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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanderling Pty Ltd, trading as Thimblelady v. Roxanne International

Case No. D2007-0385

 

1. The Parties

The Complainant is Sanderling Pty Ltd, trading as Thimblelady, Wahroonga, Australia, represented by Liuxin Newman, Australia.

The Respondent is Roxanne International, Manteca, California, United States of America.

2. The Domain Name and Registrar

The disputed domain names <thimblelady.net> and <thimblelady.org> (the” Domain Names”) are registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2007. On March 16, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Names. On March 19, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the Domain Names and providing the contact details for the administrative and technical contact for the 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 proceeding commenced on March 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2007.

On April 9, 2007, Ms. Dierdra McElroy of the Respondent sent an email to the Center saying that she had only that day received a copy of the Notice of Complaint and Commencement of Adminstration Proceedings. Ms. McElroy advised that she was going out to town for a contracted teaching position “within hours”, and would not be returning until April 16, 2007. Ms. McElroy indicated that it would be impossible for her to obtain advice from her attorney and get a Response filed by the April 15 deadline but that she would attend to the matter immediately on her return.

On April 10, 2007, the Center replied to Ms. McElroy’s email, pointing out that the email copy of the complaint sent by the Center to the email address notified in the Who is Information for the Domain Names, had not been the subject of any “failure of delivery” notification. However the Center went on to advise:

“You may submit your response later than the given deadline, which is April 15, 2007. The Center will bring it to the panel’s attention (when appointed), and it will be at the discretion of the Panel to consider it, in accordance with UDRP Rules, paragraph 10 (d).”

No Response having been received by April 15, on April 16, 2007, the Center issued a Notification of Respondent Default.

The Respondent did then submit a Response, which was received by the Center (in electronic format only) on April 18, 2007.

The Complainant sent an email to the Center on May 3, 2007, acknowledging receipt of a copy of the Response and enquiring whether a reply to the Response could be filed. On May 4, 2007, the Complainant submitted to the Center a two page document summarizing the work of Ms. Liuxin Newman of the Complainant over the period since 2001.

The Center appointed Warwick Smith as the sole panelist in this matter on May 4, 2007. 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 Complainant

The Complainant is the registered proprietor of the word mark THIMBLELADY in Australia, in respect of thimbles and quilting accessories in International Class 26. That Australian registration dates from August 13, 2000. The Complainant is also the registered proprietor of the word mark THIMBLELADY in International Class 26 in the United States of America. The United States registration dates from February 26, 2002.

The Complainant uses the trademark THIMBLELADY for marketing thimbles, needles, quilting hoops, patterns, books, and DVDs. “Thimblelady” is also used by the Complainant as a business name for marketing silk and cotton threads, fabric, scissors, and marker pens.

The Complainant is the proprietor of the Domain Name <thimblelady.com>, which was registered in August 2000.

From at least 2001, the Complainant has operated a vendor booth at quilt shows in cities in the United States, including Houston, Chicago, and Santa Clara.

The Complainant says that it has advertised continuously, as “Thimblelady”, in both Australian and United States quilting magazines, since 2001. The THIMBLELADY mark has also been used as the Complainant’s business name on the fascia of its vendor booths at the various quilt shows at which it has exhibited its products in the United States, and appeared on all of the Complainant’s products sold at those shows.

The Respondent and the Domain Names

The Respondent operates a quilting business in competition with the Complainant. It is clear from the Complaint (and not denied in the Response) that since at least 2001, the Respondent has been attending many of the same quilting shows as the Complainant, and that the Respondent has been aware of the Complainant and its trademark since about that time. Indeed, Ms. McElroy of the Respondent purchased some thimbles from the Complainant’s booth at the Houston Quilt Festival in 2003.

The Domain Names were both registered by the Respondent on February 3, 2006.

The Domain Names resolve to the website at “www.thatperfectstitch.com” (“the Respondent’s website”).

Extracts from the Respondent’s website were attached to the Complaint. There is reference on the home page to an entity (apparently related to Roxanne International) called Roxanne Products Company. The home page describes the website as the “home of Roxanne’s™ Thimble and other state of the art hand appliquй and quilting tools”.

