WIPO Domain Name Decision: D2008-0332

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Viking Range Corporation v. Domains By Proxy

Case No. D2008-0332

1. The Parties

The Complainant is Viking Range Corporation, Greenwood, Mississippi, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.

The Respondent is Domains By Proxy, Leutschenbachstrasse, Zurich, Switzerland.

2. The Domain Name and Registrar

The disputed domain name <vikingcookingschools.com> is registered with Name.net LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2008. On March 7, 2008, the Center transmitted by email to Name.net LLC a request for registrar verification in connection with the domain name at issue. On March 11, 2008 Name.net LLC transmitted by email to the Center its verification response indicating that Domains by Proxy was 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 on March 13, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2008.

The Center appointed Amarjit Singh as the sole panelist in this matter on April 15, 2008. 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 in this administrative proceeding is Viking Range Corporation, a corporation organized under the laws of the State of Mississippi with a principal place of business located in Greenwood, Mississippi.

The Complaint is based on the Complainant’s rights in and to the mark and name VIKING and VIKING COOKING SCHOOL.

The Complainant is the recorded owner of the trade mark VIKING and holds various registrations in respect thereof in the United States of America. The earliest registration obtained by the Complainant is dated April 21, 1987.

In April 2005, the Complainant registered the domain name <vikingcookingschool.com>, and used this domain name in connection with the offering and provision of cooking classes.

The domain name that is the subject of this Complaint is <vikingcookingschools.com>.

The WHOIS database indicates that Name.Net LLC is the concerned registrar of the domain name and that Domains By Proxy is the concerned registrant of the disputed domain name.

The registrant of the disputed domain name has used a proxy service to obtain registration of <vikingcookingschools.com>. This practice of using a proxy service to achieve registration of domain names is becoming an increasingly common occurrence. Under this arrangement, the name of the true registrant is not displayed in the Registrar’s WHOIS data base. It is said that proxy registrations have become popular with the rise of automatic harvesting of email and postal addresses and telephone numbers for the purpose of email spamming, direct marketing by mail and phone and also for fraud and identity theft. (See Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696.

In the early days of cases under the Policy, there were numerous instances where the respondents had provided false or misleading contact information. The famous Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, is a good example. In almost all those cases, Panels were able to take a rather jaundiced view of the provision of false information by registrants hiding behind an alias or the name of some other person. However, there can be wholly legitimate reasons for a person wishing to protect privacy by means of a proxy service. Many reputable registration services now offer a proxy registration service.

Difficulty arises when an administrative proceeding is brought under the Policy, at which stage the domain name should become frozen pending resolution of the Complaint. Without addressing here the proper position vis-à-vis trade mark owners making enquiries in the context of a possible complaint, in this Panel’s view it is for the Proxy to disclose the contact information of the beneficial owner to the dispute resolution provider and any Panel appointed by that provider.

In some cases, full disclosure of the beneficial ownership of the disputed domain name is made by the registrar. But there could be difficulty if the proxy did not do so. There is potential for abuse by cybersquatters.

Indeed, the definition of the Respondent in the Rules “means the holder of a domain name registration against which a Complaint is initiated”. The Rules seem to contemplate only the holder of the registration as the Respondent. The practice of naming both the Proxy Service and the beneficial owner of the registration was followed in two recent WIPO UDRP decisions: Media West-GRS, Inc., Media West-MNC, Inc., Gannett Pacific Corporation, Gannett Co., Inc., Gannett River States Publishing Corp., Guam Publications and Incorporated v. Moniker Privacy Services/Forum LLC/Registrant (187640) info@fashionid.com, WIPO Case No. D2006-0478 and MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC., WIPO Case No. D2006-0550.

The procedure in proceedings involving a proxy WHOIS service was described in Ohio Savings Bank v. l & l Internet, Inc. and David Rosenbaum, WIPO Case No. D2006-0881 as follows:

“When such circumstances arise, the Panel understands that the Center’s current practice is typically to require the Complainant to amend the complaint-either to name both the privacy service registrant and the party using the privacy service or to simply name the party using the privacy service. This practice is sensible and has the benefit of trying to get notice of the proceeding to the party that is most affected by the proceeding. However, it may simply be that one of the disadvantages of using a privacy service-to be weighed against the advantages of using such a service-are delays or lack of notice of proceedings that rely on the information contained in the registration record to provide notice. By this the Panel does not intend to suggest that such a delay or lack of notice is insignificant, but that they may simply be one of the consequences of the choice to use such a service, particularly where proceedings under the Policy look to and rely on information in the registration record maintained by the Registrar”.

