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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Weather Shield Mfg., Inc. v. Lori Phan
Case No. D2007-1247
1. The Parties
The Complainant is Weather Shield Mfg., Inc., Medford, Wisconsin, United States of America, represented by Price, Heneveld, Cooper, DeWitt & Litton, LLP, United States of America.
The Respondent is Lori Phan, Garland, Texas, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name <visions.com> (the “Domain Name”) is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2007. On August 23, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On August 27, 2007, 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. 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 on September 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2007. The Response was filed with the Center on September 22, 2007.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 1, 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.
On October 2, 2007, the Complainant submitted a Reply to the Response.
4. Factual Background
The Complainant Weather Shield Mfg., Inc. is a Wisconsin corporation based in Medford, Wisconsin. For some fifty years, it has manufactured windows and doors. These are now produced in five locations in the states of Wisconsin and Utah and sold throughout the United States.
The Complainant uses several trademarks that incorporate the word “Visions” to brand its VISIONS line of vinyl windows and doors. Its registered United States trademarks include the following standard character marks:
FIRST USE IN COMMERCE
June 22, 1999
February 3, 1992
October 5, 1999
August 5, 1998
July 23, 2002
The Complainant also holds several registered design marks, at least two of which incorporate the word “Visions,” and has applied for the registration of VISIONS 3000. The Complainant asserts that it has spent “considerable time and money advertising and marketing its products bearing its well-known marks.” The Complainant operates a website at “www.weathershield.com.”
The Respondent describes herself as an “IT manager” who resides in Garland, Texas. She registered the Domain Name in June 1997. According to the Response (and as corroborated by pages stored by the Internet Archive Wayback Machine at “www.archive.org”), the website to which the Domain Name has resolved since June 1997 has been used at different times to advertise website design and technical services, to display personal “scrapbook” photographs and family information, and to advertise third-party goods and services.
For several months in 2000, the Domain Name resolved to a website operated by GreatDomains.com, a domain name reseller. In July 2000, according to an archived page from the GreatDomains.com website, the Domain Name was offered for $100,000. On several occasions third parties have expressed an interest in purchasing the Domain Name, as evidenced in emails provided by the Respondent, and the Respondent has declined to sell.
Printouts of the Respondent’s website in August 2007 show that it was being used at that time for “focused advertising.” The website displayed featured advertising links for a variety of goods, services, and nonprofit organizations using the word “visions,” such as Visions in Education, World Visions, JLI vision systems, Visions Cookware, and Health Visions, Inc.
The Respondent reports that this website was hosted by Site Launcher LLC, an affiliate advertising network that automatically displays pay-per-click advertising links based on keywords submitted to search engines. The Site Launcher revenue sharing agreement (found at “www.sitelauncher.com”) gives Site Launcher control over the advertisers and content displayed on the website once the domain owner signs the agreement and points its name servers to an address provided by Site Launcher.
The August 2007 printouts supplied by the Complainant show (at the bottom of each page and in the right-hand frame) that the keywords for advertising automatically displayed on the website were “business plans,” “computer glasses,” “contacts,” “eye doctor,” “eye glasses,” “horoscopes,” “incorporate,” “inventions,” “psychic,” “sunglasses,” “tarot readings” and “vision insurance.” None of these appear in any way related to the Complainant’s trademarked VISIONS windows and doors. However, if a website visitor typed the words “doors” or “windows” into the “Search” box on the website, the search engine would deliver a page filled with relevant advertising links, including advertisements for products such as vinyl replacement windows offered by the Complainant’s competitors. The Respondent reports that Site Launcher suspended use of the Domain Name when the Complaint was filed.
The Domain Name does not currently resolve to a website. The Respondent continues to use the domain, however, for family and business email addresses, as she says she has done since 1997.
The parties both allude to communications from the Complainant to the Respondent, apparently including telephone messages and emails (copies were not furnished) beginning in late 2006 and initially expressing the Complainant’s offer to purchase the Domain Name. The Complainant reportedly sent a cease-and-desist letter to the Respondent in June 2007, demanding transfer of the Domain Name. This proceeding followed.
