Cream Holdings Limited v. National Internet Source, Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cream Holdings Limited v. National Internet Source, Inc.

Case No. D2001-0964

1. The Parties

The Complainant is Cream Holdings Limited of 40-42 Slater Street, Liverpool

L1 4BX, United Kingdom, represented by Mr. Roger Grimshaw of Messrs. Mewburn

Ellis of Manchester.

The Respondent is National Internet Source, Inc., of 12 Maple Street, Ramsey,

New Jersey 07466, United States of America, represented by Mr. Jason M. Drangel

of Messrs. Bazerman & Drangel, P.C. of New York.

2. The Domain Name and Registrar

This dispute concerns the domain name <cream.com>.

The Registrar is Network Solutions Inc., of Herndon, Virginia, United States

of America.

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute

Resolution Policy ("the Policy") adopted by the Internet Corporation

for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules

for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October

24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO

Arbitration and Mediation Center ("the Center").

The Complaint was received by the Center by email on July 26, 2001, and in

hardcopy on July 27, 2001. The Complaint was acknowledged on July 31, 2001,

and that day registration details were sought from the Registrar. On August

1, 2001, the Registrar confirmed that the disputed domain name is registered

in the name of the Respondent, and that its Version 5 Service Agreement (which

incorporates the Policy) is in effect.

On August 2, 2001, the Center satisfied itself that the Complainant had complied

with all formal requirements, including payment of the prescribed fee. That

day the Center formally dispatched a copy of the Complaint to the Respondent

by post/courier, facsimile and email (the latter two without attachments) with

a letter notifying the Respondent of the commencement of this administrative

proceeding. The Center sent copies to the Complainant, the Registrar and ICANN.

The last day specified by the Center for a Response was August 22, 2001. That

day a Response was filed by email and by facsimile. The Center acknowledged

its receipt on August 23, 2001.

On September 17, 2001, the Center notified the parties of the appointment of

Alan L. Limbury to serve as panelist, Mr. Limbury having submitted

a Statement of Acceptance and Declaration of Impartiality and Independence.

On that day, the Center transmitted the case file to the Panel and notified

the parties of the projected decision date of October 1, 2001.

The language of the proceeding was English.

The Panel is satisfied that the Complaint was filed in accordance with the

requirements of the Rules and Supplemental Rules; payment was properly made;

the Panel agrees with the Center’s assessment concerning the Complaint’s compliance

with the formal requirements; the Complaint was properly notified to the Respondent

in accordance with paragraph 2(a) of the Rules; the Response was filed within

the time specified by the Rules and the panel was properly constituted.

4. Factual Background (uncontested facts)

The Complainant has been trading under the name CREAM in the UK since 1992.

Its principal place of business is Liverpool, United Kingdom. It provides entertainment

services, including the operation of night-clubs, the arrangement of music festivals

and events and the production of records, CDs, tapes and associated merchandise

products for all the aforementioned, including a range of clothing. It regularly

holds events in the United States, South Africa and Australia.

On April 7, 1995, James Barton and Darren Hughes, also represented by Messrs. Mewburn

Ellis, applied to register in the United Kingdom a "word and device"

mark comprising a device resembling a tree-bladed ship’s propellor above the

stylized word "cream" ("the mark").

The mark was registered in the names of those gentlemen as proprietors on October 25, 1996,

under registration no. 2016985B in relation to the following classes of goods

and services:-

(i) Class 9 goods including recording discs, compact discs, records, tapes,

film and computer software

(ii) Class 18 goods including leather and imitation leather goods, bags and

umbrellas

(iii) Clss 25 goods including clothing, footwear and headgear.

(iv) Class 32 goods including beers and non-alcoholic beverages

(v) Class 41 services including night-club services, production of radio and

television programmes, arranging and conducting of conferences and distribution

of films and video tapes.

On January 24, 2001, the Complainant became by assignment the registered proprietor

in the United Kingdom of the mark.

The Complainant received a number of awards for its events in the years 2000

and 2001. It has sold over 2,000,000 record albums in the UK. Sometime in 1995

(it is not clear whether this was before or after the registration of the disputed

domain name) it released a record album called "Cream Live". Further

albums including in their title the word "cream" were released in

1996 and subsequently.

The Complainant has sold clothing and other merchandise under the mark for

many years and has appeared on television programmes having large audiences.

Its website <www.cream.co.uk> has been operating for a number of years

and currently receives around half a million hits per month. Last financial

year the Complainant spent about £400,000 on advertising and promoting the name

CREAM. Turnover in the year 2000 was £3,000,000.

Since it was registered in the United Kingdom the mark has been registered

in several other countries, including the USA, where the Respondent is located,

all those applications and registrations being made after December 14, 1995,

the date when the Respondent registered the disputed domain name.

The Respondent was founded in 1994 by four partners as one of the first full

service Internet service providers in New Jersey, U.S.A. It has since built

a regional network servicing customers with a range of Internet services including

dialup access, ISDN and T1, web hosting and large scale web development.

The partners also developed new ideas for on-line businesses, some successful

resulting in their being sold, others currently owned and run by the partners

through companies set up to run the businesses, and still others being in development.

In furtherance of these activities, the partners registered, through the Respondent,

a number of domain names they felt would be useful for new ventures, including,

during the period late 1995 to early 1996:

<february.com>

<fall.com>

<cloth.com>

<cream.com (the disputed domain name)>

<suntanoil.com>

<july.com>

<say.com>

<haze.com>

<busy.com>

<hyena.com>

<junkfood.com>

The Respondent has not made any use of many of its domain names since their

registration more than 5 years ago, including the disputed domain name.

