InterTrade Systems Corporation v. Donna Lawhorn
Claim Number: FA0204000112488
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.
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.
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.
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.
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,
Dated: July 15, 2002
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