The Complainant is Grattan Plc, West Yorkshire, United Kingdom of Great Britain and Northern Ireland, represented by Melbourne IT Corporate Brand Services AB, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Xedoc Holding SA, Luxembourg, Luxembourg, represented by Renova, Ltd., Spain.
2. The Domain Name and Registrar
The disputed domain name <kaleidoscope.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2007. On June 27, 2007, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On June 28, 2007, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 July 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for the Response was July 23, 2007. The Response was filed with the Center on July 24, 2007.
The Center appointed William R. Towns, Dennis A. Foster and G. Gervaise Davis III as panelists in this matter on August 18, 2007. The Panel finds that it was properly constituted.1 Each member of 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 Complainant forwarded an unsolicited supplemental filing to the Center on August 16, 2007, entitled “Extension of the Complaint, Response to Respondent”. Thereafter, on August 17, 2007, Respondent submitted to the Center a supplemental filing entitled “Request for Extension of Time to Respond to Unsolicited Reply to Response on the Part of Complainant.” Subsequently, on September 1, 2007, the Respondent submitted to the Center an unsolicited “Respondent’s Reply to Supplemental Filing by Complainant”, which it appears the Respondent again submitted to the Center on September 2, 2007.
4. Factual Background
The Complainant has registered KALEIDOSCOPE in the United Kingdom of Great Britain and Northern Ireland as a trademark for use with a variety of goods and services. The Complainant also maintains a commercial website at “www.kaleidoscope.co.uk”, where the Complainant offers for sale, clothing, fashion items and apparel, and household furnishings.
The disputed domain name <kaleidoscope.com> first was registered in September 1999 by V Entertainment, and was acquired by the Respondent in March 2004. Prior to the Respondent’s acquisition of the disputed domain name, a different party-complainant had initiated a UDRP action against the previous registrant seeking the transfer of the disputed domain name. Kaleidoscope, Inc. v. V Entertainment, NAF 0310000203207 (January 5, 2004) (“Kaleidocsope I”). A three-member panel in Kaleidocsope I, after noting that “kaleidoscope” was a “generic” or “dictionary” English word, found that V Entertainment was making a generic or descriptive use of the disputed domain name to generate pay-per-click revenue from advertising links to external websites that sold kaleidoscopes and related toys and objects of interest.2 The Kaleidocsope I panel concluded that the complainant had failed to establish that V Entertainment lacked rights or legitimate interests in the disputed domain name or bad faith registration and use of the domain name.
Archived webpage records reflect that the Respondent has used the domain name to attract Internet users to a pay-per-click portal website providing advertising links to other websites. These advertising links appear to be generated based on a contextual relationship to the word “kaleidoscope”.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name comprises the word “kaleidoscope”, which is identical to the Complainant’s registered trademark KALEIDOSCOPE and the Complainant’s domain name <kaleidoscope.co.uk>. According to the Complainant, its KALEIDOSCOPE mark is well known, and the Complainant asserts that the Respondent must have been aware of the Complainant’s mark at the time the Respondent registered the disputed domain name.
The Complainant asserts that the facts of this case are substantially different from those that resulted in the decision in Kaleidocsope I. According to the Complainant, the advertising links on the Respondent’s website include links to the Complainant’s website as well as third-party websites offering for sale fashion items that compete with the items offered on the Complainant’s website. The Complainant alleges that the Respondent intentionally registered a domain name identical to the Complainant’s mark knowing that the Complainant’s mark would attract a high volume of Internet traffic, thus generating substantial pay-per-click revenue for the Respondent.
In view of the foregoing, the Complainant concludes that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant further asserts the Respondent registered and is using the disputed domain name in bad faith to attract visitors to the Respondent’s website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark. According to the Complainant, the Respondent’s bad faith also is evidenced by the Respondent’s failure to reply to the Complainant’s cease and desist letter.
B. Respondent
The Respondent contends that it is making the same historic use of the disputed domain name that led the Kaleidocsope I panel to conclude that the prior domain name registrant had established rights in the domain name. The Respondent asserts that the disputed domain name has always been used to provide search results for kaleidoscopes. According to the Respondent, the Complainant has provided no evidence to support its allegations that the Respondent has used the domain name in relation to the Complainant’s goods or services of those of any competitor of the Complainant.
