World Wide Commerce
Corporation v. WebContents, Inc
Claim Number: FA0712001124467
PARTIES
Complainant is World Wide Commerce Corporation (“Complainant”), represented by Brett
E. Lewis, 45 Main Street, Suite 818, Brooklyn, NY 11201. Respondent is WebContents, Inc (“Respondent”), 106 West Calendar Court,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <worldwidecommerce.com>, registered
with Godaddy.com,
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.
Professor Darryl C. Wilson, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 21, 2007; the
National Arbitration Forum received a hard copy of the Complaint on December 21, 2007.
On December 24, 2007, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <worldwidecommerce.com> domain name
is registered with Godaddy.com, Inc. and
that the Respondent is the current registrant of the name. 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 January 3, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 23, 2008 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@worldwidecommerce.com by
e-mail.
A timely Response was received and determined to be complete on January 22, 2008.
On January 30, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Professor Darryl C. Wilson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant contends that it owns common law trademark rights in the
mark WORLD WIDE COMMERCE. Complainant
states that it registered the domain name <worldwidecommerce.com>
in connection with its offering of services and that the domain name was
inadvertently deleted due to an error by its Registrar. It is further contended that after the above
error occurred Respondent purchased the domain name at an auction with the
intent to resell the disputed domain for a substantial profit, but refused to
sell the domain name to Complainant. Complainant
claims that Respondent has no rights or legitimate interest in the domain, has
registered it, and is using it in bad faith.
B.
Respondent
Respondent contends that Complainant has no common law rights in the
mark WORLD WIDE COMMERCE and that since Complainant “…has failed to establish
secondary meaning of the catchphrase ‘Worldwide Commerce,’ the Respondent has
as much right as the Complainant to continue ownership of the domain name going
forward.” Respondent also states that
its intention was to use the domain name for use in future business endeavors,
that it is currently using the domain name for legitimate purposes, and that it
is not currently nor did it in the past register and use the disputed domain
name in bad faith. Respondent further
notes, “There is an element of ‘Finders Keepers, Losers Weepers’ in this
decision. We believe that is as it
should be.”
FINDINGS
Complainant, World Wide Commerce Corporation
(WWC) was formed as a
Respondent is an
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.
Although Complainant does not hold a registered trademark for the WORLD WIDE COMMERCE mark, a registration is not necessary where common law rights have been established. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Hiatt v. Pers. Fan & Official Site Builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“Registration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….”).
Complainant has made continuous use of the mark in commerce for more than eleven years, conducting business under the mark in connection with its web and telecommunication services. Complainant registered the “World Wide Commerce Corporation” name with the Colorado Secretary of State, registered and previously used the <worldwidecommerce.com> domain name before the registration lapsed, and purportedly generated revenues in excess of $5.3 million, while serving a long list of global clients. Complainant’s President contends in an affidavit that Complainant has spent significant time and money in generating substantial goodwill and consumer recognition in the WORLD WIDE COMMERCE mark. Based upon this evidence, which Respondent has not refuted, the Panel finds that Complainant has successfully established common law rights in the WORLD WIDE COMMERCE mark pursuant to Policy ¶ 4(a)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”); 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
<worldwidecommerce.com> domain name is basically
the same as Complainant’s WORLD WIDE COMMERCE mark, thus Respondent’s <worldwidecommerce.com> domain
name is confusingly simlar to Complainant’s WORLD WIDE COMMERCE mark pursuant
to Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v.
Respondent’s claim that the mark is
unprotectable because of the common meaning of the terms both independently and
when used together do not support its assertion that the mark is therefore
generic. Context is key in determining
genericness and the mark is not the common descriptive “catchphrase” for the
services Complainant offers. Nor is it proper to dissect a mark into
constituent parts in order to support a claim that the mark as a whole is
generic. Further Respondent’s claim that
Complainant’s rights, if any, should be limited to
Complainant has established this element.
Complainant has satisfied its
burden of initially establishing a prima facie case that Respondent
lacks rights and legitimate interests in the disputed domain name under Policy
¶ 4(a)(ii). 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).
