Flexo
Solutions LLC v. Demand Domains, Inc.
Claim Number: FA0802001154067
PARTIES
Complainant is Flexo Solutions LLC (“Complainant”), represented by Katina
C. Banks, of Dorsey & Whitney LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myblinds.com>, registered with Enom, Inc.
PANEL
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.
Richard Hill as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 27, 2008; the
National Arbitration Forum received a hard copy of the Complaint on February 29, 2008.
On March 6, 2008, Enom, Inc. informed the National Arbitration Forum by
e-mail that Respondent’s registration of the <myblinds.com>
domain name had expired or been deleted by the registrant during the course of
this dispute. Complainant has renewed or restored the domain name under
the same commercial terms as Respondent. Accordingly, the <myblinds.com> domain name has been placed
in registrar hold and registrar lock status, the WHOIS contact information for
Respondent has been removed, and the WHOIS entry indicates that the domain name
is subject to dispute pursuant to EDDP ¶ 3.7.5.7.
On May 13, 2008, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <myblinds.com> domain name is registered
with Enom, Inc. and that the Respondent
is the current registrant of the name. Enom, Inc. has verified that Respondent is
bound by the Enom, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On May 21, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 10, 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 postmaster@myblinds.com by e-mail.
A timely Response was received and determined to be complete on June 10, 2008.
A timely Additional Submission was received from Complainant and
determined to be complete on June 16, 2008.
On June 19, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard Hill as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant alleges that it has used the mark MY BLINDS since April
23, 2007 and has a registered US trademark for MY BLINDS, for window blinds and
window treatments. The registration was
filed on May 2, 2006 and granted on April 15, 2008. In addition, the Complainant has applied for
another mark MY BLINDS on October 11, 2007.
The Complainant states that the disputed domain name is identical to
its mark.
Further, the Complainant states that the disputed domain name resolve
to a website that includes links to other sites offering window treatments, so
that consumers are likely to be confused into believing that the Respondent’s
business is affiliated with or endorsed by the Complainant, or that the
Respondent’s use of the disputed domain name is authorized by the Complainant.
The Complainant states that the use and registration of its mark
occurred after the registration of the disputed domain name, but states that
this is not relevant for the present case because the use and registration of
the Complainant’s mark preceded the Respondent’s use of the disputed domain
name by more than one year.
The Complainant states, and provides evidence to show, that, the disputed
domain name had previously been registered by the Registrar, Enom, and that the
Respondent acquired the disputed domain name in May 2008, after the present
proceedings were initiated.
According to the Complainant, the Respondent has no rights or legitimate
interests in the disputed domain name because it is not commonly known by the
disputed domain name and it is not making a legitimate noncommercial or fair
use of the disputed domain name without intent for commercial gain to
misleadingly divert customers or to tarnish the Complainant’s trademark. The Respondent operates a pay-per-click
website from which it derives revenues.
Such use of the Complainant’s mark does not constitute fair use. The Complainant cites numerous UDRP cases to
support this position.
The Complainant alleges that the Respondent registered and is using the
dispute domain name in bad faith, because it acquired the disputed domain name
on or around May 12, 2008, which is after the Complainant initiated the present
proceedings.
Further, the Complainant alleges that the Respondent improperly
colluded with the Registrar (Enom) in order to hide its true identity.
The Complainant reiterates that use of the disputed domain name for a
pay-per-click website constitutes, in its view, bad faith use of the disputed
domain name, and it cites numerous UDRP cases to support this view.
The Complainant also alleges that the Respondent, and the prior
registrant Enom, have a history of acquiring, registering, and using domain
names in bad faith. It cites numerous
UDRP cases to this effect.
B. Respondent
According to the Respondent, the Complainant does not have enforceable trademark rights to the term MY BLINDS because the term is merely descriptive. The Complainant’s registered trademark consists of the combination of a distinctive logo and non-distinctive words MY BLINDS and was only registered after entry of the disclaimer of the generic word “blinds.” Furthermore, the Complainant’s application to register its second mark was only recently approved for registration after entry of the disclaimer of the generic word “blinds.”
Further, says the Respondent, the term MY BLINDS is not exclusively associated with the Complainant and there is extensive third party use of this expression. The generic term “blinds” is commonly defined as “something, such as a window shade or Venetian blinds, that hinders vision or shuts out light.” The disputed domain name resolves to a website that includes links to other websites that provide information related to the generic “window shade” or various types of blinds and other window treatments. There is no mention or use of the Complainant or the Complainant’s trademark on the website. There is no likelihood that a consumer seeking information about window treatments will be confused as to the relationship between a website which provides information about a generic product and the Complainant. Internet users that utilize the services offered at the disputed domain name receive the same information they would receive if searching for MY BLINDS using an Internet search service.
