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Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Montecarlo Development, LLC. [2005] GENDND 502 (8 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Julie & Jason, Inc. d/b/a The Mah Jongg Maven v. Faye Scher d/b/a Where the Winds Blow

Case No. D2005-0073

1. The Parties

The Complainant is Julie & Jason, Inc., a Georgia (U.S.) corporation doing business as The Mah Jongg Maven, Atlanta, Georgia, United States of America, represented by India E. Vincent, Burr & Forman LLP, Birmingham, Alabama, United States of America.

The Respondent is Faye Scher d/b/a Where the Winds Blow, Katy, Texas, United States of America. Ms. Scher has submitted a Response on her own behalf.

2. The Domain Name and Registrar

The disputed domain name <themahjonggmaven.com> is registered with Abacus America Inc. dba Names4Ever (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2005. On January 24, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On January 28, 2005, the Registrar 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 February 9, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2005. The Response was filed with the Center on February 16, 2005.

The Center appointed Richard G. Lyon as the sole panelist in this matter on February 28, 2005. 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 Panel finds that it was properly constituted and has jurisdiction over this dispute.

4. Factual Background

This proceeding involves two companies that sell products relating to mah jongg, a board game of Chinese origin usually played by four persons with tiles resembling dominos and bearing various designs. Complainant has added to one spelling of that game the common English word “maven” as its trademark; Respondent has done so in the disputed domain name. Maven, which means “a person who has special knowledge or experience; an expert,” is derived from a Yiddish word with a similar meaning.¹

Complainant sells mah jongg games and accessories. In September 2003, Complainant applied for United States trademark rights in THE MAH JONGG MAVEN, and its application was granted on August 31, 2004. Complainant sells its products over the Internet at “www.mahjonggmaven.com”.

Complainant asserts, without supporting evidence, that its predecessor company has done business under the name The Mah Jongg Maven since 1998. Again without evidentiary support, Complainant asserts that it acquired the business and its trademark rights (then entirely common law trademark rights) in 2002.

Respondent is an individual who resides in Katy, Texas. She also sells mah jongg games, accessories, and related merchandise, at the Internet address of “www.wherethewindsblow.com”. She registered the disputed domain name on June 8, 2004. Initially the disputed domain name resolved directly to her “www.wherethewindsblow.com” site.

On September 8, 2004, Complainant’s counsel sent Respondent a “cease and desist” letter, claiming trademark infringement and demanding among other things that Respondent transfer of the disputed domain name to Complainant. Respondent replied September 19, 2004, declining to transfer the disputed domain name and contesting the validity of Complainant’s trademark and other factual assertions on which the demand for transfer was based. Shortly after this exchange, on September 29, 2004, Respondent registered “The Mah Jongg Maven” as a fictitious business name in the State of Texas.²

Complainant’s counsel sent a second cease and desist letter to Respondent on November 19, 2004. In her response, sent November 25, 2004, Respondent again declined to transfer the disputed domain name. She pointed out that she had changed the internet address to which the domain name resolved, to “www.mahjong-mahjongg-maw-jong.com”, identified at that address as a “sister site” to “wherethewindsblow – your source for games, tiles, gifts, jewelry and accessories with a mah jongg theme.” This alternate site had a hyperlink to “www.wherethewindsblow.com”.³

5. Parties’ Contentions

A. Complainant

The Panel summarizes Complainant’s contentions as follows:

Identical to a mark in which the Complainant has rights. The disputed domain name is identical to Complainant’s registered trademark. Because Respondent is a United States citizen, under United States trademark law Respondent had “constructive notice” of Complainant’s trademark since September 2003, the filing date of Complainant’s trademark application. The lack of spaces in the disputed domain name and the addition of a top level domain (.com) do not obviate identity with Complainant’s valid mark.

