Intermark Communications Inc. v. Free Debt Consolidation Co.
Claim Number: FA0111000102613
The Complainant is Intermark Communications, Inc., Farmingdale, NY (“Complainant”) represented by Julian Spirer, of Spirer and Goldberg. The Respondent is Free Debt Consolidation Co., Vancouver, BC (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freedebtconsolidation.net>, registered with Innerwise, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James Alan Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on November 27, 2001; the Forum received a hard copy of the Complaint on November 27, 2001.
On December 5, 2001, Innerwise, Inc. confirmed by e-mail to the Forum that the domain name <freedebtconsolidation.net> is registered with Innerwise, Inc. and that the Respondent is the current registrant of the name. Innerwise, Inc. has verified that Respondent is bound by the Innerwise, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 5, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 26, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on December 26, 2001.
On January 7, 2002 an additional submission was received from Complainant. On January 7, 2002 there was an objection to the late submission filed by the Respondent which noted among other things that Complainant’s additional submission was more than 14 days after the date the Complainant acknowledged receiving the Response. In accordance with Supplemental Rule, the Panel did not consider the additional submission from the Complainant.
On January 10, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James Alan Crary as Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
Complainant asserted that the disputed domain name <freedebtconsolidation.net> is confusingly similar to Complainant’s domain name and mark <freedebtconsolidation.com>. Respondent offered credit counseling referral services identical to those offered by Complainant at <freedebtconsolidation.com>.
Complainant had used the <freedebtconsolidation.com> domain since April 26, 2001. On August 28, 2001, Respondent registered the domain name <freedebtconsolidation.net>, the disputed domain name herein. It was asserted that Respondent had no right or legitimate interest in the Complainant’s service mark or domain name. Respondent’s use of the disputed domain name was in connection with an unfair offering of goods or services identical to those offered by Complainant.
To the best of Complainant’s knowledge, Respondent had never been commonly known by <freedebtconsolidation.net>.
Respondent was making an illegitimate use of the disputed domain name with intent for commercial gain by misleadingly diverting consumers. By using the disputed domain name, Respondent had intentionally attempted to attract for commercial gain Internet users to Respondent’s web site by creating the likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement on it’s web site.
It was asserted based on Complainant’s information and belief that Respondent profited merely from offering services identical to those offered by Complainant and that Respondent did no advertising. Respondent relied on traffic derived from consumers who typed an incorrect extension onto Complainant’s domain name or service mark. Complainant asserted that it advertised extensively and received in excess of 800,000 hits per month on its web site monthly.
The Complainant sought that the Panel transfer the disputed domain name to it.
Respondent maintained that the disputed domain name consisted of a combination of generic words “free”, “debt”, and “consolidation”. The term “freedebtconsolidation” is a standard descriptor in the debt management industry similar to a phrase such as “low interest home loans” or “factory direct rebates”, or “no load mutual funds”. Respondent asserted Complainant’s alleged mark did not appear to be a trade or service mark registered with the U. S. Patent and Trademark Office. A trade or service mark in the phrase “free debt consolidation” was at best a very weak mark.
Respondent had a legitimate interest in the disputed domain name. Respondent had spent thousands of dollars to obtain, advertise, and use the disputed domain name before any notice from the Complainant objecting to Respondent’s ownership and use.
Respondent never offered to sell the name to the Complainant or any other party. Respondent had never attempted to pass themselves off as affiliated or sponsored by the Complainant. Respondent legitimately operated its business using the disputed domain name, prior to the filing of the Complainant.
Complainant maintained that the disputed name was not confusingly similar to Complainant’s registered name. Complainant was really seeking to monopolize all domain names containing the words “free debt consolidation”.
Branding a trade or service mark or even a business name takes several years and sometimes decades. Respondent did not establish a brand name by registering its .com four months prior to Respondent. Complainant failed to provide any evidence to substantiate its claim that <freedebtconsolidation.com> receives 800,000 hits per month.
Respondent asserted that it had rights and legitimate interests in the domain name. Respondent operated a commercial business using the disputed domain name. From the outset, the Respondent provided relevant content on the site. Substantial advertising funds were spent to promote the site.
The web site at <freedebtconsolidation.net> offered free help to consumers with debt management. It was asserted that approximately $15,000 in development and advertising costs was incurred including $199 spent August 31, 2001 to advertise the site on the Yahoo Directory. This occurred long before the Complaint. Respondent asserted that the holder of a trademark may not remove a word from the English language by acquiring a trademark rights to it.
A review of the on-line database maintained by the United States Patent and Trademark office showed various trademarks containing the words “free” “debt” and “consolidation” but not as a single phrase.
