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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Castlemaine Perkins Pty Limited v. Jean Romain Colombani, Colombani Web Holding

Case No. D2007-1038

 

1. The Parties

The Complainant is Castlemaine Perkins Pty Limited, Sydney, New South Wales, Australia, represented by Mallesons Stephen Jaques, Sydney, New South Wales, Australia.

The Respondent is Jean Romain Colombani, Colombani Web Holding, Aix en Provence, France, represented by John Berryhill, Media, Pennsylvania, United States of America.

2. The Domain Name and Registrar

The disputed domain name <xxxx.mobi> is registered with NameScout Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2007. On July 18, 2007, the Center transmitted by email to NameScout Corp. a request for registrar verification in connection with the domain name at issue. On July 19, 2007, NameScout Corp. 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 25, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2007. The Response was filed with the Center on August 14, 2007.

The Center appointed William R. Towns, Tony Willoughby and David E. Sorkin as panelists in this matter on September 11, 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 is the owner of more than fifty (50) trademark registrations in Australia for the XXXX mark. Most of these registrations are for the use of the mark in relation to beer, ale, and related beverages and products. The Complainant also has registered its XXXX mark in a number of other jurisdictions, including the United States of America, the United Kingdom, the European Union, Canada, and New Zealand. The Complainant further has registered the domain name <xxxx.com.au>, with which its official website is associated, as well as a number of other domain names incorporating its XXXX mark.

The Respondent registered the disputed domain name <xxxx.mobi> on September 26, 2006. The disputed domain name resolves to a website, “www.xobile.com”, which offers pay-per-view pornographic movies for viewing on mobile phones. The Respondent does not operate the “www.xobile.com website”. There are a number of top-level domain names comprised of or including the repeating letter “x” that are associated with adult-oriented websites or provide links to such websites, including the <xxxx.org>, <xxxx.net>, <xxxx.info> and <xxxx.biz> domain names.

 

5. Parties’ Contentions

A. Complainant

The Complainant maintains that it has used the XXXX mark in commerce since as early as 1894, and that it has obtained numerous registrations for its XXXX mark in Australia and in a number other jurisdictions around the world. The Complainant asserts that it has spent considerable amounts on the promotion and marketing of the XXXX brand both in Australia and internationally, and that the XXXX brand has a strong reputation both in Australia and elsewhere. Based on such considerations and extensive sales of its XXXX-branded products in Australia and elsewhere, the Complainant asserts that its XXXX mark is entitled to protection as a famous mark.

The Complainant contends that the disputed domain name is identical or confusingly similar to its XXXX mark. According to the Complainant, the Respondent has no rights or legitimate interests in the domain name because (1) the Respondent has no connection or affiliation with the Complainant and has not been licensed or otherwise authorized to use the Complainant’s mark; (2) the Respondent is not commonly known by the disputed domain name; (3) the Respondent is not directly operating an active website with the disputed domain name; (4) the word “xxxx” – as opposed to “xxx” – is not a generic identifier or descriptor for pornography; and (5) based on the Respondent’s pattern of .mobi domain name registrations it is difficult to believe that the Respondent registered the disputed domain name with any intention of establishing a bona fide website.

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith to divert Internet users to a pornographic website for commercial gain, by creating a likelihood of confusion with the Complainant’s famous mark as to the source, sponsorship, affiliation or endorsement of this pornographic website. The Complainant further contends that the Respondent’s use of the disputed domain name in connection with a pornographic website tarnishes the Complainant’s trademark and business reputation, and that the Respondent, as an experienced and expert domain name and Internet user (i.e., a “domainer”), was aware or should have been aware of the Complainant’s mark, which further evidences the Respondent’s bad faith registration and use of the disputed domain name.

