High-Class Distribution Services S.r.l. v. Online Entertainment Services

[Indexed as: High-Class Distribution v. Online Entertainment Services]
[Indexed as: HIGHCLASS.COM]

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION

Case No. D2000-0100
Commenced: March 3, 2000
Judgment: May 4, 2000

Presiding Panelist: David Perkins

Domain name - Domain name dispute resolution policy - Trade mark -  Service mark - Identical - Confusingly similar - Bad faith registration - Bad faith use - Legitimate interest - Cybersquatting - Generic name.

Complainant was registrant of United States and international trademark, HIGH CLASS and its variations. Registrant registered the domain name, highclass.com. Complainant alleged that its registered marks and the registered domain name were identical and that Respondent registered the domain name at issue in bad faith.

Held, Name not Transferred to Complainant

Complainant must establish both bad faith registration and bad faith use.

It is clear from Complainant's U.S. trademark agreement that it does not have exclusive use of the mark, HIGH CLASS simpliciter.  The term HIGH CLASS is a generic term that can be applied to any high end products. It was therefore found that the domain name, HIGHCLASS.COM is in no way similar or identical to the Complainant's mark.

Although the domain name, highclass.com is not presently in use, Respondent until recently, had used the domain name for purposes of commercial gain not connected in any way to Complainant's business.  Although respondent has in its possession other generic domain names that are not in use, Complainant failed to show that there were any third party trademarks or service marks corresponding to them.  Also, Respondent did not have any knowledge of the Complainant's mark, HIGH CLASS in Italy.  It was therefore found that Respondent had a legitimate interest in the domain name and that the registration was not in bad faith.

Respondent has also demonstrated that it has a plan to make future use of the domain name as soon as a viable commercial venture is discovered. Past use of the domain name and planned future use does not amount to cybersquatting even if the domain name is not currently in use. The panel therefore found no bad faith use.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Cases referred to

Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown 
Case No. D2000-0004
Panavision .v. Dennis Toeppen case [141 F. 3d 1316, 1325 (9th Cir. 1998)
Robert Ellenbogen .v. Mike Pearson Case No. D2000-0001
World Wrestling Federation Entertainment, Inc .v. Michael Bosman Case No. D99-0001 

Decision referred to
--
Perkins, Panelist: -

1. The Parties
The Complainant is High-Class Distributions S.r.l. of Via Carducci 18, 20123 Milan, Italy.

The Respondent is Online Entertainment Services of 2701 Cottage Way, Suite 27, Sacramento, California 95825, United States of America.

2. The domain name and Registrar
The domain name at issue is: 

highclass.com

and the Registrar is Network Solutions, Inc.

3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on February 26, 2000 [electronic version] and March 3, 2000 [hard copy]. The Centre verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules of Uniform Domain Name Dispute Resolution Policy [the Rules] and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment to the Center.

The formal date of the commencement of this administrative proceeding is March 15, 2000.

On March 5, 2000, the Center transmitted via email to Network Solutions Inc. a request for registrar verification in connection with this case and on March 6, 2000, Network Solutions Inc. transmitted via email to the Center Network Solutions' verification response confirming that registrant is Online Entertainment Services and the contact for both administrative and billing purposes is Mr. Mike Beaver.

On March 5, 2000, the Center requested additional information from the Complainant and on March 6, 2000 [email] and on March 13, 2000 [hard copy] the Complainant provided that additional information.

Having verified that the Complainant satisfied the formal requirements of the Policy and the Rules, the Center transmitted on March 15, 2000 to eht@nebula1.com;  mike@imagecomp.com; and postmaster@highclass.com Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by April 3, 2000. On the same day the Center transmitted by fax and by mail copies of the forgoing documents to Online Entertainment Services 2701 Cottage Way, Suite 27 Sacramento, CA 95825 United States of America and to Mike Beaver (MB897) Imageworks Computing Box 7706 Citrus Height, CA 95621United States of America and to the Respondent's Attorney Edward H Telfeyan CA Bar No. 067783 4971 Francis Way Carmichael, CA 95608 United States of America.

On March 22, 2000, the Center received from the Complainant's attorney Notification of Non-Delivery of Communication of the Complaint [hard copy] to the Respondent.

On March 24, 2000, the Respondent's Attorney requested an extension of time for submission of Response to April 23, 2000. On March 28, 2000, the Center agreed to extend time for Response to April 13, 2000.

On April 4, 2000, the Center received from the Complainant's Attorney Notification of Non-Delivery of Communication of the Complaint [hard copy] to the Respondent's Attorney.

On April 13, 2000, the Respondent's Response was received.

Having received on April 19, 2000, Mr. David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. David Perkins was formally appointed as the Sole Panelist. The Projected Decision Date was May 2, 2000, but this was extended to May 5, 2000, given a delay over the Easter Holidays of the case file being received by the Sole Panelist. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to the Respondent". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the accompanying documents annexed to both, the Rules and the Supplemental Rules.

4. Factual Background

4.1 The Complainant
The Complainant, High-Class Distributions S.r.l., has since June 1994 distributed high quality leather goods, including ladies handbags, in a number of countries using its HIGH CLASS trademarks [see, paragraphs 4.3 and 4.4. below].

