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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Astan Morarji, Hash Clothing Limited v. Red Monkey, Steve Denim, Stephen Denim

Case No. D2008-1064

 

1. The Parties

The Complainants are Astan Morarji, Cambridgeshire, United Kingdom of Great Britain and Northern Ireland and Hash Clothing Limited, Cambs, United Kingdom of Great Britain and Northern Ireland, represented by Pennacchia Law Firm, Italy (hereinafter “the Complainants”).

The Respondents are Red Monkey, London, United Kingdom of Great Britain and Northern Ireland; Steve Denim, Hertfordshire, United Kingdom of Great Britain and Northern Ireland and Stephen Denim, Hertfordshire, United Kingdom of Great Britain and Northern Ireland (hereinafter “the Respondent”).

 

2. The Domain Names and Registrars

The disputed domain names <redmonkey.com> and <redmonkey.org> are registered with Tucows. The domain name <redmonkey.info> is registered with Easyspace.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2008. On July 14, 2008, the Center transmitted by email to Tucows and Easyspace a request for registrar verification in connection with the domain names at issue. On July 14, 2008, Tucows transmitted by email to the Center its verification response confirming that Red Monkey is listed as the registrant of the domain name <redmonkey.com> and that Steve Denim is listed as the registrant of the domain name <redmonkey.org> and providing the contact details. On July 28, 2008, after having received a number of reminders from the Center to that effect, Easyspace transmitted by email to the Center its verification response confirming that Stephen Denim is listed as the registrant of the domain name <redmonkey.info> and providing the contact details. 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 July 29, 2008. On August 8, 2008, the Complaint was re-notified by e-mail and in accordance with the Rules, paragraph 5(a), the due date for Response was reset to August 28, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 29, 2008.

The Center appointed David Taylor as the sole panelist in this matter on September 8, 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 Complainants have been using the trade mark RED MONKEY for clothing in general, and jeans in particular.

Astan Morarji, the first Complainant, is the owner of the following trade mark registrations and applications:

- United Kingdom Patent Office trade mark RED MONKEY (trade mark No. 2167265, filed on May 21, 1998, and registered on March 26, 1999) in international class 25 for clothing, footwear, headgear; but not including any such goods being monkey jackets, men’s evening dress or clothing for cyclists;

- German Patent and Trademark Office trade mark RED MONKEY (trade mark No. 307622428, filed on September 21, 2007, and registered on November 15, 2007) in international classes 25, 14, and 18;

- Office for the Harmonization of the Internal Market CTM application for the trade mark RED MONKEY (design), trade mark No. 006384242, filed on October 22, 2007, in international classes 14, 18, and 25.

In 2008, Astan Morarji also filed trade mark applications for the acronym of the name Red Monkey Company, RMC, in the United Kingdom and the European Union. His application for the same was registered in Germany on April 14, 2008.

Hash Clothing Limited, the second Complainant, is the licensee of the above mentioned UK trade mark RED MONKEY pursuant to a licence agreement made between the first and second Complainants dated January 23, 2007.

A third party seemingly related to the Complainants recently contacted the Respondent as follows:

“Hi Stephen,

Did you receive my offer for you <redmonkey.com> domain name?

Regards, Tony”

On April 2, 2008, the Respondent replied as follows:

“Hi Tony,

If this is the same Tony as previously at giftcorp.com the[n] yes I did. However, I was away without internet connection for a while there so didn’t read your email until after the one week deadline you had mentioned.

If it’s not the same Tony then I did not receive any offer.

Thanks,

Steve”

On May 27, 2008, the third party sent the following email to the Complainants:

“Hi Paul,

This was the last email I received from Steve at <Redmonkey.com>. I made him an offer of US$6K after this email and he never replied. I’ll see if I can find the other emails on back-up at work this week.

Speak later, Tony”

The domain names <redmonkey.com>, <redmonkey.org> and <redmonkey.info> were first registered on February 26, 1999, October 2, 2001 and October 4, 2001 respectively. The domain names are currently registered to the Respondent.

