This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, approved October 24, 1999 ("the Policy") and the ICANN Rules of Uniform Domain Name Dispute Resolution Policy, approved October 24, 1999 ("the Rules").

The Complaint was submitted on August 3, 2001, and amended on August 13, 2001. The Response was submitted on September 25, 2001.

On October 10, 2001, the WIPO Arbitration and Mediation Center appointed Mark V. B. Partridge as Single Panelist.

Complainant has requested leave to file a Reply brief in this case. Paragraph 12 of the Rules provides that "the Panel May request, in its sole discretion" further statements from either party. Otherwise, there is no provision permitting the filing of a Reply brief. A Reply submission may be appropriate to address material misstatements of fact or to respond to matters that could not have been anticipated in the initial submissions. There having been no showing in either regard, Complainant's request to file a Reply is denied.

4. Factual Background

In 1976, Complainant began use of the mark PEEPER’S in conjunction with the retail sale of eyewear and accessories in the Dallas/Fort Worth, Texas area.

On December 23, 1981, Complainant obtained state (Texas) registration of the mark PEEPER’S.

In 1990, Respondent first conducted business under the trade name "Peepers Sunglasses, Inc.," in conjunction with the retail sale of eyewear and accessories in Grand Forks, North Dakota.

In 1991, Respondent began selling its eyewear and accessories through interstate commerce via mail order catalog under the trade name "Peepers Sunglasses, Inc."

In 1992, Respondent opened a second store in Duluth, Minnesota under the name "Peepers Sunglasses, Inc." This store also sold eyewear and accessories.

On March 21, 1994, Complainant filed an application for federal registration of the trademark PEEPERS in conjunction with the retail sale of eyewear and accessories.

On July 17, 1995, the U.S. Patent and Trademark Office (USPTO) refused Complainant’s application to register the mark PEEPERS in conjunction with the retail sale of eyewear and accessories.

In 1995, Respondent began doing business over the Internet under the trade name "Peepers Sunglasses, Inc.," and in conjunction with the retail sale of eyewear and accessories in North Dakota. Respondent attempted to register the Domain Name <peepers.com> for its website, but discovered it was owned by a third party. Respondent’s first Internet site for conducting business was available at the URL <[email protected]>.

On December 3, 1996, the USPTO approved the Complainant’s application to register the trademark "PEEPER’S" limited to a specific stylized format.

In December 1998, Respondent acquired the Domain Name <peepers.com>.

In May 2001, as part of a settlement agreement in related litigation, Complainant and Respondent agreed to submit this matter to WIPO using a single arbitrator.

5. Parties' Contentions

Complainant contends that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, that Respondent has no rights or legitimate interests in the Domain Name outside the Respondent’s geographic service area of Minnesota and North Dakota, and Respondent registered and used the Domain Name in bad faith.

Respondent contends that it has prior common law rights to the name "Peepers" in conjunction with retail eyewear in interstate commerce, and there is no evidence that it has used the Domain Name in bad faith.

6. Discussion

Our inquiry focuses on three issues: (1) is the Domain Name confusingly similar to a trademark or service mark in which Complainant has rights; (2) does Respondent have a legitimate interest in the Domain Name; and (3) has the Domain Name been registered and used in bad faith? The Complainant has the burden of proof on each of these issues.

A. Confusing Similarity

The record shows that Complainant holds a federal registration of a stylized logo including the word "PEEPER’S." Respondent’s Domain Name, <peepers.com>, is confusingly similar to Complainant’s registered mark.

B. Legitimate Interest

Complainant bears the burden of showing that Respondent lacks a legitimate interest in the Domain Name. However, Paragraph 4(c) of the Policy states that if the Panel, based on its evaluation of all the evidence, finds that Respondent: (i) used the Domain Name in connection with a bona fide offering of goods and services; (ii) has been commonly known by the domain name; OR (iii) is making a legitimate noncommercial use of the domain name, then Respondent will be found to have a legitimate interest in the Domain Name.

The evidence indicates that Respondent is making use of the Domain Name in connection with an offering of goods and services in commerce. For example, in Paragraph 13(f) of its Complaint, Complainant explains how Respondent came to own the Domain Name in late 1998 or early 1999, and in Paragraph 13(g) Complainant explains that, "Respondent uses the Domain Name to sell sunglasses and related accessories outside the Geographic Service Area of North Dakota and Minnesota and uses the Domain Name in advertisements, publications and other documents to promote the Respondent’s services outside the Geographic Service Area of north Dakota and Minnesota." Respondent claims its annual sales of goods and services through <peepers.com> is approximately $3.5 million.

Although use in connection with the sale of goods or services, is apparent, our inquiry must go further since not all such use qualifies as bona fide use. "To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy." Ciccone v. Parisi, Case No. D2000-0847 (WIPO 2000). Here, it does not appear that Respondent adopted PEEPERS as a deliberate infringement of Complainant's rights. Rather, the selection was based on a long period of prior use of the name. At the time of Respondent's adoption of PEEPERS, any rights of Complainant were limited to its local area of Texas. As a good faith junior user in a remote location, Respondent did not violate any potential rights of Complainant. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). In the absence of contradictory facts suggesting a deliberate intent to infringe, I find that Respondent's use of the Domain Name was bona fide.

The record also shows that Respondent was commonly known by the names Peepers, Peepers, Inc. and "Peepers Sunglasses and Accessories." The material portion of each name is identical to the Domain Name.

Because the record shows that Respondent was previously known by the Domain Name and uses the Domain Name in connection with the bona fide offering of goods and services, respondent has a legitimate interest in the Domain Name. Accordingly, I find that Complainant has failed to meet its burden as to the second necessary element of its claim.

C. Bad Faith

Complainant contends that Respondent registered and used the Domain Name in bad faith. In Paragraph 14 of its Complaint, Complainant makes allegations of several specific acts by Respondent that are indicative of bad faith use and registration. These contentions, however, are unsupported by the record. In fact, the record is devoid of any proof that by acquiring the Domain Name Respondent intended to confuse or deceive consumers in any manner. Specifically, the record does not show any circumstances where Respondent registered or acquired the Domain Name for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant or a competitor. There was no evidence presented that Respondent engages in a pattern of conduct to prevent others from using registered marks as domain names. Finally, no evidence was presented that shows Respondent procured the Domain Name to disrupt the business of Complainant or another competitor.

What the record does show is that Respondent has been doing business by the name "Peepers Sunglasses" since 1990. In 1995, when Respondent began doing business online, it sought to select a domain name that was a natural extension of its established business name. At that time the Domain Name was owned by a third party, but Respondent still used the term "peepers" in the HTML for its website. In 1998, Respondent was eventually able to procure the Domain Name, and since that time has been using the Name in the same manner it has previous domain names – for a bona fide offering of goods and services.

The record is devoid of any proof of bad faith registration and use of the Domain Name on the part of Respondent. Complainant has also failed to meet its burden as to this element.

7. Conclusion

Although the Domain Name <peepers.com> is confusingly similar to the Complainant’s mark, Respondent has a legitimate interest in the Domain Name and Complainant has failed to show bad faith registration and use by Respondent. Therefore, Complainant's request for relief is denied.

Mark V. B. Partridge
Sole Panelist

Dated: October 24, 2001