Darice, Inc. v.
Claim Number: FA0709001082320
Complainant is Darice, Inc. (“Complainant”), represented by Alan
B. Parker, of Reminger & Reminger Co., L.P.A., 1400
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwdarice.com>, registered with Compana, LLC.
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.
Alan L. Limbury as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 27, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 2, 2007.
On September 27, 2007, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <wwwdarice.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 10, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 30, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on October 30, 2007.
An Additional Submission was received from Complainant on November 2, 2007, within the time specified in the Forum’s Supplementary Rule 7.
On November 8, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Alan L. Limbury as Panelist.
On November 13, 2007, the Forum received a document entitled “Respondent’s Objection and Reply to Complainant’s Additional Submission.” Respondent argued that this was within the time allowed under Supplementary Rule 7, since Respondent did not receive notice from the Forum until November 6, 2007 of the filing of Complainant’s Additional Submission on November 2, 2007, and having regard both to the definition of Calendar Days and to the Federal public holiday on 12 November, 2007. The Forum ruled this untimely under Supplementary Rule 7, which sets a deadline of 5 Calendar Days from the date of filing of Complainant’s Additional Submission (which Complainant certified having sent to Respondent by e-mail on November 2, 2007). The Forum nevertheless forwarded the document to the Panel for it to determine whether to take it into account.
Complainant requests that the domain name be cancelled.
Complainant claims the relief it seeks for the following reasons. The disputed domain name <wwwdarice.com>, registered on May 6, 2005, is identical or confusingly similar to Complainant’s trademark DARICE, continuously used in commerce by Complainant and its corporate predecessor since 1970 and registered under Nos. 1,121,883 on July 10, 1979 and 2,787,821 on December 2, 2003 in the Principal Register of the United States Patent and Trademark Office (an acknowledgement of distinctiveness) in respect of a wide variety of goods and services including craft supplies, art supplies, decorative products, jewelry, ornamental materials, and plush, stuffed, and flocked toys and toy animals, dolls, doll houses, and doll and doll house accessories. The disputed domain name is also virtually identical and confusingly similar to Complainant’s domain name <www.darice.com> [<darice.com>], which incorporates the trademark.
The Respondent is not affiliated with the Complainant, and has not been licensed or otherwise authorized to use the DARICE mark. Respondent is not commonly known as “Darice,” “wwwdarice” or “wwwdarice.com.” The Respondent is not using “Darice” or <wwwdarice.com> for any bona fide offering of goods or services. The Respondent is not making a legitimate non-commercial or fair use of <wwwdarice.com> and does not make any legitimate non-commercial or fair use of the DARICE mark.
The Respondent’s registration and use of <wwwdarice.com> are in bad faith. To Complainant’s knowledge and belief, the Respondent had actual knowledge of Complainant’s DARICE trademark, and/or of the Complainant’s legitimate <darice.com> domain name at the time Respondent registered <wwwdarice.com>. Even if Respondent were unfamiliar with Complainant’s trademark and domain name, Respondent would have discovered Complainant’s mark and domain name upon performing a trademark search. The Respondent uses the domain name <wwwdarice.com>, which is identical or confusingly similar to Complainant’s mark, for Respondent’s commercial benefit by receiving pay per click fees and by diverting Internet users to Complainant’s competitors. Such conduct is harmful to the business of Complainant, may tarnish Complainant’s reputation, diminishes the goodwill of Complainant’s mark and is evidence of bad faith registration.
Additionally, the Respondent uses the domain name in a manner that creates a likelihood of confusion with the legitimate DARICE mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website by the Complainant.
Respondent says Complainant fails to discharge its burden of proof and that the Complaint is exceedingly deficient on facts, arguments and authorities. Although Complainant possesses two registered trademarks for DARICE, Complainant lacks exclusive rights to that name because it is also a given name in common use. Respondent points to Darice de Cuba (weblog), Daricemichelle (photography), Darice Designs, Darice Rollins (movie producer), Darice Lang (manager, online communication), Darice Bailer (author), Darice (Darci) Terlizzi (graphic designer) and Darice Spinelli (winemaker).
Complaints alleging cybersquatting of trademarks comprising given names
have been rejected: Etam, plc v.
Respondent says it has rights and legitimate interests in the disputed domain name. It offers targeted advertising searches through links provided by Yahoo or Google, triggered by search requests entered by computer users. Respondent has no control over what terms advertisers bid on at Google or Yahoo nor over what terms appear on its websites.
