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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Creative Technology, Ltd. v. Cleveland Polite

Case No. D2006-1211

 

1. The Parties

The Complainant is Creative Technology, Ltd., a company having its principal place of business in Singapore (hereinafter “Complainant”). It is represented by the law firm Cooley Godward, LLP, United States of America.

The Respondent is Cleveland Polite, an individual residing in San Francisco, California, United States of America (hereinafter “Respondent”).

 

2. The Domain Name and Registrar

The disputed domain is <uscreative.com>.

The registrar is Go Daddy Software, Inc., having its principal place of business in Scottsdale, Arizona , United States of America (hereinafter the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2006.

On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. The Registrar promptly transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. The Center subsequently 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 Respondent of the Complaint, and the proceedings commenced on September 27, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was October 17, 2006. The Respondent filed his Response on October 18, 2006.

The Center appointed D. Brian King as the sole panelist in this matter on November 1, 2006. The Panel finds that it was properly constituted. The Sole Panelist 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.

Prior to the appointment of the Panel, on October 28, 2006, Complainant transmitted an unsolicited supplemental filing (hereinafter “Reply”) to the Center by email and in hard copy, noting that the Reply had also been sent to Respondent. In the Reply, Complainant disputes a number of the factual allegations contained in the Response, in particular the allegation of reverse domain name hijacking.

The Center issued an acknowledgement of receipt of the Reply on October 28, 2006, and subsequently forwarded the Reply to the Panel on November 2, 2006 at the Panel’s request.

On November 7, 2006, the Panel issued Procedural Order No. 1, accepting Respondent’s Response, albeit received one day late, and accepting Complainant’s Reply. The Order granted Respondent the possibility to respond in writing to the Reply by November 13, 2006. Respondent did so, submitting a supplemental filing (hereinafter “Rejoinder”) to the Center on November 13, 2006.

On November 15, 2006, the Panel issued Procedural Order No. 2, extending the due date for the decision in these proceedings in view of the submission of the Reply and Rejoinder.

 

4. Factual Background

The facts relevant to the current dispute are set out in the Complaint, the Response, and the supplemental filings by both Parties. Considering the allegations therein and the evidence produced, the Panel finds the following facts to have been established.

Complainant was founded in Singapore in 1981; it develops, manufactures and sells consumer electronics and multimedia products. Among its more popular and well-known products are the “Sound Blaster” audio card platforms and the “Zen” line of MP3 players (Annex C to the Complaint).

In 1988, Complainant formed its United States of America subsidiary Creative Labs, Inc. Since that time, Complainant has used the mark CREATIVE in the United States of America in connection with consumer electronics and multimedia products. Complainant is the owner of eight trademark registrations for its CREATIVE trademark in the United States of America, including registration No. 1,905,352 for the CREATIVE logo in connection with, inter alia, computer hardware and peripherals (registered on July 18, 1995); registration No. 2,893,260 for the word CREATIVE in connection with, inter alia, computer hardware, software and digital audio players (registered October 12, 2004); and registration No. 3,031,470 for the word CREATIVE for electronic musical instruments (registered December 20, 2005) (Annex D to the Complaint). Complainant asserts without contradiction that it is the owner of over 50 other trademark registrations using the word CREATIVE in many international jurisdictions.

Complainant registered the domain name <creative.com> on April 2, 1999. At this domain address and other country specific sub-domain addresses, including the United States of America site at “us.creative.com”, Complainant operates sites for the sale of its products (Annex C to the Complaint).

Respondent purchased and registered the disputed domain name on February 28, 2004 (Annex A to the Complaint). The previous owners of the domain name had operated it as an online directory of creative professionals in the United States of America.

Currently, the domain name resolves to a site on which Respondent uses the business name CREATIVE ELECTRONICS and operates an online home consumer electronics store for brand-name consumer electronic and multimedia products. Among the products offered for sale are Complainant’s products, as well as similar products made by competing manufacturers (Annex G to the Complaint). When a consumer selects a product for purchase, he is automatically connected to <amazon.com>, through which the purchase is processed.

On April 11, 2006, Complainant sent a cease and desist letter to Respondent, in which it requested Respondent to transfer the disputed domain name to Complainant and to cease permanently all use of any CREATIVE trademark, including the use and registration of any domain name containing the CREATIVE trademark (Annex I to the Complaint). Respondent answered this letter on May 8, 2006, denying the Complainant’s allegations (Annex J to the Complaint). A further exchange of correspondence between the parties did not lead to a resolution of the dispute (Annexes K through M of the Complaint).