Some history of the Respondent is provided in the Response, and in the “about us” section of the Respondent’s website. The Respondent was established in 1987 by Ms. McElroy’s mother, Roxanne. Initially it appears to have traded in a line of Tahitian quilt patterns, but as time went by the product range was expanded to include a range of thimbles, needles, and other quilting tools, the provision of lectures and seminars on quilting, and the publication of a successful book and video entitled “That Perfect Stitch”. Roxanne McElroy died in 1997, but the Roxanne International business has been continued by her daughter Dierdra.

According to the Response, Roxanne McElroy and her daughter invented a special quilting thimble in or about 1987. The Response claims that the thimble “has been hailed [by leading quilt instructors, magazine editors, and show organizers] as the greatest innovation in the quilting industry in decades”. The Respondent goes on to say in the Response:

“The thimble quickly developed a reputation as the ultimate thimble to have and everyone began referring to either my mother or me [i.e. Ms. Dierdra McElroy] as that ‘thimble lady’. When people found us at trade shows they would stop in their tracks recognizing us from television or another show and say ‘you’re that thimble lady’. We would smile, nod and acknowledge that we were”.

A number of magazine articles about the Respondent were annexed to the Response, some featuring the history of the Respondent’s business and the life of the late Ms. Roxanne McElroy. One referred to the Respondent’s thimble as “Roxanne’s Thimble”. A photograph of the Respondent’s thimble was also annexed to the Response, labeled “Roxanne ™”.

The Panel has visited the Respondent’s website. The Respondent’s website refers to Dierdra McElroy (“better known as ‘Didi’), and many of the products sold on the Respondent’s website (e.g. thimbles, needles, etc) are marketed under the brand “Roxanne ™”. However the Panel did not note any reference to the expression “Thimblelady”.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

1. The Domain Names are identical to a trademark or service mark in which the Complainant has rights.

1.1 The Complainant is the registered proprietor of the mark THIMBLELADY in Australia and in the United States. That mark is identical to the Domain Names.

2. The Respondent has no rights or legitimate interests in respect of the Domain Names.

2.1 The Domain Names were registered by the Respondent years after the Complainant’s registration of its THIMBLELADY trade mark, and in the full knowledge of the Complainant’s use of THIMLELADY as a trademark and as a business name.

2.2 The Complainant has not received any complaints about its use of THIMBLELADY as a trademark, notwithstanding the Respondent’s knowledge of that use since at least October 2001.

3. The Domain Names were registered and are being used in bad faith.

3.1 The Respondent operates a competing quilting business under the name “Roxanne International”.

3.2 The core products of both Complainant and Respondent, are quilting thimbles. The Respondent has been aware, from a time well before the registration of the Domain Names, that the Complainant’s thimble has been marketed under the THIMBLELADY trademark.

3.3 The Domain Names are being used by the Respondent to confuse the Complainant’s customers who are looking for the Complainant online, and to lure those customers to the Respondent’s website. The Respondent’s intention in registering the Domain Names has been intentionally to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.

B. Respondent

The Respondent contends as follows:

1. Ms. Dierdra McElroy and her late mother invented an extremely innovative quilting thimble, which quickly developed a reputation as the ultimate thimble for quilters to have. In consequence, people began referring to Ms. McElroy or her late mother as “that thimble lady”. Ms. Dierdra McElroy and her late mother acknowledged and accepted that form of address.

2. The Complainant has been marketing a thimble which is confusingly similar to the Respondent’s Roxanne thimble, in violation of the Respondent’s design rights. New quilters in the industry looking for Roxanne thimbles, have been lured into purchasing THIMBLELADY thimbles due to the confusion.

3. Liuxin Newman of the Complainant has published a book with a title almost identical to the Respondent’s “That Perfect Stitch” publication, and containing photographs which virtually duplicate the photographs in the Respondent’s book.

4. The Complainant has profited from the Respondent’s goodwill built up by advertising and over 20 years of hard work and investment.

5. The Respondent has received countless customer complaints from people who have been dissatisfied with THIMBLELADY quilting thimbles they have purchased, and who believe that the Respondent was the manufacturer. Hundreds of people have inadvertently bought inferior THIMBLELADY thimbles.

