WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Windsor Fashions, Inc. v. Windsor Software Corporation

Case No: D2002-0839

Complainant in this administrative proceeding is Windsor Fashions, Inc., a California corporation with a principal place of business in Los Angeles, California, United States of America. Complainant is represented in this proceeding by Abraham M. Rudy, Esq. and Julie Waldman, Esq., Weisman, Wolff, Bergman, Coleman, Grodin & Evall LLP, Beverly Hills, California, United States of America.

Respondent in this proceeding is Windsor Software Corporation, a Maryland corporation with a principal place of business in Silver Spring, Maryland, United States of America. Respondent is represented in this proceeding by John B. Berryhill, Esq, of Philadelphia, Pennsylvania, United States of America.

The domain name in dispute is <windsor.com>.

The registrar for the disputed domain name is Dotster.com of Vancouver, Washington, United States of America.

This dispute will be decided under the provisions of the Uniform Domain Name Dispute Resolution Policy (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Center, the Supplemental Rules).

The Complaint was filed on September 7, 2002, by e-mail, and on September 12, 2002, in hard copy. On September 9 and 13, 2002, the Center sent a Request of Registrar Verification to the registrar of the disputed domain name, Dotster.com, pursuant to which the Center received a verification on September 16, 2002, stating that the disputed domain name was covered by the Policy and that the Respondent was correctly identified.

On September 16, 2002, the Center forwarded a copy of the Complaint to the Respondent by courier and by e-mail and this proceeding officially began. From September 19, 2002, through September 30, 2002, the Center engaged in various e-mail correspondence with both Respondent and Complainant, which resulted in a Supplemental Filing by Complainant (September 25, 2002) and a declaration by Mr. Leon Zakaria (which had been missing a page in the Complaint as originally filed), the Complainant’s President (September 30, 2002).

On October 3, 2002, the Center received a Response from Respondent by e-mail, and on October 7, 2002, in hard copy.

Per Paragraph 5(b)(iv) of the Rules, Respondent requested a three-member Administrative Panel for consideration of this Case. The Administrative Panel submitted its Declarations of Impartiality and Independence by October 30, 2002, and the Center proceeded to appoint the Panel on October 31, 2002. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.

After review of the Complaint and the Response, the Panel has determined that it will neither request nor consider any Supplemental Filings in rendering a Decision in this case (Rule 12).

The due date of this Decision is November 14, 2002.

Complainant uses the name "Windsor" in connection with its production and sale of women's clothing and accessories. In 2002, Complainant obtained a registered United States service mark in that name.

Respondent is listed as the registrant of the disputed domain name. The record of registration was created on April 27, 1995. Respondent has used the disputed domain name to receive e-mail messages from clients. Respondent also has used the name to do business with NASDAQ and to file tax returns with the Internal Revenue Service of the United States of America (the "IRS").

Complainant has contacted Respondent, using e-mail addresses attached to <windsor.com>, concerning transfer of the disputed domain name, but Respondent has resisted Complainant's purchase offers.

- Since 1939, Complainant has used the "Windsor" word mark to identify the production and distribution of its distinctive line of women’s clothing and accessories. Complainant has more than thirty retail stores located throughout the United States and sells its products via the Internet, with total 2001 sales in excess of US$35 million.

- Complainant’s service mark "Windsor" has an effective United States registration date of April 2, 2002.

- The disputed domain name is identical or confusingly similar to the Complainant's service mark. Thus, Respondent’s possession of the disputed domain name completely precludes Complainant from using its registered mark in the global computer network

- Respondent has no right or legitimate interest in respect of the disputed domain name. Respondent has never had, nor does it have now, any registered service mark or trademark for "Windsor." For a substantial period of years, Respondent has not used the domain name, <windsor.com>, or any variation thereof, in a URL necessary to access a web site. Respondent is not commonly known by the domain name, "Windsor," and is not an on-going concern.

- Respondent registered the <windsor.com> domain name in bad faith. Respondent provided false contact details to the Registrar in its registration of that name. Respondent is not a going business concern and has not been using the domain name in connection with a web site for a substantial period of time. Over a period of two years, Respondent has rebuffed several attempts by Complainant to purchase the disputed domain name (for reasonable sums up to $7,500), at one point demanding a sum in excess of one million dollars for the name.

- Respondent has been doing business continuously since its incorporation in 1992, and has been using, and continues to use, the disputed domain name, <windsor.com>, since shortly after its registration in 1995, as a vital part of Respondent's business.

- Communications between Respondent and its clients, worth millions of dollars to the Respondent’s business over the years, are all sent and received through e-mail addresses at <windsor.com>. Respondent does not need a web page at the disputed domain name, just as Complainant’s counsel and Respondent’s counsel do not have web pages corresponding to either of their domain names.

- Complainant seeks to disrupt and divert Respondent’s professional communications, to defame Respondent, to interfere in Respondent’s performance of contracts with others, to harass Respondent, and to destroy Respondent’s business.

- Since its registration of the disputed domain name, Respondent has consistently declined several offers to purchase the name. With respect to sale of the disputed domain name, Complainant has misinterpreted Respondent's statement "I wouldn’t sell it for a million dollars" to mean "I will sell it for an amount in excess of a million dollars."

- Complainant is one of hundreds of parties which use the term "Windsor" in commerce. Complainant applied for its service mark more than four years ago and obtained registration seven years after the disputed domain name was registered.

