ACE Limited v. WebMagic
Ventures, LLC c/o WebMagic Staff
Claim Number: FA0802001144016
PARTIES
Complainant is ACE Limited,
Hamilton, Bermuda (“Complainant”),
represented by Alfred W. Zaher, of Blank Rome
LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ace.us>, registered with Tierra Net
Inc. d/b/a Domain Discover.
PANEL
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.
PROCEDURAL HISTORY
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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
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.
A. Complainant
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
2.
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.
B. Respondent
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
By Complainant:
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.
By Respondent:
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.
FINDINGS
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.
DISCUSSION
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.
DECISION
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.
Richard DiSalle
G.
Gervaise Davis
Mark McCormick, Panelists
Dated: April 22, 2008
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