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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fashiontv.com GmbH v. Mr. Chris Olic

Case No. D2005-0994

1. The Parties

1.1 The Complainant is Fashiontv.com GmbH, Munich, Germany, represented by Ron C. Jakubowicz, Germany.

1.2 The Respondent is Mr. Chris Olic, New York, United States of America, represented by John Berryhill, United States of America.

2. The Domain Name and Registrar

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

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2005. On September 19, 2005, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On September 26, 2005, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

3.2 On September 26 the Center issued a Complaint Deficiency Notification to the Complaint notifying it of the following deficiencies in the Complaint:

The Complaint does not describe the grounds on which it is made, as required by Rules, paragraph 3(b)(ix). More specifically, the Complaint does not provide evidence of lack of rights or legitimate interest on the part of the Respondent in respect of the domain name, nor does it specifically allege that the Respondent has used the domain name in bad faith.

3.3 In response to this notification the Complainant filed amendments to the Complaint on October 3, 2005. The Center verified that the Complaint as amended 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”).

3.4 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 October 5, 2005. In accordance with the Rules, paragraph 5(a), the due date for a response was October 25, 2005. A purported response was filed with the Center on October 27, 2005 (the “Response”).

3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on November 4, 2005. 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.

3.6 As is described in more detail later on in this decision on November 10, 2005, the Panel issued an order pursuant to paragraph 12 of the Rules for further submissions to be made by the Complainant and the Respondent in connection with the status of the Complainant’s trademark applications (the “Procedural Order”). Pursuant to the Procedural Order, the Complainant filed its submissions on November 18, 2005 (the “Complainant’s Supplemental Submission”) and the Respondent filed its reply on November 28, 2005 (the “Respondent’s Supplemental Reply”). The Procedural Order also provided that the issuing of a decision in this dispute be postponed.

4. Procedural Matters

4.1 It is convenient before setting out the submissions of the parties and the factual background to this Complaint, to deal with two procedural issues in this case. They are (i) to what extent the Panel should take into account the late Response submitted by the Respondent and (ii) the circumstances surrounding the issue of the Procedural Order and to what extent the Panel is prepared to take into account materials and submissions filed by the parties in purported pursuance of the Procedural Order.

A. The Late Response

4.2 In DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers, WIPO Case No. D2003-0780 and 1099 Pro, Inc. v. Convey Compliance Systems, Inc., WIPO Case No. D2003-0033 panels have held that late responses should be disregarded “absent good cause”.

4.3 This Panel also addressed the issue of late responses in its decision in HQ UK Limited v Head Quarters, WIPO Case No. D2003-0942. In that decision the Panel noted that an “exceptional case” was required under paragraph 10(c) of the Rules for extensions of time under the Rules and expressed the view that the circumstances that must be shown for a late submission to be accepted are at least as strict. In that decision the Panel went on to note as follows:

“Further, the comments of the majority of the panelists in 1099 Pro, Inc. v. Convey Compliance Systems, Inc., WIPO Case No. D2003-0033 would seem to suggest that panels are now likely to take a stricter view on whether a party has shown good cause than might have been the case when the UDRP process was still relatively new”.

4.4 Indeed, as was more recently pointed out by the panel in the case of Museum of Science v Jason Dare, WIPO Case No. D2004-0614, “many panels have disregarded late filed responses making clear that it is important to apply the Rules as written, absent a good reason, otherwise parties will feel free to disregard deadlines and Respondents will regularly submit late responses”.

4.5 It is for the party seeking to submit a late submission to provide justification for doing so. So has the Respondent shown good cause or exceptional circumstances in this case?

4.6 The Respondent claims that it has “encountered difficulty in locating the materials provided as evidence hereto under the ‘bad faith’ criterion within the 20 days permitted by the Policy”. Further it argues that the delay was not material since the Response was filed prior to any consideration of the Complaint by the Panel and that the harm on the Respondent should the Response not be considered by the Panel outweighs any harm to the Complainant should the Response be taken into consideration.

4.7 Whilst the lack of impact on the Complainant is an important factor, in the view of the Panel this is not sufficient. The Respondent must also give reasons for the delay and the greater the delay the more compelling those reasons. The Panel believes that a mere assertion by the Respondent of “difficulties” in obtaining evidence, without any explanation of what those “difficulties” were, is not sufficient. Further the materials proffered by the Respondent as “evidence … under the ‘bad faith’ criterion” are limited (i.e. a two page domain name transfer agreement and a receipt) and it is certainly not apparent on the face of these documents why they would be “difficult” to locate. In the circumstances, the Panel has decided to disregard the Response when considering this matter.

