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ADMINISTRATIVE PANEL DECISION
Osan Limited v. Socks Depot Corporation and Lorne R. Lieberman
Case No. D2007-0215
1. The Parties
Complainant is Osan Limited, Radcliffe, Manchester United Kingdom of Great Britain and Northern Ireland, represented by Sprecher Grier Halberstam LLP, United Kingdom of Great Britain and Northern Ireland.
Respondent is Socks Depot Corporation, New York, United States of America; and Lorne R. Lieberman, Montrйal, Quйbec, Canada, represented by Lйger Robic Richard, LLP, Canada.
2. The Domain Name and Registrar
The disputed domain name <sockshop.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2007, incorrectly naming the registrar. A Complaint Deficiency Notification was issued on February 26, 2007, and an amended Complaint was filed on that same day. On February 19, 2007, the Center transmitted by email a request for registrar verification in connection with the domain name at issue. On February 19, 2007, eNom transmitted by email to the Center its verification response confirming that Respondent Socks Depot Corporation is listed as the registrant and providing the contact details. 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 Respondent Socks Depot Corporation of the Complaint, and the proceedings commenced February 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2007. The Response was filed with the Center March 19, 2007.
The Center appointed Desmond J. Ryan, Clive Duncan Thorne and Joan Clark as panelists in this matter on April 20, 2007. The Panel finds that it was properly constituted. Each member of 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
Complainant is an English corporation carrying on business as a retailer of hosiery and located in Manchester, United Kingdom. It has carried on business under the trademark SOCK SHOP since 1983. It claims to have established a substantial reputation in the trademark SOCK SHOP in the United Kingdom and elsewhere. It claims a turnover under the SOCK SHOP brand in excess of Ј350,000 in the year ending January 31, 2007, and advertising expenditure in excess of Ј20,000 in that period. Complainant is the registered owner of United Kingdom and European trademark registrations consisting of, or including the words, “Sock Shop”. The earliest of these, United Kingdom registrations Nos. 1498155 and 1502082 date from April 21, 1992, and June 2, 1992 respectively; each comprises the words “Sock Shop” in a logo device. U.K. registration 2053658 for the words “Sock Shop” alone dates from January 23, 1996. Complainant appears to have obtained these registrations from a third party in February 2006. There is no information as to previous history of these registrations nor of the relationship, if any, between Complainant and the third party. Complainant registered the domain name <sockshop.co.uk> in March 1997.
An issue arises with respect to the identity of the domain name holder and the status of Respondent. The Who Is report shows the domain name owner to be Socks Depot Corporation. Complainant, correctly, names that corporation as Respondent. The Response, however, is filed in the name of “Lorne R. Lieberman” and throughout the Response, he is referred to as Respondent. Furthermore, the Response, at paragraphs 15 to 20, shows that Socks Depot Corporation was not incorporated until January 18, 1996, some three weeks after the registration of the domain name, and was dissolved in October 1996.
At the time of registration Socks Depot Corporation apparently did not exist as an incorporated entity nor does it so exist now. There is no evidence of the transfer of the domain name to Socks Depot Corporation on its incorporation so it does not appear to have been the holder of the name even during its short existence. This creates uncertainty as to whether the registration of the domain name is, or ever was, valid. However, apart from consideration of the legitimate rights or interests of the holder, the question of the validity of the registration is not a matter that the Panel need consider in the present case.
In a number of recent Panel decisions where ambiguity as to the identity of the proper respondent has arisen due to the use by the beneficial holder of the domain name of an identity shield in the form of a proxy registrant, the practice of the Center has been to treat both the proxy registrant and the beneficial holder as Respondent. This practice has been approved and allowed by Panels in a number of cases (see World Wide Fund for Nature aka WWF International v Moniker Outline Services LLC and Gregory Ricks,
WIPO Case No. D2006-0875, and the cases there cited). Whilst the circumstances of the present case are different from those in the proxy cases, the approach in those cases provides a practical way in which to deal with the problem. The Panel therefore proceeds on the basis that Respondent is “Socks Depot Corporation and Lorne R. Lieberman”. As will be apparent from the Panel’s findings below under paragraph 4(a)(iii) of the Policy, the precise identity of Respondent is not critical to the Panel’s decision.
The domain name was registered in the name of Respondent Socks Depot Corporation on December 23, 1995. The Administrative Contact for the domain name is stated to be 38649671 Canada Inc. and also Lorne R. Lieberman who claims to be the sole director of that corporation. According to the Response, the domain name was registered and Respondent Socks Depot Corporation was established for the purpose of expanding into the United States of America the hosiery business of a group of Canadian companies, the Lamour Group, controlled by the Lieberman family. The project was, however, abandoned in October 1996. The registration has been maintained since that date but, as noted above, Respondent Socks Depot Corporation existed as an iincorporated entity only for a short time during that period. Steps were taken in April 1996 to prepare promotional materials incorporating the words “Sock Shop” and the domain name but no further action appears to have been taken to develop or exploit those materials. The domain name therefore appears to have remained inactive for over ten years. At the time of lodgment of the Complaint, the domain name resolved to “www.openface.com”, the website of a Canadian Internet service provider. There is no evidence of any other use of the domain name.
5. Parties’ Contentions
Complainant contends that it has established common law rights in the name “Sock Shop” by virtue of use and advertising since 1983. On that basis, and on the basis of its above cited trademark registrations, Complainant contends that the domain name is identical or confusingly similar to its trademark SOCK SHOP.
