Joellen Johnstone Smith v.
Leopard Spot
Claim Number: FA0711001114747
PARTIES
Complainant is Joellen Johnstone Smith (“Complainant”), represented by Daniel
M. Satorius, of Lommen, Abdo, Cole, King & Stageberg,
P.A., 2000 IDS Center, 80 South Eighth Street, Minneapolis, MN 55402. Respondent is Leopard Spot (“Respondent”), 7117 Cornelia Drive, Edina, MN 55435.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <williamwjohnstone.net> and
<williamwjohnstone.org>, registered with Godaddy.com, Inc.
PANEL
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.
Hon. Nelson A. Diaz as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 27, 2007; the
National Arbitration Forum received a hard copy of the Complaint on November 27, 2007.
On November 27, 2007, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <williamwjohnstone.net> and
<williamwjohnstone.org> domain names are registered with Godaddy.com, Inc. and that the Respondent is
the current registrant of the names. Godaddy.com, Inc. has verified that Respondent
is bound by the Godaddy.com, 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 November 30, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 20, 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@williamwjohnstone.net and postmaster@williamwjohnstone.org by e-mail.
A timely Response was received and determined to be complete on December 20, 2007.
A timely and complete Additional Submission from Complainant was
received on December 26, 2007.
A timely and complete Additional Submission from Respondent was
received on December 31, 2007.
On January 1, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Nelson A. Diaz as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant:
Complainant is the Executrix of the Estate of
William W. Johnstone and is acting as its legal representative. Complainant has undertaken steps, as the
Executrix, to use and protect the intellectual property of the Estate, namely
the WILLIAM JOHNSTONE and WILLIAM W. JOHNSTONE trademarks and service marks
(the "Marks"). Complainant currently
operates a website, <williamjohstone.com>, which promotes, markets, and
sells certain products and services under the Marks and has also obtained
registered ownership of the domain names <williamjohnstone.net>
and <williamjohnstone.org>.
Respondent currently operates a website, <colleenhitchcock.com>,
which promotes, markets, and sells certain books, music, merchandise and other
products. Respondent uses the domain
names <williamwjohnstone.net> and <williamwjohnstone.org> to direct traffic to her website. These domain names are identical and confusingly similar to the Complainant's Marks.
Complainant hired Respondent as an agent to procure
the following domain names, which are the subject of this Complaint, on the
Estate's behalf: <williamwjohnstone.net> and <williamwjohnstone.org>.
Complainant instructed Respondent to register these domains in
Complainant's name and on Complainant's behalf.
Although the domains at issue were registered by
Respondent, they were not registered in Complainant's name. Respondent registered the domains in her own
name and has refused to transfer ownership of the registered domains to
Complainant, the rightful owner.
As a result of Respondent's failure to transfer
ownership of the domains <williamwjohnstone.net>
and <williamwjohnstone.org> to Complainant and
Respondent's use of these domains to automatically link to her website,
Respondent is infringing Complainant's Marks.
Respondent has no rights or legitimate interests in
respect to the domain names subject
to this Complaint. Respondent was hired
by Complainant, as Complainant's agent, to register the domain names <williamwjohnstone.net> and <williamwjohnstone.org> in Complainant's name and on Complainant's behalf.
Complainant did not authorize
Respondent's registration of the domains <williamwjohnstone.net>
and <williamwjohnstone.org> for Respondent's personal
use and enrichment-Complainant did not grant any rights in the Marks to
Respondent.
B. Respondent
Respondent claims that because this matter relates to a contract
dispute, the National Arbitration Forum does not have jurisdiction over the
issue.
C. Additional Submissions
Complainant denies that this Panel lacks Jurisdiction over this domain name dispute, as has been proposed by
Respondent, because of an underlying contract dispute between the parties. This proceeding solely
concerns the ownership of the domain names at issue, Respondent has refused to transfer ownership of the domain names to
Complainant and has used the domains in bad faith by automatically
linking them to her own website.
FINDINGS
The Panel finds that Respondent is not
commonly known by either of the disputed domain names pursuant to Policy
4(c)(ii) and consequently has no rights interests in <williamwjohnstone.net> and <williamwjohnstone.org>.
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.
Respondent does not dispute that Complainant, as the Executrix of the
Estate of William W. Johnstone, is the rightful owner of the WILLIAM JOHNSTONE and WILLIAM W. JOHNSTONE
trademarks and
service marks ("Marks"), or that the domain names registered by
Respondent are identical to or confusingly similar to the Marks in which
Complainant has rights. Nor does Respondent dispute that she is using
the Marks to automatically link to her website.
Complainant made a prima facie case
that Respondent lacks rights and legitimate interests in the disputed domain
names under Policy ¶ 4(a)(ii), and the burden shifts to Respondent to show it
does have rights or legitimate interests.
See Hanna-Barbera Prods., Inc. v. Entm’t
Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that
the complainant must first make a prima facie case that the respondent
lacks rights and legitimate interests in the disputed domain name under UDRP ¶
4(a)(ii) before the burden shifts to the respondent to show that it does have
rights or legitimate interests in a domain name); see also AOL LLC
v. Gerberg, FA 780200 (Nat.
Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing
that Respondent does not have rights or legitimate interest in the subject
domain names, which burden is light. If
Complainant satisfies its burden, then the burden shifts to Respondent to show
that it does have rights or legitimate interests in the subject domain
names.”).