. Complainant is attempting to both have its cake and eat it too. Complainant clearly purchases advertisements from Google and Yahoo and then attempts to complain when those very ads appear on the disputed domains where potential users can follow those very advertisements. Panels have recognized that the domain name holder is not responsible for the potentially offending content where they have contracts with third parties, such as Google or Yahoo, that control that content: Admiral Ins. Servs. v. Dicker, D2005-0241 (WIPO June 4, 2005); Experimental Aircraft Association (EAA) v. EAA.COM, FA 206309 (Nat. Arb. Forum Dec. 16, 2003).
As in Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002), Respondent registered and began using the disputed domain name as a portal to a commercial website which features various advertisements and links to various websites long before receiving notice of the present dispute. Using a generic phrase to connect the generic concepts with search keywords in order to provide advertisers with targeted customer traffic is a legitimate business: GLB Servicos Interativos S.A. v. Ultimate Search Inc., D2002-0189 (WIPO May 29, 2002); Miller Brewing Co. v. Yunju Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003).
Complainant has failed to demonstrate bad faith on the part of Respondent. The argument that Respondent should have conducted a trademark search has been rejected: Advanced Drivers Educ. Prods. & Training, Inc. v. MDNH, Inc, FA 567039 (Nat. Arb. Forum Nov. 10, 2005).
Instead of the long rejected constructive notice argument, even where the complainant is well known it its niche but not in the larger market place the general rule is that the domain name is owned by the first to register: Macmillian Publishers Ltd., Macmillan Magazines Ltd. & HM Publishers Holdings Ltd. v. Telephathy, Inc., D2002-0658 (WIPO Sept. 27, 2002); Kiwi European Holdings B.V. v. Future Media Architects, Inc., D2004-0848 (WIPO Jan. 4, 2005). Ownership of a domain name comprising a common word will not be disturbed unless it is clear that the use involved is seeking to capitalize on the goodwill created by the mark holder: Match.com LP v. Zag & NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004). A complainant must proffer evidence that demonstrates that respondent has specifically intended to confuse consumers seeking out complainant. There is no such proof here.
this case, the Respondent in
In McMullen Argus Publ’g Inc. v. Moniker Privacy Services/Bean, MDNH, Inc., D2007-0676 (WIPO July 24, 2007), the Panel found against bad faith registration and noted that “pay-per-click websites are not in and of themselves unlawful or illegitimate” and that the Complainant “has provided little evidence (as opposed to allegations of counsel) that Respondent selected the disputed domain name for a free ride upon Complainant’s mark.” The same holds true here. As noted, the Complaint contains no evidence but rather allegations of counsel that bad faith must exist because bad faith must exist. The Panel in McMullen noted “Complainant has made no showing that consumers and Internet users have been or are likely to be confused or to associate Respondent’s services with Complainant’s.” Nor has there been such a showing here other than mere unsubstantiated allegations.
Unless a trademark is targeted by a domain, pay-per-click revenue does
“not constitute evidence of bad faith registration or use”:
Respondent did not register the disputed domain name to sell to Complainant or any other party nor has there been any such allegation by Complainant.
C. Additional Submissions
While the Forum’s Supplemental Rules permit the filing of submissions in addition to the Complaint and Response, they cannot require the Panel to consider them because to do so would be inconsistent with paragraph 12 of the Rules, which does not contemplate unsolicited submissions after the Complaint and Response and gives the Panel the "sole discretion" as to acceptance and consideration of additional submissions. See Eskimos, Inc. v. Phillips, FA 105950 (Nat. Arb. Forum May 15, 2002); Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) and Alain-Martin Pierret v. Sierra Tech. Group, LLC, FA 472135 (Nat. Arb. Forum July 1, 2005).
Thus, notwithstanding Supplemental Rule 7, no party has the right to insist upon the admissibility of additional evidence: SembCorp Indus. Ltd. v. Hu Huan Xin, D2001-1092 (WIPO Nov. 26, 2001). It is appropriate to consider the circumstances of each case before deciding whether to admit unsolicited additional submissions: Toyota Jidosha Kabushiki Kaisha v. S&S Enterprises Ltd., D2000-0802 (WIPO Sept. 9, 2000).
The overriding principle of Rule 12 enables the Panel both to disregard unsolicited submissions received within the time limits contemplated by the Forum’s Supplemental Rule 7 and to take into account unsolicited submissions received outside those time limits.
