WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

River Island Clothing Co. Limited v. Name Administration Inc. (BVI)

Case No. D2007-1293

1. The Parties

The Complainant is River Island Clothing Co. Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by Olswang, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Name Administration Inc. (BVI), Grand Cayman, Cayman Islands B.W.I., represented by John Berryhill, Ph.d., Esq., United States of America.

2. The Domain Name and Registrar

The disputed domain name <nushu.com> is registered with Domain Name Sales Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2007. On September 3, 2007, the Center transmitted by email to Domain Name Sales Corp. a request for registrar verification in connection with the domain name at issue. On September 4, 2007, Domain Name Sales Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant 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 September 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2007. The Response was filed with the Center September 28, 2007.

The Center appointed The Honourable Neil Anthony Brown QC, Tony Willoughby and David E. Sorkin as panelists in this matter on October 30, 2007. The Panel finds that it was properly constituted. Each member of 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.

The Panel notes that the above referenced Response was received by the Center after the specified due date of September 27, 2007. However, the Panel has, in the interests of fairness, considered the document.

4. Factual Background

The Complainant is British company that retails clothing, footware and accessories. One of its brands of footware is NUSHU. It is the registered owner of trademarks for NUSHU in ten jurisdictions, details of which are set out in the Complaint and two of which are as follows:

(a) Trademark registered number 2289012 registered in the United Kingdom on July 5, 2002 for NUSHU (stylized); and

(b) European Community Trademark registered number 2744647 registered on February 11, 2004 for a graphic representation of NUSHU

both registrations being in class 25 for articles of clothing; footwear; headgear.

The Respondent registered the domain name <nushu.com> on December 26, 2001.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the domain name <nushu.com> should no longer be registered with the Respondent but that it should be transferred to the Complainant.

It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is identical or confusingly similar to the Complainant’s registered and common law trademark NUSHU, that the Respondent has no rights or legitimate interests in the domain name and that it has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.

In support of its case on the first of these three elements, the Complainant relies on the registered NUSHU trademarks to which reference has already been made (the “NUSHU mark”) as well as common law trademark rights that it claims it has acquired in NUSHU and says that the domain name is identical to the trademarks because it incorporates the entirety of the trademark in the domain name with the addition of the generic top level domain suffix “. com”.

The Complainant then contends, to establish the second element, that the Respondent has no rights or legitimate interests in the domain name because it has not been authorized to use the Complainant’s mark and it cannot bring itself within any of the provisions of paragraph 4(c) of the Policy or otherwise establish a right or legitimate interest in the domain name. In particular, it is said that the Respondent is not related to the Complainant, is not commonly known by the domain name and has not made any non-commercial or fair use of the domain name. Moreover, it is contended that the Respondent has used the domain name for a website that provides access to identical and/or similar goods to those sold under the Complainant’s NUSHU mark.

Finally, the Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so because the inference should be drawn that the Respondent registered the domain name primarily for the purpose of selling, renting or otherwise transferring it to the Complainant or a competitor within the meaning of paragraph 4(b)(i) of the Policy and that that inference should be drawn from the fact that the domain name was registered only two days after the Complainant filed its application to register the NUSHU mark in the United Kingdom.

The Complainant then contends that the domain name was registered to prevent the owner of the trademark from reflecting it in a corresponding domain name, a conclusion that should be drawn because the registration of the domain name has prevented the Complainant from reflecting its NUSHU mark in a corresponding top level domain name and because the Respondent has registered other domain names incorporating prominent trademarks, showing a pattern of such conduct.

The Complainant also alleges that the domain name was registered primarily to disrupt the business of a competitor, because it is linked to sites, particularly “www.ebay.co.uk”, that offer goods and services identical to those supplied by the Complainant under the NUSHU mark. This raises the inference that the Respondent registered the domain name, not because the word “nushu” is a generic word, but because it is an invented word that attracts Internet users seeking the Complainant’s business.

Finally, the Complainant says that the domain name was registered primarily to confuse Internet users as to whether the goods offered through the Respondent’s website are endorsed by the Complainant as official Nushu products.

