kangaroosusa.com

Pentland USA Inc. , Asco Group Limited v. Garth Marriot

Case No. D2004-0031

The Complainant is Pentland USA, Inc., New York, New York, United States of America and Asco Group Limited, Freeport, Bahamas, both of which provide as their contact details, Pentland Brands Plc, Squires Lane, London, United Kingdom of Great Britain and Northern Ireland, represented by Dawn Osborne of Willoughby & Partners Solicitors, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Garth Marriot, Eugene, Oregon, United States of America represented by Carol A. Busby, United States of America.

The disputed domain name <kangaroosusa.com> is registered with Network Solutions, Inc. Registrar.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 15, 2004. On January 16, 2004, the Center transmitted by email to Network Solutions, Inc. Registrar a request for registrar verification in connection with the domain name at issue. On January 20, 2004, Network Solutions, Inc. 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 January 21, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2004. Respondent's lawyer indicated that she was representing Respondent in an email dated January 23, 2004. The Response was due on February 10, 2004. By email dated February 10, 2004, Respondent requested an extension until February 13, 2004, to file a Response. The Center granted an extension until February 15, 2004. The Response was filed with the Center on February 13, 2004. On February 20, 2004, the Complainant filed comments on the Response. These comments were not part of the file and were not considered in these proceedings due to the fact that they did not comply with the requirements of the Rules.

The Center appointed Thomas Webster as the sole panelist in this matter on February 23, 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.

It is not disputed that the First Complainant is a brand management company operating in the sports, outdoor and fashion markets. It began trading in 1932 and since then has developed and marketed numerous sports, outdoor and fashion brands.

It is not disputed that the First Complainant's subsidiaries hold a number of domain names, such as:

<kangaroos.biz>
<kangaroos-usa.com>
<kangaroos.se>
<kangaroos.com>
<kangaroosamerica.com>
<kangaroosus.com>
<kangaroos.me.uk>
<kangaroos.us>

It is also not disputed that the Second Complainant is the proprietor of numerous trademark registrations for the word KangaROOS around the world including the following trademarks ("the KangaROOS marks"):

According to the Complainants, the First Complainant acquired the KangaROOS brand in 1990. The KangaROOS brand was assigned to the First Complainant by KangaROOS USA Inc in 1990 including all rights in registered and unregistered trademarks and the goodwill connected thereto to promote the KangaROOS brand throughout the world.

At some point the Respondent began selling KangaROOS branded footwear via his website at "www.coolestshop.com". The Respondent maintains that this was in February 2002.

The Complainant alleges that, in around October 2001 the Respondent approached the Complainant to see if they were willing to appoint the Respondent as an official retailer/licencee of the KangaROOS brand in the USA. There were negotiations between the parties but, eventually, the First Complainant finally awarded the licence to another candidate.

The Respondent registered the domain name on February 1, 2002, during the course of negotiations.

The Complainant maintains that it "first became aware of the registration and use of the disputed domain name in January 2003", although this is denied by the Respondent.

The Respondent had linked the disputed domain name to a home page which comprised the words ‘KangaROOS®@www.Coolestshop’. "The page contained a link to the Respondent’s homepage at "www.coolestshop.com" on which the Respondent sold Adidas, Ben Sherman and other famous brands as well as KangaROOS products."

The Complainant requested that the Respondent transfer the disputed domain name to one of its subsidiary and proposed compensation for the losses incurred in registering the domain name.

The Respondent replied that he was ready to transfer the domain name in exchange for $25,000 which comprised the costs incurred during the negotiation period and the costs in registering the domain name.

The Complainant informed the Respondent that he would not compensate him for the losses incurred during the negotiation period, "because it is simply not standard business practice".

The Complainants argues that the disputed domain name is "identical to the mark KangaROOS USA in which the Complainants have common law and unregistered trademark rights and confusingly similar to the name KangaROOS in which the Complainants have common law and registered trademark rights."

The Complainants also argues that the Respondent has received no authorization for such registration.

The Complainants "believe that the Respondent has no rights or legitimate interest in respect of the disputed domain name as it does not appear to hold any registered trademarks which are identical or similar to the disputed domain name."

"Furthermore, the Complainants submit that the Respondent intended to commercially capitalize on the KangaROOS marks and Kanga ROOS USA mark by registering the disputed domain name".

"The Complainants submit that one of the driving factors behind the Respondent’s registration of the disputed domain name was to give the Respondent bargaining power over the Complainants."

The Complainants submit that "the costs incurred negotiating cannot legally be claimed from the Complainants and therefore it has no right to withhold the disputed domain name from the Complainants in lieu of the Complainants meeting this costs."

Furthermore, the Complainants argue that the domain name has been registered and used in bad faith by the Respondent.

The Respondent "has stated that it registered the domain name ‘in the honest belief that he had a deal with KANGAROOS’ to become the exclusive licensee of the KangaROOS brand in the United States". The Complainants, however respond that: "the Respondent knew all along that they were just one of a number of prospective licensees having been made fully aware that this was the case."

The Complainants also note that: "While the Respondent may have registered the disputed domain name in anticipation of becoming the exclusive US licensee, the Respondent also intended to use the disputed domain name in order to sell KangaROOS branded products on his website whether he became the exclusive licencee or not and to use the name in relation to other brands."

"The Complainants submit that the Respondent’s registration and use of the disputed domain name constitutes bad faith as it has been registered and used in a manner which intentionally creates a likelihood of confusion with the Complainants’ KangaROOS marks and KangaROOS USA mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or the products or services provided by the Respondent’s website. The Complainants submit that any such confusion is extremely likely given that the disputed domain name is identical to the Complainants’ KangaROOS USA mark."