Respondent has never, as an individual, business, or other organization, been commonly known by the <worldwidecommerce.com> domain name. The WHOIS information supports this contention by identifying Respondent as “WebContents, Inc.” Respondent is also not licensed, assigned, or authorized to use the WORLD WIDE COMMERCE mark in a domain name and as such Respondent is not commonly known by the <worldwidecommerce.com> domain name, and therefore lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
The <worldwidecommerce.com> domain name is allegedly being used by Respondent to display links advertising initiatives for planned development with intention to use the domain name at a later time for a social networking software platform. That is, it appears, unless the name is sold to someone other than Complainant first, since Respondent has offered and is allegedly still currently offering the name for sale. Respondent claims to have “…nearly three-thousand respected clients in nearly sixty-five (65) countries throughout the world.” Respondent does not indicate what its business is or what these clients are for, or how the disputed domain name relates other than to say that, “Respondent’s truly a global organization conducting everyday worldwide commerce via means of the Internet.” Respondent has offered no plans or other indices of a current ongoing business or planning for a future business. The Panel finds that Respondent’s statements do not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). While it is clearly recognized that anyone has the right to purchase and make immediate or planned use of an available, non-confusing domain name that is legitimately offered for sale, Respondent registered the Domain Name after Complainant had inadvertently allowed the Domain Name to lapse, subsequent to eleven years of continuous use in commerce. Registration of a domain name under these circumstances is evidence of a lack of legitimate rights or interests in a domain name. See Zappos.com, Inc. v. Turvill Consultants, FA 404546 (Nat. Arb. Forum Feb 28, 2005) (finding that “[t]he fact that Complainant had previously held the <wwwzappos.com> domain name registration and has mistakenly allowed it to expire is further evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶4(a)(ii).”); see also Am. Anti-Vivisection Soc’y v. “infra dot Net” Web Servs., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (holding that complainant’s prior registration of the domain name was a factor in considering rights and legitimate interests in the domain name).
Respondent’s willingness to sell
the disputed domain to others, or perhaps to Complainant for a price in excess
of $50,000 also indicates a lack of rights and legitimate interests pursuant to
Policy ¶ 4(a)(ii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8,
2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona
fide offering of goods and services or a legitimate noncommercial or fair
use of domains.”); see also Williams-Sonoma,
Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a
respondent’s willingness to sell a domain name to the complainant suggests that
a respondent has no rights or legitimate interests in that domain name under
Policy ¶ 4(a)(ii)).
Complainant
has established this element.
Respondent has previously been the subject of two UDRP proceedings in which it was ordered to transfer disputed domain names that infringed upon the trademark rights of others. See Ace Cash Express, Inc. v. WebContents, Inc., FA 1095263 (Nat. Arb. Forum Dec. 3, 2007); see also Baxter Int’l, Inc. v. WebContents, Inc., FA 679475 (Nat. Arb. Forum May 31, 2006). The Panel finds that these decisions support a conclusion that Respondent registered and used the <worldwidecommerce.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii). See Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004) (“[Respondent] registered the <usgames.com> domain name in order to prevent [Complainant] from reflecting its U.S. GAMES Mark in a corresponding domain name [pursuant to Policy ¶ 4(b)(ii)]. The pattern of such conduct is established, inter alia, by the public decisions of two different UDRP proceedings [against] Respondent.”); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Complainant’s previous registration and use of the disputed domain name before the registration inadvertently lapsed coupled with Respondent’s immediate registration and refusal to transfer further supports that Respondent’s registration and use of the <worldwidecommerce.com> domain name was in bad faith pursuant to Policy ¶ 4(a)(iii). See Florists’ Transworld Delivery, Inc. v. Domain Strategy, Inc., FA 113974 (Nat. Arb. Forum June 27, 2002) (“Complainant previously held the contested domain name before an inadvertent error allowed the registration to lapse. Respondent apparently took advantage of the presented opportunity and immediately registered the lapsed domain name. Respondent’s opportunistic actions exhibit bad faith under Policy ¶ 4(a)(iii).”); see also RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (finding that the respondent’s registration of the <jobfinance.com> domain name “immediately after Complainant failed to timely renew the domain name registration” was evidence of bad faith).
While “finders, keepers-losers, weepers” is a quaint and classic saying it is also an oversimplification of the underlying law. Actually the finder takes as to all the world except the true owner, or the prior peaceable possessor. WWC Corp. provided sufficient evidence to show that it fit one of the preferred categories and Respondent, who rather unconvincingly claims to be an innocent finder here, is the party that must “tear” itself away from the disputed domain name.
Complainant has established this element.
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 <worldwidecommerce.com> domain name
be TRANSFERRED from Respondent to Complainant.
Professor Darryl C. Wilson, Panelist
Dated: February 13, 2008
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