Freebies Publishing v. Retail Services, Inc.
Claim Number: FA0204000112565
Complainant is Freebies Publishing, Carpinteria, CA (“Complainant”) represented by Gary J. Nelson, of Christie, Parker & Hale LLP. Respondent is Retail Services, Inc., Plano, TX (“Respondent”) represented by Charles M. Hosch, of Strasburger & Price, LLP.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freebie.com>, registered with Verisign - Network Solutions, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 29, 2002; the Forum received a hard copy of the Complaint on April 30, 2002.
On May 1, 2002, Verisign - Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <freebie.com> is registered with Verisign - Network Solutions, Inc. and that Respondent is the current registrant of the name. Verisign - Network Solutions, Inc. has verified that Respondent is bound by the Verisign - Network Solutions, 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 May 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 21, 2002 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 email@example.com by e-mail.
Respondent filed a timely Response, which the Forum received and determined to be complete on May 21, 2002. Both Complainant and Respondent then filed additional responses. Complainant’s Additional Response was received timely on May 24, 2002. Respondent’s Additional Response was received after the deadline for submissions had passed. In the interest of fairness and in order to determine the dispute on the merits, the Panel reviewed and considered all submissions.
On June 24, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant asserts that it owns the FREEBIES trademark and that the domain name registered by Respondent is identical to its mark. Complainant urges that the Respondent registered the domain name, <freebie.com>, without rights to or legitimate interests in Complainant’s mark, which is contained in its entirety in the domain name at issue. Complainant contends that Respondent acted in bad faith by registering a domain name containing Complainant’s mark and then by disrupting the commerce of Complainant by using the domain name to sell goods in competition with Complainant.
B. Respondent maintains that the domain name is not identical to or confusingly similar to Complainant’s mark because Respondent did not underline FREEBIE in the domain name. Further, Respondent urges that the business it does, responding “in real time to several hundred transactions per second, hundreds or millions of transactions per year” is “sharply different” from Complainant’s business; that the words “freebie” and “freebies” are now generic and that Respondent engaged in bona fide sales prior to this proceeding. Further, Respondent urges that its Retail Services, Inc. and Freebie, Inc. are “thriving businesses, wholly independent of the Complainant’s printed magazine enterprise.”
C. Complainant’s Additional Response adds the claim that Respondent’s domain name is “confusingly similar” to Complainant’s mark; that Respondent is not known by “freebie” or “freebie.com;” and that while Respondent claims that Respondent holds registered rights to “freebie,” Respondent has not shown that it holds such rights and has not shown that it has applied for protection of a “freebie” mark.
D. Respondent’s Additional Response sets out that the mark owned by Complainant is “FAMILY FREEBIES,” although that is contradicted by the attachments to Respondent’s papers; that Retail Services, Inc. owns more than fifty percent of Freebie, Inc.; and that when it registered the domain name, Respondent had not heard of Complainant’s FREEBIES mark.
Complainant holds United States Patent and Trademark Office Registration Number 1,807,431, filed in 1992, for the FREEBIES mark, authorizing Complainant to produce and distribute under that mark periodicals containing information about mail order offerings. Complainant’s first use in commerce of the FREEBIES mark was recognized by the U.S.P.T.O. to have been in 1977.
Complainant and various distributors have sold approximately six million subscriptions of Complainant’s Freebies magazine and more than forty million magazines have been distributed over the past twenty years.
Complainant also contends that it has been the exclusive user of the FREEBIES mark in the United States since as early as 1977, and that it has used the mark continuously since that time although the record shows that others use some form of freebie with other terms. Nothing in the record shows that those other entities have legal rights to the FREEBIES mark.
Respondent registered the disputed domain name November 8, 1994, and incorporated the Freebie, Inc. corporate form as a Delaware Corporation on November 22, 1999.