 

5. Parties’ Contentions

A. Complainant

Complainant relies on the above facts and contends, inter alia, that the three elements of Paragraph 4(a) of the Policy have been met.

First, Complainant argues that the disputed domain name is confusingly similar to its well-known and registered CREATIVE mark because the domain name incorporates that mark in its entirety. The addition of the geographically descriptive modifier “us” at the beginning of the domain name does not, in the Complainant’s opinion, render the domain name distinct or non-confusing.

Next, Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name, for the following reasons:

(i) Respondent registered the domain name at a time when Complainant already had well-established rights in its CREATIVE marks (in the United States of America and internationally);

(ii) Respondent must be deemed to have constructive and actual knowledge of Complainant’s trademark registrations, given Respondent’s registration of a nearly identical domain name used in connection with the sale of products identical or similar to those Complainant provides;

(iii) Respondent is using the confusingly similar domain name impermissibly for commercial gain by trading off of Complainant’s goodwill;

(iv) Respondent’s use of the domain name in connection with a “pass through” website selling products competing with those of Complainant; his collection of referral fees for this and through click-through advertisements on the site does not establish a legitimate right or interest in the domain name;

(v) To the best knowledge of Complainant, Respondent was never known as <uscreative.com> and/or “Creative Electronics” prior to registering the domain name.

Finally, Complainant asserts that Respondent registered and is using the domain name in bad faith, because:

(i) Respondent registered the domain name with knowledge that using the well-known CREATIVE mark in its domain name would likely cause an Internet user visiting that domain address to assume that the domain name is somehow sponsored by or affiliated with Complainant;

(ii) Respondent registered the domain name well after Complainant had established rights in its CREATIVE mark through use in commerce since at least 1988, including via its <creative.com> domain name, and through multiple trademark registrations;

(iii) Respondent’s website provides products that directly compete with the products Complainant offers on its website, as well as links to third-party sites that compete commercially with Complainant;

(iv) Respondent’s registration and use of the disputed domain name constitutes impermissible typo squatting, because Respondent is attempting to capitalize on the possibility that users of Complainant’s site located at “www.us.creative.com” mistakenly omit the period separating the “us” and “creative” terms, which will direct users to Respondent’s competing website.

B. Respondent

In the Response dated October 18, 2006, Respondent puts forward several arguments in opposition to the Complaint and requests the Panel to make a finding of reverse domain name hijacking.

Respondent submits, in summary, the following arguments in opposition to the Complaint:

(i) Complainant is attempting to claim trademark protection for a common, generic and descriptive word that is fundamental in the electronics, multimedia and technology industry;

(ii) Complainant’s trademark registrations for the word CREATIVE should be narrowly construed as they relate to specified hardware, software and electronic musical instruments;

(iii) Respondent’s website at “www.uscreative.com” has been operating as a consumer electronics store since 2004, well before Respondent received any notice of the dispute; moreover, Complainant’s trademark registrations for the word “creative” (as opposed to the CREATIVE logo) were registered after Respondent had purchased and registered the domain name;

(iv) Through its unique technology and its affiliate relationship with <amazon.com>, <uscreative.com> has become a very popular consumer electronic stores on the Internet;

(v) Respondent did not purchase the domain name to prevent Complainant from doing so, and Respondent did not register the domain name to compete with Complainant nor has Respondent ever engaged in trading domain names for profit;

(vi) Over 90% of the traffic received by <uscreative.com> comes from search engines and links that are well established over the Internet and not from direct access to the site as a consequence of typing errors.

Respondent proceeds to accuse Complainant of reverse domain name hijacking. The gist of Respondent’s complaint in this regard is that Complainant is wrongly attempting to force Respondent to hand over a popular and developed website as to which the domain name does not infringe on Complainant’s trademarks but merely uses a generic dictionary word common in the electronics industry. Respondent also alleges that he applied for and was initially accepted into Complainant’s Affiliate Program, which in his view constitutes an acknowledgement by Complainant of Respondent’s legitimate rights in the domain name.

C. Complainant’s Reply

The Reply comprises a rebuttal of certain facts alleged in the Response, as well as a defense to the charge of reverse domain name hijacking.

