Descente, Ltd. and Arena Distribution, S.A. v. Portsnportals Enterprises Limited
Case No. D2008-1768
1. The Parties
The Complainants are Descente, Ltd. of Osaka, Japan and Arena Distribution S.A. of Lugano, Switzerland, represented by Studio Legale Jacobacci e Associati, Italy.
The Respondent is Portsnportals Enterprises Limited, of Hong Kong, SAR of China, represented by Ella Cheong, Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name, <arena.com> (the “Domain Name”), is registered with Melbourne IT Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2008. On November 18, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 26, 2008, Registrar 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 on November 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2008. The Response was filed with the Center on December 16, 2008.
The Center appointed Tony Willoughby as the sole panelist in this matter on December 30, 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.
Having read the case papers it appeared to the Panel that the Respondent's past use of the Domain Name merited further investigation. The Panel made use of the Wayback Machine and discovered that the Domain Name seems to have been connected to an operational site back in November, 2001. On January 5, 2009 the Panel duly issued a procedural order in the following form:
“Can a panel perform independent research when reaching the decision?
Consensus view: A panel may visit the internet site linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name. The panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision. If the panel feels that it requires further information to make a decision in a proceeding then it can issue a panel order to the parties.
Relevant decisions: Société des Produits Nestlé SA v. Telmex Management Services, WIPO Case No. D2002-0070, (Transfer); Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038, (Transfer); Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 (Denied)”
In addition to visiting sites linked to the disputed domain name, it is now common practice for panels to refer also to the Wayback Machine. As stated by the learned panel in The Franchise Group v. Jay Bean, WIPO Case No. D2007-1438 & others:
“Panels frequently reference the Wayback Machine in order to determine how a domain name has been used in the past. Karl's Sales and Service Company, LLC v. LaPorte Holdings, Inc., WIPO Case No. D2004-0929; National Football League v. Thomas Trainer, WIPO Case No. D2006-1440; La Francaise des Jeux v. Domain Drop S.A., WIPO Case No. D2007-1157. More properly known as the Internet Archive, the Wayback Machine is a non-profit organization that constructs a library of web pages that have appeared on the Internet over time. It maintains these historical web pages in an archive which is accessible to the public. To research a particular domain name, one simply goes to “www.archive.org” and enters the domain name that one is researching in the Wayback Machine browser.”
The Panel has visited the Wayback Machine. It appears that in 2001 the Respondent had an active commercial website connected to the disputed domain name. The parties are referred by way of example to the following URL, namely:
The Respondent is requested to provide information in relation to this website: in particular, its date of first use and its purpose. The Panel requests that this information be provided by Friday January 9, 2009. The Complainants, if they choose to do so, may then file a further submission in response. The Panel is particularly interested to know whether the existence of this website in any way affects the Complainants' contentions in relation to bad faith registration and use of the disputed domain name. Any further submission from the Complainants should be lodged with the Center by Friday January 16, 2009. Any submission from the Parties should be submitted to the Center in electronic form to [email protected].”
The Respondent filed a response to the procedural order on January 9, 2009 and the Complainants filed a further submission in reply on January 16, 2009.
4. Factual Background
The Complainants are associated companies who between them own the worldwide rights to the well-known ARENA swimwear brand. For the purposes of this decision the Panel treats them as one. Their trade mark registrations, which are many in number, include the following:
International registration no. 347842 dated July 29, 1968 ARENA (word) and Hong Kong registration no. 881 dated August 21, 1971 ARENA (word), both registrations being in inter alia class 25 covering inter alia swimwear.
The Domain Name was first registered on December 8, 1994.
The Respondent is a member company of the Hutchison Whampoa group of companies, which operates in a wide variety of commercial areas including the operation of ports and related services. The Respondent was established to run e-commerce operations in connection with freight forwarding and container handling and the Domain Name was in active use as part of those operations from 2000 to 2002.
In September 2006, the Complainants approached the Respondent with a view to acquiring the Domain Name. The Respondent indicated that it would be prepared to transfer the Domain Name for the sum of US$200,000.
5. Parties' Contentions
A. Complainants
The Complainants contend that the Domain Name is confusingly similar to their well-known ARENA brand of swimwear, which is the subject of a large number of trade mark registrations throughout the world. They contend that their brand name has achieved secondary meaning.
On information and belief the Complainants contend that the Respondent has no rights or legitimate interests in respect of the Domain Name. They recite the examples set out in paragraph 4(c) of the Policy of what shall constitute rights or legitimate interests for this purpose and contend that none of them is applicable. They do not believe the Domain Name ever to have been in use.