6. The Respondent purchased the Domain Names “in an effort to help our customers find our website through [the Complainant’s] deluge of advertising in the United States”. This was necessary, as quilters in the United States tend to be of advancing years, and are not particularly computer/Internet savvy. Since the Respondent has “unofficially” been “the thimblelady” for 20 years, these quilters look for the Respondent under the name “Thimblelady”. When they are then taken to the Complainant’s website, they find that the Complainant’s thimble is almost identical to the Respondent’s thimble, and that the Complainant’s book has the same key words in the title as the Respondent’s book. They think they have found the Roxanne thimble.

7. The Respondent has been unable to acquire the domain name <roxanne.com>.

8. The Respondent did not purchase the Domain Names with intent to extort money from the Complainant, and has never contacted the Complainant in an attempt to sell the Domain Names to the Complainant.

9. The Respondent has a right to the Domain Names because they were offered for sale, and because “Thimblelady” is a name that people have known Ms. Dierdra McElroy and her late mother by for many years before the Complainant’s THIMBLELADY trademark came along. Furthermore, the Complainant’s trademark is in Australia and not in the United States, which is the hub of the quilting world.

10. The Respondent purchased the Domain Names in good faith.

 

6. Discussion and Findings

Procedural Issues

1. Late filing of response

The Response, due on April 15, 2007, was not received until April 18, 2007. However, the Panel has a discretion under the Rules to receive and consider the late Response, if the circumstances can be described as “exceptional” (Rules, paragraphs 14(a) and 10(d)).

In this case, the Panel is satisfied that the Response should be received and considered. First, the Respondent did not ignore the Complaint – Ms. McElroy emailed the Center and explained her difficulties some 6 days before the deadline for filing a Response. The Center’s emailed reply, indicating that any late Response would be forwarded to the Panel when appointed and could be admitted in the Panel’s discretion, would have left the Respondent with the impression that a response filed a few days late may be accepted. Secondly, the Respondent did move promptly when Ms. McElroy was through with her teaching commitment – in the end the Response was no more than 3 days late.

In those circumstances, the Panel considers it appropriate to receive and consider the Respondent’s Response, and the Panel has done so.

2. Document submitted by the Complainant on May 4, 2007

Neither party has the right to supplement its case after the Complaint and Response have been filed, unless such supplementary filings have been requested or approved by the Panel.

The Panel in this case sees no reason to admit the two-page document which the Complainant sent to the Center on May 4, 2007. The document appears to consist of material which the Complainant could have included with its Complaint. It does not fall into the category of answering evidence or argument contained in the Response which the Complainant could not reasonably have anticipated when filing its Complaint, and there do not appear to be any other reasons of procedural fairness which would require the Panel to receive and consider this document. The Panel therefore declines to do so.

A. General Principles under the Policy and the Rules

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:

(i) That the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) That the Domain Names have been registered and are being used in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that [the respondent has] registered or 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.

Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) Where [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.

B. Identical or Confusingly Similar

The Complainant has sufficiently proved this part of the case. Leaving aside the “.net” and “.org” suffixes, the Domain Names are clearly identical to the THIMBLELADY registered trademark in which the Complainant has rights as registered proprietor. (It is now well established by numerous decisions of WIPO Panels, that suffixes such as “.com”, “.org”, and “.net” are not to be taken into account in determining whether a domain name is identical to a complainant’s trademark. For two recent examples, see L’Oreal v Avraham Mattan, Vichycare, WIPO Case No. D2007-0122, and Sidestep Inc. v Anna Valdieri/Marco Ferro, WIPO Case No. D2007-0212).

The Respondent submits that the Complainant only has registered rights in the THIMBLELADY mark in Australia. That does not appear to be correct (the Complainant has produced a printout from the United States Patent and Trademark Office Database showing that it is also the registered proprietor of that mark in the United States), but even if it were correct, it is sufficient under this paragraph of the Policy for the Complainant to show that it enjoys “rights” in the relevant mark in one jurisdiction (which does not have to be the jurisdiction where the respondent resides or carries on business). Proof of rights as registered proprietor in Australia alone would have been enough.

