National Arbitration Forum
DECISION
Demand Media, Inc. v. Unity
4 Humanity, Inc.
Claim Number: FA0709001082079
PARTIES
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.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <expertvillage.tv>, registered with Wild West
Domains.
PANEL
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.
PROCEDURAL HISTORY
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 <expertvillage.tv> 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 postmaster@expertvillage.tv 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
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 <expertvillage.tv> 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 <expertvillage.tv> 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 <expertvillage.tv> 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 name “primarily 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
<expertvillage.com> website was named one of the 50 best sites of 2007 by
Time magazine.
FINDINGS
Complainant operates a website at
<expertvillage.com>. 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 <expertvillage.com>
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 <expertvillage.tv>.
On June 11, 2007, Complainant’s predecessor-in-interest,
Pagewise.com, Inc., sent an e-mail to Respondent stating that the <expertvillage.tv> 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 ExpertVillage.tv (there are no links on
the site that ExpertVillage.tv 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.tvhttp://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
ExpertVillage.tv.” Evidently, there was
no further communication between Respondent and Complainant before the filing
of this Complaint on September
25, 2007.
Respondent’s <expertvillage.tv> 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.
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
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 <expertvillage.com> 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 BroadcastAmerica.com, 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 <expertvillage.tv>
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 <clairol.tv> is
identical to the complainant’s CLAIROL marks).
Although Respondent contends that the <expertvillage.tv> 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
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 <expertvillage.tv> domain
name for this purpose. Despite Respondent’s ownership of the <expertvillage.tv> domain name for almost a year, the <expertvillage.tv> 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. StMoritz.com, D2000-0617 (WIPO Aug. 17, 2000)
(finding a bona fide use of the <stmoritz.com> 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).
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 <expertvillage.tv> 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 Paigwise.com, Inc. before the sale of <expertvillage.com> 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 <expertvillage.tv> 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).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <expertvillage.tv> domain name be TRANSFERRED
from Respondent to Complainant.
Linda M. Byrne, Panelist
Dated: November 27, 2007
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