Finally, the Complainants contend that the Domain Name was registered and is being used in bad faith. They claim that the fame of their ARENA brand of swimwear is such that the Respondent must have known of or should have known of the Complainants' rights when registering the Domain Name. They claim that registration of the Domain Name in these circumstances “suggests opportunistic bad faith”. They claim that the non-use of the Domain Name (the Domain Name was not in use at the time that the Complaint was filed) constitutes ‘passive use' as defined in WIPO Case No. D2000-0003 (Telstra Corporation Limited v Nuclear Marshmallows) and therefore use in bad faith. They also pray in aid the Respondent's claim (believed by the Complainants to be a false claim) that the Respondent had made a substantial investment in acquiring the Domain Name, which was followed by a demand from the Respondent of US$200,000 for transfer of the Domain Name.
In their reply to the Respondent's response to the procedural order the Complainants question the level of the Respondent's investment in the Domain Name and suggest that if substantial sums were expended they would have been expended not on developing the Domain Name, but on the software used by the Respondent.
The Complainants refer to some of the wording on the web pages cached by the Way back Machine and contend that it is not the sort of wording that one would expect to find on a website dealing with the handling of shipping documents by employees. The Complainants contend that this is further evidence that the Respondent deliberately selected the Complainants' famous trade mark in order to attract prospective customers to its website. They contend that this is typical bad faith use.
B. Respondent
The Respondent denies that the Complainants' brand has achieved secondary meaning. The Respondent produces a volume of evidence showing use of the name/word, “Arena”, in a number of other contexts, not being references to the Complainants' brand of swimwear.
The Respondent criticizes the evidence of fame produced by the Complainants contending that most of it dates back at most only 3 years. The Respondent denies that the Complainants' ARENA brand was so famous that the Respondent should have been aware of it when registering the Domain Name.
The Respondent contends that it has used the Domain Name in connection with its e-commerce services since 2000. The Respondent produces evidence to show that it operated a portal for electronic document processing for its clients and affiliated companies under the URL http://edoc.arena.com.
The Respondent denies the Complainants' allegations of bad faith and observes in relation to the price tag of US$200,000, that this was put forward in response to an approach from someone acting on behalf of the Complainants and was a figure put forward in a spirit of negotiation and well below the acquisition and development costs associated with the e-commerce products of which the Domain Name was a part.
In response to the procedural order the Respondent produces documentary evidence showing that the Respondent was using the name “Arena” in a logo format in August 2000. The same documents show that at the same time the Respondent was using the Domain Name for a website portal for users of its online document handling system.
The Respondent states that the system was terminated in 2002, by which time it had around 300 subscribers.
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainants must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights: and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name: and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith
Before dealing with those heads of the Policy, it is convenient to point out here that when formulating the Complaint the Complainants were unaware that the Respondent had in fact made commercial use of the Domain Name in the past. As a result, parts of the Complaint rely upon non-use of the Domain Name by the Respondent. Those parts are now of no relevance to the substance of the dispute and the Panel does not propose to deal with them below.
As will be seen above, the Panel issued a procedural order seeking further information from the Respondent as to its past use of the Domain Name. The Respondent's response to that order gave the Complainants an opportunity to reply and by their reply they re-formulated their complaint accordingly.
B. Identical or Confusingly Similar
There is no dispute that the Complainants are the proprietors of registered trade mark rights in respect of their ARENA swimwear brand.
The Domain Name comprises the Complainants' trade mark and the generic domain suffix.
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainants have rights.
C. Rights or Legitimate Interests
It will be noted from Section 4 above that the Domain Name was first registered in December 1994. The Panel has not been informed as to the name of the first registrant.
The Respondent states that the Domain Name first came into the Hutchison Whampoa Group (of which the Respondent is a member company) in the year 2000 when Hong Kong International Terminals (another member of the Hutchison Whampoa Group) acquired Transport Community Network Limited (“TCN”). It was associated with some e-documentation products of TCN, which were subsequently marketed under the LINE-Logistics Information Network Enterprise name, another Hutchison Whampoa brand.
For the purposes of this decision, the Panel proposes to treat the Respondent, TCN and all the other elements of the Hutchison Whampoa Group who have been associated with the Domain Name as one. If there is evidence to establish that any of them has been party to registration or acquisition of the Domain Name in a manner falling to be condemned under the Policy, the Domain Name should be transferred to the Complainants.
The Respondent contends that there is nothing about its behaviour falling to be condemned under the Policy. It contends that it acquired the Domain Name with the TCN business in 2000 at which time the Domain Name was already part of a project identified by the name, Arena. The Respondent and its associated companies took the project forward for a further two years until it was brought to an end in 2002, by which time the project, an online document handling system had 300 subscribers.