In correspondence between the parties, initiated in late February 2000 by the

Complainant with an offer of $US 500 for the disputed domain name (to which

the Respondent made no reply) the Complainant asserted registered trademark

rights in the mark CREAM; the Respondent questioned whether the Complainant

had registered trademark rights in the actual word CREAM, repeatedly asked for

copies of the registration documents so that its legal department could consider

it and said it had received "a very high offer" for the disputed domain

name; the Complainant did not supply the documents but offered to purchase the

disputed domain name registration and increased its offer to $US 2,000 and then

to $US 4,000. The Respondent in October 2000 continued to question whether

the Complainant owns the trademark on "a common word like CREAM".

There was a lull in the correspondence, during which time the mark was assigned

by James Barton and Darren Hughes to the Complainant. On March 9, 2001, the

Complainant’s solicitors provided to the Respondent a copy of the trade mark

certificate with a letter asserting that the Complainant’s registered trademark

number 2016985 (the mark) was "in respect of the word CREAM" and offering

to waive "any rights which [the Complainant] may have" against the

Respondent in exchange for transfer of the disputed domain name. The Complainant

offered to pay the Respondent’s expenses in relation to the costs of registration.

After a further exchange, in which the Respondent asserted that ‘cream’ is

a common word similar to ‘car’ or ‘house’, "which can only be trademarked

along with a combination of other words since they are too generic", the

Respondent’s attorney declined the Complainant’s offer, saying the amount was

not a "fair reflection of its ‘generic’ value". The Complainant increased

its offer to $US 12,000. The Respondent declined, its attorney estimating the

current value to exceed $US 40,000. The Complainant increased its offer to $US

30,000. The Respondent declined. During a telephone conversation, the value

of the domain name was said on behalf of the Respondent to be $US 50,000-75,000.

In May 2001, the Complainant reasserted its claim to rights in the word CREAM

and offered $US 12,000 for the disputed domain name. The Respondent declined.

These proceedings were initiated in July 2001.

5. Parties’ Contentions

A. Complainant

Since 1992, the Complainant has developed an international reputation in relation

to its activities.

Identity/confusing similarity

The disputed domain name is identical/ similar to the Complainant's Mark, CREAM,

under which the Complainant offers its goods and services and in which it has

a substantial reputation.

The word CREAM is wholly acceptable trademark matter. Strong evidence of this

is apparent in the acceptance and registration of the mark CREAM by the UK Registry.

Final registrations of the same mark have also been obtained in Argentina,

Eire, and Australia. A search reveals that 41 other CREAM trademarks have obtained

registration on the UK, Community Trade Mark, International, French, German,

Italian, Austrian, Swiss, Benelux, Spanish, US Federal, US State, Canadian and

Swedish Registers. The mark CREAM is clearly capable of registration and is

not unregistrable "generic" matter.

Legitimacy

The Respondent has no legitimate rights or interests in the disputed domain

name and the Respondent was not authorised by the Complainant to use and register

<cream.com> as a domain name.

The Respondent appears to be engaged in registering domain names with a view

to selling them for a sum far in excess of out-of-pocket costs directly related

to the domain name. This is the conclusion to be drawn from the Respondent’s

behaviour to date and demonstrates that the Respondent has no legitimate rights

or interest in the name, based on the reasons enunciated at the paragraphs which

follow.

From an initial offer of $US 500, the estimated value of the domain name rose

to a sum in excess of’ $US 40,000 when interest in the name was shown by the

Complainant.

The Respondent has registered 22 domain names through Network Solutions. In

previous WIPO decisions, the bulk registration of domain names has been regarded

as behaviour inconsistent with legitimate rights or interests in the domain

names registered. The number of registrations which might be considered ‘bulk’

may be as low as three (Bellevue Square Managers, Inc v Web, D2000-0056).

A total of 13 domain names were registered in the period November/December

1995 at the time when the disputed name was registered. A period of well over

five years has now elapsed without the establishment of web sites for these

domains, which suggests very strongly that the Respondent has no interest in

developing them but is rather in the business of selling them to the highest

bidder. The Respondent is clearly not offering bona fide goods or services under

the disputed domain name in the form of a commercial site.

The Respondent does not appear to be making any use, or demonstrable preparations

to use, the domain name in connection with a bona fide offering of services.

The Respondent does not appear to be commonly known by the domain name.

There is no evidence that the Respondent is making a legitimate non-commercial

or fair use of the domain name.

Bad faith

The Complainant considers that the registration was obtained in bad faith and

is being used in bad faith for the following reasons.

The Respondent has not made any use of any of 22 domain names since registration.

In Mondich and American Vintage Wine Biscuits, Inc. v. Brown (WIPO

Case D2000-0004), it was established that the respondent had done nothing

with the domain name for a period of over two years, and it was

"possible to infer from this failure of use that the domain name was registered

without a bona fide intent to make good faith use."

In the instant case, no use has been made of the domain names for a prolonged

period, in particular the disputed name (being a period of more than five years).

Moreover, in Nabisco Brands Company v. The Patron Group, Inc. (D2000-0032),

none of the 40 domain names registered were being used in relation to an active

web site, from which fact the Panel was able to infer that

"it was highly unlikely that Patron could legitimately use each of the

40 domain names it assertedly owns in providing goods and services in commerce."

The collection of names without any legitimate interest or intended use of

them suggests a pattern of bad faith registrations and indicates that the domain

name was registered in bad faith and no good faith use is being made of the

name.

