The Fragrance Foundation Inc. v. Texas International Property Associates
Case No. D2008-0982
1. The Parties
Complainant is The Fragrance Foundation Inc., New York, New York, of United States of America, represented by Cahill Gordon & Reindel, United States of America.
Respondent is Texas International Property Associates, Dallas, Texas, United States of America, represented by Law Office of Gary Wayne Tucker, United States of America.
2. The Domain Name and Registrar
The disputed domain name <fragrancefoundation.com> is registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2008. On June 30, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On July 1, 2008, Compana LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on July 10, 2008. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on July 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2008. The Response was filed with the Center on August 3, 2008.
The Center appointed Jeffrey D. Steinhardt as the sole panelist in this matter on August 14, 2008. 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 The Fragrance Foundation is a non-profit entity that provides educational and association services to the fragrance industry. Its members consist of fragrance manufacturers, suppliers, media, designers, packagers and retailers. Complainant is the owner of the registered mark THE FRAGRANCE FOUNDATION, United States Registration No. 2,091,184 issued August 26, 1997, with first use dating from 1961, including registration in International Classes 16, 41 and 42. Registration in the United States of America was first made in 1972. Complainant also owns numerous foreign registrations for the mark THE FRAGRANCE FOUNDATION, including:
Australia Reg. No. 919389 in Classes 16, 41 & 42;
Brazil Reg. No. 82840216, in Classes 16 and Brazil Reg. No. 824840186
in Class 41;
European Community OHIM Reg. No. 000327056 in Classes 20, 41 and 42;
Japan Reg. No. 4541436 in Classes 16, 41 and 42;
and
WIPO Registration No. 848317 in Class 16 and 41,which includes reference to Russian Federation designation, Russia IR 848317 in Classes 16, 41 and 42.
Respondent registered the disputed domain name <fragrancefoundation.com> on March 30, 2005. The website to which the disputed domain name routes displays advertising links to third parties offering fragrance-related products and information, information about non-profit and charitable foundations, charitable fundraising links, and a search tool into which users may enter terms to find other sites.
5. Parties’ Contentions
A. Complainant
Complainant contends that it uses its mark THE FRAGRANCE FOUNDATION in connection with promoting the educational interests of the perfume industry and promoting public awareness, understanding and appreciation of the roles of fragrance and the sense of smell, since as early as 1961.
Complainant contends that Respondent’s disputed domain name is identical and confusingly similar to Complainant’s trademark.
Complainant also contends that Respondent has no rights or legitimate interests in the domain name <fragrancefoundation.com> and that Complainant has not licensed or otherwise permitted Respondent to use its trademark. Complainant also states that to the best of its knowledge, Respondent does not use the domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the domain name. Complainant notes that Respondent’s website lists many subjects including “Fragrance Foundation” and features links to other sites which relate to the fragrance industry services, but Respondent does not provide its own actual bona fide offering of goods or services.
Finally, to address whether Respondent registered and is using the disputed domain name in bad faith, Complainant alleges that Respondent is trying to prevent Complainant from reflecting its trademark in a corresponding domain name, by creating consumer confusion and using links on its website under such headings as “non-profit organization.” Not only does this show that Respondent had knowledge of Complainant’s activities as a non-profit organization, Complainant alleges, but also that Respondent’s handling of correspondence between the parties and refusal to transfer immediately before filing the present proceeding is consistent with a pattern of bad-faith conduct. Complainant also points to a pattern of domain name infringement, listing some 138 UDRP proceedings against Respondent before WIPO and NAF panels, the vast majority of which resulted in transfer of the disputed domain names.1
Addressing the bad-faith element, Complainant also alleges that “there is no plausible actual or contemplated use of the domain name by Respondent which would not be illegitimate,” and that Respondent is likely receiving “click-through” revenue from visitors coming to Respondent’s website, seeking improperly to trade on Complainant’s trademark.
On the basis of these allegations, Complainant seeks transfer of the disputed domain name.
