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Minka Lighting, Inc. v. Jon Hall [2005] GENDND 1614 (21 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Minka Lighting, Inc. v. Jon Hall

Case No. D2005-0684

1. The Parties

The Complainant is Minka Lighting, Inc., Corona, California, United States of America, represented by Baker & McKenzie, Dallas, Texas, United States of America.

The Respondent is Jon Hall, Ruckersville, Virginia, United States of America.

2. The Domain Name and Registrar

The disputed domain name <ambience.biz> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2005. On June 29, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. Also on June 29, 2005, Go Daddy Software 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, 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 the Respondent of the Complaint, and the proceedings commenced on July 1, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2005. The Response was filed with the Center on July 22, 2005. Based on paragraph 10 of the Rules, the Panel has decided to accept the Response even though it is one day late. The Panel views this as a relatively minor infraction.

The original due date for this Decision was September 13, 2005. However, owing to the need for further Panel deliberation, in Procedural Order No. 1 dated September 13, 2005 and based on paragraph 10 of the Rules, the Panel moved the due date to September 23, 2005.

The Center appointed Dennis A. Foster, Frederick M. Abbott and Young Kim as panelists in this matter on August 30, 2005. The Panel finds that it was properly constituted. Each member of 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 sells light fixtures and furniture using the trademark AMBIENCE. The Complainant registered this United States Principal Register trademark on February 23, 1999, in International Class 11 for electric lighting, registration No. 2,225,601 with a claimed first use in January 1988 (Complaint Exhibit 4).

The Respondent is an individual who registered the disputed domain name, <ambience.biz>, on June 17, 2004 (Complaint Exhibit 1). Via a third party agent website, Sedo, Respondent uses the disputed domain name to connect to “atmosphere” music and adult entertainment websites. The Respondent has also attempted to sell the disputed domain name on the Internet.

The Complainant wrote to the Respondent on April 11, 2005, and April 21, 2005, alleging violation of trademark rights and demanding the Respondent turn the disputed domain name over to the Complainant in exchange for payment of expenses. The Respondent refused to do this and in a reply argued the word “ambience” also has a generic meaning and for this reason the Respondent was allowed to use it (Complaint Exhibits 26-29).

5. Parties’ Contentions

A. Complainant

- Complainant and its predecessors-in-interest have used the mark AMBIENCE in connection with their goods since at least as early as November 1986. Complainant thus has common law rights in AMBIENCE for its quality products extending back almost nineteen (19) years. Examples of Complainant’s use of the AMBIENCE mark are shown on its “www.minkagroup.net” website (Complaint Exhibit 3).

- Complainant owns U.S. registration No. 2,225,601 for the mark AMBIENCE for electric lighting fixtures and lamps in International Class 011, with a claimed first use since at least as early as 1988.

- Complainant also owns U.S. Application No. 75/698,326 for AMBIENCE for furniture, mirrors, wall art and accessories, namely, carvings, decorative figures, figurines and sculptures made of foam, wood and resins. Also included are decorative furniture corbels and sculpture reliefs made of foam, wood and resin in International Class 020 claiming first use at least as early as 1988 and filed on May 5, 1999 (Complaint Exhibit 6).

- Complainant, through its significant efforts, skills and experience, has acquired and enjoys substantial goodwill and a valuable reputation through Complainant’s distinctive mark AMBIENCE in connection with home furnishings. The maintenance of high standards of quality and excellence for Complainant’s goods has contributed to this valuable goodwill and reputation.

- Complainant also owns various Internet domain names containing its marks, including <ambience.info> (Complaint Exhibit 7).

- Complainant’s AMBIENCE mark and domain name are recognized by the public and the industry as originating from a single source, namely Complainant, and serve to distinguish Complainant’s goods from the goods of others.

- Consumers searching for the Complainant who type in Complainant’s mark AMBIENCE with the top-level domain name “.biz” are diverted to a website as shown in Complaint Exhibit 8.

- Respondent’s website includes numerous links and/or references to third party websites offering lighting, furniture and related home furnishings (Complaint Exhibits 9-24).

- The disputed domain name <ambience.biz>, apart from the top-level domain, is identical and confusingly similar to Complainant’s registered trademark AMBIENCE.

- Due to the obvious, confusing similarity between Complainant’s mark AMBIENCE and Respondent’s domain name, many Internet users looking to access Complainant’s website are likely to type in “www.ambience.biz” and mistakenly be directed to Respondent’s website. Respondent’s domain name thus is likely to cause confusion among Internet users who seek Complainant’s website, and to cause users to expend time and energy accessing Respondent’s website.

- As seen in Complaint Exhibits 9-22, Respondent’s website includes links to competitors of Minka, specifically, companies that manufacture and or sell lighting fixtures, ceiling fans, furniture and other home furnishings. Respondent’s links to Complainant’s competitors’ websites are likely to cause consumers to be confused or misled as to Complainant’s connection or association with its competitors.

