WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Complainant is Warm Things, Inc., a California corporation located at 180 Paul Drive, San Raphael, California 94903 USA. Complainant’s authorized representative in this proceeding is the law firm of Tucker & Latifi, LLP, by Afschineh Latifi.

Respondent is an individual, Adam S. Weiss residing in Hoboken, New Jersey USA. Mr. Weiss is acting pro se in these proceedings.

The domain name at issue is: <warmthings.com>

The Registrar is Network Solutions, Inc.

The WIPO Arbitration and Mediation Center (the "Center") received Warm Things, Inc.’s Complaint (the "Complaint") by hard copy on February 1, 2002. The Center submitted a request to the complainant on February 5, 2002, for receipt of the Complaint in electronic form as required by the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"). The electronic version of the Complaint was received by the Center on February 5, 2002. The Center received verification on February 7, 2002, from Network Solutions advising that Respondent Adam Weiss is the owner of the disputed domain name <warmthings.com>. After verifying that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules, and the Center’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center notified Respondent of the Complaint and of the commencement of the administrative proceeding. Respondent was given until March 3, 2002, to submit a Response to the Complaint. A Response dated March 3, 2002, was filed and was acknowledged by the Center on March 14, 2002. For purposes of the decision it is assumed that the Response was submitted in a timely manner although it is noted that there is no certificate of service or other indication in the Response as to when and how service of the Response was made.

Because Respondent did not request a three-member Panel to hear the dispute, the Center, on April 5, 2002, after clearing potential conflicts, appointed Barbara Solomon as the Panelist for this matter. The Panelist agrees with the Center’s assessment that the Complaint satisfies the requirements of the Policy, Rules and Supplemental Rules.

Complainant avers that it has been using the mark WARM THINGS in connection with operating retail stores and a mail catalog business since as early as 1973, that it has been using the mark WARM THINGS in connection with a line of clothing since 1980, and that it has been using the mark WARM THINGS in connection with a line of blankets and bed linen since 1993. As evidence of its rights in the mark WARM THINGS, Complainant has provided copies of trademark registrations for the mark WARM THINGS including Registration Nos. 2257202, 2257206, 2267064 and 2267063. Complainant states that products under the WARM THINGS mark have been advertised and offered for sale throughout the United States and that Complainant has invested "large sums" of money promoting and advertising products under the WARM THINGS mark and has built a reputation for high-quality products.

Respondent registered the domain name <warmthings.com> with Network Solutions on November 23, 1998. At that time, according to Respondent, the domain name pointed to a website, also accessible via the domain name <diversitex.com>, which offered communications products and services, as well as website design services.

According to Complainant, on March 24, 2000, it wrote to Respondent and asked Respondent to assign the domain name to Complainant.[1] It appears that some time after the demand letter was sent, Respondent stopped using the domain name to connect to any active website and has not used the domain name <warmthings.com> to point to any site from mid-2000 until the present.

In its Complaint, Complainant asserts rights in the WARM THINGS mark based on its use since 1973, and its registrations for the mark WARM THINGS. It next asserts that when consumers enter the domain name they are rerouted to a site for diversitex. The Panel notes that the domain name did not reroute to any page as of the date of this decision. Complainant states that the site to which the <warmthings.com> name had been diverted sells products "totally unrelated" to the mark WARM THINGS and that Respondent is "creating a likelihood of confusion with Complainant’s mark as to its affiliation with and endorsement by Complainant of Respondent’s website and services." Complainant further contends that Respondent has intentionally, knowingly and willfully infringed upon the WARM THINGS mark in order to deceive consumers. Finally, Complainant alleges that to its knowledge and apart from Respondent’s website, there is no evidence that Respondent is recognized or is identified with the WARM THINGS mark.

