ACE Limited v. WebMagic Ventures, LLC
Claim Number: FA0802001143448
Complainant is ACE Limited (“Complainant”), represented by Alfred W. Zaher, of Blank Rome LLP, Pennsylvania, USA. Respondent is WebMagic Ventures, LLC (“Respondent”), represented by Carl Oppedahl, of Oppedahl Patent Law Firm LLC, Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ace.com>, registered with Domaindiscover.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Neil Brown, Bruce O’Connor and Paul M. DeCicco, as Panelists. Paul M. DeCicco, presiding.
This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 7, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 8, 2008.
On February 11, 2008, Domaindiscover confirmed by e-mail to the National Arbitration Forum that the <ace.com> domain name is registered with Domaindiscover and that the Respondent is the current registrant of the name. Domaindiscover has verified that Respondent is bound by the Domaindiscover registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On February 15, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 6, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on March 6, 2008.
On March 11, 2008, Complainant submitted an Additional Submission that was accepted and determined to be complete.
On March 17, 2008, Respondent’s Reply was received in a timely manner according to Supplemental Rule 7.
On March 17, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Neil Brown, Bruce O’Connor and Paul M. DeCicco as Panelists. Paul M. DeCicco, presiding.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends as follows:
Respondent is using the disputed domain name to display a series of hyperlinks that open to third party websites providing goods/services related and unrelated to the services offered in connection with Complainant's mark.
ACE Limited (ACE), the Bermuda based holding company of the ACE Group of Companies, began international use in commerce of the mark ACE for insurance at least as early as 1985. ACE began trading on the NYSE in 1993, was added to the S&P 500 index in 2002, and began providing life insurance at least as early as 2003 under the mark ACE LIFE.
Using the mark ACE continuously and extensively in commerce and in promotions since at least as early as 1985, ACE is currently a well-known worldwide corporate brand of a multi-billion dollar corporation.
Complainant has numerous trademark registrations including but not limited to the several registrations containing “ACE” for insurance services, namely, underwriting, claims administration and processing services, loss control services, brokerage services, consultation and planning services, risk management services, subrogation and actuarial services, claims adjustment, insurance appraisals, all in the fields of property and casualty insurance and reinsurance; and related financial services, namely, financial guaranty and surety insurance and reinsurance, mortgage guaranty, trade credit and residual value reinsurance, title cover, mortgage guaranty and guaranty assurance underwriting, and financial risk management services, namely underwriting credit default swaps, finite risk structures and other financial derivatives and balance sheet protection products.
As evidenced by Complainant's worldwide use and registration of the ACE Mark, Complainant is the owner of exclusive rights in the trademarks. In addition to possessing exclusive rights in the registered ACE Mark, by virtue of its continuous and extensive use of the ACE Mark worldwide, Complainant owns common law rights in the well-known ACE family of trademarks. It is irrefutable that Complainant has established rights in the ACE Mark pursuant to Policy ¶ 4(a)(i).
Respondent filed a trademark registration for the mark ACE for services in Class 35 in January of 2001. Further, nearly seven years later, and Complainant believes in anticipation of this proceeding, Respondent filed a second application for the mark ACE which like the first also seems to support Respondent's use of the mark ACE. Upon further investigation into Respondent's business practices however, Complainant has found that Respondent's trademark filings for the mark ACE are nothing more than an attempt to circumvent the UDRP rules and create the illusion of rights and legitimate interest in a domain name where none exist.
Respondent systematically stockpiles hundreds if not thousands of domain names for resale. In all respects Respondent is a cybersquatter in the business of buying and selling domain names. Further, in an effort to mask their business practice of cyber-squatting, Respondent files trademark applications for certain of their domain names listing the services as websites providing retail, advertising and various information links. Respondent's identification of services describe nothing more than a parking page and after viewing the specimen submitted by Respondent as proof of use of the various marks, it becomes clear the domain names are merely parked on a parking page template designed by Respondent. Respondent does this in an attempt to create the illusion of having trademark rights and legitimate interests in the domain names, and to veil the fact that the domain names are merely warehoused on parking pages. Respondent's interest in the domain names consists of obtaining click through revenue by trading off the goodwill of the legitimate trademark owners, such as Complainant, and ultimately if possible, selling the domain names to the legitimate trademark owners for exorbitant sums of money.
