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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Marlene Cook v. Katarzyna Bieniek

Case No. D2006-1053

 

1. The Parties

The Complainant is Marlene Cook, Toronto, Ontario, Canada, represented by Jacobs & Ferraro, LLP, United States of America.

The Respondent is Katarzyna Bieniek, New York, New York, United States of America.

 

2. The Domain Name) and Registrar

The disputed Domain Name <woofstock.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2006. On August 21, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the Domain Name at issue. On August 21, 2006, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 31, 2006. The Center verified that the Complaint together with the amendment to 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 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2006. The Response was filed with the Center on October 4, 2006 .

The Center appointed Clive Elliott as the sole panelist in this matter on October 23, 2006. 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 24, 2006, the firm Jacobs & Ferraro, LLP e-mailed the Center advising that it was now the Complainant’s representative. It submitted a copy of the trademark registration details for US registration, Number 2, 962, 044 and sought to make further submissions. This communication is clearly out of time. In accordance with Paragraph 10 of the Rules, while the Panel is prepared to take into account the trademark details it is not prepared to admit this late submission on the basis that it does not comply with the Rules.

 

4. Factual Background

The Complainant is the holder of the trademark “Woofstock, a festival for dogs” in Canada and the United States of America. The US registration, Number 2, 962, 044 covers the conducting of trade shows in the field of pets and pet related services. This registration was filed on the basis of first use in commerce on April 1, 2003 and was registered on June 14, 2005. It relates to a logo mark comprising the stylised word “Woofstock”, the prominent device of the face of a dog and the words “Festival For Dogs”, which term is disclaimed.

The Respondent holds the disputed Domain Name <woofstock.com> which currently redirects to “www.puppyfind.com”, a website that lists dog breeders. The Domain Name <woofstock.com> was registered on July 3, 2001.

 

5. Parties’ Contentions

A. Complainant

The Complainant asserts that future uses of its mark may include but is not limited to television programming, internet videos, and clothing items.

The Complainant states that “www.woofstock.com” redirects the questioner to a site for picking the perfect puppy - “www.puppyfind.com”. She points out that the Respondent has been contacted and has not replied to a request of cease and desist. She argues that the Respondent is clearly misusing the name Woofstock and directing trade and commerce from the legitimate name holder, in so far as the legitimate name holder owns the trade mark to Woofstock in Canada and the United States and the organization is in business for the purpose of providing dog shows.

It is then submitted that the Respondent is “actively applying these points”, presumably referring to the Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3).

The Complainant requests that the Domain Name <woofstock.com> be transferred to the Complainant

B. Respondent

The Respondent asserts that the term “Woofstock” has its origins in the world famous 1969 music festival called “Woodstock”. She states that the Woodstock festival held in upstate New York was the defining event of the 1960’s and the “hippie” generation. She goes on to say that since the original music festival hundreds of dog related Woofstock events have taken place around the world and many businesses have called themselves Woofstock. On this basis she suggests that the term should be considered generic. In support of this the Respondent provides details of a number of URLs of web sites that she states give details of Woofstock festivals that predate the Complainant’s first use of the term. Details are provided.

The Respondent also states that the earliest Woofstock festivals she was able to locate took place in 1997, eight years before the Complainant registered her marks. One was held in San Diego and the other took place in New York City and was large enough to attract the attention of CNN and find its way onto the CNN website. Details of both are provided.

The Respondent states that she registered the Domain Name because she thought it would be a good name for a dog related business. The Respondent also refers by way of example to a company that sells dog collars called Woofstock. Accordingly, she asserts that she has never used the Domain Name <woofstock.com> in connection with a dog festival of any kind and therefore never violated the Complainant’s service mark or used the domain in bad faith. Rather, she states that the Domain Name <woofstock.com> lists dog breeders and has nothing do with dog festivals.

Respondent states that before this UDRP proceeding was filed, she had never heard of the Complainant’s festival.

The Respondent asserts that the Complainant runs the only for profit festival called Woofstock and that this complaint amounts to an obvious case of reverse domain hijacking and that the Complainant is trying to secure the generic Domain Name <woofstock.com> for financial gain.

Finally, the Respondent argues that the Complainant has not presented any evidence or argument as to why she has exclusive rights to the term Woofstock and that the simple act of registering a service mark does not confer exclusive rights to a term.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:

- The Domain Name is identical or confusingly similar to the trade mark; and

- The Respondent has no right or legitimate interest in respect of the Domain Name; and

- The Domain Name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.

Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.

A. Domain Name Identical or Confusingly Similar

The Panel accepts that the Complainant has registered and has rights in the above US trademark registration. It also acknowledges that this provides the Complainant with a prima facie right pursuant to the Policy. The Complainant relies heavily on her trademark rights pursuant to the aforesaid registration. However, is that enough?

The aforesaid trademark is arguably memorable and it seems that it has been used by the Complainant. On this basis the Panel is prepared to accept that the Complainant has certain rights in this mark. The Panel also accepts that the Complainant has used the Woofstock mark but with other identifying features and that she may have specific rights, but these are likely to be limited to the manner in which the trademark is registered.