The practice of having two respondents to a proceeding under the Policy where one is the entity against which any order has to be made and the other is the party vitally interested in the outcome and whose conduct is in issue is well-recognized in litigation and in rules of civil procedure-certainly in common law jurisdictions, as it helps to inform interested parties. This may not always be practicable, however, and in any event is not a requirement under the Policy or Rules, which are predicated on the responsibility of the registered holder of the domain name.

The Panel notes that this Complaint will proceed with the name of domain proxy service provider for the reason that the proxy service provider did not disclose the name of the beneficial owner of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant has adopted and used the mark VIKING since at least as early as 1986 in connection with cooking appliances, and has expanded the use of the mark VIKING to, among other things, cookware, cutlery, and small appliances. The Complainant has also adopted and used the name and mark VIKING COOKING SCHOOL in connection with cooking classes.

The Complainant is the recorded owner of the following U.S. trade mark/service mark registrations:

VIKING

U.S. Registration No. 1437211

Issued on April 21, 1987

First used on June 27, 1986

For: Gas ranges.

VIKING

U.S. Registration No. 1565774

Issued on November 14, 1989

US2000 10529246.2

First used on May 13, 1987

For: Gas and electric range exhaust hoods.

VIKING

U.S. Registration No. 1598452

Issued on May 29, 1990

First used on June 27, 1986

For: Gas cooking appliances, namely ranges, ovens, and cooktops for commercial or domestic use.

VIKING

U.S. Registration No. 1798615

Issued on October 12, 1993

First used on August 1992

For: Electric cooking appliances; namely, ranges, ovens and cooktops.

VIKING

U.S. Registration No. 1885831

Issued on March 28, 1995

First used on October 29, 1993

For: Kitchen clean-up appliances, namely compactors and food waste disposers.

VIKING

U.S. Registration No. 1805114

Issued on November 16, 1993

First used on July 1992

For: Kitchen clean-up appliances; namely, dishwashers.

VIKING

U.S. Registration No. 2196291

Issued on October 13, 1998

First used on January 1996

For: Refrigerators.

VIKING

U.S. Registration No. 2196439

Issued on October 13, 1998

First used on January 1997

For: Electric and gas outdoor cooking grills.

VIKING

U.S. Registration No. 2724541

Issued on June 10, 2003

First used on January 2003

US2000 10529246.2

For: Small kitchen appliances, namely, electric knives, electric can openers, electric pasta makers, electric food processors, blenders, electric mixers, electric food grinders and electric slicers.

VIKING

U.S. Registration No. 2493555

Issued on September 23, 2001

First used on January 1, 2001

For: Household utensils and accessories for cooking, cleaning and preparing food, namely, pots and pans, grills, spoons for mixing, serving and basting, pots and pan scrapers, spatulas, turners, whisks, sieves, strainers, chopping blocks, and graters; and tableware, namely, sterling silver knives, forks, and spoons; culinary hand tools and instruments, namely, knives hand operated slicers, pizza cutters, cheese slicers, non-electric pasta makers, and non-electric can openers.

VIKING

U.S. Registration No. 3163333

Issued on October 24, 2006

First used on April 2005

For: Small electrical kitchen appliances, namely, toasters.

VIKING

U.S. Registration No. 3326880

Issued on October 30, 2007

First used on January 31, 2004

For: Retail store services in the field of cooking appliances and accessories; and educational and entertainment services, namely, conducting a cooking school and providing cooking classes and demonstrations.

The Complainant also uses the following unregistered trade mark in connection with its Viking Cooking Schools for which application for registration is pending with US PTO:

VIKING COOKING SCHOOL

First Used: January 31, 2004

US2000 10529246.2

The Complainant has engaged itself in extensive marketing and use of the VIKING Marks in connection with a wide range of kitchen appliances and related products, including but not limited to ranges, refrigerators, grills, ovens and small appliances. The fame of the VIKING Marks is the product of significant investments of time, effort and money in advertising, marketing and promoting the Complainant’s VIKING Marks and the kitchen appliances and related products offered under the VIKING Marks. Consequently, the Complainant’s VIKING Marks are widely recognized for premium appliances and related products.

In April 2005, the Complainant registered the domain name <vikingcookingschool.com>, and the Complainant has used this domain name in connection with the offering and provision of cooking classes.

The WHOIS database indicates that Name.Net LLC is the concerned registrar and Domains By Proxy is the concerned registrant of the disputed domain name <vikingcookingschools.com>.

The disputed domain name is a confusingly similar variation of all of the Complainant’s registered VIKING Marks and the registered <vikingcookingschool.com> domain name.

The Complainant submits that given the fame of the VIKING Marks, there can be no doubt that consumers, on seeing the disputed domain name—which includes the Complainant’s VIKING Marks—will believe that the disputed domain name is related to the Complainant. Moreover, consumers who search the Internet for the Complainant’s web site will likely be directed to the disputed domain name, thus creating a likelihood of confusion.

