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Outerwears, Inc. v. Domain Asia Ventures [2004] GENDND 1386 (4 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Outerwears, Inc. v. Domain Asia Ventures

Case No. D2004-0616

1. The Parties

Complainant is Outerwears, Inc., Schoolcraft, Michigan, United States of America, represented by Miller, Canfield, Paddock & Stone, PLC, United States of America.

Respondent is Domain Asia Ventures, Fujian, China, represented by ESQwire.com Law Firm, United States of America.

2. The Domain Name and Registrar

The disputed domain name <outerwears.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2004. On August 6, 2004, the Center transmitted by email to Moniker Online Services, LLC, a request for registrar verification in connection with the domain name at issue. On August 13, 2004, Moniker Online Services, LLC, transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 13, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2004. The Response dated September 2, 2004 was filed with the Center in the early morning on September 3, 2004.

The Center appointed Joan Clark as the sole panelist in this matter on September 14, 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. The projected decision date was September 28, 2004.

On September 16, 2004, Complainant filed a Motion for leave to file a Reply Brief with exhibits. The Panel granted the Motion and received Complainant’s Reply Brief on September 20, 2004.

On September 22, the Panel issued Procedural Order No. 1 which stated that the Reply Brief dealt with matters in addition to those which were in reply to Respondent’s Response and, in the interest of fairness, authorized Respondent to file an Answer limited to new matters in the Reply Brief, and to do so, if Respondent so wished, within five days of communication to the parties of this Procedural Order No. 1. The Panel also postponed the projected decision date to a date one week after the expiry of the said five day-period. The date for an Answer to Complainant’s Reply Brief was September 27, 2004 and the new projected decision date became October 4, 2004. No Answer has been filed by Respondent.

4. Factual Background

The disputed domain name is <outerwears.com>.

Complainant is Outerwears, Inc., a Michigan corporation.

Respondent is Domain Asia Ventures, a company located in China.

5. Parties’ Contentions

A. Complainant – Original Complaint

In its original Complaint, Complainant stated that it was the owner by assignment of United States trademark registration for the mark OUTERWEARS. The registration certificate, a copy of which was produced, indicates this mark was first used in 1980, was used in commerce in the same year, and was registered March 7, 1995. The Complaint explains that the OUTERWEARS trademark is used for pre-filters for keeping sand, dirt, metal and water from entering the air intake opening to internal combustion, turbine or electric engines motors and perforated horn covers for covering the inlet opening for horns on land vehicles.

Complainant maintains that the disputed domain name is confusingly similar to Complainant’s trademark OUTERWEARS in which Complainant has rights. Complainant also states that its usage of the OUTERWEARS mark long predates Respondent’s registration of the domain name in dispute, which Complainant states Respondent has owned since only January 21, 2004. A perusal of the Whois lookup page indicates, however, that this domain name was created on August 8, 2001.

Complainant maintains that Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons:

∙ Notice of the dispute was given to Respondent by written letters on July 22 and July 29, 2004, to which Respondent failed to respond.

∙ Complainant has never assigned, licensed or granted permission to Respondent to commercially utilize its OUTERWEARS trademark.

∙ There has been no evidence of Respondent’s use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

∙ Respondent is currently using the disputed domain name for an unnamed internet search engine that has no relationship whatsoever to Complainant. Such use of the domain name by Respondent for an unnamed internet search engines does not constitute a bona fide offering of goods or services or a fair, legitimate or non-commercial use of the domain name.

∙ Respondent has not acquired any trademark or service mark rights in the domain name in dispute.

∙ Respondent is not commonly known by the disputed domain name.

∙ Even though Respondent has no connection to Complainant and is located in China, Respondent has chosen to incorporate Complainant’s English-language mark into its domain name.

∙ Finally, Respondent with intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark OUTERWEARS of Complainant, is not making a fair, legitimate or non-commercial use of the domain name.

Complainant also maintains that the disputed domain name was registered and is being used in bad faith for the following reasons:

∙ The name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the owner of the trademark OUTERWEARS, or to a competitor of Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name.

∙ On October 30, 2003, a search of the Registrar’s database revealed that the domain name in dispute was owned by URLPro located in Grand Cayman.

∙ Complainant has notified URLPro in writing of its infringing domain name and requested that it immediately transfer same to Complainant. Subsequently, on or about January 21, 2004, the domain name was transferred from URLPro to Respondent.

