InterTrade Systems Corporation v. Donna
Lawhorn
Claim Number: FA0204000112488
PARTIES
Complainant
is InterTrade Systems Corporation,
Campbell, CA, USA (“Complainant”) represented by Paul E. Thomas, of Pillsbury
Winthrop LLP. Respondent is Donna Lawhorn, Princeton, WV, USA
(“Respondent”) represented by Zane Lawhorn.
The
domain name at issue is <tradelinks.biz>,
registered with Domain Bank, Inc.
The
undersigned, Jacques A. Léger Q.C acting as Panelist, 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.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 26, 2002; the Forum
received a hard copy of the Complaint on May 6, 2002.
On
May 16, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 5,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
A
timely Response was received and determined to be complete on May 28, 2002.
Complainant
submitted a timely Additional Submission on May 29, 2002. Respondent submitted a timely Additional
Submission on May 31, 2002.
On June 26, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Jacques A. Léger Q.C as single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A. Complainant
Identity of the Disputed Domain
Name <tradelinks.biz> and Complainant’s Mark Therein
Complainant contends it has filed
an intent-to-use application (App. Serial No.: 75/882323) for federal
registration of the TRADELINKS trademark with
the United States Patent and Trademark Office for computer e-commerce software.
Complainant contends after filing
the application it began using the TRADELINKS
mark to identify its downloadable software and to identify the support services
for the TRADELINKS software.
Complainant contends it is the registrant of the
<tradelinks.net> domain name, which Complainant registered on February
13, 1998. The <tradelinks.net>
domain name locates a website at which Complainant’s customers install the TRADELINKS software.
Complainant contends the <tradelinks.net>
domain name registration, its application for federal registration for the TRADELINKS trademark (App. Serial No. 75/882323) and
its extensive common law use of the TRADELINKS trademark and service mark in interstate
commerce since January 13, 1999 constitute the basis for its prior rights in
the TRADELINKS mark.
Complainant contends Respondent’s
<tradelinks.biz> domain name is identical to trademark TRADELINKS
in which Complainant has established ownership rights through continuous use.
Complainant contends Respondent
is not the owner or beneficiary of a trade mark or service mark that is
identical to the <tradelinks.biz> domain name.
Complainant contends Respondent is not
making 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.
Complainant contends Respondent is not
commonly known by the <tradelinks.biz> domain name.
Complainant contends Respondent is
closely affiliated with a domain name registrar called #1 Domain Names
International, Inc. (“#1DNI”). Neither of them is the owner of a trademark or
service mark that is identical to <tradelinks.biz>.
Complainant contends the business with
which Respondent is closely affiliated, #1DNI, is not commonly known by the <tradelinks.biz>
name.
Complainant contends Respondent has no
legitimate rights or interests in the <tradelinks.biz> domain
name.
Complainant contends Respondent has
registered the <tradelinks.biz> domain name primarily for the
purpose of selling, renting, or otherwise transferring the domain name
registration to the Complainant or to a competitor of the Complainant, for
valuable consideration in excess of Respondent’s documented out-of-pocket costs
directly related to the domain name.
Complainant contends that as part of its
business, #1DNI hosts domain name auctions. The entire range of asking prices
is egregiously in excess of Respondent’s out-of-pocket costs related to the <tradelinks.biz>
domain name.
Complainant contends because Respondent
is closely connected with #1DNI, and because #1DNI hosts a domain name auction
page that seeks to sell domain names at prices far in excess of the costs of
registering a domain name with ICANN accredited registrars, this Panel can
infer that Respondent registered the <tradelinks.biz> domain name
with the bad faith intention of selling the domain for valuable consideration
in excess of Respondent’s out-of-pocket costs directly related to the domain
name by means of an auction of the domain name on the #1DNI website.
B. Respondent
Respondent does not contest Complainant's rights in
the TRADELINKS trademark.
Respondent contends she is an officer and
stockholder in the company # 1 Domain Names International, Inc. which operates
the web site <tradelinks.info>.
Respondent contends one of the services they offer,
through their web site <tradelinks.info>, is the ability to trade
hyperlinks for free or the placement of links on web sites for a fee.
Respondent contends they have a right to the
trademark TRADELINKS because they actually use it in their services and
continue to do so. This continuous use proves they have a legitimate interest
in respect to the domain name <tradelinks.biz>.