4.2 The Respondent
The Respondent, Online Entertainment Services, is a general partnership created and existing in the State of California, having its principal place of business in Sacramento. Over the past 4 years the Respondent has operated a number of commercial web sites.

4.3 The Complainant's Trade Mark
The Complainant has provided evidence that it is the proprietor of the following trade marks. 

HIGH-CLASS 
Italian registration No. 00696511 [Class 18] filed June 6, 1994 for

"Leather and its imitations, articles made of these materials not included in other classes; animal skin; trunks and suitcases, umbrellas, parasols and walking sticks; whips and other saddlery articles"

H HIGH-CLASS 
Japanese registration No. 179.494/1997 [Class 18] filed November 20, 1997

HIGH CLASS BY CLAUDIO BUDEL 
Japanese registration No. 128.541/1997 [Class 18] filed June 16, 1997

H HIGH-CLASS BY CLAUDIO BUDEL 
Canadian registration No. 862,228 [Class 18] filed November 24, 1997 
United States registration No. 75/400.381 [Class 18] filed December 4, 1997
United Kingdom registration No. 2,151,627 [Class 18] filed November 21, 1997
Republic of Ireland registration No. 4120/07 [Class 18] filed November 7, 1997
Australian registration No. 748,799 [Class 18] filed November 13, 1997
Korean registration No. 97-52630 [Class 18] filed November 12, 1997
Japanese registration No. 179.494/1997 [Class 18] filed November 20, 1997
International registration No. 684,991 [Class 18] filed December 12, 1997 covering:
Albania: Austria: Bulgaria: Benelux: Switzerland: Czech Republic: Germany: Spain: France: Hungary: Croatia: Liechtenstein: Monaco: Portugal: Romania: Russia: Slovenia: Slovak Republic: San Marino: and Yugoslavia.

4.4 Use of the Complainant's Trade Marks
The Complainant has provided 3 examples of use of its HIGH-CLASS trade marks in the following formats: 
H (contained in an oval), underneath the words HIGH-CLASS (capitalized) and below with less prominence the word PELLETTERIE (also capitalized). 

H (contained in an oval), underneath the words HIGH-CLASS (capitalized) and below with less prominence the words "by Claudio Budel". 

The same but with the addition of MILANO (capitalized) below the words "by Claudio Budel". 

The Complainant asserts that its HIGH-CLASS trademarks are used on or in conjunction with:

very high quality women's handbags: men's and women's wallets: umbrellas: brief cases: luggage: hats: clothing: and watches

The Complainant states that it intends to expand use of those trademarks to include:

shoes: other items of jewelry: and additional items of clothing

Distribution of such goods labeled with its HIGH CLASS marks is asserted through the Complainant's HIGH-CLASS stores in Italy, Japan and the United States and through distribution channels in Germany and England. Gross sales of those goods in 1999 are stated to have been approximately US$4 million. The Complainant asserts that the marks HIGH CLASS and HIGH-CLASS have become distinctive of its goods in Japan, the United States and Europe.

The Complainant has not, however, provided evidence of use of the mark HIGH-CLASS simpliciter. In its Response, the Respondent shows that in relation to the US trade mark registration 75/400381 for H HIGH-CLASS BY CLAUDIO BUDEL a disclaimer states that:

"No claim is made to the exclusive right to use HIGH CLASS apart from the mark as shown".

The Panel infers that the Complainant's use of the mark is restricted to the 3 formats identified in the Complaint (see above).

4.5 Respondent's use of the domain name at issue
The domain name was registered on June 26, 1996. The Respondent has provided 23 Statements from Imageworks Computing to Online Entertainment Services dating from March 1996 to October 1996. Imageworks Computing is an Internet Service Provider. Nineteen of those statements identifying charges captioned 

"Highclass - monthly charge plus band width of … MEGS".

They date from July 1, 1995, through to October 1, 1998.
The Respondent states that:

the domain at issue was immediately placed into commercial service for the purpose of selling products of value to affluent consumers but after a time the Respondent determined that the venture was unsuccessful; 

thereafter the Respondent attempted several other commercial uses for the domain, none of which proved to be successful; 

the domain is currently used as a "vanity" E-Mail domain; and 

the Respondent intends to find a viable commercial venture for the domain. 

The Complainant has referred to correspondence between the parties in 1999 wherein the Complainant asserted claims of trade mark infringement and requested transfer by the Respondent of the domain name at issue. The Respondent's counsel replied by email dated May 6, 1999, in the following terms:

"Although highclass.com is not currently an active web site, it is the intention of OES to keep it available for use as an active site in the future.

I am unaware (and you do not offer any cite in your letter) of any controlling authority which would allow you to demand the use of this domain name. In the absence of any such authority, we must respectfully decline your request to convey the domain name to your client.

In the event that your client wishes to make an offer to purchase the domain name and all proprietary rights to it, you may communicate that offer to me. In that regard, please be aware that the last figure discussed with another prospective buyer for this domain was $5,000".

