American Wealth Alliance, Inc. v KB aka Katarzyna Bieniek

A timely Response was received and determined to be complete on February 27, 2008.

On March 3, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends as follows:

BreedersClub.net has been using the BREEDERSCLUB mark since at least as early as 2001. Complainant’s pet search directory and services are well and favorably known throughout the United States.

BreedersClub.net has built valuable goodwill and a strong reputation in BREEDERSCLUB and all composite marks accompanying the mark. BreedersClub.net aggressively advertises its products and services. As a result of its expenditures of considerable sums of money on advertising and promotional activity, BreedersClub.net has built the BREEDERSCLUB mark into the distinctive identifier of the BreedersClub.net’s pet search product and services.

BREEDERSCLUB has become famous. It has been cited in magazines, online blogs, and other publications. As such, individuals and other entities have come to recognize Complainant’s BREEDERSCLUB mark as the distinctive identifier of its pet directory and advertising services.

Respondent’s Unauthorized Registration and Use of BREEDERSCLUB. For purposes of this Complaint, the earliest date in which Respondent’s registration occurred is September 22, 2007, or the date on which the most recent transfer of <breedersclub.com> to both a different Registrar (Intercosmos Media Group, Inc. to Key-Systems GmbH) and different Registrant (Kevin Chang to P-K0B173) occurred; this was more than 7 years after Complainant registered <breedersclub.net>.

Respondent became the Registrant of <breedersclub.com> sometime after September 21, 2007. Respondent has not been the Registrant since <breedersclub.com>’s original registration, nor has <breedersclub.com> been registered with the same Registrar.

While <breedersclub.com>’s use did not begin until after Complainant had registered and began using <breedersclub.net>, the current registrant and Respondent’s use was the first that redirected <breedersclub.com> to <puppyfind.com>.

Prior use of <breedersclub.com>began on April 14, 2001 with a website for ADDR Web Hosting and continued until December 30, 2004. Following the expiration of the domain, upon information and belief, <breedersclub.com> was acquired at an auction in 2005.

Respondent’s use of the Infringing Domain began at least 5 years after BreedersClub.net had been using <breedersclub.net>, assuming the redirect occurred in 2005, but more likely 6-7 years after Complainant’s first use of BREEDERSCLUB. While the domain forward may have started earlier than 2007, the archiving and cache tools available do not reflect this.

The website found at <puppyfind.com> (referenced by the at-issue domain name) competes with Complainant BreedersClub.net. In fact, <puppyfind.com> offers nearly identical products and services as those offered by BreedersClub.net, including, among other things, search tools to find puppies and information about different breeds and breeders. Most important of which, it includes a “Dog Breeder Directory.” Unsuspecting consumers looking for Complainant’s well-known directory may be confused by Respondent’s imitation.

Complainant never authorized Respondent to register, let alone use <breedersclub.com>to redirect to a direct competitor of Complainant, <puppyfind.com>. Respondent’s domain forwarding to Complainant’s competitor continues as of the date of this filing.

Breedersclub.com is Identical to the BREEDERSCLUB Trademark in which Complainant BreedersClub.net Has Rights. Complainant has common law trademark rights in BREEDERSCLUB. BreedersClub.net’s common law rights have accrued through its continuous and extensive use of the BREEDERSCLUB mark on the Internet in connection with its pet-searching directory and advertising services since February 2001.

BreedersClub.net has established secondary meaning in the mark BREEDERSCLUB. This is true given the nature and extent of advertising as well as consumer and media recognition. Not only is Complainant’s business, BREEDERSCLUB mark, and website featured in numerous publications, it is also highly ranked by various media outlets, as noted in the background section above.

Since Complainant has been able to identify that <breedersclub.com>was transferred to a new Registrant and a new Registrar multiple times since Complainant’s registration and use of <breedersclub.net>, Complainant’s rights long predate any rights Respondent would attempt to claim. Even if the effective date of Respondent’s registration of the Infringing Domain dates back to 2005 when an auction occurred, this is still 5 years after Complainant’s registration of <breedersclub.net> and 4 years after Complainant’s first use of <breedersclub.net> to house its pet related website. Thus, it is impossible for the Respondent to have registered the at-issue domain name before Complainant developed rights to BREEDERSCLUB.

