National Arbitration Forum




Demand Media, Inc. v. Unity 4 Humanity, Inc.

Claim Number: FA0709001082079



Complainant is Demand Media, Inc. (“Complainant”), represented by Laura J. Winston, of Darby & Darby P.C., 7 World Trade Center, 250 Greenwich Street, New York, NY 10007-0042.  Respondent is Unity 4 Humanity, Inc. (“Respondent”), represented by Enrico Schaefer, of Traverse Legal, PLC, 810 Cottageview Drive, Unit G-20, Traverse City, MI 49684.



The domain name at issue is <>, registered with Wild West Domains.



The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.


Linda M. Byrne as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on September 25, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 26, 2007.


On September 26, 2007, Wild West Domains confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with Wild West Domains and that the Respondent is the current registrant of the name.  Wild West Domains has verified that Respondent is bound by the Wild West Domains 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 October 3, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 23, 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 by e-mail.


On October 16, 2007, Respondent submitted, with Complainant’s Consent, a request to extend the date by which a timely Response could be received.  The National Arbitration Forum subsequently granted this request, extending the date by which a timely Response could be received to November 7, 2007. 


A timely Response was received and determined to be complete on November 6, 2007.  Complainant filed a timely Additional Submission.


On November 14, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Linda M. Byrne as Panelist.



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



A. Complainant

Complainant submits that it is the owner of a pending U.S. trademark application for EXPERT VILLAGE, and that it has used the EXPERT VILLAGE mark since September 2005.  Complainant contends that Respondent’s domain name <> is confusingly similar to Complainant’s EXPERT VILLAGE trademark; that Respondent does not have any rights or legitimate interest with respect to the domain name; and that the domain name has been registered and used in bad faith. 


B. Respondent

Respondent argues that Complainant owned no valid trademark rights in the term “EXPERT VILLAGE” as of the date the <> domain name was registered (February 5, 2007), because Complainant filed its trademark application after that date, and because Complainant had been using the term EXPERT VILLAGE only a year and a half before that date.  Respondent argues that Complainant submitted insufficient evidence to establish that the term “EXPERT VILLAGE” had acquired secondary meaning prior to the registration date of the domain name. 


Respondent argues that it owns a legitimate interest in the domain name because the term “expert village” is generic in nature, and because Respondent has a “legitimate and comprehensive business plan surrounding business anthropology, or more specifically, U4H’s Anthropological Global Web Presence.”  Consistent with this business plan, Respondent’s CEO stated that the <> was “slated for development by September 2008.”


Respondent alleges that it did not act in bad faith with the following explanation: “[W]hen studying in college, Respondent discovered that in each village there were so-called experts from different cultures throughout the world.  Respondent envisioned creating a web site that offered information about these experts from different villages into one centralized location.”


Respondent also argues that it registered the domain name in good faith, in view of the fact that “there is no evidence that Respondent had knowledge of Complainant’s mark when it registered the Disputed Domain,” and because Respondent did not register the domain nameprimarily for the purposes of selling it to the Complainant.”


C. Complainant’s Additional Submission

Complainant argues that Respondent has not proven that the term “village” is descriptive of Complainant’s internet services, and points out that the U.S. Trademark Office did not reject the EXPERT VILLAGE trademark application on the basis that the mark was merely descriptive


Complainant argues that it need not prove secondary meaning in view of the suggestive nature of the EXPERT VILLAGE mark, and that, even if Complainant were required to do so, secondary meaning was established by the fact that Complainant’s website “achieves over one million hits and five million page views per month,” coupled with the Time magazine recognition.  Complainant’s <> website was named one of the 50 best sites of 2007 by Time magazine. 



Complainant operates a website at <>.  Complainant owns a U.S. trademark application for EXPERT VILLAGE (Serial No. 77/157,430, filed April 16, 2007), which covers the following services:  “electronic publishing services, namely, on-line publication of video, text and graphic works of others in the field of fitness, government, politics, national and international affairs, culture, literature, games, music, movies, theatre, training, sports and education; providing information in the field of fitness, national and international news, cultural events, literature, games, music, movies, theatre, training, sports and education via the internet.” The trademark application states that the EXPERT VILLAGE mark has been used since September 2005. 