4.8 This may appear very harsh given that the delay in question in this case was short (only 2 days) and the Complainant had effectively been given additional time to amend its Complaint. Indeed, had consideration of the Respondent’s submissions in this case had a bearing on the outcome of the case, the Panel may have considered whether a more appropriate course would have been to issue a procedural order directed to the Respondent that it provide a further explanation of, and evidence in relation to, its delay. However, for reasons that will become apparent, this has not proved necessary.

B. The Procedural Order

4.9 As is described in greater detail later on in this decision the Complainant in its Complaint relied for the purposes of paragraph 4(a)(i) of the Policy upon two “trademarks” (the “Trademarks”). The Complainant asserted that it had “registered” the Trademarks, but when listing the Trademarks provided trademark application numbers. Further the materials provided in evidence of the Trademarks took the form of Office of Harmonization for the Internal Market (“OHIM”) printouts in relation to two Community Trademark (“CTM”) applications each of which appeared to be subject to opposition.

4.10 The consensus view amongst panellists would appear to be that a panel is allowed to “undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision” (see question 4.5 in the WIPO Overview of WIPO Panel Views on selected UDRP Questions). Review of the online OHIM database by the Panel confirmed that the Trademarks had yet to proceed to registration and that the prosecution history was complex, each trademark application having been or continuing to be subject to opposition proceedings to some degree.

4.11 The Panel could perhaps have made further enquiries of OHIM as to the status of the trademark applications and proceeded to make a decision in this case on that basis. However, even if this could be characterised as “limited factual research” this Panel considers it inappropriate to do so in this case. The exact status of the trademark applications is an issue that the Complainant is best able to comment upon and the onus is on the Complainant to make its case rather than on the Panel to make it for it. Further, such an approach would have meant that neither party would have the opportunity to address the result of the Panel’s enquiries.

4.12 It also appeared to the Panel that the issue as to whether a trademark application provides sufficient rights for the purposes of paragraph 4(a)(i) of the Policy might well be an important factor in, and possibly determinative of, the Panel’s ultimate decision. The question is one of some controversy and neither party had addressed the issue in their submissions.

4.13 In the circumstances, the Panel was of the opinion that it was in the interests of fairness to give both parties the opportunity to submit further evidence and arguments on these issues. Accordingly the Procedural Order was issued. The operative terms of the Procedural Order were as follows:

“(1) The Complainant shall by no later than 6:00 pm GMT on November 18, 2005 forward, by email to the WIPO Center in accordance with paragraph 3(b) of the Supplemental Rules and copied to the Respondent by email a further submission together with supporting documents/evidence limited to the following matters:

(i) details as to the exact status of each of the Trademarks [which were defined in the preamble to the Procedural Order as the two trademarks described in the Complaint (i.e. the Trademarks)] … and in particular whether the Trademarks or either of them have now proceeded to registration; and

(ii) insofar as the Trademarks or either of them have not proceeded to registration, reasons as to why the Trademarks or either of them should be treated by the Panel as a trademark or service mark in which the Complainant has rights for the purposes of paragraph 4(a)(i) of the Policy.

(2) The Respondent may, if so advised, by no later than 6:00 pm GMT on November 28, 2005, make further submissions to the Panel limited to any submissions by the Complainant in accordance with paragraph (1) of this Order together with any supporting documents/evidence in relation to the same.”

4.14 In the material filed in response to the Procedural Order, the Complainant did submit evidence and make further submissions in relation to the Trademarks. However, notwithstanding that the Procedural Order made it clear that the submissions should be limited to this material, the Complainant went much further. Essentially it sought to amend its Complaint so as to rely on additional rights over and above the Trademarks listed in the Complaint. The Respondent has objected to this in its submission in response.

4.15 To accept and consider contentions by either party that are outside the scope of the Procedural Order would be akin to accepting an unsolicited supplemental filing. The majority view of WIPO panellists on whether to accept such unsolicited supplemental filings appears to be that, “while panels must be mindful of the need for procedural efficiency, they have discretion to accept an unsolicited supplemental filing from either party, bearing in mind the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. It is also helpful if the party submitting its filing can show its relevance to the case and why it was unable to provide that information in the complaint or response”. The minority view is stricter than this in not allowing any supplemental filings without these having been specifically requested by the panel (see question 4.2 in the WIPO Overview of WIPO Panel Views on selected UDRP Questions).

