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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boutique Tristan & Iseut Inc. v. B & B

Case No. D2007-1816

1. The Parties

The Complainant is Boutique Tristan & Iseut Inc. of Canada, represented by Lйger Robic Richard, s.e.n.c., Canada.

The Respondent is B & B of United States of America, represented by John Berryhill, United States of America.

2. The Domain Name and Registrar

The disputed domain name, <tristan.com> (the “Domain Name”), is registered with Moniker Online Services, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2007. On December 10, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 13, 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 December 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was originally January 7, 2008, but it was extended at the Respondent’s request and by agreement with the Complainant to January 18, 2008. The Response was filed with the Center on January 18, 2008.

The Center appointed Tony Willoughby, Christopher J. Pibus and Geert Glas as panelists in this matter on February 12, 2008. 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.

In its Response, the Respondent points out that the Complaint exceeds the word limit of 5,000 words stipulated in the Supplemental Rules by a very significant margin. Even if the word limit is intended only to cover the substantive section of the Complaint (Section V), the word count is excessive, that section on its own amounting to well over 6,300 words.

Manifestly, the Complaint is non-compliant in this regard. The Panel’s options are (i) to reject the Complaint out of hand; (ii) to remit it back to the Complainant to render it compliant (i.e. reduce the word count); (iii) to ignore the deficiency and proceed to a decision. If (i) is to be treated as a dismissal ‘without prejudice’, the distinction between (i) and (ii) may simply be as to whether or not a new filing fee will become payable.

The Panel understands that ordinarily issues of this kind are dealt with by the Center before the papers are passed to a panel, hence the verification by the Center (recited above) that the Complaint satisfies the various formal requirements. However, in this case, unusually, the defect passed unnoticed and the Complaint slipped through the net.

In this particular case the Respondent, while making objection to the deficiency, has nonetheless responded fully to the Complaint and the members of the Panel have all read the papers put before them. In these circumstances, and having regard to the Panel’s unanimous view as to the outcome of this case on the merits, the Panel believes that no useful purpose would be served by the Panel in not proceeding to a decision on the merits. Ordinarily, the Center enforces the word limits provided by the Supplemental Rules. This case was an aberration, an oversight.

On February 19, 2008, by which time the Panel was on the point of finalizing its decision, the Respondent lodged with the Center a Procedural Inquiry requesting the Panel “to indicate in its Decision the manner in which prolix complaints should be considered, and whether UDRP Respondents should be required to guess at whether surplus argumentation need be addressed in a Response.”

The view of this Panel is that on those very rare occasions where a non-compliant complaint slips through the Center’s screening process, a respondent considering the deficiency to be material should draw it to the Center’s attention without responding to the complaint until it has been rendered compliant. In this way the deficiency can be rectified without the complainant being given advance notice of the substance of the respondent’s case. If the respondent notices the deficiency, but does not regard it as material, it does not need to take the point and the case can proceed as normal.

If a case such as this one does slip through the net, there are, as indicated above, various options open to a panel. This Panel believes that it would be unwise for it to seek to set down a hard and fast rule. In the present case, however, had this Panel decided not to proceed to a decision on the merits, it would have dismissed the complaint without addressing the merits and without prejudice to the Complainant re-filing the complaint in a compliant form.

4. Factual Background

The Complainant is a Canadian fashion house, well-known in Canada and parts of the United States of America. It was incorporated in 1985 to take over an unincorporated business of its founders, which commenced in 1973.

The Complainant uses the name “Tristan” in various forms, namely as part of its corporate name “Tristan & Iseut”, as part of the trade mark TRISTAN & AMERICA and on its own as the trade mark for its ladies’ clothing.

The Complainant is the registered proprietor of various trade mark registrations of or including the name “Tristan”, the earliest of which appears to be a Canadian word mark registration for the name “Tristan et Iseut”. That registration was applied for in January 1987 and came through to registration in February 1988. The Complainant is also the registered proprietor of US trade mark and service mark registration number 1995821 registered on August 20, 1996 (filed September 16, 1992) TRISTAN (word) for a wide range of goods and services in the clothing and accessories field.

The Domain Name was first registered in 1995, but was acquired by the Respondent in or around October, 2005. Since acquisition by the Respondent the Domain Name has been connected to parking sites featuring sponsored links through which the Respondent has been earning pay-per-click or referral revenue.

