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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Maryland Limited Liability Company v. Sports Solutions Inc. and Contactprivacy.com

Case No. D2008-0983

1. The Parties

Complainant is Maryland Limited Liability Company, Elkridge, Maryland, United States of America.

Respondents are Sports Solutions Inc., Dallas, Texas, United States of America, and Contactprivacy.com, Toronto, Ontario, Canada (hereinafter collectively referred to as “Respondent”).

2. The Domain Name and Registrar

The disputed domain name <club-amenities.com> is registered with Tucows, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2008. On June 30, 2008, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On that same date, Tucows transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and stating that the registrar had “unveiled the privacy.” 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 Respondent of the Complaint, and the proceedings commenced on July 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2008. The Response was filed with the Center on July 15, 2008. On that same date Respondent filed an Amended Response.

The Center appointed M. Scott Donahey as the sole panelist in this matter on July 25, 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

Complainant is the owner of the registered mark CLUB AMENITIES with the United States Patent and Trademark Office (the “USPTO”). The application for registration was filed with the USPTO on February 24, 2006, and issued January 2, 2007. The registration claims a first use in commerce on November 30, 1989, and disclaims the exclusive right to use the term “amenities” apart from the mark as shown. Complaint, Annex 8.

Complainant registered the domain name <clubamenities.com> on January 20, 1998. Complaint, Annex 6. A search of the Internet Archives shows that Complainant’s domain name did not resolve to a web site until April 2001. Response, Annex A.

Respondent registered the domain name at issue on June 26, 1998. On June 26, 1998, Respondent also registered <guest-amenities.com>. Complaint Annex 10. The domain name <guestamenities.com> was registered on June 13, 1997, by a company known as Guest Amenities located in Mumbai, India. Complainant describes this as further evidence of Respondent’s “hyphen abuse.”

A screen shot of the web site to which the domain name at issue resolved as of June 25, 2008, shows that Respondent used the term “Liquid Amenities” on the site. Complaint, Annex 4. A review of Annex 4 does not show any use of the CLUB AMENITIES mark or any reference to Complainant’s products or to Complainant on the web site. Respondent’s web site contains meta tags including, “club amenities, liquid amenities, hotel amenities, guest amenities, locker room amenities, pro shop amenities, spa amenities, wholesale, retail and distributor, sunscreen, soap, lotion, shampoo, conditioner, body wash, shave cream, mouthwash, antiperspirant, and deodorant.” Complaint, Annex 10. Complainant contends that “[a]ll of [the foregoing] terms are protected by Complainant’s Registered Service Mark.”

Complainant’s owner was formerly employed by Respondent. In August 1989 Complainant left Respondent’s employment, and in November 1989, Complainant started a competing business. Thereafter, Respondent sued Complainant and other former employees for misappropriation of trade secrets and for violations of non-compete agreements. That case was settled some years ago after mediation.

Complainant recently received an email from one of Complainant’s customers alleging that another vendor was selling Complainant’s products at less than the price that Complainant was selling the products to the customer, and the customer requested the lower price. Complaint, Annex 13. The vendor was a distributor of Respondent’s products. Complainant attaches a copy of the vendor’s catalog as Annex 14. Apparently the vendor had listed some of the products under the heading “Club Amenities.” (On its own web site, Complainant uses the term “club amenities” in a descriptive sense, absent any reference to its registered service mark (“Call Club Amenities L.L.C. today. They have thought of almost everything, including dozens of other club amenities to enhance the comfort of each member or guest . . . .” Emphasis in original). Response, Annex B, page 2 of 2, screen shot taken July 8, 2008.) When contacted by Complainant, the vendor modified its web site. Respondent claims it has no control over the actions and business activities of its distributors. Moreover, all of Respondent’s products on the web site are labeled as being Respondent’s, and are not labeled as being those of Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends that the domain name at issue is identical or confusingly similar to Complainant’s CLUB AMENTIES service mark and that Respondent has no rights or legitimate interests in respect of the domain name at issue. Complainant alleges that Respondent registered the domain name at issue in bad faith, since it must have known of Complainant’s domain name <clubamenities.com> when Respondent registered the domain name at issue five months after Complainant had registered its domain name, that Respondent registered and used the domain name at issue maliciously in order to harm a former employee who was now in direct competition with Respondent, and that Respondent registered the domain name at issue in order to confuse users of the Internet that the products offered by Respondent were in fact sanctioned by, manufactured by, or sold by Complainant.