4.16 This Panel would not go so far as the “minority” view on this issue. However, it does believe that the requirements in relation to acceptance of a supplemental filling are at least as strict as those which arise in the context of acceptance of a late submission described earlier on in this decision. Given this, the Panel is of the view that the provision of reasons as to why the material could not have been filed in the main submission will in most cases not merely be “helpful” but vital. The Panel certainly considers it to be so in this case. However, no reasons or explanations are offered by the Complainant.

4.18 The Panel also bears in mind that a complainant can usually choose the time when it brings its complaint. In contrast a respondent must comply with a strict timetable even if it has had little or no prior warning of the commencement of UDRP proceedings. As a result a complainant will usually have far more time than a respondent to get its case in order.

4.19 In the circumstances, the Panel in coming to its decision in this matter has not taken into account any submissions or evidence within the Complainant’s Supplemental Submissions that fall outside of that provided for in the Procedural Order. Similarly, no account need be taken of that part of the Respondent’s Supplemental Submissions that seek to address these additional points.

5. Factual Background

5.1 The Complainant is a private limited company incorporated in Germany since 1997.

5.2 On March 28, 2000 the Complainant¹ applied for a CTM comprising the word “FashionTV.com” together with a diamond device (Application No 1580224).

5.3 On November 14, 2001 the Complainant applied for the registration of the word mark “Fashion TV” (Application No 2462588).

5.4 Neither application has proceeded to registration.

5.5 The Complaint also refers to a “TV program” known as “Fashion TV” and “Ftv”. The exact relationship between that “program” and the Complainant is far from clear. However, the way in which the Complaint has been drafted suggests that the “TV program” is operated by another legal entity. In particular, the Complainant does not assert that it operates this “TV program” but instead that “under the Complainant’s trademark a television program is broadcasted” and that “the Complainant is licensing these trademarks to [the] TV program”.

5.6 On November 23, 2001 the Complainant entered into an exclusive licence agreement with f-shop Ltd (a British Virgin Islands Company, that later changed its name to Trademark Worldwide Holding Ltd) for the use of the registered Domain Name <fashiontv.com>. The Domain Name was registered in the name of “f-shop Ltd B.V.I.”.

5.7 The Complainant maintains that on November 22, 2004, it paid a sum of money to Network Solutions LLC for the prolongation of the registration for a further nine years. However, for reasons that are not explained it would appear that the Domain Name was transferred to a company called InvestorsNet and then to the Respondent in July 2004. Neither the Complainant nor Trademark Worldwide Holding Limited consented to these transfers.

6. Parties’ Contentions

A. Complainant

6.1 The Complainant contends as follows:

Identical or confusingly similar to a trademark in which it has rights

6.2 The Complainant states that “the Complaint is mainly based on” the Trademarks. From the Complainant’s Supplemental Submission it would appear that the Complainant accepts that the Trademarks have not proceeded to registration.

6.3 So far as Application No 1580224 is concerned the Complainant simply asserts that OHIM “will make a decision concerning the opposition against the Complainant’s trademark. A decision of the trademark office has not been submitted.” In the case of Application No 2462588 the Complainant states that “the Opposition Division’s decision has been remitted to the Boards of Appeal and that the matter is still pending”.

6.4 Unfortunately, no further details are provided regarding the nature of these oppositions, decisions or appeals and the additional materials filed by the Complainant in this respect add little further. That the Complainant has had and continues to have difficulties with these application is clear but whether they are difficulties that are of relevance to the issues that this Panel has to decide is not revealed.

6.5 What is clear is that the Complainant asserts that rights in a trademark application provide it with sufficient rights for the purposes of paragraph 4(a)(i) of the Policy. It relies in this respect on the decisions in Phone-N-Phone Services (Bermuda) Ltd v Shlomi (Salomon) Levi, WIPO Case No. D2000-0040 and Gallerina v Mark Wilmhurst, WIPO Case No D2000 - 0730 ².

6.6 Accordingly, the Domain Name “is identical to the registered trademarks ‘Fashion TV.com’ and ‘Fashion TV’ of the Complainant”.

