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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Swimways Corporation v. Richard Nugent

Case No. D2008-0786

1. The Parties

The Complainant is Swimways Corporation, Virginia, United States of America, represented by Gavin Law Offices, PLC, United States of America (“USA”).

The Respondent is Richard Nugent, Marlow, United Kingdom of Great Britain and Northern Ireland, of United Kingdom of Great Britain and Northern Ireland (“UK”).

2. The Domain Name and Registrar

The disputed domain name <toypedo.com> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2008. On May 20, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name(s) at issue. On May 20, 2008, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. By May 26, 2008, the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2008.

The Center appointed Staniforth Ricketson as the sole panelist in this matter on July 2, 2008. 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.

4. Factual Background

The Complainant is a US-based manufacturer of leisure and recreational water products with its headquarters in Virginia Beach, Virginia. It is asserted by the Complainant that the Swimway brand of products has ‘been around for over 35 years’, but no further material has been provided of the approximate volume and scope of the Complainant’s manufacturing and sales activities, although it is further asserted that its products are distributed through many national and regional chains as well as over various Internet sites. No information has been provided as to distribution and sales outside the USA.

The Complainant is the owner of US trade mark No 2,222,357 for the word TOYPEDO registered for rubber and plastic gliding toys for aquatic use. This was registered on February 9, 1999, having been filed July 16, 1997 with a claim of first use in commerce of June 1, 1996. No further information as to the volume and extent of sales and distribution of toys under the registered mark has been provided, although the Google search in exhibit 6 of the Complaint indicates an extremely high number of “hits” under that name that refer back to the Complainant as at April 2008.

The Respondent’s domain name <toypedo.com> was registered on May 22, 2000 (Complaint, paragraph 17) and will expire on May 22, 2009 (Registrar Verification).

5. Parties’ Contentions

A. Complainant

The Complainant points to the following matters as meeting the requirements of

paragraph 4(a)(i)-(iii) of the Policy:

1 It has rights in a registered trade mark to which the domain name is identical or confusingly similar.

2 There is no evidence of any use of the domain name by the Respondent for any of the purposes referred to in paragraph 4(c) of the Policy from which it might be possible to infer that the Respondent had rights in or legitimate interests in the domain name.

3 The repute of the Complainant’s mark at the time of registration of the domain name and the lack of any use of that name by the Respondent, once registered, points to bad faith on his part in so registering, and continuing to hold, the said domain name. In this regard, the Complainant makes particular reference to the finding of the panel in Telstra Corporation Limited v Nuclear Marshmellows, WIPO Case No. D2000-0003.

A further issue that arises, though not expressly addressed in the Complaint, is the relevance, if any, of its delay in the bringing the present proceeding, in view of the fact that over 8 years has elapsed since the registration of the domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 5(e) of the Rules provides that, where no response is submitted, in the absence of exceptional circumstances, the Panel is to decide the dispute based upon the complaint. Such default on the part of the Respondent does not relieve the Complainant from being required to establish that each of the requirements of the Policy, in particular those under paragraph 4(a), is established. At the same time, it should be noted that paragraph 14(b) of the Rules provides that,

“If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.

Bearing these rules in mind, the Panel now proceeds to consider whether the Complaint satisfies the requirements of paragraph 4(a) of the Policy, bearing in mind that each needs to be fulfilled before the Complaint can succeed.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, the Complainant must show that the Respondent’s domain name

“(…) is identical or confusingly similar to a trademark or service mark in which the complainant has rights”.

So far as the first part of this paragraph is concerned, the substantive part of the domain name is identical to the registered trade mark. The only difference between the two lies in the .com suffix to the domain name, but the latter is simply part of the Internet address and does not add “source-identifying significance” to the domain name: see further Bang & Olafsen a/s v. Unasi Inc., WIPO Case No. D2005-0728 (September 7, 2005) and Deutsche Welle v. DiamondWare Ltd., WIPO Case No. D2000-1202 (January 2, 2001). The Complainant has therefore satisfied this aspect of paragraph 4(a)(i) of the Policy.