- One of the links shown on Complaint Exhibit 8, “www.storeforlovers.com”, connects to a website containing pornographic or adult content material. See Complaint Exhibit 25. Displaying links to pornographic or adult content material on the same page as Complainant’s marks tarnishes Complainant’s AMBIENCE mark and is likely to cause consumers to be confused or misled as to Complainant’s sponsorship or endorsement of those linked adult content websites.

- There is no evidence of Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Rather, on information and belief, the <ambience.biz> domain name is registered with Sedo’s Domain Name Parking program. See Complaint Exhibit 26. Sedo offers “pay per click” revenue that is generated for every click on an ad link on a subscriber’s website. The general terms of that revenue program are shown in Complaint Exhibit 27. This use does not constitute a bona fide offering of goods or services giving rise to any right or legitimate interest.

- Respondent is not commonly known by the domain name <ambience.biz>. Respondent is not making a legitimate non-commercial or fair use of the domain name <ambience.biz>.

- Respondent has registered, used, and is using the <ambience.biz> domain name for the sole purpose of diverting Internet users seeking information about Complainant and its goods to the links on Respondent’s websites for financial gain.

- Complainant’s trademarks are well-known internationally, and it cannot be reasonably argued that Respondent was unaware of the AMBIENCE mark when he registered the disputed domain name.

- Respondent did not reply to Complainant’s reasonable offer for the transfer of the <ambience.biz> domain name. It is implicit from Respondent’s failure to reply that he registered the disputed domain name primarily for the purpose of selling it to Complainant for valuable consideration in excess of his out-of-pocket costs directly related to the domain name.

- The use of Complainant’s mark as part of a domain name with links to pornographic material tarnishes Complainant’s existing marks, which is also evidence of bad faith. See e.g. America Online, Inc. v. Viper, WIPO Case No. D2000-1198 (November 28, 2000).

B. Respondent

- “Ambience” is a commonly used English language word. According to the Compact Oxford English dictionary, “ambience” is a noun that refers to ‘the character and atmosphere of a place’ or ‘character given to a sound recording by the space in which the sound occurs.’

- There are a total of 13 live U.S. trademarks that are registered or which are in the application process that use the term ‘ambience’ or a related variant according to the United States Patent and Trademark Office’s (USPTO) Trademark Electronic Search System (TESS).

- The Complainant does own the domain name <ambience.info>. Interestingly, they have no website for this domain name or even a forward to their main “www.minkagroup.net” website. It is difficult to understand why they need another domain extension for the common word “ambience” when they choose not to use the domain name they already own (Complaint Exhibit 8).

- The Respondent does have the disputed domain name parked at “www.sedo.com”. Sedo operates an honorable system to facilitate the purchase and sale of domain names.

- The Respondent registered the disputed domain name <ambience.biz> using godaddy.com’s expired domain name drop catcher service on June 17, 2004. There were many other services that may have trumped Go Daddy’s and Minka certainly could have used them. Respondent was unaware of any trademarks that used this name at the time.

- As to the Complainant’s ‘internationally known’ trademarks, it is pretty obvious from the evidence presented in the first section of this response that calling them ‘internationally known’ in all but a very small circle is probably a bit of an exaggeration.

- The Respondent found no reference to the Complainant in the commercial guides of the Charlottesville, Virginia area where the Respondent lives. If the Respondent had registered a domain name with the words Pepsi, Xerox, Sony, Nascar or something else that is an original trademark that only the sole trademark owner would have rights to, the Respondent might agree with the Complainant.

- The Respondent wonders why the Complainant is so interested in the “.biz” version of the disputed domain name. The “.com” version was registered on February 16, 1996. The “.net” version was registered on March 27, 2002, and the “.org” version was registered on August 30, 2003.

6. Discussion and Findings

In order to obtain transfer of the disputed domain name, the Complainant must prove the following (per paragraphs 4(a)(i-iii) of the Policy):

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

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

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

A. Identical or Confusingly Similar

The Complainant has a United States Principal Registry trademark for AMBIENCE: No. 2,225,601 dated February 23, 1999, in International Class 011 for electric lighting fixtures and lamps (Complaint Exhibit 4). In addition, the Complainant has provided a sampling of publications that offer its light fixtures and furniture for sale (Complaint Exhibit 3). The Panel finds this shows the Complainant has trademark rights in the name AMBIENCE.

The disputed domain name, <ambience.biz>, is identical to the Complainant’s AMBIENCE trademark. It is now well established that the gTLD “.biz” should not be considered in an analysis checking for identity or confusing similarity. The Panel thus finds the Complainant has carried its burden of proof under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, i.e., the Complainant has not authorized the Respondent to use its AMBIENCE trademark.

The Respondent at times argues that the word “ambience” has a generic meaning, i.e., atmosphere, and that he and everyone else are free to use it in this sense. The Panel agrees with the Respondent that “ambience” does have the generic meaning of atmosphere. However, the Panel finds this is not the sense in which the Respondent is using the disputed domain name. As the Respondent himself puts it, “I do believe that my use of the domain [name] with primarily audio and pro sound related links in no way conflicts with Minka’s trademark for the lighting and furniture business.”

