WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Office Holdings Limited v. Hocu To d.o.o. and Office Shoes d.o.o.

Case No. D2009-1277

1. The Parties

Complainant is Office Holdings Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by Pillsbury Winthrop Shaw Pittman LLP, United Kingdom.

The named Respondent, Hocu To d.o.o. (formerly Consequences, d.o.o.) is the administrative contact for the disputed domain name. Through a letter signed by Petar Dulic, representative of Office Shoes d.o.o., dated October 20, 2010 (sic), Office Shoes d.o.o. indicated that it owns the intellectual property rights to the domain name at issue and, as such, that it would be responding to the Complaint on Respondent's behalf. Office Shoes d.o.o. is represented by Dragoljub M. Cosovic, Serbia. For purposes of this proceeding, the Panel treats Hocu To d.o.o. and Office Shoes d.o.o., together, as Respondent.

2. The Domain Name and Registrar

The disputed domain name <officeshoesonline.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2009. On September 28, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 28, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that 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” or “UDRP”), 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 October 1, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response October 21, 2009. The Response was filed with the Center on October 21, 2009.

The Center appointed David H. Bernstein, Gordon Harris and Jonas Gulliksson as panelists in this matter on November 5, 2009. The Panel finds that it was properly constituted. 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.

On November 11, 2009, Complainant sought to amend the Complaint to seek transfer rather than cancellation of the disputed domain name. Because the Panel denies the Complaint, this request is moot.

By order dated November 19, 2009, the Panel extended the date for decision to November 30, 2009.

4. Factual Background

Complainant, Office Holdings Limited, is a United Kingdom company that has operated retail stores in the UK under the name OFFICE LONDON since 1981. Complainant currently operates 64 stores throughout the UK and the Republic of Ireland, and operates an internet/e-commerce business at the website “www.office.co.uk”, which was registered through Webfusion Ltd. before August, 1996.

Complainant holds three European Community Trademark (“CTM”) registrations:

- OFFICE LONDON, CTM # 1580927 in classes 18 and 25, filed on December 19, 1996 and registered on April 20, 2000.

- OFFICE, CTM # 1580927 in class 25, filed March 29, 2000 and registered on October 16, 2002.

- OFFICE, CTM # 6551147 in class 35, filed on January 3, 2008 and registered on December 4, 2008.

Respondent, Office Shoes, d.o.o., is a Serbian company that operates the domain name <officeshoesonline.com> and states that it owns the related intellectual property rights. Respondent registered Office Shoes as a company name in Serbia in 1999, and has been operating Office Shoes retail stores in Serbia since that time. Respondent expanded its operations to several European countries and claims to have obtained trademarks in Serbia, Romania, Hungary, and Montenegro. Respondent also has International Trademark protection in several countries in Europe for the OFFICE SHOES mark (# 899601, registered on July 10, 2006, and supplemented on November 15, 2007).

Respondent registered the domain name <officeshoesonline.com> through GoDaddy.com, Inc. The website provides locations, phone numbers, and email addresses for Office Shoes locations throughout Europe. According to the website, Respondent operates over 100 active Office Shoes retail stores in central and eastern European countries, including:

- Hungary - 36 stores, 6 planned for 2008-2009, Shoebox kft;

- Czech Republic - 1 store, 10 planned for 2008-2009, Shoebox CZ s.r.o.;

- Slovenia- 1 store, 4 planned for 2008-2009, Temporal d.o.o.;

- Slovakia - 15 stores, 7 planned for 2008-2009, Shoebox Slovakia s.r.o.;

- Serbia - 23 stores, 8 planned for 2008-2009, Office Shoes d.o.o.;

- Croatia - 20 stores, 6 planned for 2008-2009, Katapult d.o.o.;

- Montenegro - 3 stores, 1 planned for 2008-2009, Office Shoes C.G.;

- Bosnia - 5 stores, 4 planned for 2008-2009, Office Shoes BH;

- Romania - 21 stores, 8 planned for 2008-2009, SC Office Shoes S.R.L.