B. Respondent

Respondent contends that the domain name at issue is not identical or confusingly similar to a service mark in which Complainant has rights in that Respondent is using two common English words that together are used descriptively, because Complainant was required by the USPTO to disclaim exclusive rights to use “amenities” apart from its mark, because Complainant has failed to produce evidence of secondary meaning, because Complainant waited almost eight years after Respondent registered the domain name at issue to register its service mark, and finally because the mark is merely descriptive in the trade of the goods offered. Respondent argues that it has rights and legitimate interests in respect of the domain name, since at the time that it registered the domain name at issue it was already in the business of selling shampoos, conditioners, lotions, and similar products to health clubs, spas, hotels, and other establishments and had been in that business since 1984, and that Respondent is using the domain name at issue in its descriptive trade sense. Finally Respondent alleges that the domain name was registered in good faith, since it was registered years before Complainant applied for its mark which subsequently issued, and that Complainant’s failure to bring its Complaint until years later and after the registration issued demonstrates a lack of belief in its case. Respondent did not register the domain name to attract Internet users to its site by creating a likelihood of confusion with Complainant, as Respondent has never tried to create any appearance of connection or affiliation of any kind with Complainant.

Respondent requests a finding of reverse domain name hijacking, because Complainant should have known at the time that it filed the Complaint that Complainant could not prove that Respondent had violated the Policy.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:

1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,

2) that the respondent has no rights or legitimate interests in respect of the domain name; and,

3) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Where a domain name incorporates the Complainant’s mark in its entirety, the domain name is confusingly similar to the Complainant’s mark, despite the addition of a hyphen between the words which make up the second-level domain and despite the fact that the name, when taken as a whole, may be descriptive. The use or absence of punctuation marks such as hyphens does not alter the fact that the domain name at issue is identical or confusingly similar to the trademark at issue. Chernow Communications, Inc. v. Jonathon D. Kimball, WIPO Case No. D2000-0119 (<ccom.com> found to be identical or confusingly similarly to the mark, C-COM.) The issue of the descriptive nature of the domain name is better analyzed under the third prong, whether the domain name has been registered and is being used in bad faith. The same is true as to the delay in registration.

Respondent’s argument that Complainant does not have rights in a mark because the mark is merely descriptive is unavailing. The fact that a competent authority has seen fit to register the mark satisfies the threshold issue as to rights in a mark. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.1.

The fact that the registration of the domain name at issue preceded the registration of the mark is not a matter bearing on whether a complainant has rights in a mark, but rather is an issue to be considered as to the issue of bad faith. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.4.

Accordingly, the Panel finds that the domain name at issue is confusingly similar to Complainant’s registered service mark.

B. Rights or Legitimate Interests

The Panel is persuaded by the reasoning of the Panel in Tightrope Media Systems Corporation v. DomainCollection.com, WIPO Case No. D2006-0446. In that case, the Panel stated: “The registration of common words as domain names, and the posting of advertising or hyperlinks relevant to that common word can be a legitimate interest if the advertising and links are clearly and directly related to the common word.” If the registration and use of the domain name at issue is directed at the descriptive sense of the words registered, then Respondent has a right and legitimate interest in the domain name at issue. If the registration and use of the domain name at issue is directed at the good will inherent in Complainant’s trademark, Respondent does not have a right or legitimate interest in respect of the domain name. This must be determined in an analysis of the third prong, or “bad faith.”

C. Registered and Used in Bad Faith

Complainant contends that Respondent is a serial “hyphen abuse(r)” in that Respondent registered at least one other hyphenated domain name on the very same date that Respondent registered the domain name at issue and that this second domain name (<guest-amenities.com>) corresponded to the name of a company doing business in India and of its registered domain name, <guestamenities.com>. Respondent freely admits that it registered the hyphenated domain name and others that were descriptive of the products that Respondent offered and asserted that it had no knowledge of the Indian company at the time the domain name that corresponded to the Indian company’s name and the domain name was registered.

Moreover even if Respondent knew that there was an Indian company of that name, trade names are not protected under the UDRP and they do not constitute trademark rights. In the Second WIPO Internet Domain Name Process, WIPO examined the question as to whether the UDRP process should be expanded to protect trade names, and ultimately made a recommendation against extension of the process.

“318. Despite the majority opinion that protection should be extended to trade names within the DNS, we do not consider that it is appropriate to modify the UDRP so as to allow complaints for the bad faith and misleading registration and use of trade names as domain names for the following reasons:

(i) The international legal principle for the protection of trade names leaves extensive scope to differing national implementations, which is reflected in the diversity of national approaches that was found to exist with respect to the protection of trade names. This national diversity inevitably creates a problem for the choice of applicable law on a global medium. The situation of trade names is, in this respect, akin to that of geographical indications insofar as it would be necessary for a dispute-resolution panel, in the absence of convergent national approaches, to identify the national law that should be applied to determine the existence of a protectable trade name. We do not believe that the law is sufficiently clear on this question, with the consequence that there would be a risk of lack of coherence in decisions, which might engender dissatisfaction and lack of understanding of the procedure.