B. Respondent
First, Respondent claims that the disputed domain name is generic and descriptive but expressly states that Respondent does not dispute Complainant’s allegations or conclusion that the domain name is identical and confusingly similar to Complainant’s registered trademarks.2
Second, opposing Complainant’s allegations that Respondent has no rights or legitimate interests in the disputed domain name, Respondent cites UDRP decisions that have found that the provision of click-through services may constitute bona fide offerings, “unless the bona fides of the offering is tainted by evidence of bad faith” (quoting Super Supplements, Inc. v. Vertical Axis, Inc.,
WIPO Case No. D2008-0244). Since Respondent contracts with third parties to provide the click-through advertising links present on its website, Respondent contends that it has no control over the content of the terms that appear on its website.
Respondent avers that “There is no intent to target Complainant, but to provide advertising for users seeking information about hospice as a glimpse of the disputed domain will show.” Citing some recent UDRP decisions,3 Respondent contends that domain name holders are not responsible for potentially offending content if the holders have contracts with third parties which control that content; further, Respondent suggests that since Complainant never complained about the content of the web pages to which the disputed domain name routes and that Complainant “simply wants to hijack Respondent’s domain which has been in operation for over three years prior to any comment by Complainant.”4
Respondent also contends that since Complainant’s trademarks incorporate generic or common descriptive terms, they should be subject to domain name registration on a first-come, first-served basis and that legitimate interests are demonstrated by Respondent’s generation of advertising revenues using the disputed domain name for the past three years.5
Finally, Respondent contends that Complainant has not demonstrated that the disputed domain name was registered and is being used in bad faith, pointing out that both bad faith registration and bad faith use of the disputed domain name must be shown. Respondent avers that Respondent had no knowledge of Complainant at the time of registering and that Complainant is separated from Respondent by 1,500 miles. Respondent notes that it has registered thousands of domain names including generic words and descriptive phrases as a good faith legitimate business.
Conceding that there are many past UDRP decisions ordering transfer against Respondent, Respondent argues that in a substantial number of those cases, Respondent consented to transfer and that in several UDRP cases, Respondent prevailed.
Respondent states that its refusal to transfer before initiation of these proceedings was based on the facts of this specific registration. To illustrate its argument, Respondent restates in its Response some of its correspondence to Complainant by email:
While your client has certain trademark rights and maybe known as “FiFi,”[6] the domain is composed of two generic and descriptive words. Fragrance, or perfume, is made through a series of compounds, including a base or foundation to which different ingredients are added. Thus “fragrance foundation” is a generic and descriptive term which describes one part of a fra[ ]grance. By way of comparison, one part of cosmetics also includes the foundation.
In addition, the page as hosted provides links to what a visitor would expect, fragrances. There are also links to all manner of things such as PETA, Freemason, and packaging so any claim that the domain is targeted at your client’s business is undercut as is any claim of confusion for any website visitor. (italics in original)
Respondent notes that it has never offered to sell the disputed domain name to Complainant. Without showing (1) a likelihood of confusion by consumers, (2) that the trademarks at issue are not famous or well-known, and (3) that Respondent specifically intended to confuse consumers, Respondent concludes under the relevant decisions that Complainant has failed to establish bad faith use.
6. Discussion and Findings
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Although the disputed domain name is not identical to Complainant’s trademarks, the Panel agrees with Complainant and concludes that Respondent’s domain name is confusingly similar to Complainant’s trademarks. Moreover, Respondent has expressly conceded this element in its Response.7
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the domain names.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the Respondent. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
As described above and also contended by Complainant, Respondent’s website offers a search tool and links to fragrance-related products and services, in addition to links to sites regarding non-profit organizations and charitable foundations.