The Respondent cannot demonstrate or establish any legitimate interest in the disputed domain name. The Complainant’s first use of the VIKING Marks predate by more than twenty years any use the Respondent may claim to have made of “vikingcookingschools.com” as a trade name, domain name, or mark.

In addition, the Respondent has registered and is using the disputed domain name solely for commercial gain.

On information and belief, the Respondent is simply holding or “parking” the disputed domain name in anticipation of selling it and has not made any preparations to use the disputed domain name for a bona fide offering of goods and services.

Due to the fact that the Complainant has both federal registrations and common law use that predate the Respondent’s registration of the disputed domain name, and because the Respondent is using the disputed domain name solely for profit, the Respondent has no intellectual property rights or legitimate interests in the disputed domain name.

The Complainant submits that the Respondent, prior to its adoption and use of the domain name <vikingcookingschools.com>, was aware that the Complainant was the owner of the VIKING Marks because of the substantial advertising and marketing of products and services under the VIKING name and marks. The Respondent was also on constructive notice of the Complainant’s rights in the VIKING Marks due to the Complainant’s numerous registrations of those Marks.

The Respondent is not making any legitimate noncommercial or fair use of the domain name at issue.

The disputed domain name is being used to divert Internet users, for the Respondent’s commercial gain.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cyber squatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.

Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted. It is, therefore, appropriate to note that merely because the Respondent has not made a response to the Complaint does not avoid the necessity of examining the issues in the light of the evidence.

Paragraph 4 of the policy provides that the onus of proof is on the Complainant. As the proceeding is a civil one, the standard of proof is on the balance of probabilities.

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant or cancelled:

(i) The domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

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

(iii) The domain names have been registered and are being used in bad faith.

That being so, the Panel will now proceed to enquire if the Complainant has discharged its onus to prove each of the three elements specified in paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The Complainant is also the registrant of the domain name <vikingcookingschool.com>. Print outs from the online databases of the United States Patent and Trade mark Office confirming the registrations of the trade marks mentioned above and the relevant pages of the Complainant’s website are attached to the Complaint as Exhibit-B & C respectively.

The Complainant has thus discharged its onus in establishing its proprietary rights in the trade mark and service mark VIKING and the domain name <vikingcookingschool.com>.

The disputed domain name <vikingcookingschools.com> is identical or confusingly similar to the Complainant’s trade mark VIKING, trade name Viking Cooking School and the domain name <vikingcookingschool.com>.

The disputed domain name (i) includes exactly and in its entirety the Complainant’s VIKING and VIKING COOKING SCHOOL marks with the mere addition of the letter “s” and (ii) is confusingly similar to the Complainant’s domain name <vikingcookingschool.com>. Accordingly, the domain name is identical or confusingly similar to the Complainant’s VIKING Marks due to the Respondent’s insignificant variation of the marks in the disputed domain name.

The Panel further notes that there can be no doubt that consumers, on seeing the disputed domain name—which includes the Complainant’s VIKING Marks—will believe that the disputed domain name is related to the Complainant. Moreover, consumers who search the Internet for the Complainant’s web site are likely to be directed to the disputed domain name.

For the above reasons, the Panel comes to the conclusion that the first element under the Policy — that the domain name registered by the Respondent is identical or confusingly similar to the trade marks in which the Complainant has rights — has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the following three non-exclusive circumstances which may demonstrate the Respondent’s rights or legitimate interests in the disputed domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable 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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”

As to the circumstances under paragraph 4(c)(i) of the Policy, the Complainant has not consented to the Respondent’s use of the disputed domain name, which incorporates the Complainant’s trade mark VIKING.

The Respondent registered the disputed domain name after the Complainant registered and commenced use of the VIKING Marks, and the <vikingcookingschool.com> domain name. The Respondent was more likely than not aware of the Complainant’s trade mark and the Complainant’s <vikingcookingschool.com> domain name and web site before the Respondent registered the disputed domain name (the Panel notes that the domain name would most likely have appeared in the search for available domains made prior to registration).

The Respondent registered the disputed domain name in 2007, more than twenty years after the Complainant’s first use of the VIKING Marks and nearly twenty years after the first registration for the VIKING Marks issued. The Respondent registered the disputed domain name long after the Complainant had established rights in its VIKING Marks through nationwide and worldwide use. See Fiber-Shield Indus., Inc. v. Fiber Shield LTD, NAF Case No. 92054.