No rights or legitimate interests/registered and used in Bad Faith

6.7 According to the Complaint, the Respondent has not made demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods and services. The Respondent therefore has no right or legitimate interest in respect of the Domain Name.

6.8 The Respondent is alleged to have registered the Domain Name in order to point to a website offering services slightly similar, but different to, those offered by the Complainant. A copy of the website is provided from which it would appear that the Respondent purports to provide users with “the resources in many areas including fashion design schools where you can earn a degree in all areas of fashion”. This, it is asserted, amounts to an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion. The Respondent therefore takes unjustified advantage of the Complainant’s trademark and goodwill for commercial gain. This constitutes bad faith.

6.9 In addition, the Respondent is said to be preventing the Complainant from using its trademark as a domain name within the worldwide web which is evidence of bad faith as well as the Respondent’s intentional attempt to disrupt the Complainant’s business.

6.10 The Complainant requests that the Administrative Panel issue a Decision that the Domain Name be transferred to the Complainant.

B. Respondent

6.11 For the reasons described above, the Respondent has failed to put forward a response within the time limit provided and the Panel has not considered the contents of the Response in coming to its decision.

6.12 The Respondent’s Supplemental Reply is substantial but for the most part it seeks to counter the additional evidence and submissions set out in the Complainant’s Supplemental Submission. For the reasons given earlier in this decision, it has not been necessary to consider this material in this case. So far as the issues addressed by the Procedural Order are concerned, the Respondent’s position is as follows:

(a) The material provided in relation to Application No 1680224 suggests that there is a dispute between that Complainant and a third party in relation to that application. Accordingly:

“The Complainant is requesting this Panel to inappropriately pre-judge the outcome of a disputed inter partes matter involving a party not present in these proceeding. This application is evidence of a dispute with a third party, not evidence of a trade or service mark right.”

(b) The material provided in relation to Application No 2462588 suggests that the application has been refused registration and is on appeal. This “demonstrates the Complainant’s lack of an enforceable right”.

(c) The Respondent contests the Complainant’s contention that a trademark application confers an enforceable right for the purposes of the Policy. It does not cite any decision in support of its position but appears to maintain that the decision relied upon by the Complainant involved the panel relying on “other evidence” or being “sincerely confused in a default case”.

7. Discussion and Findings

7.1 The Panel has (subject to the procedural comments set out above) reviewed the submissions of the parties together with their respective annexures. In light of this material, the Panel’s findings are as set out below.

7.2 The Panel does not find that there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel determining the Complaint. Details of these proceedings have been served in accordance with the relevant requirements set out in the Rules.

A. Identical or Confusingly Similar

7.3 Under paragraph 4(a)(i) of the Policy, the Complainant must show that the Domain Name is identical or confusingly similar to a trademark in which it has rights.

7.4 As has already been explained in detail earlier on in this decision, the Complainant relies upon two CTM applications. Neither has proceeded to registration. Therefore, a key question in this case is whether CTM applications that have not as yet proceeded to grant constitute “trademarks in which [the complainant] has rights” for the purposes of paragraph 4(a)(i) of the Policy.

7.5 Whilst there have been a large number of decisions in which the question of the status of a trademark application has been considered for the purposes of the Policy, the reasoning in these cases is frequently limited.

(i) Cases that suggest that an application is sufficient

7.6 One of the earliest decisions on the issue is Phone-N-Phone Services (Bermuda) Ltd v Shlomi (Salomon) Levi, WIPO Case No. D2000-0040. This is the case primarily cited by the Complainant. It does indeed provide support for the Complainant’s contention that an application for a trademark is sufficient for the purposes of paragraph 4(a)(i) of the Policy. In the Phone-N-Phone case, the complainant had applied for trademarks in the US and was intending to apply for similar trademarks in certain other jurisdictions such as the Bermudas. The panel held this to be sufficient for the purposes of paragraph 4(a)(i). However, in Phone-N-Phone the fact that the trademarks had not proceeded to registration does not seem to be have been raised in argument by the respondent and the panel did not give reasons for its decision in this respect. Also the panel’s finding on this issue was not determinative of the outcome of the case as the respondent was able to successfully show legitimate interest in the domain name and the complainant was unable to show bad faith.