Although in its response to Complainant’s cease and desist letter, Respondent claimed that the disputed domain name is a generic term referring to base compounds (foundations) used in the manufacture of fragrance products, review of the website shows no links or information respecting “foundation” components of fragrance products.8 Instead, the posted link reading “Fragrance foundation” on the “www.fragrancefoundation.com” website simply routes users to third-party sites and advertisements regarding perfumes, cosmetics, and also, foundations in the building industry; certainly these referrals have no relation to compounds or bases used in the formulation of perfumes or other scented products. Further, the website to which the disputed domain name routes users makes no reference at all to Complainant’s organization itself, “The Fragrance Foundation.”
By diverting traffic to third parties using paid link advertisements, and as conceded by Respondent, the Panel finds that Respondent is using Complainant’s marks for its own commercial purposes. Respondent does not dispute Complainant’s allegations that Respondent has no authorization to use Complainant’s marks in its domain names and that Respondent is not commonly known by the domain name. The Panel agrees with Complainant that Respondent is seeking to attract Internet users through Complainant’s marks for Respondent’s own commercial purposes.
The Panel finds therefore that there is no bona fide offering of goods or services by Respondent and that the Complainant has made out a prima facie case.
The defensive responses that the uses of the descriptive terms “fragrance foundation” are legitimate or bona fide are belied by the actual content appearing on Respondent’s website. Respondent made similar unfounded claims which were rejected by the panel in Grundfos A/S v. Texas International Property Associates,
WIPO Case No. D2007-1448 (transfer).
Respondent’s use of the terms here consist of tangential references to three meanings of the word “foundation” (charitable foundations, lip foundation for use under colored lip gloss, and building foundations), which are wholly unrelated to the descriptive term “fragrance foundation.” In addition, Respondent has misleadingly characterized the website as being designed to assist people seeking information about hospice. Contrary to the claims of Respondent in these proceedings, the Panel’s viewing of the site (as expressly invited by Respondent in its brief) reveals no reference whatsoever to “hospice.”
Respondent contends that click-through advertising may be a bona fide offering in the absence of bad faith. However, the Panel finds, as described below, that indeed there exists evidence of bad faith, therefore Respondent’s conduct does not fall within the rule of Super Supplements, Inc. v. Vertical Axis, Inc., supra. Therefore Respondent’s click-through advertising is not evidence of a bona fide use of the disputed domain name.
Moreoever, to the extent that UDRP panels have suggested that respondents are not to be held responsible for content on their websites provided by third parties such as Google or Yahoo!, Respondent has unsuccessfully argued to apply these narrow rulings to its operations in UDRP cases many times before. E.g., Grundfos A/S v. Texas International Property Associates, supra; Asian World of Martial Arts Inc. v. Texas International Property Associates,
WIPO Case No. D2007-1415. In any event, the two cases cited by Respondent for this proposition contained rulings on this point which were very narrow. The Admiral Insurance Services case involved a common descriptive term (“elephant”), whereas the term “fragrance foundation” is, in the Panel’s view, much less common; the panel in Experimental Aircraft Association found that the parties were engaged in completely separate areas of activity, while in this case, Respondent itself contends that it is providing services in the same areas of commerce as the activities of Complainant.
It would be contrary to the Rules and the Policy for this Panel to exonerate Respondent from any responsibility for the use of the term “fragrance foundation” on the home page of its website, using a disputed domain name made also of the term “fragrance foundation” in a way that is confusingly similar to Complainant’s trademark, just because it entered into advertising agreements with third parties such as Yahoo! or Google. Starwood Hotels and Resorts Worldwide, Inc., Sheraton, LLC and Sheraton International Inc., v. Jake Porter,
WIPO Case No. D2007-1254 (respondent was “ultimately accountable for the use of the Domain Names, even if an employee (or algorithm) of an online affiliate advertising network selected the particular advertisements on display”); cf. Villeroy & Boch AG v. Mario Pingerna,
WIPO Case No. D2007-1912 (commercial gain element and bad faith established even though respondent did not have knowledge of content or parking page advertising links which were placed not by respondent but by registrar).
