Barnes & Noble College Bookstores Inc. v. Language Direct

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Barnes & Noble College Bookstores Inc. v. Language Direct

Case No. D2003-0142

1. The Parties

The Complainant is Barnes & Noble College Bookstores Inc. ("Barnes & Noble"). It is an American corporation of New York,. It carries on business as a retail and on-line bookstore. It is represented in the proceeding by Erik Wolff Kahn of Bryan Cave, LLP, New York, NY, United States.

The Respondent is identified as Language Direct, Tokyo, Japan. Its administrative contact is shown as Ian Hewitt at the same address with an alternative address of California, United States of America.

2. The Domain Name and Registrar

The domain names the subject of the dispute are:

<barenesandnoble.com>

<barmesandnoble.com>

<barnesadnnoble.com>

<barnesandmoble.com>

<barnesandnoblecom.com>

<barnesandnolbe.com>

<barnesandnpble.com>

<barnesnadnoble.com>

<varnesandnoble.com>

The Registrar with which the domain name is registered is Melbourne IT Limited, trading as Internet Name Worldwide.

The date on which the primary domain name <barnesandnoble.com> was registered appears to be August 10, 1995.

3. Procedural History

On February 25, 2003, the Complaint was received by email.On February 25, 2003,

Registrar Verification was requested. On February 27, 2003, the Registrar

responded to the Verification request. On February 27, 2003, a Complaint

Deficiency Notification was issued. On February 27, 2003, an amendment

to the Complaint was received.On March 4, 2003, a formal Notification

of Complaint and Commencement of Administrative Proceeding was notified. On

March 25, 2003, a Notification of Respondent Default was issued. On

April 3, 2003, a Notification of Appointment to Administrative Panel

and Projected Decision Date was advised.

An administrative panel of John Katz QC of Auckland, New Zealand, as sole Panelist

was notified. The Panelist having accepted the appointment and having considered

the papers delivers the following administrative panel decision.

4. Factual Background

A. Complainant

The Complainant, is a large corporate entity based in the United States. It

owns and operates an on-line bookstore <barnesandnoble.com>. It also owns

and operates over 1,000 retail bookstores including college and university bookstores.

The Complainant's association with the retail bookstore industry stretches

back for over a quarter of a century. It has been using the Barnes & Noble

name in connection with its on-line bookstore since 1997.

The Complainant has various US registered trade marks which are in evidence

(annexure 6). These include BARNES & NOBLE and BARNESANDNOBLE.COM. All the

US marks are current and the two referenced marks were registered in 1980 (with

use claimed since March 1975) in the one instance, and 1999 (with use claimed

since May 1997) in the other case.

The Complainant also has a number of trade mark registrations for BARNES &

NOBLE in other jurisdictions (see annexure 7), in countries as diverse as Taiwan

and Tajikistan. They include Japan.

The Complainant owns a website for which it is the registrant of the domain

names <barnesandnoble.com> and <bn.com>, both registered as of August

1995 and October 1994 respectively (see annexure 5). The Complainant also operates

an affiliate partner programme (see annexure 9) in terms of which the Complainant

granted to the Respondent a limited right to use the Respondent's website and

a hyper-link to the Complainant's website <barnesandnoble.com>. That is

a commercially structured agreement which contains express terms as to its use

and limitations (see annexure 9).

B. Respondent

The Respondent was a member of or grantee under the Complainant's Affiliate

Partner Agreement. The terms expressly limit the ability of the grantee to

(a) use the Barnes & Noble trade marks

(b) adopt as its own domain name any reference to the trade marks "BARNES",

"NOBLE", "BARNES&NOBLE.COM", "B&N.COM" and "BN" or any combination thereof

(c) use or abuse of the intellectual property rights of Barnes & Noble

including in particular Barnes & Noble's trade marks

(d) holding itself out as in any way associated with or entitled to any Barnes

& Noble proprietary rights.

In or about September 2002, the Complainant became aware that the Respondent

had registered the disputed domain names. The Complainant sent a cease and desist

letter and some correspondence ensued.

Little is known about the Respondent. It appears to be based in Tokyo, Japan

but has contact details for administrative purposes through a Mr. Ian Hewitt

of ESL Games of Fremont, California, United States. There is in evidence (see

annexure 11) email traffic from Mr. Hewitt which indicates an awareness of the

issues.

Nothing further has been put before the Panelist with respect to the Respondent.

It has filed no formal response.

5. The Parties' Contentions

A. Complainant

The Complainant addresses the issues in a very comprehensive manner with detailed

citation of authority.

It claims to be the owner of all proprietary rights to what are compendiously

called the Barnes & Noble trade marks. It says it owns the goodwill in these

trade marks worldwide due to the United States and foreign trade marks it has

registered. Moreover, it refers to its website through which books, CDs, DVDs,

video cassettes, music, magazines, computer games and other similar items are

purchased by the public. Importantly, these transactions are internet based

and by definition are borderless. The website in extract form is in evidence.

