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Dama S.p.A. v. Mr. Michael Faulkner [2004] GENDND 666 (30 June 2004)

1. The Parties

The Complainant is Dama S.p.A., of Italy, represented by Societŕ Italiana Brevetti, Italy.

The Respondent is Mr. Michael Faulkner, Preston, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name is <paulandsharkyachting.com> registered with Active ISP ASA in Oslo, Norway.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2004. On May 12, 2004, the Center transmitted by email to Active ISP ASA a request for registrar verification in connection with the domain name at issue. On May 18, 2004, Active ISP ASA transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. On May 18, 2004, 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 May 18, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 8, 2004.

The Center appointed Zoltán Takács as the sole panelist in this matter on June 17, 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 language of the administrative proceeding is English, that being the language of the registration agreement.

4. Factual Background

Complainant and its trademarks:

The origins of Paul & Shark clothes date back to the beginning of past century, more precisely to the foundation of the manufacturing company in 1921. For a significant amount of time the manufacturing company was doing business as a knitting mill, and the PAUL & SHARK branded sportswear manufacturing was introduced around late 1970’s. Now a days the Paul & Shark clothes collection includes jeans, jackets, casual jackets, sweaters, cords, and coats, shirts and last but not least a variety of sailing wear.

The division within the manufacturing company for development of sportswear, and within that, sea and yachting clothing was created in 1977 and since then Paul & Shark became one of the leading yachting brands worldwide, recognized as specialists in sailing wear and sportswear.

The Complainant sells it’s PAUL & SHARK YACHTING branded goods all around the world, and within the United Kingdom offers such goods in its London, Manchester, Liverpool, Guilford, Glasgow and Cardiff shops.

The Complainant owns a number of national and international trademarks containing and/or comprising of the words PAUL & SHARK as well as PAUL & SHARK YACHTING, in connection to this dispute of particular importance being the following rights:

(the Nice Agreement).

Priority dates of each of the above trademark rights predate (national, UK registrations indeed significantly) the registration date of the disputed domain name, which is September 11, 2001.

Complainant and its domain names:

The Complainant has registered in its own name a large number of both generic and country code top level domain names inclusive of the word elements PAUL, SHARK and YACHTING, among others <paulandshark.com>, <paulandshark.info>, <paulandshark.biz>, <paulandsharkyachting.us>, <paul-sharkyachting.us>, <paulshark.de>.

Respondent’s identity and activities:

The Respondent is an individual residing in the United Kingdom, who registered the disputed domain name with a Norwegian service provider firm called Active ISP ASA.

When the Complainant became aware of existences of the disputed domain name it immediately tried to recover it by requesting the registrant to transfer it voluntary to it’s rightful owner that is to the Complainant. The Complainant sent out emails, registered letters but never received any response from the Respondent. The disputed domain name had at no time resolved to any active website.

5. Parties’ Contentions

A. Complainant

Complainant alleges that the disputed domain name is identical to its trademarks “PAUL & SHARK yachting” registered with the United Kingdom Patent Office and with the Office for Harmonization in the Internal Market (respective registration numbers being: 1185722, 2124593 and 1475508).

Complainant further alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name, and in addition it never authorized the Respondent to use the words PAUL AND SHARK YACHTING in any way.

Complainant finally contends that Respondent had registered and has been using the domain name in bad faith, since it must have been aware of the coined term PAUL & SHARK yachting when registered the name at stake. Its conclusion is that Respondent’s sole intention is prevention of the Complainant to reflect its trademark in the corresponding domain name.

For these reasons, Complainant request is that the contested domain name be transferred to him.

B. Respondent

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

6. Discussion and Findings

Under Paragraph 4(a) of the Policy, Complainant must establish in relation to the complaint that:

- the domain name registered by the domain name registrant is identical of confusingly similar to a trademark or service mark in which the complainant has rights, and

- the domain name registrant has no rights or legitimate interests in respect of the domain name in question, and

- the domain name has been registered and is being used in bad faith.

In order to prevail in a UDRP procedure, complainant must prove each of the above elements.

A. Identical or Confusingly Similar

The Panel’s finding is that the Complainant has established it’s trademark rights in and to the “PAUL & SHARK yachting mark or PAUL AND SHARK YACHTING coined term through a number of corresponding trademark registration worldwide, among which of particular importance are those registered with the United Kingdom Patent Office and with the Office for Harmonization in the Internal Market located at Alicante, Spain, (OHIM).