Complainant also recites the efforts it made to determine the ownership of the disputed domain name, the fact that the Registrar erroneously confirmed that the disputed domain name was owned by URLPro as of May 10, 2004, which resulted in further attempts by Complainant to contact URLPro until Complainant discovered on July 22, 2004 in preparation for filing the present proceeding that the domain name had been transferred from URLPro to Respondent herein on or about January 21, 2004.

Complainant requests that the Administrative Panel issue a decision that the domain name in dispute <outerwears.com> (which Complainant erroneously refers to as <www.outerwears.com> be transferred to Complainant.

B. Respondent – Original Response

In its Response filed on Respondent’s behalf by its counsel, Respondent maintains that the Complaint should be dismissed because Complainant is not the owner of United States registered trademark for the mark OUTERWEARS and asserts that, to the contrary, the mark was assigned to Garside Acquisition Comapany (sic).

Respondent maintains that the disputed domain name incorporates a misspelling of the common word “outerwear”, and that the word “outerwear” is subject to substantial third party use unassociated with Complainant. Respondent avers there is no evidence of bad faith registration and no evidence that Respondent registered the disputed domain name with Complainant in mind.

Respondent further avers that there is no evidence it had any knowledge of Complainant or its mark when it registered the disputed domain name, and that bad faith cannot be proven, and further that there is no basis for Respondent to have had knowledge of Complainant or its mark.

In addition to the lack of bad faith, Respondent’s defence is based on the ground, according to Respondent, that it has rights and legitimate interests in the disputed domain name because it incorporates a misspelling of the common word “outerwear”.

Respondent declares it uses the disputed domain name to post advertising links that relate to the meaning of the word “outerwear” including links to “jackets”, “winter coat”, “parka” and “cardigan”.

Elaborating on the above, the Response reports that a Google search for the term “outerwear” excluding “outerwears” to exclude references to Complainant yielded over 1,000,000 web sites containing the common word “outerwear”.

Respondent maintains there is no evidence that it registered the disputed domain name to sell to Complainant, to disrupt its business, to prevent it from registering a domain name incorporating its trademark or to confuse users and further that there is not even any evidence that Respondent had knowledge of Complainant when it registered the disputed domain name.

Respondent makes the point that Complainant uses the mark OUTERWEARS to sell auto-racing accessories, and that Respondent does not use the disputed domain name to promote any products relating to auto-racing. So according to the Response Respondent has not intended to confuse consumers and it is unlikely that any consumer would be confused that the disputed domain name is associated with Complainant.

With respect to ownership of the registered trademark OUTERWEARS, Respondent alleges that not only is Complainant not entered as owner of this mark, it has not provided evidence that it has common law trademark rights to “outerwears”. Respondent concludes that the Complaint must be denied.

The Response maintains that Respondent has rights and a legitimate interest in the disputed domain name, as anyone is entitled to register a domain name incorporating a common word and the mere registration of same establishes Respondent’s legitimate interests. Several decisions are cited by Respondent to the effect that respondents, that is domain name registrants, have rights and legitimate interests in a domain name that consists of a generic or common word, and that they are legitimately subject to registration as domain names on a “first come, first served” basis.

Respondent argues that “outerwear” is a common word and that Respondent registered a misspelling of this word with the letter “s” added. Respondent further maintains that registration of a misspelling of the word “outerwear” should establish the same legitimate interest for Respondent that would have been established if the domain name were <outerwear.com>.

According to Respondent the intent is the same in either case: registration of a domain name based on the fact it incorporates a common word, not because it is a trademark.

Respondent explains that the disputed domain name is used in connection with advertising links related to the term “outerwear”, and urges that the use of a domain name in connection with third party advertising services related to the descriptive meaning of the domain name constitutes use in connection with a bona fide offering of goods or services pursuant to paragraph 4(c)(i).

Respondent makes the distinction between the use of dictionary words, that is generic terms, and trademarks. Several decisions are cited by Respondent in support of its position.

Respondent distinguishes various decisions where a legitimate interest was not found based upon a page presenting advertising links. The distinction found by Respondent is that no Response was filed in those cases and the Panel simply accepted Complainant’s allegations as true, or assumed that Respondent in those cases had no legitimate interest because it failed to allege one.

With respect to Complainant’s assertion that the domain name was registered and is being used in bad faith, Respondent states that, to establish bad faith registration, it must be proven that the domain name was registered with Complainant’s trademark in mind, and argues that there is no evidence Respondent had actual knowledge of Complainant’s mark at the time Respondent registered the disputed domain name.

