a. Parties
Complainant: Stampin' Up! Inc
Country: US
Respondent: Jonathan Whitehead
Country: US
b. Domain Name
stampinup.co.uk (the "Domain Name")
c. Procedural Background
Nominet received hard copies of the Complaint in full on 14 September 2007 and notified the Respondent by letter and e-mail dated 17 September 2007. On 20 September 2007 Nominet received notice of a mail delivery system failure to the address postmaster@stampinup.co.uk.
No Response was received from the Respondent by the required deadline and Nominet so informed the Complainant and the Respondent by letter and e-mail dated 10 October 2007. On 13 October 2007 Nominet received notice of a mail delivery system failure to the address postmaster@stampinup.co.uk.
In the circumstances the dispute did not proceed to informal mediation and Nominet received the appropriate fee from the Complainant on 22 October 2007 for a decision of an expert pursuant to §7 of the Nominet UK Dispute Resolution Service Policy Version 2, September 2004 (the "Policy").
Steve Ormand, the undersigned, (the "Expert") confirmed to Nominet on 22 October 2007, that he knew of no reason why he could not properly accept the invitation to act as expert in this case and that he knew of no matters which ought to be drawn to the attention of the parties that might appear to call into question his independence and/or impartiality.
Definitions used in this decision have the same meaning as set out in the Policy and/or the Nominet UK Dispute Resolution Service Procedure Version 2, September 2004 (the "Procedure") unless the context or use indicates otherwise.
d. Procedural Issues
Communication with the Respondent and no Response
The Respondent has registered the Domain Name as a non-trading individual and requested that his details be withheld from the public register. However, full contact address details still have to be provided to Nominet and maintained by the individual in order to satisfy the registration requirements.
Nominet notified the Respondent of the Complaint in accordance with §2a of the Procedure. Although e-mails sent to postmaster@stampinup.co.uk were returned as "undeliverable", no such message was received in respect of e-mails sent to the Respondent's contact e-mail address. Furthermore, Nominet's letters to the Respondent's contact postal address are deemed to have been received by the Respondent pursuant to §2e of the Procedure unless Nominet or the Expert decide otherwise. From the records in the Complaint file it is clear that Nominet have taken all necessary steps under the Procedure to contact the Respondent at the contact addresses that he provided.
There is no evidence before the Expert to indicate exceptional circumstances that prevented the Respondent from submitting a Response to the Complaint within the required time period or which should lead the Expert to take any action other than proceeding to a Decision on the Complaint pursuant to §15b of the Procedure. Accordingly, the Expert will now proceed to a Decision and is entitled, pursuant to §15c of the Procedure, to draw such inferences from the Respondent's failure to comply with the Policy or the Procedure as the Expert considers appropriate.
The Complaint
Where a respondent has made no use of a domain name and it has not been possible for the complainant to communicate with the respondent, it is difficult for the complainant to submit evidence to support the complaint. If the respondent fails to respond to the complaint there is little before the expert to assist him or her in reaching a just decision. The "Chivas Test" established in DRS 00292 (chivasbrothers.co.uk) assists the expert in such circumstances. However, the second limb of the test requires the domain name to be exclusively referable to the complainant.
In this dispute, the Complainant, its advisers and the Respondent are incorporated or resident in the USA. It is appropriate, therefore, to consider the second limb of the Chivas Test in this context. If the Complainant's brand or name is exclusively referable to the Complainant in the United States, it is conceivable that it would not have occurred to the Complainant that it might need to demonstrate this to an Expert resident in the UK. Accordingly, the Expert determined to invoke §13a of the Procedure and submitted the following by e-mail to Nominet after close of business in the UK on 6 November 2007.
"In considering this Complaint I have concluded that the Complainant's submission does not address specific factors that might prove crucial in the decision. Ordinarily such a deficiency in the Complaint, and its consequences, would lie squarely with and to the possible detriment of the Complainant. However, in this case the Complainant, its advisers and the Respondent are all domiciled in the USA and it is conceivable that the Complainant would not have considered these factors for inclusion in the Complaint.