In this case, with the exception of a denial of Respondent’s assertion that Complainant purchases advertisements from Google and Yahoo!, Complainant’s Additional Submission does not raise evidence not reasonably available to Complainant at the time of its initial submission, nor arguments by Respondent that Complainant could not reasonably have anticipated. Additional submissions having those characteristics are usually rejected for the reasons given in Goldline Int’l, Inc. v. Gold Line, D2000‑1151 (WIPO Jan. 8, 2001).
Here, however, Complainant’s Additional Submission also contains copies of what Complainant claims are pages of Respondent’s website reached through the disputed domain name. This material was clearly available to Complainant when filing the Complaint. Its inclusion in the Additional Submission involves Complainant in splitting its case and amounts to an amendment to the Complaint, in violation of the Forum’s Supplemental Rule 7(f).
In light of the critical significance of the content of Respondent’s website to the outcome of this case, the Panel has anxiously considered whether Respondent will suffer prejudice should that material be admitted into evidence notwithstanding that Complainant should have included it in the Complaint and whether the Respondent should be given an opportunity to respond, should the Panel decide to admit that material. The Panel has had regard to the Respondent’s Objection and Reply to Complainant’s Additional Submission in considering these questions. In a section entitled “Response to Complainant’s Additional Submission,” Respondent says “there is really only one point that merits a response,” and then makes a point having nothing to do with the accuracy or otherwise of those website pages.
The Panel concludes that the Respondent, having had an opportunity to contest the alleged content of its website, and having failed to do so while taking the trouble to address a different issue, is to be taken as accepting that its website content is accurately reproduced in Complainant’s Additional Submission. Accordingly the Panel considers that the Respondent would not be prejudiced by the admission into evidence of the content of its website and that Respondent has already had and chosen not to take advantage of an opportunity to respond to it.
Accordingly the Panel admits Complainant’s Additional Submission insofar as it contains the pages of Respondent’s website and the denial that Complainant purchases advertisements from Google and Yahoo!. Complainant’s Additional submission is otherwise rejected.
Complainant has established all the elements entitling it to relief.
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.
Respondent does not dispute that the domain name <wwwdarice.com> is identical or confusingly similar to Complainant’s registered trademark DARICE and the Panel so finds. In making the comparison between the trademark and the domain name, the letters “www” and “.com” are inconsequential and may be disregarded. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding <wwwbankofamerica.com> confusingly similar to the registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 16, 2002) (holding confusing similarity because the prefix “www” does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from the NEIMAN-MARCUS mark); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 26, 2001) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
Complainant has established this element of its case.
Paragraph 4(c) of the Policy lists three circumstances that can demonstrate a registrant’s rights or legitimate interest in the disputed domain name:
(i) before any notice to you of the dispute, your 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 or services;
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark.
It is common ground that Respondent is not affiliated with or a
licensee of Complainant; is not authorized by Complainant to use the DARICE
mark as a domain name or otherwise; and is not commonly known by the domain
name. Respondent’s website contains advertising
links which generate pay per click fees.
Complainant says the website diverts Internet users to Complainant’s
competitors. The Panel
considers that these circumstances together constitute a prima facie case
of absence of rights or legitimate interests on the part of Respondent, to whom
the onus therefore shifts to establish, by concrete evidence, its rights or
legitimate interests in the disputed domain name. See Cassava
Enters. Ltd., Cassava Enters. (
Respondent seeks to demonstrate circumstances within the Policy, paragraph 4(c)(i). The panel in Media Gen. Commc’ns, Inc. v. Rarenames, WebReg, D2006-0964 (WIPO Sept. 23, 2006) held that using domain names for advertising links can in certain circumstances represent legitimate interests for the purposes of paragraph 4(c) of the Policy, such as when:
(a) the respondent regularly engages in the business of using domain names to display advertising links;
(b) the respondent makes good-faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;
(c) the domain name in question is a “dictionary word” or a generic or descriptive phrase;
(d) the domain name is not identical or confusingly similar to a famous or distinctive trademark; and
(e) there is no evidence that the respondent had actual knowledge of the complainant’s mark.