The excessive sum demanded for the name is an indication that the domain name

was registered in bad faith and the invitation of offers in excess of $US 40,000

constitutes bad faith use of the domain name. The sum demanded is clearly based

on the underlying value of the Complainant’s trademark.

"This value is grounded in the right of the Complainant to use its

mark to identify itself as a source of goods or services. [The] Respondent has

made no use of the domain name other than to offer it for sale at a price that

is likely to substantially succeed its out-of-pocket costs of registration,

and the price that that domain name commands would be largely based on the trade

mark of the Complainant" (Educational Testing Service v. TOEFL,

D2000-0044).

The dramatic increase in the amount sought is inconsistent with good faith

registration or use of the name. Moreover, in Ronson Plc v. Unimetal Sanayi

ve Tic.A.S. (D2000-0011), the size

of the sum ($US 70,000) demanded for the domain name in response to interest

from the holders of trade mark rights in it and the setting of a deadline (the

threat to raise the price if the offer was not met) to force through the sale

was found to be evidence of registration of the domain name in bad faith.

By registering the disputed domain name, the Respondent has acted in bad faith

as it has registered the name primarily for the purpose of disrupting the business

of the Complainant (paragraph 4(c)(iii) UDRP). As it is clear that the Respondent

is not using the disputed name for any legitimate purpose, and furthermore as

the registration of the name prevents the Complainant from using it, it is evident

that the Respondent has acted in bad faith.

It appears that the name was registered with a view to reselling it to the

Complainant at an extortionate price and the registration and use of the name

is bad faith under section 4(b)(i) UDRP.

The Complainant commenced its high-profile activities in 1992, some three years

before the registration of the domain name by the Respondent. Mindful of the

need to consolidate its trademark rights as incidences of bad faith use of its

marks around the world increased with the size of its reputation, the Complainant

filed an application to register the Mark, some eight months before the registration

of the disputed domain name.

The filing of the Mark gave constructive notice to the Respondent of the Complainant’s

trademark rights, in the unlikely event that it were not already aware of the

Complainant’s activities through the extensive use of the mark since 1992. In

Barney’s Inc. v. BNY Bulletin Board (D2000-0059),

it was found that under Section 22 of the United States Trade Mark Act:

"‘registration of a mark on the principal register … shall be constructive

notice of the registrant’s claim of ownership thereof’. As a matter of the United

States trade mark law, it must therefore be presumed that Respondent was on

notice of Complainant’s rights in the [mark] prior to registering [the domain

name]. Complainant’s high profile presence in the retail market and the fame

of the Complainant’s mark would further tend to indicate that Respondent was

aware of Complainant’s rights therein."

Elsewhere, it has been found that,

"as a matter of United States law, the Respondent had prior constructive

or actual knowledge of the Complainant’s trade mark" (Cellular One

Group v. Paul Brien, D2000-0028).

Similarly, under UK law ignorance of trade mark rights, whether registered

or unregistered, is no defence to infringement or passing-off of them.

It is to be noted that the rights conferred on the owner of a UK trade mark

registration by virtue of section 9 of the UK Trade Marks Act 1994 have effect

from the date of registration (being the same as the date of the filing of the

application). The registered rights in the Complainant’s Mark therefore predate

the date of registration of the disputed name by a considerable period.

In addition to its registered rights, the Complainant can claim rights through

the use of its mark. In Atlantic Records v. Paelle Corporation (D2001-0065)

it was found that

"even if a trademark is not yet approved by the authorities and the relevant

certificate is not yet granted, this does not mean that such a trademark does

not exist, with substantial goodwill generated on someone’s businesses, with

name and brand recognition, and with certain expectation rights that may become

reality as soon as the authority grants such recognition and validates such

prior use as constitutive of the right to such a trademark."

It seems that the Respondent was therefore aware of or may be deemed to have

been aware of the trade mark rights of the Complainant, both registered and

unregistered, and has registered and is using the domain name in bad faith with

the intention of reselling it for a price vastly in excess of out-of-pocket

costs directly related to the domain name.

Furthermore, in Educational Testing Service v. TOEFL (D2000-0044)

it was found that as there was

"no evidence on the record that the Respondent has undertaken

any act regarding the disputed domain name other than to offer it for sale,

the Panel infers that the offering for sale was the Respondent’s purpose for

the registration. If the Respondent’s offer for sale to the Complainant is determined

to be in bad faith, then the registration will also be deemed to be in bad faith."

B. Respondent

The Complainant Does Not Have Prior Rights in a Trademark or Service Mark Identical

or Confusingly Similar to Respondent’s Domain Name

The Respondent registered the domain name CREAM.COM on December 14, 1995. The

Complainant has come forward with no evidence of substantive rights to a trademark

or service mark for the word mark CREAM prior to that date.

"A complaining party can establish that it has rights in a trademark

or service mark by establishing that an entity such as the PTO has approved

its mark, or alternatively, that it has established rights as a common law mark.

Ordinarily, to satisfy the requirements of Rule 4(a)(1), the complaining party

must have trademark rights before the domain name in dispute was registered."

Business Architecture Group, Inc. v. Reflex Publishing, FA 0104000097051

(Nat. Arb. Forum 2001); see also Ode v. Intership Ltd., D2001-0074

(WIPO May 1, 2001) (under ICANN rules, a trademark must predate the domain name.)

Registrations for CREAM owned by Complainant

The earliest registration for the mark (UK 2018965B) owned by Complainant [1]

was first published on July 10, 1996, and did not issue until October 25, 1996.

What Complainant has failed to mention about the application for the mark is

that it was originally filed as a series of marks, two of which included the

"propellor" design and two of which were for the word CREAM, one being

stylised and the other being in text format.

