there is the fact that as soon as the Domain Name was connected to the NameRenters parking page the category of product in pride of place at the head of the list was ‘shampoo’, the product category with which the Complainants’ brand is associated.

Secondly, there is the Respondent’s track record of registering the names of third parties, a track record which he admits and of which he appears to be proud.

Thirdly, there is the question as to what there is about the German surname, PRELL, which prompted the Respondent to register it.

As to the first, it is to be observed that the panel in Cloer Elektrogerдte Gmbh v. Motohiso Ohno, WIPO Case No. D2006-0026 , a case involving the Respondent and with very similar facts regarded this factor as being conclusive of the Respondent’s knowledge of the complainant’s brand. This was also a case where the Respondent was arguing that the name in question, CLOER, was a common German name. However, the Respondent claims that the decision as to which links should be placed on the parking page was not his decision but the decision of the parking page service provider. The Panel accepts that that may very well have been the case.

As to the second, the Respondent claims that PRELL is different from the other names referred to above in that it is simply a common German surname. That is why he registered it, not because it was a brand name.

As to the third, the Respondent has provided no explanation of any kind. It does not appear to have been a random registration because he has indicated that he thought it was merely a surname when he registered it and in his Response he demonstrates that for many of his domain names he has a specific reason. Examples include “great artists in 80s” <duranduran.net>, <gloriaestefan.net> “adidas typo” <adida.com>, “Sony is also great and cool company” <sonyweb.com>, “Great amusement place” <disneyworld.net>, “I like it but I no longer own the domain <cherrycoke.net>. For other examples see section 5B above. Moreover, the Panel has examined the 23 page list of domain names held by the Respondent for German surnames to see if that was a category justifying the Respondent’s claim that he registered the Domain Name because it was a common German surname. The Panel was unable to find any other obviously German names apart possibly from Dewald, which to the Panel’s knowledge is another trademark. The Panel does not accept that it was pure coincidence that the only German surnames selected by the Respondent for domain names (CLOER, PRELL and DEWALD) were also trade marks of others.

In the result the Panel finds that the Respondent deliberately selected the Domain Name because it is a trademark of the Complainants and did so with a view to selling it at a profit and probably to the Complainants. The Panel also finds that the Respondent intended that, pending sale of the Domain Name, it should earn ‘revenue-per-click’ income for him via a parking page service. Knowing how those services operate he will have been well aware that they would put links on the page relevant to the Complainants’ product category. They will have done this because they will have known that visitors to “www.prell.com” will be likely to be people looking for the Complainants’ product. Thus, the Respondent will have known all along that his ‘revenue-per-click’ income from the Domain Name will have been derived from visitors diverted from the Complainants’ site to links advertising competitors’ products.

The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of Paragraphs 4(b)(i) and 4(b)(iv).

 

7. Reverse Domain Name Hijacking

Given that the Complaint has succeeded it is unnecessary for the Panel to address the Respondent’s allegation in this regard (see section 5B above). In any event, the allegation was misconceived. Even if the Complainants came by their list of the Respondent’s domain names unlawfully, the Panel has difficulty in seeing how that could impact on their bona fides in launching the Complaint. As it happens the Panel has no evidence before it to demonstrate that the list was unlawfully obtained.

 

8. 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, <prell.com>, be transferred to the Complainants. The Panel dismisses the Respondent’s allegation of Reverse Domain Name Hijacking.

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Tony Willoughby
Sole Panelist

Date: July 17, 2006