The second part of paragraph 4(a)(i) is also satisfied, in that the Complainant has provided evidence of its registration of the word TOYPEDO as a trade mark under US law (Complaint, Exhibit 3). It is unnecessary therefore to have regard to any further rights at general law that the Complainant may, or may not, have in this mark as an unregistered mark. It is also unnecessary to have regard to whether the Complainant has registered trade marks under national laws other than that of the USA, as paragraph 4(a)(i) refers simply to ‘a trademark…in which the complainant has rights’ leading to the conclusion that showing the existence of ‘rights’ under any national law will suffice for this purpose.

The Panel finds that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant is required to show that the Respondent has “no rights or legitimate interests in respect of the domain name”. Further assistance as to the meaning of this requirement is given in paragraph 4(b) which provides that:

Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your [the Respondent’s] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Essentially, these are matters for a respondent to put forward for the panel’s consideration. In the present case, no response has been filed and all that the Complainant can do, in order to discharge its burden under the Policy, is to show that there is no evidence that indicates that any of these circumstances exist. In sum, the following matters are relevant here:

1 No licence or permission has ever been sought or obtained by the Respondent from the Complainant to use the Complainant’s trade mark in this way: Complaint, paragraph 19.

2 The Respondent does not offer, and does not appear ever to have offered, any website at its domain name: Complaint, paragraph 21. Internet searches conducted by the Complainant (Complaint, Exhibits 4 and 5) indicate that no webpage was found. These searches were seemingly conducted through the Web Internet Archive, Wayback Machine in April this year, and do not reveal whether there may have been any such usage in the preceding eight years. However, in the absence of a Response from the Respondent, it seems reasonable to infer, as the Complainant submits, that there has been no offering, bona fide or otherwise, of goods or services through such a website in that period.

3 There is no evidence to suggest that the Respondent has ever been, or is now, generally known by the Respondent’s domain name.

In view of the Respondent’s silence, there is simply no evidence before the Panel relating to any of the matters referred to in paragraph 4(a)(ii). Nor is there any other evidence from which the Respondent’s rights or legitimate interests in the domain name can be inferred. Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii).

It is possible that a different conclusion might have been reached had there been some evidence of post-registration activity around the domain name coupled with a delay of eight years in bringing this proceeding, but that is obviously not the case here. The question of whether delay in itself is a relevant consideration is addressed further below.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must show that the domain name has been registered and is being used in bad faith. Paragraph 4(b) then provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you [the Respondent] have 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 you have engaged in a pattern of such conduct; or

(iii) you [the Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration (and acquisition) of the domain name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early panel decision to the effect that registration in bad faith, followed by a passive holding of a domain name when there is no way in which it could be used legitimately, can amount to use in bad faith, particularly where the domain name contains a well-known mark: Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In addition, it would be both mistaken and artificial to confine paragraphs (i)-(iii) solely to the time of registration: presumably, it would also be a use of a disputed domain name in bad faith to do so, after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several panel decisions: see, for example, Estee Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869 and E & J Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615.

In the present proceeding, the situation is complicated by the fact that the Respondent has not filed any Response or provided any evidence as to its intentions in registering and maintaining the disputed domain name. As noted above, under paragraph 14(b) of the Rules, where a party defaults in complying with any requirement of the Rules, the Panel is entitled to draw from such default such inferences, as it considers appropriate.

On the evidence before the Panel, it is clear that none of the specific circumstances referred to in paragraph 4(b)(i) or (ii) arises. It is also impossible to ascertain whether the intention referred to in paragraph 4(b)(iii) exists; likewise, in the absence of any evidence based around the domain name, it is not possible to infer that the circumstances referred to in paragraph 4(b)(iii) apply. Nor is it possible to conclude on the present record that the Complainant’s TOYPEDO mark was or is well-known.

