National Arbitration Forum

 

DECISION

 

National Patent Services Inc. v. Jay Bean c/o MDNH, Inc.

Claim Number: FA0708001071869

 

PARTIES

Complainant is National Patent Services Inc. (“Complainant”), represented by Lee Kim, of Tucker Arensberg, PC, 1500 One PPG Place, Pittsburgh, PA 15222.  Respondent is Jay Bean c/o MDNH, Inc. (“Respondent”), represented by John Berryhill, 4 West Front Street, Media, PA 19063.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nationalpatent.com>, registered with Moniker Online Services, Inc.

 

PANEL

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.

 

P. Jay Hines and Q. Todd Dickinson as Panelists and David S. Safran, Chair.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 29, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 4, 2007.

 

On August 30, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <nationalpatent.com> domain name is registered with Moniker Online Services, Inc. and that the Respondent is the current registrant of the name.  Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 September 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 2, 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 postmaster@nationalpatent.com by e-mail.

 

A timely Response was received and determined to be complete on October 2, 2007.

An Additional Submission was received from Complainant on October 5, 2007 and found to comply with Supplemental Rule 7.

 

On October 15, 2007, an Additional Submission was received from Respondent and found to comply with Supplemental Rule 7.

 

On October 18, 2007, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed P. Jay Hines and Q. Todd Dickinson as Panelists and David S. Safran, Chair.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that the domain <nationalpatent.com> is confusingly similar to the NATIONAL PATENT SERVICES trademark in which it has rights and that Respondent is making non-legitimate, unfair, commercial uses of this domain for commercial gain via click‑through services that are linked to direct competitors of Complainant. Complainant also contends that Respondent’s willingness to sell the domain for $45,000 is evidence of bad faith registration and use.

 

B. Respondent

Respondent contends that the term “National Patent” is commonly used in the field of intellectual property, that Complainant’s registration was initially refused and forced to the Supplemental Register due to the descriptiveness of the mark, and when converted to the Principal Register two of the three words of the mark were disclaimed, so that, as a result, Complainant’s rights in its trademark NATIONAL PATENT SERVICES must be narrowly construed and limited to the mark as a whole.  Respondent asserts that it is well known for registering common words and phrases as domain names for use in connection with paid advertising related to the meaning of the corresponding words and phrases and points to cases decided in its favor in this respect. Respondent also contends that it is entitled to use the domain <nationalpatent.com> in connection with providing advertising and directory services for IP law providers given the widespread and ordinary use of “national patent” in connection with IP legal services and that Complainant has failed to establish that Respondent’s registration and use was in bad faith since cases hold that it takes more that just showing pay-per-click use to establish bad faith.. 

 

C. Additional Submission of Complainant

In its Additional Submission Complainant asserts that the incontestability of its federal registration precludes Respondent’s ability to raise the issue of descriptiveness relative to its trademark.  Furthermore, Complainant contends that bad faith can be inferred from the combination of the similarity of the domain to its trademark and the use thereof in connection with pay-per-click commercial exploitation of the domain name.

 

D. Additional Submission of Respondent

In its Additional Submission, Respondent contends that Complainant’s Additional Submission is improper and should not be considered since such a submission is not authorized under the rules.  Furthermore, Respondent contends that the incontestability of Complainant’s trademark is not relevant since the validity of the registration is not being challenged and such status has no presumptive value relative to use of the generic term “national patent”. Respondent also asserts that none of the cases cited by Complainant with respect to pay-per-click services being evidence of bad faith relate to use of common terms, while those cases cited as supporting Respondent’s position legitimize its use of common terms for pay-per-click advertising services.

 

FINDINGS

The Panel finds that the offer to sell the domain name <nationalpatent.com> was in response to an inquiry, and was not direct, but through the Registrar. 

 

The Respondent's practice of registering common words and using the domains for click-thru advertising, as opposed to registering just for sale, under the circumstances established here, is legitimate to the extent that it has not been shown to be otherwise. Complainant hasn't demonstrated a bad faith pattern of conduct or an intention to disrupt Complainant's business or to direct traffic to competitors.  Furthermore, while some competitive links may show up on Respondent’s <nationalpatent.com> website, there is no evidence that such were intentionally solicited. 

 

DISCUSSION

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

Since the Panel find that Complainant has failed to establish that the domain was registered and is used in bad faith, this element need not be evaluated.

 

Rights or Legitimate Interests

Since the Panel find that Complainant has failed to establish that the domain was registered and is used in bad faith, this element need not be evaluated.

 

Registration and Use in Bad Faith

The Panel finds that Complainant has failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).  See 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); see also Loris Azzaro BV, SARL v. Asterix, D2000-0608 (WIPO Sept. 4, 2000) (“Mere belief and indignation by Complainant that Respondents have registered and are using the Domain Name in bad faith are insufficient to warrant the making of such a finding in the absence of conclusive evidence”).

 

Complainant is correct that, upon Federal registration, the public is charged with constructive notice of the claim of ownership of the mark, and non-owner use of it subsequent to that registration cannot be justified or defended by a claim of innocence, good faith or a lack of knowledge. Such constructive notice is imputed to Respondent. However, constructive notice does not support a finding of bad faith registration.  Collegetown Relocation, L.L.C. v. Concept Software & Techs. Inc., FA 96555 (Nat. Arb. Forum March 14, 2001).

 

Respondent claims that it did not register the disputed domain name with the intent of selling it, but rather in furtherance of its established practice of registering common words and using the domains for click-thru advertising, while the offer to sell the domain name <nationalpatent.com> was in response to an inquiry from Complainant.  The Panel finds that Respondent’s offer to sell the disputed domain name was not made in furtherance of a primary purpose in registering the disputed domain name and, consequently, is not indicative of registration and use in bad faith pursuant to Policy ¶ 4(b)(i).  See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses); see also LifePlan v. Life Plan, FA 94826 (Nat. Arb. Forum July 13, 2000) (“[T]he mere offering [of the domain name for sale], without more, does not indicate circumstances suggesting that Respondent registered the domain name primarily for the purpose of selling, renting, or transferring the domain name to the Complainant as required under [Policy ¶ 4(b)(i)].”).

 

Respondent asserts that it has used the disputed domain name since 2002 to provide paid advertising links to providers of patent services.  Respondent also claims that it has registered other patent-formative names to provide directory services relating to patents.  The Panel finds that Respondent’s use is a bona fide offering of goods or services that does not evidence registration and use of the domain in bad faith pursuant to Policy.  See Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002) (finding that using a domain name consisting of a common descriptive and generic expression as a portal to a website featuring various advertisements and links is a bona fide offering of goods or services).

 

DECISION

Having failed establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <nationalpatent.com> domain name shall NOT be transferred to Complainant and shall be retained by Respondent.

 

 

David S. Safran, Chair

P. Jay Hines and Q. Todd Dickinson, Panelists
Dated: November 1, 2007

 

 

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