C. Rights or Legitimate Interests

In Cassava Enterprises Ltd and Another v Victor Chandler International Ltd, WIPO Case D2004-0753, the three-member Panel said:

“Although the Policy requires that the complainants must prove each of the elements in paragraph 4(a), it is often observed that difficulties are posed for a complainant in proving a negative, namely that the Respondent does not enjoy some right or legitimate interest in the domain at issue. The wording of paragraph 4(c) of the Policy appears to envisage the respondent taking steps to demonstrate its right or interest, and it is generally accepted that, once a complainant has proved that the domain name is identical or confusingly similar to its mark and that it has not authorized the respondent to use the domain name, a finding of “no legitimate right or interest” should normally follow if the respondent does not advance any plausible “right or legitimate interest” case. If the respondent does put forward such a case, the Panel decides the issue on the basis of all of the evidence, with the complainant carrying the ultimate burden of proof. The Panel agrees with that general approach.”

That approach to the burden of proof under this paragraph of the Policy is consistent with the “Consensus View” of WIPO panels, described at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:

“A Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.

In this case the Domain Names are identical to the Complainant’s THIMBLELADY mark, and it is clear that the Complainant has not authorized the Respondent to use that mark, whether in the Domain Names or otherwise. The question, then, is whether the Response discloses a plausible claim to a right or legitimate interest in the Domain Names, whether under paragraph 4(c) of the Policy or on some other basis.

The Respondent’s main argument under this head, is that it has been “commonly known by the domain name” (Policy, paragraph 4(c)(ii)). The Respondent’s claim to this kind of right or legitimate interest is expressed in the Response in the following terms:

“The thimble quickly developed a reputation as the ultimate thimble to have and everyone began referring to either my mother or me [i.e. Ms Dierdra McElroy] as that ‘thimble lady’. When people found us at trade shows they would stop in their tracks recognizing us from television or another show and say ‘you’re that thimble lady’. We would smile, nod and acknowledge that we were”.

And later in the Response, “we have unofficially been the thimble lady for 20 years

The Panel is mindful of the need to take care when considering claims by respondents that they have “been commonly known” by an at-issue domain name. It is a claim which is very easily made, and of course if the claim is upheld it is sufficient on its own to defeat a complainant’s complaint under the Policy. The Panel agrees with the approach adopted by the Panel in Banco Espirito Santo S.A. v Bancovic, WIPO Case No. D2004-0890, where the Panel said:

“Since a “legitimate interest” is sufficient in order to defeat a Complaint under the Policy, a Panel must be careful when considering whether or not a claim by the Respondent that he or she has “been commonly known” by the domain name is legitimate. It is not sufficient for the Respondent to merely assert that he or she has been commonly known by the domain name in order to show a legitimate interest. The Respondent must produce evidence in order to show that he or she has been “commonly known” by the domain name. See, e.g., Red Bull GmbH v. Harold Gutch, WIPO Case No. D2000-0766, where the Panel rejected the claim that Respondent was known by nickname “Red Bull” since childhood because Respondent did not provide any evidence to support contention. See also, e.g, DIMC Inc, & The Sherwin-Williams Company v. Quang Phan, WIPO Case No. D2000-1519, where the Panel rejected claim that Respondent was known by nickname “Krylon” due to absence of evidence when alleged nickname was adopted and how it was used.”

Applying that approach in this case, the Panel notes the following:

1. The Respondent has produced no supporting or corroborating statements or documents showing that it is or has been “commonly known” by the expression “Thimblelady”. The Respondent has merely made that assertion in the Response.

2. The Respondent does not itself appear to have ever adopted or used the expression “Thimblelady” to market its goods or services, even before the Complainant registered its THIMBLELADY mark in the United States in February 2002 (at least there is no evidence of the Respondent having done so). Rather, it is the name “Roxanne”, and the Respondent’s logo, which the Respondent appears to have used (and which the Respondent says have become internationally recognized and respected within the quilting industry). The “commonly known by” claim appears to go no further than an assertion that consumers would refer to Ms. Dierdra McElroy, or her mother, as “that thimble lady”.