Rights or legitimate interests. Respondent has no rights or legitimate interest in the disputed domain name. She has never been known by that name. Her use of the disputed domain name is intended to compete directly with Complainant. In these circumstances her use is a clear infringement of Complainant’s trademark rights. Respondent’s registration of the fictitious business name postdates notice of the dispute; therefore, it is not evidence of any legitimate interest in the phrase embodied in Complainant’s trademark prior to commencement of the dispute. (See Policy, paragraph 4(c)(i), (ii)).

Bad faith. In her correspondence with Complainant’s counsel, Respondent admitted knowledge of Complainant, Complainant’s business, and Complainant’s use of its name in that business, and further acknowledged use of the disputed domain name to direct internet users to her own competing site. Even if Respondent had no actual notice, the constructive notice under United States trademark law imputes that knowledge to her and is evidence of bad faith. Respondent’s use of the disputed domain name to compete directly with Complainant is further evidence of bad faith, as evidence of her intent to divert Internet users for commercial gain in violation of Section 4(b)(iv) of the Policy. Changing the internet address to which the disputed domain name resolves following notice of the dispute does not cure her prior bad faith in registration of use of the disputed domain name; moreover, the hyperlink to Respondent’s commercial website remains, and with it all the bad faith connotations set forth above.

B. Respondent

The Panel summarizes Respondent’s contentions as follows:

Identical to a mark in which the Complainant has rights. Respondent contests both elements of this clause of the Policy. First, the disputed domain name is not identical to the Complainant’s mark because:

- Complainant’s trademark is in solid capital letters while the disputed domain name is has initial capitals only

Complainant’s mark has spaces between the words; the disputed domain name does not.

- The game of mah jongg can be spelled in many different fashions.

As to the second element, Complainant’s trademark is not valid because of the following:

- Both the name of the game and the word maven are common words that are applied to many individuals, Respondent among them

- Complainant has not properly marked its trademark, on its website or otherwise. Respondent submits several examples of Complainant’s use of the phrase “the mah jongg maven” without marking a ® or ™ symbol. This use is “improper” and grounds for loss of trademark rights. Complainant’s use of the trademark as a generic or descriptive term similarly leads to loss of trademark rights.

- Similarly, Complainant has not registered the domain names incorporating its mark in other top level domain registries (such as .net or .biz). This is evidence of carelessness in protecting Complainant’s trademark rights and also “improper” use.

Rights or legitimate interests. Respondent has been commonly known as a mah jongg maven. She has submitted fourteen letters from friends, relatives, and acquaintances attesting to this fact. Respondent’s use of combination of common words is not trademark infringement. Complainant’s trademark registration was not effective until August 31, 2004, three months after Respondent registered the disputed domain name. Respondent initially intended to use the site only to describe the history and rules of the game of mah jongg, not to sell her wares.

Bad faith. To quote from the response, “[Respondent] never had any intentions of monetary gains by trying to sell the site.” Automatic re-direction from the disputed domain name to Respondent’s commercial site does not demonstrate bad faith in either registration or use. Since the domain name was available, Respondent had the right to register it, and re-direction is entirely proper and commonplace on the Internet.

6. Relevant Standards

The Complainant must prove the elements set out in paragraph 4(a) of the Policy. These elements are as follows:

(i) Respondent’s Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect to the Disputed Domain Name; and

(iii) Respondent’s Disputed Domain Name has been registered and is being used in bad faith.

Complainant bears the burden of proof on each of these elements.

7. Discussion and Findings

A. Identical or Confusingly Similar.

The disputed domain name is identical to Complainant’s registered trademark. As Complainant asserts, and as panelists have uniformly found, spaces between words and capitalisation are irrelevant, particularly since prevailing internet convention does not allow spaces between words and ignores capitalisation in internet addresses. So the question under this element of the Policy is whether Complainant has rights in its mark sufficient to bring this proceeding.

Except in the most extraordinary circumstances, the Panel lacks jurisdiction or authority (not to mention the competence) to set aside a trademark registration issued by governmental authority. E.g., Deutsche Telekom AG v. Terrabit Working Group, WIPO Case No. D2004-0153; Webe Web Corporation. v. Website Holdings Corp., WIPO Case No. D2002-1057.⁴ That is true even when the mark at issue consists of common words. Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin, WIPO Case No. D2002-0635.