The question thus arises, whether in a practical sense, the ownership of a registered trademark to which the domain name is confusingly similar automatically satisfies the requirements under paragraph 4(a)(i) of the Policy. Arguably, if the Complainant owns a registered trademark then it probably satisfies the threshold requirement of having trademark rights and equally the location of the registered trademark and the goods and/or services it is registered for are essentially irrelevant when finding rights in a mark.

Having said this, it is apparent that the Complainant’s federal registration is for a stylized and compound mark. It is reasonable to infer that the compound mark may acquire distinctiveness in the combination of words/features. However, by the same token it is also likely that any such distinctiveness would not automatically extend to the constituent parts of the combination. Nor does protection against confusion automatically accrue to the constituent parts of the combination.

It might also be argued that the Complainant cannot, on the basis of its compound mark, claim an interest in any underlying generic term, forming part of the trademark. The Respondent of course argues that the word Woofstock is a clever play on the term Woodstock and when used in relation to pet related activities is a well established descriptive term which by virtue of extensive use by third parties has become generic of the activity as a whole. The Respondent provides evidence to support this claim.

Likewise, the Respondent provides evidence which seems to indicate that the term Woofstock was used descriptively by others, well before the Complainant sought to register the term.

Arguably, the Panel should not ignore the fact that the federal trademark registration is limited to specific services, namely “Arranging and conducting of trade shows in the field of pets and pet related services”. Equally, one might think that any rights should be considered in accordance with that description of services. In this regard, the Respondent states that the Domain Name <woofstock.com> currently redirects to www.puppyfind.com, a website that lists dog breeders and which, she says, has nothing do with dog festivals.

One would expect that these considerations should have a part to play in assessing whether this ground is established. However, the balance of authority appears to be that a panelist should not over analyse the position once a complainant has established that it has trademark rights of some sort. On the basis of the above, the Panel finds, that the Complainant satisfies the threshold requirement of having relevant trademark rights as required by the Policy and accordingly that this particular ground is established.

The Panel therefore finds that the Domain Name is confusingly similar to the trademark, in which the Complainant has rights.

However, for the reasons set out below, that is by no means determinative of the matter.

B. Rights or Legitimate Interests

As various courts in many jurisdictions have said, special care has to be exercised where one party attempts to acquire exclusive rights in eloquently descriptive words and phrases. In refusing to transfer the domain name <nudescape.com> it was noted:

“The question has to be answered to some extent by asking whether the Respondent has the right to use the words “nude” and “scape” to describe its pornographic services. That is, quite apart from whether the Complainant may have rights in these or similar words. It seems to the Panel that there is a reasonably good argument that the Respondent should have a right to use these common English words to describe its pornographic services. Otherwise, parts of the English language would soon be acquired and removed from common use by those wishing to name their businesses or describe their services.”

See America Online Inc. v. Media Dial Communications, WIPO Case No. D2001-0799.

The evidence on record indicates that the term Woofstock has a particular meaning and resonance in relation pet activities/services and that it is a clever play on words, given the connection with the well known Woodstock festival. It also appears that the term Woofstock was in use prior to the Complainant’s efforts to register the trademark in the United States of America and Canada. It is also a term apt for use in relation to a website that lists dog breeders.

Accordingly, the Panel finds that the term Woofstock is one which members of the public, including the Respondent, have a legitimate interest in using on or in connection with pets and dogs in particular. Indeed, the evidence is that a number of members of the public were doing just that before the Complainant obtained her trademark registration and the Panel concludes that they are entitled to continue to do so as long as they do not infringe the particular rights covered by the above trademark registration/s. In this regard, the stylized, compound and descriptive nature of the mark is relevant.

It is found that the Respondent has used a highly descriptive and/or generic word to describe her product/business and there is nothing to suggest that she has done so to take advantage of the Complainant’s rights in that word, limited as they are. On this basis it is found that the Respondent has a legitimate interest in the disputed Domain Name.

For these reasons the Panel finds for the Respondent on this ground.

C. Domain Name Registered and Being Used in Bad Faith

It appears from the evidence and submissions filed that the Respondent registered the disputed Domain Name before the Complainant either used it in the course of trade or registered her federal registration. On this basis the inference can be drawn that, at least prima facie, the Domain Name was registered in good faith. In terms of subsequent use, for the reasons outlined above, the Panel finds that there is nothing to infer bad faith on the part of the Respondent.

For these reasons the Panel also finds for the Respondent on this ground.

D. Reverse Domain Name Hijacking

The Respondent submits that the Complainant is trying to secure the generic Domain Name <woofstock.com> for financial gain and that this Complaint amounts to an obvious case of reverse domain hijacking.

However, in the present circumstances it is difficult to assess whether or not the Complainant’s actions were motivated by bona fide business considerations rather than an improper effort to reverse domain hijack. It is also worth mentioning that the Complainant has established the first ground, namely that she has relevant trademark rights. Under those circumstances it is inappropriate for the Panel to reproach the Complainant for any behavior evidenced to the Panel in these proceedings. Consequently, the Respondent’s request is denied.

 

7. Decision

Having established the first ground but failed to establish the second and third grounds under the Policy the Complaint is denied.

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Clive Elliott
Sole Panelist

Dated: November 6, 2006