In the course of the prosecution of the application, the Office rejected the

two trademarks for CREAM in text format and CREAM in stylized lettering, for

among other reasons, Section 3(1)(b)(c) & (d) of the U.K. Trademark Act,

which bars registrations of trademarks

(b) which are devoid of any distinctive character,

(c) which consist exclusively of signs or indications which may serve, in trade,

to designate the kind, quality, quantity, intended purpose, value, geographic

origin, the time of production of goods or of rendering f services, or other

characteristics of goods or services,

(d) which consist exclusively of signs or indications which have become customary

in the current language or in the bona fide and established practices of the

trade: provided that, a trademark shall not be refused registration . . . if,

before the date of the application for registration, it has acquired a distinctive

character as a result of the use made of it.

In response to this rejection, the Complainant dropped those two trademarks

from the application. Under the Act, the Complainant could have overcome the

rejections by showing that the mark had acquired distinctiveness at that time.

However, since it was obviously unable to do so, the trademarks were dropped.

Each and every other registration relied upon by the Complainant was also for

a design mark and applied for and issued years after the date Respondent obtained

its domain name.

In the United States where the Respondent is located, the Complainant owns

a pending application only since July 24, 1998 for CREAM and the design shown

above. The application does not claim use of the trademark in the United States.

Since none of the registrations relied upon by the Complainant are for the

word mark CREAM apart from a device or design they should not be considered

by the Panel [2]. By its own admissions in

its Complaint and its conduct in the U.K. Trademark Office, it is clear that

the Complainant agrees that CREAM is a weak term. The Complainant has provided

evidence that the term CREAM is a common term, by showing that "a total

of 41 CREAM trade marks have obtained registration on the selected Registers."[3]

Claimant’s Alleged Common Law Rights in CREAM

Since the Complainant is not able to show ownership of a registration prior

to the date the Respondent obtained its domain name, it must prove that it has

common law rights in the term CREAM [4].

The Complainant has failed to show any evidence of acquired distinctiveness

of CREAM as a trademark or service mark by it. More glaringly, the Complainant

has failed to do so for the period of time at issue - prior to December 14,

1995- the date Respondent obtained its domain name registration.

The Complainant claims that it "has been trading under the name CREAM

in the UK since 1992." This allegation merely supports a finding that the

term was used as a tradename, but not that it was used as a trademark

[5].

There are no indications that CREAM is used as a trademark/service mark in

connection with nightclub activities and as a promoter, nor that the services

have been offered, advertised and promoted to any degree prior to December 1995,

the period in which acquired distinctiveness must be shown.

The Complainant’s awards were not received until the years 2000 and 2001.

The Complainant’s first album was released in the U.K. in 1995 under the name

"Cream Live" [6]. It is textbook

trademark law that individual album titles are not granted trademark/service

mark status-except where a series of albums are released under the same trademark

[7]. The second album was not released until

1996 and under a different title. There is no indication regarding the success

of the early albums, but due to the timing and trademark law, it would be impossible

for the Complainant to show that it had acquired distinctiveness in the trademark

CREAM for albums before December 14, 1995.

The Complainant claims it also produces a line of clothing and other merchandise

"to promote the CREAM brand." Again, there are no samples of the goods

or indication of the length of time for the sales or the success of the products.

The Complainant claims that its reputation has been enhanced due to publicity

it has received since 1999. Since the domain name was registered in 1995 by

Respondent, this information is irrelevant.

Finally, the Complainant supplies some indication of the amount it spends on

advertising and promotion of the CREAM brand, the popularity of its website

located at CREAM.CO.UK and its "turnover". However, since the figures

are for the year 2000, we again have no indication how well known the "CREAM"

brand was before December 14, 1995.

These claims fail to evidence that the trademark CREAM acquired distinctiveness

as applied to the Complainants goods/services prior to December 14, 1995, the

only time period that matters.

Respondent Did Not Adopt or Use its Domain Name in Bad Faith

This case is not a typical cyberpiracy case. It deals with the registration

of a domain name in 1995, when the Internet was in the early stages of commercial

development. Moreover, it deals with the registration at that time by an established

American company of a domain name containing a trademark allegedly being used

by the Complainant in the United Kingdom-but not in the United States at the

time. This is a basic point as all examples of bad faith under Section 4(b)

of the policy appear to require some familiarity with the complainant or with

its trademark [8].

The Domain Name Was Not Registered in Bad Faith

The record in this case fails to establish either actual or constructive knowledge

of the Complainant’s trademark by the Respondent when registering the domain

name. The Respondent registered the disputed domain name in December 1995, prior

to issuance of the Complainant’s first registered trademark [9].

Ownership of a trademark registration alone without a showing of fame of the

alleged trademark at the time is not enough to support a claim of bad faith

[10]. The Complainant has failed

to show any evidence that its alleged trademark had acquired distinctiveness,

no less that the trademark was famous at the time the Respondent registered

the domain name in 1995.

The Respondent did not know of the Complainant in 1995, and until it received

the first correspondence from the Complainant in 2000 still never heard of the

Complainant or its alleged rights in a trademark for CREAM. To infer that the

Respondent was familiar with the Complainant or its alleged trademark in 1995

from its limited use in the United Kingdom and almost non-existent use outside,

is absurd.

The real factor to assist the Respondent in this case is timing. The Respondent

registered 13 domains in late 1995, early 1996. Many of the issues addressed

by the Policy were then not apparent as they are today. The Respondent filed

these names at a time when not only the full names of various famous people

but also the corporate names of many famous companies were available. Other

than the name of its company, the domain names the Respondent acquired, including

the disputed domain name, are suggestive/generic/descriptive Internet domain

names.

