Netbooks, Inc. v. Lionheat Publishing
Claim Number: FA0708001069901
Complainant is Netbooks, Inc. (“Complainant”), represented by J. Scott Gerien, of Dickenson,
Peatman & Fogarty,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <netbooks.net>, registered with Network Solutions, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. O’Connor as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 29, 2007.
On August 28, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <netbooks.net> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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”). This decision is being rendered in accordance with the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).
On September 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 26, 2007 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on September 26, 2007.
On October 4, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. O’Connor as Panelist.
Complainant requests that the domain name at issue be transferred from Respondent to Complainant.
Complainant contends that it is the owner of the trademark NETBOOKS (the “Trademark”) and that it is the owner of U.S. Trademark Registration No. 2,064,629 that protects the Trademark for “computer software for accounting”, which registration is valid and subsisting. Complainant contends that it first used the Trademark on September 30, 1995, and that it has a constructive use date of November 20, 1995, the filing date for the application that resulted in its U.S. Registration.
Complainant argues that its U.S. Registration demonstrates that it has trademark rights in the Trademark. Complainant also argues that the domain name at issue is confusingly similar to the Trademark being distinguished only by the generic, top-level domain “.net” under Policy ¶ 4(a)(i).
Complainant contends that Respondent first registered the domain name at issue on March 6, 1997. Complainant contends that, upon information and belief, Respondent has no rights and legitimate interest in the domain name at issue, and contends that Respondent has not been authorized or licensed to use the Trademark in the domain name at issue.
Complainant introduces a printout of a page from a website that Complainant contends is maintained by Respondent using the domain name at issue. Complainant contends that, at this website, the category identified as “Sponsored Listings” includes links that redirect Internet users to click-through advertising, and that Respondent obviously is receiving some financial benefit from that advertising.
Complainant argues that Respondent’s use of the domain name at issue to misdirect Internet users to a website featuring click-through advertising is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use in accordance with Policy ¶ 4(c)(iii).
Complainant contends that, at this website, the category identified as “Popular Categories” includes a “Financial Planning” category. According to Complainant, the latter category links to a second page on the website. A printout of that second page according to Complainant includes various links to those offering financial planning information or services and a further category of “Related Categories.” The latter category includes a link to “Financial Planning Software for Advisor” that is according to Complainant is competitive with Complainant’s accounting software offered under the Trademark.
Complainant argues that Respondent’s use of the domain name at issue to redirect Internet users to a website that features links to financial planning goods and services that compete with Complainant’s goods is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use in accordance with Policy ¶ 4(c)(iii).
Complainant contends that, at this website, a caption appears stating “Coming Soon! This Site is under Construction.” Since Respondent first registered the domain name at issue in 1997, Complainant argues that Respondent’s failure to make active use of the domain name at issue for such an extended period demonstrates Respondent’s lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s name is Lionheat Publishing. Complainant thus argues that Respondent is not commonly known by the domain name in dispute, in accordance with Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s alleged misdirection of Internet users and failure to make active use of the domain name at issue are instances of bad faith under Policy ¶ 4(a)(iii). Finally, Complainant argues that Registrant’s registration of the domain name at issue with constructive knowledge of the Trademark (afforded by Complainant’s U.S. Registration) is another instance of bad faith under Policy ¶ 4(a)(iii).
In support of these contentions, Complainant provides a copy of its U.S. Registration provided by the United States Patent and Trademark Office (‘USPTO”), a USPTO record of an assignment of the Registration to Complainant, a USPTO status report on the Registration, a WHOIS record for the domain name at issue, and two printouts from Respondent’s website. In support of its arguments, Complainant provides cites to numerous NAF and WIPO cases.
Respondent argues that the rights of the Complainant in the Trademark extend only to the goods for which the Trademark has been registered and that it would be unjust in the extreme to allow a complainant to impose wide ranging and totally unnecessary limitations upon the holders of other domain names which operate in a totally different sphere from the business activities of the complainant.
Respondent contends that the Trademark is not sufficiently strong to justify the contention of Complainant that the domain name at issue is confusingly similar to the Trademark. Respondent also contends that the term “netbooks” is widely used on the Internet, mentioning a Google search that produced 231,000 items. According to Respondent, that search found Complainant’s website at <netbooks.com>, but also many other sites operated by businesses other than Complainant.