The Respondent denies that the existence of the Complainants' brand had anything to do with the Respondent's acquisition of TCN and its Arena project and the Domain Name. It was a project named Arena and they carried on with it, continuing to use the Domain Name.
The earliest documents produced by the Respondent to demonstrate commercial use of the Arena name (including the Domain Name) include the following:
(a) A 9-page document entitled “Flat File Specification”. It is branded “Arena” with that name in logo format. The copyright notice states “the contents of this documentation and Arena remain the copyright property of TCN.” A helpdesk email address on the front page appears as ‘[email protected]'. The document is dated October 19, 2000, but the revision history (also on the front page of the document) indicates that the original version of the document was created on April 6, 2000
(b) A 44-page document entitled “TDC-Arena Procurement System System Requirements Specification”. It too is branded with the ‘Arena' logo on the front page. Pages 43 and 44 feature a section headed “Email Notification”. That section features several references to the Domain Name. The document is dated August 17, 2000.
(c) Extracts from a document entitled “Electronic Documentation Quick Reference Guide (QFG) for Forwarders/Carriers”. The document does not feature ‘Arena' branding. Instead it features legends indicating that the document emanates from “the e-transportation operations of Hutchison Whampoa Limited”. The document invites users of the system to log in by way of the URL https://edoc.arena.com.
As indicated above, the evidence of the Respondent, not challenged by the Complainants in their reply to the Respondent's response to the procedural order, is that the Domain Name was used by the Respondent and its associated companies within the Hutchison Whampoa Group for an e-documentation system until 2002, by which time it had 300 subscribers.
The immediate issue for the Panel is whether or not that use was sufficient to give the Respondent a right or legitimate interest in respect of the Domain Name pursuant to paragraph 4(c)(i) of the Policy. The Complainants say that it did not.
The Complainants' position as it appears from their submissions is essentially as follows:
(i) the name, ‘arena', has no association with the Respondent: nor does it have any association with the services that the Respondent was offering via its website connected to the Domain Name;
(ii) a much more appropriate name to adopt for a domain name for this purpose would have been a name connected with the name of the Respondent or one of its associated companies;
(iii) claiming ‘Arena' as a project name is no answer to the Complainants' allegations: the Respondent might just as well have selected a name such as ‘Gucci', Prada' or ‘Coca-Cola';
(iv) the Complainants' ARENA swimwear brand is so well-known that it must be inferred that when the Respondent or TCN, the previous user/owner, adopted the name for use for its electronic documentation handling system, it must have had the famous swimwear brand in mind with a view to attracting visitors to its website. In their words: “There is no way that Respondent may not have been aware of the famous trade mark ARENA and registration may only have occurred in bad faith.”
(v) The Respondent's website, which was in use in 2001 and which was referred to in the procedural order, features “press releases claiming that ‘the vision is becoming reality' and inviting [visitors] to ‘join us on a journey that will enhance your world'. The Complainants contend that this is not a normal website addressed to employees handling shipping documents. They contend: “Normally one does not place such promotional sentences in a Web site where employees merely handle shipping documents. Employees have already ‘joined the company in its journey'“. The Complainants contend that this is indicative of a bad faith use of the Complainants' famous name, which is designed to attract potential customers to the Respondent's website.
To assess the strength of that last point, it is appropriate that the language of the Respondent's website, to which the Complainants have drawn attention, should be seen in context. The following extract is taken from a webpage cached on the Way back machine and dated November 8, 2001:
“A new vision for transportation and logistics
We live in a world where traditional geographic boundaries are becoming blurred. The pattern of global trade is being redefined and revolutionized by technology. New alliances are being formed, companies born, products created at a pace unthinkable five years ago.
LINE was born from a vision. What if we could harness the power and speed of the Internet to streamline the traditional processes of transportation and logistics and develop a new way of doing business?
That vision is becoming reality. Elements of it exist to-day and others are on their way, but its full promise is a destination nobody has ever visited. Join us on a journey that will enhance your world.”
That passage is followed by links to ‘Terms & Conditions', ‘Site Terms',
‘Privacy Policy', and ‘Gateway Software License Agreement' and a copyright notice in favour of LINE-Logistics Information Network Enterprise, the Hutchison Whampoa name under which the service was being supplied.
While the language may seem somewhat evangelical in style, it does not seem to the Panel to be so out of place as to indicate anything untoward about the authenticity of or motivation behind the site. The person responsible for placing that text on the site was clearly very enthusiastic about the innovative nature of the service and its possibilities. Moreover, the Panel suspects that the Complainants may have been operating under a misapprehension. They appear to believe that the services offered by the Respondent under and by reference to the Domain Name between 2000 and 2002 were services directed solely to employees of the Respondent and its affiliates. However, the Respondent states in the Response that the “the Respondent operated a portal for electronic document processing for its clients and affiliated companies under the URL http://edoc.arena.com” and the exhibited documents appear to the Panel to bear that out.
