TerraServer.com, Inc. v.
Constantin Tuculescu
Claim Number: FA0710001100664
PARTIES
Complainant is TerraServer.com, Inc. (“Complainant”), represented by Brian
Randy Funk, 5995 Chapel Hill Rd Ste 109, Raleigh, NC 27607. Respondent is Constantin Tuculescu (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <terraserv.com>, registered with Enom, 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.
David P. Miranda, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 22, 2007; the
National Arbitration Forum received a hard copy of the Complaint on October 24, 2007.
On October 23, 2007, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <terraserv.com> domain
name is registered with Enom, Inc. and
that the Respondent is the current registrant of the name. Enom, Inc.
has verified that Respondent is bound by the Enom,
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 October 24, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 13, 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@terraserv.com by
e-mail.
A timely Response was received and determined to be complete on November 5, 2007.
Complainant’s Additional Submission was received on November 9, 2007
and Respondent’s on November 12, 2007.
They comply with Supplemental Rule 7, and have been considered.
On November 19, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David P. Miranda, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant TerraServer.com, Inc. (“Complainant”) seeks transfer of the domain name <terraserv.com> from Respondent Constantin Tuculescu (“Respondent”). Complainant contends that the disputed domain name <terraserv.com> is confusingly similar to Complainant’s name TerraServer.com, Inc., and federally registered service marks TERRASERVER, and TERRA SERVER-USA. Complainant contends that the registered service mark TERRASERVER (Reg. 2,912,286) was filed with the USPTO on July 21, 2003, registered on December 21, 2004, and first used in commerce on March 1, 1998. The mark TERRA SERVER-USA (Reg. 3,104,389) was filed with the USPTO on December 16, 2003, registered June 13, 2006 and first used in commerce May 1, 2003. The mark TERRA SERVER (Reg. 2,330,814) was filed on March 9, 1998, registered March 21, 2000 and first used in commerce July 26, 1997, and subsequently cancelled. Complainant contends that it has used the service mark TERRA SERVER continually since the domain name was first registered on July 26, 1997, and is a well known brand name. Complainant contends that its domain name <terraserver.com> was first registered on July 26, 1997, and has been in continuous use in commerce since that date, and is a well known brand name, receiving over 300,000 unique visitors per month.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name because the website located at <terraserv.com> is a blank page, and there is no evidence that the domain name has ever been used for any bona fide offering of goods or services. Furthermore, Complainant contends that Respondent has indicated in correspondence in which it defends itself against claims of infringement that Respondent has “no product, website, or business using that domain.” Complainant contends that Respondent has tarnished the mark of Complainant by directing traffic intended for Complainant to an inactive website. Complainant contends that it sent a letter to Respondent seeking transfer of the disputed domain name, and offering payment of $100 to facilitate the transfer. Respondent refused to transfer and offered to sell the domain name for $1,000. Complainant contends that Respondent’s seeking monetary compensation in excess of its out-of-pocket costs constitutes bad faith, and seeks transfer of the domain name.
B.
Respondent
Respondent contends that the domain <terraserv.com>
is composed of two common words, is an abbreviation of the word “service,”
and is not identical or confusingly similar to TerraServer.com or Complainant’s service marks. Respondent contends that the <terraserv.com>
domain was registered on April 1, 1999, with the intent to host the website of Respondent’s
to-be-formed corporation. Complainant
states “at that time there were not registered trademarks for TerraServer.” Respondent contends that its corporation was intended
to provide environmental consulting products, supplies and services, and not
related to the photographic images and geographic imagery obtained from
satellites as in Complainant’s registrations.
Respondent
states that he registered the domain <terraserv.com> on April 1,
1999 and subsequently submitted a request to the California Secretary of State
to incorporate TerraServ, Inc. Respondent states
that on March 19, 2002 he was notified that the name was not available in the
State of
C.
Additional
Submissions
Complainant’s Additional Submission notes that its domain <terraserver.com> was first registered on July 26, 1997 and is a well known brand name. Complainant also submits proof in support of its claim that TerraServer is commonly misspelled by the public as “TerraServ.” Complainant contends that although there were no registered trademark applications for TerraServ when the disputed domain name was originally registered on April 1, 1999, the original trademark application for TERRA SERVER was first filed on March 9, 1998, and was pending at the time that Respondent registered the domain name. Complainant contends that Respondent has not taken any steps to use the domain name for any legitimate business purpose, notes that the information provided by Respondent with respect to its seeking the corporate name, TerraServer, Inc. is only an online form that prepares incorporation documents, and there is no evidence of any articles of incorporation or any evidence that any incorporation documents were ever filed, and notes that the response from the California Secretary of State in March of 2002 is only a “name availability” inquiry response. Complainant also contends that Respondent’s request for $1,000 is not documented by actual out-of-pocket expenses. Complainant reiterates the efforts made by Respondent to sell the domain name for an amount in excess of out of pocket costs, and that Respondent advised that the domain was appraised for $10,000.