In short, Respondent has not succeeded in rebutting Complainant’s prima facie case and has not proven any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the domain names. While in certain instances descriptive terms that are also subject of pre-existing trademarks may be legitimate domain names in the hands of registrants other than the trademark holders under the Rules, this is not such an instance and the cases cited by Respondent to that effect are inapposite.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel also finds that Respondent registered and used the disputed domain name in bad faith.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent refers to non-profit organizations on its website, so it must have been aware of Complainant before registering, (2) Respondent receives click-through revenue, (3) there is no legitimate use that Respondent could make of the disputed domain name, (4) Respondent’s refusal to transfer the disputed domain name and other communications prior to these proceedings evinces bad faith, and (5) Respondent has engaged in a pattern of domain name infringement as evidenced by the many UDRP panel decisions ordering transfers against Respondent.
Respondent for its part places great weight on its arguments regarding good faith, contending that (1) both bad faith registration and bad faith use must be shown, (2) Respondent, who was 1,500 miles from Complainant, had no knowledge of Complainant’s trademarks before registering the domain name, (3) Respondent is using the disputed domain name as a descriptive term to refer people to information respecting foundations for fragrances, (4) Respondent is engaged in a legitimate, good-faith business of registering thousands of generic and descriptive domain names, and (5) Respondent did not attempt to sell the disputed domain name.
Respondent further contends that without a complainant showing (1) a likelihood of confusion by consumers, (2) that the trademarks are famous or well-known, and (3) that Respondent specifically intended to confuse consumers, bad faith cannot be found. The Panel disagrees.
Paragraph 4(b) of the Policy provides a list of circumstances that suggest bad faith registration. That list is not exhaustive, however, and panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether the complainant has particularly strong trademark rights, and whether there exists a lack of conceivable good faith uses for the domain name. Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. On this basis, the Panel rejects as overly narrow Respondent’s contention that to establish bad faith registration and use, Complainant must show confusion by consumers, that its trademarks are famous or well-known, and that Respondent specifically intended to confuse consumers. The same arguments proffered by Respondent were also rejected by the panel in Grundfos A/S v. Texas International Property Associates, supra.9
Under the circumstances, this Panel need not determine whether or not Respondent had actual awareness of Complainant’s trademark rights before registering the disputed domain name.
While as a general rule, UDRP panels are reluctant to find that a respondent had constructive notice of an existing trademark when registering a domain name, there are cases in which constructive notice can properly be found. Especially when the trademark is already publicly registered in the country where the parties are located prior to domain name registration, and the respondent is involved in the business of registering thousands of domain names, panels consider a higher standard of diligence on the part of domainers to be appropriate.10
In this case, Complainant’s trademark registrations existed for decades before Respondent registered the disputed domain name. As the panel in Terroni Inc. v. Gioacchino Zerbo,
WIPO Case No. D2008-0666, wrote, several panel decisions have now addressed the application of paragraph 2 of the Policy and in particular the words: “It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. It seems to this Panel and others, (see Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448), that people who make a living from registering vast numbers of domain names must make a reasonable effort ... to ensure that they are not infringing on the rights of others. In Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304, the panel found that the respondent who carried out a business of registering multiple domain names and purchasing lapsed domain names, was not entitled to shield its conduct by “closing its eyes” to whether the domain names it was registering were identical or confusingly similar to a third party’s trade mark. The three-member panel in the mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc.,
WIPO Case No. D2007-1141 case adopted an even stronger position on the obligations of professional domainers in the discharge of their obligations under paragraph 2 of the policy. The panel in that case said:
“Although there may be no obligation that a domain name registrant conduct trade mark or search engine searches to determine whether a domain name may infringe trade mark rights, a sophisticated domainer who regularly registers domain names for use as [pay-per-click] landing pages cannot be willfully blind to whether a particular domain may violate trade mark rights. In this context, a failure to conduct adequate searching may give rise to an inference of knowledge.”