Respondent argues that the wide use of the term “netbooks” on the Internet has clearly not hindered Complainant in its business. Respondent argues that the cases cited by Complainant are ones in which the brands or organizations were such that their national or world standing were such that confusion and possibilities for deception were easily established. Respondent argues that these cases are not valid in the case of the Complainant, due to the wide use of the term “netbooks.”
Respondent contends that it is not receiving financial benefits for sponsored click-through advertising links. Respondent contends that its registrar without its permission added these links, and that it has asked its registrar to remove the domain name at issue from pages provided by the registrar.
Respondent contends that it intends to use the domain name at issue in a website that offers information and assistance to would-be writers. Respondent apologizes for the delay in utilizing the domain name at issue and asks for forbearance on the part of the authorities with regard to this.
Respondent contends that there has been no intent of bad faith, and that its use of the domain name at issue will be within an area unrelated to the workings of the Complainant similar to the others using “netbooks” on the Internet.
The certification required by ¶ 3(b)(xiv) of the Rules is the minimum to demonstrate the admissibility of the factual contentions made by a complainant, and the certification required by ¶ 5(b)(viii) of the Rules is the minimum to demonstrate the admissibility of the factual contentions made by a respondent. Without certification, a Panel may choose not to consider any factual statements, even in the case of pro se parties.
The Panel gives weight only to those admissible factual contentions that are verified by the documents attached to the submissions, or by affidavits or declarations, or that are admitted by the other party, or of which the Panel can take administrative notice, in accordance with the Panel’s powers under Paragraph 10(d) of the Rules.
In this case, Complainant has provided the required ¶ 3(b)(xiv) certification and additional documents and declarations. The Panel thus finds that all of the factual contentions made by Complainant are admissible and will be given weight as appropriate.
Respondent has failed to provide the required ¶ 5(c)(vii) certification or any other documents, affidavits, or declarations. The Panel thus finds that none of the factual contentions made by Respondent are admissible.
¶ 15(a) of 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.”
¶ 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.
The Panel finds that Complainant has successfully
established rights in the Trademark through proof of its ownership of U.S.
Trademark Registration No. 2,064,629. The
U.S. Trademark Act is clear that the certificate of registration on the
Principal Register, as here, is prima
facie evidence of the validity of the registered mark and the registrant's
exclusive right to use the mark in commerce or in connection with the goods
specified in the registration. 15 U.S.C. §1057 (b). See Reebok Int’l Ltd. v.
While the USPTO did not register Complainant’s mark until May 27, 1997, the Panel finds that Complainant’s rights came into existence at least as early as the date on which Complainant filed its application for registration (November 20, 1995). See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date); see also Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration.”).
Complainant thus had rights in the Trademark prior to the registration of the domain name at issue on March 6, 1997.
Complainant contends that Respondent’s domain name includes Complainant’s mark in its entirety and adds the generic top-level domain (“gTLD”) “.net.” The Panel finds that the addition of the gTLD “.net” is irrelevant in determining whether a domain name is confusingly similar to an established mark under Policy ¶ 4(a)(i). See Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to the complainant’s famous NIKE mark); see also Kabushiki Kaisha Toshiba
v.Shan Computers, D2000-0325 (WIPO June 27, 2000) (finding that the domain name <toshiba.net> is identical to the complainant’s trademark TOSHIBA).
The Panel will not
consider Respondent’s factual contentions relating to the widespread use of
“netbooks” on the Internet, because such contentions are inadmissible for the
reason previously noted. In any event,
any argument based on the weakness of the Trademark is irrelevant. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat.
Arb. Forum Sept. 16, 2002) (“Under
Respondent has argued that it is unjust to extend Complainant’s rights in the Trademark beyond the goods or services for which the Trademark has been registered. Such arguments have no bearing on the issue of confusing similarity, particularly given that Respondent has provided no admissible evidence as to the use of the Trademark by others.
The Panel thus finds that the domain name at issue is confusingly similar to the Trademark and that Complainant has met its burden of proof under ¶ 4(a)(i) of the Policy.
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Policy ¶ 4(c) lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name, for the purposes of ¶ 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
the Respondent is making a
legitimate non‑commercial or fair use of the domain name, without intent
for commercial gain to misleadingly divert consumers or to tarnish the
trademark or service mark at issue.