Respondent's domain name is confusingly similar to Complainant's ACE Mark, a mark which Complainant has priority and a bona fide and present interest. As stated above, due to Complainant's extensive, widespread and continuous use of the ACE Mark worldwide.
Respondent's domain is confusingly similar to Complainant's ACE Mark and as such, a significant number of Complainant's potential and existing customers likely type in Respondent's domain name when searching for Complainant's products and services and thus are diverted to Respondent's parking pages. Complainant therefore submits that the requirement under Policy ¶ 4(a)(i) has been satisfied.
Respondent has no rights or legitimate interest in the domain name. Respondent has not used, nor has prepared to use, the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. As evidenced by Respondent’s business practices, Respondent cannot establish use of, or demonstrable preparations to use, the domain names (or a name corresponding to the domain name) in connection with a bona fide offering of goods or services.
Respondent has owned the domain name <ace.com> for over ten years. Throughout all that time Respondent has made no attempt to use the domain in connection with a bona fide offering of goods or services, but rather Respondent's business practices reveals that the website is nothing more than a parking page template used by Respondent with a number of their domain names.
Respondent is the owner of approximately forty-two (42) trademark registrations, which include the marks ACE, LIFESAVERS, SERENDIPITY, CHEERS, INSTAMARK and others. After careful examination of these registrations, and others owned by Respondent, it is clear that Respondent's respective domain names link to the same or highly similar parking page template as that of <ace.com>. Accordingly, Respondent is not using the <ace.com> domain name in connection with a bona fide offering of goods or services. Respondent’s purported mark is placed throughout the website to create the illusion that the site contains original content and, in turn through use of the purported mark, a legitimate online presence.
When viewed individually, the respective link pages almost appear to be legitimately and individually designed. However, when a number of Respondent's link pages are viewed together, it becomes apparent that Respondent's link pages are just a part of Respondent's parking page template. The redundancy of the link pages for <ace.com>, <lifesavers.com> and others, makes it clear that the domain names are merely parked. The <ace.com> domain name therefore is clearly not used in connection with a bona fide offering of goods or services.
Respondent has no legitimate noncommercial or fair use of the domain name; Respondent’s use is for commercial gain, and misleadingly diverts consumers and tarnishes Complainant 's trademark. The parking page template was created by Respondent for the dubious purpose of cybersquatting to generate click through revenue and to ultimately sell the domain for profit. The redundancy of the parked domains clearly shows the pages are created by merely entering a domain (or purported mark) into a software program which then plugs the domain into the website at various points throughout the template. At close inspection, Respondent's parking pages are no different than those created by any registrar. As with most parking page templates, Respondent's parking template has a basic framework, and while the overall look of the parking page template remains the same, the pages are merely adjusted alternating the domain names and links throughout the template.
The parking of domains constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent's trademark filings are merely an attempt by Respondent to veil the fact that Respondent's parking page template is designed for two purposes: (1) to generate cash parking click through revenue through advertising; and, (2) to attempt to legitimize the stockpiling or hijacking of domain names in the hope of one day selling the domain names for exorbitant profit.
As Respondent's own website indicates, Respondent is clearly in the business of buying and selling domain names. Merely registering and stockpiling domain names for subsequent sale without more fails to constitute a bona fide offering of goods or services, and fails as a legitimate non-commercial or fair use.
Respondent is not commonly known by the domain name. Moreover, Respondent cannot produce evidence that Respondent is commonly known as ACE, or by the <ace.com> domain name. WHOIS information for <ace.com> lists the owner of the domain name as "Webmagic Ventures."
Because Complainant's ACE Mark has been extensively used in commerce since at least 1985, and the mark indicates an exclusive connection with Complainant, there is a presumption that Respondent does not have rights or legitimate interests in domain names that incorporate confusingly similar variations of Complainant's mark.
Respondent registered and continues to use the domain name in bad faith. Respondent has registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. As detailed above, the similarity between Respondent's domain <ace.com> and Complainant's ACE Mark, coupled with Respondent's documented history of warehousing, stockpiling, parking, buying and selling domain names identical or confusingly similar to the trademarks of others clearly show that Respondent purchased the disputed domain name primarily for the purpose of hijacking the domain name from the legitimate trademark owner in the hopes of extorting exorbitant profits in the ultimate sale or transfer of the domain name to the trademark owner or competitor.
