WIPO Domain Name Decision: D2004-0927

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sand Cph A/S v. Poddar, Sandeep

Case No. D2004-0927

1. The Parties

The Complainant is Sand Cph A/S, Denmark, represented by L.A. Groth & Co. KB, Denmark.

The Respondent is Poddar, Sandeep, Calcutta, Kolkata, India.

2. The Domain Name and Registrar

The disputed domain name <sandclothing.com> (the “Disputed Domain Name”) is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2004. On November 5, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On November 5, 2004, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 November 15, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2004. The Response was filed with the Center on November 25, 2004.

The Center appointed Andrea Mondini as the sole panelist in this matter on December 8, 2004. 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 Complainant is a company marketing clothing products in Denmark and other European countries under the trademark SAND. It owns trademark registrations in Denmark for the trademark SAND as a word mark (filed on July 3, 1991) and as a design mark (SAND logo & tree device) as well as the International Registration of the word mark SAND claiming clothing and other fashion accessories (IR 810725). The Complainant also owns the domain names <sand.dk> and <sand-europe.com>.

The Respondent is located in India and markets clothing products on a website linked to the Disputed Domain Name. The Disputed Domain Name was registered on November 18, 1999.

5. Parties’ Contentions

A. Complainant

The Complainant contends:

- that it has used the trademark SAND in Denmark for more than 23 years and throughout Europe for nearly 15 years and that as a result of extensive marketing and promotional activities this trademark has become well known for clothing products;

- that SAND products are currently sold in more than 1500 outlets in Europe;

- that the Disputed Domain Name is confusingly similar to the trademark SAND;

- that it obtained registrations for the trademark SAND before the Respondent’s registration of the Disputed Domain Name;

- that the Respondent sells original and genuine SAND shirts, but that there is no license or other relationship between the Complainant and the Respondent;

- that the Disputed Domain Name has been registered and is being used in bad faith because SAND exclusively identifies the Complainant in the countries where the Complainant has retail activities and because the Respondent uses the trademark SAND in the same typography as it is registered by the Complainant.

B. Respondent

The Respondent denies the Complainant’s allegation and contends:

- that it is in the fabric business in India since 1976, and that it started distributing men’s shirts in 1999 under the mark SAND CLOTHING;

- that it owns a trademark registration in India for the trademark SAND CLOTHING (logo);

- that the Disputed Domain Name derives from the Respondent’s nickname “Sandy”.

- that it was not aware of the Complainant’s trademark registration in Denmark when it registered the Disputed Domain Name;

- that it registered the Disputed Domain Name under the “.com” domain because of the popularity of this gTLD, but that it markets its products in India only, so that there can be no risk of confusion;

- that it uses a distinguishable typography.

6. Discussion and Findings

To have the disputed domain name transferred to the Complainant, it must prove each of the following (Policy, paragraph 4(a)):

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

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

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

A. Identical or Confusingly Similar

The Complainant has shown that it holds valid rights in the word mark “SAND” and the design mark “SAND” (logo and tree device). The Complainant has also shown that the registrations of these trademarks in Denmark predate the registration of the Disputed Domain Name. The Respondent does not contest the existence of these trademark registrations owned by the Complainant.

The disputed domain name incorporates the identical trademark SAND held by the Complainant and the ending “clothing”. The adding of a generic term the Complainant’s trademark, however, does not diminish the likelihood of confusion (GA Modefine S.A. v. Mark O’Flynn, WIPO Case No. D2000-1424: <armaniboutique.com>). On the contrary, the likelihood of confusion can be considered as rather aggravated (Sodexho Alliance v. Entredomains, Inc., WIPO Case No. D2002-1001: <sodexhoonline.com>).

The Panel, thus, finds that the Disputed Domain Name is confusingly similar to the trademarks held by the Complainant.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

(a) that he used or has made 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 prior to the dispute; or

(b) that he is commonly known by the domain name, even if he has not acquired any trademark rights; or

(c) that he intends to make 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.

In its Response, the Respondent alleged that it owns in India a registration of the trademark SAND CLOTHING and attached a document, which allegedly constitutes a trademark registration. This document is not conclusive evidence because (i) the name of the trademark owner is left blank and (ii) there is no reference between the cover letter of the Trademark Register dated November 10, 2003, and the photocopy attached thereto. In any event, this document explicitly states that the registration does not constitute a trademark registration. Moreover, it is striking that that this trademark allegedly filed by the Respondent features the word SAND in the same distinctive typography (“S” and “D” in larger font size than the other letters) as the Complainant’s registered trademark.

The Respondent has not shown that he is commonly known by the Disputed Domain Name, because the name Sandeep and the nickname “Sandy” are different from the Disputed Domain Name.

The Respondent asserts that he used use the mark SAND CLOTHING and the Disputed Domain Name in connection with a bona fide offering of goods prior to the dispute. However, it can be no coincidence that the Respondent uses the mark SAND in the same distinctive typography (“S” and “D” in larger font size than the other letters) as the Complainant’s registered trademark. Therefore, it can be inferred that the Respondent was aware of the Complainant’s mark.

In the present case, the Complainant asserted that the Respondent uses the Disputed Domain Name to resell original and genuine SAND shirts. The Respondent did not contest this assertion. In determining whether a reseller of trademarked goods can use the trademark at issue in its domain name, previous decisions have held that a respondent must at the minimum: (i) actually be offering the goods or services at issue; (ii) use the site to sell only the trademarked goods; (iii) accurately disclose the registrant’s relationship with the trademark owner; and (iv) not try to corner the market in all domain names (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, <okidataparts.com>).

On its website the Respondent states that it “is sourcing the best available cotton fabrics from around the world which helps us in designing the perfect shirt for you.” It is therefore established that the Respondent uses the site to also sell shirts which are not manufactured by the Complainant, and that the Respondent does not accurately disclose the source of the products sold on its website. Such a use is not “bona fide” under the standard outlined in WIPO Case No. D2001-0903.

C. Registered and Used in Bad Faith

The Complainant has shown that its trademark SAND is internationally well known in the fashion business. As already mentioned, the fact that Respondent uses the trademark SAND on its website in the same distinctive typography (“S” and “D” in larger font size than the other letters) as the Complainant’s registered design trademark shows that the Respondent was obviously aware of the Complainant’s trademark. It is also established that the Respondent uses its website featuring the SAND logo to also sell shirts which are not manufactured by the Complainant. The Panel therefore finds that that the Respondent registered and is using the Disputed Domain name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to its website and by creating a likelihood of confusion with the Complainant’s mark as to the source of SAND products and of the endorsement of its website.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <sandclothing.com> be transferred to the Complainant.

Andrea Mondini
Sole Panelist

Dated December 21, 2004