National Arbitration Forum

 

DECISION

 

NameMedia, Inc. and iGuide, Inc. and Media Community, LLC v. Leigh Fulgum

Claim Number: FA0801001125595

 

PARTIES

Complainant is NameMedia, Inc. and iGuide, Inc. and Media Community, LLC (“Complainant”), represented by John L. Welch, of Lowrie, Lando & Anastasi, LLP., One Main Street, Eleventh Floor, Cambridge, MA 02142.  Respondent is Leigh Fulghum (“Respondent”), 398 E Dania Beach Blvd #298, Dania Beach, FL 33004.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <davesgarden.info>, 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.

 

Richard DiSalle is the Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 2, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 3, 2008.

 

On January 3, 2008, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <davesgarden.info> 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 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 30, 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@davesgarden.info by e-mail.

 

A timely Response was received and determined to be complete on January 25, 2008.

 

 

On February 6, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard DiSalle as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.  Complainant

Complainant’s Amended Complaint asserts the following:

Complainants, iGuide, Inc. and Media Community, LLC, are wholly-owned subsidiaries of Complainant NameMedia, Inc.. Complainant NameMedia, Inc. operates the Dave’s Garden website.  Complainant iGuide, Inc. is the owner of the common law service mark DAVE’S GARDEN used as the name of an Internet website located at <davesgarden.com>.  The website provides an on-line community at which visitors may obtain and/or share information about all things relating to gardening.  Complainant Media Community, LLC is the registered owner of the <davesgarden.com> domain name.

 

The domain name <davesgarden.com> was registered on September 22, 2000 by David Whitinger, the creator and publisher of the Dave’s Garden website.  In January 2007, Dave Whitinger assigned his rights in the service mark in the website, and in the domain name to Complainant NameMedia, Inc.  Dave Whitinger continues to operate the Dave’s Garden website as an employee of NameMedia, Inc. 

 

The Dave’s Garden website has been in continuous operation at <davesgarden.com> since its inception in 2000.  The Dave’s Garden website is a convenient and free resource whose mission is “To nurture and support an online community of gardeners and homeowners with open and safe discussion forums, friendly and intuitive web-based applications, and accurate and useful information.”  The website includes articles and other media concerning a wide range of gardening topics, more than 200 “forums” where visitors may express their views and offer their advice regarding gardening issues, a plant identification database, an insect identification database, and a directory of gardening vendors and suppliers with a corresponding archive of comments from visitors.

 

The Dave’s Garden website has more than 330,000 registered members (registration is free), and more than 10,000 subscribers to its e-mail newsletter.  Its gardening forums contain more than 450,000 individual threads and more than 4 million individual postings from readers. Its popularity has grown enormously since 2000, from a total of 195,583 hits in the year 2000, to some 166,965,158 hits in 2006, and from 23,062 visits in 2000 to 22,286,210 in 2006. Complainants aver that the Dave’s Garden website is the most popular gardening website on the Internet.

 

Complainant iGuide, Inc. is the owner of U.S. Service Mark Application Serial No. 77/320718, filed on November 3, 2007, for the mark DAVE’S GARDEN claiming use of the mark since September 2000.

 

Complainants and their predecessor in interest, David Whitinger, have developed common law rights in the service marks DAVE’S GARDEN and davesgarden.com by reason of more than seven years of operation of the Dave’s Garden website at <davesgarden.com>.

 

The domain name <davesgarden.info> is identical or confusingly similar to Complainants’ service marks DAVE’S GARDEN and davesgarden.com.  For purposes of comparing these marks with the Offending Domain, the TLD “.info” should be given no consideration.

 

Also, the elimination of the apostrophe from the DAVE’S GARDEN mark in the offending domain is without legal significance.

 

Respondent is not known by the name “Dave’s Garden.”  It owns no trademark or service mark registration or application for that term, and it was never authorized by Complainants or by David Whitinger to use the offending domain. 

 

Respondent’s goal in registering and using the domain name <davesgarden.info> is to retaliate for what it alleges to be Complainants’ wrongdoing in publishing disparaging remarks about Respondent.  Nonetheless, Respondent will likely claim that its registration and use of the Offending Domain was in good faith as a legitimate criticism site.

 

The Panel has received Complainant’s Additional Submission and Additional Statement, and those documents contain the following averments:

 

The case law makes it clear that Respondent has no right to register and use a domain name that is identical to Complainant’s service mark DAVE’S GARDEN in order to divert traffic to another website (let alone one that disparages Complainants and their website).

 

Respondent Fulghum is looking to do more than provide her opinion criticizing the operation of the DAVE’S GARDEN website.  She is looking to retaliate for the fact that Complainants allow customers to post comments and reviews of Florida Plants Online – comments and reviews that, it so happens, were not favorable. 