Respondent asserts that its domain name is not identical to or confusingly similar to Complainant’s mark and that Complainant’s registered FREEBIES mark is limited to goods and services addressed in the registration, namely, periodicals, including magazines and newspapers with information about mail order offerings.
Respondent contends that Complainant’s registration of the FREEBIES mark does not extend to the use Respondent is making of its domain name registration. Respondent maintains that its business is different from Complainant and that Respondent “responds in real time to several hundred transactions per second, hundreds of millions of transactions per year.”
Respondent further urges that “freebie” and “freebies” are generic terms and that Complainant’s mark is a design mark, including a fanciful design element and that Complainant may only exclude others from using its design mark. Respondent then urges, notwithstanding, that by altering Complainant’s mark through the deletion of the letter “s,” Respondent has created a distinct mark.
Respondent further argues that it has engaged in a bona fide offering of goods and services using the mark prior to the Complaint.
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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) 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.
Complainant owns a United States Patent and Trademark Office registration for the FREEBIES mark (Reg. No. 1,807,431, filed in 1992), which is specified for periodicals containing information about mail order offerings. It has common law rights dating back to 1977. Because various distributors have sold approximately six million subscriptions of Complainant’s Freebies magazine and more than forty million magazines have been distributed over the past twenty years, one may presume that Complainant has expended resouces in developing good will for the FREEBIES mark.
Complainant asserts that it has been the exclusive user of the FREEBIES mark in the United States since as early as 1977, and that it has been using the mark continuously over the years. Respondent urges that deletion of the “s” to Complainant’s mark created a distinctive mark. Authorities support the positions of both of these parties relative to their respective contentions.
Complainant argues, with support, that Respondent’s <freebie.com> domain name is virtually identical to its FREEBIES mark and that it is confusingly similar. The subtraction of the letter “s” is inconsequential when conducting a confusingly similar analysis. The dominant focus of the domain name still reflects Complainant’s mark in its entirety and confusion will result. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between Complainant and Respondent, when in fact, no such relationship would exist).
Similarly, some authority exists for Respondent’s proposition that deletion of the “’s” creates a mark that is distinct. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. Feb. 11, 2002) ("Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different websites are quite often similar, because of the need for language economy, and that very small differences matter"); see also Bank of Am. Corp. v. Fluxxx, Inc., FA 103809 (Nat. Arb. Forum Feb. 18, 2002) (finding that Complainant failed to prove “confusing similarity” under Policy ¶ 4(a)(i) because it did not demonstrate that the public would be confused between its NATIONSBANK mark and the disputed domain name <nationsbanking.com>).
Respondent argues that Complainant’s registered FREEBIES mark is limited to the goods and services addressed in the registration, namely, periodicals, including magazines and newspapers with information about mail order offerings; and that Complainant’s protected mark is a design mark. Respondent contends that Complainant’s registration protects Complainant against others copying Complainant’s design mark but does not extend to Respondent’s use in the domain name that Respondent registered using the same name contained in Complainant’s mark. While Complainant’s registration is for printed goods, Respondent maintains that its business is different. Respondent alleges it “responds in real time to several hundred transactions per second, hundreds of millions of transactions per year.”
Some authority holds that if the term is generic, then neither would have exclusive rights to use the term. See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that Respondent has rights and legitimate interests in the domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”). While Respondent asserts that Complainant failed to investigate the “two hundred thirty-odd other websites” that appear to include the term “freebie” in the domain name, Respondent does not provide that type of proof that the words “freebie” and “freebies” are generic and cannot be protected by trademarks. See Rollerblade, Inc. v. CBNO and Redican, D2000-0427 (WIPO Aug. 24, 2000) (finding that “genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration”); see also Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (stating that "[c]ommon words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis"); see also Gen. Mach. Prod. Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum Mar. 16, 2000) (finding that the term "craftwork" is in widespread use in a descriptive sense and therefore Respondent has successfully rebutted Complainant’s arguments and has proven that it is in the business of selling generic and descriptive domain names such as <craftwork.com>); see also Lucky Money, Inc. v. ilovesschool.com, FA 96383 (Nat. Arb. Forum Mar. 9, 2001) (finding Complainant cannot claim exclusive common law rights to an expression - Lucky Money – comprised of generic terms).
