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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Knot, Inc. v. Ali Aziz

Case No. D2007-1006

1. The Parties

The Complainant is The Knot, Inc. of New York, United States of America, represented by Kenyon & Kenyon, United States of America.

The Respondent is Ali Aziz of Karachi, Pakistan.

2. The Domain Name and Registrar

The Disputed Domain Name <myknot.com> is registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2007. On July 12, 2007, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a Dotregistrar.com a request for registrar verification in connection with the domain name at issue. On 20 July, 2007, DSTR Acquisition VII, LLC d/b/a Dotregistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 July 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 12, 2007. The Respondent did not file a Response with the Center.

The Center appointed Alistair Payne, Dana Haviland and Nasser A. Khasawneh as panelists in this matter on September 21, 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

The Complainant runs a well-known wedding information website trading under the name “The Knot”. The Complainant alleges that the Respondent’s Disputed Domain Name is confusingly similar to “my knot” for which it has a trade mark application and confusingly similar to its trade marks in THE KNOT in the United States. The Complainant asserts that it has had exclusive rights in THE KNOT since August 1996. The Complainant also has several trade mark registrations for variations of THE KNOT. The Complainant has established its main business under the web site <www.theknot.com>.

The Respondent registered the Disputed Domain Name <myknot.com> on December 23, 2001, and currently provides click through links from <myknot.com> to other competing websites providing information on wedding preparations.

The Complainant is seeking the transfer of the Respondent’s registration for the Disputed Domain Name <myknot.com>.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the Disputed Domain Names are confusingly similar to its common law rights and trade mark applications for MY KNOT. The Complainant also asserts that <myknot.com> is confusingly similar to its registered trade mark for THE KNOT and the associated family of marks. The Complainant asserts that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names because he does not operate any business under it and has no trade marks or service marks for the name. The Complainant notes that previous WIPO UDRP panels have determined that use of a domain name for sponsored link services does not give rise to rights and legitimate interests. The Complainant also asserts that the Respondent was, at the very least, on notice of the Complainant’s trade mark for THE KNOT prior to registering the Disputed Domain Name. The Respondent cannot, therefore, demonstrate any rights or legitimate interests in <myknot.com> without a demonstrable preparation to use the Disputed Domain Name for a bona fide offering of goods and services.

Finally, the Complainant asserts that the Respondent has registered and is using the Disputed Domain Names in bad faith for commercial gain in order to create a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation and endorsement.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:

i. the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

ii. the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

iii. the Disputed Domain Name has been registered and is being used in bad faith.

The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The Panel accepts the evidence of the Complainant in this case, demonstrating numerous trade mark rights in THE KNOT. The trade mark for THE KNOT was first registered in 1998 in the United States (with a listed first filing date in 1996). The Panel also accepts that the Complainant has registered the domain name <theknot.com>. The Complainant has made substantial use of the THE KNOT trade marks, and the Panel accepts that it has developed significant reputation in these marks. The Panel notes that the Complainant has not provided the Panel with specific evidence of first use of THE KNOT trade marks for a wedding information website. However, the Panel notes that the Whois search indicates that <theknot.com> has been registered as a domain name since June 25, 1996.

The Panel accepts that the Complainant has been using the mark MY KNOT on its website and that it applied for trade marks for MY KNOT in June 2007. Aside from the trade mark application for “MY KNOT”, the Complainant has not provided the Panel with independent evidence of how long it has been using MY KNOT or whether the use predates December 23, 2001 (the date <myknot.com> was registered). However, the Complainant has provided the Panel with evidence of the nature and extent of the use of MY KNOT at the present time in order to assert common law unregistered rights in the mark. The Panel finds that the Respondent’s Disputed Domain Name is confusingly similar to “my knot”, as used on the Complainant’s website. However, the Panel does not believe that the Complainant has provided evidence as regards the nature and extent of the use of that mark in December 2001 or shown that it had rights in the MY KNOT mark at that time. As the Panel is not satisfied that the Complainant had any common law rights in MY KNOT in December 2001, the Panel will only consider the three elements required under the Policy (as referenced above) in relation to trade mark rights in THE KNOT.

The Panel finds that the Respondent’s Disputed Domain Name is confusingly similar to the Complainant’s trade mark THE KNOT and the domain name <theknot.com>, as the mere substitution of the word “my” for “the” before the word “knot” is insufficient to negate a finding of confusing similarity. See The Knot, Inc. v In Knot We Trust, LTD, WIPO Case No. D2006-0340.

Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trade marks and that Paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

As noted above, the Panel accepts that the Complainant has developed considerable reputation in the THE KNOT trade marks and owns several registered rights. The Respondent is using the Disputed Domain Names to provide a click through service to websites that compete directly with the Complainant’s website. It has been held by several WIPO UDRP panels that use of a domain name to provide click-through sponsored links to another website does not grant the registrant rights or legitimate interests in the domain name. See MBI, Inc. v Moniker Privacy Services/Nevis Domains LLC, WIPO Case No. D2006-0550 and also Royal Bank of Canada v Henry Chan, WIPO Case No. D2003-0031

Given that the Respondent has failed to respond to the Complainant’s evidence, he has not provided the Panel with any evidence of a demonstrable preparation to use the Disputed Domain Name for a bona fide offering of goods or services. The Respondent is not commonly known by the Disputed Domain Name and, as already noted, the Respondent is not making a legitimate non-commercial use of <myknot.com>.