Respondent’s <breedersclub.com> domain name is identical to Complainant’s BREEDERSCLUB mark because the domain name fully incorporates Complainant’s mark and merely adds the top-level domain “.com.” Respondent’s Infringing Domain is identical to Complainant’s BREEDERSCLUB mark.

The Respondent Has No Rights or Legitimate Interests in Respect of the Domain Name breedersclub.com. Respondent has not been commonly known by the at-issue domain name, and Respondent has acquired no trademark or service mark rights in BREEDERSCLUB. Complainant could not identify anything showing that Respondent carries on its own business as BREEDERSCLUB. In addition, Complainant never authorized, licensed, or otherwise permitted Respondent to use its BREEDERSCLUB mark or allowed Respondent to associate itself with BreedersClub.net in any way.

Therefore, Respondent’s registration and use of the Infringing Domain as a domain forward is not legitimate. Respondent’s use of <breedersclub.com> is not in connection with a bona fide offering of goods or services.

Finally, as discussed above, although <breedersclub.com> was created in the domain name registry prior to <breedersclub.net>, no website appeared at <breedersclub.com> until after Complainant’s <breedersclub.net> website was registered and functioning. Moreover, since the Respondent’s registration was not earlier than September 21, 2007, when both the Registrar and Registrant information changed Respondent’s rights to the domain name <breedersclub.net> did not predate Complainant’s rights.

Respondent is using <breedersclub.com> to redirect Internet users searching for Complainant to its <puppyfind.com> website where it offers competing products and services, Respondent has no rights in BREEDERSCLUB or a legitimate interest in <breedersclub.com>.

The Domain Name Was Registered and Is Being Used in Bad Faith. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶ 4(a)(iii). Respondent registered and is using the at-issue domain in bad faith primarily for the purpose of disrupting Complainant’s business. Respondent is intentionally attracting Internet users to a competitor’s website that offers the same and similar products and services as those offered by the Complainant. In doing so, Respondent creates a likelihood of confusion with Complainant’s BREEDERSCLUB mark as to the source, sponsorship, affiliation, or endorsement of the redirected website and the products and/or services available on that website, <puppyfind.com>.

Respondent is using Complainant’s BREEDERSCLUB mark to divert Internet users seeking Complainant’s pet directory and advertising services. Respondent is simply trying to trick the public into believing it is the Complainant and then redirecting to a competitor’s site. In fact, Respondent is causing confusion among Complainant’s prospective customers, as evidenced by numerous phone calls from people that have noted that they tried to find Complainant’s site but ended up on <puppyfind.com> as well as e-mails. Once an Internet user mistakenly types “.com” instead of “.net” into her web browser, she is redirected the <puppyfind.com>, which offers similar products and services. It does not matter that once the Internet users are there they may recognize the unlikelihood of a business relationship between the Complainant and the Respondent since the Respondent would have already gained website traffic. Respondent’s unauthorized and unapproved mis-direction of consumers searching for BREEDERSCLUB products and services to a competitor’s website is solely for the purpose of achieving commercial gain since users can purchase items from <puppyfind.com>.

Taking into consideration that Complainant’s well-established company name and BREEDERSCLUB mark is known throughout the United States and Canada, the Respondent knew or should have known of the Complainant’s trademark rights when it decided to redirect <breedersclub.com> to a competitor of Complainant. Even if Respondent did not have actual knowledge of Complainant prior to its registration of the disputed domain name, Respondent can not escape the fact that it had constructive notice, namely because of the Complainant’s prior content on the <breedersclub.net> website before Respondent ever placed any content on its <breedersclub.com> website. This constructive knowledge is sufficient to support a finding of bad faith. Thus, Respondent should have reasonably been aware of Complainant’s BREEDERSCLUB mark not only because of its selection of the identical mark for its domain name, but also because of the prior use.

Therefore, Respondent has registered and is using the <breedersclub.com> domain name as misdirection in bad faith.

B. Respondent

Respondent contends as follows:

The domain <breedersclub.com> is generic. It is descriptive of a category, and one the complainant did not originate. It is as generic as “SportsClub.com,” “Chessclub.com,” “Socialclub.com,” “BoysClub.com,” etc.

As to the generic quality of the Complainant’s domain -- its lack of a secondary meaning -- a quick Google search reveals that hundreds if not thousands of breeders clubs exist in the United States alone. The vast majority of these clubs are involved in breeding dogs or cats, as this is the business associated with breeders clubs. Thus, since the owners of “BreedersClub.net” are in this very business and have, therefore, not created a secondary meaning associated with their domain, there is nothing to infringe upon.