Respondent does not argue or contend, and Complainant has established, that Respondent is not commonly known by the domain name at issue. The Panel thus finds that Respondent has not established the circumstances of Policy ¶ 4(c)(ii).
If Respondent were to be a national
or resident of the
But, Respondent is a national or
resident of the
Complainant contends that the domain name at issue is in use. The Panel takes administrative notice that the domain name continues to be used as part of a website include sponsored advertising links.
Support for Respondent’s lack of rights or legitimate interest in the domain name at issue comes from Respondent’s use of the domain name to misdirect Internet users to a website featuring click-through advertising and to redirect Internet users to a website that features links to financial planning goods and services that compete with Complainant’s goods. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”).
Respondent’s contentions as to its rights and legitimate interest in the domain name at issue are inadmissible for the reason previously noted. The Panel also notes that Respondent is responsible for the content of any website using the domain name at issue, and cannot pass that responsibility off to its registrar or domain name service provider. See Ideal Prods., LLC v.Manila Indus., Inc., supra (“Respondent cannot duck its responsibility for the site by saying that others choose the content.”) The Panel finds that Respondent has failed to establish the circumstances of either Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
The Panel thus finds that Complainant has met its burden of proof under ¶ 4(a)(ii) of the Policy.
The circumstances of ¶ 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under ¶ 4(a)(iii) of the Policy can be established.
¶ 4(b) of the Policy reads:
[T] he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Proof of ¶ 4(a)(iii) generally requires more than assertions of bad faith. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are
insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Complainant has neither contended nor argued that any of the circumstances of Policy
¶ 4(b)(i), (ii), or (iii) are present. Regarding the circumstances of Policy ¶ 4(b)(iv), Complainant bases its case on the same arguments and contentions that it has advanced for lack of rights and legitimate interest under Policy ¶ 4(a)(ii). But, lack of rights or legitimate interest under Policy ¶ 4(a)(ii) does not automatically translate into a finding of bad faith under Policy ¶ 4(a)(iii). See McNeil Nutritionals, LLC v. Prepress Consultants, Inc., FA 1043195 (Nat. Arb. Forum Sept. 11, 2007).
Policy ¶ 4(a)(iii), including the specific circumstances of ¶ 4(b)(iv), specifically requires proof of the intent of the Respondent, either directly or circumstantially.
All of the cases cited by Complainant in its arguments relating to misdirection or redirection of Internet users involved trademarks that were well known, from which the intent of the respondent could be readily deduced. See Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the [r]espondent could make any active use of the disputed domain names without creating a false impression of association with the [c]omplainant”); Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 7, 2000) (holding that the “domain names are so obviously connected with the [c]omplainants that the use or registration by anyone other than [c]omplainants suggests ‘opportunistic bad faith’”).
Complainant has not established in any way that the Trademark is well known. Complainant has not submitted any advertising or promotional figures for the Trademark, or any samples of advertising or promotion for the Trademark, or any testimonials to the Trademark by customers and others. It also seems inconceivable to the Panel that Respondent’s website using the domain name may have been in use since the registration of the domain name over 10 years ago, without some connection in the mind of Complainant, its customers, or others between the domain name and the Trademark. Absent evidence that the Trademark is well known, the Panel is unwilling to make the deduction that Respondent was proceeding in bad faith in its misdirection or redirection of Internet users.
Another argument made by Complainant is based on Respondent’s passive holding of the domain names at issue. Yet, Complainant has established that the domain name at issue is in use and contains sponsored links. Complainant cannot have it both ways – the acts that establish lack of legitimate interest in this case demonstrate that passive holding is not present.
Finally, Complainant’s argument based on constructive notice is cogent but unpersuasive, in the absence of a showing that the Trademark is well known. See McNeil Nutritionals, LLC v. Prepress Consultants, Inc., FA 1043195 (Nat. Arb. Forum Sept. 11, 2007).
The Panel thus finds that, even given the absence of any evidence by Respondent as to its lack of bad faith, Complainant has failed to make out a prima facie case for bad faith and thus has not carried its burden of proof under ¶ 4(a)(iii) of the Policy.
Complainant not having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the Complaint be dismissed.
Bruce E. O’Connor,
Dated: October 18, 2007
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 Neither Complainant nor Respondent addresses the amount of time that the website using the domain name has been operating.