The disputed domain name incorporates all of word elements of these trademarks, which in such combination are being widely associated with the Complainant and it’s offering of PAUL & SHARK yachting branded goods worldwide.

However, all three marks reviewed incorporate a recognized stylized representation of a shark, which leads the Panel to the conclusion that the disputed domain name is rather confusingly similar than identical to trademark registrations of the Complainant, in a strict sense of comparing the trademarks and the domain name. This in the Panel’s view does not weaken the factual basis as to the criteria set in Paragraph 4(a)(i) of the Policy, and due to confusing similarity of the disputed domain name to the Complainant’s “PAUL & SHARK yachting” (words and design) the Panel finds this requirement of the Policy met in full.

B. Rights or Legitimate Interests

Respondent did not respond to the complaint in any way, nor it has tried to defend against the Complainant’s allegation as to his lacking any rights or legitimate interests in the disputed domain name.

The Policy provides that respondent can indeed demonstrate a right or legitimate interest in a name, by showing for instance demonstrable preparations to use the name before any notice of the dispute, that he or his business has been commonly known by the domain name, or he is making legitimate noncommercial or fair use of the domain name, providing such use does not mislead consumers, tarnish the trademark or is not for commercial purposes. These indications were specified to be “without limitation” leaving respondents to come up with any other evidences capable to show and prove right or legitimate interests to the disputed domain name.

Respondent’s failure to even attend proving right or interests in the domain name, and with that no evidence whatsoever to that direction leads the Panel to conclusion that there is no right or legitimate interests in the domain name on the Respondent’s side. In that the Panel is satisfied that element (ii) of the Policy’s Paragraph 4(a) is also met.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy sets out that Complainant must prove that the domain name both has been registered and is being used in bad faith. The Policy does specify some criteria complainants can use to indicate bad faith as well as some criteria respondents can use to prove the opposite. This later the Panel will not go to elaborate on given that Respondent neither responded to the complaint, nor there has been any evidence available concerning possible demonstrating the Respondent’s rights and/or legitimate interests in the domain name at issue.

The following are indications of bad faith as specified in Paragraphs 4(b)(i)-(iv) of the Policy:

- evidence that respondent 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 respondents out-of-pocket costs directly related to the domain name, or

- evidence that the domain name has been registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct, or

- evidence that that the domain name has been registered primarily for the purpose of disrupting the business of a competitor, or

- evidence that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or Internet location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on its website or location.

It has been a common understanding that these factors were specified to be “without limitation” leaving panelists to take into consideration any other factor in relation to a particular case.

The Policy’s main objective is to provide holders of trademark rights with an administrative mechanism for the efficient resolution of disputes arising out of bad faith registration and use by third parties of domain names corresponding to those trademark rights (Guide to WIPO Domain Name Dispute Resolution, WIPO Arbitration and Mediation Center, http://arbiter.wipo.int).

The Panel has no difficulties in finding bad faith in Respondent’s conduct as to registration of the domain name at issue, given the circumstances of the case. The Panel considers that the Respondent was aware of the trademark against which he registered the corresponding domain name. The combination of words PAUL & SHARK YACHTING appears to be so unique on the market that no one but the Complainant is using it to identify its line of clothing. Adopting a name of which the Respondent likely knew to belong to somebody else clearly fall out of standards generally recognized as good faith conduct.

Paragraph 4(a)(iii) of the Policy does not require bad faith as to the registration as a process only, but to bad faith usage of the domain name as well.

In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“the <telstra.org> case), the panel came to the conclusion that the concept of a “domain name being used in bad faith” is not limited to positive action. The Panelist in that case concluded that it is well possible - pending circumstances of each particular case – that, inactivity of the Respondent amount to the requirement of the domain name being used in bad faith.

What convince this Panel of applicability of the <telstra.org> case standards to this case are the following circumstances:

(i) reputation of the PAUL & SHARK yachting trademarks of the Complainant,

(ii) since registering the domain name almost three years ago, the Respondent did not set up any presence on the Internet, nor has undertaken preparations indicating his intention to start using the domain name,

(iii) the Respondent turned out to be totally uninterested in defending the domain name registration at issue,

(iv) the Respondent has provided inaccessible contact particulars and never attended to correct them with the registrar.

In that the Panel concludes that the Respondent’s passive holding under the above circumstances qualify as using the domain name in bad faith in relation to Paragraph 4(a)(iii) of the Policy.

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 <paulandsharkyachting.com> be transferred to the Complainant.

Zoltán Takács
Sole Panelist

Date: June 30, 2004