The Complainant has no trademark or service mark whatsoever. Nor has the Complainant applied for a trademark. There is no possible way that Respondent could have been aware of a trademark that did not exist. It is highly unlikely that the Complainant would be granted a trademark for a generic term for which they have not created a secondary meaning. The Complainant didn't invent the term “Breeders Club” and thus has no special right to it.

Respondent acquired the domain in September 2005. It is not tenable to claim that Respondent could have known about a website that had no trademark or service mark and no traffic of which to speak. That the domain <breedersclub.net> was famous strains credulity.

“Puppyfind.com” is as much a breeders club as the Complainant’s business is; they are in the same business. “Puppyfind.com” is a bona fide offering of goods.

Respondent owns hundreds of generic dog-related domains. We have been buying generic dog-related domains since long before the Complainant went into business in 2001. For now, our business is to sell the traffic to dog related companies. At some point in the near future, however, we hope to open our own site for dog lovers.

The at-issue domain name is not identical to a trademark or service mark to which the Complainant has rights.

It is well established under the UDRP that anyone can register a generic term and by doing so develops a legitimate interest. Immediately before the Complainant was served, <breedersclub.com> redirected to <puppyfind.com> as did all of Respondent’s dog related domains like the ones listed above. Puppyfind.com is a bona fide business that offers listings of breeders. At the moment the domains are parked at HitFarm while Respondent collect much needed statistics which PuppyFind was unable to provide me with. The parking pages are also a bona fide use for generic domains and provide links to bona fide businesses that are dog related.

Bad faith use and registration. Before the Complaint was filed, Respondent never heard of nor visited the site <breederscub.net>. At the time the at-issue domain was purchased <breedersclub.net> received no measurable traffic. The site was neither well known nor famous. Respondent was in the habit of buying generic dog related domains long before the Complainant started their business. Respondent’s business is to sell traffic to legitimate dog related businesses and has been selling traffic to <puppyfind.com> for the past 4 years.

Respondent requests a finding of “Reverse Domain Hijacking.”

FINDINGS

Complainant has common law trademark rights in the mark BREEDERSCLUB.

The at-issue domain name resolves to a website containing links to pet related services and products some of which may be competitors of the Complainant.

The services of Respondent offered at its website are similar to the services of Complainant and compete with Complainant.

The Respondent uses Complainant’s trademark as a trademark and not in a descriptive sense.

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

Complainant asserts common law rights in the BREEDERSCLUB mark. Trademark registration is not required for Complainant to establish rights in the BREEDERSCLUB mark. 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.”); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist). Complainant contends that it has been using the claimed mark on the Internet since 2001 in connection with its directory services.

The record contains evidence of the extent that Complainant’s claimed mark has acquired secondary meaning. Complainant establishes colorable common law rights in the BREEDERSCLUB mark by showing that the mark has likely acquired sufficient secondary meaning through continued commercial use. See Hiatt v. Pers. Fan & Official Site Builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“[R]egistration 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.”); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).

Therefore, Complainant has trademark rights in BREEDERSCLUB sufficient to maintain the instant action under the UDRP. See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning); see also 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).

Respondent’s <breedersclub.com> domain name is identical to Comlainant’s BREEDERSCLUB mark pursuant to Policy ¶ 4(a)(i). The addition of the generic top-level domain (“gTLD”) “.com,” or “net” are inmaterial to the inquiry. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.).

Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy Complainant must first make out a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names. The threshold for such showing is low. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005). Once a prima facie case is established, the burden then shifts to Respondent who must demonstrate that it nevertheless has rights or legitimate interests in the at-issue domain name. Complainant contends that it did not authorize Respondent to use the <breedersclub.com>domain name. Respondent is neither affiliated with, nor commonly known as, BREEDERSCLUB. Complainant also asserts that Respondent has no legitimate business use for the domain name. Therefore, Complainant has satisfied its light burden.

In support of its position Respondent claims to be using the <breedersclub.com> domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). According to Respondent, Respondent provides Internet traffic for dog related businesses by redirecting users to another domain name. Respondent asserts that the at-issue mark is generic in nature and therefore Respondent has legitimate rights or interest with respect to the domain name. Numerous panels have held that a Respondent may have legitimate rights and interest in a generic or descriptive domain name. Citations omitted.

