ACE Limited v. WebMagic Ventures, LLC c/o WebMagic Staff
Claim Number: FA0802001144016
Complainant is ACE Limited,
Hamilton, Bermuda (“Complainant”),
represented by Alfred W. Zaher, of Blank Rome
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ace.us>, registered with Tierra Net Inc. d/b/a Domain Discover.
The undersigned Panelists each certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as a Panelist in this proceeding.
Richard DiSalle, G. Gervaise Davis and Mark McCormick as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 12, 2008; the Forum received a hard copy of the Complaint on February 14, 2008.
On February 13, 2008, Tierra Net Inc. d/b/a Domain Discover confirmed by e-mail to the Forum that the domain name <ace.us> is registered with Tierra Net Inc. d/b/a Domain Discover and that the Respondent is the current registrant of the name. Tierra Net Inc. d/b/a Domain Discover has verified that Respondent is bound by the Tierra Net Inc. d/b/a Domain Discover registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usDRP Dispute Resolution Policy (the “Policy”).
On February 22, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 13, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
A hard copy Response was received electronically and determined to be complete on March 13, 2008, however the hard copy was received late, and thus technically the Response was late. The Panel has authority to waive late filings and does so here since the late filing was a technical matter only. See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where the respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
Complainant submitted an Additional Submission on March 18, 2008 that was determined to be timely and complete pursuant to Supplemental Rule 7.
Respondent submitted an Additional Submission on March 24, 2008 that was determined to be timely and complete pursuant to Supplemental Rule 7.
On March 31, 2008, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Richard DiSalle, G. Gervaise Davis and Mark McCormick as the Panelists. The Panel, thereafter, determined that it would, pursuant to the discretion given it, consider both Additional Submissions for whatever value they may have.
SECONDARY PROCEDURAL ISSUE
The Panel has been made aware that Respondent is the respondent in both this and another ongoing proceeding before the National Arbitration Forum regarding domain names. The Panel also notes that Respondent requests in its Response that the instant proceeding, which is governed under the usDRP, be consolidated with its other pending dispute with Complainant, which concerns a domain name which is governed under the UDRP. While in most circumstances, a Rule 4(f) consolidation is permissible, the UDRP is governed by ICANN, while the usDRP is governed by the United States Department of Commerce, and thus, consolidation is not possible. Accordingly, as the other dispute concerns a domain name which falls under the UDRP, the consolidation request must be denied and will not be further noted or discussed in this Decision.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Note: The Panel has, in this case, had to consider nearly eleven (11) pounds of paper pleadings and exhibits, which are replete with multiple issues and wide-ranging factual allegations, and even rank speculation as to the Parties’ intents and possible actions, most of which are either totally irrelevant or, at best, only remotely relevant to this specific case. Because of that, and because of our final conclusions as to disposition of this Proceeding, the Contentions of the Parties Section is greatly abbreviated and limited to only those issues and facts which the Panel feels directly and properly relate to this particular case. (See the heading above on Secondary Procedural Issue, concerning a related case which the Panel feels should not be involved neither factually, nor procedurally, be considered in this Proceeding in any way.)
Additionally, Complainant discusses at length, in its Complaint and Additional Submission, Respondent’s registration and use of many other domain names that allegedly infringe upon the trademark rights of others and activities of a person not a party to this case. Again, these domain names are not relevant to the instant proceedings, so this point will only be indirectly addressed under the Policy ¶ 4(a)(iii) heading below.
1. Complainant asserts rights in the ACE mark through registration of the word mark “ACE” with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,778,828 issued November 4, 2003; filed January 9, 1999), alleging first use for insurance services and related financial services as early as 1985. In addition, it registered the ACE logo under Reg. No. 2,956,379, issued May 31, 2005. It also registered ACE ADVANTAGE and ACE RISK MANAGEMENT with the USPTO, issued respectively in 1997 and 2004, for property and casualty insurance underwriting
Further, Complainant has at least twenty-nine additional
3. Based on the foregoing, Complainant asserts that it has common law rights in an ACE family of marks, and that therefore, Complainant has established its rights under Policy ¶ 4(a)(i). It asserts also that these marks are famous.