The Panel notes that the Respondent appears to have no corporate, partnership, or fictitious business name or business listing registration under the name “vikingcookingschools.com” or even “viking cooking schools”. There is no evidence to show that the Respondent has used (other than the Respondent’s domain name registration) the trade mark or trade name “vikingcookingschools.com” or “viking cooking schools” or been commonly known as either “vikingcookingschools.com” or “viking cooking schools”. Further, the Respondent is not, and has never been, a representative or licensee of the Complainant, nor is the Respondent otherwise authorized to use the Complainant’s trade marks. See, e.g., Broadcom Corp. v. Intellifone Corp., NAF Case No. 96356 (finding no rights or legitimate interests because the Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 (finding no rights or legitimate interests were (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; and (3) the respondent is not commonly known by the domain name in question).

The Respondent appears to derive a financial benefit from the web traffic that is diverted through the disputed domain name to a linking portal where users are confronted with paid advertising links and revenue generating searches. A visit to the disputed domain name reveals that the disputed domain name is used to direct Internet users to a directory portal website containing a search box and a series of links. Complaint, Ex. D. The Respondent thus appears to use the disputed domain name for the purpose of obtaining click-through advertising revenue. These pages also contain links entitled “Viking Cooking Classes” and “Viking Appliances”, which lead to pages with links to a number of sites offering cooking classes, appliances and services related to them, i.e. competitors of the Complainant. Complaint, Ex. D. Because the Respondent uses the disputed domain name for commercial purposes with an intent to reap commercial gain, and misleadingly diverts those searching for the Complainant’s VIKING goods and services, the Respondent cannot claim a legitimate right or interest in the disputed domain name. See FleetBoston Financial Corporation v. Albert Jackson, WIPO Case No. D2003-0915 (“The fact that the Respondent uses the domain name to divert Internet users for its own benefit and profit to its portal website that provides hyperlinks to websites of the Complainant’s competitors or websites which provide advertisements for or links to the Complainant’s competitors is neither a bona fide offering of goods or services nor a legitimate non commercial or fair use of the domain names.”).

Accordingly, there is no evidence that the Respondent is utilizing the disputed domain name in connection with a bona fide offering of goods or services. The Respondent’s attempts to profit and monetize the disputed domain name by using the disputed domain name to mislead and divert users seeking to find the Complainant’s website is neither a bona fide offering of goods or services nor a legitimate non-commercial use of the disputed domain name. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and Madonna.com, WIPO Case No. D2000-0847 (“[U]se which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services.”)

Given the foregoing, the Panel finds that the Complainant has established the requirement of the Policy under paragraph 4(a)(ii). The circumstances as set forth and documented in the Complaint and its Annexes are sufficiently evocative of cyber squatting to require the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name. See e.g. Document Technologies Inc., v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.

C. Registered and Used in Bad Faith

For a complainant to succeed, the panel must be satisfied that a domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 trade mark or service mark or to a competitor of that the Complainant, for valuable consideration in excess of our documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

Under paragraph 4(b)(iv) of the Policy, bad faith can be shown by circumstances indicating that the Respondent deliberately used the domain name for commercial gain to divert Internet users based on a likelihood of confusion with the Complainant’s mark.

The Respondent’s bad faith registration and use is established here because the disputed domain name incorporates the VIKING Marks, and because the Respondent has sought to profit from the disputed domain name. Despite having no connection to the Complainant, the Respondent registered a domain name incorporating the Complainant’s VIKING Mark in its entirety.

Given the circumstances of this case, it is highly unlikely that the Respondent did not know about the Complainant and its VIKING Marks.

As discussed above, the structure of the website associated with the disputed domain name indicates that it is a “click-through” site, from which the Respondent receives advertising revenues from third parties whose websites are accessed via the Respondent’s website.

The Respondent’s website provides the Respondent a stream of “click-through” revenue based on the number of “hits” received. One panel described this phenomenon as follows:

“A website owner is paid click-through advertising revenues from having visitors to a website subsequently click on a link or banner advertisement which leads the visitor to a second website[…] This sort of arrangement illustrates a reason why a website owner might want a well-known mark included in its domain name.”

Nintendo of America, Inc. v. Pokemonplanet.net, Jerry Radl, and Fusion Media Solutions, Inc., WIPO Case No. D2001-1020 (transferring).

There are numerous UDRP decisions holding that “using the disputed domain name to redirect Internet users to websites that host links to external websites, including websites of the Complainant’s competitors”, evidences bad faith. See e.g., Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031.

The Panel therefore concludes on the basis of evidence on record and in the absence of a rebuttal by the Respondent, that the Respondent has registered and is using the disputed domain name in bad faith.

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 <vikingcookingschools.com> be transferred to the Complainant.

Amarjit Singh
(Sole Panelist)

Dated: April 29, 2008