In its Response, Respondent contends that the Complaint should be rejected on jurisdictional and factual grounds arguing that Respondent has legitimate rights and interests in the domain name, that the domain name was not registered in bad faith, and that the domain name is not being used in bad faith. In support of its claim, Respondent contends that there can be no finding of use in bad faith since the domain name does not point to any website and has not pointed to a website since mid-2000. Respondent further contends that there is no evidence the domain name was registered in bad faith as the words WARM and THINGS are common terms widely used to describe various objects, ideas and situations. Finally, Respondent claims that he had legitimate rights and interests in the domain name because the term WARM THINGS relates directly to products and services Respondent offered to sell at his website.

Under paragraph 4(a) of the Policy, Complainant must prove each of the following to obtain the transfer of a domain name:

(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;

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

(3) that the Respondent has registered and is using the domain name in bad faith.

Before reaching the requirements set forth in paragraph 4(a) of the Policy, the Panel concludes that Complainant has established rights in its WARM THINGS mark through its registrations in the U.S. and through its claimed use since 1973. To the extent that Respondent is attempting to argue that Complainant’s mark is descriptive or does not merit protection, such claim is rejected in light of the existence of Complainant’s registrations.

Neither party has addressed the issue of whether the domain name <warmthings.com> is identical or confusingly similar to the trademark WARM THINGS. A simple comparison of the trademark to the domain name makes it clear that the domain name is identical. The addition of the top-level designator ".com" in the disputed domain name is of no legal significance in determining whether Complainant has met its burden on this element.

Under the Policy, legitimate interests in a domain name may be demonstrated by showing that:

(1) Before any notice of the dispute Respondent used, or made preparations to use, the domain name in connection with a bona fide offering of goods or services;

(2) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or

(3) Respondent is making legitimate, non-commercial and fair use of the domain name without intent of commercial gain or to misleadingly divert consumers or to tarnish the trademarks at issue. Policy ¶ 4(c).

In arguing that Respondent lacks legitimate rights or interests, Complainant asserts without benefit of evidence that "there is no evidence whatsoever that Respondent or its services are recognized or in any way are identified by consumers or people in the trade with the WARM THINGS mark." This, however, fails to address the Policy. Respondent has stated without contradiction by Complainant that from 1998 until mid-2000, it used the domain name to point to a website on which it offered products and services. As such, Respondent has shown that before notice of this dispute, which Complainant states did not occur until March 2000, Respondent had used the domain name in connection with a bona fide offering of goods or services.

It is true that infringing use of a mark may not give rise to legitimate rights or interests. Indeed, good faith is a key element in determining whether there was bona fide use under the Policy. See World Wrestling Federation Entertainment, Inc. v. Rift, WIPO D2000-1499 (noting that not all use prior to notice of the dispute can qualify as a bona fide use). The question here is whether there is evidence that Respondent’s use intentionally traded on the fame of Complainant’s rights. Here, the evidence submitted by Complainant shows that the Respondent was not using WARM THINGS to sell products that were competitive to that of the Complainant’s product. Rather, as Complainant puts it, Respondent was offering products "totally unrelated" to the mark WARM THINGS. As such, it is difficult to imagine how Respondent could be trading off the recognition of Complainant’s marks. Moreover, according to the trademark registrations submitted by Complainant, all were issued after Respondent registered the domain name. As such, Respondent is not charged with being on constructive notice of Complainant’s rights. While there may be questions as to whether Respondent has legitimate interest or rights in <warmthings.com>, the Panel concludes that based on the evidence submitted, Complainant has not met its burden of proof on this issue.

The purpose of the Policy is to prevent clearly abusive acts of cybersquatting. The Policy is not designed to address any issue of unfair competition or misuse of a domain name. It is for this reason that there is a requirement under the Policy for the Complainant to prove that the Respondent registered and used the domain name in bad faith. The Policy sets forth various factors to be examined in considering whether there is such bad faith registration and use although the Policy recognizes that there may be other circumstances not enumerated in the Policy that might show bad faith.