4. Complainant claims that Respondent’s domain name <ace.us> is confusingly similar to its registered trademarks and that Respondent has no rights or legitimate interest in or with respect to the <ace.us> domain name, and that the <ace.us> domain name was registered and is used in bad faith, which are the other two legs of a UDRP or usDRP claim under Policy ¶¶ 4(a)(ii) and (iii).
5. Although Respondent registered the ACE mark with the USPTO in January 2001 for services in Class 35 as a mark used for retail or advertising purposes to link or refer users to appropriate websites by click thru means, Complainant claims that this is merely part of a scheme to stockpile and hold various domain names for sale or to make money from click thru payments by trading on the goodwill of legitimate trademark owners, and ultimately if possible selling the domain names to the trademark owners “for exorbitant sums of money.” Thus, Complainant says Respondent is simply a sophisticated cybersquatter and acting in bad faith under the usDRP.
6. Complainant alleges that Respondent has no rights to the domain because it has neither used nor prepared to use the domain name for a bona fide offering of goods or services, in spite of owning it for many years, but has merely stockpiled this domain with hundreds of others in bad faith. It makes the claim that the website to which this domain name points is merely a parking page to hold the domain name until it can be sold.
7. Complainant claims that Respondent is not commonly known by the domain name and that its only purpose is for commercial gain in a manner that diverts consumers to its site and tarnishes Complainant’s trademark. It reiterates numerous times, page after page, that the sole purpose of registering and using the domain name <ace.us> is to prevent the true trademark owner from using it, to create confusion with the website of the trademark owner, and eventually to sell or rent the domain name for in excess of its documented out-of-pocket costs. As evidence of this illegal purpose, Complainant goes into great detail about the alleged schemes and activities of Respondent with other domain names, which this Panel feels is largely irrelevant to this Proceeding.
8. Finally, Complainant discusses the disclaimers on the <ace.us> website of intention to sell the domain, and the admission of the website that the owners of the <ace.us> domain are not involved with any of the businesses to which there are links on the website, which it asserts is further evidence of bad faith use or lack of proper use of the domain name in question.
1. Respondent accepts that Complainant has a number of valid registered trademarks which are either solely the word mark “ACE” or some combination thereof with other words. However, it contends that this only shows that the word “ACE” standing alone is generic and unprotectible except in its specific field of use, because there are so many other registered or pending marks with the word ACE within them.
2. Respondent points out that there
are many other entities having limited concurrent and non-infringing trademark
rights in the ACE word. It says a search on a USPTO database (TESS) for
registered trademarks containing the word “ACE” listed some 420 live trademark
registrations and 1,374 total “ACE” registrations and applications. The same
search, looking for registered trademarks composed of the word “ACE”
(not merely containing it) listed some 111 trademark registrations and 337
total “ACE” registrations and applications. These 111 registrations included
3. Respondent in asserting concurrent rights in the ACE mark through its trademark registration with the USPTO (Reg. No. 2,831,789 issued April 13, 2004), argues that Complainant had an opportunity to contest this registration when it was published for opposition, but Complainant chose not to, and thus waives any complaint over its use and registration by its inaction.
4. Respondent alleges it is using the <ace.us> domain name, comprised of the common term “ACE,” to display a list of hyperlinks to various third party sites, as a part of its business plan. Respondent alleges that its business is to assist customers in their online shopping, and the use of the mark ACE in its USPTO trademark registration is specifically claimed as registered for these purposes. Respondent contends that using a common generic term to display a list of hyperlinks constitutes a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii).
