The Complainant is The White Company (UK) Limited of Middlesex, United Kingdom of Great Britain and Northern Ireland, represented by Dechert, LLP, United Kingdom.
The Respondents are The White Linen Company, Vicki Mapplebeck of Brookvale, New South Wales, Australia, and White Homewares Pty. Ltd. of Collaroy Beach, New South Wales, Australia, represented by Anisimoff Legal, Australia.
The disputed domain names <thewhitehomecompany.com> and <whitehomecompany.com> are registered with Aust Domains International Pty Ltd dba Aust Domains, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2011. On April 26, 2011, May 2 and 3, 2011, the Center transmitted by email to Aust Domains International Pty Ltd dba Aust Domains, Inc. (the “Registrar”) requests for registrar verification in connection with the disputed domain names. On April 4, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants 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” or “UDRP”), 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 Respondents of the Complaint, and the proceedings commenced on May 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2011. The Response was filed with the Center on May 25, 2011.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on June 8, 2011. 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. It has been necessary to extend the due date for the decision to the date indicated under paragraph 7 below.
The Complainant established its mail order business supplying home accessories predominantly in the colour white in 1994. The Complainant opened its first retail store in Chelsea, London, United Kingdom in 2001. The Complainant now operates 25 retail stores, 2 outlet stores, and 5 concessions in the United Kingdom, plus 14 franchises in Dubai in the United Arab Emirates. The Complainant also offers retail store services through a mail order service and through its website at “www.thewhitecompany.com”.
The Complainant’s revenue for 2009/2010 was in excess of GBP 83.8 million, and their advertising expenses are approximately GBP 7,500,000 per year.
The Complainant owns several trademark registrations for the mark THE WHITE COMPANY, namely:
THE WHITE COMPANY – European Community Registration No. 2788578 dated July 25, 2002
THE WHITE COMPANY – United Kingdom Registration No. 2450213 dated November 9, 2007
THE WHITE COMPANY (logo) – United Kingdom Registration No. 2349982 – January 21, 2005
The Complainant first used the trademark THE WHITE COMPANY in Australia in 1995 through mail order sales. The Complainant has filed two trademark applications for THE WHITE COMPANY and THE WHITE COMPANY (logo) (Serial Nos. 1324904 and 1324905) on October 9, 2009. Both applications are pending before the Australian Trademarks Office.
The Respondents have operated their business under the names White Homewares Pty. Ltd. and The White Linen Company since December 2007. The Respondents offer for sale a variety of home and houseware goods including linen, candles and homeware products. The Respondents use the domain name <thewhitelinencompany.com.au> in association with their primary website.
The Respondents have filed two trademark applications in the Australian Trademarks Office for the marks THE WHITE LINEN COMPANY (Serial No. 1236072) and THE WHITE LINEN COMPANY (logo) (Serial No. 1236071) on April 21, 2008. Both of these trademark applications are the subject of opposition proceedings commenced by the Complainant.
The Respondents registered the disputed domain names <thewhitehomecompany.com> and <whitehomecompany.com> on February 16, 2011.
The Complainant owns the trademark THE WHITE COMPANY, registered as Community Trademark Registration No. 2788578 and United Kingdom Registration Nos. 2450213 and 2349982. The Respondents have registered the disputed domain names <thewhitehomecompany.com> and <whitehomecompany.com> which includes the two dominant elements of the Complainant’s trademark, namely the words WHITE and COMPANY, divided only by the generic and descriptive word ”Home”. The Complainant submits that the addition of the descriptive word “Home” does not distinguish the disputed domain names from the Complainant’s registered trademark. Accordingly, the Complainant contends that the disputed domain names are confusingly similar to the Complainant’s registered trademark THE WHITE COMPANY.
The Complainant submits that the Respondents cannot have any rights or legitimate interest in the disputed domain names, because the Complainant has exclusive rights to the trademark THE WHITE COMPANY and the Respondents have no business relationship with the Complainant. The Respondents were never licensed or otherwise authorized to use the Complainant’s trademark. Further, the Respondents are not making a bona fide use of the disputed domain names, in that both of the disputed domain names revert to a parking page. The Complainant contends that the Respondents operate a business under the name The White Linen Company, and that the Respondents are not known by the name The White Home Company, and therefore have no rights or legitimate interests in the disputed domain names.
The Complainant contends that the Respondents have registered and are using the disputed domain names in bad faith for the following reasons: (i) the Respondents were fully aware of the Complainant’s rights in the registered trademark THE WHITE COMPANY, because the Respondent, Vicki Mapplebeck, wrote to the Complainant seeking a franchise in Australia from the Complainant in 2007; (ii) the Respondents are using the confusingly similar domain names to disrupt the Complainant’s business; (iii) the Respondents registered the confusingly similar domain names to direct Internet users who are looking for the Complainant’s website to the Respondents’ website for the purposes of monetary gain; and (iv) the Respondents registered the confusingly similar domain names and are passively holding them to prevent the Complainant, the registered trademark owner, from owning the domain names.
The Respondents contend that the disputed domain names are not confusingly similar to the Complainant’s registered trademark THE WHITE COMPANY. The Respondents submit that the Complainant does not own worldwide registered rights to the trademark THE WHITE COMPANY, because many of the Complainant’s trademark applications have been refused, restricted or remain pending. The Complainant’s two trademark applications for THE WHITE COMPANY and THE WHITE COMPANY (logo) are still “under examination” before the Australian Trademarks Office.
