DECISION

Perfume World, Inc. v. iContents a/k/a Brian Yu

Claim Number: FA0403000250233

PARTIES

Complainant is Perfume World, Inc. (“Complainant”), 7541 W. 99th Place, Bridgview, IL 60455.  Respondent is iContents a/k/a Brian Yu (“Respondent”), 2F, Soam B/D, 699-20, Yoksam-Dong, Gangnam-Gu, Seoul, 135-080, Korea.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue (the “Domain Name”) is <perfumeworld.com>, registered with Tucows, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Clive Elliott as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 31, 2004; the Forum received a hard copy of the Complaint on March 31, 2004.

On March 31, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain name <perfumeworld.com> is registered with Tucows Inc. and that the Respondent is the current registrant of the name.  Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On April 12, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 3, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@perfumeworld.com by e-mail.

A timely Response was received and determined to be complete on April 30, 2004.

A timely Additional Submission was received from Complainant and determined to be complete on May 5, 2004.

On May 18, 2004 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Clive Elliott as Panelist.

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant is the proprietor of the U.S. trademark registration Perfume World covering retail store services featuring cologne, perfume, candles, soaps, oils, cosmetics and bath products, in Class 35 (U.S. Cls.100, 101 and 102).

It asserts that <perfumeworld.com> is confusingly similar and identical to Perfume World, a trademark Complainant has used selling perfumes and cologne in store and online. It says that Respondent should be considered as having no rights or legitimate interests in respect of the Domain Name because it is not running a business selling perfumes or any other related products. It is also asserted that Respondent tried to sell the Domain Name to Complainant for $18,000.00

B. Respondent

Respondent in turn asserts that PerfumeWorld.com is a generic name and that no trademarks containing the phrase have been registered in Korea, where Respondent resides. It contends that Perfume World, Inc, is not well-known or famous and that an allegation made by a U.S. company, not even known to the Korean general public, that it is famous in Korea reveals an improper intent. It also notes that Respondent registered the trademark in the U.S. five months after the registration of the Domain Name.

Respondent points to the results of a search for domain names containing ‘perfumeworld’ at Whois.net, (<whois.net/search.cgi2?str=perfumeworld>), which lists registered domain names. It states that the following hits were displayed:

<eperfumeworld.com>

<perfumeworld.com>

                <perfumeworld.net>

                <perfumeworld.us>

<perfumeworldcenter.com>

<perfumeworldinc.com>

<perfumeworldny.com>

<perfumeworldwide.com>

                <perfumeworldwide.us>

<silkdenimperfumeworld.com>

<theperfumeworld.com>

Respondent argues that the already-registered name <perfumeworldinc.com> and other unregistered names <perfumeworld.org>, <perfumeworld.info>, etc. are sufficiently available to Complainant. It also points out that Respondent has been operating the <perfumeworld.com> site as well as <perfumeworld.co.kr> and that this demonstrates its good faith.

C. Additional Submissions

Complainant filed an Additional Submission in response to the submission made by Respondent. It states in reply that the websites <perfumeworld.co.kr>, and <perfumeworld.com> are identical. That is, that the website at <perfumeworld.com> is an exact copy of the <perfumeworld.co.kr> site. It argues that this proves that Respondent just copied the website so as to attempt to show that it is making a legitimate use of <perfumeworld.com>.

It asserts that Respondent had no prior use of the Domain Name in connection with a bona fide offering of any goods or services until after April 2004, after receiving the Complaint.  It asserts that prior to this there was no use of the Domain Name in relation to fragrances. Instead, it asserts that the Domain Name resolved to another website called <www.motorshop.com> and users were met with a banner saying that the Domain Name was for sale.

FINDINGS

The Panel finds that while the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights, Complainant has not shown that Respondent lacks a right or legitimate interest in the Domain Name nor that it registered and has used the Domain Name in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

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

Identical and/or Confusingly Similar

Complainant asserts that it has rights to the PERFUME WORLD mark because Complainant registered the domain name with the U.S. Patent and Trademark Office (“USPTO”) on April 3, 2001 (Reg. No. 2,440,998).  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”). While these principles apply in this case, they do have their limits, as discussed below.

Once the USPTO has granted registration of a mark, the effective date of ownership rights to the mark is the date of filing, which in this case is April 21, 2000.  See FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003) (finding that Complainant’s rights in the FDNY mark relate back to the date that its successful trademark registration was filed with the U.S. Patent and Trademark Office).

Complainant argues that Respondent’s <perfumeworld.com> domain name is confusingly similar to Complainant’s PERFUME WORLD mark because the domain name fully incorporates the mark and merely omits the space between the two words of the mark.  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark).

It is now relatively well settled that the addition of the generic top-level domain “.com” is irrelevant in determining whether a domain name is confusingly similar to a complainant’s mark. No more needs to be said on that issue.

