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Fashiontv.com GmbH v. Mr. Chris Olic [2005] GENDND 2127 (8 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fashiontv.com GmbH v. Mr. Chris Olic

Case No. D2005-0994

1. The Parties

1.1 The Complainant is Fashiontv.com GmbH, Munich, Germany, represented by Ron C. Jakubowicz, Germany.

1.2 The Respondent is Mr. Chris Olic, New York, United States of America, represented by John Berryhill, United States of America.

2. The Domain Name and Registrar

2.1 The disputed domain name (the “Domain Name”) <fashiontv.com> is registered with Moniker Online Services, LLC.

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2005. On September 19, 2005, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On September 26, 2005, Moniker Online Services, LLC 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.

3.2 On September 26 the Center issued a Complaint Deficiency Notification to the Complaint notifying it of the following deficiencies in the Complaint:

The Complaint does not describe the grounds on which it is made, as required by Rules, paragraph 3(b)(ix). More specifically, the Complaint does not provide evidence of lack of rights or legitimate interest on the part of the Respondent in respect of the domain name, nor does it specifically allege that the Respondent has used the domain name in bad faith.

3.3 In response to this notification the Complainant filed amendments to the Complaint on October 3, 2005. The Center verified that the Complaint as amended 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”).

3.4 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 October 5, 2005. In accordance with the Rules, paragraph 5(a), the due date for a response was October 25, 2005. A purported response was filed with the Center on October 27, 2005 (the “Response”).

3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on November 4, 2005. 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.

3.6 As is described in more detail later on in this decision on November 10, 2005, the Panel issued an order pursuant to paragraph 12 of the Rules for further submissions to be made by the Complainant and the Respondent in connection with the status of the Complainant’s trademark applications (the “Procedural Order”). Pursuant to the Procedural Order, the Complainant filed its submissions on November 18, 2005 (the “Complainant’s Supplemental Submission”) and the Respondent filed its reply on November 28, 2005 (the “Respondent’s Supplemental Reply”). The Procedural Order also provided that the issuing of a decision in this dispute be postponed.

4. Procedural Matters

4.1 It is convenient before setting out the submissions of the parties and the factual background to this Complaint, to deal with two procedural issues in this case. They are (i) to what extent the Panel should take into account the late Response submitted by the Respondent and (ii) the circumstances surrounding the issue of the Procedural Order and to what extent the Panel is prepared to take into account materials and submissions filed by the parties in purported pursuance of the Procedural Order.

A. The Late Response

4.2 In DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers, WIPO Case No. D2003-0780 and 1099 Pro, Inc. v. Convey Compliance Systems, Inc., WIPO Case No. D2003-0033 panels have held that late responses should be disregarded “absent good cause”.

4.3 This Panel also addressed the issue of late responses in its decision in HQ UK Limited v Head Quarters, WIPO Case No. D2003-0942. In that decision the Panel noted that an “exceptional case” was required under paragraph 10(c) of the Rules for extensions of time under the Rules and expressed the view that the circumstances that must be shown for a late submission to be accepted are at least as strict. In that decision the Panel went on to note as follows:

“Further, the comments of the majority of the panelists in 1099 Pro, Inc. v. Convey Compliance Systems, Inc., WIPO Case No. D2003-0033 would seem to suggest that panels are now likely to take a stricter view on whether a party has shown good cause than might have been the case when the UDRP process was still relatively new”.

4.4 Indeed, as was more recently pointed out by the panel in the case of Museum of Science v Jason Dare, WIPO Case No. D2004-0614, “many panels have disregarded late filed responses making clear that it is important to apply the Rules as written, absent a good reason, otherwise parties will feel free to disregard deadlines and Respondents will regularly submit late responses”.

4.5 It is for the party seeking to submit a late submission to provide justification for doing so. So has the Respondent shown good cause or exceptional circumstances in this case?

4.6 The Respondent claims that it has “encountered difficulty in locating the materials provided as evidence hereto under the ‘bad faith’ criterion within the 20 days permitted by the Policy”. Further it argues that the delay was not material since the Response was filed prior to any consideration of the Complaint by the Panel and that the harm on the Respondent should the Response not be considered by the Panel outweighs any harm to the Complainant should the Response be taken into consideration.

4.7 Whilst the lack of impact on the Complainant is an important factor, in the view of the Panel this is not sufficient. The Respondent must also give reasons for the delay and the greater the delay the more compelling those reasons. The Panel believes that a mere assertion by the Respondent of “difficulties” in obtaining evidence, without any explanation of what those “difficulties” were, is not sufficient. Further the materials proffered by the Respondent as “evidence … under the ‘bad faith’ criterion” are limited (i.e. a two page domain name transfer agreement and a receipt) and it is certainly not apparent on the face of these documents why they would be “difficult” to locate. In the circumstances, the Panel has decided to disregard the Response when considering this matter.