In the circumstances I believe it to be just to request the Complainant to provide an additional submission in response to the questions set out below.
The Complainant is requested to provide an additional submission by 12 November 2007 (such submission to be subject to the declarations made in the original Complaint dated 5 September 2007) to demonstrate:
1. the reputation and extent of public awareness of its business and the name "Stampin' Up!" in the United States as a whole or in specific (and identified) States if there is a significant variation across the United States;
2. the reputation and extent of public awareness of its business and the name "Stampin' Up!" in the United Kingdom.
On the assumption that the Complainant provides an additional submission by the required date, the Respondent should be provided with the opportunity to comment on this additional submission by 15 November 2007. Any response by the Respondent beyond comment on the additional submission will be disregarded."
Nominet provided the Complainant's additional submission to the Expert by e-mail on 13 November 2007 and informed the Expert by e-mail on 16 November 2007 that the Respondent had not provided a response to the additional submission.
e. The Facts
Complainant
The Complainant has traded under the name STAMPIN' UP! since 1989 and was incorporated in the State of Utah, USA in 1998. It is a $240 million direct sales company that designs and manufactures decorative rubber stamp sets and supplies accessories for the home décor, greetings cards, craft projects and scrapbooking market in the United States and Canada through a network of some 50,000 demonstrators. From 2001 to 2005 the Complainant is listed by the Utah 100 group as one of the fastest growing companies in Utah.
The Complainant is launching its products into France, Germany and the UK in November 2007.
Respondent
The Respondent is a non-trading individual resident in the USA.
The Respondent registered the Domain Name on 17 January 2005.
f. The Parties' Contentions
The Complaint
The Complainant contends that it has Rights in the name STAMPIN' UP!, which is similar or identical to the Domain Name, because:
a. The Domain Name is identical to Complainant's STAMPIN' UP! mark once the domain suffix is discounted.
b. The Complainant trades under the name STAMPIN' UP! and has done so continuously since 1989. Submitted with the Complaint in support of this claim are the following print outs from the web sites of:
i. the Secretary of State for the State of Nevada showing a Nevada State trademark registration for the service mark STAMPIN' UP! dated April 14, 1989;
ii. the Secretary of State for the State of Utah showing that Complainant registered in Utah as a corporation under the name Stampin' Up! Inc. in 1998;
iii. WIPO showing Complainant's international registration under the Madrid Protocol for the mark STAMPIN' UP! dated July 3, 1997;
iv. the German Patent and Trademark Office showing Complainant's registration for the mark STAMPIN' UP! dated March 12, 1997; and
v. the United States Patent and Trademark Office showing Complainant's registration for the mark STAMPIN' UP! dated September 18, 1990.
c. The Complainant provides goods and/or services under the name STAMPIN' UP! and has done so since at least 1989. Submitted with the Complaint are the following materials in support of this claim:
i. items b(i) to b(v) above;
ii. the Stampin' Up! catalogue from 1990;
iii. the Stampin' Up! catalogue from 2002-2003.
d. The Complainant has registered the service mark STAMPIN' UP! pursuant to the Madrid System for the International Registration of Trademarks, in which registration Great Britain is listed as a designated country under the Madrid Protocol. The date of registration is July 3, 1997. The registration number is 682902. Submitted with the Complaint is a printout from the web site for the World Intellectual Property Organization evidencing the registration.
The Complainant contends that the Domain Name in the hands of the Respondent is an Abusive Registration because:
a. It was primarily registered for the purposes of selling, renting or otherwise transferring it to Complainant or Complainant's competitor at a price greater than his costs. Complainant has been unable to confirm this because Respondent opted-out of having his address details posted on the WHOIS database and Complainant has therefore been unable to contact Respondent and inquire as to his intentions.
b. In any event, STAMPIN' UP! is a well known trademark belonging to Complainant. There is simply no reason for Respondent to have registered the Domain Name other than to make a profit by selling it to Complainant.
c. Respondent is not presently using the Domain Name commercially or otherwise. A copy of the printout showing the result of attempting to access the Domain Name is submitted with the Complaint.