Had Respondent conducted the most cursory of searches on the Internet or with the readily available U.S. Patent and Trademark registration database (see http://www.uspto.gov/main/trademarks.htm), it would have encountered Complainant’s trademarks. The Panel finds, therefore, that either Respondent is disingenuous in its representation that it was unaware of Complainant, or, in the alternative, that by failing to conduct the most minor diligence, Respondent made the disputed domain name registration in bad faith.
Under paragraph 4(b)(ii) of the Policy, bad faith registration and use may also be demonstrated by registration of a 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.”
As noted by Complainant, Respondent has been ruled against in well over a hundred UDRP cases since the beginning of 2007. The Panel finds that Respondent has without question engaged in a pattern of conduct involving the flagrant disregard of the trademark rights of others as referred to in Policy paragraph 4(b)(ii).
When contacted by Complainant prior to the instant proceedings, Respondent refused to transfer the confusingly similar disputed domain name to Complainant, which Respondent had registered in bad faith. Instead, Respondent made misleading and inaccurate statements to Complainant characterizing the usage, content, and links present on its website, as discussed above. In this proceeding, in its submission, Respondent continued to make such inaccurate representations to the Panel, adding that it lacked control over its own website and that the website was intended to provide information to users seeking information about “hospice.” These representations are inaccurate and lack credibility.
Respondent has sought to use the domain name “to intentionally attempt ... to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark,” which constitutes further evidence of use and registration in bad faith. Policy paragraph 4(b)(iv).
The Panel finds therefore that Respondent registered and is using the disputed domain name in bad faith.11
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <fragrancefoundation.com> be transferred to Complainant.
Jeffrey D. Steinhardt Sole Panelist
Dated: August 28, 2008
1 Complainant appends a listing of the WIPO and NAF UDRP decisions to its Complaint.
2 Respondent’s Response was sent timely by soft-copy email, although the Center never received the promised hard copy by postal mail.
3 Admiral Insurance Services Limited v. Mr. Adam Dicker,WIPO Case No. D2005-0241; Experimental Aircraft Association (EAA) v. EAA.COM, NAF Case No. 206309.
4 The Panel refrains from construing this brief reference to be a request by Respondent for a finding of reverse domain-name hijacking against Complainant under Rule 15(e). In any event, in light of the Panel’s ruling on bad faith, such a finding would be inappropriate in this case.
5 Respondent relies, inter alia, upon Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich,WIPO Case No. D2000-0161 (May 12, 2000); Miller Brewing Company v. Yunju Hong, FA0309000192732 (NAF Dec. 8, 2003); and Churrascaria Porcao Ltda. v. Prime Products International, Inc.,WIPO Case No. D2001-0535.
6 Complainant apparently conducts an annual competition to encourage development in the field of fragrances under the name of the “FiFi Awards.” See http://www.fragrance.org/fifi_history.html
7 “Respondent believes that this element of the Policy is not the element upon which it will prevail and will not waste the Panel’s time.” Response at A [6.].
9 Respondent is correct that both fad faith registration and use must be found. Telstra Corporation Limited v. Nuclear Marshmallow, supra. While rejecting Respondent’s proffered three-part test, this Panel does find that Respondent specifically intended to mislead consumers by using a confusingly similar domain name.
10 In the context of the worldwide web, the suggestion of Respondent - a sophisticated domainer registering thousands of domain names, with able legal counsel and an unusually vast experience in UDRP proceedings - that Respondent was not aware of Complainant’s U.S.-registered trademark because it is 1,500 miles from Complainant’s location is, in the view of this Panel, disingenuous at best.
11 The Panel does not by its ruling intend to hold that any uses by a respondent of click-through advertising are necessarily infringing under the UDRP and expressly rejects Complainant’s broad suggestion to that effect. In light of its rulings against Respondent on other grounds, the Panel also finds it unnecessary to rule upon Complainant’s contention that “there is no plausible actual or contemplated use of the domain name by Respondent which would not be illegitimate.”
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