The Respondent’s acquisition of the <cream.com> domain name in December

1995, was done in this context.

"If the Respondent had registered the domain names with the intention

to cybersquat, it is not clear why it would not have chosen 13 more merchantable

domain names to register. Nor is it clear why it would have held on to the domain

name for over five years and never contacted the Complainant. The registration

of 13 domain names is not sufficient to establish that the Respondent has engaged

in a pattern of bad faith registration under paragraph 4(b)(ii) of the Policy:

Bernardaud Porcelaines de Limoges S.A. et al. v. Chapman Capital LLC,

(WIPO D2001-0247).

The Respondent Did Not Use the Domain Name in Bad Faith

"The Complainant has not proved the initial requirement that the domain

name was registered in bad faith. The Panelist is not therefore required to

consider the additional requirement of whether the domain name was used in bad

faith by the Respondent." Bernardaud Porcelaines de Limoges S.A.

et al. v. Chapman Capital LLC, (WIPO D2001-0247).

However, in an effort to clear its name and further show its good faith conduct

and the Complainant’s reverse hi-jacking conduct, the Respondent responds to

the Complainant’s alleged facts regarding bad faith use.

The letters submitted with the Complaint speak for themselves. Almost five

years after the Respondent had acquired the domain name, the Complainant contacted

the Respondent in an attempt to have the domain name assigned to it. The Respondent

did not respond to the Complainant’s first few correspondence because it simply

was not interested in selling the domain name. Nonetheless, the representative

for the Complainant continued to contact the Respondent. When the Respondent

did not respond, the Complainant offered a fee for the transfer. When the Respondent

expressed no interest, the Complainant raised the amount it was willing to pay

without being requested to do so.

Since the Respondent was a pioneer Internet company, it was well aware of its

rights to domain names at the time of registration and at the time it was contacted

by the Complainant. The Respondent knew that it had no duty to respond to the

Complainant’s queries, assign the domain name or engage in negotiations for

the domain name. However, being a business, it was willing to listen to offers.

The fact that negotiations between the parties for the sale of the domain name

occurred does not prove that the original registration was made primarily for

the purpose of selling to the Complainant.

"The Policy does not impose a blanket prohibition on selling domain

names." SOUTHBank v. Media Street, (WIPO

D2001-0294).

"The fact that Respondent is seeking substantial money for what it

believes to be a valuable asset is not tantamount to bad faith. Rather it tends

to show a reasonable business response to an inquiry about purchasing a business

asset . . ." Meredith Corp. v. CityHome, Inc., (WIPO

D2000-0223).

There is no evidence of any attempt to sell the domain name by the Respondent

since 1995, so there can be no inference that the Respondent acquired the name

for the purpose of resale to the Complainant or a competitor [11].

There is no evidence that the Respondent engages in a pattern of registering

the trademarks of others as domain names. There is no evidence that the Respondent

registered the domain name for the purpose of disrupting the business of a competitor.

Finally, the record contains no evidence to establish that the Respondent intentionally

attempted to create a likelihood of confusion with the Complainant’s alleged

trademark CREAM. The Complainant claims that confusion is likely and that the

Respondent is using the domain name in an attempt to attract consumers to its

website. Even if this was true, which it is not,

"[t]he mere presence of a likelihood of confusion or dilution is not

sufficient to find bad faith under the policy . . . Thus, the evidence supports

a finding that Respondent registered and used the domain name <rollerblading>

in an intentional attempt to attract internet users by using the common name

for a popular sport, not by creating confusion with Complainant’s mark.".

Rollerblade, Inc. v. CBNO, (WIPO D2000-0427).

There was no bad faith and thus there could not be a violation under the UDRP.

The Respondent Has the Right to Use its Generic Domain Name

Since it is clear that the Complainant does not have exclusive rights to the

term CREAM by its own admission and actions, the Respondent has as much rights

as anyone to use the term CREAM in a generic fashion [12].

Respondent has never used or intended to use the subject domain, comingattractions.com,

in any way related to apparel. The term ‘coming attractions’ is a generic term

in the field of entertainment, generally associated with movies, television,

theatre and other forms of entertainment. Widespread use of this generic term

predates Complainant’s trademark registration. Respondent has the right to register

the subject domain name, comingattractions.com based upon the generic usage

of the term ‘coming attractions.’ Coming Attractions, Ltd. v. Commingattractions.com,

FA 0003000094341 (Nat. Arb. Forum, May 11, 2000).

The Respondent does not nor would it ever have an interest in using the domain

name in connection with any goods/services alleged to be offered by the Complainant.

It has always been the intention and still is the intention for the Respondent

to use the domain name <cream.com> to develop and run a website similar

to that of the well-known <about.com>. This is a search engine site that

prioritizes other websites for the most interesting and relevant information

on a wide variety of topics so that searchers can find the best in the least

amount of time using the least effort. The use of the domain name <cream.com>

for such a site is taken from the concept that the listings on the site are

the "CREAM of the crop." While the Respondent still intends to undertake

this project, it has a number of other projects in current development that

require its attention. The other domain names as well are intended to be used

in connection with legitimate businesses such as <say.com> for a website

to convert HTML to speech, and <junkfood.com> for a lighthearted nutrition

website.