The Complainants' case is dependent solely upon the claimed fame of the Complainants' swimwear brand. Their case is that their brand is so famous that people seeing ‘arena' as part of a domain name will automatically assume that the Domain Name is a domain name of or associated with the Complainants.
In their Complaint they cite cases in support of their argument, which deal with brands such as Christian Dior, Banca Sella and Veuve Cliquot. Moreover, as mentioned in sub-paragraph (iii) above, in commenting on the choice of ‘Arena' as the name for the Respondent's project, they clearly position their brand alongside Gucci, Prada and Coca-Cola.
In the Panel's view, there is a distinction between ‘ARENA' and the other brands cited, a distinction, which has nothing to do with the comparative levels of fame of the various brands. In addition to being a well-known brand for swimwear, ‘arena' is an ordinary dictionary word. Where the brand is a unique name such as ‘Coca-Cola' or ‘Kodak', the brand owner has a much easier task in convincing a panel that the name must have been adopted by the third party with the brand owner in mind. The task is easier because the brands are unique and are household names. The names inevitably result in the brand owner coming to mind. Where the word is a dictionary word, the brand owner is likely to have to show more to satisfy the tribunal: simply because there are alternative possible associations. As the Respondent has effectively pointed out in its Response, the word ‘arena' has a very large number of alternative associations.
In this case, there is, in addition, a credibility gap to overcome. Why on earth would an industrial giant of the size of Hutchison Whampoa (or any part of it) wish to select a domain name with the express purpose of ‘selling' its
e-documentation handling services to people looking online for the Complainants' swimwear? To the Panel, it seems a most unlikely scenario and the Complainants offer no explanation save for the attractive force that their brand engenders.
Finally, the Domain Name came to the Respondent with TCN, a company acquired by Hutchison Whampoa in 2000. The uncontroverted evidence is that TCN had already adopted the name ‘Arena' as the name for its project. There is no evidence before the Panel to suggest that TCN adopted the name with the Complainants' trade mark in mind. The exhibited documents show that ‘Arena' was not only the brand for the project it was also being used for both the Domain Name and the domain name <arena.com.hk>.
Insofar as TCN is concerned, it is not known why they selected the name ‘Arena' for their e-documentation project. The Complainants have not proffered evidence, merely the argument that the fame of the Complainants' brand is such that it must have been the motivation for TCN's choice of name.
For the Panel that is not enough in the present circumstances. For the Panel to make a finding of bad faith against a registrant there must be more.
Insofar as the Respondent is concerned, the evidence is that the Respondent took over the Domain Name with the TCN project and carried on with the project and the Domain Name until 2002. There is no lacuna, no intervening factor to lead the Panel to come to any different conclusion.
In the result, there is nothing of any substance before the Panel to suggest that the Respondent's continued use of the Domain Name in relation to the Arena project, which it acquired along with the Domain Name from TCN, was anything other than a bona fide use of the Domain Name.
The Panel is satisfied that the Respondent has used the Domain Name in connection with a bona fide offering of goods and services within the meaning of paragraph 4(c)(i) of the Policy.
D. Registered and Used in Bad Faith
It is unnecessary now for the Panel to deal with this head of the Complaint, save to confirm the Panel's view that the Complainants' allegations of bad faith are misconceived for the reasons given above.
However, for completeness, the Panel should make reference to the Complainants' allegation that the Respondent's offer in 2006 to transfer the Domain Name to the Complainants for US$200,000 is evidence of bad faith on the part of the Respondent. This allegation was made in the Complaint at a time when the Complainants were unaware that the Respondent had made active commercial use of the Domain Name, but the dispute continued into the subsequent submissions in the form of an argument over the amount of the Respondent's investment in respect of the Domain Name as distinct from its investment into the overall enterprise of which the Domain Name was merely a part.
Suffice it to say that the Respondent's offer to transfer the Domain Name to the Complainants for US$200,000, not only came as a response to an approach initiated by the Complainants, but also was an offer made after the Respondent had ceased making active bona fide commercial use of the Domain Name. Accordingly, the circumstances of the offer to sell could not (in view of the Panel's finding in paragraph 6.C above) have amounted to an indication of bad faith registration and use of the Domain Name within the meaning of paragraph 4(b)(i) of the Policy.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Tony Willoughby Sole Panelist
Dated: January 22, 2009
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