Here, as to (a), Respondent has shown that it regularly engages in the business of using domain names to display advertising links. However, not all the other elements just mentioned are present. As to (c), the domain name <wwwdarice.com> is not a dictionary word or a generic or descriptive phrase. Taken alone, the word Darice is not a dictionary word or a generic or descriptive phrase. It is both a given name and a registered trademark. As to (d), Complainant’s registered trademark is not shown to be famous but it is distinctive of Complainant’s goods with respect to which it has been registered on the Principal Register of the United States Patent Office. The domain name is confusingly similar to that distinctive mark.
As to (b) and (e), the incorporation by the Respondent into the disputed domain name of the prefix “www” and the omission of the usual period which customarily precedes the body of a domain name indicate that Respondent may have engaged in “typosquatting” with knowledge of Complainant’s <darice.com> domain name and its DARICE mark. The format of the Respondent’s webpages comprises a uniform “frame” forming part of each page, within which appear sponsored links of the kind provided by Yahoo! and Google to advertisers wishing to attract the attention of Internet users entering particular terms into their browsers.
The domain name is not being used in relation to the word Darice as a given name. The website does not contain information about people named Darice nor does it direct users to web pages of people named Darice. Instead it features links to third party websites.
Respondent claims to have no control over which sponsored links appear on its web site, nor over the content of the third party web sites to which those links lead. Whether the former claim is true is open to doubt, since in Mariah Media Inc. v. First Place® Internet Inc., D2006-1275 (WIPO Dec. 6, 2006), in which the same paid advertising links program appears to have been used as here, the respondent in that case was able to take steps to block the critical keyword.
Be that as it may (and the Panel forms no view as to Respondent’s claim), the “frame” itself does appear to be within Respondent’s control, since it is part of the design of the website, remaining constant even though the displayed links may change from time to time. That “frame” is headed “Welcome to wwwdarice.com For resources and information on Beading supplies and Wholesale craft supplies.” Down the left side of the “frame” is a list of topics, each of which leads to a separate page displaying within the “frame” different sponsored advertising links related to that topic. The topics include “Beading supplies,” “Jewelry making supplies,” “Wood craft supplies,” “Floral arrangement supplies” and “Craft supply catalogs.” At the foot of the “frame” appear the words “Oriental trading,” “Ceramic supplies,” “Craft paints,” “Arts craft supplies,” “Beads.” Complainant’s trademark registrations cover products falling within all of these descriptions.
The Panel notes that the omission of a period from the disputed domain name enabled Respondent to register the domain name <www.darice.com> despite the earlier registration of the domain name <darice.com> by Complainant. It is hard to understand why anyone would register a domain name commencing “www” without a period immediately thereafter unless the following word was already registered as a domain name by someone else. Where that word is a common word that is not also a trademark, there can be no violation of the Policy. Where, however, that word is the trademark of another, the inference may be available, in all the circumstances, that the registrant of the “www” domain was aware of that mark. In this case there is the circumstance that the website to which the disputed domain name resolves has been designed to appear to be authorized by Complainant.
The Panel concludes that the disputed domain name was registered with actual knowledge of Complainant’s DARICE mark and domain name and that Respondent’s website is deliberately targeted at Complainant’s market and goodwill by hosting advertisements by way of links, some of which Respondent must have expected would lead to Complainant’s competitors. Such use of the domain name is neither a bona fide offering of goods or services under the Policy, paragraph 4(c)(i) nor a legitimate noncommercial or fair use under paragraph 4(c)(iii). See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Dec. 8, 2000) and TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002).
The Panel further concludes from the design of the “frame” on Respondent’s website that the disputed domain name was registered in order to attract and derive commercial gain from traffic seeking Complainant’s website and had nothing to do with the use of Darice as a given name, even though Respondent did not himself place the advertisements on his website. Accordingly, the circumstances identified in Media Gen. Commc’ns, Inc. v. Rarenames, WebReg, D2006-0964 (WIPO Sept. 23, 2006) in which the use of domain names for advertising links can represent legitimate interests for the purposes of paragraph 4(c) of the Policy are not present in this case.
The Panel finds Respondent has no rights or legitimate interests in the disputed domain name. Complainant has established this element of its case.
It follows from the above that the Panel finds that the disputed domain name was registered in order to target and profit from Complainant’s business and goodwill and has been used, for commercial gain, in a manner that creates a likelihood of confusion with Complainant’s DARICE mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Under the Policy, paragraph 4(b)(iv), such use is evidence of both bad faith registration and use. Complainant has established this element of its case.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwdarice.com> domain name be CANCELLED.
Alan L. Limbury, Panelist
Dated: November 20, 2007
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