 

5. Parties’ Contentions

A. Complainants

Named Registrants

The Complainants argue that the registrant of the three domain names is one and the same entity. In support of this the Complainants point out that the administrative contact for all the domain names is a certain Mr. Denim, who calls himself “Stephen” in relation to the domain names <redmonkey.com> and <redmonkey.info> and “Steve” in relation to the domain name <redmonkey.org>. Secondly, the email address of the registrant of the domain name <redmonkey.org> is […]@redmonkey.com, and the email address of the registrant of the domain name <redmonkey.info> is […]@redmonkey.com. These circumstances indicate that the three disputed domain names are connected as far as the registrant is concerned, and this justifies the filing of one Complaint for the three domain names at issue.

The Complainants’ Contentions

The Complainants contend that the disputed domain names are identical to the RED MONKEY marks in which the Complainants have rights.

The Complainants contend that their trade mark RED MONKEY is world famous and has built a world wide vast clientele, including the international jet set. In support of this allegation, the Complainants have provided eight pictures of the trade marked goods and/or advertising material as Annex 7 to the Complaint. The Complainants have also provided a list of countries and shops where their goods are sold. The Complainants also contend that they have a common law trade mark in the term “Red Monkey Company” and the domain names are confusingly similar to this.

The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Complainants submit that the Respondent is not licensed to use the RED MONKEY marks. There is no proof that the Respondent has been commonly known by the name Red Monkey. The Respondent does not own a trade mark in the terms “Red Monkey” or any variation thereof. Furthermore, the Respondent cannot establish that it falls within any of the categories set out under paragraph 4(c) of the Policy.

The Complainants assert that the disputed domain names have been registered and are being used in bad faith pursuant to paragraph 4(b) of the Policy.

There is no offering of goods and services at the website linked to the domain name <redmonkey.com> and the two other disputed domain names do not resolve. According to the Complainants, the fact that the website at “www.redmonkey.com” is a blank page with just a small logo on the upper left corner of it, including the wording “Red Monkey”, is clear evidence that the Respondent is not making a legitimate non-commercial or fair use of the web site linked to the domain name <redmonkey.com>. The Complainants assert that weight must be given to the use of the domain names as a ground for the transfer because this is preventing the Complainants from reflecting their trade marks in corresponding domain names.

The Complainants conclude that the Respondent is “apparently a cyber squatter for commercial gains” and has registered abusively and in bad faith all the domain names at issue. In the Complainants’ opinion, the Respondent was aware of the Complainants’ RED MONKEY brand, which they assert was already well-known in the UK when the disputed domain names were registered. The UK application for the trade mark RED MONKEY was filed on May 21, 1998. The Respondent should have known of the Complainants’ trade marks when he registered the first of the three disputed domain names, <redmonkey.com>, on February 26, 1999. When he registered that domain name, the Respondent agreed to the terms of the domain name registration agreement, thereby providing that to the best of his knowledge he was not aware that the registration of the domain names would infringe the rights of a third party. According to the Complainants, this obliged the Respondent to perform a trade mark search prior to his registration of the domain names.

Secondly, the Complainants assert that the use of the domain name <redmonkey.com> is tarnishing the reputation of the trade mark RED MONKEY because prospective clients looking for the Complainants’ online location are faced with something that looks like a failed business. The Complainants have conducted substantial business under the RED MONKEY marks. According to the Complainants, the current use of the domain names leads consumers to believe that the Complainants’ company is not trustworthy for the purposes of purchasing goods over the Internet. This causes damage to the reputation of the trade mark RED MONKEY and monetary damage to the Complainants for the loss of sales.

The Complainants also assert that the Respondent has offered the domain name <redmonkey.com> for sale for an amount in excess of the out of pocket costs directly related to the domain name.

The Complainants therefore seek the transfer of the domain names from the Respondent in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

 

6. Preliminary Issue

Filing of a single Complaint

As a preliminary issue, the Panel must first consider whether the registrants of the domain names, Red Monkey, Steve Denim and Stephen Denim, can be treated as one and the same for the purpose of these proceedings.

The Complainants have submitted that the administrative contact for all the domain names is a certain Mr. Denim, who calls himself “Stephen” in relation to the domain names <redmonkey.com> and <redmonkey.info> and “Steve” in relation to the domain name <redmonkey.org>. As noted by the Complainants, the email address of the registrant of the domain name <redmonkey.org> is […]@redmonkey.com, and the email address of the registrant of the domain name <redmonkey.info> is […]@redmonkey.com. Both email addresses are therefore connected with the domain name <redmonkey.com>.

Under these circumstances, the Panel finds that the named registrants are the same. For these reasons, the Panel finds that the variously named registrants are properly treated as a single Respondent in this case.