Although not in evidence as to the actual amount of sales, nor the number

of hits on the website each day, the Complainant alleges that its website is

one of the most visited retail sites on the internet. As a result it contends

that the Barnes & Noble trade marks have become distinctive of the goods

and services it promotes (books, CDs etc). That gives it the exclusive right

to the use of the Barnes & Noble trade marks.

The Complainant then says that whilst it agreed to the Respondent using a

hypertext link to take visitors to the Barnes & Noble website such use by

the Respondent was on a strictly limited terms basis as evidenced by the Affiliate

Partner Agreement document. Having become aware of the Respondent's breaches

the Complainant took action to terminate the agreement. The Respondent however

still operates its website in breach of the agreement and to the claimed detriment

to the Complainant.

The Complainant says the Respondent's domain names are merely iterations or

intentional misspellings of the various Barnes & Noble trade marks, designed

to secure for the Respondent commercial gain as presumably the Respondent derives

revenue from its own website and the links it has established to other web sites,

including competitors of the Complainant such as Amazon and Borders.

So, the Complainant says, the Respondent registered the disputed domain names

in bad faith and is using them in bad faith. It has no legitimate interest in

them and can therefore point to no justification for the registration and continued

use of them.

B. Respondent

The Respondent, having defaulted, has put in no evidence or response of any

sort. It did however reply to the Complainant's cease and desist letter which

letter at the time is in as evidence (annexure 11). All the Respondent says

is that it had received authorisation to use the disputed domain names from

Barnes & Noble. Its email letter reply is lacking in particularity. To this

the Complainant sent an answer (see annexure 12) rejecting the Respondent's

claims and pointing out that any such alleged authorisation would be in breach

of company policy and the affiliate partner agreement. The correspondence then

ended.

Although the Respondent has defaulted its email letter is in evidence. Further,

no adverse presumptions should be made in the present case merely because a

Respondent has defaulted. Whilst concepts of burden of proof are inappropriate

under the ICANN procedure, it is still for the Complainant to make out its case.

6. Discussions and Findings

The policy adopted by ICANN is directed towards resolving disputes concerning

allegations of abuse of domain name registrations.

As part of the process a Complainant must provide evidence and submissions

in support of its complaint. The expectation is that the Complainant will provide

such supporting evidence as is necessary to make out its case under all three

heads in paragraph 4(a) of the policy. The Respondent is given full opportunity

to respond.

In this instance the Respondent has defaulted. As earlier indicated, no particular

burden lies either way. Nevertheless, Rule 4(a) of the policy sets out three

elements that must be established by Complainants to merit a finding that a

Respondent has engaged in abuse of domain name registration and to obtain relief.

These elements are that:

(i) The Respondent's domain name is identical or confusingly similar to a trade

mark or service mark in which the Complainant has right; and

(ii) The Respondent has no rights or legitimate interests in respect of the

domain name; and

(iii) The Respondent's domain name has been registered and is being used in

bad faith.

Each of three elements must be established by a Complainant to warrant relief.

A. The First Ground – Identical or Confusingly Similar.

As to the first ground, the disputed domain name must be shown to be identical

or confusingly similar to trade marks or service marks in which the Complainant

has rights.

The Complainant must establish that it has such rights either to a common

law or registered trade mark or service mark and that those rights are being

violated by the Respondent. That violation can be by the adoption by the Respondent

for itself of a trade mark which is nearly identical or confusingly similar.

The trade marks in suit need not be registered trade marks and a common law

trade mark will suffice. What the Complainant must establish is that it owns

intellectual property rights of one sort or another in a trade mark or trade

marks and that rights exist in the territory where the Respondent operates or

where the Respondent's use of the impugned trade marks will come into conflict

with the rights of the Complainant. This is particularly relevant in connection

with domain names and internet based transactions where effectively trade marks

become borderless.

In trade mark law it is trite to describe some trade marks as famous or well

known. Most jurisdictions afford protection to such trade marks (see for example

Mostert, Famous and Well Known Marks, Butterworths, London, 1997). Any WIPO

Panelist would be entitled to use and apply his/her own knowledge of what are

such marks. This is not to substitute for proper evidence and argument from

a Complainant but it would be idle to close the eyes to what are recognised

worldwide as famous or well known marks. And this must particularly be so when

the marks are used as identifiers for a business that trades heavily on the

internet using its own domain name with which the Respondent seeks wrongly to

claim or suggest an association.

It is a basic tenet of trade mark law, equally applicable under paragraph

4(a)(i) of the ICANN policy that one must look at a trade mark as a whole and

compare the mark in suit with the alleged infringement. It is often asked, has

the idea of the mark been taken, has the Respondent wrongly appropriated the

essence or fundamental impression created by the mark.