From July, 2006, the Complainant (using the services of a domain name broker) made several approaches to the Respondent with a view to purchasing the Domain Name from the Respondent. Initially, the Respondent did not reply. However, after a further approach in January, 2007 the Respondent indicated that it would not accept less than a five figure sum. The broker responded indicating that the Complainant was prepared to pay $10,000. The Respondent responded on February 20, 2007 indicating that it was not prepared to sell at that figure. This provoked the question “What would interest you in a sale then?” to which the Respondent replied that they were so far apart (not in the same ballpark) that the negotiations were unlikely to lead anywhere. The broker then asked if $100,000 would be enough and the Respondent replied that it probably would. There the correspondence ended.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to trade marks and service marks in which it has rights. It points to its various trade mark registrations and claims, in addition, common law rights in respect of those marks as a result of the reputation and goodwill that it has developed through use of those marks over the years.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant recites the three sets of circumstances set out in paragraph 4(c) of the Policy, which a respondent can establish to demonstrate relevant rights and legitimate interests, but contends that none of them is applicable. The Complainant asserts that it has granted the Respondent no permission to use its TRISTAN trade mark. The Complainant also makes a point about the Respondent’s Whois registration contact details observing that:

a) the telephone number for the Respondent on the Whois record is not for the stated contact, Bryan Graves, but a presumed relative, Bruce Graves;

b) the Respondent’s address is not in a commercial, industrial or urban area, but a rural area;

c) the Complainant has not been able to locate a company incorporated under the name of the Respondent at the Whois address.

The Complainant contends that the Domain Name was registered and is being used in bad faith within the meaning of sub-paragraphs 4(b)(i), (iii) and (iv) of the Policy. These matters will be aired in greater detail below.

B. Respondent

The Respondent opens by drawing attention and objecting to the Complainant’s breach of the Rules and Supplemental Rules in respect of the Complaint’s word count (see Section 3 above).

The Respondent does not dispute that the Complainant has trade mark rights in the name TRISTAN limited to clothing and the operation of clothing boutiques.

The Respondent contends that the Complaint contains no contention that the Respondent has no rights or legitimate interests in respect of the Domain Name and is therefore defective. Pursuant to paragraph 4(a)(ii) of the Policy a Complainant is required to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name. [The Panel notes that the Respondent appears not to have appreciated that the section of the Complaint covering pages 21 to 23 does in fact deal with this aspect. The confusion was no doubt caused by the fact that the issue was dealt with out of its natural order (i.e. after instead of before the passage dealing with paragraph 4(a)(iii) of the Policy).]

The Respondent denies that the Domain Name was registered and is being used in bad faith. The essence of the Respondent’s defense is the proposition that “[t]he determination of bad faith is made when the evidence demonstrates that registration of the domain name was motivated by a willful intent relating to the Complainant’s marks.” The Respondent denies any knowledge of the Complainant at time of registration of the Domain Name.

In support of these contentions the Respondent has raised a number of matters, which, where of significance to the decision, will be aired more fully below.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:

(i) The Domain Name is identical or confusingly similar to a trade mark 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 in bad faith and is being used in bad faith.

B. Identical or Confusingly Similar

There is no dispute between the parties that the Complainant is the registered proprietor of a US trade mark and service mark registration of the word TRISTAN.

The Panel finds that the Domain Name (absent the generic domain suffix) is identical to a trade mark or service mark in which the Complainant has rights.

C. Rights or Legitimate Interests

In light of the Panel’s finding under the next head, it is unnecessary for the Panel to address this issue.

D. Registered and Used in Bad Faith

The Complainant contends that the Domain Name was registered and is being used in bad faith within the meaning of sub-paragraphs 4(b)(i), (iii) and (iv) of the Policy.

All these three sub-paragraphs call expressly for a bad faith intent directed at the Complainant. Sub-paragraph 4(b)(i) covers a situation where a respondent has registered the domain name in issue with the intention of selling it to the complainant or a competitor of the complainant at a profit. Sub-paragraph 4(b)(iii) covers a situation where a respondent has registered the domain name in issue with the intention of disrupting the business of the complainant. Sub-paragraph 4(b)(iv) concerns a respondent who is intentionally using the domain name in issue to derive commercial gain by deceit, by misleading Internet users into believing that the respondent’s website is in some way associated with the complainant.

None of those sub-paragraphs can apply unless at the very least the Respondent was aware of the Complainant when registering the Domain Name and/or, perhaps, at commencement of the use to which objection is taken.

In paragraph 52 of the Complaint the Complainant has cited paragraph 3.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions in support of the contention that some panels have on occasion adopted a concept of constructive knowledge to support a finding of bad faith in circumstances where actual knowledge of the complainant’s rights has not been proved. However, the Complainant omitted to mention that that section of the WIPO Overview commences “Most panels have declined to introduce the concept of constructive notice into the UDRP.” This Panel does not regard this case as an appropriate case for applying any such concept.