Complainant points to the fact that Respondent does not appear to have used or made preparations for use of the domain name for any bona fide offering of goods or services, is not commonly known by the domain name and does not appear to have any visible trading identity. It therefore contends that Respondent has no rights or legitimate interests in respect of the domain name. It further contends that Respondent chose the domain name and uses it because of its association with Complainant’s well-known brand in order to attract Internet users to the “Openface” Internet website. Accordingly, Complainant contends, Respondent’s registration and use of the domain name is in bad faith.
In the Response Mr. Lieberman contends that in view of the inherently descriptive nature of the words Sock Shop, Complainant’s trademark rights do not extend to the words per se and accordingly the domain name is not confusingly similar to Complainant’s trademarks. Respondent points to the disclaimer entered on United States Registration No. 2359034 and cites the decision in Minibar North America Inc v. Ian Musk & GEMS Global Electronic Minibar Systems AS,
WIPO Case No. D2005-0035, in support of its contention. Respondent further cites the abandonment or entry of disclaimers in several Canadian applications for registration of trademarks comprising the words “Sock Shop”. In the Response, it is submitted that the close relationship between Respondent Socks Depot Corporation, Mr. Lieberman and the Lieberman family business, Lamour Inc, supports Mr. Lieberman’s claim to rights or legitimate interests. Mr. Lieberman points to the preparation of promotional material including the words “Sock Shop” in April 1996 as evidence of preparations for use in the bona fide offering of goods by reference to the domain name. He further contends that since the registration of the domain name he remained at all times the Administrative Contact and kept the entire control of its use. In response to the allegation of registration and use in bad faith, the Response includes evidence to support a contention that the disputed domain name was registered in December 1995, several years before 2004, the year in which the <sockshop.co.uk> domain name started to be used in association with a website to sell wares and services that Complainant is now selling, even if the domain name <sockshop.co.uk> had been registered since 1997. The Response also provides evidence that prior to March 21, 2004 the domain name <sockshop.co.uk> was being offered for sale by Name Shop, a United Kingdom company that specializes in the sale of generic names in the “.co.uk” domain. The Response denies that the domain name in dispute was registered for the purpose of selling it or to prevent Complainant from reflecting its trademark in a corresponding domain name. The Response further denies that Internet users seeking Complainant’s website will be misleadingly diverted to Respondent’s unrelated website.
6. Discussion and Findings
A. Identical or Confusingly Similar
Notwithstanding the generic descriptive nature of the words Sock Shop, Complainant has shown substantial trademark use of those words in its promotional material. Complainant has also, by assignment, obtained United Kingdom trademark registration No. 2053658 in Class 25 for those words per se. The Panel therefore finds that the domain name is identical or confusingly similar to a trademark in which Complainant has rights.
B. Rights or Legitimate Interests
The history of the domain name, the ambiguity with respect to the ownership of the domain name and the long period of non-use raises questions as to whether, at the date of the Complaint, either Socks Depot Corporation or Lorne R. Lieberman had rights or legitimate interests in the domain name. However in view of the Panel’s finding under paragraph C below it is unnecessary to resolve these questions here.
C. Registered and Used in Bad Faith
To establish registration in bad faith, Complainant must show grounds for finding bad faith at the date of registration of the domain name, in this case December 23, 1995. At that date Complainant had been trading under the trademark Sock Shop for some twelve years, but does not appear to have owned any trademark registrations. Complainant claims to have sold goods under the trademark in year ending January 31, 2007 to the value of Ј350,000 and to have spent in excess of Ј20,000 on promotion in that year. Those figures give no indication of the extent of Complainant’s trade or reputation in the trademark in 1995. Further, apart from a reference to orders from the United States of America, Canada and elsewhere in the last two months of 2006, there is no evidence to suggest that Complainant has established a reputation in the trademark Sock Shop outside the United Kingdom. A fortiori there is no evidence to suggest that in December 1996, ten years earlier, Complainant’s trademark rights were known, or ought to have been known to Respondent Socks Depot Corporation or to Mr. Lieberman. Complainant has shown no other basis upon which the registration of the domain name by Mr. Lieberman should be impugned. His statement that registration was obtained as part of a proposal, later abandoned, to expand the Lieberman family business to the United States is credible. Complainant has failed to establish that the domain name was registered in bad faith. The fact that the domain name was retained after the abandonment of the project for which it was registered does not reflect bad faith either subsequently or at the date of registration. This is not a case in which the bad faith “passive use” doctrine propounded in Telstra Corporation Limited v Nuclear Marshmallows,
WIPO Case No. D2000-0003 is applicable.
7. Reverse Domain Name Hijacking
Mr. Lieberman, in the Response, contends that the Complaint contains many claims that are false, unsubstantiated and uncorroborated and he invites the Panel to make a finding of reverse domain name hijacking pursuant to paragraph 15(e) of the Rules. The Panel has found that there is insufficient evidence in the Complaint to justify a finding of bad faith registration. Equally, the Panel finds that there is insufficient evidence to justify a finding of bad faith in the filing of the Complaint. The Panel therefore declines to find the Complainant guilty of reverse domain name hijacking.
For all the foregoing reasons, the Complaint is denied.
Desmond J. Ryan
Clive Duncan Thorne
Dated: May 24, 2007