WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Oasis Stores Ltd. v. Everquest Corp. S.A.

Case No: D2002-0098

The Complainant in this administrative proceeding is Oasis Stores Ltd. established at 69-77 Paul Street, London EC2A 4PN, represented by Mr. Stuart Goldberg, Dechert, at 2 Serjeants' Inn, London EC4Y 1LT.

The Respondent is Everquest Corp. S.A., Panama, to be contacted through Dragan Dakic, 2928 41^st Ave Suite 910B, New York, NY 11101, United States of America.

The Domain Name at issue is <designeroasis.com>. The Domain Name is registered with Tucows.com Inc., Toronto, Canada.

Complainant filed a Complaint ("the Complaint") with the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") electronically on January 30, 2002, and by hard copy on February 1, 2002.

On February 4, 2002, the Center acknowledged receipt of the Complaint.

On February 5, 2001, the Center transmitted to the Registrar a request for registrar verification in connection with this case so as to:

- confirm that the Domain Name at issue is registered with Registrar;

- confirm that the person identified as the Respondent is the current registrant of the Domain Name;

- provide full contact details, i.e. postal address(es), telephone number(s), facsimile number(s), e-mail address(es) available in the Registrar's Whois database for the registrant of the disputed Domain Name, the technical contact, the administrative contact, and the billing contact for the Domain Name.

On February 5, 2002, the Registrar responded providing the details requested by the Center, and confirmed that it was the concerned Registrar.

On February 6, 2002, the Center verified that the Complaint met the formal requirements of the ICANN 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").

The Panel has reviewed the documentary evidence provided by the Parties and the Center and agrees with the Center's assessment that the Complaint complies with the formal requirements of the aforementioned Rules.

The administrative proceeding commenced on February 6, 2002. The same day, the Complaint was notified to Respondent.

On March 6, 2002, the Center notified the Respondent's default.

Upon receipt of the necessary declaration of independence and impartiality of the present panel, the Center appointed on March 18, 2002, Prof. Charles Gielen as sole panelist.

Complainant operates and has operated since the mid-1970s a network of retail outlets and franchises selling inter alia women’s clothing and other fashion accessories. Oasis is a leading high street designer and retailer with over 100 retailing outlets and concessions operating in the UK, the Middle East, the Far East, and Scandinavia. The Complainant has also registered a portfolio of trademarks in a great number of jurisdictions. Case details for these trademarks are at Annex 3 to the hard copy of the Complaint. The Complainant trades from its website at the domain name <oasis-stores.com> which provides extensive information about the Complainant’s goods and services. A print out of this website as at December 12, 2001, is at Annex 4 to the hard copy of this Complaint. The Complainant is also the owner of the following Domain Name: <oasis-stores.co.uk>, <oasisstores.co.uk>, <oasis-stores.plc.uk> and <oasistores.co.uk>.

Respondent is a Panama company who registered the Domain Name on June 8, 2000, and who runs a website (Annex 6) giving information on and links to fashion items of brands such as Gucci, Prada and Fendi.

Complainant contacted Respondent by letter of August 20, 2001, with a request to transfer the Domain Name against payment of a reasonable amount. This letter remained unanswered.

Complainant alleges that the Domain Name is identical or confusingly similar to the trademark registered and used by Complainant. It points out that Respondent does not have any legitimate interests in the Domain Name. Complainant alleges that originally there was no active website under the Domain Name. Furthermore Complainant points at other domain names of linked websites such as <hotfashion.ws>, <cosmeticcall.com> and <jillconsignement.com>. Finally the Complainant says that the Domain Name is registered and used in bad faith, because Respondent had knowledge or at least constructive knowledge of the existence of the trademarks of Complainant before registration of the Domain Name. Furthermore there is likelihood of confusion by creating the impression that there is a commercial connection between the parties. Finally bad faith can be inferred from the fact that correspondence remained unanswered and that there are only limited contact details known of Respondent, so that Respondent is seeking to avoid its identity being known.

Respondent did not file a Response to the Complaint and is in default.

6. Discussion and Findings

To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:

1. the Domain Name are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

2. the Respondent has no rights or legitimate interests in the Domain Name; and

3. the Domain Name have been registered and used in bad faith.

Although Respondent is in default, the Panel needs to come to a decision based on the information before it. The fact that none of the facts and allegations have been contested by Respondent only leads to the conclusion that the Panel has to accept the factual allegations by Complainant as true. This however is not necessarily true for the application of the Policy to these facts.

6.1. Identity or confusing similarity

There is no identity between the trademarks of Complainant and the Domain Name. Therefore the question is whether or not there is confusing similarity between the trademarks of Complainant (mainly consisting of the word "Oasis") and the Domain Name <designeroasis>. Here the problem the Panel is facing is the word "Oasis" is a normal word in the English language meaning a lovely place in unpleasant surroundings. It can very well be a valid trademark, but because it also describes a characteristic of the products, namely that the place where they can be obtained is a pleasant place, it cannot be considered inherently very distinctive. There is no proof at all before the Panel of the strength of the mark and therefore the starting point is a valid mark albeit of a weak nature. This is confirmed by the fact that the word Oasis is used in an extensive way by third parties. Use of a search engine on Internet reveals a great number of hits showing Oasis as a trade name for all kind of activities. It will therefore for the owner of the mark Oasis not be easy to oppose the use of this word by third parties, in particular not where such use is made in combination with other words, such as in this case. The name <designeroasis> also has a descriptive meaning, namely the oasis of design products or of designers. Even if Oasis is a valid mark it is questionable whether (also in the light of the extensive use of Oasis by third parties), the owner of the mark could oppose the use of the word "oasis" in a descriptive manner. Although the Panel realises that this is not a trademark case, the words "confusing similar" in paragraph 4(a) of the Policy clearly indicate that an assessment should be made using principles of trademark law. Therefore the Panel is not convinced that there is a confusing similarity.

Respondent did not give any proof of rights or legitimate interests in the Domain Name. There has been no use by Respondent prior to the use of Complainant's trademark and trade names. So, the factual allegations made by Complainant is this respect should be accepted as true. The panel therefore concludes that condition 2 is fulfilled.

According to paragraph 4(a)(iii) of the ICANN Policy, it is incumbent on the Complainant to prove that the Respondent has registered and is using the Domain Name in bad faith. The panel is of the opinion that such proof is not given in this case. None of the circumstances mentioned in par. 4(b)(i)-(iii) occur in this case. The argumentation by Complainant mainly seems to be based on the creation of likelihood of confusion and the non-Response of Respondent. The creation of likelihood of confusion can indeed play a role in the assessment of bad faith, but from paragraph 4(b)(iv) it follows that there is more to be proven. The mere creation of likelihood of confusion is not enough. It should be proven that by such creation Respondent has intentionally attempted to attract for commercial gain Internet users to its website. No such proof was given however. To this the Panel adds, that it is not convinced that likelihood of confusion is created (see above under 5.1). The circumstances mentioned by Complainant namely that the identity of the owner of the Domain Name is unclear, is as such not sufficient to argue the Domain Name has been registered and is being used in bad faith. The Panel concludes that there is no bad faith in the registration and use of the Domain Name.

For the foregoing reasons, the Panel concludes the Complaint is denied.