At Complainant’s <> site, the words “EXPERT VILLAGE” appear at the top of the home page, above the tagline, “World’s Largest How-To Video Site.”  The site contains videos on a wide variety of topics, organized in categories such as Automotive, Bartending, Beauty & Fashion, Crafts, Food & Drink, etc.  According to the home page dated August 17, 2007, the site had 2,125 experts consulted; 22,954 total videos; and 40,968,420 total views.  According to the Complaint, Complainant’s web site receives “over one million hits and five million page views per month.”  Complainant’s site was named as one of the “50 Best Websites of 2007” by Time magazine.


Approximately 17 months after Complainant began to use the mark EXPERT VILLAGE, on February 5, 2007, Respondent registered the domain name <>.


On June 11, 2007, Complainant’s predecessor-in-interest,, Inc., sent an e-mail to Respondent stating that the <> domain name “will create confusion in the marketplace.”  The e-mail also stated, “Consumers are likely to believe this venture is somehow endorsed by, and/or that an association exists between Pagewise and you, particularly given the use of our exact trademark.”


Respondent e-mailed a reply, dated June 11, 2007, which stated, “U4H, Inc. is well aware that Expert Village has a trademark in a very specific field.”  The e-mail continues, “No one ‘owns’ anything on the Internet.  All one owns is the privilege and ability to utilize a domain name for a specific duration of time.  With that said, U4H, Inc. purchased ‘.tv’ domain properties in an effort to contact globally recognized corporations and offer them assistance . . . [.]  The only time we ‘transfer’ domains free of charge is if a corporation would like to develop them with our core consulting team . . . [.]  U4H, Inc. is not profiting from the mere ownership of (there are no links on the site that is forwarded to), we just want to inform, and assist in the development, sale, lease, or renting of this unique .tv property, and assit [sic] Expert Village in reaching markets available to them through the use of flash and media rich content on Channel.ExpertVillage.tv . . . [.]  If I do not hear from you, look forward to receiving a unique proposal that was developed by some of U4H, Inc.’s core consulting team and global web presence architects.”  On August 23, 2007, Respondent’s CEO sent another e-mail to Complainant, concluding with the statement, “Unity 4 Humanity, Inc.’s core team is working on a Preliminary Global Web Presence proposal for you regarding the .tv channel”  Evidently, there was no further communication between Respondent and Complainant before the filing of this Complaint on September 25, 2007.


Respondent’s <> site promotes its “Domain Real Estate Center,” which specializes in “.tv’s” and all “.tv” (ccTLD) . . . .  U4H, Inc. is in the process of developing unique/case specific proposals . . . .”  Respondent’s site does not appear to feature the term “EXPERT VILLAGE” except as part of Respondent’s domain name.      



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


The U.S. service mark registration for the EXPERT VILLAGE mark has not yet issued.  However, under Policy ¶ 4(a)(i), Complainant does not need to hold a registration with a governmental authority provided that Complainant can establish common law rights in its mark through extensive and continuous use of the mark.  See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).  


Complainant has provided adequate proof of its common law rights in the EXPERT VILLAGE mark sufficient to establish rights under Policy ¶ 4(a)(i).  Complainant and its predecessor-in-interest have used the EXPERT VILLAGE mark since at least September 2005 in connection with the <> domain name, which offers how-to videos.  See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).    


The <> domain name is identical to Complainant’s EXPERT VILLAGE mark under Policy ¶ 4(a)(i).  The disputed domain name contains Complainant’s mark in its entirety, with the addition of the country-code top-level domain (“ccTLD”) “.tv.”  The addition of a ccTLD does not adequately distinguish the disputed domain name from Complainant’s mark as a top-level domain is a required element of all domain names.  See World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish [the disputed domain] names from the complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent.”); see also Clairol Inc. v. Fux, DTV2001-0006 (WIPO May 7, 2001) (finding that the domain name <> is identical to the complainant’s CLAIROL marks).     


Although Respondent contends that the <> domain name is comprised of common, descriptive terms, this Panel concludes that EXPERT VILLAGE is an enforceable trademark by virtue of the fact that the EXPERT VILLAGE mark has been used by countless people for over two years, and by virtue of the fact that the U.S. Trademark Office has made no determination that the mark is merely descriptive. See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”). 


Rights or Legitimate Interests


Respondent contends that its use of “dictionary terms is a non-infringing, legitimate use,” and states, “Panels have held that it is not bad faith to resell domain names that incorporate common dictionary terms if the respondent was unaware of complainant’s trademark rights at the time of registration.”  However, this Panel concludes that Respondent was aware of Complainant’s use of the mark EXPERT VILLAGE because Complainant’s site had been in use for almost 1 ½ years before Respondent registered <>, and because of Respondent’s admission in its e-mail to Complainant, “U4H, Inc. is well aware that Expert Village has a trademark in a very specific field.”