The circumstances of this case are altogether ordinary. Respondent’s assertion that Complainant has abandoned its mark by “improper” use, or that such “improper” use strips Complainant of its recourse to the Policy, fails for two fundamental reasons. First, a panel’s sustaining a finding of abandonment, no less than denying on any other grounds rights in a mark that a national authority has duly registered, would be tantamount to setting aside the official act of a government authority. A panel in a limited administrative proceeding under the Policy lacks both the jurisdiction to make such a finding and the means of obtaining and evaluating evidence advanced to support such a claim. Second, Respondent’s evidence falls far short of establishing abandonment or any use that is unlawful, tortious, or otherwise “improper.”

The use of common words or descriptive terms in a mark, of course, limits the mark owner’s right to exclude others from using the mark or a variance, under trademark law and under the Policy. That may raise issues, addressed briefly below, under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.

Complainant has established that the disputed domain name is identical with a trademark in which it has rights.

B. Rights or Legitimate Interests

Complainant and Respondent are direct competitors in the same line of business. This undisputed fact alone makes out Complainant’s prima facie showing that Respondent has no rights in the disputed domain name nor is making any bona fide use of it, and raises significantly the evidentiary burden that Respondent must meet to overcome that showing.

Respondent fails to meet this standard. On the contrary, the undisputed facts, as revealed by the parties’ evidence, show clearly that Respondent has no rights in the disputed domain name and that her use of it is not bona fide.

Respondent first seeks refuge in paragraph 4(c)(ii) of the Policy, claiming that she “as an individual . . . [has] been commonly known by the domain name.” Respondent submitts written statements from friends and acquaintances that they have known, thought, or spoken of her as a mah jongg maven for many years. None of these statements, however, suggests that this phrase is Respondent’s alter ego or a moniker or nickname regularly used to identify her generally or to distinguish her from any other mah jongg enthusiast. In most instances the declarants state that they find the phrase descriptive of Respondent, or that they occasionally think of her as such; at best they state that the phrase is occasionally used by some to refer to her. The Policy requires that she be “commonly known by the domain name” (emphasis supplied), and Respondent’s evidence does not establish this. Furthermore, there is no evidence at all that Respondent was known by this term prior to her becoming aware of Complainant’s mark. Compare Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453.

Respondent’s belated effort to come within paragraph 4(c)(iii) of the Policy is easily answered. Respondent’s modification of the disputed domain name, to resolve to an alternate site, not only occurred after this dispute arose but also did not cure the fatal taint in her earlier competing use of the disputed domain name. The alternative use (described in Section 5.B above) still includes a prominent hyperlink to Respondent’s principal commercial website and a clear invitation to visit that site. Respondent’s alternative use is not “non-commercial” and therefore not within the safe harbor of paragraph 4(c)(iii).

Since Complainant has provided no evidence to support its allegation that its common law trademark rights in its mark accrued as early as 1998, Respondent’s claim that she registered the disputed domain name before the registration date of Complainant’s mark might support a finding that her registration of a common phrase gave her rights in the disputed domain name. Not only have panelists almost uniformly rejected importation of any notion of constructive notice arising from mark registration into determination rights or lack of bad faith under the Policy,⁵ Complainant’s use of common words in its mark makes it more likely that a member of the public, even a competitor, might innocently have registered that phrase as a domain name.⁶

But Respondent has frankly acknowledged that she knew of Complainant’s mark and business before registering the disputed domain name. At pages 3-4 of the Response,⁷ she describes the circumstances under which she registered the disputed domain name:

Respondent received a special offer from a Domain Registration company offering good prices for adding new names. Respondent selected three domains with the word(s) Mahjongg (various spellings) as she had a direct interest in having these words in the URL due to the nature of her business! Respondent did not register URLs similar to any other competition, and this was coincidence that Complainant had started filing procedure before this. Respondent has no malice towards this Complainant and was in fact a past customer of “Mah Jongg Maven” (NOT “The” Mahjongg Maven) before Respondent opened her own business.