Complainant hired Respondent to register and
develop the disputed domain domains for and on behalf of Complainant. This fact is conceded by Respondent. Complainant did not authorize Respondent to
register the disputed domain names for its personal use and benefit. As a result, the Panel finds that Respondent
is not commonly known by either of the disputed domain names pursuant to Policy
¶ 4(c)(ii) and consequently has no rights or legitimate interests in <williamwjohnstone.net>
and <williamwjohnstone.org>. See
Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14,
2000) (finding no rights or legitimate interest where the respondent was not
commonly known by the mark and never applied for a license or permission from
the complainant to use the trademarked name); 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).
Moreover, Respondent made no use of the
disputed domain names prior to the notice of this dispute. Since Complainant has contacted Respondent,
the disputed domain names have redirected Internet users to Respondent’s
website located at the <colleenhitchcock.com> domain name, which offers
similar goods and services as those offered under Complainant’s mark. Therefore, the Panel finds that Respondent’s
prior and current use of the <williamwjohnstone.net>
and <williamwjohnstone.org> domain
names do not demonstrate a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See DLJ Long Term
Inv. Corp. v. BargainDomainNames.com,
FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed
domain name in connection with a bona fide offering of goods and services
because Respondent is using the domain name to divert Internet users to
<visual.com>, where services that compete with Complainant are
advertised.”); see also Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that when the respondent declares its intent to develop a website, “[Policy ¶]
4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such
preparations to use the domain name, and 2) that such preparations were
undertaken ‘before any notice to [Respondent] of the dispute’”); see also Wal-Mart Stores, Inc. v. Walmarket
Canada, D2000-0150 (WIPO May 2, 2000) (finding that the respondent had no
rights or legitimate interests where he decided to develop the website for the
sale of wall products after receiving the complainant’s “cease and desist”
notice).
Complainant argues initially that since
Respondent was hired by Complainant to register and develop the disputed domain
names, it was fully aware of the name of its employer and the associated mark,
and therefore the registration and initial lack of use of the disputed domain
name and consequent personal commercially benefiting use without Complainant’s
consent is evidence that Respondent registered and is using the disputed domain
names in bad faith pursuant to Policy ¶ 4(a)(iii). See
Arab Bank for Inv. & Foreign Trade v. Akkou, D2000-1399 (WIPO Dec. 19,
2000) (finding bad faith registration and use where the respondent was formerly
employed by the complainant, was fully aware of the name of her employer, and
made no use of the infringing domain name); see
also 163972 Canada, Inc. v. Ursino, AF-0211 (e-Resolution July 3,
2000) (finding that because the respondent was hired by the complainant to help
design and register the complainant’s websites, the respondent had intimate
knowledge of the complainant’s business and use of its TEENFLO mark. Therefore, the
respondent’s registration of the <teenflo.com> domain name was in bad
faith).
Additionally, the disputed domain names
currently redirect Internet users to Respondent’s commercial website that
offers products and services in competition with those offered under
Complainant’s mark. The Panel finds this
act of diversion sufficient to establish Respondent’s bad faith registration
and use of the <williamwjohnstone.net>
and <williamwjohnstone.org> domain
names pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v.
Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith
where the respondent’s sites pass users through to the respondent’s competing
business); see also Puckett, Individually
v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
Moreover, Respondent is commercially
benefiting from the current use of the disputed domain names for each confused
Internet user who is misdirected to Respondent’s website offering competing
services and products. The Panel finds
Respondent is commercially benefiting from the current use and finds evidence
of Respondent’s bad faith registration and use of the disputed domain names
pursuant to Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA
196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name
at issue in direct competition with Complainant, and giving the impression of
being affiliated with or sponsored by Complainant, this circumstance qualifies
as bad faith registration and use of the domain name pursuant to Policy ¶
4(b)(iv).”); see also Goto.com, Inc., v. Walt Disney Co., 202
F.3d 1199, 1206 (9th Cir. 2000) (“With respect to Internet services, even
services that are not identical are capable of confusing the public.”); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb.
Forum Oct. 11, 2000) (finding that the respondent registered the domain name
<statefarmnews.com> in bad faith because the respondent intended to use
the complainant’s marks to attract the public to the web site without
permission from the complainant).
Finally, Respondent has consented to the
transfer of the disputed domain names upon payment of a laundry list of
services Respondent believes it still needs to be compensated for and in
relation to work it had completed for Complainant. The Panel finds that the willingness to
dispose of the disputed domain names is additional evidence of Respondent’s bad
faith registration and use pursuant to Policy ¶ 4(b)(i). See CBS
Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000)
(“There is nothing inherently wrongful in the offer or sale of domain names,
without more, such as to justify a finding of bad faith under the Policy.
However, the fact that domain name registrants may legitimately and in good faith
sell domain names does not imply a right in such registrants to sell domain
names that are identical or confusingly similar to trademarks or service marks
of others without their consent”); see
also Crédit Lyonnais v. Ass'n. Etre
Ensemble, D2000-1426 (WIPO Dec. 7, 2000) (finding bad faith where the
respondent agreed to transfer the domain name if the complainant agreed to
support the respondent’s cause but then remained silent in completing the
transfer); see also Educ. Testing Serv.
v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of
sale combined with no legitimate use of the domain name constitutes
registration and use in bad faith); see
also Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith
under Policy ¶ 4(b)(i) where the respondent stated in communication with the
complainant that it would be ready to sell the <matmut.com> domain name
registration for $10,000).
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 <williamwjohnstone.net> and
<williamwjohnstone.org> domain names be TRANSFERRED
from Respondent to Complainant.
___________________________________________________
Hon. Nelson A. Diaz, Panelist
Dated: January 15, 2008
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