Complainant is Kellwood Company, Greenville, South Carolina, United States of America, internally represented.
Respondent is Onesies Corporation, West Hollywood, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <onesies.net> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2008. On August 1, 2008, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On August 1, 2008, Register.com 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 contained a minor error as to the name of the listed registrar, Complainant filed an amendment to the Complaint on August 4, 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 August 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2008. Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 27, 2008.
The Center appointed Richard G. Lyon as the sole panelist in this matter on September 12, 2008. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his 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 owns several trademark registrations for ONESIES, either by itself or in combination with another word, all of which are duly registered on the principal register of the United States Patent and Trademark Office (USPTO). The first of these was registered in September 1984. Using these trademarks Complainant and its affiliated companies sell infants’ and children’s clothing. The term “onesie” is commonly used in the United States of America to designate a one-piece, t-shirt-like baby garment that has snaps at the crotch to keep it from riding up and exposing the baby’s tummy.
Respondent registered the disputed domain name in April 2006. The website maintained at the disputed domain name currently lists a number of links that an Internet user may click to find commercial links for clothing and other products for infants and small children, including several that directly incorporate the word “onesie”. The website also contains other commercial advertising unrelated to infants or children.
Complainant’s counsel sent Respondent a cease-and-desist letter in May 2008, to which no response was received.
5. Parties’ Contentions
Complainantcontends as follows:
Complainant has enforceable rights in its federally-registered ONESIES marks. Except for the generic top level domain “.net”, the disputed domain name is identical to these marks.
Complainant has never authorized Respondent to use its marks. This Respondent has never been known by the disputed domain name. The use to which Respondent has put the disputed domain name, which includes links to Complainant’s competitors, is not legitimate or bona fide under the Policy.
Respondent registered the disputed domain name more than ten years after Complainant’s first registration of one of its trademarks and well after its marks have become well-known among consumers of infant-related products. By using the disputed domain name for commercial gain, presumably through pay-per-click revenues generated from its website, Respondent is misleading, confusing, and misdirecting Internet users seeking Complainant’s genuine Onesies products, to the detriment of Complainant and its rights in its ONESIES marks. Respondent’s unauthorized use of Complainant’s marks also constitutes trademark infringement, unfair competition, and bad faith, all of which are further evidence of bad faith by creating a false designation of origin as to Complainant’s products.
Respondentdid not file a Response or otherwise reply to Complainant’s contentions.1
6. Discussion and Findings
This case presents only one serious substantive issue. The disputed domain name is obviously identical to Complainant’s mark, and nothing in the record indicates that Respondent has any right or legitimate interest in it. Respondent has provided no evidence that it or its business has been commonly known by “onesies” independently of its website or the disputed domain name, that it has authority to use Complainant’s marks, or that its business at the website that uses the disputed domain name is anything other than a pay per click site set up to take advantage of the ONESIES marks. Continued use of the disputed domain name may very well constitute trademark infringement or unfair competition; certainly in the absence of evidence to the contrary it establishes Respondent’s use of the disputed domain name in bad faith.
That leads the Panel to the question of whether Complainant has proven that Respondent registered the disputed domain name in bad faith. Complainant confidently asserts that “Respondent’s adoption and use of the disputed domain name is in bad faith, [and] has continued with full knowledge of Complainant’s prior rights. . .” Complainant however provides no evidence of its marks’ renown at any time, particularly in 2006 when Respondent registered the disputed domain name. As noted, the word onesie has become something of a descriptive term as well as a trademark in the United States. While not included in the latest edition of the American Heritage Dictionary of the English Language (2006), more colloquial use is recognized elsewhere. For example Wikipedia notes: “Onesie or onesize is American English for a bodysuit for infants designed to conceal a diaper when worn. It is also called a creeper, diaper shirt or snapsuit.” A Google® search for the word reveals a number of definitions, most of which do not refer to Complainant or Complainant’s products.
Were this a trademark infringement action in a United States court, Respondent would be presumed to have been aware of Complainant’s mark under the doctrine of constructive notice, and its failure to respond to an infringement complaint would constitute either an admission of actual knowledge or failure to rebut the presumption that constructive notice creates. This is not an infringement action, however.