Complainant does not suggest and there is no evidence that Respondent registered the domain name primarily for the purpose of transferring it for valuable consideration in excess of documented out-of-pocket costs. See Policy ¶4(b)(i). Indeed, Respondent appears to have rejected any suggestion that it transfer the domain name and did not respond to Complainant’s proposals for transfer of the domain name by requesting payment of any type. Complainant also does not suggest that Respondent has engaged in a pattern of registering domain names in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name. See Policy ¶ 4(b)(ii). And Complainant has not argued that Respondent registered the domain name for the purpose of disrupting the business of Complainant. See Policy ¶ 4(b)(ii). Indeed, Respondent owned the domain name for 2 years before Complainant ever objected and for 4 years before Complainant brought this action. This delay suggests that Complainant was not adversely affected by the registration.

Instead, Complainant relies on Policy ¶ 4(b)(iv) which states that bad faith can be found if a Respondent intentionally attempts to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement. There is no evidence that Respondent registered or used <warmthings.com> to create confusion. Nor is there any evidence to suggest that Respondent would benefit from the use of the domain name <warmthings.com> or its association with Complainant. While Complainant states that its mark is strong and well-known, other than the allegations of the Complaint there is no evidence of goodwill or reputation, including evidence of sales, advertising, advertising expenditures or other renown.

There is also no evidence that Respondent was using <warmthings.com> to sell products that are competitive with those of Complainant. Clearly, anybody who went to the <warmthings.com> website when it was in use would have known immediately that it had not reached the Complainant. U.S. courts have repeatedly held in the Internet context that initial interest confusion that arises from a defendant’s use of a domain name is not legally significant where it is apparent once the consumer reaches a website that they are at the wrong site and have not reached the party they are looking for. As one court noted, "Internet surfers are inured to the false starts and excursions awaiting them." See Chatam International,. Inc. v. Bodum, Inc, 157 F. Supp. 2d 549, 558 (E.D. Pa 2001); accord, Strick Corporation v. James B. Stickland, Jr., 162 F. Supp. 2d 372, 377 (E.D. Pa. 2001); Hasbro, Inc. v. Clue Computing, 232 F.3d 1, 2 (1st Cir. 2000); Checkpoint Systems, Inc. v. Checkpoint Software Technologies, Inc., 269 F.3d 270 (3rd Cir. 2001). Given this case law, the Panel holds that the Complainant has not shown an attempt by the Respondent to create likelihood of confusion as that term is defined by U.S. law. Accordingly, Complainant has not carried its burden of proof on this issue. Certainly, the submissions make it apparent that this case is not the type of clear cut case of cybersquatting that is appropriate for resolution under the UDRP. To the extent that this matter needs to be resolved it needs to be resolved before a trial court with appropriate offers of evidence.

Respondent has alleged that the filing of the UDRP by Complainant constitutes an "effort to obtain [<warmthings.com>] from a legitimate good faith registrant" and is "a naked attempt to acquire by administrative action what it simply is not entitled to." The Panel takes this to be an allegation by Respondent that Complainant is involved in reverse domain name hijacking.

Reverse domain name hijacking is defined in paragraph 1 of the Rules as meaning "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name." In this case, the Panel does not find that the Complaint was brought in bad faith. When Complainant filed the Complaint, it was the owner of U.S. trademark registrations for the mark WARM THINGS. At the time the Complaint was filed, Respondent was not making active use of the domain name in connection with a website or in connection with provision of any goods and services. Taken together, Complainant had a good faith basis for bringing the Complaint.

Although Complainant has established rights in the mark WARM THINGS and despite the fact that the domain name is identical to Complainant’s mark, this does not mean that Complainant is entitled to the relief it seeks. Complainant has not met its burden of showing that Respondent does not have legitimate rights or interests in the domain name nor has Complainant met its burden of proving that Respondent registered and is using the domain name in bad faith. Because of this failure of proof, Complainant’s request for transfer of the domain name is denied.

As to Respondent’s request for a declaration that Complainant has engaged in reverse domain name hijacking, Respondent has failed to make out such a claim against the Complainant.

1. Complainant states in its Complaint that it has attached the March 24 letter as Annex 4 to the Complaint. No such letter appears in the Complaint. Instead, a letter dated June 21, 2000, to an attorney for Mr. Weiss has been placed in the record.