As noted above, the circumstances referred to in paragraph 4(b) are not exhaustive and the Complainant’s submissions here essentially focus on two matters: (i) the Respondent’s apparent bad faith in registering the domain name when it must have known at that time of the Complainant’s registered trade mark (in the absence of any evidence pointing to the Respondent’s actual knowledge at the time of registering the domain name, this is really a reliance on the notion of constructive notice), and (ii) its continued holding of the domain name since 2000 when it would not have been possible for it to use the domain name for any plausibly legitimate purpose (referring here to the Nuclear Marshmellows case).

Both these contentions are considered below in turn.

1 The Respondent’s constructive notice or knowledge

The possibility that a registration occurred with “constructive notice” or “constructive knowledge” of the Complainant’s mark is not a factor that UDRP panels have usually found to justify a finding of bad faith, although the WIPO Overview of WIPO Panel Views on Selected UDRP Questions notes that this concept has been applied in a few cases where a complainant had a United States of America registered trademark and the respondent was also located in the United States of America (see further the excellent summary to be found in D Lindsay, International Domain Name Law: ICANN and the UDRP, Hart Publishing, Oxford, 2007[7.13]). In such cases, the US doctrine of constructive notice may be held to be applicable: see, for example, Kate Spade, LLC v Darmstadter Designs D2001-1384 and Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. Nevertheless, there are also decisions where panels have been critical of the application of such a doctrine where the respondent comes from a non-US jurisdiction: see, for example, Alberto-Culver Company v. Pritpal Singh Channa, WIPO Case No. D2002-0757, where the panel said, in relation to a UK respondent and a US domain name registrant:

“The Complainant’s evidence of bad faith registration and use is exceedingly weak. I reject the idea that some sort of “constructive notice” is generated upon a trademark registration, and that this is sufficient to establish bad faith. To accept this idea is to accept that a trademark registration –without anything further– is enough to establish bad faith under the Policy. This is a ludicrous suggestion, and runs contrary to the clear intention of paragraph 4.a.(iii) which was intended to protect the interests of domain name holders who registered without bad faith. The evidence of advertising expenditures (some $1.5 million a year over multiple countries) does not indicate that the mark is particularly well known. Moreover, there is no indication of the amount spent on advertising in England. There is nothing to indicate that the Respondent was ever aware of the mark”.

Accordingly, while it may be true that the doctrine of constructive notice will have some application in cases where both parties are based in the US, it is also notable that, even in those cases where the doctrine has been applied, there have been other circumstances indicating bad faith, including evidence that the relevant trade mark had been widely used beforehand both in the USA and elsewhere, and was well–known, quite apart from the fact of registration: see, for example, Volvo Trademark Holding AB v Unasi, In.,c WIPO Case No. D2005-0556 and Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551. Other cases in which bad faith registration has been found, in the absence of evidence of actual knowledge, have involved trade marks that have been registered for significant periods prior to registration of the domain name, coupled with evidence showing that the respondents had otherwise been engaged in the business of registering and reselling large numbers of domain names to the public: see, for example, Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 and Mobile Communications Services Inc. v. WebReg, RN, WIPO Case No. D2005-1304. In such cases, there was material for the panels to infer constructive knowledge of the registered trade marks (bearing in mind that the parties in these cases were also located within the USA). The case of Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448, cited by the Complainant in the present proceeding, also seems to fall into this category of cases: although the Complainant in that case was a Danish corporation it had longstanding registrations of its trade mark in both the USA and Denmark (from 1968) and there was some evidence that this was a well–known mark (although this was not critical to the panel’s decision). In addition, there were other circumstances of the respondent’s use of the domain name in relation to its own website which were relevant to the various matters listed in paragraph 4(b) of the Policy. The finding of the panel therefore was that either the respondent did have actual knowledge of the complainant’s trade mark at the time of registration, or that it had been “willfully blind” in registering an uncommon domain name when the briefest Internet search would have revealed the registered trade mark.

