Warm Things, Inc. v. Adam Weiss

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Warm Things, Inc., Inc. v. Adam S. Weiss

Case No. D2002-0085

1. The Parties

Complainant is Warm Things, Inc., a California corporation located at 180 Paul

Drive, San Raphael, California 94903 USA. Complainant’s authorized representative

in this proceeding is the law firm of Tucker & Latifi, LLP, by Afschineh

Latifi.

Respondent is an individual, Adam S. Weiss residing in Hoboken, New Jersey

USA. Mr. Weiss is acting pro se in these proceedings.

2. Domain Name and Registrar

The domain name at issue is: <warmthings.com>

The Registrar is Network Solutions, Inc.

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received

Warm Things, Inc.’s Complaint (the "Complaint") by hard copy on February 1, 2002.

The Center submitted a request to the complainant on February 5, 2002,

for receipt of the Complaint in electronic form as required by the Rules for

Uniform Domain Name Dispute Resolution Policy (the "Rules"). The electronic

version of the Complaint was received by the Center on February 5, 2002.

The Center received verification on February 7, 2002, from Network

Solutions advising that Respondent Adam Weiss is the owner of the disputed domain

name <warmthings.com>. After verifying that the Complaint satisfied the

formal requirements of the Uniform Domain Name Dispute Resolution Policy (the

"Policy"), the Rules, and the Center’s Supplemental Rules for Uniform

Domain Name Dispute Resolution Policy (the "Supplemental Rules"),

the Center notified Respondent of the Complaint and of the commencement of the

administrative proceeding. Respondent was given until March 3, 2002,

to submit a Response to the Complaint. A Response dated March 3, 2002,

was filed and was acknowledged by the Center on March 14, 2002. For

purposes of the decision it is assumed that the Response was submitted in a

timely manner although it is noted that there is no certificate of service or

other indication in the Response as to when and how service of the Response

was made.

Because Respondent did not request a three-member Panel to hear the dispute,

the Center, on April 5, 2002, after clearing potential conflicts,

appointed Barbara Solomon as the Panelist for this matter. The Panelist agrees

with the Center’s assessment that the Complaint satisfies the requirements of

the Policy, Rules and Supplemental Rules.

4. Parties’ Contentions

Complainant avers that it has been using the mark WARM THINGS in connection

with operating retail stores and a mail catalog business since as early as 1973,

that it has been using the mark WARM THINGS in connection with a line of clothing

since 1980, and that it has been using the mark WARM THINGS in connection with

a line of blankets and bed linen since 1993. As evidence of its rights in the

mark WARM THINGS, Complainant has provided copies of trademark registrations

for the mark WARM THINGS including Registration Nos. 2257202, 2257206, 2267064

and 2267063. Complainant states that products under the WARM THINGS mark have

been advertised and offered for sale throughout the United States and that Complainant

has invested "large sums" of money promoting and advertising products

under the WARM THINGS mark and has built a reputation for high-quality products.

Respondent registered the domain name <warmthings.com> with Network Solutions

on November 23, 1998. At that time, according to Respondent, the domain

name pointed to a website, also accessible via the domain name <diversitex.com>,

which offered communications products and services, as well as website design

services.

According to Complainant, on March 24, 2000, it wrote to Respondent

and asked Respondent to assign the domain name to Complainant.[1]

It appears that some time after the demand letter was sent, Respondent stopped

using the domain name to connect to any active website and has not used the

domain name <warmthings.com> to point to any site from mid-2000 until

the present.

In its Complaint, Complainant asserts rights in the WARM THINGS mark based

on its use since 1973, and its registrations for the mark WARM THINGS. It next

asserts that when consumers enter the domain name they are rerouted to a site

for diversitex. The Panel notes that the domain name did not reroute to any

page as of the date of this decision. Complainant states that the site to which

the <warmthings.com> name had been diverted sells products "totally

unrelated" to the mark WARM THINGS and that Respondent is "creating

a likelihood of confusion with Complainant’s mark as to its affiliation with

and endorsement by Complainant of Respondent’s website and services." Complainant

further contends that Respondent has intentionally, knowingly and willfully

infringed upon the WARM THINGS mark in order to deceive consumers. Finally,

Complainant alleges that to its knowledge and apart from Respondent’s website,

there is no evidence that Respondent is recognized or is identified with the

WARM THINGS mark.