BREEDERSCLUB does not describe the business of the Respondent. On investigation by the Panel and contrary to the Response, <breedersclub.com> now resolves to a website with a homepage entitled: “Welcome to breedersclub.com.” Accessing this website causes one or more pop-up advertisements to appear that are wholly unrelated to dogs. The <breedersclub.com> homepage contains categorized links to sponsoring websites and essentially no other content. Some of the referenced websites appear to be in competition with the Complainant, but are not necessarily described by the at-issue domain name. The links presented are not all to “breeders,” or to “breeder clubs,” or “clubs” but rather to an array of pet related interests including birdcages, pet medicine and insurance.

The Panel concludes that the at-issue domain name is only tenuously related to the content listed on the Respondent’s website and further that Respondent uses the domain name in a trademark sense; that is to identify the source of its services (a listing service for pet related links) rather than to describe the nature of the service offered or content of the website. On the other hand, the Complainant shows that it has trademark rights in the BREEDERSCLUB mark.

Respondent is admittedly steeped in the acquisition of domain names. Its business model depends on the domain names it registers and uses to have some innate draw or attraction to those wandering the Internet in search of, in the instant case, pet related interests. It is beyond the pale to assert, as Respondent does, that Respondent was unaware, at the time of registration and at the creation of its website, that the owner of <breedersclub.net> would likely claim trademark rights in the BREEDERSCLUB mark.

In Advanced Drivers Education Products & Training, Inc. v. MDNH, Inc., FA 567039 (Nat. Arb. Forum Nov. 10, 2005), the panel concluded that the respondent’s domain name was not used in the trademark sense, but was “a descriptor of the site’s intended content or theme,” and therefore the complainant failed to prove that the respondent lacked any rights or legitimate interests in the disputed domain name. However unlike the respondent in Advanced Drivers, the respondent in our case is not using the <breedersclub.com>domain name in any purely descriptive sense. Here the domain name is used as a trademark to identify the source of the website rather than its content.

Respondent uses the domain name as a trademark, rather than for any descriptive value it might have. As such, Respondent’s registration and use of the at-issue domain name is not a legitimate or bona fide use of the domain name and Respondent does not have rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii) to use against the interests of the Complainant is. See Lotte Berk Method Ltd. v. ATTN: lotteberkmethod.com, FA 667767 (Nat. Arb. Forum May 8, 2006).

Registration and Use in Bad Faith

Respondent registered and used the at-issue domain name after Complainant had been trading under the name BREEDERSCLUB for several years. As noted above Respondent registered the domain with either actual or constructive knowledge that the Complainant was using the mark in a trademark sense. It created its website in light thereof.

As also noted above, the at-issue domain name is identical to Complainant’s claimed mark. The Panel finds that the at-issue domain name is likely to cause confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website under ¶ Policy 4(b)(iv). The website referenced by the at-issue domain name references businesses that may compete with the Complainant and is itself commercial in nature and only tangentially related to breeding. Such is evidence of bad faith. See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Hancock Fabrics, Inc. v. Active Advantage, Inc., FA 204111 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent’s use of the <hancockfabric.com> domain name, a domain name confusingly similar to Complainant’s HANCOCK FABRICS mark, to redirect Internet traffic to a website that provides a selection of jokes demonstrates Respondent’ bad faith use of the disputed domain name because Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which evidences bad faith registration and use under Policy ¶ 4(b)(iv).”).

Respondent registered the domain name after the Complainant had been using the name for a number of years. Respondent used the at-issue domain name against the interests of the Complainant. The Panel finds above that although Respondent claims otherwise, it is more likely than not that Respondent had actual knowledge that the Complainant conducted business as BREEDERSCLUB prior to registration and use of the domain name. It is also more likely than not that the attraction of adding the particular domain name to Respondent’s bank of domain names was because of its trademark value not because of any descriptive quality that the domain name might have. Therefore, the Panel again concludes that Respondent’s intent in registering and using the at-issue domain name was to “attempted to attract, for commercial gain, Internet users to [Respondent’s] web site … by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location.” Policy 4(b)(iv).

Given the forgoing the Complaint demonstrates that Respondent registered and used the at-issue domain name in bad faith.

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 <breedersclub.com>domain name be TRANSFERRED from Respondent to Complainant.

Paul M. DeCicco, Panelist
Dated: March 17, 2008

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