5. Respondent devotes a number of pages of its Response to explaining its view of its business model and how it operates, and the various changes that the ownership of the company and this domain name has undergone. Essentially, it takes the position that it acquires generic domain names, then develops business plans for the profitable use of the domain, and then either develops the websites along those lines or finds partners or buyers for the domain names who wish to use the business plan. It contends that this form of business is perfectly lawful and that case law supports such activities, since generic domain names are not within the purview of the usDRP since they cannot, by definition, belong exclusively to any one trademark owner. In support, it points out that there are nearly 10,000 businesses listed in the U.S. that use this name, and there are over 120,000 domains registered which contain the word ACE, and that the Sedo website lists for sale some 1,894 domains containing the word ACE in the domain name.
6. Respondent disputes Complainant’s contentions that it is attempting to sell the related <ace.us> domain name. Respondent alleges that it has never been its intention to sell the disputed domain name despite receiving multiple offers from many different parties to purchase it, including a number of offers, direct and indirect, from Complainant. It states that it has received over 1,000 unsolicited offers and inquiries related to the sale of the various domains is owns with the term ACE in them, all of which have been declined.
7. Respondent counters Complainant’s contentions that the domain at issue was acquired and used as a sham solely to confuse and eventually sell to Complainant as the trademark owner, or a competitor, by disclosing that Complainant, either directly or through undisclosed third parties, has tried since 1999 to purchase the <ace.com> domain for ever increasing offers starting at $75,000 and eventually, shortly before the filing of this Complaint an offer thru a third party of $450,000 or possibly more. Curiously, Complainant failed to mention in its pleadings any of these offers it made to purchase this domain, while charging that Respondent was really merely holding the name to affect an eventual sale to Complainant. It is not clear if any similar offers related to the domain at issue here, <ace.us>.
8. Respondent also argues, citing various authorities, that since Complainant cannot establish bad faith registration and use, the Panel need not even consider if the domain name at issue is confusingly similar. It also points out that a usDRP proceeding is not the appropriate place to dispute conflicting trademarks and issues of confusion or tarnishment or dilution, because it is factual and because if the restrictions of ¶ 4(a)(ii) or (iii) are not violated, the Complainant cannot, as a matter of law, prevail.
9. Finally, Respondent argues that Complainant should be held by this Panel to have engaged in attempted Reverse Domain Name Hijacking pursuant to ¶ 15(e) of the usDRP because it knew or had to know that its position as the owner of a generic trademark meant it could not prevail here, and especially because its Complaint failed to disclose the numerous attempts to purchase the related domain, and because of the lack of action by Complainant for nearly 7 years against Respondent’s current trademark registration, and other failure of candor by Complainant in its pleadings.
C. Additional Submissions
Complainant’s Additional Submission is largely an additional attack on the business model described by Respondent in its Response, which includes a number of assumptions about Respondent’s intentions and possible activities, plus a series of examples of other domain names owned by Respondent and affiliates which this Panel feels is not relevant to this Proceeding so it will not be detailed. Overall, the Panel feels that this Submission is not helpful, nor in some cases even properly directed at this Proceeding, but merely an unsupported attack on Respondent and its legal counsel.
Respondent’s Additional Submission largely attempts to rebut the assertions in Complainant’s Additional Submission so that it, too, is of little use to the Panel, so it will not be discussed in detail here, either. The one point made here by Respondent, commented on in more detail in the Panel’s Discussion Section is that virtually all of Complainant’s allegations and assertions in both the Complaint and the Supplement are nothing more than comments made by legal counsel who prepared the pleadings, and are therefore not evidence in the Proceeding. Absent actual evidence of the many speculative assertions of Complainant, there is little in the way of facts for the Panel to base this decision on, which is part of the reason for the Findings and Discussion below which denies the relief sought by Complainant here.
A. Complainant owns a number of registered trademarks or service marks that contain the word mark “ACE” which are similar, and in some cases identical, to the domain name <ace.us> at issue in this Proceeding.