B. Respondent

The Respondent maintains that he registered and is using the disputed domain name in good faith. The Respondent’s position is that the Complainant, having registered and used the XXXX mark in relation to beer, ale, and related beverages and products, does not have the right to exclude others from registering and using Internet domain names incorporating the term “xxxx” for unrelated and non-confusing purposes. The Respondent contends that the use of domain names consisting of the repeated letter “x” in association with online adult content is pervasive in virtually every major top-level domain. The Respondent maintains that he registered and is using the domain name in association with adult content, and that his descriptive use of the domain name for this purpose does not violate the UDRP. To the contrary, the Respondent asserts that he has acquired rights and legitimate interests in the disputed domain name through such use, and that his registration and use of the domain name therefore cannot be said to be in bad faith.

 

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent 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 with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar to Trademark Rights

The Panel concludes that the disputed domain name <xxxx.mobi> is identical to the Complainant’s XXXX mark, in which the Complainant beyond question has established rights through registration and use. The Respondent appears to argue that no identity or confusing similarity can be found because (1) the Complainant has provided no evidence of the use of its XXXX mark in France, where the Respondent is domiciled, and (2) the Complainant’s use of the mark, for the most part, is limited to beer, ale, and related beverages and products.

The Panel finds the Respondent’s arguments unpersuasive. For the Internet purposes of paragraph 4(a)(i) of the Policy, the question of identity or confusing similarity is evaluated based on a comparison of the complainant’s mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson Sr., WIPO Case No. D2000-1525. Thus, the Panel compares the mark and the domain name alone, independent of the use factors usually considered in a traditional trademark infringement action. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe’s Internet Cafe, WIPO Case No. D2000-0068.

Based on such a comparison, the Panel concludes that the disputed domain name is identical to the Complainant’s mark. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, the Complainant is required to make a prima facie showing under paragraph 4(a)(ii) of the Policy in order to shift the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name under paragraph 4(c). The Panel notes that the disputed domain name is identical to the Complainant’s mark, and it is uncontroverted that the Complainant has not authorized the Respondent to use the Complainant’s mark or to register a domain name that corresponds to the mark. Nevertheless, the Respondent is using the disputed domain name, which is identical to the Complainant’s mark, to direct Internet users to an adult-oriented website. In view of these circumstances, the Panel is persuaded that a prima facie showing under paragraph 4(a)(ii) has been made. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) 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.

The Respondent maintains that the registration and use of domain names consisting of the repeated letter “x” in association with online-adult content is pervasive in virtually all major top-level domains. The Respondent has provided evidence of “xxxx” domain names registered in top-level domains that are so used, namely the <xxxx.org>, <xxxx.net>, <xxxx.info> and <xxxx.biz> domain names. From this Respondent argues that the Complainant cannot claim exclusive Internet rights to the term “xxxx” arising from the Complainant’s registration and use of its trademark in relation to beer and related products. The Respondent consequently asserts that it has the right to register and make a descriptive use of the disputed domain name.

A number of panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant. See National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Thus, where a respondent registers a domain name consisting of “dictionary” terms because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. See also Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 (domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark).

While paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name once the complainant has made a prima facie showing, the ultimate burden of proof with respect to all three elements of paragraph 4(a) of the Policy remains with the complainant. Because, as discussed below, the Panel concludes that the Complainant has failed to meet its burden of proof respecting bad faith registration and use under paragraph 4(a)(iii) of the Policy, a determination whether the Respondent has established rights or legitimate interests in the disputed domain name is not necessary to the Panel’s decision in this case.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent 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;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

As noted above, the Respondent has presented evidence of the prevalent use of domain names consisting of the letter “x” repeated any number of times in relation to websites providing adult content. The Respondent appears to be making such a descriptive use of the disputed domain name here. Although the Complainant asserts that the Respondent is in bad faith under paragraph 4(b)(iv) of the Policy, the Complainant has not presented any persuasive evidence of bad faith registration or use under any of the subdivisions of paragraph 4(b), and the Panel otherwise is unable to conclude on balance from the circumstances of this case that the Respondent registered the disputed domain name with the aim of profiting from and exploiting the Complainant’s mark. See CNR Music B.V. v. High Performance Networks, Inc., WIPO Case No. D2005-1116. Accordingly, the Panel concludes that the Complainant has failed to satisfy its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.