Based on this analysis the Panel finds that the Complainant fulfils Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent registered the Disputed Domain Name in December 2001. This is four years after the Complainant registered the trade mark for THE KNOT and six years after registration of the domain name <theknot.com>. The Complainant has demonstrated that the trade mark THE KNOT and <theknot.com> have substantial reputation. On this basis the Complainant asserts that the Respondent had constructive notice of the Complainant’s rights. However, the Panel notes that the Respondent is a Pakistani individual and the Complainant has not shown that he had or should have had knowledge of the Complainant’s United States trade mark for THE KNOT in December 2001. The constructive notice argument is not generally accepted in UDRP cases where the parties are from different countries, and in this case the Complainant has not provided evidence that THE KNOT trade marks or website were well-known in 2001 or at that time could have been known by the Respondent. The Complainant has also not provided sufficient evidence to demonstrate that the Respondent intended, at that time, to trade on the goodwill or cause confusion with those marks by selling competing products through the use of the domain name. Furthermore, there is no evidence that the Respondent is a known cybersquatter or has undertaken registration of a number of well known trade marks.

The problem here is that the Complainant has waited six years from the date on which the Respondent registered <myknot.com> before initiating UDRP proceedings for the transfer of the domain name. This is not a question of laches, or prejudice to Respondent from the delay, but a question of lack of clear evidence of bad faith intent at the time of registration. The Complainant has not provided the Panel with evidence of the purpose for registration of the Disputed Domain Name or the use that was made of it over the past six years. The Panel cannot in the circumstances infer that the Respondent registered the Disputed Domain Name in 2001 for the purpose of targeting the Complainant, solely on the basis of the fact that the Disputed Domain Name is now used for the purpose of click-through links.

On the basis of the above analysis, the Panel cannot infer that the Respondent registered and used the Disputed Domain Name in bad faith in December 2001.

Paragraph 4(a)(iii) of the Policy requires that Complainant show that the domain name “has been registered and is being used in bad faith.” The Respondent has shown that the Disputed Domain Name currently is being used in bad faith, but has failed to show that it has been registered in bad faith. The Panel finds, therefore, that Paragraph 4(a)(iii), which requires both bad faith registration and use, is not fulfilled.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Complaint is denied.


Alistair Payne
Presiding Panelist


Dana Haviland
Panelist


Nasser A. Khasawneh
Panelist (Dissenting)

Date: October 5, 2007


Dissenting Opinion

I respectfully dissent from the Majority’s opinion regarding the finding on the third element; registration and use in bad faith.

For the purposes of the Policy, bad faith may be determined by evaluating four factors, which are mentioned in the policy on a non-exclusive basis (Policy – Paragraph 4(b));

(i) circumstances indicating that the registrant 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 registrant’s documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant 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 registrant has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.

It is clear that any of the above factors may be enough to give rise to a finding of bad faith, and hence the use of “or” instead of “and”.

Considering the facts of this case, I am of the opinion that bad faith according to factors (iii) and (iv) can be inferred; the fact that the Respondent is using the Disputed Domain Name to provide a directory of competing vendors and service providers for wedding related products and services from all over the world, including Europe and the United States, where the Complainant is incorporated, supports the finding of constructive knowledge on part of the Respondent of the good will of the Complainant. A large number of Internet users, who are familiar with the Complainant’s business, are likely to stumble upon the Respondent’s site if they do an Internet search, or might assume that the Complainant’s site bears the same name as that of the Disputed Domain Name. And it is this Panelist’s view that it is highly unlikely that this confusion is not apparent to the Respondent and that it is simply a matter of pure coincidence.

Therefore, it is highly likely that the Disputed Domain Name was registered to disrupt the business of the Complainant, by directing consumers to competing websites, for the purpose of commercial gain, especially given that the Respondent is not known by the Disputed Domain Name, and has no legitimate rights therein. While the Complainant does not provide clear evidence of the commission that the Respondent is receiving for the click-through service that he is providing through his website, in the absence of a rebuttal from the Respondent, it is not difficult to accept the allegation of the Complainant in this regard, considering that this is a typical arrangement for such directory websites.

Moreover, I agree with previous Panel Decisions in so far that the use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy. Such Decisions include Check Into Cash, Inc. v. Rico Marquez, WIPO Case No. D2007-0942, Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319, Verisign, Inc. v. jumbo domains, WIPO Case No. D2006-1582.

Furthermore, while I agree with the finding of the Panel on the first and second elements, I have the following observations on the analysis of these elements:

The Complainant does have common law rights in the trademark MY KNOT and the application specifies the date of first use of this trademark (June 15, 2001), which pre-dates the registration of the Disputed Domain Name. I also disagree with the Majority’s conclusion that constructive notice could not be inferred considering that the Respondent is a Pakistani residing in Pakistan. The Complainant has a very active and wide spread presence on the World Wide Web, where the Respondent clearly locates his clients. In this particular case, the use of the trade mark(s) is not confined to geographic boundaries, where this argument would be accepted. The websites listed on the Respondent’s website, include a large number of United States based websites, in addition to European websites, all of which are specialized in the same business as the Complainant’s.

Consequently, in light of the lack of response from the Respondent and all the other available evidence in this case, it is this Panelist’s view that the weight of available evidence points to the Respondent having “intentionally attempted to attract, for commercial gain, Internet users” to his site by creating a likelihood of confusion with the Complainant’s mark.

Finally, I would like to point out that the Policy does not provide for any consequences to be taken into consideration in relation to lapse of time, as to when a complainant may file a domain name case under the UDRP. Therefore, I am of the view that the consideration of time pointed out by the Majority is not relevant to the analysis of the case. To the contrary, previous WIPO UDRP Panels have ruled on several occasions in favor of complainants against domain name registrations that pre-date the registration of their trademarks, when such registration could be predicted. MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598.

Considering the above, and on a balance of probabilities, I find that the Respondent did register and is using the disputed domain name in bad faith, and therefore, I register my dissent from the Majority’s opinion.


Dissenting Panelist
Nasser Khasawneh

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-1006.html

 

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