In these circumstances Respondent’s knowing use of a competitor’s mark cannot confer any legitimate interest in the phrase “mah jongg maven” for purposes of the Policy. With such a claim removed from this proceeding, Respondent’s claim of rights or legitimate interests depends upon her belief that Complainant’s mark is invalid or unenforceable, or not available under the Policy. Since the Panel has rejected that claim, it follows that any assertion of rights or legitimate interests in the disputed domain name must also be rejected.

C. Registered and Used in Bad Faith

Respondent’s denial of any bad faith in registration or use similarly depends upon invalidity or unavailability of the mark, and similarly falls with the Panel’s refusal to set the mark aside. Compare Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin, supra. Respondent’s mistaken belief (or disingenuous argument) that use of the definite article the, spacing between words, or capitalisation distinguishes the disputed domain name from Complainant’s mark for trademark or Policy purposes does not insulate her from the consequences of appropriating as her domain name the business identifier of a direct competitor. That appropriation is the epitome of bad faith under the Policy.

The Paule Ka case, supra, is instructive on the issue of bad faith. In that proceeding, the respondent selected as her own nickname the phrase Paula Ka and started a clothing line under that name. She acknowledged selecting that phrase after seeing it on a storefront while visiting in Paris. The complainant held a trademark for that phrase for a clothing line sold primarily in Europe. Despite some evidence that the respondent had been commonly known by the disputed domain name, the Panel in that proceeding stated succinctly in language equally appropriate in the present case:

. . . the Panel concludes that knowledge of the mark at the time of registration followed by use in commerce without a legitimate interest and likely to create confusion (and thus allow the Respondent to free-ride on the Complainant’s goodwill), is the proper test [for determining bad faith] and that the Respondent has, in fact, “intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark.”

8. Decision

For the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <themahjonggmaven.com>, be transferred to the Complainant.

Richard G. Lyon
Sole Panelist

Date: March 6, 2005

² A fictitious business name is a name other than the legal name of a corporation or other business owner under which that owner operates or intends to operate its business.

³ See Complaint, Annex 11. The Panel confirmed on March 2, 2005 , that the disputed domain name still resolves to this address, and that the quoted language and hyperlink remain.

⁴ There is strong authority that a panel lacks authority to ignore a valid registration in any circumstances. Teresa Christie, d/b/a The Mackinac Island Florist v. James Porcaro, d/b/a Weber’s Mackinac Island Florist , WIPO Case No. D2001-0653; Hola S. A. v. Idealab, WIPO Case No. D2002-0089 (“It is not for the Panel to decide whether registration of the marks should or should not have been granted. The holding of a registered mark is sufficient for the purposes of the Policy. Any claim that the registration should not have been granted or should be revoked falls to be decided by the Courts of the relevant country.”).

⁵ E.g., Olymp Bezner GmbH & Co. KG v. Olympus Access Service, WIPO Case No. D2003-0958; The Way International, Inc. v. Diamond Peters, WIPO Case No. D2003-0264. Even under trademark law, constructive notice might only be imputed from the date of registration, not the date of Complainant’s trademark application. As noted, the registration date of Complainant’s mark was three months after Respondent’s registration of the disputed domain name.

⁶ As to a competitor, such registration perhaps may never be innocent. See, e.g., Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453; Memorydealers.com, Inc. v. Dave Talebi, WIPO Case No. D2004-0409 (“Any intentional use of a competitor’s mark, even a “weak” mark, to attract, divert, or mislead the competitor’s customers is not legitimate use.”)

⁷ Respondent similarly acknowledged that she was aware of Complainant, its mark, and its business in her correspondence with Complainant's counsel, and in several other sections of the Response.