 

B.  Respondent

Respondent has a legitimate interest and rights in publishing community forum content on a domain with the URL <davesgarden.info>, as a First Amendment protected gripe site, to defend herself, her family and her livelihood against character slurs and copyright infringements employed by Dave Whitinger and <davesgarden.com> as part of a general publishing dispute which began late in 2003.

 

Leigh Fulghum's livelihood is centered around her domain <floridaplants.com>.  It hosts a number of features, including her professional resume, photographs, landscape plans and articles she authors.  Under the registered fictitious entity "Florida Plants Online", the domain <floridaplants.com> also hosts mail-order forwarding catalogs managed by spouse Joseph Fulghum, and stores stocked with affiliates' products, plants and flowers shipped by affiliates.  Both <floridaplants.com> and "Florida Plants Online" have been in continuous operation since 1997.

 

The decision to publish a gripe site was made because the many businesses damaged by <davesgarden.com> have this legitimate gripe in common:  when Dave Whitinger is notified of inaccuracies in his published information, he claims immunity under the First Amendment.

 

The purpose of the <davesgarden.info> website content is clearly stated and the gripe is legitimate.  Leigh Fulghum asserts that <davesgarden.info> is the correct URL for the specific community it serves.  There is no garden information published, or features of any kind at <davesgarden.info> which compete with the content published at <davesgarden.com>.  There are no external links, pointers or promotions of other websites at <davesgarden.info>.

 

There are no products for sale, no advertisements or affiliate commissions or incomes of any kind derived from Respondent’s domain <davesgarden.info>.  The domain name <davesgarden.com> is not used in any text on the domain <davesgarden.info>.

 

FINDINGS

(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.

 

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.

 

Identical and/or Confusingly Similar

The Panel finds that Complainant need not have registered the DAVE’S GARDEN mark with a governmental authority in order to possess rights sufficient to satisfy Policy ¶ 4(a)(i).  See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).  Complainant has established common law rights in the DAVE’S GARDEN mark through its continued use and operation of the website located at the <davesgarden.com> domain name for more than seven years, sufficient to satisfy Policy ¶ 4(a)(i).  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM.

 

The Panel finds that Respondent’s <davesgarden.info> domain name is identical or confusingly similar to Complainant’s mark.  The Panel finds that punctuation missing from the disputed domain name is irrelevant for the purposes of similarity under Policy ¶ 4(a)(i).  See Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003).

 

Rights or Legitimate Interests

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”).

 

Respondent is not commonly known by the disputed domain name, owns no trademark or service mark rights in the DAVE’S GARDEN mark, and was not authorized by Complainant to use the mark or disputed domain name.  The Panel finds that Respondent lacks rights and legitimate interests pursuant to Policy ¶ (c)(ii).   See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002).

 

Respondent’s right to express its views is not tantamount to identifying itself by Complainant’s DAVE’S GARDEN mark, and therefore Respondent has no rights or legitimate interested in the disputed domain name.  The Panel finds that Respondent’s use has not established rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Baker & Daniels v. DefaultData.com, FA 104579 (Nat. Arb. Forum Mar. 27, 2002) (finding that because the respondent’s <bakeranddaniels.com> domain name merely incorporates the complainant’s trademark, without more, it is not protected by the First Amendment); see also Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000) (“[T]he Panel does not dispute Respondent’s right to establish and maintain a website critical of Complainant . . . However, the panel does not consider that this gives Respondent the right to identify itself as Complainant.”).

 

Registration and Use in Bad Faith

Respondent is using the disputed domain name, <davesgarden.info>, solely as a device to draw Complainant’s customers to Respondent’s websites.  The Panel finds that Respondent’s use of the disputed domain name, which is confusingly similar to Complainant’s DAVE’S GARDEN mark, to confuse and redirect Internet users to Respondent’s website and disrupt Complainant’s business is evidence of bad faith pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).

 

The Panel also finds that Respondent’s use of the disputed domain name to resolve to a complaint site tarnishes Complainant’s mark and is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Advanced Research & Tech. Inst., Inc. v. LeVin, FA 318079 (Nat. Arb. Forum Nov. 19, 2004).

 

The Panel also finds that Respondent’s actual or constructive knowledge of Complainant’s DAVE’S GARDEN mark at the time of registration of the disputed domain names is further evidence of bad faith pursuant to Policy ¶ 4(a)(iii).  See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002).

 

We agree with the decision in Monty & Pat Roberts, Inc. v. Keith, supra, that while Respondent has the right to create a website critical of Complainant, this does not give her the right to appropriate Complainant’s domain name.

 

DECISION

Complaint’s having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <davesgarden.info> domain name be TRANSFERRED from Respondent to Complainant.

 

Richard DiSalle, Panelist
Dated:  March 7, 2008

 

National Arbitration Forum

 

 

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