(ii) The practice in the use of trade names covers a very large range of commercial activity, including very small one-person enterprises operating in very limited geographical areas, as well as very large enterprises operating in global markets. It is certainly the case that very small enterprises operating in limited geographical areas deserve protection for their trade names when the conditions of eligibility for the protection are satisfied. Whether those conditions of eligibility can be identified with precision for disputes in gTLDs on a global medium, however, is problematic. Where a trade name is used in widespread markets, it is often also the subject of trademark protection or satisfies the conditions for protection as an unregistered trademark so as to qualify, in appropriate circumstances, for protection against bad faith, deliberate misuse under the UDRP.

(iii) The UDRP was designed for, and applies to, straight-forward disputes, where there are rights on one side and no rights or legitimate interests on the other side. It was not designed to accommodate disputes involving interests on both sides, which requires a more extensive procedure, perhaps involving the hearing of evidence and oral arguments. Many trade name disputes, because of the relatively light burden imposed to establish eligibility for trade name protection, will involve interests on both sides.

(iv) We are not convinced that sufficient evidence was produced of widespread abuse of trade names through domain name registrations and use.

319. It is not recommended that the UDRP be modified to permit complaints to be made on the basis of abusive registrations and use of trade names per se.”

Second WIPO Internet Domain Name Process, Final Report, September 3, 2001, Sections 318 and 319.

Thus, the registration of the additional hyphenated domain name does not constitute bad faith. If anything, the fact that Respondent registered another hyphenated, potentially descriptive domain name on the same date that it registered the domain name at issue suggests that Respondent was not targeting Complainant.

The fact that Respondent registered the domain name at issue five months after Complainant registered its non-hyphenated counterpart may be suggestive of bad faith, especially if the registration was for the purpose of taking advantage of the good will established by Complainant in its mark. However, Complainant has produced no evidence that Complainant had established secondary meaning in its mark at the time that Respondent registered the domain name at issue. Indeed, the evidence shows that Complainant did not use the domain name that corresponds to its service mark to resolve to a web site until April 2001, long after Respondent registered the contested domain name. Moreover, Complainant did not challenge Respondent’s right to use the domain name at issue for several years, until Complainant had applied for and received a registered mark. While it is true that the defense of laches is not applicable to domain name cases (The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616), it is also true that a lengthy unexplained delay in bringing an action during which the respondent continued to use the domain name at issue in the same manner may be considered as a reason to deny the complaint. Chivas USA Enterprises, LLC, et al. v. Cesar Carbajal, WIPO Case No. D2006-0551.

There is simply no compelling evidence that Respondent registered the domain name at issue to take advantage of Complainant’s trademark rights. Not only has Complainant failed to show that it had any trademark rights at the time of the registration, Complainant has failed to show that Respondent attempted to use the domain name at issue to capitalize on the goodwill value of its trademark. Complainant’s argument that Respondent’s use of metatags descriptive of the categories of products offered for sale by Respondent and Complainant displays a fundamental lack of understanding of trademark law. Trademark law is designed to protect the public against confusion as to the source of the goods and/or services offered. It is not designed to give the trademark owner a monopoly as to words descriptive of the goods or services offered.

Finally, Complainant itself uses the term “club amenities” on its own web site in a descriptive sense, and without any reference to its service mark. Response, Annex B, page 2 of 2. This supports Respondent’s position that the term is descriptive in the trade.

In sum, the Panel finds that Complainant has failed to carry its burden of proof, and that Complainant has failed to prove that Respondent does not have rights and legitimate interests in respect of the domain name at issue or that Respondent has registered and is using the domain name at issue in bad faith.

D. Reverse Domain Name Hijacking

Given the acrimonious history of the relations between Complainant and Respondent, it is not surprising that Complainant assumed the worst in respect of Respondent’s registration and use of the domain name at issue. The Panel has ruled that those suspicions lack evidentiary support, but the Panel is not inclined to find that Complainant was guilty of reverse domain name hijacking.

7. Decision

For all the foregoing reasons, the Complaint is denied, and the Panel does not find that Complainant was engaged in reverse domain name hijacking.

M. Scott Donahey
Sole Panelist

Dated: July 31, 2008