The Respondent alleges that it does have a legitimate right and interest in the disputed domain name. The Respondent registers generic or descriptive domain names for the purpose of deriving advertising income by the use of the domain name as a click-through to third party commercial sites. Panels in prior UDRP actions have held that such a service is a common business practice and does constitute a bona fide offering of a service. The Respondent cites UDRP cases to that effect.
The Respondent states that it did not register the disputed domain name with any intent to register and/or use the domain name in bad faith. When the Respondent assumed registration of the disputed domain name, it was unaware of the Complainant’s use and registration of, and application to register the MY BLIND mark. The Respondent did not assume registration of the disputed domain with any intent to divert Internet traffic away from the Complainant or to knowingly and/or purposely provide links to any of the Complainant’s competitors that provide services related to blinds and other window treatments. The Respondent assumed registration of the disputed domain name with the good faith belief that the domain is generic and a starting point for Internet users seeking information about generic window blinds, curtains, and various other window treatments.
According to the Respondent, there is no evidence that the Complainant’s mark is famous and at best, it is a descriptive mark comprising of a distinctive logo and non-distinctive words.
In Response to the Complainant’s allegations that the Respondent has been the subject of several previous UDRP actions in which panels have ordered the Respondent to transfer domain names and that this establishes a pattern of bad faith, the Respondent makes the following submissions. The Respondent has a policy against assuming registration or holding of domains in derogation of legitimate third party rights. The Respondent has a procedure in place to avoid assuming registration of such domains. The Respondent assumed registration of the disputed domain with the good faith belief that the domain is generic and does not conflict with a legitimate third party’s exclusive trademark rights. In accordance with the Respondent’s policy, if it is made aware of legitimate third party rights in a domain, it seeks resolution of the matter with immediate transfer of the domain to the legitimate right’s holder.
Further, says the Respondent, UDRP panels have held that having been the subject of prior proceedings is not sufficient to establish bad faith. It cites UDRP cases to that effect, and also UDRP cases in which panels have found that the Respondent did not act in bad faith.
To conclude, the Respondent states
that it does not engage in a pattern of registering domains for the purpose or
intent of using the domain in bad faith or in derogation of legitimate rights
holders, but instead responds to each action in good faith. In the present case, the Respondent believes
it assumed registration of a legitimate, generic domain name and that its
registration of the disputed domain name is not in derogation of a legitimate
rights holder.
C. Additional Submissions
In its Additional Submission, the Complainant states that the
Respondent has not provided any evidence to support its allegation that the
mark MY BLINDS is generic or descriptive.
The Complainant’s marks must be evaluated as a whole rather than
dissected into their component parts. The
Complainant’s federal registration and application are prima facie
evidence of the distinctiveness of the marks.
According to the Complainant, its disclaimer of distinctiveness with
respect to the word “blinds” is not relevant for the present case, because it
does not assert rights in the individual term “blinds”. The Complainant claims rights to the mark MY
BLINDS as a whole. It cites numerous
UDRP cases to support the point that the test of confusing similarity must be
based on a comparison of the disputed domain name with the mark as a whole.
Concluding this point, the Complainant alleges the mark MY BLINDS as a
whole is not generic or descriptive.
The Complainant alleges that third party use of the term MY BLINDS is
not relevant under the Policy: it is not required to show exclusive rights,
but only that it does have rights.
The Complainant goes on to dispute the relevance of various UDRP cases
cited by the Respondent.
According to the Complainant, the Respondent has failed to demonstrate
that it has any rights or legitimate interest in the disputed domain name. The Respondent was aware of the Complainant’s
valid interests in the MY BLINDS marks prior to acquiring and using the dispute
domain name. The Respondent did not
register the descriptive domain name <blinds.com>,
rather it targeted the Complainant’s distinctive mark. Consumers are highly unlikely to use the
terms MY and BLINDS simultaneously when conducting Internet searches for window
treatments.
According to the Complainant, the Respondent cannot support its claim
that its click-through advertising is a bona
fide offering of goods or services in light of its prior knowledge and the distinctiveness
of the Complainant’s marks. Indeed, the
Respondent was well aware of the Complainant, its business, and its valid
trademark rights at the time it assumed the registration for the disputed
domain name.