The Respondent has categorically denied all knowledge of the Complainant at all material times. Accordingly, for this Complaint to succeed, the Complainant has to satisfy the Panel that the Respondent is being untruthful. What evidence is there before the Panel to justify the Panel taking that view?

There is no hard evidence of any kind to prove that the Respondent registered the Domain Name with knowledge of the Complainant, so if the Panel does decide in the Complainant’s favour on this point, it can only have done so by drawing inferences adverse to the Respondent.

Commonly, inferences adverse to a respondent will be drawn where the domain name in issue is so obviously and exclusively referrable to the complainant, that no other conclusion is possible. This is likely to be the case where the complainant’s trade mark is a household name and/or of a uniquely distinctive nature. An adverse inference may also be drawn where the respondent’s behaviour in the dispute or in the past merits it.

Here, the Domain Name is a male first name; not a very common name, but nonetheless a male first name. It is perhaps best known for the name of one of the participants in the medieval romantic story of Tristan and Iseult/Isolde, from which the Complainant’s corporate name is derived.

Tristan is not a name, which is so well-known as a trade mark of the Complainant, that the Complainant is the obvious entity to spring to one’s mind when the name is mentioned. It might be, if one were employed by the Complainant or a purchaser of the Complainant’s products or a resident of an area where the Complainant has an outlet. However, as the Complainant has observed, the Respondent is the creature of two men, Bryan and Bruce Graves, residents in a rural community in Delaware and the trade mark is a trade mark used by the Complainant for ladies’ fashion goods and services.

The Complainant contends that the Respondent’s abusive intent is apparent from the exchange of emails, which took place early last year. That exchange was initiated by an earlier series of approaches to the Respondent by the Complainant’s broker wanting to know if the Respondent was prepared to sell the Domain Name. Initially, the Respondent failed to respond, but it eventually indicated that it would accept nothing less than a 5-figure sum. The Complainant’s broker sent a ‘chaser’ offering $10,000. On that offer being turned down, the broker asked if $100,000 would suffice. The Respondent said that it probably would suffice and the correspondence terminated there. Given that the Respondent had spent over $8,000 on acquiring the Domain Name, the Panel can understand why the Respondent regarded the offered $10,000 as being inadequate. In any event, there is nothing in that exchange of emails which throws any light on what the Respondent’s motives were in acquiring the Domain Name. Specifically, the Panel is not prepared to accept that it proves that the Respondent registered the Domain Name for the purpose of selling it to the Complainant at a profit.

Is there any other reason to suppose that the Respondent is likely to have selected the name with the Complainant’s trade mark in mind? There is no evidence before the Panel to suggest that the Respondent is in the habit of hijacking other people’s trade marks in this way and there is no evidence that the Respondent’s use of the Domain Name has been specifically targeted at fashion goods and services. The Respondent has been using the Domain Name to link it to various parking pages featuring sponsored links through which the Respondent derives pay-per-click or referral income. If the sponsored links have a preponderance in any direction, it appears to be in the direction of the operas of Wagner and primarily, Tristan und Isolde. However, the spread of links is a wide one and not obviously fashion orientated, although for a time one of the many categories of links featured was a ‘clothing’ category.

In addition, the Respondent has offered an explanation as to its interest in the Tristan name. In Mr. Graves' sworn Declaration, he explains that he became interested in the Domain Name in 2005 because he had learned that a feature film was to be released in 2006, based on the Tristan story. Accordingly, the Respondent has actually provided at least one reason for the Panel not to draw the inference of bad faith.

The Complainant objects to the Respondent profiteering out of its trade mark in this way, but it is noteworthy that in the Complaint (paragraph 73) the Complainant expressly acknowledges by reference to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions “that if a respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant’s rights in that word, then it has a legitimate interest”. The Respondent says that it purchased the Domain Name for a sum in excess of $8,000 for the value of the name “as a common name per se”. While there is scope for arguing as to whether or not “Tristan” is a common name, the Panel has no difficulty in accepting that as a male name it has a substantial (i.e. not insubstantial) value.

In parts of the Complaint the Complainant gets close to suggesting that the mere commercialization of the Domain Name via a pay-per-click parking site is inherently abusive. That is not the case. All depends upon the Domain Name and the Respondent’s motives in relation to it.

The Complainant has failed to satisfy the Panel that the Domain Name was registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.