The statement "[w]e are not looking to sell this domain" can be found on Respondent's parking page template for <cargo.com>, yet Respondent lists the domain for sale for $1,000,000.
Evidence clearly shows Respondent is in the business of buying and selling domain names. Respondent's past and current business practices, along with their specific activity involving the disputed domain name, are clear indication that Respondent had no intention of developing the disputed domain and creating a legitimate online presence. As with the vast majority of the domain names owned by Respondent, Respondent registered <ace.com> with the intention of stockpiling the domain, link the domain to a parking page template, collect advertising click-through revenue while parking it, and ultimately collect a windfall of profits from the sale of the domain name.
Respondent has registered the disputed domain name to prevent the trademark owner from reflecting the mark in a corresponding domain name - Respondent having engaged in a pattern of such conduct. The fact that Respondent has registered a significant number of domain names that include the trademarks of others, and/or the combination of trademarks owned by others, is clear indication that Respondent has registered and is using the disputed domain name in bad faith, and engages in a pattern of such conduct.
Respondent has had over a decade to develop a website for <ace.com> and more than ample time to develop a website for <ace.us>, yet, as with the list of domains above, the domain names are still linked to Respondent's parking page template. This is not a legitimate use of the disputed domain name and is evidence of bad faith. Respondent's practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy
Further, note that Respondent includes the following disclaimer at the bottom of its parking page template, which refers to the links included in the template: "Ace.com maintains no relationship with these web sites. References to specific services or trademarks are not controlled by us and do not constitute or imply any association, endorsement or recommendation." This disclaimer is further proof that the disputed domain is merely parked, along with the other listed domains, to collect click-through revenue profiting from the significant goodwill established in Complainant's ACE Mark, and in the case of the other listed domains, from the goodwill established in the corresponding trademarks.
Respondent contends as follow:
Complainant ACE Limited covets the domain name <ace.com>, has no legitimate right to that domain name, and is abusing the UDRP process in an effort to gain possession of what it desires. Complainant admits the Respondent owns a presumptively valid United States Federal Trademark Registration for the term at issue.
Respondent registered its <ace.com> domain name in July of 1997, has continuously used the domain since its registration, and obtained federal trademark registration in connection with such use in 2004. Respondent’s registration of <ace.com> in fact predates Complainant’s registration of its domain names <aceusa-ins.com> on May 15, 1998, and <ace-ina.com> on April 1, 1999.
Complainant did nothing about this supposed problem until its Complaint.
There are literally thousands of businesses called “ace” and thousands of entities using “ace” as a brand name, trademark, or service mark. Nowhere in Complainant’s papers does Complainant explain why it, among all users of the name “ace”, is supposedly uniquely entitled to take the <ace.com> domain name away from Respondent and to gain possession of the domain name.
The informal and summary nature of the Policy imposes a duty of candor on the parties thereto. Complainant fails to mention or disclose relevant pre-dispute communications, and has withheld from the panel the sole reason Complainant brought this dispute was frustration that Respondent repeatedly refused to enter into negotiations to sell its ‘Ace’ rights to Complainant.
Although the Complainant has recited that it supposedly provided “complete” information, the recitation is false and Complainant’s account of its actions is incomplete and misleading. Complainant is using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.
Specific response to the statements and
allegations contained in the complaint. Respondent has trademark rights. The primary trademark registration
Complainant is using to support its UDRP is its first word mark for ACE. It was
applied for on January 1, 1999, and granted on November 4, 2003. It shows a
claimed first use date of August 1997. Even if ‘prior use’ were an argument for
transfer in a UDRP proceeding, it still wouldn’t be a significant point here. <ace.com>
was registered by Respondent on July 30, 1997, before Complainant’s ‘claimed’
date of first use, let alone the dates of Complainant’s trademark application
There are many other entities having limited concurrent and non-infringing trademark rights. The USPTO approved Respondent’s application to be published for opposition, and it was published for opposition on February 26, 2002. Complainant did not file opposition. The United States Patent and Trademark Office granted the registration on April 13, 2004 (DOM 14). If Respondent’s activities identified in Respondent’s US trademark registration somehow infringed on rights of Complainant, it would have been natural for Complainant to file opposition during the opposition period commencing February 26, 2002. Almost six years later, Complainant complains. But Complainant stood idly by back in 2002 when it had every opportunity to oppose.