While the Respondent is not currently using the domain name, it should not

be penalized for holding it for future projects. U.S. Trademark law allows applicants

to file applications based on "intent to use" in U.S. commerce and

does not penalize the owner for taking three years to do so or failure to do

so. Regardless, since the Complainant has failed to prove bad faith by the Respondent,

it is not even necessary for the Arbitrator to consider the Legitimate Use requirement

of Section 4(a) of the Policy [13].

Conclusion

Complainant has failed to come forward with any evidence to support any of

the three factors considered under the Policy. As such, its request for transfer

should be denied. In fact, considering Complainant’s conduct in using the UDRP

in order to obtain a domain name it clearly did not have exclusive or prior

rights in requires a finding of reverse hijacking.

6. Discussion and Findings

To qualify for cancellation or transfer, a Complainant must prove 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 the Complainant has rights; and

(ii) the 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.

Identity or confusing similarity

The Complainant’s registered trademark, as distinct from its trade name, appears

on the material before the Panel to be the combination of the word and the propellor

device.

It should be noted that the word CREAM appears in stylized form, the application

in the UK in 1995 to register the word CREAM standing alone in text form having

been abandoned.

Although essential or virtual identity is sufficient for the purposes of the

Policy,[14] the panel finds the disputed

domain name is not identical to the Complainant’s trademark.

The test of confusing similarity under the Policy, unlike trademark infringement

or unfair competition cases, is confined to a consideration of the disputed

domain name and the trademark [15]. In Microsoft

Corporation v. Microsof.com aka Tarek Ahmed (WIPO

D2000-0548) contributing factors to the likelihood of confusion were held

to be the visual similarity between the domain name and the complainant’s mark

and the mark being strong and immediately recognizable.

Here the most prominent feature of the trademark is the logo, the word CREAM

being commonly used as a descriptive word. Despite the presence of that word,

in stylized form, as part of the trademark, the Panel finds the disputed domain

name is not confusingly similar to the trademark.

To succeed in this complaint, the Complainant must establish that, prior to

the registration of the disputed domain name, it had acquired through use of

the word CREAM, trademark rights at common law. However the material before

the Panel as to the period before the registration of the disputed domain name

does not go beyond use of the word as a trading or corporate name. Telling is

the failure of the Complainant to produce evidence of use of the word CREAM

as a trade mark in response to the objections raised by the UK Patent Office

only a few months before the registration of the disputed domain name. If there

were any such evidence it would surely have been produced then.

The Complainant has not established this element.

The Complaint therefore fails. However, in light of the Respondent’s request

for a finding of reverse domain name hijacking, it is necessary to consider

the other elements.

Illegitimacy

The Complainant has not authorized the Respondent to use its trademark nor

to register the disputed domain name. The name of the Respondent is not and

does not include any part of any of the disputed domain name. The disputed domain

name is not being used at all, let alone in connection with a bona fide offering

of goods or services. Were the trademark a well-known invented word having no

descriptive character, these circumstances would shift the onus to the Respondent

to demonstrate its rights or legitimate interest in the disputed domain name.

But that part of the mark comprising the word CREAM is commonly descriptive

and, standing alone, not well-known as a trademark.

"Cream" is merely a common generic word in which the Complainant

cannot have exclusive rights. Thus the Respondent has rights and a legitimate

interest in the disputed domain by virtue of having been the first to register

it [16].

"Where the domain name and trademark in question are generic—and in

particular where they comprise no more than a single, short, common term—the

rights/interests inquiry is more likely to favor the domain name owner".[17]

Recognizing that anyone has a right to register common words in the language,

a legitimate interest is even established where a Respondent’s only purpose

in registering a common word domain name is for resale [18].

There is no evidence, and no basis for inferring, that the Respondent was aware,

or should be deemed to have been aware, of the Complainant or its trademark

prior to the registration of the disputed domain name. The constructive notice

provision of US trademark law applies to trademark filings in that country,

once registration is achieved. The US application was not filed until after

the registration of the disputed domain name.

The fact that ignorance of trade mark rights affords no defence under UK trademark

law does not amount to constructive notice of the mark, nor does the retrospective

application of UK registered trademark rights to the date of the application.

[If it were necessary to make a finding as to the proper law to be applied in

this case, the Panel would find that US law should apply, since the disputed

domain name is registered in that country, the Respondent is located there and

the Complainant has submitted to the jurisdiction of the courts of the Eastern

District of Virginia, where the Registrar is located].

The domain name was registered at the same time as the Respondent registered

as domain names other commonly descriptive words. This circumstance negates

any conclusion that the Respondent was targeting the trademarks of others.

There can be no objection to the "bulk" registration of descriptive

domain names that are not identical or confusingly similar to the trademarks

of others. The panel is satisfied that the Respondent has a right to and a legitimate

interest in the disputed domain name. The Complainant has not established this

element.

Bad faith registration and use

The correspondence between the parties makes it clear that the first suggestion

that the disputed domain name might be transferred to the Complainant came 5

years after it was registered and was made by the Complainant. The passage of

such a long period of time alone must cast considerable doubt over whether sale

to the Complainant at a profit was the Respondent’s primary purpose in registering

the disputed domain name [19].

The Panel does not infer such a purpose from the course of the negotiations

nor from the ultimate asking price of the Respondent. The Panel accepts that

the Respondent sought a price to reflect its assessment of the value of a <.com>

domain name containing the descriptive word CREAM.

There is no evidence of bad faith registration.

As to use, the Complainant relies on UDRP decisions holding that, in certain

circumstances, passive use may amount to use in bad faith.

The ‘use’ requirement has been found in many cases not to require positive

action, inaction being within the concept [20].