Respondent asserted that the Complainant had not acted in bad faith within the meaning of 4(b)(ii) “to prevent the owner of a trademark or service mark from reflecting the mark in a corresponding domain name …”. Its registration of the disputed domain name had not prevented the Complainant from registering the phrase “freedebtconsolidation” using any of the hundreds of top-level domain extensions. Further, Respondent had no pattern of registering a domain names. Respondent denied that there was any “initial interest, confusion”.
The Respondent maintained that Complainant had failed to meet the burden of proving bad faith registration and use.
C. Additional Submissions
As was noted above, Complainants additional submission was not field timely and, therefore, did not comply with the Forum’s Supplemental Rule 7, and, therefore, it was not considered by the Panel.
1. Complainant is the owner of the domain name <freedebtconsolidation.com>, registered on April 26, 2001. Credit counseling services are offered to the public on the web site.
2. Respondent is the holder of the disputed domain name <freedebtconsolidation.net> registered August 28, 2001. Respondent offers competing consumer credit counseling services at its web site.
3. The words “free,” “debt,” and “consolidation” are generic words.
4. The evidence failed to establish that Complainant had protectable trademark rights under the Policy.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) 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) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Clearly the disputed domain name <freedebtconsolidation.net> is identical to <freedebtconsolidation.com>. The fact that one has a different TLD is insufficient to distinguish the two. See Rollerblade, Inc. v. McCardy D2000-0429 (WIPO June 25, 2000). But there is insufficient evidence to establish that Complainant has protectable trademark rights under the Policy. Although the Complainant refers to a “registered” trademark, Complainant advanced no proof of a registration.
The alleged trademark is composed of purely generic terms which are not entitled to trademark protection.
The evidence did not support a finding that the domain name registered by Complainant four months prior to Respondent’s registration was famous or had acquired a secondary meaning. Complainant alleges that its site receives 800,000 hits on a monthly basis but there is no supporting evidence for this assertion. Complainant submitted insufficient evidence to establish either fame or strong secondary meaning in the mark such that consumers are likely to associate the disputed domain name with the Complainant. The domain name holder is not entitled to exclusive use of the disputed domain name. See Car Toys, Inc. v. Informa Unlimited, Inc. FA 93682 (Nat Arb Forum Mar 20, 2000); See also CRS Tech. Corp. v. Condenet, Inc. FA 93547 (Nat Arb Forum Mar 28, 2000).
Rights or Legitimate Interests
The Panel concluded that the Respondent had rights and legitimate interests in the disputed domain name. The evidence supported a finding under Policy 4(c)(i). The Respondent submitted evidence that from the time of its registration of the disputed domain name in August 2001 it operated and promoted a debt consolidation counseling service for consumers. The words “free” “debt” and “consolidation” are all generic in nature. The phrase free debt consolidation is also generic. Complainant had made no showing that it is entitled to be granted exclusive use of the domain name, <freedebtconsolidation.net> as many other organizations use the generic words which comprise the domain name. See Philippe Tenenhaus v. Telepathy, Inc. FA 94355 (Nat Arb Forum May 17, 2000).
Registration and Use in Bad Faith
The Complainant failed to establish registration and use in bad faith. There is no evidence indicating that Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant or to a competitor. Policy 4(b)(i). The facts herein do not support a finding that Respondent registered the domain name in order to prevent Complainant from reflecting the alleged mark in a corresponding domain name. There was no evidence to show that Respondent engaged in the pattern of such conduct. Policy 4(b)(ii).
The evidence did not support a finding that the domain name was registered primarily for the purpose of disrupting the business of a competitor. While it is true that the Respondent is an apparent competitor of the Complainant, the evidence did not support a finding that the primary purpose of Respondent was to disrupt Complainant’s business. The evidence was silent on that point.
The facts of this case do not support a finding of bad faith under Policy 4(b)(iv). The gist of Complainant’s assertions is that consumers surfing the Internet who type in the wrong TLD when searching for free debt consolidation services would be diverted to Respondent’s site to the detriment of the Complainant. There can be no “initial interest confusion” where the subject trademark constitutes an ordinary English word and the domain name holder has made no attempt to confuse potential consumers by associating itself with the Complainant without permission. See Brookfield Communications, Inc. v. West Coast Entertainment, Corp. 174 F.2d 1036, 1065, (9th Cir. 1999).
The Panel concluded that the evidence was insufficient to establish any of the three elements necessary to establish an abusive domain name registration under the Policy. It was therefore concluded that the Complainant was not entitled to relief under the Policy.
The Panel directs that the Respondent is entitled to retain the disputed domain name <freedebtconsolidation.net>.
Jams Alan Crary, Panelist
Dated: January 23, 2002
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