Complainant chose to ignore the history of Respondent, who is in the business of creating businesses, and is additionally a service provider for clients. Respondent created and operated Toys.com, which after obtaining half the online marketplace in the U.S. for mail order toys and nearly all the market share in more than 20 other countries, merged with eToys. Respondent created the famous NASDAQ-listed company Pets.com, whose logo was seen in Super Bowl ads, Macy’s parades and branded merchandise. For these businesses, Respondent set up the initial business plans, management teams, web sites, HR and finance departments, distribution facilities, marketing programs and so on. Respondent has occasionally spun-out, merged, and sold other businesses and dictionary domains for strategic reasons and in order to generate revenue and to focus on the businesses that are of key importance to Respondent. Complainant chooses to ignore not only Respondent’s history but also many of Respondent’s existing ventures in addition to Respondent’s Ace.com business, such as, but not limited to eFootage.com, a leading film and video content house, and KLOV.com, the Internet’s leading resource regarding coin-operated amusement machines.
Complainant’s suggestion that it is illegitimate for the Respondent to
develop and pursue multiple businesses, and to acquire rights in multiple
trademarks, is frivolous and would certainly come as a surprise to owners of
multiple trademark registrations in their various brands of services.
Complainant’s claims that it is the only entity permitted to use “ace”
are not credible.
‘Ace’ is a very popular mark, as it implies one has a particularly successful business and that its customers are going to be successful for using the company’s products. An ‘Ace’ means many things. It is a highly successful pilot in times of war or a highly skilled tennis player. It is the highest playing card one can be given in most card games.
The Complaint fails if the Complainant fails to prove that the domain “was registered in bad faith.” The <ace.com> domain name was registered in July 1997, before the dates of first use (August 1997) claimed in Complainant’s ACE word mark application (the application leading to US reg. No. 2,778,828). To suggest that the domain name was registered in bad faith would require Respondent to have had foreknowledge of Complainant’s first use when Respondent registered the domain on July 30, 1997, which it clearly cannot have had.
Complainant would have this Panel believe its representation that Respondent supposedly “registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.” Respondent has consistently said that the disputed domain name is not for sale.
That Respondent has bought and sold other domain names, completely unrelated to <ace.com>, is irrelevant to the question of WebMagic’s state of mind on July 30, 1997 with respect to <ace.com> is or is not what Complainant wishes it had been.
Pre-dispute communications between Complainant and Respondent are highly relevant, and concealment of such communications by Complainant erodes Complainant’s credibility. In this case, Complainant has concealed from this Panel the many communications that it had with Respondent in the weeks and months prior to the filing of this Complaint.
Prior to the filing of this Complaint, Complainant repeatedly and persistently contacted the Respondent, trying over and over again to get Respondent to sell it the <ace.com> domain name and associated rights. Respondent said, over and over again, that the domain name was not for sale. It is disingenuous at best for Complainant to dissemble to this Panel that it somehow thought the domain name was for sale, when Complainant knew perfectly well from these repeated and persistent pre-dispute communications that it was not.
On April 22, 1999, Complainant tried to purchase <ace.com> from Respondent. Complainant offered Respondent US $71,000.00 for <ace.com>. Respondent had no need to sell its rights to Complainant, and 19 days later, on May 12, 1999, Complainant wrote Respondent to say, “Due to lack of response, we withdraw our offer for Ace.com.” On August 9, 1999, Complainant writes “about the possibility of purchasing your domain name <ace.com>. I was interested in . . . what a ballpark figure might be. . . .” Complainant fails to mention these details, as it fails to mention any other attempts by it or its agents to obtain Respondent’s rights in the following years. In one of the pre-complaint communications which Complainant concealed from this Panel, Complainant’s unsolicited offer of $450,000 and higher failed to provoke any willingness on Respondent’s part to engage in any discussions about any possible sale of the domain name.