The Complainant states that UDRP panels are split regarding the
question of whether or not click-through advertising sites are bona fide offerings of good or services
under the Policy.
Further, the Complainant alleges that the Respondent offered to sell
the disputed domain name a price which grossly exceeds its out-of-pocket costs,
namely $ 208,182, and that this is evidence of its bad faith purpose. The Complainant cites numerous UDRP cases to
support this point.
The Complainant states that the Respondent’s exorbitant price for the
disputed domain name shows that the domain name was acquired primarily for the
purpose of selling it for an amount in excess of out-of-pocket costs, and not
for the purpose of carrying on a click-through advertising business.
Further, says the Complainant, the Respondent’s attempt to sell the
disputed domain name while this procedure is pending violates paragraph 8 of
the Policy and constitutes a bad faith transfer.
The Complainant reiterates that numerous UDRP panels have found that
the Respondent registered and used in bad faith domain names comprised of
another’s mark. On multiple occasions,
the Respondent has been party to a UDRP proceeding wherein the disputed domain
name was transferred to the complainant.
Further, more than once, the Respondent’s conduct was deemed to be in
bad faith. Consequently, the Respondent
has engaged in a pattern of conduct, which pattern in and of itself indicates
bad faith under the Policy.
Further, alleges the Complainant, the Respondent did not acquire the
disputed domain name as part of a bona
fide transaction. Instead, the
Respondent assumed registration of the disputed domain name in violation of
paragraph 8 of the Policy, with the knowledge of this pending proceeding in
order to disrupt the proceeding and to frustrate the Complainant. The registrant of the disputed domain name when
the present proceeding was initiated was the registrar, Enom. When notified of the Complaint, the registrar
transferred the disputed domain name to the Respondent. The Respondent is an affiliate of the
registrar and therefore had actual knowledge of this proceeding.
In conclusion, says the Complainant, it has satisfied its burdens under
the Policy, while the Respondent has not advanced any valid
counter-arguments. The Complainant has
established rights in the MY BLINDS mark.
The disputed domain name is identical to that mark. The Respondent has not demonstrated that it
has any rights or legitimate interests in the disputed domain name. The Respondent has violated paragraph 8 of
the Policy and is currently offering to sell the disputed domain name at an
outrageous price. The Respondent’s claim
of legitimate use through click-through advertising fails to veil its bad faith
purpose.
FINDINGS
The Complainant owns a registered trademark
for a composite mark consisting of a colored drawing and the words “my
blinds”. The application for this mark
was filed in May 2006 (Reg. No. 3,413,282 issued April 15, 2008).
The Complainant has applied in October 2007 (Ser.
No. 77/301,830) for a word mark consisting of “my blinds.”
The Registrar, Enom, was the registrant for
the disputed domain name in November 2007.
The registration for the disputed domain name
was transferred to the Respondent after the present proceedings were initiated.
The Respondent is using the disputed domain
name to point to a click-through advertising site, offering a variety of
products and services, including products and services related to blinds for
windows.
The Respondent is offering the disputed
domain name for sale at a price that well exceeds out-of-pocket costs.
The website at the disputed domain name does
not reference or display the Complainant’s trademarks.
The disputed domain name was first registered
in 2000.
The disputed domain name was used for a
click-through advertising site in 2002 and 2003, and for a different
click-through advertising site, similar to the current site, in 2005 and 2006.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance with
the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is being
used in bad faith.
As a preliminary matter, the Panel will first discuss the question of
who is the Registrant of the disputed domain name. The Complainant correctly notes that the
physical address and FAX number of the Respondent are identical to those of the
Registrar, Enom, and thus concludes that the Respondent and the Registrar are
affiliated entities.
However, this does not appear to be the case. The Respondent is Demand Domains, which, from
an Internet search, appears to be a trading name for BuyDomains.com, an
organization that specializes in buying and selling domain names.
Thus, it appears that the Registrant is actually BuyDomains, doing
business as Demand Domains, and that Enom’s address appears in the Response
because Enom is representing the Registrant/Respondent. Indeed, the WHOIS shows clearly that Enom is
providing a privacy protection service for the disputed domain name. When that service is used, the WHOIS lists Enom
as the Registrant for a domain name, regardless of who the real Registrant may
be.
As the Complainant correctly points out, the Registrant of the disputed
domain name was the Registrar, Enom, in November 2007. After the present proceedings were initiated,
the disputed domain name was transferred to the Respondent. This would appear to be a violation of paragraph
8(a) of the Policy.