On this basis it is found that Complainant succeeds on the first ground. Having said that, it is worth noting that the term “perfume world” is highly descriptive of an entity that markets and sells a range of perfumes and fragrances, a point picked-up on below.

Rights or Legitimate Interests

Complainant asserts that Respondent copied the content from the website located at <perfumeworld.co.kr>, which Respondent holds the registration for, and posted the content on the website that is located at Respondent’s domain name <perfumeworld.com> in order to portray falsely that the disputed domain name is being used to make a bona fide offering of goods or services.  Moreover, as noted above, Complainant asserts that prior to posting the content from the <perfumeworld.co.kr> website, the <perfumeworld.com> domain name resolved to <motorshop.com>, which provided a link, to a banner that stated that the <perfumeworld.com> domain name was for sale.  Complainant has not provided any evidence to support these assertions.

Respondent asserts in response that it has rights and legitimate interests in the <perfumeworld.com> domain name because it is no more than a generic term.  See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Nat. Arb. Forum May 25, 2000) (finding that Complainant failed to show that it should be granted exclusive use of the domain name <soccerzone.com>, as it contains two generic terms and is not exclusively associated with its business).

Furthermore, Respondent asserts that it has used the <perfumeworld.com> domain name to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because the domain name is used to resolve to a website dedicated to perfume and cologne.  See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that Respondents operation of a bona fide business of online prop rentals for over two years was evidence that Respondent had rights or legitimate interests in the disputed domain name); see also Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (stating that “Respondent is using the domain <groceryoutlet.com> for a website that links to online resources for groceries and similar goods.”). It contends that the Domain Name is therefore being used to describe the content of the site, as evidence that Respondent is making a bona fide offering of goods or services with the Domain Name.

Respondent points out to the Panel that its website is still under construction at the <perfumeworldinc.com> domain name. It is often difficult to resolve conflicting factual disputes of this nature. Whether Respondent in fact simply copied over its content from another existing site and started to use the <perfumeworldinc.com> domain name when the matter was put in issue is possible. However, that in itself presupposes that Respondent was using the <perfumeworld.co.kr> domain beforehand. There is no suggestion that that use was or is improper.

It is also necessary to ask whether the Domain Name is one which other traders may legitimately choose to use, given its highly descriptive and attractive nature. The fact that many others have chosen to register domain names similar to it suggests it is.

It is also necessary to ask whether a recently granted U.S. trade mark registration, for a mark with limited secondary meaning or reputation in the U.S., should be capable of preventing a citizen from another country, in which there is very little or no reputation, from registering and using a like domain name. In this Panelist’s view, on the facts of this case, the answer is no.

Accordingly, Complainant fails on this ground.

Registration and Use in Bad Faith

The Panel may find that Respondent did not register the <perfumeworld.com> domain name in bad faith because the domain name was registered before Complainant’s mark was registered.  See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where Respondent register the domain prior to Complainant’s use of the mark). This approach is arguably not directly applicable here because Complainant had applied for the registration of its trademark before the Domain Name was registered. However, it also needs to be borne in mind that the application for registration was in the U.S. and Respondent is located in Korea.

Furthermore, the Panel may find that although Respondent offered the <perfumeworld.com> domain name for sale for more than out-of-pocket costs, Respondent did not register or use the domain name in bad faith because Complainant made the first offer. See Open Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that Respondent was not acting in bad faith by discussing a sale when Complainant initiated an offer to purchase it from Respondent); but see Marrow v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000) (stating that a Panel should not “put much weight on the fact that it was Complainant who contacted Respondent to see if it was interested in selling the domain name”).

In addition, the Panel may find that Respondent did not register the <perfumeworld.com> domain name in bad faith because Complainant’s mark is generic.  See Trump v. olegevtushenko, FA 101509 (Nat. Arb. Forum Dec. 11, 2001) (finding that <porntrumps.com> does not infringe on Complainant’s famous mark TRUMP, since Complainant does not have the exclusive right to use every form of the word “trump”); see also Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (holding that where the domain name is a generic term, it is difficult to conclude that there was a deliberate attempt to confuse on behalf of Respondent, and stating that “[i]t is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied them”).

These principles seem to be particularly apposite here, given the descriptive nature of the mark, the limited use of it by Complainant and the widespread adoption of similar domain names (and presumably use in the course of trade) by others.

Finally, if the Panel finds that Respondent has rights or legitimate interests in the <perfumeworld.com> domain name, the Panel may conclude that Respondent did not register or use the domain name in bad faith.  See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that Respondent did not register or use the domain name <metagen.com> in bad faith where Respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created). The present case is one where the second and third grounds inform each other.

The third ground is thus not made out.

Accordingly, notwithstanding success on the first ground the Complaint, as a whole, must fail.

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Clive L Elliott, Panelist
Dated: May 28, 2004

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