In the leading case on passive use [21],

passive holding was held to amount to acting in bad faith where:

(i) the Complainant’s trademark had a strong reputation and was widely known;

(ii) the Respondent provided no evidence of any actual or contemplated good

faith use by it of the domain name;

(iii) the Respondent had taken active steps to conceal its true identity, by

operating under a name that is not a registered business name;

(iv) the Respondent had actively provided, and failed to correct, false contact

details, in breach of its registration agreement, and

(v) taking into account all of the above, it was not possible to conceive of

any plausible actual or contemplated active use of the domain name by the Respondent

that would not be illegitimate, such as by being a passing off, an infringement

of consumer protection legislation, or an infringement of the Complainant’s

rights under trademark law.

Apart from the vast dissimilarity between this case and Telstra, there

can be no objection to the failure over a long period to use domain names that

are not identical or confusingly similar to the trademarks of others.

Accordingly the Panel finds that the Complainant has not established that the

disputed domain name was registered and is being used in bad faith.

Reverse domain name hijacking

Rule 1 defines reverse domain name hijacking as "using the Policy in bad

faith to attempt to deprive a registered domain-name holder of a domain name."

See also Rule 15(e). To prevail on such a claim, it has been held

that a respondent must show that the complainant knew of the respondent’s unassailable

right or legitimate interest in the disputed domain name or the clear lack of

bad faith registration and use, and nevertheless brought the Complaint in bad

faith [22]. The cases decided on this basis

were all cases in which the Complainant’s rights in a trademark were clearly

established. Here the Complainant’s trademark rights are in a mark which is

significantly different from the disputed domain name.

The Complainant, professionally represented and advised, must have known of

the inherent weakness of the word CREAM, standing alone, as a trademark. Its

attempt to register that word as a trademark had been rejected for lack of distinctive

character by the UK Patent Office in August 1995, only a few months before the

disputed domain name was registered. The Complainant did not seek to demonstrate

to the Patent Office that, through use, the word had acquired a secondary meaning

distinctive of the Complainant’s goods or services. Rather, it abandoned the

attempt. Its trading under the name CREAM since 1992 does not establish its

use of CREAM as a trade mark, nor is there any evidence before the Panel of

any trade mark use of the word CREAM, standing alone, let alone any use prior

to the registration of the disputed domain name.

The course of correspondence between the parties reveals some dissembling on

the part of the Complainant in the form of repeated claims by representatives

of the Complainant that the Complainant had registered trade mark rights in

the mark CREAM in the UK (without disclosing that its rights were confined to

the combination of that word and the device forming part of the registered mark)

while making increased offers to acquire the domain name registration, coupled

with failure to comply with repeated requests by the Respondent to supply copies

of the trademark registration documents so the Respondent might consider its

legal position.

All this satisfies the Panel that, at the time it filed its Complaint, the

Complainant was and had long been well aware that:

- its registered trade mark rights are limited to the word and device mark

depicted above; and

- it could not establish common law trademark rights in the word CREAM, standing

alone, prior to the registration of the disputed domain name.

The Complainant thus had no basis on which to assert that the Respondent had

no rights to or legitimate interests in the disputed domain name. It therefore

had no proper objection to the disputed domain name. Since the Complainant was

being professionally advised throughout, the conclusion is inescapable that

the Complainant was aware of this.

Under these circumstances it is appropriate for the Panel to make a finding

of reverse domain name hijacking on the basis that the Complainant was aware

of the Respondent’s unassailable rights to or legitimate interests in the disputed

domain name.

The Panel finds the Complaint was filed as an attempt at Reverse Domain Name

Hijacking and was brought in bad faith primarily to deprive a registered domain-name

holder of a domain name. Accordingly, pursuant to Rule 15(e), the Panel declares

the Complaint was brought in bad faith and constitutes an abuse of the administrative

proceeding.

7. Decision

Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Complaint

is dismissed.

Alan L. Limbury

Sole Panelist

Dated: September 28, 2001

Footnotes:

1. This registration was applied for and

issued to James Barton & Darren Hughes of Liverpool, England. The

registration was not assigned to Complainant until January 24, 2001 as

shown in Annex 3 to Complainant’s Complaint.

2. Zero International Holding GmbH

& Co. et al. v. Beyonet Services et al., (WIPO

D2000-0161): "So far as the German trade mark 1009879 is relied on

by the Complainant, that trademark is a device mark for the stylized form of

the word ZERO as shown on the registration, rather than the word ZERO itself.

As such, this panel is not satisfied that this trade mark gives relevant rights

in the word ZERO."

3. Zero International Holding GmbH

& Co. et al. v. Beyonet Services et al., (WIPO

D2000-0161): "The word ZERO is a common word which is short, simple

and easy to remember and may well have been registered by any number of people

for any purpose."

4. "To establish common law rights,

the Complainant must show that the mark has acquired distinctiveness when associated

with Complainant’s goods or services" prior to the Respondent’s domain

registration. Business Architecture Group, Inc. v. Reflex Publishing,

FA 0104000097051 (Nat. Arb. Forum 2001).

5. Business Architecture Group,

Inc. v. Reflex Publishing, FA 0104000097051 (Nat. Arb. Forum 2001); Marbil

Co. Inc. v. Sangjun Choi, (WIPO D2000-1275);

Kendall v. Mayer Re skipkendall.com, D2000-0868

(WIPO Oct. 26, 2000).

6. It should be noted for the record that

there was a famous band out of the United Kingdom in the sixties lead by Eric

Clapton called CREAM. Since there is still a large following for this band,

it appears that this album title, as well as possibly Complainant’s entire business

was an attempt to take advantage of that band’s notoriety.

