Aerogroup International, Inc. v. Brave New Consultants, Inc.
Case No. D2006-1216
1. The Parties
The Complainant is Aerogroup International, Inc., Edison, New Jersey, United States of America, represented by Lackenbach Siegel LLP, United States of America.
The Respondent is Brave New Consultants, Inc., New York, New York, United States of America, represented by Seyfarth Shaw United States of America.
2. The Domain Name and Registrar
The disputed domain name <whatswhat.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2006. On September 22, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On September 22, 2006, Network Solutions, 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. The Center verified that the Complaintsatisfied 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 September 29, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2006. The Response was filed with the Center on October 20, 2006.
The Center appointed M. Scott Donahey as the Sole Panelist in this matter on October 30, 2006. 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.
4. Factual Background
Complainant first registered the trademark WHAT’S WHAT (words only) in Canada on March 3, 1989, and WHAT’S WHAT & design in Austria on October 1, 1986. Complainant first registered the WHAT’S WHAT mark with the United States Patent and Trademark Office (“USPTO”) on April 22, 1997. The application was filed on October 7, 1996, and shows a first use in commerce of September 7, 1984. Complaint, Annex 3.
Respondent, a resident of the United States, registered the domain name at issue on August 7, 1995. Complaint, Annex 1. Respondent initially used the domain name at issue to resolve to its website for its consulting business, then known as Brave New Telemedia. Response, Annex G. After Respondent changed its name to Braveline Technologies, it registered the domain name <braveline.com>. It used the new domain name as well as the domain name at issue to resolve to its website. From as early as December 7, 1995, the President of the company used the domain name at issue as an email address and still does today. Currently approximately 35 individuals and companies, friends and clients of Respondent, use the domain name at issue in their email address. Response, Annex H. Respondent asserts that at the time it registered the domain name at issue it was unaware of Complainant or its trademark, and that Respondent continued to be unaware of Complainant or its trademark until it received notice of the current UDRP action.
Complainant has submitted evidence of use of “What’s What” as a corporate name, beginning in 1991, as a trade name for a brand of footwear trademarked AEROSOLES, as early as September 1990, and several other examples of use in the early to mid 1990’s as a trade name. Complaint, Annex 4. Most of the stories and ads were in a publication known as Footwear News. Id. As of 2005, that publication had a circulation of 17,186, the great majority of which were executives, managers and buyers in the footwear industry. Response, Annex I.
Complainant notes that Respondent’s president is listed as an administrative contact for and is one of the founders of a website to which the domain name <rentboy.com> resolves, which complainant describes as a classified listing and contact site for male prostitutes and their customers, and also provides links to pornographic movies. Complaint, Annex 5.
Respondent notes that “what’s what” is a common generic term meaning “the true facts or actual situation”. Response Annex E.
Complainant has not licensed or otherwise given Respondent the right to use Complainant’s WHAT’S WHAT mark.
5. Parties’ Contentions
A. Complainant
Complainant contends that the domain name at issue is similar or identical to the mark WHAT’S WHAT in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
B. Respondent
Respondent admits that the domain name at issue is similar to Complainant’s trademark. However, Respondent asserts that it has rights and legitimate interests in respect of the domain name at issue, since it has used the domain name continuously since its registration to resolve to its corporate website and that it has used the domain name as an email address for its president, and his friends and clients. Finally, Respondent contends that it has registered and is using the domain name at issue in good faith since it was unaware of the domain name or of Complainant at the time it registered and began using the domain name at issue and remained ignorant until it received notice of the current UDRP proceeding. Respondent contends that it registered the domain name at issue before Complainant registered the trademark in the United States and that Complainant has failed to establish that it had any common law trademark rights before Respondent registered and began using the domain name at issue.
Respondent alleges that the present action has been brought by Complainant in bad faith and that this is a case of Reverse Domain Name Hijacking.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) that the respondent has no legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Respondent has conceded and the Panel finds that the domain name at issue is confusingly similar to a trademark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel finds that Respondent registered the domain name at issue on August 7, 1995, and has used the domain name since that time to resolve to its business website and since at least as early December 1995 Respondent’s president has utilized the domain name as an email address for himself, his friends, and his clients. Zero International Holding GmbH &Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich., D2000-0161, (<zero.com> being used as an email address and for file transfer activities).
The Panel finds that the mark WHAT’S WHAT is also a common English phrase meaning “the true facts or actual situation” (Response, Annex E) and that Complainant cannot monopolize the use of the common English phrase simply by virtue of registering it as a trademark. Jacques Lafitte SA v. 21st Century Communications SCP, D2000-0443 (refusing to transfer <whoswho.com> and <whoswho.net>).
Accordingly, the Panel finds that the Respondent has rights and legitimate interests in respect of the domain name at issue.
C. Registered and Used in Bad Faith
Even though both Complainant and Respondent are residents of the United States, and Complainant has registered its trademark with the United States Patent and Trademark Office, Complainant cannot take advantage of the “constructive notice” decisions involving United States parties, since Respondent’s registration of the domain name at issue predates both the application and the registration of the trademark in the United States. See, generally, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 3.4 and cases cited therein.
Respondent alleged that it did not know of Complainant or of Complainant’s mark until it received notice of the within action. Complainant failed to introduce any evidence that would suggest that this assertion is untrue.
D. Reverse Domain Name Hijacking
The Panel does not feel that the facts in the case warrant a finding of Reverse Domain Name Hijacking.
7. Decision
For all the foregoing reasons, the Complaint is denied.
M. Scott Donahey Sole Panelist
Dated: November 11, 2006
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