John B. Cotton, Jr. and Cotton Real Estate, Inc. v. ismer
Claim Number: FA0205000114388
Complainant is John B Cotton, Jr. and Cotton Real Estate, Inc., Osterville, MA, USA (hereinafter collectively as “Complainant”) represented by Leslie Meyer-Leon, of IP Legal Strategies Group P.C.. Respondent is ismer, London, UNITED KINGDOM (“Respondent”), represented by Peter Norton, Bazley White & Co.
The domain name at issue is <cotton.biz>, registered with Philipine Registry.com, Inc.
The undersigned, Jacques A. Léger Q.C acting as Panelist, certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (“IP”) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on May 21, 2002; the Forum received a hard copy of the Complaint on May 23, 2002.
On June 21, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 11, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A timely Response was received and determined to be complete on July 3, 2002.
On July 23, 2002, pursuant to STOP Rule 6(b), the Forum appointed Jacques A. Léger Q.C as single Panelist.
Transfer of the domain name from Respondent to Complainant.
Both parties have produced a variety of evidence in chief, without additional submissions, their contentions being summarized as follows:
A. Complainant's contentions in respect to the:
Identity of the Disputed Domain Name <cotton.biz> and Complainant’s Mark Therein
· Since 1979, it has provided real estate services and has held trademark rights under the common law to the mark COTTON. The mark has been in commercial use continuously since 1974 in the field of real estate services.
· On August 6, 2001, it filed an IP claim with Neulevel for commercial trademark rights to the domain <cotton.biz> (Exhibit 2).
· Since 1974, Complainant Jack B. Cotton, Jr. has conducted commercial activities by offering goods and services under variants of his surname ‘Cotton.’ (Exhibit 3).
· Since 1974, it has operated under the tradename Cotton Real Estate. (Exhibit 3).
· In 1990, Complainant Cotton Real Estate, Inc., filed for incorporation as a corporation of the Commonwealth of Massachusetts (Exhibit 4).
· It holds federally registered trademark rights to U.S. Service Mark Registration No. 1,834,022 for the mark COTTON REAL ESTATE, registered May 3, 1994, in International Class 036 for “real estate appraisal, real estate brokerage and real estate consultation related thereto,” and has used this mark in commerce since 1979 (Exhibit 5).
· It holds federally registered trademark rights to U.S. Trademark/Service Mark Registration No. 2,121,546 for the mark COTTON CLUB, registered December 16, 1997, in International Classes 016 and 036 for “periodic newsletter on marketing and sale of real estate” and for “real estate referral services to real estate brokers in other geographic areas” and has used this mark in commerce since 1992 (Exhibit 6).
· Complainant Jack B. Cotton, Jr., broadcasts and hosts a weekly radio show titled “The Real Estate Show with Jack Cotton,” on radio station WXTK 95.1. The show is aired every Saturday (Exhibit 3).
· It is aware of no evidence that Respondent commercially uses, has used, or ever intends to use, or to offer goods or services under, the contested domain name. Contrary to .biz requirements, Respondent has not registered the domain <cotton.biz> for a bona fide business or commercial use.
· On information and belief, Respondent is not commonly known by the contested domain name. Rather, Respondent is known by the name ‘ismer’. Gallo, 62 USPQ2d at 1408 (Exhibit 14).
· On information and belief, Respondent has acquired no trademark or service mark rights in the contested domain name. Gallo, 62 USPQ2d at 1408 (Exhibit 14).
· On information and belief, the Respondent has not made any bona fide business or commercial use of the contested domain name <cotton.biz>.
· According to a search conducted of the United Kingdom’s on-line yellow pages, no entity going by the name “ismer” conducts business or commerce in the United Kingdom (Exhibit 15).
· Only five entities going by the name “Soliman” are listed in the yellow pages as conducting business or commerce in the United Kingdom. None of the five entities, are the Respondent’s contact, Tarek Soliman.
· Respondent has no intellectual property rights to the name COTTON. See, E. & J. Gallo Winery v. Spider Webs Ltd., -F.3d-, 62 USPQ2d 1404, 1408 (5th Cir. 2002) (finding registrant’s lack of intellectual property rights in the name “Ernest and Julio Gallo” to be a factor and indicia of bad faith registration).