The Respondent asserts that the Complainant has not established enforceable trademark rights in “kaleidoscope” because the term is either generic or descriptive, and thus cannot serve to distinguish the Complainant’s goods and services from those of others. Assuming arguendo that “kaleidoscope” is not merely descriptive of the goods and services for which the Complainant uses its mark, the Respondent argues that the Respondent may not legitimately exclude others from registering and using Internet domain names incorporating “kaleidoscope” for unrelated and non-confusing purposes. The Respondent maintains that there are over 2,439 domain names that have been registered using the word “kaleidoscope”, of which over 839 remain actively registered.
The Respondent contends that its use of the disputed domain name in a descriptive sense to generate pay-per-click revenue from its website provides an absolute defense under Paragraph 4(c)(i) of the Policy. The Respondent denies any bad faith registration or use of the disputed domain name. According to the Respondent, it acquired the domain name from the previous registrant in order to continue its historic good faith use, and was not even aware of the Complainant prior to being served with the Complaint in this proceeding. The Respondent denies ever receiving a cease and desist letter from the Complainant, and notes that no such demand letter was provided as an annex to the Complainant.
6. Procedural Issues
A. The Panel Appointment
Following the Complainant’s failure to put forward a list of proposed panelists within five days after the filing of the Response electing a three-member panel, which is the procedure contemplated by Paragraph 6 of the Rules, the Respondent advanced the unprecedented argument that the Center should either dismiss the Complaint with prejudice or select the third panelist from the list provided by the Respondent. The Center declined to honor either of the Respondent’s demands, and appropriately so in the Panel’s judgment. The manifest objectives of the Policy clearly would have been frustrated, if not undermined, had the Center elected to act on the basis of the Respondent’s demands, particularly as the delay by the Complainant appears to have resulted from a misunderstanding of the Rules. Instead, following the eventual receipt of a list of proposed panelists from the Complainant, the Center proceeded to appoint the Panel in accordance with the Rules. Accordingly, the Respondent’s objections are overruled. The Respondent has voiced no apparent criticism respecting any of the panelists appointed by the Center in this case, and the Panel finds in any case that it has been properly constituted.
B. The Parties’ Supplemental Filings
As noted above, following the filing of the Complaint and the Response, both parties forwarded unsolicited supplemental filings to the Center. No provision in the Policy, the Rules or the Supplemental Rules authorizes such supplemental filings by either party without leave from the Panel. To the contrary, Paragraph 12 of the Rules provides that the Panel may request, in its sole discretion, further statements or documents from either of the parties, and the Policy and the Rules evince a clear preference for single submissions absent exceptional circumstances. See Rollerblade, Inc. v. CBNO and Ray Redican Jr.,
WIPO Case No. D2000-0427.
Nevertheless, panels have accepted unsolicited supplemental submissions in limited circumstances, when offered to present new, pertinent evidence not reasonably available until after the party’s initial submission, Top Driver, Inc., v. Benefits Benefits,
WIPO Case No. D2002-0972; to bring new and highly relevant legal authority not previously available to the attention of the Panel, Pet Warehouse v. Pets.Com, Inc.,
WIPO Case No. D2000-0105; or to rebut arguments of the opposing party that could not reasonably have been anticipated, Randan Corp. v. Rapazzini Winery,
WIPO Case No. D2003-0353. Conversely, a mere longing to reargue the same issues already submitted is not a valid reason for additional submissions. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,
WIPO Case No. D2000-1306.
None of the exceptional circumstances that have prompted prior panels to accept uninvited supplemental submissions are present in this case. The Panel accordingly will not consider the Parties’ unsolicited supplemental filings in reaching a decision in this case. To the extent that the Respondent has attempted to incorporate into its supplemental filings objections regarding the Center’s appointment of the panelists in this case, those objections have been dealt with above and are overruled.
7. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,
WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,
WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) 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
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in Paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of Paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus the consensus view is that Paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar to Trademark Rights
The Panel concludes that the disputed domain name <kaleidoscope.com> is identical to the Complainant’s KALEIDOSCOPE mark. The Complainant has established rights in its trademark through registration and use. The registration of the Complainant’s mark in various classes of goods and services carries with it a presumption of validity, and the Respondent has not presented any evidence that the Complainant’s KALEIDOSCOPE mark is generic or merely descriptive of such goods or services.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of Paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, the Complainant is required to make a prima facie showing under Paragraph 4(a)(ii) of the Policy in order to shift the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name under Paragraph 4(c). The Panel notes that the disputed domain name is identical to the Complainant’s mark, and it is uncontroverted that the Complainant has not authorized the Respondent to use the Complainant’s mark or to register a domain name that corresponds to the mark. Nevertheless, the Respondent is using the disputed domain name, which is identical to the Complainant’s mark, to attract Internet users to the Respondent’s website in order to generate pay-per-click revenue from advertising links. In view of these circumstances, the Panel is persuaded that a prima facie showing under Paragraph 4(a)(ii) has been made. See,e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270; Compagnie de Saint Gobain v. Com-Union Corp.,
WIPO Case No. D2000-0020.
Pursuant to Paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial 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 maintains that it has an absolute defense under Paragraph 4(c)(i) of the Policy because “kaleidoscope” is a common or “dictionary” English word, for which the Complainant cannot assert exclusive rights on the Internet. In that regard, a number of panels have concluded that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant. See National Trust for Historic Preservation v. Barry Preston,
WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,
WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich,
WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,
WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,
WIPO Case No. D2000-0047. Thus, where a respondent registers a domain name consisting of a “dictionary” word because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN,
WIPO Case No. D2005-1304. See also Media General Communications, Inc. v. Rarenames, WebReg,
WIPO Case No. D2006-0964 (domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark).
While Paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the domain name once the complainant has made a prima facie showing, the ultimate burden of proof with respect to all three elements of Paragraph 4(a) of the Policy remains with the Complainant. In this instance, the Complainant has failed to provide convincing proof that the Respondent registered the disputed domain name <kaleidoscope.com> because of its trademark value, as opposed to its attraction as a dictionary word. The Complainant has presented no evidence to support its claim that the KALEIDOSCOPE mark is famous. The record as a whole supports the Respondent’s claim to have registered the domain name because of the attractiveness of the dictionary word “kaleidoscope” as an Internet search term. Further, the record as a whole reflects the Respondent’s use of the website consistent therewith to generate pay-per-click revenues from advertising links to other websites selling kaleidoscopes and related toys or objects. The Complainant has failed to show that the Respondent registered the disputed domain name with the aim of profiting from and exploiting the Complainant’s mark. See Match.com, LP v. Bill Zag and NWLAWS.ORG,
WIPO Case No. D2004-0230.
In view of the foregoing, the Panel concludes that the Complainant has failed to meet its burden under Paragraph 4(a)(ii) of the Policy of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in Paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG,
WIPO Case No. D2004-0230.
As noted above, the record as a whole is consistent with the Respondent’s claim to have registered the domain name because of its attractiveness as a dictionary word or descriptive term. Although the Complainant asserts that the Respondent is in bad faith under the Policy, the Complainant has not presented any persuasive evidence of bad faith registration. In the final analysis, the circumstances of this case simply do not support the Complainant’s position that the Respondent registered the disputed domain name with the aim of profiting from and exploiting the Complainant’s mark. See Match.com, LP v. Bill Zag and NWLAWS.ORG,
WIPO Case No. D2004-0230. See also CNR Music B.V. v. High Performance Networks, Inc.,
WIPO Case No. D2005-1116.
Accordingly, the Panel concludes that the Complainant has failed to satisfy its burden of showing bad faith registration and use of the disputed domain name under Paragraph 4(a)(iii) of the Policy.
8. Decision
For all of the foregoing reasons, the Complaint is denied.
William R. Towns Presiding Panelist
Dennis A. Foster Panelist
G. Gervaise Davis III Panelist
Dated: October 4, 2007
1 The Respondent took the position after the Complainant did not submit a proposed list of panelists within 5 days of the filing of the Response that the Center was required to either select the third panelist from the list provided by the Respondent, or else dismiss the Complaint with prejudice. As discussed below, the Center correctly declined to honor either of the Respondent’s unprecedented requests, and, after receiving a list of proposed panelists from the Complainant, the Center selected the Panel in accordance with the Rules. The Panel therefore finds that it was properly constituted.
2 “Kaleidoscope” is a common English word denoting “[a] tube shaped optical instrument that is rotated to produce a succession of symmetrical designs by means of mirrors reflecting the constantly changing patterns made by bits of colored glass at one end of the tube.” American Heritage English Dictionary (4th Ed. 2000).
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