On the former point, Complainant asserts that while “creative” in the dictionary sense may be generic, Respondent has not provided any evidence demonstrating third-party use of the CREATIVE mark or the word “creative” in connection with the advertisement and sale of consumer electronics and multimedia products. Complainant adds that its trademark registrations cover a broad range of electronic and multimedia products, and further argues that while the disputed domain name was registered in late February 2004, there is no evidence as to when Respondent actually began using it as an online electronics store.

In response to Respondent’s reverse domain name hijacking allegation, Complainant argues, in summary, that it terminated Respondent’s participation in the Affiliate Program on becoming aware of it; far from showing any recognition of legitimate rights on Respondent’s part, this event shows that Respondent was fully aware of the market success of Complainant’s products and its rights in its CREATIVE mark. Complainant adds that the fact that Respondent’s site now attracts non-misspelling hits shows no more than that Respondent’s bad faith registration and use of the disputed domain name has been commercially successful for Respondent. Finally, Complainant asserts that the fact that third parties may also use the term “creative” in connection with electronic products does not justify Respondent’s conduct here, involving at it does the use of the term to sell products directly competing with those of Complainant.

D. Respondent’s Rejoinder

In his Rejoinder to Complainant’s Reply, Respondent both responds to Complainant’s factual rebuttal and reasserts his claim for reverse domain name hijacking.

In respect of the facts relevant to Complainant’s claim, Respondent asserts in short that many third parties use the word “creative” in connection with the sale of electronic products, a fact he asserts can be verified by “googling” the word “creative.” Respondent adds that his website does not claim any affiliation with Complainant’s products, nor does he manufacture any of those products. Rather, his site benefits trademark holders like Complainant by generating sales for them. Lastly, Respondent states that while he has no documentary proof of the date on which he began operating his website, it can be inferred from on-line listings that it was in operation by the summer of 2004.

Regarding the reverse domain name hijacking charge, Respondent argues, in summary, that his site generates a large number of independent hits, as shown by a <marketleap.com> survey that he attaches. He further contends that his reason for attempting to join Complainant’s Affiliate Program was simply to find out its trademark usage policy in respect of affiliates; according to Respondent, Complainant does not instruct affiliates to refrain from using “creative” or “creative electronics” in advertising. Finally, Respondent reemphasizes what he views as the generic nature of the mark in which Complainant claims rights.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires Complainant to prove each of the following elements in order to obtain relief:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the domain name;

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

A. Identical or Confusingly Similar

There is no doubt that Complainant has rights in the mark CREATIVE in connection with the production and sale of computer and multimedia products. This is established by Complainant’s use of the mark in commerce in the United States of America since at least 1988 and through multiple trademark registrations.

The domain name fully incorporates Complainant’s registered trademark for the word CREATIVE, adding only the geographic descriptor “us” referring to the United States of America. The addition of a geographically descriptive term does not change the confusing nature of the similarity. It is a common method for specifying the location of the business services. See, e.g., Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046 (March 20, 2001).

The fact that Respondent registered the domain name some months prior to Complainant’s registration of the CREATIVE word trademarks does not prevent a finding of confusing similarity. As held in Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827 (September 23, 2001) and other cases, Paragraph 4(a)(i) of the Policy does not require that the trademark be registered prior to the domain name.

The Panel accordingly has no difficulty in finding that the disputed domain name is confusingly similar to the mark CREATIVE, in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant has not given any permission to Respondent to use Complainant’s mark in the domain name, Respondent has no apparent rights in the mark, and the disputed domain name is confusingly similar to Complainant’s mark. In light of the circumstances, the Panel accepts that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, and accordingly the burden shifts to Respondent to demonstrate that it has some right or legitimate interest. See Section 2.1 of the WIPO Overview of WIPO Panel View on Selected UDRP Questions.

Respondent has asserted primarily that he has used the domain name in connection with a bona fide offering of goods or services since 2004, well before he received any notice of the dispute from Complainant.

While it is true that Respondent was using the disputed domain name to offer goods prior to receiving notice of the dispute, such use cannot in the Panel’s view be deemed bona fide within the meaning of the Policy.

As stated in Madonna Ciccone p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (October 16, 2000), “use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or service. . . . [T]o conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy.”