· On information and belief, Respondent did not file an IP claim with Neulevel for the domain <cotton.biz>. A review of the “Case Detail” page, in Neulevel’s Stop Management database, reveals that only two parties filed an IP claim for <cotton.biz> and that Respondent is neither of these parties (Exhibit 18).
· On information and belief, Respondent has registered the contested domain name primarily for the purpose of selling or otherwise transferring the contested domain name another, for valuable consideration. Respondent has flouted the rule that stipulates that .biz names should not be purchased for speculative sale for profit.
· According to a search of the Whobiz database, Respondent has registered 123 domain names (Exhibit 11).
· The 123 domain names registered by Respondent are considered to be “top quality,” “key,” and “priority” domains, based on the extremely high re-sale value of these names (Exhibit 12). The contested domain name, <cotton.biz> is one of the 123 high priority domain names Respondent has locked up (Exhibit 12).
· On information and belief, all top priority domain names granted to the Registrar, PhilippineRegistry.com, Inc., were registered to a single individual, Respondent Tarek Soliman (Exhibit 12).
· PhilippineRegistry.com, Inc. is a reseller of domain names, and actively recruits others to resell domain names (Exhibit 13).
· PhilippineRegistry.com, Inc. promotes the resale of .biz domain names by running and promoting the “.BIZ Reseller Program.” (Exhibit 13).
B. Respondent's contentions in respect to the:
· The IP claim for <cotton.biz> was filed with John B. Cotton Jr as the claimant. Neither Cotton Real Estate nor the Cotton Club were included in the IP claim as displayed in (exhibit 2) of the Complaint.
· The contested domain is similar only to the surname of the Complainant as mentioned in the IP claim. Cotton Real Estate and Cotton Club are not similar to the domain name <cotton.biz>.
· The Complainant cannot claim the domain name simply as he has a similar surname. Neither it nor the Complainant hold registered marks for COTTON.
· The Complainant Jack B. Cotton Jr is not famous and the Respondent had not heard of him prior to applying for the domain name <cotton.biz>. From (exhibit 4) of the complaint Mr Jack B. Cotton Jr acts as president, treasurer and clerk of Cotton Real Estate Inc. The Complainant runs a local radio station, which the Respondent had also not heard of prior to applying for the domain name.
· The Complainant's surname is a common English word referring to a commodity.
· As Mr Jack B. Cotton Jr acts as president, treasurer and clerk of Cotton Real Estate Inc., the assumption may be made that the Complainant listed on the IP claim and Cotton Real Estate are small in terms of their sphere of influence and are therefore relatively unknown outside Massachusetts.
· The IP claim is no guarantee that a party would be awarded the domain name and was simply a guarantee that the Complainant may commence a STOP in order to put forward its case.
· The Complainant holds no registered mark for cotton and any common law rights would be for Jack Cotton rather than the word COTTON.
· The Complainant is aware that no use of the domain name can be made until all IP claims are resolved.
· The word "cotton" is a common English word and the Complainant does not have exclusive use of it as a consequence of it being his surname.
· It has never sold or leased or sought to sell or lease a domain name.
· There is little in common between the case cited by the Complainant and this complaint for <cotton.biz>.
· It does not need a trademark to register the generic word cotton as a domain name.
· iSMER is a partnership and is an abbreviation for Internet Sport & Media Resources. The Complainant has simply established that there is no listing for iSMER in the UK online yellow pages. This does not assist the Complainant in achieving its burden of proof.
· Despite having little or no information on it the Complainant proceeds to prove that the Respondent registered the domain name in bad faith. The Complainant raises points, which do not directly address the burden of proof required for the STOP Complaint to be successful.
· The Complainant is speculating when stating that "the respondent has registered the contested domain name primarily for the purpose of selling or otherwise transferring the contested domain name to another for valuable consideration." The Respondent has no history of leasing or selling domain names, has never sought to lease or sell a domain name and does not intend to lease or sell the domain name.