Respondent made a showing that the word “freebie,” is defined by Merriam-Webster’s Collegiate Dictionary, 10th Edition, as: “something (as a theater ticket) given without charge.” Respondent’s Google Search showed ten (10) uses of the word in its generic sense, i.e. “something given without charge.” Respondent submitted other Internet listings along with papers showing that Freebie, Inc. was organized pursuant to Delaware law, November 22, 1999, and that its Registered Office or Registered Agent was located in the State of Texas as of November 9, 2001.
In fact, Complainant has obtained trademark protection for its “FREEBIES” mark and Respondent has not shown that it has such protection for any “freebie” mark. Further, Respondent’s corporate registration of Freebie, Inc., followed by nearly twenty-two years Complainant’s registration of its FREEBIES mark. The deletion of the letter “s” did not create a distinctive mark such as would defeat a claim of confusing similarity.
Respondent also argues that Respondent may put the “s” back on to the mark when it places meta-tags[i] at its domain name site to aid Internet users in accessing information. This disingenuous argument tends to defeat what might have been viewed as Respondent’s otherwise acceptable use of freebie in a domain name. Respondent knowingly uses Complainant’s mark, in its entirety in meta-tags, all the while claiming that the actual domain name is distinct and different from Complainant’s mark. Respondent cannot have its cake and eat it too; Respondent’s use of FREEBIES in meta-tags provides some persuasion that Respondent intends to confuse Internet users as to the source and sponsorship of its domain name and that constitutes a confusingly similar domain name in name and in context in order to capitalize on Complainant’s twenty-two years of experience in this area of commerce. Such conduct may be held to be calculated to confuse Internet users because both Complainant and Respondent are in for-profit markets of directing customers to free goods. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. Feb. 11, 2002) ("Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different websites are quite often similar, because of the need for language economy, and that very small differences matter"); see also Bank of Am. Corp. v. Fluxxx, Inc., FA 103809 (Nat. Arb. Forum Feb. 18, 2002) (finding that Complainant failed to prove “confusing similarity” under Policy ¶ 4(a)(i) because it did not demonstrate that the public would be confused between its NATIONSBANK mark and the disputed domain name <nationsbanking.com>).
The Panel finds that ICANN Policy ¶ 4(a)(i) relative to “confusing similarity” has been satisfied; the domain name <freebie.com>, especially with the FREEBIES meta-tags used to promote it, is confusingly similar to Complainant’s registered mark FREEBIES.
Complainant argues that, under the UDRP, Respondent bears the burden of proving it has rights or a legitimate interest in the contested domain name. See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with Respondent to demonstrate that it has rights or legitimate interests). Complainant believes Respondent fails to overcome this burden for numerous reasons: (1) Respondent is not commonly known as “Freebie” or <freebie.com> pursuant to Policy ¶ 4(c)(ii), and (2) Respondent is opportunistically trading on the fame of Complainant’s mark in violation of Policy ¶¶ 4(c)(i) and (iii). Complainant further asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name because Respondent is not named “Freebie” and does operate under any fictitious business names comprised of the term “Freebie.” Complainant alleges, and Respondent does not dispute, that Respondent is not licensed or authorized to use Complainant’s marks. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
Complainant also contends that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) and that it does not represent a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because Respondent is intentionally trading on the fame of Complainant’s FREEBIES mark by diverting unsuspecting Internet users.
Complainant further alleges that Respondent not only is using a confusingly similar domain name but is using Complainant’s exact trademark, FREEBIES, in its meta-tags; thus, Respondent’s actions evidence prior knowledge of Complainant’s mark and intent to trade on the mark. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).