Respondent states on its website that it plans to expand to Poland and Bulgaria:

- Bulgaria - 8 stores planned for 2008-2009, Shoebox Bulgaria o.o.d.;

- Poland - 23 stores planned for 2008-2009, Shoebox Polska, Sp. z.o.o.

Complainant instituted opposition proceedings against Office Shoes d.o.o.'s International Registration in Slovakia, Slovenia, Germany, the Czech Republic, and Poland. Complainant states that it was successful in its opposition in Slovakia, Germany, Poland, and the Czech Republic, and that, in Poland, an interim injunction has been issued in favor of Complainant, prohibiting Respondent from the use of the OFFICE SHOES mark in Poland by its subsidiary Shoebox Polska SP z.o.o.

Respondent submitted a printout from the WIPO Romarin database which confirms that the OFFICE SHOES International Registration was successfully opposed in Slovenia, Slovakia, the Benelux countries, the Czech Republic, and Germany, and was partially opposed in Switzerland. The database also shows that Respondent's 2006 International Registration remains active in Albania, Austria, Bosnia, Bulgaria, and Macedonia, and the subsequent designation in 2007 remains active in the Ukraine.

On August 27, 2009, Complainant wrote to Respondent regarding another website operated by Office Shoes d.o.o., <officeshoes.hr>. Complainant claimed infringement of its intellectual property rights and demanded that Respondent shut down the website under threat of legal proceedings. Respondent asserts that Complainant has been unsuccessful in its efforts to cancel the domain names <officeshoes.hr> and <officeshoes.rs> in Serbia and Croatia on the basis of Complainant's CTM rights.

On September 25, 2009, Complainant instituted the present proceedings.

5. Parties' Contentions

A. Complainant

Complainant alleges that the domain name <officeshoesonline.com> is confusingly similar to its OFFICE and OFFICE LONDON trademarks, based on the dominant word “office” and the generic term “shoes online.”

Complainant alleges that Respondent has no rights or legitimate interest in respect of the domain name because the sole purpose of the website is to reference Complainant's stores, and the website itself does not constitute a bona fide sale of goods or services.

Complainant alleges that Respondent's use of the domain name is in bad faith because Respondent had actual and constructive knowledge of Complainant's rights before it registered the domain name. Complainant asserts that Respondent had actual knowledge because of the ongoing legal proceedings between the two involving the International Trademark registrations, and constructive knowledge based on Complainant's assertion that the OFFICE trademark is known throughout Europe.

B. Respondent

Respondent claims that the OFFICE trademark is too generic to be confused with Respondent's domain name.

Respondent also asserts that it is the lawful owner of OFFICE SHOES trademark registrations in jurisdictions for which Complainant does not have earlier rights, and therefore has legitimate interest in the disputed domain name in relation to a bona fide sale of goods or services.

Respondent rejects Complainant's allegation that there is bad faith because there is no likelihood of confusion, Complainant's trademark is not distinctive, and Complainant has not registered its mark in several of the jurisdictions in which Respondent operates.

6. Discussion and Findings

Complainant has the burden under paragraph 4(a) of the Policy to establish that (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name, and (iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Respondent does not dispute Complainant's ownership of a CTM registration for the trademark OFFICE. It nevertheless argues that the domain name <officeshoesonline.com> cannot be confused with Complainant's trademark because Complainant's trademark is too generic. That argument is frivolous and wholly without merit.

The domain name <officeshoesonline.com> includes Complainant's trademark, OFFICE, in its entirety. That alone is sufficient to find confusingly similarity for purposes of the Policy. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. In addition, the domain name contains the descriptive terms “shoes,” which describes what both parties sell, and “online,” which describes one of the ways in which the parties sell their wares. When dictionary terms that describe an aspect of a complainant's or respondent's business or website is added to a mark to form a domain name, that does nothing to detract from the dominant portion of the domain name (here, OFFICE), or to vitiate the confusing similarity between the trademark and the domain name. Orbital Sciences Corporation v. Finseth International, WIPO Case No. D2007-1482.