7. In re Polar Music Int’l AB,

221 U.S.P.Q. 1088, 1091 (TTAB 1998); In re Peter Spirer, 225 U.S. P.Q.

693 (TTAB 1995).

8. Bernardaud Porcelaines de Limoges

S.A. et al. v. Chapman Capital LLC, (WIPO D2001-0247).

9. Diamond Shamrock Refining and

Marketing Co. v. CES Marketing Group Inc., FA 0102000096766 (Nat. Arb. Forum

April 20, 2001): "The critical fact is that Complainant’s trademark registration

issued after the disputed domain name was registered. Therefore, the element

of registration in bad faith is missing."

10. Bernardaud Porcelaines de

Limoges S.A. et al. v. Chapman Capital LLC, (WIPO

D20001-0247).

11. Id Software Inc. v. Doom

Gaming Connections, FA 00006000095002 Nat. Arb. Forum, July 24, 2000).

12. Zero International Holding

GmbH & Co. et al. v. Beyonet Services et al., (WIPO

D2000-0161): "The word ZERO is a common English word. Although any

number of organizations (including the Complainant) may have trademark rights

in such word that does not preclude the respondent effecting registration of

a common word on a ‘first come, first served’ basis which was available."

13. Bernardaud Porcelaines de

Limoges S.A. et al. v. Chapman Capital LLC, (WIPO

D2001-0247); see also Diamond Shamrock Refining and marketing Co. v.

CES Marekting Group, Inc., FA 0102000096766 (Nat. Arb. Forum, April 20,

2001): "Because we find that the Complainant has failed to prove registration

in bad faith, the Panel finds it unnecessary to discuss the first two elements."

14. See The Stanley Works and Stanley

Logistics, Inc v. Camp Creek. Co., Inc. (WIPO

Case No. D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor

Corporation v. S&S Enterprises Ltd. (WIPO

Case No. D2000-0802) and Nokia Corporation v. Nokiagirls.com

a.k.a IBCC (WIPO Case No. D2000-0102).

For a typical US case see Sporty’s Farm L.L.C. v. Sportsman’s Market,

Inc., 202 F.3d 489, 497-98 (2d Cir. 2000) (the differences between the trademark

"sporty’s" and the domain name <sportys.com> – specifically,

an apostrophe in the trademark and the addition of .com in the domain name –

are "inconsequential," such that the domain name is "indistinguishable"

from and "certainly ‘confusingly similar’ to the protected mark").

15. AltaVista Company v. S.M.A.,

Inc., (WIPO Case D2000-0927); Gateway,

Inc. v. Pixelera.com, Inc. (formerly Gateway Media Productions, Inc.) (WIPO

Case D2000-0109). See also General Mills, Inc. v. John Zuccarini

(NAF Case FA0104000097050 , May 30, 2001).

16. Energy Source Inc. v. Your

Energy Source, (NAF Case 96364); Ultrafem, Inc. v. Warren R. Royal,

(NAF Case 97682).

17. Shirmax Retail Ltd. v. CES Marketing,

Inc., (e-Resolution Case AF-0104. See also General Machine Prods Co.

v. Prime Domains, NAF Case 92531); Car Toys, Inc. v. Informa Unlimited,

Inc., (NAF Case FA93682); CRS Technology Corp. v. Condenet, Inc., (NAF

Case FA9347); Nicholas V. Perricone, M.D. v. Martin Hirst, (NAF Case

FA0095104); Zero International Holding GmbH & Co. Kommanditgesellschaft

v. Beyonet Services and Stephen Urich, (WIPO

Case D2000-0161); Primedia Special Interest Publications, Inc. v. John

L. Treadway, (WIPO Case D2000-0752);

First American Funds, Inc. v. Ult.Search, Inc., (WIPO

Case D2000-1840).

18. Newstoday Printers and Publishers

(P) Ltd. v. InetU, Inc., (WIPO Case D2001-0085);

Audiopont, Inc. v. eCorp, (WIPO Case D2001-0509);

Kis v. Anything.com Ltd., (WIPO Case

D2000-0770); Allocation Network GmbH v. Steve Gregory, (WIPO

Case D2000-0016).

19. See The World Phone Company (Pty)

Ltd v. Telaccount Inc. (WIPO Case D2000-1163)

and Maureen A. Healy v. Andreas Kuhlen (WIPO

Case D2000-0698).

20. See Telstra Corporation Limited

v. Nuclear Marshmallows, (WIPO Case

No. D2000-0003); Barney’s, Inc. v. BNY Bulletin Board (WIPO

Case No. D2000-0059); CBS Broadcasting, Inc. v. Dennis Toeppen

(WIPO Case No. D2000-0400); Video Networks

Limited v. Larry Joe King (WIPO

Case No. D2000-0487); Recordati S.P.A. v. Domain Name Clearing

Company (WIPO Case No. D2000-0194)

and Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman

(WIPO Case No. D2000-0468).

21. See Telstra Corporation Limited

v. Nuclear Marshmallows (WIPO Case

No. D2000-0003).

22. See, e.g., Sydney Opera House Trust

v. Trilynx Pty. Ltd., (WIPO Case D2000-1224);

Goldline International, Inc. v. Gold Line (WIPO

Case D2000-1151); K2r Produkte AG v. Jeremie Trigano (WIPO

Case D2000-0622); Smart Design LLC v. Hughes, (WIPO

Case D2000-0993); Loblaws, Inc. v. Presidentchoice.inc/Presidentchoice.com,

(eResolution Case AF-0170a to –0170c).

More cases by this complainant

• Cream Holdings Limited — D2001-0350 · Terminated