In the present case, the Respondent has a non-US address (in Marlow in the United Kingdom), and, in the absence of further evidence, cannot be presumed to have been aware of trade mark registrations in another jurisdiction, such as the USA as at the date of registering the domain name. There is no evidence of a corresponding trade mark registration in the United Kingdom, or in any other jurisdiction. Neither, despite the allegations of widespread use prior to registration, is there any actual evidence provided of such usage as would provide a proper basis for inferring that the Respondent must have known of the existence of the Complainant’s mark at the time of registration of the domain name. Particularly significant here is the fact that the registration of the domain name occurred in May 2000 while the registration of the trade mark in the USA was only slightly more than a year previously, in February 1999. The fact that the Google search for “toypedo” received 14,300 hits linking to the Complainant means little, if anything, in this regard, as this search was done in April 2008 (Complaint, Exhibit 6). While the Complainant has exhibited an archived copy of its homepage as at May 11, 2000 (Exhibit 8), this provides only very limited evidentiary assistance in relation to the question of knowledge, as (a) this date does not appear on the exhibit itself (although it seems clear from the bottom of the page that it is an archived copy), (b) while there is a “© 2000 Swimways Corp” notation, this presumably refers to the textual and graphical material on the webpage as a whole, and (c) while the word “toypedo” appears several times, there is no indication that this has any trade mark significance, i.e. through a trade mark notice, or that it is being used there in a trade mark sense. For the Complainant in the present case to make a convincing argument for the Respondent’s constructive knowledge of its registered US trade mark as at May 22, 2000, it would need to have provided something along the lines of the 2008 Google search conducted as at May 22, 2000 together with some evidence as to the volume and extent of its use of the trade mark TOYPEDO as at that date.

In consequence, there has been no evidence provided by the Complainant on which the Panel can reasonably infer that the domain name was registered by the Respondent in bad faith on the basis of constructive knowledge of the US trade mark registration alone. For a case where was a similar lack of evidence on this issue, see the decision of the present panelist in Integrated Payment Systems. Inc. v. integratedpaymentsystems.com c/o Whois Identity Shield, WIPO Case No. D2006-1214.

2. The continued passive holding of the domain name

The foregoing conclusion makes it unnecessary to consider the second limb of the Complainant’s contention that the continued passive holding of the domain by the Respondent will amount to use in bad faith within the approach enunciated by the panel in Telstra Corporation v. Nuclear Marshmellows.

The matter of delay

In light of the finding above on the issue of constructive knowledge, it is unnecessary for the Panel to consider the effect, if any, of the Complainant’s delay in bringing the present proceeding. In this regard, the Panel notes that there is some uncertainty over this matter in previous decisions, but that, if such a consideration is to apply, it would be necessary for a respondent to identify some basis on which it would be inequitable for the complainant to obtain relief, for example, some evidence of acquiescence or apparent consent on the part of the complainant and some change of position on the part of the respondent. In other words, the complainant’s delay itself should not suffice to justify a denial of relief: see further Tax Analysts v. eCorp, WIPO Case No. D2007-0040; Tom Cruise v. Network Operations Center/Albert Hot Rods, WIPO Case No. D2006-0560; The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616; Square Peg Interactive Inc v Naim Interactive Inc Case No NAF 209572 (December 29, 2003); The E.W. Scripps Company v. SinologicIndustries Case No. D2003-0447. In the present case, there is no suggestion that the Complainant has in any way acquiesced in, or consented to, the Respondent’s continued holding of the domain name or that the latter has in any way changed its position. As the panel in the Hebrew University case said, there is no limitation period in the Policy and delay alone should not disentitle the complainant to relief. The present Panel leaves aside, however, the wider question of whether equitable considerations such as those that underpin the Anglo-American doctrines of laches or some more general doctrine of waiver would otherwise be applicable: see further the discussion of these matters in D Lindsay, International Domain Name Law: ICANN and the UDRP, Hart Publishing, Oxford, 2007[4.18].

Conclusion on bad faith

In light of the above, the Panel is not satisfied that the Complainant has made out the third requirement of paragraph 4(a), namely that the registration and use of the domain name was made in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Staniforth Ricketson
Sole Panelist

Date: July 12, 2008