Respondent asserts that it is commonly known by the domain name because it owns stock in a company named “Freebie, Inc.” However, Complainant argues that owning stock in a company clearly does not give Respondent rights under the Policy ¶ 4(c)(ii). Complainant makes a similar argument in response to Respondent’s allegations that one of its employees is also an employee of “Freebie, Inc.” In fact, the papers in this proceeding show that Retail Services, Inc., registered the domain name and that on the face of the documents, Retail Services, Inc., is not “freebie.com” or “Freebie, Inc.” Respondent is Retail Services, Inc. and Respondent has offered no proof to show that that Retail Services, Inc. is known as “freebie.com” or “Freebie, Inc.”
Respondent claims that its president is also the acting president of Respondent’s subsidiary, Freebie, Inc., and further alleges that Freebie, Inc. is a recognized Delaware Corporation authorized to do business in Texas. Respondent asserts that it is the primary owner of the stock of Freebie, Inc. and that it has been known by that name since well before the domain name dispute arose; however, Respondent offered no proof to that effect other than subjective manifestations. Respondent asserts that it has demonstrated rights to and legitimate interests in the contested domain name pursuant to Policy ¶ 4(c)(ii). See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that Respondent has rights and a legitimate interest in the domain name since the domain name reflects Respondent’s company name).
Respondent also maintains that it has been engaged in the business of providing promotional services since prior to the initiation of Complainant’s claim. Respondent offers registered users the opportunity to obtain points or rewards to be used in conjunction with participating merchants in order to obtain free or discounted merchandise; thus, Respondent believes it has used the contested domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Sweeps Vacuum & Repair Ctr., Inc. v. Nett Corp., D2001-0031 (WIPO Apr. 13, 2001) (finding bona fide use of a generic domain name, <sweeps.com>, where Respondent used a legitimate locator service (goto.com) in connection with the domain name); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (finding rights and legitimate interests in the domain name where Respondent sought to develop a bona fide business use for the domain name); see also IG Index PLC v. Index Trade, D2000-1124 (WIPO Oct. 16, 2000) (finding that Respondent has rights in the domain name because Respondent’s claimed use of the domain name is a “plausible explanation” to which the Panel must give weight).
The Panel finds that Complainant has established that it has exclusive rights to and legitimate interests in the FREEBIES mark for “periodicals, including magazines and newspapers with information about mail order offerings” and that Respondent has not shown a right to use meta-tags containing Complainant’s FREEBIES mark at a confusingly similar <freebie.com> domain name site. Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent is intentionally using the contested domain name to attract Internet users to its website by deliberately creating a likelihood of confusion between the domain name and Complainant’s registered mark; Respondent’s domain name emulates Complainant’s FREEBIES mark in meta-tags. Complainant argues that Respondent’s actions represent a deliberate attempt to opportunistically trade on Complainant’s established mark and the attached goodwill; thus, representing bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Complainant and Complainant alleged that Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, pursuant to Policy ¶ 4(b)(iii)). Complainant claims that Respondent uses the domain name, which is substantially identical to Complainant’s mark, to connect to a website offering competing goods and services. See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7,2000) (defining “competitor” as "…one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business). See also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the Respondent linked the domain name to a website that offers a number of web services); see also See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).
Respondent maintains that it and its subsidiary, Freebie, Inc., are serious, thriving businesses, wholly independent of Complainant’s printed magazine enterprise and that Respondent’s registration of its domain name was a deliberate selection that corresponds to its legitimate business objectives. See Lowestfare.com LLC v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000) (finding no bad faith where Respondent was using the descriptive domain name <thelowestfare.com> to lead consumers to a source of lowest fares in good faith); see also Pensacola Christian Coll. v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001) (finding that after Respondent is determined to have rights and legitimate interests in the disputed domain name, there is no need to decide the issue of bad faith).