In other circumstances, it might have been necessary for the Panel to
investigate further regarding the true identity of the Registrant of the domain
name, and the circumstances concerning the transfer from Enom to the
Respondent, but, given the facts of the present case and the analysis presented
below, the Panel holds, under paragraphs 10(a) and 10(d) of the Rules, that it
need not further investigate this matter.
The Complainant puts forth two different
marks that, in its view, are identical or similar to the disputed domain
name. One is a registered composite mark
consisting of words and a design. An
application has been filed for the second mark, which consists of words only.
The description of the Complainant’s
registered mark that is contained in the trademark database of the US Patent
and Trademark Office is:
The color(s) red, yellow, blue and black
is/are claimed as a feature of the mark. The color red appears in the uppermost
rectangle design, the color blue appears in the lowermost rectangle design, the
color yellow appears in the middle rectangle, resembling a window blind design,
and the color black appears in the wording and in the middle rectangle,
resembling a window blind design. The mark consists of a combination of (a) the
words "My Blinds" and (b) a vertical column comprised of three
rectangles, wherein the top rectangle is red, the bottom rectangle is blue and
the middle rectangle is predominantly yellow and resembles a window blind, and
wherein said column is situated between the two aforementioned words.
That is, the registered mark is a combination
of words and graphic elements. The registered
mark does not consist of the words “my blinds” only. As the Complainant
correctly states in its Additional Submission, its “trademarks must be
evaluated as a whole rather than dissected into their component parts.”
As the panel stated in National Kidney Foundation v. Los Girasoles/ Jorge Clapes, AF0293 (eResolution, Aug. 31, 2000):
The respondent’s trademark consists of a
highly stylized rendition of the three letters NKF. The letters themselves only constitute part
of the mark, not the mark itself.
It is not obvious to this panel that the mere
letters “nkf” are confusingly similar to a mark that consists of a highly
stylized rendering of those letters. The
complainant does not present any evidence that would prove such confusing similarity.
The panel holds that the complainant has
failed to satisfy its burden of proof on this point.
Similarly, in the present case, the
Complainant has alleged that there is a possibility of confusion between its
registered trademark and the disputed domain name, but it has not provided any
evidence of such confusion.
Therefore, the Panel holds that the disputed
domain name is not identical or confusingly similar to the Complainant’s
registered mark.
But the Complainant puts forth the fact that
it has a pending trademark application for the word mark MY BLINDS. Although the US Patent and Trademark Office
has not yet ruled regarding the registration of this mark, the Panel is willing
to give the Complainant the benefit of the doubt, and to proceed to the
analysis of the other elements in the case, on the assumption that the
Complainant may have trademark rights in the string MY BLINDS, which is clearly
identical to the disputed domain name.
As the Complainant correctly points out, it needs only to show that it
has rights in the string, not necessarily exclusive rights.
The Complainant alleges that the Respondent
has no rights or legitimate interests in the disputed domain name, because it
is being used to point to a click-through advertising site and because it has
been offered for sale for a price exceeding out-of-pocket costs.
The Panel will first discuss the use of the
name to point to a click-through advertising site. The matter of the domain name having been
offered for sale will be discussed under the element of bad faith registration
and use.
According to the WIPO overview of domain name
cases, if a respondent is
using a generic word to describe his product/business or to profit from the
generic value of the word without intending to take advantage of complainant’s
rights in that word, then it has a legitimate interest. See
http://www.wipo.int/amc/en/domains/search/overview/index.html#22.
That would appear to be the case here. Despite the Complainant’s assertions to the
contrary, the disputed domain name is composed of two common words “my” and
“blinds.” It has been commonplace on the
web to prefix various terms with “my,” so, in context, “my blinds” is a generic
descriptor. The Respondent is indeed
listing various products and services related to window blinds on its web
site. The Respondent is not referring to
or displaying the Complainant’s registered mark on its web site. The Respondent’s mark is not famous, nor
particularly distinctive.
The Complainant has asserted that the Respondent
registered the disputed domain name in order to take advantage of its mark, but
it has not provided any evidence to that effect.
From the evidence available to the Panel it
appears that the disputed domain name was used for a click-through advertising
site well before the Complainant registered its marks and started using
them. This point is discussed more fully
below.
As the Complainant correctly points out, it is
troublesome that the Registrant, Enom, who was the Registrant in November 2007,
transferred the disputed domain name to the Respondent after the present
proceedings were initiated. This appears
to be a violation of paragraph 8(a) of the Policy. However, it does not change the fact that the
previous, and current, use of the disputed domain name is a legitimate
commercial use.