Complainant has thus proven that the domain name is confusingly similar to its trademark and, as such, has sustained its burden under the first factor.

B. Rights or Legitimate Interests

The interaction between article 4(a)(ii) and 4(c) of the Policy requires Complainant to make a prima facie showing that Respondent has no legitimate interest in the domain name. Once Complainant makes such a showing, the burden of production shifts to Respondent to come forward with evidence to demonstrate that it has rights or a legitimate interest in the domain name. The burden of proof, though, always remains on Complainant to establish, by a preponderance of the evidence, that Respondent lacks rights or a legitimate interest in the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.¹

Complainant cannot sustain that burden in this case. That is because Respondent has come forward with evidence of its own rights in the trademark OFFICE SHOES. As noted in the recitation of facts, above, Respondent has registered the trademark OFFICE SHOES in a number of countries and uses that mark in connection with more than 100 retail locations.²

Complainant asserts that some of Respondent's use of OFFICE SHOES constitutes trademark infringement (because Complainant's CTM registration provides it with the exclusive right to use the OFFICE mark in connection with retail shoe sales in the 27 countries of the European Union), that Complainant has succeeded in opposing Respondent's trademark applications in certain of those countries, and that Complainant has obtained an injunction against Respondent's use of that mark in Poland. Complainant has not submitted documentary evidence to substantiate these assertions, but if they are true, it would support a finding that the particular trademarks and uses by Respondent are not bona fide and thus could not support Respondent's claim of rights. See Advance Magazine Publishers, Inc. v. Lisa Whaley, WIPO Case No. D2001-0248, (stating “intentionally infringing use should not be viewed as bona fide use”); UNIVERSAL CITY STUDIOS, INC. v. G.A.B. ENTERPRISES, WIPO Case No. D2000-0416.

However, Respondent has submitted evidence of its trademarks rights in Serbia and Montenegro, countries that are not within the European Union. Whatever rights Complainant may have in the European Union, in the absence of a showing that its mark is well-known under article 2 bis of the Paris Convention, Complainant cannot claim any trademark rights in these three countries by virtue of its CTM registration, and Complainant has not submitted any evidence of any other basis for claiming trademark rights in those countries. Because Respondent owns trademark rights in these countries for the OFFICE SHOES mark and is in fact using that mark in connection with a number or retail establishments, the Panel concludes that Respondent has rights and a legitimate interest in the domain name that contains its OFFICE SHOES trademark.

The Panel is not insensitive to Complainant's assertions that Respondent's use of the OFFICE SHOES mark in these countries reflects little more than a blatant effort by Respondent to mimic Complainant's trademark. Indeed, the similarity between the parties' marks and logos is striking, and supports an inference that Respondent copied the mark and the entire business plan from Complainant's successful UK stores. However, “[t]rademark rights are territorial in nature,” BECA Inc. v. CanAm Health Source, Inc.,WIPO Case No. D2004-0298 (“National trademark laws often permit a party to obtain registered trademark rights in that jurisdiction even where it is clear that the party has deliberately chosen that trademark having seen the use of that name in another jurisdiction.”), and if Complainant failed to take appropriate steps to secure trademark rights in certain countries (and if it cannot claim rights under article 2 bis of the Paris Convention), then it cannot in this proceeding complain that Respondent has established such rights.

The Panel thus concludes, on the very limited facts presented by the parties, that Complainant has failed to establish that Respondent lacks rights and legitimate interest in the domain name. Complainant has thus failed to sustain its burden under the second factor.

C. Registered and Used in Bad Faith

Given Complainant's failure to establish that Respondent lacks rights and legitimate interests under paragraph 4(a)(ii) of the Policy, it is not necessary for the Panel to consider whether Respondent registered and used the domain name in bad faith under paragraph 4(a)(iii).

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dated: November 26, 2009