7.7 A similar case is The David J. Joseph Company v. Richard F. Barry, WIPO Case No. D2000-1418. In The David J. Joseph Company the panel appeared to hold (it is not entirely clear) that the ownership of a US trademark application provided sufficient rights for the purposes of the Policy. However, once again there would seem to have been no argument on the issue and the complaint failed for reasons unconnected with the issue of trademark rights.

7.8 There are also a series of cases where at first sight it appears that a trademark application may have provided trademark rights for the purposes of the Policy but where it seems likely that the complainant was able to succeed on the basis of unregistered trademark rights. The David J. Joseph Company v. Richard F. Barry decision may be such a case and another example is perhaps Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253. Other examples, include Simplicity Corporation v Bob Gately, WIPO Case No. D2000-0425, (which concerned a US application and where it was stated that “use, rather than registration is the determining factor” – see footnote 1 in that case) and McKinna Corporation v PXP, WIPO Case No. D2000-1174, (US trademark application).

7.9 In La Franзaise des Jeux v. L Welsr, WIPO Case No. D2002-0305, a trademark application was also held to be sufficient. However, this decision is particularly pertinent to the case presently before the panel as it involved CTM applications, these were the only rights relied upon by the complainant and the complaint was not dismissed for some other reason. Further the panel explained its finding as follows:

“Complainant filed trademark applications for “fdjeux” and “fdjeux.com”. Pending trademark applications have been regarded as trademark rights in cases in which the marks had been used (see for example Worldblackbelt, Inc. v. Nationwide Communications, eRes Case No. AF-0881 (August 2, 2001), Bennett Coleman & Co Ltd v. Steven S. Lalwani/Bennett Coleman & Co Ltd v. Long Distance Telephone Company, WIPO Case No. D2000-0014 and The David J. Joseph Company v. Richard F. Barry, WIPO Case No. D2000-1418). Of course, there may be in this regard a difference between various legal systems as to how a trademark right may be acquired through use in the United States of America as opposed to through registration in the E.U. However, prima facie examination of the community trademark applications does not reveal an obvious ground for denying the registrations. Thus, the trademarks applications may be considered in the present case to suffice for the purpose of the ICANN Policy”

7.10 With all due respect to the panel in that case, this Panel finds the cases cited in this passage from La Franзaise to be of limited assistance. The Panel has already commented on the decision in The David J. Joseph Company v. Richard F. Barry above. So far as Bennett Coleman & Co Ltd v. Steven S. Lalwani / Bennett Coleman & Co Ltd v. Long Distance Telephone Company is concerned, the key issue appears to have been not the existence of a trademark application but the existence of unregistered trademark rights. In particular, the panel in that case stated as follows:

“ ..it is clear that the Complainants have a very substantial reputation in their newspaper titles arising from their daily use in hard-copy and electronic publication. In India itself wrongfully adopting the titles so as to mislead the public as to the source of publications or information services would in all likelihood amount to the tort of passing off. As already stated, it is this reputation from actual use which is the nub of the complaint, not the fact of registration as trademarks.”

7.11 Nevertheless, the La Franзaise des Jeux v. L Welsr case might perhaps stand as authority for the proposition that absent an “obvious ground for denying [a] registration” a CTM application may constitute rights for the purposes of paragraph 4(a)(i) of the Policy.

7.12 The most recent case of which the Panel is aware in which a trademark application provided sufficient rights is Bart van den Bergh Merk-Echt BV v. Kentech Company Ltd, WIPO Case No. D2005-0127. This case involved a Benelux trademark application and the panel stated that “pending trademark applications have been regarded as trademark rights for the application of the Policy, in cases where the signs corresponding to such trademark application have been used”.

7.13 However, the cases cited in Bart van den Bergh Merk-Echt BV to support this proposition were La Franзaise des Jeux v. L Welsr, WIPO Case No. D2002-0305, Bennett Coleman & Co Ltd v. Steven S. Lalwani/Bennett Coleman & Co Ltd v. Long Distance Telephone Company, WIPO Case No. D2000-0014 and The David J. Joseph Company v. Richard F. Barry, WIPO Case No. D2000-1418. All these cases have been discussed above. The Bart van den Bergh Merk-Echt BV characterisation of theses cases is in the Panel’s view far too sweeping. It is clear that there are cases where a US application combined with use in the US has been found sufficient. There are also cases where an application absent use also appears to have been sufficient. However, this Panel does not believe that it follows from this that these cases together support a more general proposition; namely that where a complainant has made an application in any jurisdiction then provided that it can point to use in that jurisdiction the complainant will have rights for the purposes of paragraph 4(a)(i) of the Policy.