- Respondent concedes that the domain name, <windsor.com>, is identical to Complainant's mark "Windsor."

- Respondent has rights and legitimate interests in the disputed domain name. Respondent is known as "Windsor Software" by, among others, the relevant class of consumers with whom Respondent contracts for services, NASDAQ, the Greater Washington Board of Trade and the IRS. Respondent operated an active web site at <windsor.com> as early as 1996.

- Respondent did not register and is not using the disputed domain name in bad faith. Respondent did not attempt to avoid contact with others, including Complainant, as evidenced by Complainant's many communications with Respondent. The use of the name primarily for e-mail communications constitutes good faith use. Respondent made no offer to sell the name to Complainant.

- Complainant is guilty of an attempt at reverse domain name hijacking. Complainant was well aware that Respondent was a Maryland corporation of a name similar to Complainant's service mark, and that Respondent had registered the domain name years before Complainant registered the mark. Complainant's own e-mail communications with Respondent through the disputed domain name demonstrate that the name was and is being used by Respondent.

Complainant may prevail in these proceedings and will be entitled to transfer of the disputed domain name, <windsor.com>, provided that Complainant can prove the following (sections 4(a)(i) through (iii) of the Policy):

- the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

- Respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name was registered and is being used by Respondent in bad faith.

In accordance with Respondent's concession on this point, the Panel finds that Complainant owns a valid registration of the service mark, "Windsor", with the United States Patent and Trademark Office (i.e., U.S. Registration No. 2,554,675, dated April 2, 2002).

The disputed domain name <windsor.com> is identical to Complainant's service mark, except for the addition of the gTLD ".com". The Panel determines that the addition of ".com" is immaterial in this case.

Thus, the Panel concludes that Complainant has shown that the disputed domain name is identical to a trademark or service mark in which Complainant has rights.

The Policy allows that Respondent may establish its rights and legitimate interests in a domain name by submitting evidence on any one of three specific circumstances. One such circumstance is that "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" (section 4(c)(ii) of the Policy). In this case Respondent's name, as registered for the disputed domain name, is "Windsor Software Corporation." That name obviously includes the word, "windsor," which constitutes the full disputed domain name. It is possible for a deceptive registrant to concoct a phony business name under which to register a domain name with the intent to deceive a trademark holder or the general public as to the legitimacy of the registrant's claim to the domain name. However, in this case, the Panel finds it most improbable that Respondent has, among other things, formally incorporated under the name "Windsor Software Corporation" (Exhibit D of the Response), entered into a contract with NASDAQ under that name (Exhibit G of the Response), filed under that name with the Greater Washington Board of Trade (Exhibit F of the Response) and paid taxes to the IRS under that name (Exhibit J of the Response) all as a clever decade-long ruse to deceive and extort money from Complainant. No, the record establishes that Respondent is as it claims, a business operating under and commonly known by the name, "Windsor Software."

Accordingly, the Panel finds that, per section 4(c)(ii) of the Policy, Respondent has rights and legitimate interests in respect of the disputed domain name.

Since the Policy requires Complainant to prevail under each section of sections 4(a)(i), (ii) and (iii), the Panel does not need to consider section 4(a)(iii), i.e., whether the Respondent registered and is using the disputed domain name in bad faith.

Respondent has asked the Panel to find that Complainant's actions in this case constitute reverse domain name hijacking under the Policy. To do so, the Panel would have to find that Complainant acted in bad faith in initiating this proceeding.

Within the Complaint itself, Complainant admits to having pursued Respondent for at least two years about the transfer of the disputed domain name. During that time, Complainant communicated with Respondent through e-mail addresses appended to <windsor.com>, which Complainant disingenuously claimed Respondent was not using. Given that the Complaint refers to Respondent as a Maryland Corporation and Respondent's easily determined telephone listing (Exhibit K of the Response), the Panel finds it hard to believe the Complainant did not know the Respondent was some sort of business enterprise. Whether that enterprise is successful, well-managed or whatever, is not relevant for Policy purposes. What is relevant is that Respondent, an on-going business, is named "Windsor Software Corporation" (Emphasis added). No one familiar at all with the Policy and its requirements, including the Complainant here represented by reputable legal counsel, could have believed there were reasonable grounds for initiating this proceeding.

Furthermore, Complainant's waiting to file this Complaint until after it had obtained a United States service mark registration a few months ago (though it claims to have used the name "Windsor" since 1939), with full knowledge that Respondent had registered the disputed domain name in 1995, some seven years earlier, smacks of deception and an attempt to manipulate the Policy. It would seem to the Panel that, after years of trying to acquire the name from Respondent, Complainant is attempting unfairly to use the Policy as a crowbar to pry the name away from a legitimate business that happened to register the name before Complainant thought to do so.

For the preceding reasons, the Panel finds that Complainant has acted in bad faith in filing the Complaint and has attempted reverse domain name hijacking.

The Panel has found the Complainant failed to show that Respondent has no rights or legitimate interests in the disputed domain name, <windsor.com>, per section 4(a)(ii) of the Policy. Therefore, pursuant to section 4(i) of the Policy and section 15 of the Rules, the Panel orders that the disputed domain name, <windsor.com>, remain registered to Respondent, Windsor Software Corporation.

Also, pursuant to Rule 15(e) of the Rules, the Panel finds that this Complaint was brought in bad faith and constitutes an abuse of the Policy and the Rules.