The Respondents further contend that the word COMPANY is defined as a type of commercial organization, and therefore generic. The word WHITE is a descriptive word which refers to a colour (or absence of colour). The word “White” is also a common surname in the English-speaking word. Accordingly, the words “White” and “Company” are common and generic, descriptive terms. The word “Home” has a descriptive value in relation to the goods that the Respondents sell through its retail business.
The Respondents submit that there are many traders who use a combination of the words “The”, “White” and “Company” without any apparent confusion with the Complainant or each other. The Respondents further submit that the combination of common and descriptive words “White”, “Home” and “Company” does not automatically lead to a conclusion of the risk of confusion.
The Respondents also contend that the Complainant’s trademark THE WHITE COMPANY may have a reputation in England and some countries in the European Union, but that the Complainant’s reputation in Australia does not enjoy the same level of reputation, and is therefore not considered to be a famous trademark.
The Respondents operate a bona fide business under the name The White Linen Company. The Respondents have filed applications in the Australian Trademarks Office for THE WHITE LINEN COMPANY and THE WHITE LINEN COMPANY (logo). The Complainant has opposed those applications. The Respondents submit that they are confident if success in those proceedings, but they have registered the disputed domain names as a “fall-back” position in the event that the Respondents cannot continue to operate the retail business under the name The White Linen Company.
The Respondents contend that they did not register confusingly similar domain names, that they are operating a bona fide business under the name The White Linen Company. The Respondents submit that although the business is in competition with the Complainant’s business, it is not interfering with the Complainant’s business in any manner. The Respondents have not tried to conceal their identity when registering the disputed domain names. The Respondents further contend that the registration of domain name and then passively holding them does not necessarily lead to a conclusion of bad faith. The Respondents registered the disputed domain names as a “fall-back” position in the event that the Respondents are unable to continue to operate the business under the name The White Linen Company. In these circumstances, the Respondents contend that they registered the disputed domain names in good faith.
As a preliminary point, the Panel must address the overall context of this dispute.
The business conflict between the parties arises out of Respondents’ business The White Linen Company and the use of the related domain name <thewhitelinencompany.com.au> for an operating website that is directly competitive with the Complainant’s business. That domain name is not itself the subject matter of this UDRP, but the rights to the trademark THE WHITE LINEN COMPANY are currently being litigated by the parties in opposition proceedings in Australia. Although those parallel proceedings do not technically preclude this UDRP under (paragraph 18 of the Policy), the Panel believes that the overall circumstances are relevant to the determination of this dispute.
In particular, the Panel notes that the disputed domain names <thewhitehomecompany.com> and <whitehomecompany.com> have been chosen by Respondents a fall-back or alternative names to protect the Respondents’ position in the event that the opposition proceedings in Australia are decided against them. Effectively, the Complainant has chosen to focus this Complaint not on the domain name used for the Respondents’ operating website “www.thewhitelinencompany.com.au” but on the Respondents’ fall-back domain names, which are not yet in use.
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain names are identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondents have no rights or legitimate interest in respect of the domain names; and
(iii) The domain names have been registered and are being used in bad faith.
The Panel finds it unnecessary to make any findings on this issue, in light of the findings set out below with respect to “Rights or Legitimate Interests”.
In light of the fact that there are pending opposition proceedings in Australia on related trademark issues, the Panel wishes to make it clear at the outset that its findings on this issue are founded solely on the limited factual record available through this process. A different tribunal, provided with a fuller record, may well come to different conclusions.
In all the circumstances of this matter, the Panel is not prepared to find that Respondents have no rights or legitimate interests in the disputed domain names.
In reaching its conclusion on this issue, the Panel relies on the following factors:
(1) the Respondents have incorporated the business in Australia under the name White Homewares Pty. Ltd.
(2) the Respondents’ use of the words “White” and “Home” in the disputed domain names can therefore be viewed as reasonably connected to their corporate name.
(3) The evidence reveals that “White”, “Home” and “Company ” are widely adopted words, which lack inherent distinctiveness, and which are used in a significant number of domain names. The Panel notes that the related term “white goods” is defined as “(i) household goods, as bed sheets, tablecloths, and towels, formerly bleached and finished in white but now often patterned and colored. (ii) bleached goods, esp. cotton or linen fabrics” [The Random House Dictionary of the English Language, 1987, Random House, Inc.]. Accordingly, the use of the word ‘White” in association with the sale of household goods, namely linens, towels etc. is suggestive if not descriptive of the products being sold by both parties.
(4) The addition of the word “Home” also serves to distinguish the disputed domain names from the Complainant’s trademark, at least to some extent.
(5) The Respondents have candidly indicated that the disputed domain names have been registered as fall-back names, in the context of larger issues which will be ultimately determined in fully contested opposition proceedings between the parties in Australia.
In all these circumstances, the Panel is not prepared to find that the Respondents lack rights and legitimate interests in the disputed domain names. Accordingly, the Panel finds that the Complainant has failed to satisfy the requirement under paragraph 4(b) of the Policy.
In view of the Panel’s finding with respect to paragraph 4(b) of the Policy, it is not necessary for the Panel to find on the merits of paragraph 4(c).
For all the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Sole Panelist
Dated: July 10, 2011