The evidence shows that Respondent registered and began using the disputed domain name long after Complainant began using its CREATIVE mark in commerce in the United States of America in connection with popular computer and multimedia products. By the time of the registration of the disputed domain name, Complainant had obtained registered trademarks for its CREATIVE logo and was offering its products through its “www.creative.com” and “www.us.creative.com” sites. Although Complainant’s trademark registration of the word mark CREATIVE came a few months after Respondent’s registration of the disputed domain name, there can be no reasonable doubt in the circumstances that Respondent was effectively on notice of Complainant’s rights in the mark CREATIVE at the time of registration. Respondent’s apparent awareness of the Complainant’s affiliate program is also a strong indication of his knowledge of the Complainant’s trademark rights. Respondent then proceeded to use the site to sell products competing with those of Complainant, using a domain name confusingly similar to both the mark and Complainant’s own “www.us.creative.com” site.

Respondent contends that the disputed domain name consists merely of a generic word commonly used in the electronics industry. It may indeed be legitimate in some circumstances for a respondent to register a domain name consisting of a generic dictionary word and to use the website to which the domain name resolves to provide content that is relevant to the common meaning of the generic dictionary word. See, e.g., Landmark Group v. DigiMedia.com, L.P., NAF File No. 285459 (August 6, 2004); Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340 (June 26, 2006); National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424 (August 10, 2005); WIPO Decision Overview § 2.2. In the present case, however, the Panel is not convinced that the word “creative” is so associated with electronic and multimedia products that its use by the Respondent in connection with an online electronics store should in the circumstances be deemed legitimate, notwithstanding Complainant’s prior rights.

The Panel notes that there is no evidence in the record that the disputed domain name is closely associated with Respondent or his business activities. Moreover, the disputed domain name does not correspond with the trade name CREATIVE ELECTRONICS used on Respondent’s website. Respondent has offered no persuasive explanation as to why he chose “uscreative.com” as the address for his site. The logical inference is rather that he hoped to attract users via confusion with Complainant’s mark or its already-existing website “us.creative.com”.

The Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the domain name, and that Respondent has failed to rebut that showing, see Document Technologies, Inc. v. International Electronic Communications Inc, WIPO Case No. D2000-0270 (June 6, 2000). In light of the above, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four non-exclusive indicia of bad faith:

(i) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her/its website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his/her/its website or location or of a product or service on his/her/its website or location.

Paragraph 4(a)(iii) of the Policy requires that the domain name “has been registered and is being used in bad faith.” This requirement is conjunctive, and therefore Complainant must establish both bad faith registration and bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000), at paragraphs 7.4 to 7.6.

For purposes of the Policy, a finding of any one of the four circumstances listed in paragraph 4(b) will be sufficient to establish registration and use in bad faith. Furthermore, the Panel notes that those four circumstances are not exclusive, and that other circumstances may likewise lead, in a particular case, to a finding of bad faith registration and use. See CCA Industries, Inc v. Bobby R. Dailey, WIPO Case No. D2000-0148 (April 26, 2000), at page 3.

The result on this element of the test under the Policy follows logically from what has been said above. On the evidence and argument presented, the Panel finds that the circumstance set out in paragraph 4(a)(iv) is present here.

The evidence before the Panel indicates that Complainant’s products are well-known in the electronics industry, and that its use of the mark CREATIVE in connection therewith is protected by trademark registrations that, contrary to Respondent’s contentions, are relatively broad in scope (Annex D to the Complaint). As already noted above, the material before the Panel indicates that the disputed domain name is neither closely associated with Respondent’s business activities nor generally with the electronics or computer industries. The disputed domain name does, however, fully incorporate Complainant’s mark and is one punctuation mark away from Complainant’s website address. In these circumstances, it is more likely than not that in registering and setting up an online electronics store at the disputed domain name, Respondent acted with the intention of attracting customers to his website by creating an impression of association with Complainant and/or its well-known product lines.

Respondent has provided evidence that his site receives a large number of “hits” unassociated with any misspelling of Complainant’s website address and that his online business has otherwise been successful. This does not, however, justify the registration and use of the disputed domain name in bad faith.

For the foregoing reasons, the Panel is satisfied that bad faith registration and use have been sufficiently established with respect to the disputed domain name.

Lastly, as Complainant has successfully met all the requirements of Paragraph 4(a) of the Policy, the Panel finds that Complainant has not engaged in reverse domain name hijacking, as alleged by Respondent, because it is lawfully entitled to recover the disputed domain name.

 

7. Decision

For the foregoing reasons, the Panel determines that the domain name in dispute is confusingly similar to a mark in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name and that it has been registered and used in bad faith. Accordingly, the Complaint succeeds and the Panel orders that the domain name <uscreative.com> be transferred to Complainant.

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D. Brian King
Sole Panelist

Dated: November 30, 2006