7.14 Lastly for the sake of completeness it is necessary to briefly comment on the decision in Gallerina v Mark Wilmhurst, WIPO Case No D2000-0730, which appears to be another case upon which the Complainant relies. If so, in the Panel’s view that reliance is misconceived. In Gallerina the evidence that was submitted in relation to the application for a trademark was dismissed as unsatisfactory by the panel in question because it could not be verified (certain information had been redacted from the copy of the receipt issued by the UK Patent Office). Instead, the complainant in that case was able to show rights for the purposes of paragraph 4(a)(i) of the Policy by pointing to its common law unregistered trademark rights. The passages in the Gallerina decision that the Complainant quotes all relate to the question of common law trademark rights. They are irrelevant to the issue currently before the Panel.

(ii) Cases that suggest that an application is not sufficient

7.15 There are a number of cases in which a trademark application has not been held to provide sufficient rights for the purposes of the Policy.

7.16 Amongst the earliest of these is Aspen Grove, Inc. v Aspen Grove, WIPO Case No. D2001-0798. This was a decision of a three person panel that stated as follows:

“While the disputed domain name is identical to the trade/service mark that the Complainant is claiming in its application, the Panel does not accept that the Complainant has demonstrated any rights in the trademark it has applied to register. The Panel is not aware of any rights conferred by a trademark application either under the Policy or at U.S. law. Certainly, under the Policy, while Panels have been willing to recognize that proof of a valid and subsisting trademark application is prima facie evidence of trademark rights, no such presumption arises from a pending application to register a mark.”

7.17 Similarly in Spencer Douglass MGA v Absolute Bonding Corporation, WIPO Case No. D2001-0904, the panel stated that:

“The mere fact that Spencer has filed an application to register one of its common law marks with the U.S. Patent and Trademark Office does not establish that Spencer has service mark rights therein until the application matures into a registration.”

Although in that case it did not matter as the Complainant was able to show common law unregistered trademark rights.

7.18 Again in Netdoktor A/S v. Jens Nielsen, WIPO Case No. DBIZ2002-00109, the panel decided that the pending United Kingdom trademark application for NETDOCTOR.CO.UK was to be disregarded. The reasoning in that case was limited to the assertion that “a trademark application did not give the applicant any trademark rights before a trademark registration is granted”. It would also appear that the panel in Netdoktor was able to reject the complaint on other grounds.

7.19 In Rodale, Inc. v Christianne Schelling, WIPO Case No. DBIZ2002-00130 the panel felt confident enough to say that “the Panel finds the broad consensus in domain name dispute resolution is that a trademark application alone is not sufficient evidence of mark rights in a disputed domain name”. However, in doing so the panel does not appear to have had the benefit of the decision in Phone-N-Phone Services (Bermuda) Ltd v Shlomi (Salomon) Levi, WIPO Case No. D2000-0040 having been brought to its attention.

7.20 These cases were in turn followed in Jones Holding Limited v Vitty Inc., WIPO Case No.DBIZ2002-00265; target software solution GmbH v NetVirtue, Inc., WIPO Case No. DBIZ2002-00277; and Dan Zuckerman v Vincent Peeris, WIPO Case No. DBIZ2002-00245.

7.21 Another case in which a trademark application was held to provide insufficient rights was usDocuments, Inc. v. Flexible Designs, Inc. / Craig Dinan, WIPO Case No. D2003-0583. This case involved a US trademark application and is particularly interesting in that the panel considered but expressly declined to follow the decision in Phone-N-Phone Services (Bermuda) Ltd v Shlomi (Salomon) Levi. However, the reasoning in that case is limited to the following statement:

“The Panel does not believe that an application for a mark and some use of that mark in commerce, however brief, or the mere intent to use, are sufficient to give the Complainant “rights” in the trademark claimed although some decisions have so held. See, e.g., Phone-N-Phone Services (Bermuda) Ltd. v. Shlomi (Salomon) Levi, WIPO Case No. D2000-0040 (effectively finding the filing of an application to register a mark plus an intent to use is sufficient to give rights in the mark).”

7.22 Further, in usDocuments, Inc, the panel was also able to base its decision on a failure on the part of the complainant to show bad faith.