 

7. Discussion and Findings

Paragraph 15(a) of the Rules states that a panel shall decide a complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In the case of default by a party, paragraph 14 of the Rules states that, if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it deems appropriate. In this case, Respondent has not submitted any Response and consequently, despite the opportunity given, has not contested any of the contentions by the Complainant. The Panel will therefore proceed on the basis of the factual statements contained in the Complaint and the documents and resources available to support the contentions.

Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following in relation to each of the three disputed domain names:

(i) the domain name registered by Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in the domain name; and

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

Taking each of these issues in turn, the Panel decides as follows:

A. Identical or Confusingly Similar

Based on the evidence produced by the Complainants with regard to their registered trade mark rights in RED MONKEY, the Panel is satisfied that the Complainants have such rights.

The disputed domain names all include the Complainants’ RED MONKEY trade marks. Numerous UDRP decisions have established that a top-level domain such as the “.com” suffix can be ignored when assessing the issue of similarity.

The Panel therefore finds that the disputed domain names are identical to the RED MONKEY marks in which the Complainants have rights.

B. Rights or Legitimate Interests

The second element the Complainants must establish is that the Respondent has no rights or legitimate interests in respect of the disputed domain names, in accordance with paragraph 4(a)(ii) of the Policy.

Paragraph 4(c) of the Policy sets out various ways in which a respondent may demonstrate its rights or legitimate interests in a domain name, as follows:

“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 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 non-commercial 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.”

The domain names are all comprised of the combination of the generic terms “red” and “monkey”. As the WIPO Overview of WIPO Panel Views states, a respondent using generic terms to describe his product or business or to profit from the generic value of the terms without intending to take advantage of a complainant’s rights in those terms, may have a legitimate interest in such terms.

However, the Panel has considered the evidence put forward by the Complainants with regard to the use of the disputed domain names. The domain names <redmonkey.info> and <redmonkey.org> do not resolve to a website. At some point in 2002, the domain name <redmonkey.org> resolved to a website which stated “This domain has been registered for a client by Easyspace”. Although the domain name <redmonkey.com> was used from October 1999 (see below), the evidence presented by the Complainants shows that, from July 2006 onwards, it resolved to a blank page featuring a dark red and black logo in the left upper corner.

Under those circumstances, the Panel finds that the Complainants have presented prima facie evidence of the Respondent’s lack or rights or legitimate interest in the disputed domain names. As a result of its default, the Respondent has failed to rebut that evidence.

The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

The third element that the Complainants must prove is that the disputed domain names have been registered and are being used in bad faith in the sense of paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy sets out various circumstances which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith, as follows:

“For the purposes of paragraph 4(b), 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 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 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 have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”

The Complainants have provided evidence showing the past use of the domain name <redmonkey.com>.

From October 1999 to February 2006, the site linked to the domain name <redmonkey.com> contained a notice indicating that “this site is permanently under construction.” In addition the site contained a number of tabs providing further content, amongst others the “redmonkey programmers database” and information regarding lighting. Under the tab “What’s new” the Respondent appears to have maintained a blog. He also appears to have uploaded some of his wedding pictures at some point in time.

From April 2006 to June 2006, the domain name pointed to a website regarding the “ZX-7R Owners Club […] a public service provided by redmonkey to promote an online community devoted to the sharing of ideas and information regarding the Kawasaki ZX-7, ZX-7R and their derivatives.” From July 2006 onwards the website featured nothing but a dark red and black logo in the left upper corner containing the words “Red Monkey”. This logo does not appear to resemble any logo used by the Complainants.

Whilst it does not currently resolve to a website, for some time in 2002, the domain name <redmonkey.org> was linked to a website which indicated that “This domain has been registered for a client by Easyspace.”

The disputed domain name <redmonkey.info> does not resolve to a website and there is no evidence before the Panel that it has ever done so.

The Complainants have argued that “all this denoting lack of seriousness in the establishment of a business for the serious offering of products and services” in connection with the domain names is an indication of bad faith.

As provided by the WIPO Overview of WIPO Panel Views, the lack of active use of a domain name can be an indication of bad faith under certain circumstances. In order to assess whether this is so in a specific instance, the Panel must examine all the circumstances of the case. Examples of circumstances that can indicate bad faith include a complainant having a well-known trade mark, no response to the complaint, concealment of identity and the impossibility of conceiving of any good faith use of the domain name.