Indeed, Respondent’s business model is based upon its registration of .tv domain names that are associated with trademarks that Respondent has chosen, as explained in the e-mail written by Respondent’s CEO, which stated, “U4H, Inc. purchased ‘.tv’ domain properties in an effort to contact globally recognized corporations and offer them assistance . . . .  The only time we ‘transfer’ domains free of charge is if a corporation would like to develop them with our core consulting team . . . .”


Respondent also argues that it owns rights and a legitimate interest in the domain name because it “has taken significant preparations to make a bona fide offering of services related to its ‘business anthropology’ philosophy . . . [.]  Respondent’s expertise on global cultures and technology lead to the discovery that any given indigenous local or global village contains an expert who offers expertise guiding, educating, and leading that particular community.  Respondent intended to utilize <> to offer the information of these experts from each village and information provided by expert social scientists about these villages . . . [.]  Respondent plans to use <> to showcase global communities by studying experts in their own villages.” 


The above explanation is different from the explanation for Respondent’s business as set forth in the e-mail from Respondent’s CEO.  Moreover, Respondent provides no evidence of demonstrable preparations to use the <> domain name for this purpose.  Despite Respondent’s ownership of the <> domain name for almost a year, the <> site makes no reference to business anthropology or village experts.  Moreover, Respondent has not submitted any documentary evidence of its preparations to use the domain name in association with this type of site.  Under the circumstances, this Panel does not find the above argument persuasive to establish legitimate rights in the domain name.  This situation is distinguishable from the cases cited by Respondent and with other cases in which the respondent presented adequate demonstrable preparations to use the disputed domain name in a legitimate manner under Policy ¶ 4(c)(i).  See Kur- und Verkehrsverein St. Moritz v., D2000-0617 (WIPO Aug. 17, 2000) (finding a bona fide use of the <> domain name where it resolved it to a website that provided information about the city of St. Moritz, as well as other countries, general news, and net cafes); see also SFX Entm’t., Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).    


This Panel concludes that Respondent is not commonly known by the <> domain name under Policy ¶ 4(c)(ii).  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark). 


Additionally, Complainant provides evidence that Respondent has offered to sell the <> domain name to Complainant, an allegation Respondent admits in its Response.  This Panel concludes that such an offer is evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).     


Registration and Use in Bad Faith


Although no specific monetary offer was made by Respondent, this Panel concludes that Respondent’s admitted offer to sell the <> domain name to Complainant indicates bad faith registration and use under Policy ¶ 4(b)(i).  In its Response, Respondent states, “[I]t is true that Respondent made representations in the June 11, 2007 email of its willingness to part with the domain name for remuneration.”  The Response also stated, “Respondent is entitled to showcase his business and his ideas in an effort to obtain the highest value he can for a domain he registered in good faith that was desired by, Inc. before the sale of <> and is now desired by the Complainant to further promote its business."  


Respondent asserts that the e-mail provided by Complainant evidencing Respondent’s willingness to sell the disputed domain name should be disregarded by the Panel.  Respondent cites to what appears to be an isolated UDRP decision where a panel made such a determination, however, in that case the information omitted consisted of offers made during settlement negotiations between the two parties, which did not happen here.  Therefore, this Panel has considered the e-mail evidence presented by Complainant.  See Bank of Am. Corp. v. Nw. Free City. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).


Moreover, this Panel determines that the disputed domain name and resulting website is capable of creating a likelihood of confusion as to Complainant’s source, sponsorship, affiliation or endorsement of the disputed domain name and resulting website.  This situation amounts to evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).   


In the June 11, 2007 e-mail from Respondent’s CEO, Respondent admits to having actual knowledge of Complainant’s website and implied that this knowledge dated back to the registration of the <> domain name.  This situation constitutes bad faith registration and use under Policy ¶ 4(a)(iii).  See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also eBay, Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith pursuant to Policy ¶ 4(b)(iv) where the respondent capitalized on the fame associated with the complainant’s EBAY mark and profited from it by diverting users seeking the complainant to the respondent’s website). 



Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.


Accordingly, it is Ordered that the <> domain name be TRANSFERRED from Respondent to Complainant.




Linda M. Byrne, Panelist
Dated:  November 27, 2007






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