The Complainants also argue that the $25,000 offer made by the Respondent to transfer the domain name "far exceeds the Respondent’s out-of-pocket expenses in registering the disputed domain name and, by the Respondent’s own admission, includes extraneous costs such as travel expenses."

"Further or in the alternative the Complainants submit that the Respondent registered the disputed domain name in order to gain commercial bargaining power over the Complainants. The Complainants rely on the fact that the registration took place during the currency of the licence discussions between the parties, that the Respondent has not registered any other names of the brands it sells on its website as domain names."

"Further or in the alternative the Complainants submit that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor."

" The Complainants again submit that the Respondent at no time intended to transfer the disputed domain name to the Complainants in the event that the negotiations broke down for its out-of pocket expenses in registering the disputed domain name. In fact the Complainants believe that it was the Respondent’s intention all along to use the disputed domain name to sell KangaROOS and other products not connected with the Complainant on its website in the event that the Complainants licensed the use of the KangaROOS brand to another party."

The Respondent concedes that the domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

The Respondent argues that "there is no attempt to redirect the consumer to purchase a different brand of shoes – the KangaROOS are for sale right on the main website. The domain name assists the customer in finding a legal seller of the goods. Because he sells KangaROOS, Respondent has no reason to "bait and switch" the customer to other brands."

"Respondent acquired and has used the domain name to promote the sales of KangaROOS items on his main website. Therefore, he has not acted in bad faith."

The Respondent claims that he "has not prevented Complainant from reflecting its mark; in fact, it states in the complaint that it owns eight similar domain names. Therefore, he has not acted in bad faith".

Respondent also argues that he "has not disrupted a competitor’s business. He is selling KangaROOS purchased from Complainant’s distributor."

Furthermore, the Respondent contends that the $25,000 offer to the Complainants "was based on his needs; since it was rejected and since he had a good and valid reason to keep the site, he did so."

" In this case, Respondent is indeed offering goods on the site. Although the site does not include a disclaimer, it advertises only Complainants’ product without purporting or appearing to be the official website. In fact, the page includes a link to Respondent’s site which is clearly not a site of Complainants. Respondent owns no other domain names using the term KANGAROOS and Complainant owns eight sites with that term in it."

Under the Policy, paragraph 4 (a) the Complainants must prove that each of the following three elements are present:

(i) the Domain Name is identical with or confusingly similar to a trademark in which the Complainant has rights

(ii) the Respondent has no right or legitimate interest in respect of the Domain Name;

and

(iii) the Domain Name has been registered and is being used in bad faith.

This point is not denied by the Respondent.

Complainants have satisfied the requirements of the Policy, paragraph 4 (a) (i).

Paragraph 4 (c) of the Policy gives three examples of how a Respondent can demonstrate his rights or legitimate interests in a domain name. They are:

"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

The Respondent's basic position is that he registered the domain name when he began selling the relevant products which he lawfully acquired from other sources. Therefore, the domain name is being used to sell the First Complainant's products, albeit indirectly.

However, the Panel is not convinced that this activity establishes that Respondent has rights or legitimate interests to the domain name. If Respondent wished to simply indicate that he had Kangaroosusa products for sale, he could do it in various ways without using a domain name so that the various search engines would locate his site. Moreover, by redirecting searches from the Kangaroosusa domain name to his own domain name (where various products are sold), there is a risk that a person looking for one product initially will purchase another product. Therefore, the Panel finds that the Respondent has not demonstrated that he has rights to or a legitimate interest in the domain name.

Paragraph 4 (b) of the Policy sets out four illustrative circumstances, which for the purposes of the Policy, paragraph (a) (iii) shall be evidence of the registration and use of the domain name in bad faith, including:

"(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."

The Panel is satisfied that Respondent registered the domain name to sell products of the First Complainant and perhaps with a view to becoming the licensee or distributor of the First Complainant. After the fact, the Respondent has offered to sell the domain name to the Complainants for a sum of $25,000 and the Panel is satisfied that this amount largely exceeds the Respondent’s out-of-pocket costs directly related to the domain name. However, that is not enough. The issue under (i) is the primary purpose at the time of registration.

Paragraph (i) above is usually applicable in cases where there is no such legitimate intended business activity as Respondent points out. Therefore, the Panel is not satisfied that paragraph (i) is applicable.

The Panel is satisfied that a businessman, such as Respondent, would register this type of domain name to prevent the holder of the trademark from registering the domain name. The fact that the First Complainant's subsidiaries have a number of similar domain names does not prevent this from being applicable. However, there is no evidence that Respondent has engaged in a pattern of conduct in this respect and therefore paragraph (ii) is not applicable.

The Panel is also not convinced that the primary purpose of the domain name registration was the disruption of the business of a competitor within the meaning of paragraph (iii). As noted above, the primary purpose of Respondent appears to have been to sell the relevant products.

However, the Panel is satisfied that Respondent registered the domain name to give the impression that he was affiliated in some way with the First Complainant. Respondent is clearly aware of the value of the trademarks in this sector and is surely aware of the prima facie right of a trademark holder to use of a corresponding domain name. Indeed, the parties did seek unsuccessfully to negotiate such an arrangement at the time when Respondent registered the domain name. For the Panel, if a party is negotiating this type of arrangement, it is difficult for the potential licensee or distributor to justify registration of a domain name corresponding to that of the trademark without the consent of the proposed licensor or supplier. Therefore, the use of this domain name during and after such negotiations is evidence of bad faith.

These circumstances are evidence that the Respondent is using the domain name in bad faith within the meaning of paragraph (iv) above.

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, <kangaroosusa.com> be transferred to the Complainants.