Whilst the Respondent’s contact details may not be up to date, there appears to be no attempt on the part of the Respondent to conceal its identity. Failing to keep contact details up to date cannot, of itself, constitute bad faith registration and use.

In the absence of supporting evidence, the Panel is unable to find that the Complainants’ trade mark was as claimed well-known at the time the domain names were registered. Moreover, in terms of its present fame the Panel has undertaken some brief research and found that the results of an Internet search engine search on “Red Monkey” show that, although many hits relate to the Complainants, a number of hits relate to third parties as well. The name “Red Monkey” is for example used by a lodge in Zanzibar, a bar in Belgium and a company trading under the name “Red Monkey Coffee”. Although the indication “Red Monkey” may indeed be distinctive as a trade mark for jeans, it is also a combination (albeit it a rather unusual one) of generic words apparently being used by a number of third parties in different ways. Based on this fact and in light of the circumstances and evidence of record (or lack thereof) of this case, the Panel is therefore not on balance convinced that the Respondent was targeting the Complainants and their business when he registered and used the disputed domain names.

The Complainants’ RED MONKEY UK trade mark was filed on 21 May 1998 and registered on March 26, 1999. Absent evidence that the Respondent was more likely than not aware of that fact when he registered the domain name <redmonkey.com> on February 26, 1999, this Panel is unable to conclude that this domain name was registered in bad faith. See Tax Analysts v. eCorp, WIPO Case No. D2007-0040, Diknah, S.L. v. WebQuest.com Inc., WIPO Case No. D2005-0573, and Builder’s Best, Inc. v. Yoshiki Okad, WIPO Case No. D2004-0748 (in order to find bad faith, “there must be some evidence of knowledge that the Respondent knew the domain name was identical or similar to the Complainant’s mark”). In the absence of any evidence to the contrary, the Panel finds that this inference applies equally to the other two disputed domain names.

From the evidence submitted the Panel cannot conclude that the Respondent approached the Complainants with an offer to sell the domain name <redmonkey.com> for an amount in excess of out-of-pocket costs directly related to that domain name. Rather, it seems that, at some point in 2008, a number of years after the domain names were registered, a third party somehow connected with the Complainants approached the Respondent to try and broker a deal to purchase the domain name on behalf of the Complainants. The evidence submitted by the Complainants does not indicate that the Respondent was willing to accept the offer made. On the basis of this evidence and in the absence of any evidence from the Respondent, the Panel is reluctant, on the grounds above, and on the balance of probabilities, to find that the domain name <redmonkey.com> was registered by the Respondent “primarily for the purposes of selling” that domain name to the Complainants. The Panel further notes that the Respondent may not be assisted in this case by its apparently unexplained registration of the term “redmonkey” in a number of different gTLDs. However, nor is the Complainant assisted by the unexplained lapse of several years between the registration by the Respondent of these disputed domain names and the bringing of the present Complaint. Ultimately, however the burden of proof falls on the Complainants, which on balance they have not been able to meet here.

In the absence of compelling evidence, the Panel is equally unable to make a finding that the Respondent is “apparently a cyber squatter for commercial gains” as the Complainants contend. The Complainants carry the burden of proving bad faith, and the evidence offered is simply too incomplete to satisfy the Panel that the Respondent registered the domain names for the reasons the Complainants suggest. The Respondent has exhibited none of the behaviour typical of true cybersquatters, such as exhibiting a pattern of abusive registrations or offering the disputed domain names for sale. The Panel’s brief research indicates that he has never before been a respondent in a Policy proceeding, at least under his own name.

In conclusion, the Panel is unable to find that any of the four circumstances of paragraph 4(b) of the Policy mentioned above is present. The Panel may well have found quite differently in other circumstances, for example if the website associated with the disputed domain names contained links to other websites offering clothing for sale by the Complainants’ competitors, or counterfeit products, or if the Complainants had produced evidence that the Respondent had engaged in a pattern of bad faith conduct. However, no such circumstances are currently present.

The Panel therefore concludes that the Complainants have not succeeded in proving that the disputed domain names have been registered and are being used in bad faith.

 

8. Decision

For all the foregoing reasons, the Complaint is denied.

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David Taylor
Sole Panelist

Date: September 24, 2008