In or about November 2007, Complainant obtained one or more agents to aggressively attempt to purchase <ace.com> from Registrant anonymously. Complainant’s primary agent Mr. Bulla emailed Respondent an unsolicited “Offer to purchase ACE.COM” on 11/30/07 stating, “I would like to purchase the ACE.COM domain name from you. I am able to offer $300,000 for it. Please reply to confirm receipt and let me know if this is acceptable.” Since Complainant didn’t receive an immediate response from Registrant, the agent sent another e-mail less than an hour later with a subject of “ACE.COM purchase — revision” stating, “I mistakenly typed a lower offer than intended. I am able to offer $450,000 for the domain name, but I must receive a timely response.” Registrant had no interest in selling the <ace.com> business, and thus ignored both of these e-mail offers. Compliant was thus unsatisfied, and had Mr. Bulla continue to attempt to contact Respondent by U.S. certified mail. On the phone, Respondent was told that the $450,000 offer was a starting point and that the client would be willing to go higher. Respondent was asked to put a price on the domain and associated rights. Respondent responded that it did not want to sell <ace.com> and asked Mr. Bulla to encourage his client to stop trying to purchase it. There are other indicia that Complainant wanted to purchase and attempted to purchase the at-issue domain name from Respondent.
Bona fide offering of goods and services. To prevail under the Policy, Complainant must carry the burden of proving that Respondent has no legitimate rights or interests in the Domain Name. Complainant admits knowledge that Respondent is the owner of US TM Reg. No. 2,831,789 for ACE. Complainant argues this Panel should disregard Respondent’s presumptively valid United States Trademark Registration issued for the services that Respondent is and has been demonstrably providing. The Policy is an improper forum in which to seek invalidation or disregard of a duly issued federal trademark registration.
<ace.com>, in addition to web guide and social networking services, has innovative and unique patent-pending technology to help collectors find and track eBay items. Work on this technology has been going on for more than 5 years. Some unique customized services are co-branded with other sites.
Before Respondent knew that this UDRP proceeding had been filed, Respondent released the newest version of the <ace.com> site, which allows access to all prior services found on <ace.com> while highlighting some of Respondent’s popular and now-well tested ‘beta’ offerings. In short, a service aimed at auction item searching which was previously selectively promoted was now more widely promoted, as Respondent got comfortable with the stability of the systems.
<ace.com> is the only site operated by Respondent and related entities over the past fourteen years in which unique services on those sites have patents pending on them. The processor-intensive nature of these patent-pending processes requires that the <ace.com> server(s) not host any additional domains on them.
A separate company, The Data Refinery, LLC, was established more than two years ago, on January 23, 2006, specifically to work on the development of the <ace.com> site. The Data Refinery and <ace.com> have been represented at the eBay Developers conference in Las Vegas in June 2006 and in Boston in June 2007.
On August 11, 2006, The Data Refinery, LLC, applied for a US trademark registration for AUCTION ACE in five different classes (Serial #78950817). It was approved by the USPTO, published for opposition without incident, and is now simply waiting for a filed statement of use: “Opposition period completed, a Notice of Allowance has been issued.” In addition to ACE, the mark AUCTION ACE is used on the <ace.com> web site.
It is simply false and disingenuous for Complainant to pretend to be unaware of the many and varied legitimate activities of the Respondent in connection with its “ace” name.
Reverse domain hijacking. Respondent submits that the Complaint constitutes reverse domain name hijacking. Complainant has made wild allegations of bad faith that not only cannot be substantiated, but also can’t even be inferred from available facts.
Complainant intentionally made untrue facts in its Complaint such as that Respondent registered <ace.com> primarily for bad-faith resale purposes while it had direct knowledge of the opposite and had first hand experience with such knowledge as Complainant had fried to purchase the <ace.com> from Respondent and had been rebuffed.
A bona fide offering of services has clearly been demonstrated both by actual use and by the recognition of the United States federal government through a long-standing trademark registration of Respondent. The Complaint was filed with full knowledge of the Respondent’s possession of legitimate rights that this Panel is not empowered to invalidate.
Complainant has filed its Complaint with “malicious intent and recklessness” of the likelihood that the Respondent had rights or legitimate interest in the domain.
Complaint practiced highly selective disclosure of material facts and omitted other important facts.
Complainant has pursued the Complaint recklessly with no regard to the disruption of the Respondent’s legitimate business. The very filing of the Complaint forced Respondent to drop everything to prepare and file a response in the twenty-day period required by the UDRP. The very filing of the Complaint forced Respondent to incur legal fees it should never have had to incur.