3. It is the domain-name holder (referred to in Paragraph 4(c) of the Policy as “you”) who is entitled to invoke the “commonly known by” defence, and who therefore must be the person or entity who has been commonly known by the at-issue domain name. In this case, the domain-name holder (the Respondent), in respect of both of the Domain Names, is “Roxanne International”. It is not clear to the Panel whether “Roxanne International” is a corporation, whether it is a partnership or other unincorporated group of individuals, or whether it is merely a trading name adopted by Ms. Dierdra McElroy. (Likewise, it is not clear if “Roxanne Products Company” is an incorporated body, unincorporated group, or a trading name adopted by Ms. McElroy). It is apparent from the Respondent’s website that the Respondent’s business covers numerous aspects of the quilting industry, and not merely the manufacture and marketing of thimbles. If that is right, it seems improbable that the operator of the business, “Roxanne International”, would have become commonly known as “that thimble lady”. If “Roxanne International” is a corporation or partnership, it would seem even less likely that it would be commonly known by the singular expression “Thimblelady” (or ‘that Thimble lady”).

4. It is not clear to the Panel precisely who the Respondent claims was known as “that thimble lady”. For approximately 10 years before 1997, Ms. Deirdra McElroy and her mother Roxanne appear to have been running the business together. It seems unlikely that both would have been commonly known as “that thimble lady”.

5. The Panel can readily understand how some consumers (perhaps having recently seen Ms. Dierdra McElroy or her mother speaking on television about the Roxanne thimble), might have greeted Ms. McElroy or her mother (not remembering their names) with the exclamation: “Oh, you’re that thimble lady”. But the use of such an expression would not on its own suggest that the person using the statement believed that the person to whom the statement was addressed was actually known by the name “thimble lady”. Rather, it would convey a meaning along the following lines: “I recognize you. You are the lady I saw (heard) on television (at a show) who manufactures (markets/was talking about) thimbles.” An example may help to illustrate the point. Suppose an actor frequently appears in television commercials for car tyres. Someone, who does not know the actor’s name, but recognizing him from the commercials, meets the actor and says: “Oh, you’re that tyre man”. Both the actor and the person greeting him in that manner would no doubt be surprised to hear it suggested that the form of greeting somehow meant that the actor was “commonly known by” the expression “Tyre Man”. Much more evidence would be required to prove that such a descriptive phrase should be elevated to the status of a name or appellation by which someone could be “commonly known”.

In conclusion on this point, the Respondent has not produced sufficient evidence to show that either it or Ms. Dierdra McElroy is or has been commonly known by either of the Domain Names. The defence based on paragraph 4(c)(ii) of the Policy is accordingly rejected.

The Panel cannot see any other basis on which the Respondent can claim to have a right or legitimate interest in either of the Domain Names. The Respondent does not appear to have used the Domain Names itself before they were registered in February 2006, and its use of the Domain Names after that date has been neither bona fide, legitimate nor fair. The Respondent’s reasons for registering the Domain Names, are stated in the Response as follows:

“In an effort to help our customers find our website through her [i.e., the Complainant’s] deluge of advertising in the United States I purchased the domain names. The average quilter in the United States is 62 years old and not terribly computer/internet savy (sic). They plug a name into Google.com and expect to find the thimble they have heard is the ultimate thimble to have. Since we have unofficially been the thimble lady for twenty years it is natural that they search under that name. When they find the Thimblelady website and her thimble is almost identical to ours and her book has the same key words in the title they think they have found the Roxanne Thimble.”

A little further on in the Response, the Respondent says:

“In an effort to help direct our customers properly during their internet searches, I discovered that the domain names thimblelady.net and thimblelady.org were not taken. I cannot ever have imagined that domain names that are up for sale could possibly be inherently already claimed by anyone with that name whether or not they actually paid for and registered the name. Thimblelady had ample opportunity over the past few years to purchase them had she wanted them.”

For the reasons set out above, the Panel is not prepared to accept the Respondent’s claim that it has “unofficially been the thimble lady for twenty years”. On the evidence produced, the Panel finds that the Respondent had not itself used the expression “Thimblelady” before February 2006, when it registered the Domain Names. Since then, the Domain Names have resolved to the Respondent’s website, through which the Respondent markets goods in competition with the Complainant.