Respondent also asserts that it is not disrupting Complainant’s business, primarily because it is not a competitor, as Respondent is not in the printed-goods business. See Gorstew Ltd. v. Twinsburg Travel, FA 94944 (Nat. Arb. Forum July 7, 2000) (finding no bad faith under Policy ¶ 4(b)(iii) because Respondent and Complainant are not truly competitors).
Furthermore, Respondent registered the contested domain name <freebie.com> on November 8, 1995, almost seven years ago, and more than two years before Complainant registered its own domain name. See DJF Assocs., Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding Respondent has shown that it has a legitimate interest in the domain name because Respondent selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of dispute). Furthermore, Respondent argues that Complainant allowed a significant amount of time to elapse before it felt compelled to initiate this Complaint; thus, Complainant’s sincerity in its assertions should be questioned. See New Piper Aircraft, Inc. v. Piper.com, FA 94367 (Nat. Arb. Forum May 2, 2000) (stating that Complainant’s failure to initiate a suit in over two years indicated that Complainant did not believe that Respondent intended to attract customers through confusion); see also Bosco Prod., Inc. v. Bosco email Serv., FA 94828 (Nat. Arb. Forum June 29, 2000) (“Without determining if the passage of considerable time would alone bar Complainant from relief in this proceeding, the Panel notes that Complainant does not explain why it has waited nearly four years to try and resolve [the domain name dispute]”).
Additionally, Respondent argues that it has included the meta-tags of Complainant’s mark, FREEBIES, on its website because Complainant’s design mark is substantially similar to Respondent’s domain name. Respondent claims it has placed a pluralization of its <freebie.com> domain name in its meta-tags in order to aid Internet users with any misspellings, and not as an element of bad faith. Further, Respondent alleges that Complainant has, on the alternative, used ‘freebie’ in its own meta-tag code on its website.
Lastly, Respondent argues that at no point has it ever offered to sell its domain registrations; that it did not register its domain name in order to prevent a mark owner from reflecting a mark in a corresponding domain name and that it did not engage in a pattern of such conduct. Respondent also asserts that it has never attempted to create a likelihood of confusion to another’s mark as such is forbidden by Policy ¶ 4(a)(i). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO October 12, 2001) (finding that where Respondent has not attempted to sell domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of Complaint seeking to disrupt Complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith).
In determining bad faith, the Panel looks at the entire circumstances and while the Panel views the Complainant’s wait before complaining of the disputed domain name to be extended, Complainant obtained legal trademark status of FREEBIES in 1992 and had enjoyed common law rights beginning in 1977 to the FREEBIES mark. Respondent created its corporation in Delaware on November 22, 1999, registering its office in Texas November 9, 1999. Respondent’s corporation was created some twenty-two years after Complainant began its operations. Respondent admits that, in providing information at its domain name site, Respondent used Complainant’s FREEBIES mark in its entirety in meta-tags to attract Internet users to the site. Respondent’s subjective manifestation that it had no bad faith in using the FREEBIES mark as meta-tags must be balanced with Respondent’s objective manifestations and the general unlikelihood that Respondent would not have been aware of Complainant’s prior interest in the FREEBIES mark after Complainant’s twenty-two years of providing in print form what Respondent sought to provide over the Internet. These circumstances suggest opportunistic bad faith, although the Panel believes that the result might well have been different had Respondent not taken the extra step of adding FREEBIES as meta-tags to its domain name website.
The Panel finds that the requirements of Policy ¶ 4(a)(iii) relative to a showing of “bad faith” have been satisfied.
Having determined that all three of the required showings have been satisfied, the Panel concludes that the requested relief should be granted.
It is accordingly ORDERED that the domain name <freebie.com> should be and is hereby transferred from Respondent to Complainant.
Hon. Carolyn Marks
Dated: July 15, 2002.
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[i] Meta Tag is defined as: Meta KEYWORDS tag is used to group a series of words that relate to a website. These tags can be used by search engines to classify pages for searches. The Meta DESCRIPTION is used to describe the document. The meta description is then displayed in search engine results.