The Complaint fails due to the complete lack of evidence as to one of the required elements (the state of mind of the respondent in 1997) is apparent, as is to any evidence of a lack of bona fide use, but this section of the Response makes a different point. The Complainant knew, or should have known, that the Compliant as filed could not possibly have been decided any way other than against the Complainant. Under these circumstances, the very filing of the Complaint is an abuse of the UDRP.
The Respondent requests dismissal of the Complaint and a finding of reverse domain name hijacking.
B. Additional Submissions
Supplemental Rule 7(a) permits the filing of Additional Submissions by both Complainant and Respondent, but prohibits those from amending the Complaint or the Response. Rule 12 permits the Panel to request (and consider) such Additional Submissions at its discretion.
The Complainant’s Supplemental Filing raises no new material issues that were not or could not have been presented in the Complaint, and introduces new material beyond the scope of the Response. The Respondent’s Supplemental Filing is in reply to the Complainant’s Supplemental Filing and is similarly of little use to the Panel. The Panel has disregarded both Supplemental Filings in its decision.
Complainant has rights in the mark ACE by virtue of its registrations with the USPTO. It does not have exclusive rights in such mark. Complainant has multiple trademarks containing the term ACE. Complainant’s ACE (word mark) - US Reg. No. 2,778,828, was issued November 4, 2003, with first use in commerce at least as early as August, 1997, for property and casualty insurance underwriting services.
Complainant’s trademark has not been shown to be “famous” pursuant to 15 USC 1125(c)2.
Respondent has rights in the mark ACE by virtue of its registration with the USPTO, US Reg. No. 2,831,789 registered April 15, 2004 for “providing information to the general public on shopping opportunities … and Internet marketing a variety of services….”
Respondent registered the <ace.com> domain name in July 1997.
The term ACE is commonly used and descriptive.
The certification required by ¶ 3(b)(xiv) of the Rules is the minimum to demonstrate the admissibility of the factual contentions made by a complainant, and the certification required by ¶ 5(b)(viii) of the Rules is the minimum to demonstrate the admissibility of the factual contentions made by a respondent. Without certification, a Panel may choose not to consider any factual statements, even in the case of pro se parties, under its authority to determine the admissibility of the evidence given by ¶ 10(d) of the Rules.
In this case, Complainant has provided the required ¶ 3(b)(xiv) certification, and additional documents. The Panel finds that all of the factual contentions made by Complainant are admissible and will be given weight as appropriate.
Respondent has provided the required ¶ 5(b)(viii) certification, albeit in the incorrect place. Respondent has also supported its contentions with documents and witness declarations. The Panel finds that all of the factual contentions made by Respondent are admissible.
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:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Complainant asserts rights in the ACE mark through its registration of the mark with the United States Patent and Trademark Office (Reg. No. 2,778,828 issued November 4, 2003). However, neither this registration date, nor Complainant’s filing date, January 9, 1999, predate Respondent’s registration of the <ace.com> domain name on July 30, 1997.
Complainant also provides evidence of multiple trademark registrations for the ACE and related marks in the U.S. and other countries. None of these registrations predate Respondent’s registration of the <ace.com> domain name. Nevertheless, the Panel finds that Complainant’s trademark registrations adequately confer rights in the ACE mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Javacool Software Dev., LLC v. Elbanhawy Invs., FA 836772 (Nat. Arb. Forum Jan. 2, 2007) (holding that a complainant need not show that its rights in its mark predate the respondent’s registration of the disputed domain name in order to satisfy Policy ¶ 4(a)(i)).
Complainant further asserts common law rights in the ACE mark through its continuous and extensive use of the mark in connection with its insurance business since 1985. Complainant contends that it has customers throughout the United States and in over 50 countries worldwide. Complainant alleges that it provides various insurance and reinsurance services in every major insurance market in the world. The ACE mark may have acquired secondary meaning sufficient to establish Complainant’s common law rights in the mark dating back to 1985 pursuant to 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 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). Since it is not necessary to the decision of the Panel as elaborated below, the Panel takes no position on whether or not the Complainant had common law trademark rights in ACE predating registration.
Respondent’s <ace.com> domain name contains Complainant’s ACE mark in its entirety. It adds only the generic top-level domain “.com,” the Panel thus finds that the at-issue domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
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.
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name, for the purposes of ¶ 4(a)(ii) of the Policy. To wit:
(i) before any notice of the dispute, the 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 and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
See Policy ¶ 4(c).