B. Respondent owns several concurrently registered trademarks or service marks that contain the word mark “ACE” which are similar to the marks of Complainant.
C. The word “ACE” is a generic term that, as such, cannot be protected under the usDRP when used alone and without some qualifying other words, and the mere addition of .com, .us or any other TLD is not sufficient to make it protectable.
D. Complainant has failed to establish that Respondent has no rights or legitimate interests in respect of the domain name at issue, since Respondent owns registered marks on the word mark “ACE” and has been using them for the Class in which they were registered.
E. Complainant has not established that the domain name at issue was either registered or used by Respondent in bad faith.
F. The Complainant, therefore, fails to establish its case since it did not provide any evidence of violation of usDRP ¶¶ 4(a)(ii) or (iii).
G. The Complaint is, therefore, dismissed in favor of Respondent, but without any Finding of attempted Reverse Domain Name Hijacking, for the reasons expressed below.
Paragraph 15(a) of 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Identical and/or Confusingly Similar – Policy ¶ 4(a)(i)
The Panel, and indeed Respondent, does not
dispute that the domain name <ace.us>
is identical to any mark consisting of the single word “ACE,” since the case
law long ago established that the mere addition of the .com or .us TLD does not
distinguish it. Complainant holds a
Rights or Legitimate Interests – Policy ¶ 4(a)(ii)
There are a number of reasons that Complainant has failed in its attempt to establish a violation of this section of the Policy, which we detail with case authorities for our conclusions. Complainant’s failure on this point means that it cannot prevail as we explain below.
First, Respondent asserts concurrent rights in the ACE mark through its trademark registration with the USPTO (Reg. No. 2,831,789 issued April 13, 2004). Respondent argues that Complainant had an opportunity to contest this registration when it was published for opposition, but Complainant chose not to. Complainant also acknowledges this trademark registration in both its Complaint and its Additional Submission. Thus, the Panel finds that Respondent has satisfied the requirements of Policy ¶ 4(c)(i), and did therefore establish rights or legitimate interests in the <ace.us> domain name pursuant to Policy ¶ 4(a)(ii). See Angels Baseball, L.P. v. Lee Dongyeon, FA 925418 (Nat. Arb. Forum May 14, 2007) (“Respondent obtained the [trademark] registration before he received any notice of the dispute … Respondent apparently went through the registration process of his ANGELS mark without any opposition from Complainant … As there are no elements suggesting that Respondent’s trademark registration is other than genuine, the Panel finds that Respondent, based on his trademark rights in the mark ANGELS in class 43, has rights in the disputed domain name.”); see also Kelly v. Qsoft Consulting Ltd., D2003-0221 (WIPO Apr. 30, 2003) (finding that the respondent had concurrent rights and legitimate interests in the <mygaydar.com> domain name where, at the time that the administrative proceeding was commenced, both parties had “homonymous trademark rights to the GAYDAR mark”).
Next, Respondent contends that the <ace.us> domain name is comprised of the common term “ace.” Respondent notes that many companies operate under a business name using the ACE mark, and that many companies other than Complainant have registered trademarks with the USPTO incorporating the ACE mark, including Respondent. The Panel strongly believes that there is overwhelming evidence that the <ace.us> domain name is comprised of a common, generic term, based on which evidence Respondent has established its rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See, Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields). Similarly here Respondent is not using its ACE mark in the same field of use as that of Complainant, who therefore has no standing to complain of a concurrent user.