The present case is similar in many ways to Modern Beauty Supplies Inc.
v. MDNH, Inc. c/o Jay Bean, FA 0975334 (Nat. Arb. Forum, June 25, 2007). In that case, the panel stated:
The Respondent freely admits that it is using
the disputed domain name for a landing page to generate click-through
advertising revenue. In the present
case, such a use is a legitimate interest for the purposes of the Policy
because the links and advertisements posted on the web page are directly
related to the generic meaning of the domain name. See Knot, Inc. v.
In Knot We Trust LTD,
Case No. D2006-0340 (WIPO June
16, 2006) (landing page was not legitimate where the domain name, knot.com, was
being used for links related to wedding planning; that use was not directly
linked to the generic meaning of the word “knot” but rather appeared designed
to take advantage of the trademark meaning of the mark THE KNOT, which is used
as a mark for a well-known wedding planning website).
In Advanced Drivers Educ. Prods. & Training, Inc. v. MDNH, Inc.,
FA 567039 (Nat. Arb. Forum Nov. 10, 2005), the Panel found that the disputed
domain name was not used in the trademark sense, but was “a descriptor of the
site’s intended content or theme.”
Therefore, the Panel found that the Complainant had failed to prove that
Respondent lacked any rights or legitimate interests in the disputed domain
name. Similarly, in Multicast Media Networks, LLC v. MDNH, Inc.,
FA 434268 (Nat. Arb. Forum Apr. 28, 2005), the Respondent operated a
pay-per-click search engine from which the Respondent derived revenue to post
advertisements to various goods and services.
The panel in that case found that “[t]his was a bona fide use within the meaning of ¶ 4(c)(i), particularly in
light of the extended period of such use.”
In the present case, the web
site pointed to by the disputed domain name contains links that are directly relevant
to the descriptive meaning of the domain name, namely “modern beauty.” Therefore,
the Panel agrees with the Respondent’s arguments and the cited cases and holds
that the Respondent does have a legitimate interest, for purposes of the
Policy, in the disputed domain name.
The facts in the present case are similar. The Respondent’s website contains links that
are directly related to the descriptive meaning of the disputed domain name.
See also Gorstew Ltd. v. Worldwidewebsales.com, D2002-0744 (WIPO, Oct. 23, 2002); see also Asphalt Research Tech., Inc. v. Nat’l Press & Publ’g, Inc., D2000-1005 (WIPO, Nov. 13, 2000).
Thus, the Panel holds that the Respondent does
have a legitimate interest in using the disputed domain name for a
click-through advertising site. The fact
that the transfer from the Registrar/Registrant to the Respondent appears to
violate paragraph 8(a) of the Policy cannot be held against the Respondent with
respect to this element of the Policy.
The Complainant alleges that the Respondent
acquired the disputed domain name in May 2007, after the present proceedings
were initiated, and with knowledge of the Complainant’s business and its
marks. The Respondent denies this
allegation and states that it is in the business of acquiring and commercially
exploiting domain names composed of generic terms, as is the disputed domain
name. The Respondent states that, when
it acquired the disputed domain name, it was unaware of the Complainant’s marks
and business.
The disputed domain name was first registered
in 2000.
From the WayBackMachine at <archive.org>
it can be seen that the disputed domain name was used for a
click-through advertising site as early as July 2002. This site was active until at least February
2003. The disputed domain name was then
parked on an ISP hosting page. It was
used for a different click-through advertising site as of December 2005. That site is similar to the current site at
the disputed domain name.
The Complainant correctly points out that the
Respondent acquired the disputed domain name after the present proceedings were
initiated. The Complainant concludes
that the Respondent must have known about its mark, and that the Respondent
acquired the disputed domain name precisely to take advantage of its mark.
But, as noted above, the Complainant’s mark
is not particularly well-known, nor distinctive. On the basis of the preponderance of the
evidence, the Panel is inclined to believe the Respondent’s assertion that it acquired
the disputed domain name primarily because of its generic nature and commercial
potential as a pointer to a click-through advertising site, and not primarily
because it is identical to the Complainant’s mark.
It is worth stressing that the disputed
domain name was first registered well before the Complainant applied for
registration of its marks, and well before the Complainant used its marks in
commerce. And that it was used for a
click-through advertising site also well before the Complainant applied for its
marks. It is not contested that the
Respondent is in the business of acquiring domain names to be used for
click-through advertising sites.