Failure to respond in a Policy proceeding does not constitute an admission of any pleaded matter or result in the Policy equivalent of a default judgment. WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”), paragraph 4.6; Stanworth Development Limited v. E Net Marketing Ltd.,
WIPO Case No. D2007-1228; Western Research 3000, Inc. v. NEP Products, Inc.,
WIPO Case No. D2004-0755 (“The Policy requires the Complainant to prove each of the three [Policy] elements” (emphasis in original)).
Constructive notice (with some limited exceptions) is usually not applied in a Policy proceeding. The exception stated in the WIPO Overview paragraph 3.4, is in the Panel’s opinion somewhat over generalized. Most of the cases in which a Panel has found bad faith registration without proof or a reasonable inference of actual knowledge of complainant’s mark involved either a distinctive mark, see, e.g., Champion Broadcasting System, Inc. v. Nokta Internet Technologies, WIPO Case No. D2006-0128 (WUNR); Biogen, Inc. v. Kel Ellis, KELCO,
WIPO Case No. D2002-0679 (Avonex); Kate Spade, LLC v. Darmstadter Designs,
WIPO Case No. D2001-1384 (Kate Spade), or some other indication of cybersquatting, e.g., Factory Mutual Insurance Company v. Valuable Web Names, WIPO Case No. D2008-1014 (link to complainant’s website); Briefing.com, Inc. v. Cost Net Domain Manager,
WIPO Case No. D2001-0970 (typosquatting). When the mark is an everyday word or phrase panels more often decline to find registration in bad faith based solely upon a claim of constructive notice, even when the parties are both American. E.g., Dr. Mitchell Mandel and Ms. Jill Slater v. CSC Laboratories, Inc., WIPO Case No. D2006-0719 (“Complainant’s assertion that, pursuant to the constructive notice provision of U.S. trademark law, Respondent should be charged with notice of Complainant’s rights in the SKIN DOCTOR mark as of its date of registration, i.e., May 23, 1995, is rejected by the Panel. While some panels have relied upon the doctrine of constructive notice in UDRP proceedings, most panels have declined to do so.”); Jeffrey S. Thompson d/b/a The Wedding Planner v. Wedding Channel.com, Inc.,
WIPO Case No. D2002-0086 (weddingplanner).
In some cases it may be permissible for a panel to infer actual knowledge from other evidence, most often a complainant’s showing that a substantial segment of the public or its target market associates the common word or phrase with complainant or its products. That is not possible in this case as Complainant has submitted no evidence at all of the word’s exclusive or prominent association with Complainant or its products. Such evidence, if it exists, is almost by definition within Complainant’s control and not dependent upon access to Respondent. Compare Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan,WIPO Case No. D2004-0383, with Pierce Brosnan v. Network Operations Center,
WIPO Case No. D2003-0519. For example, sales volumes, product literature, advertising expenditures, and sample advertisements could have demonstrated sufficient identification of this word with Complainant or its products to allow an inference of actual knowledge. Without such evidence, however, the Panel is left only with counsel’s unsupported and conclusionary statement. Complainant bears the burden of proof under each Policy element, and as to Respondent’s registration of the disputed domain name in bad faith has not carried that burden.
The Panel’s finding on this matter does not, of course, mean that Complainant lacks valid trademark rights today or lacked them in 2006,2 or that Complainant’s marks have become so commonplace as to be unenforceable as a matter of trademark law. Complainant may pursue Respondent in court for infringement, where the doctrine of constructive notice should apply. The Panel finds only that for purposes of this Policy proceeding Complainant has failed to establish with competent evidence that Respondent registered the disputed domain name in bad faith.3
7. Decision
For all the foregoing reasons, the Complaint is denied.
Richard G. Lyon Sole Panelist
Date: September 22, 2008
1In any default case the Panel must examine the record to determine if Respondent actually received the Complaint. Here the hard-copy version was delivered to the address of Respondent’s administrative contact and the email version received by Respondent.
2 From the USPTO records submitted with the Complaint and independently reviewed by the Panel the contrary appears to be true.
3 That finding and any other finding by the Panel in this administrative proceeding are not binding upon any party or the fact-finder in subsequent litigation.
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