4.8 This may appear very harsh given that the delay in question in this case was short (only 2 days) and the Complainant had effectively been given additional time to amend its Complaint. Indeed, had consideration of the Respondent’s submissions in this case had a bearing on the outcome of the case, the Panel may have considered whether a more appropriate course would have been to issue a procedural order directed to the Respondent that it provide a further explanation of, and evidence in relation to, its delay. However, for reasons that will become apparent, this has not proved necessary.

B. The Procedural Order

4.9 As is described in greater detail later on in this decision the Complainant in its Complaint relied for the purposes of paragraph 4(a)(i) of the Policy upon two “trademarks” (the “Trademarks”). The Complainant asserted that it had “registered” the Trademarks, but when listing the Trademarks provided trademark application numbers. Further the materials provided in evidence of the Trademarks took the form of Office of Harmonization for the Internal Market (“OHIM”) printouts in relation to two Community Trademark (“CTM”) applications each of which appeared to be subject to opposition.

4.10 The consensus view amongst panellists would appear to be that a panel is allowed to “undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision” (see question 4.5 in the WIPO Overview of WIPO Panel Views on selected UDRP Questions). Review of the online OHIM database by the Panel confirmed that the Trademarks had yet to proceed to registration and that the prosecution history was complex, each trademark application having been or continuing to be subject to opposition proceedings to some degree.

4.11 The Panel could perhaps have made further enquiries of OHIM as to the status of the trademark applications and proceeded to make a decision in this case on that basis. However, even if this could be characterised as “limited factual research” this Panel considers it inappropriate to do so in this case. The exact status of the trademark applications is an issue that the Complainant is best able to comment upon and the onus is on the Complainant to make its case rather than on the Panel to make it for it. Further, such an approach would have meant that neither party would have the opportunity to address the result of the Panel’s enquiries.

4.12 It also appeared to the Panel that the issue as to whether a trademark application provides sufficient rights for the purposes of paragraph 4(a)(i) of the Policy might well be an important factor in, and possibly determinative of, the Panel’s ultimate decision. The question is one of some controversy and neither party had addressed the issue in their submissions.

4.13 In the circumstances, the Panel was of the opinion that it was in the interests of fairness to give both parties the opportunity to submit further evidence and arguments on these issues. Accordingly the Procedural Order was issued. The operative terms of the Procedural Order were as follows:

“(1) The Complainant shall by no later than 6:00 pm GMT on November 18, 2005 forward, by email to the WIPO Center in accordance with paragraph 3(b) of the Supplemental Rules and copied to the Respondent by email a further submission together with supporting documents/evidence limited to the following matters:

(i) details as to the exact status of each of the Trademarks [which were defined in the preamble to the Procedural Order as the two trademarks described in the Complaint (i.e. the Trademarks)] … and in particular whether the Trademarks or either of them have now proceeded to registration; and

(ii) insofar as the Trademarks or either of them have not proceeded to registration, reasons as to why the Trademarks or either of them should be treated by the Panel as a trademark or service mark in which the Complainant has rights for the purposes of paragraph 4(a)(i) of the Policy.

(2) The Respondent may, if so advised, by no later than 6:00 pm GMT on November 28, 2005, make further submissions to the Panel limited to any submissions by the Complainant in accordance with paragraph (1) of this Order together with any supporting documents/evidence in relation to the same.”

4.14 In the material filed in response to the Procedural Order, the Complainant did submit evidence and make further submissions in relation to the Trademarks. However, notwithstanding that the Procedural Order made it clear that the submissions should be limited to this material, the Complainant went much further. Essentially it sought to amend its Complaint so as to rely on additional rights over and above the Trademarks listed in the Complaint. The Respondent has objected to this in its submission in response.

4.15 To accept and consider contentions by either party that are outside the scope of the Procedural Order would be akin to accepting an unsolicited supplemental filing. The majority view of WIPO panellists on whether to accept such unsolicited supplemental filings appears to be that, “while panels must be mindful of the need for procedural efficiency, they have discretion to accept an unsolicited supplemental filing from either party, bearing in mind the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. It is also helpful if the party submitting its filing can show its relevance to the case and why it was unable to provide that information in the complaint or response”. The minority view is stricter than this in not allowing any supplemental filings without these having been specifically requested by the panel (see question 4.2 in the WIPO Overview of WIPO Panel Views on selected UDRP Questions).