In its Response, Respondent contends that the Complaint should be rejected

on jurisdictional and factual grounds arguing that Respondent has legitimate

rights and interests in the domain name, that the domain name was not registered

in bad faith, and that the domain name is not being used in bad faith. In support

of its claim, Respondent contends that there can be no finding of use in bad

faith since the domain name does not point to any website and has not pointed

to a website since mid-2000. Respondent further contends that there is no evidence

the domain name was registered in bad faith as the words WARM and THINGS are

common terms widely used to describe various objects, ideas and situations.

Finally, Respondent claims that he had legitimate rights and interests in the

domain name because the term WARM THINGS relates directly to products and services

Respondent offered to sell at his website.

5. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant must prove each of the following

to obtain the transfer of a domain name:

(1) that the domain name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights;

(2) that the Respondent has no rights or legitimate interests in respect

of the domain name; and

(3) that the Respondent has registered and is using the domain name in bad

faith.

Before reaching the requirements set forth in paragraph 4(a) of the Policy,

the Panel concludes that Complainant has established rights in its WARM THINGS

mark through its registrations in the U.S. and through its claimed use since

1973. To the extent that Respondent is attempting to argue that Complainant’s

mark is descriptive or does not merit protection, such claim is rejected in

light of the existence of Complainant’s registrations.

A. Identical or Confusing Similarity

Neither party has addressed the issue of whether the domain name <warmthings.com>

is identical or confusingly similar to the trademark WARM THINGS. A simple comparison

of the trademark to the domain name makes it clear that the domain name is identical.

The addition of the top-level designator ".com" in the disputed domain

name is of no legal significance in determining whether Complainant has met

its burden on this element.

B. Legitimate Rights or Interests

Under the Policy, legitimate interests in a domain name may be demonstrated

by showing that:

(1) Before any notice of the dispute Respondent used, or made preparations

to use, the domain name in connection with a bona fide offering of goods or

services;

(2) Respondent has been commonly known by the domain name, even if no trademark

or service mark rights have been acquired; or

(3) Respondent is making legitimate, non-commercial and fair use of the

domain name without intent of commercial gain or to misleadingly divert consumers

or to tarnish the trademarks at issue. Policy ¶ 4(c).

In arguing that Respondent lacks legitimate rights or interests, Complainant

asserts without benefit of evidence that "there is no evidence whatsoever

that Respondent or its services are recognized or in any way are identified

by consumers or people in the trade with the WARM THINGS mark." This, however,

fails to address the Policy. Respondent has stated without contradiction by

Complainant that from 1998 until mid-2000, it used the domain name to point

to a website on which it offered products and services. As such, Respondent

has shown that before notice of this dispute, which Complainant states did not

occur until March 2000, Respondent had used the domain name in connection

with a bona fide offering of goods or services.

It is true that infringing use of a mark may not give rise to legitimate rights

or interests. Indeed, good faith is a key element in determining whether there

was bona fide use under the Policy. See World Wrestling Federation Entertainment,

Inc. v. Rift, WIPO D2000-1499 (noting

that not all use prior to notice of the dispute can qualify as a bona fide use).

The question here is whether there is evidence that Respondent’s use intentionally

traded on the fame of Complainant’s rights. Here, the evidence submitted by

Complainant shows that the Respondent was not using WARM THINGS to sell products

that were competitive to that of the Complainant’s product. Rather, as Complainant

puts it, Respondent was offering products "totally unrelated" to the

mark WARM THINGS. As such, it is difficult to imagine how Respondent could be

trading off the recognition of Complainant’s marks. Moreover, according to the

trademark registrations submitted by Complainant, all were issued after Respondent

registered the domain name. As such, Respondent is not charged with being on

constructive notice of Complainant’s rights. While there may be questions as

to whether Respondent has legitimate interest or rights in <warmthings.com>,

the Panel concludes that based on the evidence submitted, Complainant has not

met its burden of proof on this issue.

C. Registered and Used in Bad Faith

The purpose of the Policy is to prevent clearly abusive acts of cybersquatting.

The Policy is not designed to address any issue of unfair competition or misuse

of a domain name. It is for this reason that there is a requirement under the

Policy for the Complainant to prove that the Respondent registered and used

the domain name in bad faith. The Policy sets forth various factors to be examined

in considering whether there is such bad faith registration and use although

the Policy recognizes that there may be other circumstances not enumerated in

the Policy that might show bad faith.