The Respondent has also attempted to make out a case for rights and legitimate interests per paragraph 4(c)(i) of the Policy by showing that, before notice of this dispute, the Respondent was using <ambience.biz> for a bona fide offering of goods and services. The Respondent has consigned the disputed domain name to an Internet company, Sedo, that connects the domain name to a database of websites. When one arrives at the “www.ambience.biz” website (Response Exhibit 10), there is a menu of some ten (10) further websites that one can connect to. One of these, “www.eurobaltronics.com”, offers background music and lighting. The other proposed websites mainly offer music-related goods, in keeping with the Respondent’s contention that he mainly is using the disputed domain name in connection with music to create ambience. At least one of the websites, “www.storeforlovers.com”, connects to an adult entertainment website.

In addition, the website at the disputed domain name allows the navigator to type in a search term and be connected to Sedo’s database of websites related to the search term. A quick menu of listed, suggested search terms is offered and these have at times included furniture and lighting. The frequency with which a search term is typed in influences the displayed menu of listed, suggested search terms, and also influences which terms appear at the top of the list.

The Complainant contends that the menu of suggested search terms, inasmuch as it has included furniture and lighting, is an attempt by the Respondent to divert the Complainant’s clientele. However, the Respondent has explained that the Complainant itself is responsible for the search terms furniture and lighting appearing in the suggested search terms because the Complainant typed in those terms on several occasions. This explanation makes sense to the Panel.

Overall, the Respondent has shown that he is using the disputed domain to connect to the websites of businesses that offer goods and services that are substantially different from the Complainant’s goods except in the situation where the Internet navigator himself types in a search for the Complainant’s goods. (cf. Park Place Entertainment Corporation v. Anything.com Ltd., WIPO Case No. D2002-0530 (September 16, 2002) where the respondent used the domain name <flamingo.com> inter alia to connect navigators to travel agents, some of whom would then make reservations at the Complainant’s famous Flamingo Hotel in Las Vegas, Nevada. There the panel found the respondent’s use was not a bona fide one under paragraph 4(c)(i) of the Policy because the Respondent’s click-through links led to the complainant and its trademarked hotel).

The Panel thus finds the Respondent does have a legitimate right or interest in the disputed domain name pursuant to paragraph 4(c)(i) of the Policy. In the Panel’s view, well before this dispute arose and without reference to the Complainant and its lighting fixtures and furniture, the Respondent began using the disputed domain name to guide the public to further websites that use music to set a mood or atmosphere.

C. Registered and Used in Bad Faith

The Complainant makes roughly three (3) arguments on bad faith. The easiest to handle is that the Respondent is trying to sell the disputed domain name for much more than he paid for it in violation of paragraph 4(b)(i) of the Policy. The Respondent does not dispute it is offering the disputed domain name for sale through the company Sedo’s website. But it does not appear to the Panel that the Respondent is at all concerned about selling the domain name to the Complainant or a competitor of the Complainant in particular. If anything, it looks like the Respondent is trying to cash in on the general attractiveness of the word “ambience” for Internet use. The mere fact of trying to sell a domain name for a profit is not enough to establish bad faith (vide, e.g., Southwest Airlines Co. v. Cattitude a/k/a LJ Gehmen, WIPO Case No. D2005-0410 (June 12, 2005); and The Bear Stearns Companies Inc. v. Pacific Residential, WIPO Case No. D2004-0314 (June 24, 2004).

The Complainant also contends the Respondent is using the disputed domain name in order to divert the Complainant’s furniture and lighting clients for commercial gain in violation of paragraph 4(b)(iv) of the Policy. Here the Complainant’s argument fails to convince because it is not apparent the Complainant’s trademark and goods ever attracted the Respondent’s interest. While the Complainant has shown that it has a registered trademark for AMBIENCE and that it sells furniture and lighting using that name, it does not appear to the Panel the Complainant is broadly known, a point the Respondent has stressed. Even if it were, the Respondent is using the disputed domain name mainly to connect to music-as-ambience or pornographic websites, goods and services only marginally related to the Complainant’s furniture and lighting.

Finally, the Complainant contends the Respondent is in bad faith because it connected the disputed domain name to an adult entertainment website. This has been found to be one of the non-enumerated grounds for bad faith under the Policy where the Respondent essentially is tarnishing the Complainant’s trademark (see for example the review of these cases in The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743 (November 6, 2004). But here also, the Panel does not see that the Complainant’s trademark has been called into question by the Respondent, or would be called into question by the general public. Like selling a domain name for as much as it will bring supra, connecting a domain name to pornography is not per se prohibited by the UDRP.

The Panel finds the Complainant has failed to show that the Respondent registered and is using the disputed domain name in bad faith as required by paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dennis A. Foster Presiding Panelist
Frederick M. Abbott Panelist	Young Kim Panelist

Dated: September 21, 2005