Respondent contends their service offered does not
conflict with the apparent services offered by Complainant as indicated in its
Complaint ‘…to identify its downloadable software and to identify the support
services…..’. They do not offer
downloadable software or provide support for any such software.
Respondent contends when their
domain name was submitted they had no prior knowledge of Complainant and had
not made any attempts to disrupt Complainant’s business.
Respondent contends the domain name was submitted
for registration to be used in their business and not for the purpose of
selling, renting or otherwise transferring the domain name registration to
Complainant or to a competitor of
Complainant.
Respondent contends the registration of the domain
name <tradelinks.biz> was performed in good faith for their
continuing business usage.
Complainant contends it is the prior user of the
TRADELINKS trademark and service mark because it has used the TRADELINKS
trademark in interstate commerce more than a year before Respondent.
Complainant alleges the Panel should find that
Respondent registered the <tradelinks.biz> domain name in bad
faith because Respondent has not addressed the aspect of her business that
consists of the auction and sale of domain names at prices far in
excess of registration costs and the possibility that the <tradelinks.biz>
domain name might have been auctioned or sold to Complainant’s competitor.
Respondent’s
Additional Response
Respondent contends the name and address of the
service offered is located at <tradelinks.info>, which is in itself a use
of the term in the product offering.
Respondent contends she never made any assertion
that Respondent was the initial registrant of the trademark for
TRADELINKS. However, the domain name
<tradelinks.info> was available for registration to the general public at
the time it was registered. Complainant
made no reasonable attempt during the Land Rush period to register or prevent
the registration of the domain name. Complainant’s lack of reasonable effort to
protect the trademark provides evidence that the intent is not to use the
trademark but to prevent others from utilizing the term TRADELINKS.
Respondent contends they offer a
diverse array of services to clients therefore indicating that the Respondent
registered the domain name <tradelinks.biz> in bad faith
with the intent to resell, rent or otherwise transfer the registration to the
Complainant or to a competitor, is without basis.
Respondent contends Complainant
did not provide any proof or evidence that the domain name <tradelinks.biz> or even the domain name <tradelinks.info> are listed for sale.
Respondent contends they offer
Internet services, optical services, bridal and formal wear services, funeral
home services and commercial and residential real estate.
Having reviewed the evidence submitted
by the parties and their written representations, the Panel makes the following
findings:
h Complainant
does have rights in the mark TRADELINKS which is identical to the disputed
domain name given its common law use in interstate commerce.
h Complainant
having submitted prima facie evidence that Respondent does not have rights or
legitimate interest in the disputed domain name <tradelinks.biz>, Panel finds a negative inference against
Respondent's failure to explain or justify herself.
h Panel
finds that Complainant has met its initial burden to show that Respondent acted
in bad faith in registering the domain name <tradelinks.biz> and that Respondent has failed to meet its
reversed onus by not addressing the issue.
Introduction
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
transferred:
(i)
the domain name is identical to a trademark or
service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(iii) the domain name has been registered or is being used
in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel
may exercise its discretion to rely on relevant UDRP precedent where applicable
and in this case has.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
On
this first issue, the Panel finds Complainant has met its burden to show that
it has rights in the trademark TRADELINKS which is identical to the disputed
domain name. Complainant developed common law rights after filing an
application for federal registration of the TRADELINKS trademark with the
United states Patent and Trademark Office (exhibit A) and using the mark to
identify its downloadable software and the support services for the TRADELINKS
software (exhibit B, C, D). Moreover Complainant is the registrant of the
<tradelinks.net> domain name (exhibit E) who's purpose is to locate a web
site at which Complainant's customers install the TRADELINKS software. Such use
of the TRADELINKS trademark and service mark constitutes the basis for
Complainant's rights in the TRADELINKS mark.
The Panel can rely on any of the
following circumstances, but without limitation, to find that Respondent has
rights or legitimate interests in the domain name :
(i)
Respondent
is the owner or beneficiary of a trade or service mark that is identical to the
domain name; or;
(ii)
Before
any notice to Respondent of the dispute, Respondent's 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; or
(iii)
Respondent
(as an individual, business or other organization) has been commonly known by
the domain name, even if it has acquired no trademark or service mark rights.
(STOP Policy ¶ 4(c)(i) -
(iii).)