7.23 More recently in Mk-Net-Work v IVE Technologies, WIPO Case No. D2004-0302, where a French trademark application was relied upon, the panel stated as follows:

“As held consistently by Panels, a trademark application is not in itself sufficient evidence of a trademark or service mark in which the Complainant has rights, since applications are often opposed or may be refused for lack of distinctiveness. The only types of right that amount to trademark rights are, in addition to registered marks, unregistered or common law trademark rights.

Pending trademark applications have been regarded as evidence that the Complainant has generated goodwill in a mark which it wishes to protect. Combined with other information about the use and renown of the alleged mark an application can be relevant to a panel finding common law trademark rights”.

(iii) The Panel’s reasoning and conclusions on CTM applications

7.24 A consideration of those previous UDRP decisions of which this Panel is aware reveals that there are conflicting opinions amongst panelists on the issue as to whether a trademark application by itself provides sufficient rights for the purposes of the Policy. It would seem that the majority of the cases tend to reject rights solely based upon trademark applications. Nevertheless the reasoning in the relevant cases is limited and many could have reached the decisions they did on a basis other than the existence of rights in a trademark application.

7.25 A further word of warning must also be added. This Panel is of the view that wherever possible the Policy should be interpreted in such a fashion that similar facts result in similar decisions regardless of the geographical location of the parties (see the Panel’s comments to this effect in Maxol v Web Names Ltd, WIPO Case No D2004-0078). Accordingly, reference to the peculiarities of national law will frequently be of limited assistance. However, one area where national law peculiarities are unavoidable is consideration of the nature and existence of trademark rights under the Policy (see paragraph 5.11 in Maxol). In other words, simply because a trademark application in one country is or is not to be treated as providing trademark rights for the purposes of the Policy does not necessarily mean that a trademark application made in another territory must be treated in the same fashion.

7.26 What then is the correct approach in this case? The status of UK and CTM trademark applications was briefly commented upon by this Panel in HQ UK Limited v Head Quarters, WIPO Case No. D2003-0942. In that decision this Panel stated as follows:

“7.12 … looking at this question from first principles, in the United Kingdom, where a trademark is registered it is deemed to have been registered from the date of the filing of the application (see Ss 9(3) and 40(3) of the Trademarks Act 1994). Therefore, an applicant for a UK trademark has rights in that trademark from the date of application; albeit rights that are conditional upon a future event that has retrospective effect. Are these sufficient rights for the Policy? Similarly, in the case of CTMs, Article 9(3) of the Community Trade marks Regulation grants certain rights of compensation from the date of publication of the CTM if that mark should subsequently be granted.

7.13 However, if these are sufficient trade mark rights for the purposes of the Policy, how is a panel to decide complaints the validity of which depend upon whether or not a registration will subsequently occur? So far as trade mark litigation in the United Kingdom is concerned, the problem is avoided by section 9(3) of the Trade marks Act 1994, which expressly provides that no proceedings can be commenced until the date of registration. Similarly, the Community Trade mark Regulation provides that no court may decide upon the merits of a claim for compensation until the registration is published (Article 9(3)). However, no equivalent provisions exist in the Policy.

7.14 The approach of the panel to this problem in La Franзaise des Jeux appears to have been that in the absence of any argument or obvious reason why that the applications would not proceed to grant, then it could be assumed that they would. However, the Panel finds this approach problematic. Even if a respondent need only show an arguable case that the application will fail, a panel will still risk being drawn into an argument as to the merits of the application that it is likely to be ill-placed to deal with.

7.15 Indeed the difficulties and dangers of asking a panel to make a decision in such a case were illustrated for the Panel when it conducted a cursory online trade mark registry search in respect of the Trade mark Applications shortly prior to issuing this decision. The results of this search suggested that two of the Trade mark Applications either had been or were still subject to opposition proceedings, a fact that had not been alluded to or mentioned in the Complainant’s Complaint.”

7.27 In HQ Hair the Panel did not need to decide the issue because the Panel could decide the dispute on the common law rights alleged by the complainant. For reasons that are explained later on in this decision the Panel in this case does not have this luxury.