B. Respondent

The Respondent contends, first, that the Complainant does not have enforceable trademark rights required by the Policy because the registration of its trademarks does not predate the registration of the disputed domain name. That is so because its earliest trademarks were registered in the year 2002, whereas the domain name was registered on December 26, 2001. Furthermore, its applications for registration, including that on December 24, 2001, do not carry enforceable trademark rights.

The Respondent also says that the essence of each of the trademarks relied on is a graphic representation of generic words which describe the goods sold by the Complainant, namely “new” and “ shoe” and, although the words are misspelled, the phonetic equivalent of the representation remains generic. Nor, according to the Respondent, has the Complainant made out common law trademark rights to the word “nushu”.

Secondly, the Respondent contends that it registered the domain name on December 26, 2001 and since then and prior to notice of the dispute, has been using it for advertising purposes, including trade in “new shoes”. These goods come within the plain meaning of the expression that constitutes the domain name and using the domain name to advertise such goods constitutes a legitimate interest. The Respondent also denies that it has been offering the domain name for sale.

Thirdly, the Respondent contends that it did not register the domain name in bad faith and that when it registered the domain name it did not know of the Complainant or the filing of its trademark application on December 24, 2001; the sole reason why the Respondent registered the domain name was that it had previously been registered, but had been released from the registry on December 26, 2001, whereupon the Respondent acquired it. The Respondent was certainly not aware on December 25, 2001 that the Complainant had lodged its application for registration on December 24, 2001 and accordingly could not have registered the domain name in bad faith.

Nor, it is contended, was the domain name registered primarily for the purpose of sale, to prevent the Complainant from reflecting its trademark in a domain name or as any other form of abusive registration.

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.

For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

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

B. The Respondent has no rights or legitimate interests in respect of the domain name; and

C. The domain name has been registered and is being used in bad faith.

It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.

A. Identical or Confusingly Similar

Under this heading, the Respondent has submitted that the Complainant does not have the enforceable trademark rights required by the Policy because the registration of its trademarks did not predate the registration of the disputed domain name.

The disputed domain name was registered on December 26, 2001, but the Complainant’s United Kingdom trademark was not registered until July 5, 2002; its European Community trademark was registered on June 22, 2002 and the other trademarks it relies on were registered on various dates between April 2002 and 2006. It is true therefore that none of the trademarks was registered on or before December 26, 2001.

The Respondent has therefore argued that the Complainant does not have enforceable trademark rights under the Policy and cannot succeed on the first element to be proved under paragraph 4(a) of the Policy.

From time to time, UDRP panels have expressed the view that the registration of the relevant trademark must predate the registration of the disputed domain name. The decision in John Ode d/b/a/ ODE and ODE-Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074, however, raised what is generally regarded today as the essential issue on this matter, namely whether the requirement for the trademark to predate the registration of the domain name comes about because of paragraph 4(a)(iii), requiring proof of bad faith registration, rather than because of paragraph 4(a)(i), requiring proof of trademark rights.

That question has been debated over recent years and the generally accepted current view has become that expressed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, namely:

“1.4 Does the complainant have UDRP-relevant trademark rights in a mark that was registered, or in which the complainant acquired unregistered rights, after the disputed domain name was registered?

Consensus view: Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However it can be difficult to prove that the domain name was registered in bad faith, as it is difficult to show that the domain name was registered with a future trademark in mind.

Relevant decisions:

Digital Vision, Ltd. v. Advanced Chemill Systems WIPO Case No. D2001-0827, Denied

AB Svenska Spel v. Andrey Zacharov WIPO Case No. D2003-0527, Transfer

Iogen Corporation v. Iogen WIPO Case No. D2003-0544, Denied

Madrid 2012, S.A. v. Scott Martin-MadridMan Websites WIPO Case No. D2003-0598 among others, Transfer.”

As the Overview points out, paragraph 4 does not require proof of any particular time at which the Complainant must have trademark or service mark rights, for the Policy requires only that the complainant “has” trademarks rights, i.e. “has” them at the time the complaint is filed.