Complainant contends that it did not authorize Respondent to use the <ace.com> domain name. Respondent is neither affiliated with, nor commonly known as, ACE as the WHOIS information for the disputed domain name indicates that Respondent is “WebMagic Ventures, LLC.” Neither the registration date nor the filing date nor the claimed first use date of Complainant’s USPTO registration for ACE predate the date of Respondent’s registration of the <ace.com> domain name, July 30, 1997.
It cannot be denied that Respondent has trademark rights in the at-issue domain by virtue of its USPTO registration for the mark ACE in class 35. Furthermore, a review of Respondent’s trademark registration shows that Respondent’s first use of its ACE mark predates that of the Complainant’s first use of its ACE mark. Importantly, and without having to determine the fact intensive issue of whether or not Complainant might have had common law rights predating Respondent’s registration, the marks operate in different classes.
Trademark infringement laws prevent consumer confusion by regulating the use of similar marks only on competing goods. However, anti-dilution law prevents unauthorized junior trademark use on competing or non-competing goods from weakening famous trademarks. Here, the parties’ marks are registered in different class and for generally non-competing services. Without a showing by Complainant that its ACE mark is “famous” pursuant to 15 USC § 1125(c)(2)(A)(i)-(vi), there is no basis from which the Complainant may argue that there is interference from Respondent’s domain name unless such domain name is used within the same class of goods/services as Complainant uses it’s trademark. This, Complainant does not show. To strip Respondent of its right to use the at-issue mark in a domain name the Panel would have to effectively invalidate Respondent’s registered trademark. A UDRP proceeding is an improper forum in which to seek invalidation or disregard of a duly issued federal trademark registration. Clubrunner, Inc. v. One Stop Computer Shop, Inc., D2000-0538 (WIPO August 14, 2000).
Complainant does not have an exclusive right to the term ACE on the Internet or elsewhere in commerce. The term is commonly used and far from fanciful. The record shows that there are numerous coexisting trademarks containing or comprised of the term ACE. Likewise, the record shows that there are several domain names consisting of the term ACE with different top-level domains, none of which Complainant owns. Therefore, and for the other reasons discussed elsewhere herein, the Panel finds that domain name is comprised of a commonly used term and that Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii) on such basis. See CRS Tech. Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (“CONCIERGE is not so associated with just one source that only that source could claim a legitimate use of the mark in connection with a website.”); see also Zero Int'l Holding v. Beyonet Servs. D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis.").
In further support of its having rights and interest in the at-issue domain name Respondent argues that it uses the at-issue domain name in connection with a bona fide business. To wit, Respondent claims to be in the business of providing information to the general public on shopping opportunities provided by others, on the other hand, in determining confusing similarity. Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name). In light of the fact that the USPTO issued a trademark registration to Respondent for the ACE mark, this Panel is reluctant to simply ignore such rights. As mentioned elsewhere herein, this is not a forum for challenging an otherwise valid registered trademark.
At the heart of Complainant’s argument urging that Respondent has no rights or interests in the at-issue domain name is the notion that Respondent’s business is merely a front for trading trademark domain names. Complainant asserts that Respondent has no legitimate business use for the domain name it owns. Complainant characterizes Respondent’s business as cybersquatting. The Panel finds otherwise, above. Even if Complainant’s aversion that Respondent engages in a clear pattern and practice of trading in domain names might suggest some nefarious purpose and imply a similar purpose in the registration and use of the at-issue domain name, such evidence is in no way conclusive. In the instant case, there is clear evidence that while Complainant tried on multiple occasions to purchase the at-issue domain name from Respondent that Respondent repeatedly declined to bargain even in the face of Complainant’s sizable offers. Importantly, there is no per se proscription against buying and selling domain names. While such activities may be indicative of cybersquatting, without more they are in no way sufficient to prove cybersquatting or an improper purpose on the part of Respondent.
Complainant also contends that Respondent’s <ace.com> domain name resolves to a parked website containing hyperlinks to third-party websites unrelated to the goods and services offered by Complainant, and that Respondent accrues click-through fees from these links. But such activities are widespread and mainstream. Without a specific showing to the contrary, such commercial activity appears to be bona fide. The Respondent shows it has rights pursuant to Policy ¶4(a)(ii).