7.28 Ultimately, the Panel is of the view that the approach adopted in Mk-Net-Work v IVE Technologies in relation to a French trademark application is the one to adopt here. Notwithstanding the fact that it might be argued that technically rights in a CTM do exist from the date of publication conditional upon subsequent grant, the practical problems discussed in HQ Hair are such that in the ordinary case reference to and reliance on a CTM application alone cannot be treated as sufficient rights for the purposes of the Policy. If the application proceeds to grant then it will always be open to an applicant to commence UDRP proceedings at that stage.

7.29 Therefore, the Panel rejects the contention that where a complainant can point to a CTM application, the burden then passes to the respondent to show that the application will not proceed to grant and absent such evidence the complainant will show rights under paragraph 4(a)(i). If this is what the panel intended in La Franзaise des Jeux, then this Panel respectfully declines to follow that decision.

7.30 That is not to say that this Panel rejects the possibility of a CTM application providing rights under 4(a)(i) in any circumstances. Take for example, a case where the CTM opposition period has passed, an opposition or oppositions have been filed but the nature of these oppositions are such that it is clear that ultimately the complainant will be awarded a registration in at least one trademark class regardless of the outcome of those oppositions. In such a case it may be argued that if a complainant is able to put forward uncontested evidence to the effect that this is the position, it is neither necessary nor fair to insist that the complainant awaits formal registration before commencing UDRP proceedings. However, this is not a question that needs to be decided on this occasion. No evidence of this sort has been put before the Panel by the Complainant in this case.

7.31 In conclusion, the Complainant has therefore failed to show in this case that its trademark applications constitute rights in trademarks for the purposes of paragraph 4(a)(i) of the Policy.

(iii) Common law or unregistered trademark rights

7.32 This is not quite the end of the matter. The Complainant states in the Complaint that it is “mainly based” on the Trademarks and the “TV program” that is “world-wide known as “Fahion TV” and Ftv”. Can it be said that the Complainant alleges common law rights which can be treated as rights in a trademark for the purposes of the Policy?

7.33 The Panel thinks not. It reads far too much into the Complaint. Firstly, had the Complainant intended this, the Panel would expect it to say so (particularly in a case where as here the Complainant is legally advised). There may be many reasons why an entity may not assert common law rights. For example, the primafacie user of a name may use it under license terms that provide for assignment of any goodwill generated in the name to be assigned to a licensor. Where as here a complaint does not expressly assert common law or unregistered trademark rights a panel must be wary of second guessing a complainant in this respect (see Minibar North America Inc. v. Ian Musk & GEMS Global Electronic Minibar Systems AS, WIPO Case No. D2005-0035 at paras 6.13 and 6.14).

7.34 Secondly, to assert that something is “world-wide known” in many cases will not be sufficient. Common law rights / unregistered trademark rights do not exist on a world-wide basis. They may or may not exist in specific jurisdictions. It is for the Complainant to identify the jurisdiction or jurisdictions in which the rights are alleged to arise and crucially to provide details of the activities in that jurisdiction which are the source of those rights. The Complainant does not do this.

7.35 Lastly, the way in which the Complainant has drafted the Complaint militates against a finding of common law or unregistered trademark rights. As the Panel has already noted above, it appears that the relevant “TV program” is operated by another legal entity. In particular, the Complainant does not assert that it operates this “TV program” but instead that “under the Complainant’s trademark a television program is broadcasted” and that “the Complainant is licensing these trademarks to [the] TV program”. If so, the Complainant is not the entity which prima facie one would expect to own any relevant unregistered trademark rights.

7.36 It may be that this is not the entire story. For example, perhaps the operator or operators of the “TV program” are in the same group as the Complainant and/or an agreement exists in which goodwill in use of the name accrues to the Complainant. However, this is simply speculation. No such case is put forward by the Complainant and the Complainant bears the burden of proving that it owns the relevant rights. It has not done so.

(iv) Conclusion

7.37 Accordingly, the Panel concludes that the Complainant has not proved the relevant elements of paragraph 4(a)(i) of the Policy.

8. Decision

8.1 For all the foregoing reasons, the Complaint is denied.

___________________________________

Matthew S. Harris

Sole Panelist

Date: December 8, 2005

¹ In fact the papers that the Panel has seen would suggest that this CTM Application was initially made in the name of one Michel Adam Lisowski and that the application was subsequently assigned to the Complainant, but for present purposes this does not matter.

² In fact the relevant part of the Complainant’s Supplementary Submission does not expressly identify the Gallerina case but the Complainant quotes extensively from that decision.