Complainant's Additional Submission
The Complainant provided the following supplemental exhibits in response to the Expert's request for an additional submission:
a. Photo spread of STAMPIN' UP! Products that will appear in the December 2007 issue of "Crafts Beautiful", an art and crafts magazine published in the UK (public distribution of the magazine commences on 15 November).
b. Three separate e-newsletters that have been sent to individuals across the UK who have made enquiries regarding STAMPIN' UP! over the past few weeks.
c. Print outs from www.stampinup.com:
i. listing some of the creative awards that STAMPIN' UP! has received over the years;
ii. describing the history of STAMPIN' UP!;
iii. announcing STAMPIN' UP!'s intention to expand into France, Germany and the UK in November 2007;
iv. announcing an international honour awarded to STAMPIN' UP!'s founder and CEO Shelli Gardner;
v. announcing the demonstration of STAMPIN' UP! products on a national television show in the US.
d. Spreadsheet showing the quantity of STAMPIN' UP! catalogues sold in 2006-2007.
e. Spreadsheet showing the number of STAMPIN' UP! distributors in the US.
The Response
The Respondent did not reply.
Respondent's Reply to Complainant's Additional Submission
The Respondent did not reply.
g. Discussion and Findings
General
To succeed in this Complaint, the Complainant has to prove to the Expert on the balance of probabilities, pursuant to §2 of the Policy, both limbs of the test that:
1. it has Rights in respect of a name or mark identical or similar to the Domain Name; and
2. the Domain Name, in the hands of the Respondent, is an Abusive Registration.
Complainant's Rights
Rights is defined in §1 of the Policy as including, but not limited to, rights enforceable under English law, but a complainant may not rely on rights in a name or term that is wholly descriptive of the complainant's business. The wholly generic domain suffix ".co.uk" is discounted for the purposes of establishing whether a complainant has Rights in a name or mark which is identical or similar to a domain name.
The Complainant is the proprietor of trade mark rights in the USA and in Europe in the name STAMPIN' UP! and the registration of the mark pre-dates the Respondent's registration of the Domain Name (by almost 15 years in the USA). The Complainant's 2003 catalogue sets out its position in respect of its trademarks (which include several other marks using the word STAMPIN') and the rights granted to purchasers of its products to sell hand-stamped artwork using its copyrighted designs sold under the STAMPIN' UP! brand. The everyday words "STAMPING" (without the "G") and "UP" are combined with punctuation marks to form a distinctive and stylised mark. The name is not wholly descriptive of the Complainant's business.
The Domain Name is a combination of the words "STAMPING" (without the "G") and "UP", and is identical to the Complainant's mark except for the punctuation marks 'and !. Punctuation marks are not available for use in domain names (being classed as "illegal characters") and are therefore discounted for the purposes of comparison of the Complainant's mark with the Domain Name.
The Complainant has, for the purposes of the first limb of the test, established Rights in a name STAMPIN' UP! that is identical to the Domain Name.
Abusive Registration
The Complainant alleges Abusive Registration under one of the factors set out in a non-exhaustive list in §3 of the Policy which may be evidence that the Domain Name is an Abusive Registration, namely §3a i A:
Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name.
The Complainant says it has been unable to confirm this because the Respondent has opted out of having his address details posted on the WHOIS database and the Complainant has therefore been unable to contact the Respondent and inquire as to his intentions. The Complainant points out that STAMPIN' UP! is a well known trademark and there is simply no reason for the Respondent to have registered the Domain Name other than to make a profit by selling it to the Complainant.
The Complainant has not been able to adduce evidence to support this assertion since the Domain name is not in use and it has not been able to contact the Respondent. The Respondent has chosen not to respond to the Complaint. The Dispute falls within the ambit of the Chivas Test (DRS00292) which states:
Where a respondent registers a domain name:
1. which is identical to a name in respect of which the complainant has rights; and
2. where that name is exclusively referable to the complainant; and
3. where there is no obvious justification for the respondent having adopted that name for the domain name; and
4. where the respondent has come forward with no explanation for having selected the domain name
it will ordinarily be reasonable for an expert to infer first that the respondent registered the domain name for a purpose and secondly that that purpose was abusive.