And it is settled case law under the Policy
that, when a domain name is
registered before a trademark right is established, the registration of the
domain name was not in bad faith because the registrant could not have
contemplated the complainant’s non-existent right. See
http://www.wipo.int/amc/en/domains/search/overview/index.html#31.
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).
Although the transfer of the disputed domain
name after the present proceedings were initiated is troublesome, and could
indeed lead to a finding of bad faith, the Panel need not make a determination
of that matter because it has already found that the prior Registrant had, and the
Respondent does have a legitimate interest in the disputed domain name.
Although not required to reach a decision in
the present case, for the sake of completeness, the Panel will further discuss
certain points raised by the Complainant.
The Complainant makes much of the fact that the Respondent has offered the disputed domain name for sale for a price far exceeding out-of-pocket costs. But according to 4(b)(i) of the policy, bad faith is indicated only if there are “circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name” (emphasis added).
That is, bad faith can be found under this provision of the Policy only if the Respondent is shown to have registered the domain name primarily for the purpose of selling it. The Complainant does allege that, but provides no evidence to support the allegation. As noted above, the evidence available to the Panel suggests that the Respondent acquired the disputed domain name primarily to exploit it for a click-through advertising site. Thus, 4(b)(i) of the Policy is not applicable.
As the panel said in Manchester Airport PLC v. Club Club Limited, D2000-0638 (WIPO, Aug. 21, 2000):
It is not contested that respondent has
attempted to sell the contested domain name to the respondent for an amount
well in excess of the registration fees.
But selling a domain name is not per se prohibited by the ICANN Policy
(nor is it illegal or even, in a capitalist system, ethically
reprehensible). Selling of domain names is prohibited by the ICANN Policy only if the other elements of the ICANN Policy are
also violated, namely trademark infringement and lack of legitimate interest.
As noted above, the Panel has found that the
Respondent does have legitimate interests in the disputed domain name. Therefore, it also has the right to offer the
dispute domain name for sale at a price that exceeds out-of-pocket costs.
See Modern
Beauty Supplies Inc. v. MDNH, Inc., FA 0975334 (Nat. Arb. Forum, June 25, 2007).
The Complainant alleges that consumers are
likely to be confused into believing that the Respondent’s business is
affiliated with or endorsed by the Complainant, or that the Respondent’s use of
the disputed domain name is authorized by the Complainant. But the Complainant provides no evidence to
support this allegation. Its mark is not
famous, nor particularly distinctive.
The Respondent’s website does not make references to the Complainant’s
registered mark. The Panel holds that it
is not likely that consumers would confuse what is clearly a click-through
advertising site with the Complainant.
The Complainant correctly points out that the
Respondent has a history of acquiring, registering and using domain names. Indeed, the Respondent confirms that it is in
the business of buying and selling domain names. According to the Respondent, many UDRP panels
have found that the Respondent acted in bad faith. That may or may not be the case, but it is
not relevant for the present proceeding, which must be decided on its own
facts, and not on what the Respondent may or many not have
done with respect to other domain names.
Indeed, the “pattern of conduct” is mentioned only in 4(b)(ii) of the Policy, which states that registration of “the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name” is evidence of bad faith registration and use, provided that there is a pattern of such conduct.
There is no
evidence here that the Respondent registered the disputed domain name in order
to prevent the Complainant from reflecting its trademark in a domain name. As noted above, the evidence suggests that
the Respondent acquired the disputed domain name for a click-through
advertising site that is not specifically related to the Complainant. Thus, the Complainant’s alleged pattern of
conduct is not relevant for the present case.
The Complainant alleges that the Respondent
violated paragraph 8 of the Policy, by offering the dispute domain name for
sale during the present proceeding. But
the Policy prohibits only actual transfers, and the Respondent has not actually
transferred the disputed domain name.
As noted in the preliminary remarks and
elsewhere above, the previous Registrant, who is also the Registrar, Enom, did
transfer the disputed domain name after the present proceedings were initiated,
and this appears to be in violation of paragraph 8(a) of the Policy.
But, as noted above, in the present case it
is not necessary for the Panel to further investigate the matter and to
determine whether there was bad faith collusion between the Registrar and the Respondent.
For all the above reasons, the Panel holds
that it is not necessary for it to determine whether the Respondent registered
and is using and is using the disputed domain name in bad faith.
DECISION
Having analyzed all three elements required under the ICANN Policy, the
Panel concludes that relief shall be DENIED.
Richard Hill, Panelist
Dated: July 2, 2008
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