Further, Respondent alleges it is using the <ace.us> domain name, comprised of the common term “ace,” to display a list of hyperlinks as part of its business use of the domain. Respondent claims that its business is to assist customers in their online shopping, and the use of the mark ACE in its USPTO trademark registration is assigned for these purposes. Respondent contends that using a common term to display a list of hyperlinks constitutes a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii), and this Panel bases its decision on such a finding. See Accetta v. Domain Admin, FA 826565 (Nat. Arb. Forum Jan. 2, 2007) (finding the respondent’s use of the disputed domain name to operate a pay-per-click search engine was a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) because the terms of the disputed domain name were of common usage and did not refer to the complainant or its products); see also Multicast Media Networks, LLC v. MDNH, Inc., FA 434268 (Nat. Arb. Forum Apr. 28, 2005) (finding that the respondent’s use of the disputed domain name to operate a pay-per-click website from which the respondent derives revenue was considered a bona fide use within the meaning of UDRP ¶ 4(c)(i), especially considering the extended period of such use).
While Complainant alleges that Respondent is in the business of buying and selling domain names, Respondent does not dispute this, although Respondent contends that the domain names it buys and sells are all comprised of common, generic terms. The Panel has determined that Respondent is a generic domain name reseller, and therefore concludes that Respondent can establish its rights or legitimate interests in the <ace.us> domain name pursuant to Policy ¶ 4(a)(ii). See Fifty Plus Media Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000) (finding that the complainant failed to prove that the respondent had no rights in the domain name and had registered and used the domain name in bad faith where the respondent is an Internet business which deals in selling or leasing descriptive/generic domain names); see also Front Range Internet, Inc. v. Murphy, FA 145231 (Nat. Arb. Forum Apr. 4, 2003) (“In some circumstances, the trading of domain name registrations is considered a bona fide offering of goods and services.”). We believe Respondent has established the bona fide nature of its business, consistent with this case law, and it therefore prevails on this section of the Policy.
Registration and Use in Bad Faith
Given the above second conclusion by the Panel, Complainant cannot prevail and we need not consider or discuss the third leg of the Policy on Bad Faith Registration and Use, since it is moot. The Policy requires that Complainant establish all three points, or its case fails. Given the length of this Decision and the overwhelming evidence in favor of the generic nature of the mark “ACE,” the Panel has decided to omit any further discussion here on this point.
We, however, cannot fail to point out for the benefit of other parties appearing in usDRP or UDRP cases, one element of our reasoning here is the fact that Complainant did not even attempt to establish the concept of bad faith registration and use by presenting qualified evidence in the form of declarations or statements under penalty of perjury. Merely relying on unattested to statements by counsel for a party is not evidence, but conjecture, and we decline to make any rulings on conjecture, since we are constrained to rely on evidence. This also is the reason that usDRP or UDRP proceedings are poor places for contested factual issues, since we as a Panel have no means of taking testimony and determining the veracity of witnesses, as would be the case in a trial court. Absent witnesses, the parties must establish the disputed facts by attested to statements, not mere speculation by counsel for the parties.
Reverse Domain Name Hijacking
Merely because the Panel
finds that Complainant has not satisfied its burden under the Policy, that does
not mean, in itself, that the Panel must render a finding of reverse domain
name hijacking on behalf of Complainant in bringing the present claim.
The Panel in the instant Proceeding is severely troubled by Complainant’s lack of candor about its continued efforts over a period of nearly nine years to purchase the domain <ace.com> from Respondent, but that issue is being arbitrated in a companion proceeding, as noted at the outset of this Decision. It would appear that with all the efforts Complainant made in that situation, it had good reason to know that it could not establish all three of the required elements in this case, either. Why it chose to bring this Complaint is unclear, but as noted above, because there are so many other factual and legal determinations needed to establish that purpose which this Panel is not equipped to determine, we decline to make any such Finding. Here it is not the purpose of the usDRP to divine the purpose of the Parties on this issue, since the case is resolved here by ruling that the Complainant does not prevail on its request for transfer of the domain to it.
Complainant having failed to establish all three elements required under the usDRP Policy, the Panel concludes that all relief shall be DENIED.
The Panel declines to make any Finding of Reverse Domain Name Hijacking.
G. Gervaise Davis
Mark McCormick, Panelists
Dated: April 22, 2008
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