5. Parties’ Contentions
The Complainant argues that the Domain Name is identical or confusingly similar to its VISIONS marks, and that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant asserts that the Respondent had “constructive notice” of its registered trademarks and should have conducted an online trademark search before registering the Domain Name. The Complainant concludes that the Respondent registered and used the Domain Name in a bad-faith attempt to mislead Internet users for commercial gain.
The Respondent counters that “visions” is a dictionary word that she employed in a Domain Name used for a number of legitimate personal and business purposes over the past decade. She denies prior knowledge of the Respondent or its marks. The Respondent claims that the Complainant’s “harassment tactics” justify a finding of Reverse Domain Name Hijacking.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a Respondent of a disputed domain name, a Complainant must demonstrate each of the following:
(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 and is being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Supplemental Filings
The Rules do not explicitly provide for supplemental filings in a Policy proceeding, except at the request of the Panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the Panel to conduct the proceeding “with due expedition” and empowers the Panel to “determine the admissibility, relevance, materiality and weight of the evidence”. Therefore, UDRP Panels are reluctant to countenance delay through additional rounds of pleading and typically accept supplemental filings only to consider new evidence or provide a fair opportunity to respond to new arguments.
The Complainant’s Supplemental Filing offers evidence of the Respondent’s listing the Domain Name for sale for $100,000 in 2000. It also replies to the Respondent’s claim of Reverse Domain Name Hijacking. The Panel considers it appropriate to allow a response to the claim of Reverse Domain Name Hijacking, and the Panel does not find that this submission has resulted in undue delay or prejudice to the Respondent. The Panel accordingly accepts the Supplemental Filing for consideration in this proceeding.
B. Identical or Confusingly Similar
The Complainant indisputably holds a registered trademark for VISIONS, which is identical to the Domain Name (disregarding the “.com” suffix, which is a necessary part of the address in the Domain Name System and nondistinctive for trademark and Policy purposes). This is sufficient to establish the first element of the Complaint.
With this finding, it is unnecessary to determine whether the Domain Name is confusingly similar to the Complainant’s registered VISIONS 1000 and VISIONS 2000 trademarks for purposes of the first Policy element, and it is also unnecessary to consider whether the Complaint can be grounded on design marks that incorporate the word “Visions.”
C. Rights or Legitimate Interests
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 Complainant states without contradiction that it has never authorized the Respondent to use its VISION marks.
The Respondent states that she conducted business under the names “Visions Web Design” and “Visions Consulting” before she took a full-time position that left her no time for independent contracting. This assertion is supported by the fact that “Visions Web Design” appears on archived copies of the website to which the Domain Name formerly resolved.
The website to which the Domain Name has resolved over the past decade has at times been noncommercial (a photographic family “scrapbook”) and at times commercial, advertising the Respondent’s services or the goods and services of third parties. Such noncommercial use would be legitimate so long as it was “without intent for commercial gain to misleadingly divert consumers.”
The Respondent has also made commercial use of the Domain Name for extended periods in the form of third-party marketing, pay-per-click advertising, and listing the Domain Name for resale. These might, according to the circumstances, represent use in connection with a bona fide offering of goods or services, particularly where the Domain Name is a dictionary word and there is not persuasive evidence that the Respondent was more likely than not aware of the Complainant’s marks. See, e.g., Media General Communications, Inc. v. Rarenames, WebReg,
WIPO Case No. D2006-0964.
Thus, the Respondent could conceivably have legitimate interests in using the Domain Name, unless it could be shown, for example, that these simply disguise a bad-faith intent to mislead Internet users or extort an excessive purchase price from the Complainant. Those possibilities are addressed below in connection with the “bad faith” element of the Complaint.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that indicate bad faith, including the following:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name, or [. . . ]”
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The Complainant does not expressly refer to these provisions of the Policy, but it clearly argues that the Respondent “misled” Internet users for gain, earning revenues from pay-per-click advertising that included links to the Complainant’s competitors. The Complainant also cites the Respondent’s listing of the Domain Name for sale for $100,000 in 2000 as negating the “personal use” claimed by the Respondent.