The Complainant's various trade marks are without doubt well known or famous.

Indeed, one would be hard pressed to find any internet based providers of books,

CDs or similar material more widely known across the world than Barnes &

Noble, Amazon or Borders.

The Respondent's domain names must be viewed in this context. They are no

more than colourable and cheeky imitations of the Barnes & Noble trade marks.

So much so that a casual glance can easily miss the difference, as subtle as

it is.

But above all else, persons accessing the internet and wanting to find the

Complainant's site, but being unfamiliar with it, are likely to type into a

search engine "Barnes" followed by "Noble". The probability is that such a search

would throw up both the Complainant's and Respondent's websites. This risk is

enhanced where a person wishing to access the genuine Barnes & Noble website

is going to be located in a foreign jurisdiction and for various reasons including

language difficulties may not understand or even recognise subtle differences

in the spellings or even if they were recognised to appreciate the significance

of them.

Ground 4(a)(i) is accordingly made out.

B. Rights or Legitimate Interests

As to the second ground, that there are no rights or legitimate interests

possessed by the Respondent, the Respondent does not appear to put forward in

evidence any business or trading operation known as or by reference to any of

the trade marks in suit, thereby justifying a proprietary right to the marks.

Under ground 4(a)(ii) a Respondent can justify its registration of the disputed

name on certain grounds some of which are set out in paragraph 4(c) of the policy.

Such grounds resolve broadly to own name use, bona fide use, legitimate non

commercial or fair use and similar.

Here, all the Respondent has done by its email reply to the cease and desist

letter is claim that the Complainant has given its consent to the registration

and use of the disputed domain names. It has not asserted any other legitimate

interest. The Complainant has addressed this ground fully and has satisfied

the Panelist that the claimed permission was not given and that the Respondent's

only interest in the disputed domain names is for the purposes of intentionally

trading off the good will of Barnes & Noble. That must be so.

Ground 4(a)(ii) is accordingly made out.

C. Registration and Use in Bad Faith

As to the third ground, this requires that the name be registered and used

in bad faith. As has previously been said in other Panelist's decisions together

with earlier decisions of this Panelist, both elements must be made out. Thus,

both registration and use in bad faith have to be established by the Complainant.

Given the enormous reputation and worldwide goodwill of Barnes & Noble

the question inevitably arises for what legitimate purpose or genuine reason

might the Respondent have registered and be using the disputed domain names

or continue to use them.

Any registration of the disputed domain names immediately raises the question

also why a Respondent would chose to register them. Absent any proper and reasonable

explanation from the Respondent (other than a claimed permission which the Complainant

denies) the Panelist is drawn to the irresistible inference that the registration

was in bad faith.

But the Complainant must also establish use in bad faith. The Respondent's

site is active. It still links to Barnes & Noble as well as to the Complainant's

competitors, Amazon and Borders. That diverts traffic from the Complainant thereby

providing commercial gain to the Respondent through the assumed commissions

the Respondent derives from the competitors. Even although the Respondent has

now apparently altered the website, any search of it and use of the hyper-link

to Barnes & Noble still reveals the Respondent's site lying beneath. Framing

in such a manner is not a legitimate activity as it all too readily allows a

viewer to revert to the original website and access from there the competitors

sites. Indeed a search of the website associated with some of the domain names

highlights not Barnes & Noble but Abebooks, Amazon and Borders.

But the most telling evidence against the Respondent is its apparent trading

on misspelled websites or typosquatting. Annexure 14 reveals a number of other

domain names registered to the Respondent, one can only assume in similar circumstances

to those existing in the present case. These other domain names also exhibit

deliberate misspellings, some of which are misspellings engineered to take advantage

of a one key mistype by somebody who has inadvertently pressed the wrong key

on a keyboard. The subtlety of the Respondent's actions is exceptional and once

again leads to the ineluctable conclusion that the Respondent typosquats and

has registered and is using the present domain names in suit in bad faith.

Ground 4(a)(iii) is accordingly made out under both limbs.

7. Decision

For the reasons set out above the Panelist finds:

(a) The domain names in suit registered by the Respondent are identical or

confusingly similar to trade marks to which the Complainant Barnes & Noble

has rights; and

(b) The Respondent does not have any rights or legitimate interests in respect

of the domain names; and

(c) The Respondent's domain names were registered and are being used in bad

faith.

Accordingly, pursuant to clause 4(i) of The Policy, the Panelist requires that

the registration of the following domain names be transferred to the Complainant

Barnes & Noble College Bookstores Inc.:

<barenesandnoble.com>

<barmesandnoble.com>

<barnesadnnoble.com>

<barnesandmoble.com>

<barnesandnoblecom.com>

<barnesandnolbe.com>

<barnesandnpble.com>

<barnesnadnoble.com>

<varnesandnoble.com>

John Katz QC

Sole Panelist

Dated: April 17, 2003