4.6 The Respondent's generic TLDs
The Complainant cites 8 other domain names which it says have been registered by the Respondent and which resolve to web sites that are dormant or substantially dormant. The Panel accessed these sites, four of which do not appear to be active, one of which is stated to be under construction [championgolf.com], one of which is offered for sale [wwwIII.com] and two of which are active [topacts.com and linkdb.com].

It is not alleged by the Complainant that any of these generic domains correspond to third party trademarks and in the Panel's view there is no evidence in this case of cybersquatting of the type involved, for instance, in the Stella D'oro Biscuit case [Case No. D2000-0012 decided February 17, 2000] or the Nabisco Brands case [Case No. D2000-0032 decided February 23, 2000].
 

5. Parties' Contentions

A. Complainant
The Complainant contends that the Respondent has registered as a domain name a mark which is identical to or is confusingly similar to the Complainant's HIGH-CLASS marks, that the Respondent has no rights or legitimate interests in respect of that domain name and that the Respondent has registered and is using that domain name in bad faith. 

B. Respondent
The Respondent contends that the Claimant has failed to meet the requirements of para. 4a of the Policy, or any of them. 

6. Discussions and Findings

6.1 The Policy para. 4a provides that the Complainant must prove each of the following:
the Respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and 

the Respondent has no rights or legitimate interests in respect of the domain name; and 

the domain name has been registered and is being used in bad faith. 

6.2 Identical or Confusingly Similar
With the exception of the Italian trade mark registration, the Complainant has no registered trade mark for HIGH CLASS, nor has the Complainant shown evidence by way of use of the word mark simpliciter. The other registrations are predominantly for the mark H HIGH CLASS BY CLAUDIO BUDEL. The illustrated examples of use of the mark are all in a stylized form and predominantly in conjunction with the words "by Claudio Budel". Indeed, in the Panel's view HIGH CLASS for Class 18 goods would generally be regarded as incapable of distinguishing by reason of descriptiveness. The disclaimer to the US trademark evidences this. "High Class" is inherently descriptive, particularly where high quality luxury goods of the type dealt in by the Complainant are concerned.

The Panel finds that the Complainant has failed to meet the requirements of para 4a(i) of the Policy. The domain name at issue is not identical nor confusingly similar to the trade marks relied upon by the Complainant.

6.3 Rights or Legitimate Interests
Having found that the Complainant has failed to meet the requirements of para. 4a(i) of the Policy, the Complaint must be rejected. The Panel will, however, briefly address the other requirements of paras. 4a (ii) and (iii) of the Policy.

From the evidence submitted with the Response in the form of the Statements from the ISP, Imageworks Computing, it appears that before notice of the dispute in April 1999 the Respondent had used the domain name at issue in connection with a bona fide offering of goods. The Domain name at issue was active from at least July 1996. The fact, admitted by the Respondent, that the web site is currently not active does not alter the Respondent's right and legitimate interest in the domain name. The Respondent's case is that it intends to find a viable commercial venture for the domain in the future: in this respect see also the email of May 6, 1999 from the Respondent's counsel [referred to in para. 4.5 above]. The apparent failure to use the domain name for an active web site since October 1998 does not, in the Panel's view, alter the position. On the facts, this case is clearly distinguishable from the situation in the American Vintage Wine Biscuit Inc case [Case No. D2000-0004] cited by the Complainant.

In the circumstances, the Panel finds that the Complainant has also failed to meet the requirements of para. 4a(ii) of the Policy.

6.4 Registered and used in bad faith
There is no evidence that the Respondent was aware of the Complainant's Italian trade mark when the domain name at issue was registered on June 26, 1994. The Complainant's other trade mark registrations were not applied for until June, November and December 1997, between 3 and 3½ years later. From the evidence of use of the Complainant's HIGH-CLASS marks, which only commenced in June 1994 and which totalled some US$4 million in 1999, the likelihood that the Respondent was aware of its activities by June 26, 1994 is remote in the extreme. It is, in the Panel's view, fanciful to suggest, as the Complainant does, that the circumstances illustrating bad faith set out in para. 4b of the Policy apply to this case.

With regard to the offer to sell the domain name at issue for US$5,000.00 [see para. 4.5 above], the cases cited by the Complainant [namely, World Wrestling Federation Entertainment, Inc .v. Michael Bosman Case No. D99-0001 and Robert Ellenbogen .v. Mike Pearson Case No. D2000-0001] are clearly distinguishable on the facts. From the Respondent's evidence, no case has been made out that the domain name at issue was primarily registered for the purposes set out in para. 4b(i) of the Policy. Nor, for the reasons stated in para. 4.6 above, is this a case of cybersquatting of the type involved in the Stella D'oro case or the Panavision .v. Dennis Toeppen case [141 F. 3d 1316, 1325 (9th Cir. 1998)].

7. Decision
The Panel finds that the Complainant has failed to prove any of the three elements of para. 4a of the Policy. The remedies requested by the Complainant are denied. The Respondent shall not be required to cancel or to transfer to the Claimant the domain name highclass.com.

Domain Name Not Transferred