For the foregoing reasons the Panel finds that the Respondent has rights or interests in respect of the domain name. Complainant has not met its burden of proof under Policy
The Panel finds above that Respondent has rights or legitimate interests in the <ace.com> domain name pursuant to Policy ¶ 4(a)(ii). Panels have held that the issue of bad faith is mooted by a finding of rights or legitimate interest in the respect of the domain name. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007).
While it is not necessary for a panel to determine whether or not the Respondent registered the at-issue domain name in bad faith, it may do so and does do so here. Discussion regarding Policy ¶ 4(a)(iii) is significant in that it lends additional support for the Panel’s ultimate decision and provides the backdrop for the Panel’s determination with regard to Respondent’s claim of Reverse Domain Name Hijacking (see below). Complainant must carry its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). Mere allegations aren’t enough. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005)
Since the Complainant is required to prove that Respondent registered, as well as used the domain in bad faith, we note that it was impossible for Respondent to have registered the domain name in bad faith since its registration predates Complainant’s trademark registration and there is no evidence that Respondent was aware of any claim of right by Complainant. Therefore, Respondent’s registration of the <ace.com> domain name was not in bad faith under Policy ¶ 4(a)(iii). See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).
Moreover, the <ace.com> domain name is comprised entirely of a common term that has many meanings apart from use in Complainant’s ACE mark. The fact that the at-issue domain name contains a generic term indicates that Respondent did not, on the facts of the present case, register or use the <ace.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
It is incontrovertible that Respondent never offered the <ace.com> domain name for sale, and has in fact refused several offers from Complainant and others to purchase the at-issue domain name. This evidences that Respondent did not register and is not using the <ace.com> domain name in bad faith under Policy ¶ 4(b)(i). To the contrary, Respondent is using the <ace.com> domain name to provide shopping and other links in connection with its legitimate business, and it appears that it is not attempting to attract Complainant’s customers or cause confusion in any way. This is further evidence of Respondent’s lack of bad faith registration and use under Policy ¶ 4(b)(iv). See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that the respondent did not register or use the domain name <metagen.com> in bad faith where the respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created); see also Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where the respondent has an active website that has been in use for two years and where there was no intent to cause confusion with the complainant’s website and business).
Complainant has not met its burden of proof under Policy ¶ 4(a)(iii).
Reverse Domain Name Hijacking.
Respondent requests a finding that the Complainant has engaged in reverse domain name hijacking. Even though the Panel has found that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. See Rusconi Editore S.P.A. v. Bestinfo, D2001-0656 (WIPO July 5, 2001).
To show reverse domain name hijacking Respondent needs to show that the “Complainant knew of Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith.” see Goldline Int’l v. Gold Line, D2000-1151 (WIPO Jan. 4, 2001). This Respondent cannot do. Complainant shows that the at-issue domain name is confusingly similar to its trademark; attempts to challenge the validity of Respondent’s mark; makes out a prima facie showing that Respondent has no rights or interest in the at-issue domain name; and presents evidence, albeit not compelling evidence, that registration and use was in “bad faith.” Therefore, Complainant’s presentation and circumstances in this case does not rise to anywhere near the extraordinary level that is required for a finding of reverse domain name hijacking. Accordingly, Respondent cannot make out a sufficiently strong case to justify such a finding.
Complainant not having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Respondent’s request for a determination of reverse domain name hijacking is also DENIED.
Hon. Neil Brown, Bruce O’Connor and Paul M. DeCicco, Panelists,
Paul M. DeCicco, presiding
Dated: April 8, 2008
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National Arbitration Forum
 The Panel notes that the respective marks of Complainant and Respondent are in discrete relevant markets. Even though Respondent contends that the <ace.com> domain name is comprised of a common, descriptive term and as such cannot be found to be identical or confusingly similar to Complainant’s mark, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is texually identical or confusingly similar to Complainant’s mark. The determination under Policy ¶ 4(a)(i) determination is not the same as that required for a finding of “confusing similarity” under United States trademark law where the analysis entails, inter alia, determining whether or not a nominally infringing mark is used in the same relevant market, or class, as a plaintiff’s mark. While there are arguments for considering the relevant market of the respective marks for the purposes of Policy ¶ 4(a)(i), this Panel thinks the better approach is to analyze the significance of diverse relative markets under the other Policy prongs.