Such a use of the Domain Names could never be regarded as bona fide, or “in connection with any bona fide offering of goods or services”. The Respondent itself refers to the Complainant in the Response as “Thimblelady”, and refers to the Complainant’s “deluge of advertising in the United States”. The Respondent must have known that some Internet users looking for websites associated with the Complainant’s Thimblelady products, would or might mistakenly visit the Respondent’s website by keying in one or other of the Domain Names (or at least be taken to a search engine results list where closely proximate links were provided to both the Respondent’s website and the Complainant’s website at thimblelady.com). Indeed, it appears that that was precisely what the Respondent intended – as the Respondent put it, “… we are using the name to help our customers accurately find the world famous Roxanne thimble they are looking for. It allows customers to see both thimbles and make sure they are getting the one they intended to purchase” (the Panel’s emphasis).

The Panel is not impressed with that explanation. The Respondent is effectively riding on the back of the Complainant’s registered trademark (and its apparently extensive advertising and promotion of that mark), by using the Domain Names to attract to the Respondent’s website at least some internet users who are responding to their awareness of the Complainant’s mark (or of the Complainant’s advertising and promotion of its THIMBLELADY products). That could never be a use of the Domain Names “in connection with a bona fide offering of goods or services”. Therefore, the Respondent cannot bring itself within the example of a right or legitimate interest described at paragraph 4(c)(i) of the Policy.

For the same reasons, the Respondent cannot bring itself within paragraph 4(c)(iii) of the Policy. The Respondent’s use of the Domain Names has quite clearly been a commercial one, and (for the reasons discussed above), it has been neither legitimate nor fair.

The Respondent has not advanced any other plausible claim to a right or legitimate interest in the Domain Names or either of them. Accordingly, the Panel finds that the Respondent does not have any such rights or legitimate interests.

Before leaving this section of the decision, reference should be made to a number of “defences” raised in the Response. First, there are allegations in the Response that goods or services of the Complainant are confusingly similar to the Respondent’s goods or services, and are being marketed in violation of the Respondent’s rights. In particular, the Respondent alleges that the Complainant’s thimble is confusingly similar to the Respondent’s Roxanne thimble, and that a book published by the Complainant has a very similar title to the Respondent’s book, and contains virtually identical photographs. The Respondent further alleges that it has received countless customer complaints from customers who have purchased a thimble from the Complainant, believing it to be one of the Respondent’s Roxanne thimbles. The Respondent says that “hundreds of people have inadvertently bought inferior THIMBLELADY thimbles”.

All of those allegations raise issues which go far beyond the scope of this administrative proceeding. The Panel is only concerned in this proceeding with the application of the Policy to the registration and use of the Domain Names, and the Panel has no jurisdiction to consider such allegations. It is for the Respondent to pursue such allegations in a Court or other appropriate forum if it wishes to do so. In the meantime, they do not provide a basis for the Respondent to claim a right or legitimate interest in the Domain Names.

Finally under this heading, the Respondent refers to the facts that the Domain Names were for sale, and that the Complainant had apparently made no move to register either of them. Neither point would be enough to confer on the Respondent any right or legitimate interest in the Domain Names. If they did, every cybersquatter who purchased a domain name which was identical to someone else’s trademark, with the intention of extorting money from the trademark owner, would have a complete defence to a complaint by the trademark owner under the Policy. That could not possibly be right. What is required to establish a defence under Paragraph 4(a)(ii) of the Policy is proof of some particular right or interest of the particular respondent. The mere fact that the Domain Names were available and had not been taken by the Complainant, does not take the Respondent far enough.

D. Registered and Used in Bad Faith

The Complainant also succeeds under this heading.

The Complainant’s trademark is identical to the Domain Names, and, as discussed, the Respondent does not have any right or legitimate interest in the Domain Names. The Respondent registered the Domain Names and pointed them to a website (the Respondent’s website) where goods are sold in competition with the Complainant’s goods.

There is no doubt that a significant number of people in the quilting industry who are familiar with the Complainant and its THIMBLELADY trademark, would reasonably but mistakenly assume that any website at one of the Domain Names would be a website associated with the Complainant. The Respondent could not have been unaware of that likelihood, and must have intended that such confusion would occur.

Those circumstances fall squarely within the category of bad faith registration and use described at paragraph 4(b)(iv) of the Policy. By using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

The Complainant has therefore proved each of the matters required to be proved under paragraph 4(a) of the Policy, and the Domain Names must therefore be transferred to the Complainant.

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 <thimblelady.org> and <thimblelady.net> be transferred to the Complainant.


Warwick Smith
Sole Panelist

Dated: May 18, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-0385.html

 

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