It is, however, equally clear and has long been recognized, that it is a different and much more difficult matter to establish that a respondent registered a domain name motivated by bad faith regarding a trademark that was not in existence at the date of registration of the domain name. As will be seen later, that issue is applicable to the facts of the present case.

For present purposes, however, the question is solely whether the Complainant has trademark rights that it can rely on and the Panel’s view is that it has established those rights by virtue of the trademarks for NUSHU that it has put in evidence.

The Panel must then consider whether the domain name <nushu.com> is identical to the asserted trademark NUSHU, as submitted by the Complainant or at least confusingly similar to it.

It is true, as the Respondent says, that when the trademark in question is a form of graphic representation, it is necessary to assess the substance and thrust of the trademark before the comparison is made. In the present case, the Panel has no doubt that the substance of the trademark is the word “nushu”.

The domain name also consists of the gTLD suffix “. com”. In that regard, it has been held many times that suffixes and minor spelling differences may not be used to negate a finding of identicality or confusing similarity that is otherwise present on the evidence, as it is in this case.

Thus, the Panel finds that the domain name is identical or confusingly similar to the Complainant’s registered trade mark. The Complainant has made out the first of the three elements that it must establish.

It should be noted, however, that this decision is based on the Complainant’s registered trademarks and not on its alleged common law trademark which, for reasons that will be given later, has not been made out.

B. Rights or Legitimate Interests

In light of the Panel’s finding under the next heading, it is unnecessary for the Panel to address this issue.

C. Registered and Used in Bad Faith

The conclusion that the Panel has come to on the third element is that the Complainant has not proved that the domain name was registered in bad faith and accordingly the Complainant cannot succeed in these proceedings. The reasons why that is so are as follows.

The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive.

The four specified circumstances are:

(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s 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 the respondent’s website or location or of a product or service on the site or location.

Accordingly, irrespective of whether a complainant relies on one or more of these specified criteria or whether it relies on other facts not so specified, it must show that the domain name was registered in bad faith as well as that it has been used in bad faith.

The Complainant has not been able to establish that the disputed domain name was registered in bad faith.

Ordinarily, to establish registration in bad faith, the Complainant must show at the very least that the Respondent at time of registration was aware of the existence of the Complainant’s trademark. The Respondent registered the domain name on December 26, 2001, a mere two days after the Complainant filed its application to register the NUSHU mark in the United Kingdom. The Complainant asserts that the inference has to be that the Respondent had somehow heard of the application.

However, this may be there is, nevertheless, no evidence to link these two events and, despite their proximity in time, it seems unlikely that the Respondent could have been aware of the application having been made on Christmas Eve, cogitated on it during Christmas Day and registered the domain name on Boxing Day.

The Respondent has also given an explanation, certified by its legal representative as being correct, that it did not register the domain name when it discovered the Complainant had applied to register the trademark. In particular, the explanation is offered that the Respondent “certainly was not” aware of the trademark application and denies ever having had any knowledge in that regard. It also says that the domain name <nushu.com> had been previously registered to a different registrant, that it was released by the registrar on December 26, 2001 and that the Respondent thereupon “acquired the domain name immediately upon its release from registration.” Moreover, the Respondent adds that “It is this fact alone which determined the timing of the Respondent’s registration of the domain name.” As to why the Respondent registered the domain name <nushu.com> in particular, it was because the name was “phonetically equivalent” to “new shoe”.

This explanation strikes the Panel as plausible. The Panel is therefore unable to conclude that on December 26, 2001 the Respondent was on balance aware that the Complainant had very recently applied to register its trademark or that the Respondent registered the domain name knowing of that fact. The Panel concludes that it is more likely than not that the Respondent registered the domain name for the reasons given, i.e. that it became available on December 26, 2001 and was phonetically equivalent to “new shoe.”

Had the Complainant’s brand been a well-known brand as at December 26, 2001, then there might have been reason for the Panel to reconsider its approach, but there is no evidence at all before the Panel as to the fame or commercial success of the brand at that date.

For these reasons the Complainant has not established that the domain name was registered in bad faith and has not therefore made out the third of three elements that it must establish to succeed.

7. Decision

For all the foregoing reasons, the Complaint is denied.