Respondent’s Additional Submission contends that the offer to sell the disputed domain name for $1,000 was not in bad faith, that it was based upon paying domain registration and renewal fees of $35 for 8 years, $280 hosting fees for $7.95/per month, for a total of $763.00, and time and labor for maintenance and yearly renewal of $400, for a total of $1,443. Respondent contends that Complainant’s trademark is only limited to the services addressed in its trademark registration and it does not prevent the use of the mark for other goods or services. Respondent contends that the domain name was in fact, used for a bona fide offering of goods and services at one point, when he had the domain redirected to his business website and personal website at various times.
FINDINGS
Complainant has established that it is
the service mark owner of registrations for TERRA SERVER and TERRA SERVER-USA
and that the domain name <terraserv.com> is confusingly similar to
its marks. Complainant has met its burden of establishing that Respondent
has no rights or legitimate interests in the disputed domain name, and that the
domain name was registered and used in bad faith. Thus, the disputed domain name shall be
transferred to Complainant.
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.
Complainant asserts rights in the TERRASERVER and TERRASERVER-USA marks by virtue of service mark registrations with the United States Patent and Trademark Office (“USPTO”) for the marks (Reg. No. 2,912,286 issued December 21, 2004 and Reg. No. 3,104,389 issued June 13, 2006). These service mark registrations adequately establish Complainant’s rights in these marks for the purposes of Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Additionally, Complainant asserts rights in the
now cancelled TERRA SERVER mark which predate Respondent’s registration of the <terraserv.com> domain name on
April 1, 1999. Complainant asserts that
its predecessor-in-interest used the TERRA SERVER mark in connection with a
database of photographic images and geographic information, which it claims was
first used in commerce in July 1997.
Complainant contends that its predecessor-in-interest held a service
mark registration with the USPTO for the TERRA SERVER mark, which was filed on March
9, 1998 and registered on March 21, 2000.
Complainant contends that it cancelled the TERRA SERVER registration
when it purchased the predecessor company and changed its name to
“TerraServer.com, Inc.” Complainant has
thus established rights in the TERRA SERVER marks.
The <terraserv.com>
domain name is confusingly similar to the TERRASERVER, TERRASERVER-USA, and
TERRA SERVER marks under Policy ¶ 4(a)(i) as the disputed domain name is a
shortened version of each of these marks.
Additionally, the disputed domain name adds the generic top-level domain
“.com,” which is irrelevant to a Policy ¶ 4(a)(i)
analysis as all domain names must have a top-level domain. See Modern Props, Inc. v.
Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003)
(“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or
shorthand for ‘Modern Props.’ ‘Mod’ cononotes [sic] ‘modern’ regardless of any
other dictionary meanings, so the names are substantially similar in
meaning.”); see also Minn. State Lottery v. Mendes,
FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com>
domain name is confusingly similar to the complainant’s MINNESOTA STATE LOTTERY
registered mark); see also Isleworth Land Co. v. Lost in Space,
SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established
principle that generic top-level domains are irrelevant when conducting a
Policy ¶ 4(a)(i) analysis.”).
While Respondent contends that the <terraserv.com> domain name is comprised of common, descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, such a determination is not necessary under Policy ¶ 4(a)(i) as it is presumed that issues of descriptiveness were considered by the USPTO, and as such, need not be reconsidered by the Panel. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also 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.”).
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).
Complainant contends, and Respondent admits, that the <terraserv.com> domain name is not currently actively used. Respondent has failed to provide sufficient evidence of demonstrable preparations to use the disputed domain name for a legitimate purpose. Respondent’s failure to make an active use of a domain name which Respondent has owned since 1999 indicates that Respondent has made neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the respondent has advanced no basis on which the panel could conclude that it has a right or legitimate interest in the domain names, and no commercial use of the domain names has been established).
The Respondent fails to establish that Respondent is commonly known by the <terraserv.com> domain name under Policy ¶ 4(c)(ii), or that it has made demonstrable efforts to start a business using the name. Respondent’s WHOIS information identifies Respondent as “Constantin Tuculescu,” and sporadically redirecting users to other sites owned by Respondent unrelated to the name at issue is not sufficient. See 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); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”).
Respondent’s offer to sell the <terraserv.com> domain name to Complainant for $1,000 is in excess of Respondent’s out-of-pocket costs ($280) for the disputed domain name, and as such, could indicate that the disputed domain name was registered in order to profit by selling the <terraserv.com> domain name to Complainant. Such a finding could indicate bad faith registration and use under Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to the complainant amounts to a use of the domain name in bad faith). The Panel finds that this conduct, coupled with Respondent’s failure to make an active use of the <terraserv.com> domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).
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 <terraserv.com> domain name be TRANSFERRED
from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: December 3, 2007
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