The first and fourth limbs of the test are satisfied.
In respect of the third limb, it is possible, given the use of everyday words, that the Respondent registered the Domain Name for a non-abusive purpose. The Respondent is a private individual residing in the USA and yet he has chosen to register a UK domain name combining two dictionary words where one is deliberately shortened by dropping the "g" and where the resulting combination is identical to the Complainant's mark (except for illegal characters). In the Expert's view the Respondent could only have registered the Domain Name for two reasons: (1) because he knew of the Complainant's mark and registered the Domain Name for an abusive purpose, or (2) because he had a specific purpose in mind which required a UK domain name using the combination of these words and the dropping of the "g". The point has not been raised in the Complaint but the Expert questions whether the domain name stampingup.co.uk is (or was) available and if so why the Respondent did not register that domain name if he had a specific purpose in mind? Furthermore, if the Respondent registered the Domain Name for a non-abusive purpose, then surely it would be of some value to him and worth the effort of responding to the Complaint and the Expert's request for a further submission? In the absence of an explanation by the Respondent the Expert concludes that there is no obvious justification for the Respondent, as a private individual, to adopt the Complainant's name as a Domain Name. The following quote from DRS 03414 (KonoPizza UK Ltd v Sally Fox) is helpful in this respect:
"Whilst I am sure KonoPizza would not claim to be on the same business plane as Marks and Spencer; in my view the name KonoPizza is distinctive – and is clearly a made-up name to express the properties of the product. It is difficult to see why a private individual might independently decide upon that name or what motive the Respondent could have had for acquiring the Domain Name. It seems to me, in the absence of any explanation from the Respondent, that the only purpose for a private individual to register the Domain Name was at best mischievous. Under the circumstances, I must draw the conclusion that this registration was abusive and took unfair advantage of the Complainants rights."
In respect of the second limb of the test, the further submission by the Complainant has evidenced the reputation and scale of the Complainant's business in the USA but has also provided some pointers that might suggest the name is not exclusively referable to the Complainant. For example, in the e-newsletters there is a statement that:
"Stampin' Up! is a direct sales company, and our products are not sold in shops. Instead our products are sold through a network of independent sales consultants called "demonstrators"."
One conclusion that might be drawn from this statement is that people interested in crafts and so on will be aware of STAMPIN' UP! whereas the wider population may not. Conversely, there are examples in the UK of direct selling organisations with a name that is exclusively referable to the organisation. The Complainant has demonstrated a reputation in the State of Utah (for example, through awards and news items and as an employer) and nationally in the USA (for example, through the founder's nomination as a finalist in the annual "Stevie" awards for Women in Business, as reported in the New York Post, and through demonstration of its products on a weekly US TV show (Paint, Paper and Crafts) with an audience of over 53 million households). The Expert also notes that the second highest number of demonstrators is identified in the Respondent's home state.
On the balance of probabilities the Expert is prepared to accept that in the USA the name STAMPIN' UP! is exclusively referable to the Complainant.
The Complainant also asserts that since the Respondent is not using the Domain Name commercially or otherwise then it must be an Abusive Registration. Under §3b of the Policy the failure by the Respondent to use the Domain Name for the purposes of e-mail or a web-site is not in itself evidence that the Domain Name is an Abusive Registration. However, in the absence of a response from the Respondent, even when given a second opportunity, the Expert is entitled to draw such inferences as the Expert deems appropriate. In the circumstances, the Expert concludes that the Respondent's failure to use the Domain Name for almost 3 years, and a failure to come forward with an explanation and/or to demonstrate his preparations for a legitimate use, is indicative of an abusive purpose.
Conclusion
The Expert finds that the Respondent registered the Domain Name for the purpose set out in §3a i A of the Policy, or for some other abusive purpose, which is an Abusive Registration in contravention of the Policy.
h. Decision
In light of the foregoing findings, namely that the Complainant has Rights in a name which is identical to the Domain Name, and the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name, stampinup.co.uk, be transferred to the Complainant.
Signed: Steve Ormand
Date: 20 November 2007