Complainant does not suggest and there is no evidence that Respondent registered

the domain name primarily for the purpose of transferring it for valuable consideration

in excess of documented out-of-pocket costs. See Policy ¶4(b)(i). Indeed,

Respondent appears to have rejected any suggestion that it transfer the domain

name and did not respond to Complainant’s proposals for transfer of the domain

name by requesting payment of any type. Complainant also does not suggest that

Respondent has engaged in a pattern of registering domain names in order to

prevent the owner of a trademark from reflecting the mark in a corresponding

domain name. See Policy ¶ 4(b)(ii). And Complainant has not argued that

Respondent registered the domain name for the purpose of disrupting the business

of Complainant. See Policy ¶ 4(b)(ii). Indeed, Respondent owned the domain

name for 2 years before Complainant ever objected and for 4 years before Complainant

brought this action. This delay suggests that Complainant was not adversely

affected by the registration.

Instead, Complainant relies on Policy ¶ 4(b)(iv) which states that bad faith

can be found if a Respondent intentionally attempts to attract for commercial

gain Internet users to its website by creating a likelihood of confusion with

the Complainant’s mark as to source, sponsorship, affiliation or endorsement.

There is no evidence that Respondent registered or used <warmthings.com>

to create confusion. Nor is there any evidence to suggest that Respondent would

benefit from the use of the domain name <warmthings.com> or its association

with Complainant. While Complainant states that its mark is strong and well-known,

other than the allegations of the Complaint there is no evidence of goodwill

or reputation, including evidence of sales, advertising, advertising expenditures

or other renown.

There is also no evidence that Respondent was using <warmthings.com>

to sell products that are competitive with those of Complainant. Clearly, anybody

who went to the <warmthings.com> website when it was in use would have

known immediately that it had not reached the Complainant. U.S. courts have

repeatedly held in the Internet context that initial interest confusion that

arises from a defendant’s use of a domain name is not legally significant where

it is apparent once the consumer reaches a website that they are at the wrong

site and have not reached the party they are looking for. As one court noted,

"Internet surfers are inured to the false starts and excursions awaiting

them." See Chatam International,. Inc. v. Bodum, Inc, 157

F. Supp. 2d 549, 558 (E.D. Pa 2001); accord, Strick Corporation v.

James B. Stickland, Jr., 162 F. Supp. 2d 372, 377 (E.D. Pa. 2001); Hasbro,

Inc. v. Clue Computing, 232 F.3d 1, 2 (1st Cir. 2000); Checkpoint Systems,

Inc. v. Checkpoint Software Technologies, Inc., 269 F.3d 270 (3rd

Cir. 2001). Given this case law, the Panel holds that the Complainant has not

shown an attempt by the Respondent to create likelihood of confusion as that

term is defined by U.S. law. Accordingly, Complainant has not carried its burden

of proof on this issue. Certainly, the submissions make it apparent that this

case is not the type of clear cut case of cybersquatting that is appropriate

for resolution under the UDRP. To the extent that this matter needs to be resolved

it needs to be resolved before a trial court with appropriate offers of evidence.

Allegation of Reverse Domain Name Hijacking

Respondent has alleged that the filing of the UDRP by Complainant constitutes

an "effort to obtain [<warmthings.com>] from a legitimate good faith

registrant" and is "a naked attempt to acquire by administrative action

what it simply is not entitled to." The Panel takes this to be an allegation

by Respondent that Complainant is involved in reverse domain name hijacking.

Reverse domain name hijacking is defined in paragraph 1 of the Rules as meaning

"using the Policy in bad faith to attempt to deprive a registered domain

name holder of a domain name." In this case, the Panel does not find that

the Complaint was brought in bad faith. When Complainant filed the Complaint,

it was the owner of U.S. trademark registrations for the mark WARM THINGS. At

the time the Complaint was filed, Respondent was not making active use of the

domain name in connection with a website or in connection with provision of

any goods and services. Taken together, Complainant had a good faith basis for

bringing the Complaint.

7. Decision

Although Complainant has established rights in the mark WARM THINGS and despite

the fact that the domain name is identical to Complainant’s mark, this does

not mean that Complainant is entitled to the relief it seeks. Complainant has

not met its burden of showing that Respondent does not have legitimate rights

or interests in the domain name nor has Complainant met its burden of proving

that Respondent registered and is using the domain name in bad faith. Because

of this failure of proof, Complainant’s request for transfer of the domain name

is denied.

As to Respondent’s request for a declaration that Complainant has engaged in

reverse domain name hijacking, Respondent has failed to make out such a claim

against the Complainant.

Barbara A. Solomon

Sole Panelist

Dated: April 18, 2002

1. Complainant states in its Complaint that

it has attached the March 24 letter as Annex 4 to the Complaint. No such letter

appears in the Complaint. Instead, a letter dated June 21, 2000, to an attorney

for Mr. Weiss has been placed in the record.