· Partners of iSMER do have a history of work in finance related projects and a list of such projects is listed as (exhibit C).
· The domain name is to be used as part of a network of finance related e-commerce sites. <cotton.biz> is to be used to host resources related to the trading and pricing of cotton as a commodity.
· Although it has numerous domain names which are all intended for bona fide use, not all those listed by the Complainant in (exhibit 12) of the Complaint have been registered by it and some belong to other registrants (exhibit E).
· There are advantages in registering multiple domain names containing common words when intending to develop a network of sites namely that search engines rank sites using such generic words higher and therefore the site receives more visitors.
· There is no rule against registering multiple domain names. The Complainant seems to be referring to such registrations as if they prove something other than a desire on behalf of the Respondent to increase the number of visitors to its web sites.
· Proctor and Gamble registered hundreds of domain names for the same reason (exhibit F).
· The Complainant knowingly misled the Panel by stating that PhilippineRegistry.com is a reseller of domain names.
· Most registrars operate a reseller program and the Complainant’s own registrar is Network Solutions, which is Verisign Company (exhibit H). These two companies operate one of the largest reseller programs available (exhibit I).
· The PhilippinesRegistry.COM has confirmed that the it is not part of its reseller program (exhibit J).
· As cotton is a common English word a search of Google produces 4.44 million results (exhibit K).
· The Complainant does not own any gTLD reflecting the word cotton only and simply wishes to have a domain name shorter than the ones currently in use (exhibit H) thereby denying the Respondent use of its domain name.
· The Complainant already owns <jackcotton.COM>, <jackcotton.INFO> and <jackcotton.BIZ>. The Complainant has not deemed it necessary to register <jackcotton.NET> and <jackcotton.ORG> in order to protect its alleged intellectual property as these are still available (exhibit L).
· ISMER partners have undertaken projects of a financial nature similar to that proposed for <cotton.biz> (exhibit C)
· As part of the same project the it has also registered <commodity.BIZ>, <rice.BIZ>, <steel.BIZ> (exhibit M)
· The Complainant’s registration of <cottonre.COM> [cotton real estate] (exhibit O) is an indication that the Complainant simply seeks a shorter domain name. The registration of <cottonre.COM> predates <jackcotton.COM>.
· The Complainant has not successfully challenged any of the owners of <cotton.COM>, <cotton.NET>, <cotton.ORG> and <cotton.INFO>.
· The Panel may wish to consider whether an internet user visiting <cotton.biz> would by default expect to find the Complainant’s site at this location.
· The Panel should make a finding of Reverse Domain Name Hijacking.
Having reviewed the evidence submitted by the parties and their written representations, the Panel makes the following findings:
· The disputed domain name <cotton.biz> is not identical to Complainant's trademarks.
· Complainant has not satisfied its burden to prove that it has exclusive rights in the trademark COTTON.
· Respondent has not satisfied its burden to prove that the Complaint constituted an abuse of the process so as to constitute Reverse Domain Name Hijacking.
Paragraph 15(a) of the STOP Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the STOP Policy requires that the Complainant must prove cumulatively each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel may exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (“IP”) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (“gTLD”) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
Each of these elements is addressed sequentially hereinafter.
Although the contested domain name is identical to an alleged COTTON trademark, referred to in the Complaint at paragraph 5.3.1 and 6.1.1, the Panel finds that Complainant has not satisfactorily discharged of its burden of showing it holds trademark rights for COTTON. The only trademarks to which Complainant has proven it has rights are Cotton Real Estate or Cotton Club and consequently the domain name in dispute is not identical to marks to which Complainant holds rights in. The fact that Complainant has alleged conducting commercial activities under variants of his surname COTTON and the extent to which such variants might have become distinctive could have been relevant had the issue to be decided been "confusingly similar" with Complainant's proven trademark rights, but in a STOP proceeding this is irrelevant.
Additionally, because COTTON is a common word that can be found in the dictionary, no one can appropriate itself of such a generic term, unless, with the passage of time and sufficient use, one is able to show that such word has acquired secondary meaning or distinctiveness in its favor.