There is no evidence that the Respondent tried to sell the Domain Name to the Complainant or its competitors, however. Given the varied uses of the Domain Name over the past ten years, it would be hard to determine that it was registered “primarily for the purpose” of selling it to the Complainant. Moreover, offering the Domain Name for sale to the public does not of itself in this case establish the Respondent’s bad faith. The Domain Name is a desirable dictionary word with many possible associations, and there is no persuasive evidence that the Respondent was even aware of the Complainant’s marks at the time.
This is, in fact, the fundamental weakness of the Complainant’s arguments for bad faith. The record simply does not support an inference that the Respondent must have registered the Domain Name in an effort to exploit the Complainant’s VISIONS marks.
The Complainant claims “constructive notice” based on its trademark registrations and asserts, without supporting evidence, that the VISIONS marks were “famous” in 1997. The Complainant contends that it is “inconceivable” that the Respondent could have registered the Domain Name in good faith; the Respondent could have “no plausible good faith explanation” for using the Domain Name, especially since its website could be made to display links to the Complainant’s competitors.
These bare assertions are not sufficient to sustain the Complainant’s burden of persuasion on bad faith, in the face of the Respondent’s plausible reasons for choosing and using the Domain Name, based on her consulting and Internet businesses and her family interests, and her denial of actual knowledge of the Complainant or its marks. The VISIONS mark is a dictionary word. The Complainant does not even claim first use of the VISIONS mark until August 1998, more than a year after the Respondent registered the Domain Name. The VISIONS 2000 mark, registered in 1999, shows first use in 1992, but the Complainant has not established the fame of that mark by 1997. The only relevant trademark that was actually registered before the Domain Name is a VISIONS 2000 design mark. While in some cases a word or words combined with other elements may be distinctive and protectable, the words alone (as found in a domain name) may not. See Sidamsa-Continente Hipermercados, S.A. v. Rose Communications, S.L.,
WIPO Case No. D2000-1748. The evidence in the record of this proceeding does not support the conclusion that the word “visions” alone, used by thousands of varied businesses, had by 1997 acquired distinctiveness as associated with the Complainant’s products. And the Complainant, a Wisconsin manufacturer of doors and windows, has not produced evidence of the Respondent’s actual knowledge of the marks or demonstrated the fame of the marks in 1997 sufficient to discredit the Respondent’s denial of knowledge of the Complainant. That denial is credible in the case of an individual in Texas in an entirely different line of business.
The Complainant emphasizes the fact that a website visitor could enter “doors” or “windows” in the search box of the website most recently operated by Site Launcher, thereby generating links to competing manufacturers of doors and windows. But this search engine function does not establish that the Respondent was “irresponsible” as the Complainant asserts, much less that the Respondent “intentionally” misled Internet users for gain. The keywords chosen for the advertising website had nothing to do with doors or windows, and there is no evidence of the Respondent (or Site Launcher) using the website to target a famous or distinctive mark. Given the website’s description of its theme and topics, it seems rather unlikely that anyone but the Complainant’s legal counsel used the website to search for doors and windows.
On this record, the Panel concludes that the Respondent had plausible and legitimate reasons for registering and using this particular Domain Name. The Complainant has not established that the Domain Name was, more likely than not, registered and used in bad faith.
E. Reverse Domain Name Hijacking
The Respondent requests a finding of reverse domain name hijacking. This is defined in the Definitions section of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Paragraph 15(e) of the Rules provides as follows:
“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 an abuse of the administrative proceeding.”
The Rules do not provide for monetary remedies or specific relief in such a case.
The Respondent has not established that the Complaint was brought “primarily to harass” her. The Complainant has relevant, registered trademarks that it sought to protect, and the sketchy history of communications between the parties does not indicate improper conduct in asserting the Complainant’s interests. The Panel therefore declines to characterize the Complaint as an instance of reverse domain name hijacking.
For all the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Date: October 10, 2007