In the case at hand, the Panel finds
Respondent has not properly addressed the reversed onus of demonstrating her
rights and interests in the disputed domain name. Although the initial burden
to prove Respondent's lack of rights or interest in the disputed domain name
relies squarely on the shoulders of Complainant, such obligation is only to make out a prima facie case and, once it has done
so, as it did in the present case, it is then incumbent upon the Respondent to
either justify or explain her business conduct (if not to demonstrate the
contrary); failure to do so will, in some circumstances, enable the Panel to
draw negative inferences. In the case at hand, the Respondent has not put
forward sufficient justification for its acquisition of the Domain Name and, in
the circumstances, the Panel does draw a negative inference out of such
omission. See Hebdomag Inc. v. Illuminaty Mktg, D2001-0206 (WIPO Apr.
17, 2001). In fact, if only to insure
that such negative inference is not unfair against Respondent, the
Panelist proprio motu, has taken upon himself to conduct a search on the
number of registrations under the name of Respondent and of her husband, as it
is entitled to do given that this material is subject to judicial knowledge,
and noted that Respondent has 34 businesses registered under her name, while
her partner has 15. While this cannot be conclusive of her lack of legitimate
interest, it is certainly indicative that Respondent had an obligation of being
more forthright in her explanation, since Complainant's evidence could have led
to a finding of reversed onus, as in the present case.
Consequently, it is the Panel's view that the Complainant has satisfied
its burden to show the absence of legitimate interests on the part of the
Respondent. The Panel concludes that Respondent, on balance of probabilities,
has no rights or legitimate interests in the Domain Name.
To
prove bad faith under the STOP Policy, a Complainant only needs to prove either registration or use of the domain name in bad faith, not both as the UDRP
requires. STOP Policy 4(b) is otherwise very similar to UDRP 4(b). Complainant
may inter alia demonstrate
Respondent's bad faith by showing that Respondent registered the domain name
for the purpose of preventing Complainant from registering domain names that
reflect its mark; or evidence that the Respondent registered the domain name
primarily for the purpose of selling, renting, or otherwise transferring the
name to the Complainant or its competitor for a valuable consideration in
excess of the Respondent's out-of-pocket costs directly related to the domain
name will satisfy the bad faith requirement. While under the STOP Policy there
is no pattern of conduct requirements, the simple allegation is not enough to
conclude automatically to bad faith.
It
is sometimes quite difficult, if not impossible to actually show bad faith with
concrete evidence. While bad faith cannot be presumed, once Complainant has
presented some evidence pointing in that direction, it is incumbent upon
Respondent to either respond or explain why her conduct should not be assimilated
to bad faith. In the case at hand, Respondent's association with a company
specializing in domain name auctions (exhibit K) constitutes at least a
presumption of Respondent's involvement in domain name auctioning. Complainant
having shown that, there was an obligation of Respondent to justify herself or
give a better explanation than what she did; For instance, her assumption that
"... the domain name <tradelinks.info> was available for
registration to the general public at the time it was registered" is not a
credible explanation. Similarly, her mere denial that she registered the
disputed domain name to sell it is also not enough in the face of indications
pointing in the other direction.
In this case, the Panel adopts the finding in
Newman/Haas Racing v. Virtual Agents, Inc., D2000-1688 (WIPO Mar. 29,
2001): "Even in the absence of an offer to sell a domain name, the Policy
provides that the registration of a domain name “to prevent the owner of the
trademark . . . from reflecting the mark in a corresponding domain name” is bad
faith if the registrant has engaged in a pattern of such conduct." Also
based on the
finding
in Société Des Bains De Mer Et Du Cercle Des Étrangers à Monaco v. Iggi
Networks Media Group, D2000-1324 (WIPO, Dec. 18, 2000): the lack of
explanation or evidence provided by Respondent to demonstrate her good faith
leads to an inference of bad faith on her part and is sufficiently conclusive
that she is engaged in a pattern of conduct with the company she is associated
with in the offer for sale of domain names.
DECISION
For the foregoing reasons, the Panel
concludes that :
-
The domain name
registered by the Respondent is identical to the trademark to which the
Complainant has rights; and
-
The Respondent
does not have rights or legitimate interest in respect of the domain name; and
-
The domain name
has been registered by the Respondent in bad faith.
Accordingly,
the Panel orders that the registration of the Domain Name <tradelinks.biz> be transferred to the Complainant, and
directs the Registrar, Domain Bank, Inc., to do so forthwith. No further challenges against this domain
name shall be allowed under the STOP Policy.
Jacques A. Léger Q.C,
Panelist
Dated: July 15, 2002
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