The Response premises this opinion with the statement that Respondent is based outside of the United States, and there is no basis for Respondent to have known of the mark when it registered the disputed domain name.

Respondent emphasizes that, since “outerwears” is a misspelling of a common word, then absent direct proof that a common word domain name was registered solely for the purpose of profiting from Complainant’s trademark rights, there can be no finding of bad faith registration and use.

Respondent concludes that Complainant has failed to meet its burden of proving bad faith registration and use and that the Complaint must be dismissed.

C. Complainant - Reply Brief

Complainant’s Reply Brief, like the original Complaint, was filed by its attorneys.

The Reply Brief traverses and amplifies matters previously dealt with in the Complaint, in addition to dealing with matters strictly in reply to the Response. For this reason, the Panel authorized Respondent to file an Answer, if it wished to do so.

The Reply Brief deals with an assertion in the Response that Complainant is not the owner of the trademark OUTERWEARS. The Reply Brief explains that Garside Acquisition Company, referred to by Respondent as assignee of the mark, has simply changed its name to Outerwears, Inc.

According to the Reply Brief, the Certificate of Amendment to the Articles of Incorporation of Complainant was filed with the State of Michigan Department of Consumer and Industry Services, Bureau of Commercial Services, on December 23, 2002, and on March 16, 2004, Complainant submitted a request to record the name change from Garside Acquisition Company to Outerwears, Inc., in the United States Patent and Trademark Office.

According to the Reply Brief, as of September 7, 2004, the United States Patent and Trademark Office confirmed that the Outerwears name change had not yet been posted to the public record due to a processing backlog.

The Reply Brief further maintains that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.

Complainant urges that the domain name in dispute in this case is comprised solely of a unique distinctive term in which Complainant has a recognizable and valid trademark.

Complainant points out that Respondent provides no explanation as to why it chose to use a misspelling of the word “outerwear” for the domain name.

Complainant believes that internet users who type Complainant’s trademark as a domain name into their internet browsers will be diverted to Respondent’s web site.

Complainant urges that “typosquatting” does not require that Respondent provide competing goods or services at its web site, only that it divert users. The Reply Brief refers to “at least four cases” in which Panels have ruled against Respondent and found that use of the same unnamed internet search engine as in this case does not constitute a bona fide use: UPIB, Inc. v. Domains Asia Ventures, WIPO Case no. D2004-0020, Wells Fargo & Co. v. Domain Asia Ventures a/k/a/ Domains Asia Ventures, NAF Case no. FA0405000273436, Canada Drugs.com Partnership, carrying on business as CanadaDrugs.com v. Domain Asia Ventures, NAF Case no. FA0404000263171, and 1-800-East West Mortgage Co., Inc. v. Domain Asia Ventures, NAF Case no. FA040300245922.

Complainant maintains that Respondent does not demonstrate, beyond the unsworn statements of counsel, that the unnamed internet search engine is used “in connection with third party advertising services related to the descriptive meaning of the domain name”.

Complainant argues that the word “outerwears” is unique and distinct, that it is neither grammatically correct nor a recognized English word, that it is neither common nor descriptive, that no competent English-speaker would use the word “outerwears” when looking for the word “outerwear” and that the plural of the word “outerwear” is “outerwear”.

Complainant asserts that on October 30, 2003, when it searched the Registrar’s database, it found that the domain name was owned by URLPro located in Grand Cayman.

Complainant states that on or about January 21, 2004, the domain name was transferred from ULRPro to Respondent.

Complainant infers, from its dealing with the Registrar of the domain name and the erroneous information received, as well as the communications it sent to URLPro, that at the time the domain name was transferred to Respondent, both URLPro and the Registrar had actual knowledge of the dispute regarding the domain name, and that this knowledge can be imputed to Respondent.

Complainant cites the foregoing to demonstrate Respondent’s bad faith.

D. Respondent - Answer

Respondent has not filed an Answer to the Reply Brief.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, Complainant has the burden of proving that all three elements are present in the Complaint, namely:

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

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

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

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.

Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate Respondent’s rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The first issue that arises is whether Complainant has rights in the trademark OUTERWEARS. In its Complaint, Complainant asserts it is the owner of a U.S. trademark registration for the mark OUTERWEARS but files in support a copy of the registration certificate showing the registered owner to be Steven R. Schussman and that the mark was registered March 7, 1995; in its Response Respondent contended that Complainant was not the owner of this trademark, and provided evidence from the United States Patent and Trademark Office that the trademark had been assigned to Garside Acquisition Company. In support Respondent filed a Trademark Assignment Abstract of Title, showing an assignment of an undivided part of the interest of the Assignor, Steven R. Schussaman(sic) to Garside Acquisition Company recorded on January 14, 2003.

This was countered by Complainant in its Reply Brief claiming that Garside Acquisition Company had “simply changed its name to Outerwears, Inc”. Material filed by Complainant confirms the change of name and states that the name change request had not yet been posted to the public record due to a processing backlog. While the evidence as to the chain of title of ownership of the trademark OUTERWEARS is incomplete, the evidence shows that Complainant is the owner of at least a part of the registered trademark OUTERWEARS, which has been used by Complainant.

The Panel finds that Complainant has rights in the mark OUTERWEARS.

The Panel also finds that the domain name in dispute, <outerwears.com> is identical to Complainant’s trademark, since the suffix relating to a top level domain should not be taken into consideration in making this determination.

The Panel therefore finds that the criteria of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

Respondent maintains that anyone is entitled to register a domain name incorporating a common word, that “outerwear” is a common word, that “outerwears” is a misspelling of the common word “outerwear”, and that the “registration as a domain name of a misspelling of the word outerwear should establish the same legitimate interest for Respondent that would have been established if the domain name were <outerwear.com>”.

In support Respondent refers to a number of cases including Dial-A-Mattress Operating Corp. v. Ultimate Search, WIPO Case No. D2001-0764, in which the domain name was <mattress.com> and the trademarks in question were the slogan “1-800-MATTRES, AND LEAVE OFF THE LAST S THAT’S THE S FOR SAVINGS”, and the word mark “(…)MATTRES” for use with any area code.

In that case the Panel found that the domain name was not identical or confusingly similar to a trademark in which Complainant had rights, since the domain name and other variants were all legally equivalent to the generic term “mattress”. In its decision the Panel opined: “Notwithstanding registration of various trademarks (the validity of which is not for us to comment on) we are of the view that they should, at least, be limited to their facts rather than extended to similar marks, e.g. “mattres.com” and “matress.com”.”

The present case falls within the limitation (or exception) above described and the facts in the present case are to be distinguished in that the disputed domain name is identical (except for the suffix “.com”) to Complainant’s registered trademark OUTERWEARS.

This is not a case of typosquatting, where the domain name differs from Complainant’s trademark by a misspelling of the latter as in Dial-A-Mattress Operating Corp. v. Ultimate Search, WIPO Case No. D2001-0764. In the present case, the domain name and trademark are identical.

A decision of interest is Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031, in which, as in the present case, Complainant’s trademark SWEEPS and the domain name in issue <sweeps.com> were identical except for the suffix in the domain name. (In that case, the trademark consisted of a design as well as a word but the addition of the design was held not to be considered when assessing identity or confusing similarity.) Complainant’s mark was registered for vacuum cleaners, and the domain name was used to feature links to various sites involving sweepstakes and related games.

The Panel found that Respondent was using the domain name not in the trademark sense but in the descriptive sense, describing the types of businesses listed on the directory page, which Respondent was entitled to do. In the present case the domain name which is identical to the trademark relied upon is, as conceded in the Response, not a generic word but a misspelling of the common word “outerwear”. Since Respondent chose intentionally to use a misspelling of a common word which is identical to a registered trademark, it cannot expect to benefit from the protection it would have had in using the generic word itself. Expressed differently, the choice of a domain name which is identical to a trademark that is not a generic word but is a variation or misspelling thereof, does not thereby give the domain name owner rights in the domain name.

One of the circumstances which could demonstrate Respondent’s rights or legitimate interests in the disputed domain name would be that before any notice to Respondent of the dispute, Respondent had used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Respondent’s web site lists a considerable number of commercial sites advertising various items of clothing, most of which could be called outerwear, such as jackets and winter coats.

Respondent has referred to a number of cases holding that the use of a domain name in connection with third party advertising services related to the descriptive meaning of the domain name constitutes use in connection with a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy. If we accept for the purpose of this argument that the domain name is descriptive or at least suggestive, being a misspelling of the generic word “outerwear” factors still to be considered are (1) whether Respondent’s use of the domain name for third party advertising services commenced before notice to Respondent of the dispute, and (2) whether the offering for sale were bona fide.