In the case at hand, the mere allegation dealing with Common Law rights by Complainant of the word COTTON does not represent satisfactory evidence that Internet users recognize that COTTON identifies goods or services unique to the Complainant. No available products or services were shown to be marketed under the COTTON trademark. See Vietnam Venture Group v. Cosmos Consulting gmbh, FA 102601 (Nat. Arb. Forum Feb. 6, 2002) (dismissing the Complaint because (1) the Complainant did not hold a registered trademark in VVG, and (2) the Complainant did not demonstrate sufficiently strong identification of its mark such that there would be recognition among Internet users that the VVG mark identified goods or services unique to the Complainant).
The Panel adopts the view expressed in Sun Microsystems, Inc. v. O'Flynn, DBIZ2002-00208 (WIPO Aug. 5, 2002) to the effect that:
It is the Panel’s opinion that when the STOP rules state that the Complainant must show that it holds rights in an identical trademark, these rights must be more significant than simply rights in an application for the registration of a trademark. If it were otherwise, then anyone could hold rights in any trademark by simply applying for its registration and then file an IP claim, a complaint under the STOP rules and eventually obtain the transfer of a domain name while the trademark application may be objected to or opposed and never mature to registration. The STOP rules do not require for the Complainant to show that it holds rights in a registered trademark; but they do require from the Complainant to demonstrate that it has at least common law rights in an identical trademark.
(ii) Respondent’s Rights or Legitimate Interests and Registration or Use in Bad Faith
Since the three elements noted above under the STOP Rules are necessarily cumulative, and in view of the finding that the Complainant has failed to show it holds rights in an identical mark, there is no need to decide of the two other elements, i.e. legitimate interest and bad faith.
(iii) Reverse Domain Name Hijacking
The Respondent claims the Panel should make a finding of reverse domain name hijacking.
A claim of Reverse Domain Name Hijacking by Complainant must meet a heavy burden of proof by Respondent, i.e. there must be some evidence at least that the complaint or the process was brought in bad faith or constituted an abuse of the process. See Teranet Land Info. Servs. Inc. v. Verio, Inc., D2000-1123 (WIPO Janu. 25, 2001) and Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2002) noting that a finding of reverse domain name hijacking requires bad faith on Complainant's part; bad faith was not proven in these decisions because Complainant did not know and should not have known that one of the three elements in the Policy 4(a) was absent. In the case at hand, the Respondent did not even attempt tp present some evidence that would enable a conclusion of Reverse Domain Name Hijacking on the part of the Complainant. The Panel refers to its finding in Prudential Assurance Co. v. Davis, FA 112447 (Nat. Arb. Forum July 8, 2002), in which it adopted the finding of Credit Suisse Group o/b/o Bank Leu AG v. Leu Enters. Unlimited, FA 102972 (Nat. Arb. Forum Feb. 23, 2002) where "the Panel considered the Complaint to have been misconceived rather than brought in bad faith".
Additionally, in the decision cited by the Respondent in support of its contention at paragraph 6.2.3 of its Response that COTTON is a common English word, (Hola S.A. v. Idealab, D2002-0089 (WIPO Mar. 27, 2002), the Panel has made comment on the Reverse Domain Name Hijacking which the Panel herein adopts:
"To prevail such a claim, Respondent must show that Complainant knew of Respondent's unassailable right or legitimate interest or of the clear lack of Respondent's bad faith registration and use but nevertheless brought the Complaint in bad faith".
In the circumstances of the present case, the Panel is not prepared to make the declaration sought against Complainant.
The Complainant having failed to meet its burden that the domain name registered by the Respondent is identical to a trademark in which the Complainant has rights, there is no need to decide the two other elements, i.e. legitimate interest and bad faith.
This finding is made in the very limited scope of the STOP proceedings and does not prejudice the rights of the Complainant to initiate other challenges, including other proceedings under ICANN Rules.
Accordingly the Complaint is dismissed.
There are no further challenges pending against the disputed domain name under the STOP Policy.
No declaration is made against the Complainant of Reverse Domain Name Hijacking.
Jacques A. Léger Q.C, Panelist
Dated: August 6, 2002
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