Letters complaining of Respondent’s use of the disputed name and requesting that it be transferred to Complainant were sent by Complainant to Respondent’s predecessor, URLPro, on November 25, 2003 and December 17, 2003. The domain name was transferred to Respondent on or about January 21, 2004. Complainant argues that URLPro’s actual knowledge of Complainant’s objection to the disputed domain name may be imputed to Respondent.

In its Response, Respondent has not denied that it had such knowledge, contenting itself with declaring through its counsel that there is no basis for inferring that Respondent had knowledge of Complainant’s mark when it (Respondent) registered the domain name. However the Panel notes that it was not Respondent but its predecessor, URLPro, that registered the domain name, and the question is whether Respondent had knowledge of the dispute before it used or made demonstrable preparations to use the domain name, that is before it acquired the domain name.

Respondent is an experienced owner of domain names, having been involved as respondent in at least four domain name decisions referred to under paragraph 5.C above, and appears to be in the business of acquiring domain names. While that in itself is not objectionable, it would indicate a high level of knowledge and familiarity with domain name requirements.

In view of all the circumstances the Panel concludes that Respondent was probably aware of the dispute when it acquired the domain name in issue and before it commenced use of the domain name.

The other factor to be considered is whether Respondent’s web page listing third party advertising constituted a bona fide offering of goods or services. In view of the Panel’s findings of bad faith below, the use of the domain name in connection with the third party advertising is not bona fide.

Throughout the Response, Respondent’s counsel does not positively deny that Respondent had knowledge of Complainant’s trademark, does not explain the choice of a domain name identical to Complainant’s trademark, and does not positively deny Respondent’s knowledge of the dispute when it acquired the domain name.

Respondent has not shown that it has been known by the domain name.

Respondent has not shown that it is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.

The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name. The criteria of paragraph 4(a)(ii) of the Policy have been satisfied.

C. Registered and Used in Bad Faith

The registration by URLPro, the original registrant, and the adoption and use by Respondent, an experienced domain name owner, of a domain name identical to a registered trademark, create presumptions of bad faith registration and use.

These presumptions are reinforced by a declaration signed, “under penalty of perjury”, by Complainant’s president that “Outerwears’ products are well-known in the automotive and power-sports markets, and Outerwears’ products are sold worldwide” and “Outerwears’ products are sold in China”. This was apparently designed to combat the argument in the Response that as Complainant operates in the United States there was no basis for Respondent, which is located in China, to have known of the trademark when it registered the disputed domain name.

Respondent has not countered the presumptions of bad faith registration and use by any positive assertion of fact, relying instead on statements by its counsel that there is “no evidence” that Respondent had actual knowledge of Complainant’s mark when Respondent registered the domain name. (This misses the point that it was Respondent’s predecessor, not Respondent, that originally registered the domain name.) The Response provides no positive assertion that URLPro had no knowledge of Complainant’s trademark when the domain name was registered, and no positive assertion that Respondent had no knowledge of Complainant’s trademark when accepting the transfer of the domain name and commencing to use it.

Proof by Complainant of a positive fact, such as Respondent’s knowledge of Complainant’s trademark, is difficult and may be impossible in the case where the facts are uniquely within the possession of the party that has resisted making a positive statement of lack of knowledge.

Respondent as an experienced domain name owner having been involved in a number of domain name cases, as noted in paragraph 5.C above, may be assumed not to be unaware of the consequences of adopting a domain name identical or confusingly similar to another’s trademark. Yet Respondent has offered no explanation for the choice of a domain name which is the same misspelling, to use Respondent’s characterization, as the misspelling which is a registered trademark. Statements on behalf of Respondent by its counsel to the effect there is “no evidence” of Respondent’s knowledge does not counter the presumption the Panel finds that by using the disputed domain name Respondent has intentionally attempted to attract for commercial gain internet users to its web site by creating a likelihood of confusion with Complainant’s previously registered trademark. It is clear that internet users, wishing to visit a web site of Complainant, would be drawn to Respondent’s web site under the domain name identical to Complainant’s registered trademark.

The Panel finds that the domain name in issue was registered and is being used in bad faith, and that the criteria of paragraph 4(a)(iii) have been satisfied.

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 <outerwears.com> be transferred to Complainant.

Joan Clark
Sole Panelist

Date: October 4, 2004