ELIG Attorneys-at-law v.
Robert Seeman
Claim Number: FA0805001195970
PARTIES
Complainant is ELIG Attorneys-at-law (“Complainant”), represented by Hande
Varhan,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <elig.com>, registered with Dotregistrar.
PANEL
The undersigned 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.
Timothy D. O’Leary as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 30, 2008; the
National Arbitration Forum received a hard copy of the Complaint on May 30, 2008.
On May 30, 2008, Dotregistrar confirmed by e-mail to the
National Arbitration Forum that the <elig.com> domain name is registered
with Dotregistrar and that Respondent is
the current registrant of the name. Dotregistrar has verified that Respondent is
bound by the Dotregistrar 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 June 9, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 30, 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@elig.com by e-mail.
A timely Response was received and determined to be complete on June 23, 2008.
On July 1, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Timothy D. O’Leary as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
I.
Complainant’s Contentions
The Complainant ELIG Attorneys-at-law was founded in 2005 by Att.
Ismail Gökhan Esin, Att. Salih Tunç Lokmanhekim, Att. Serkan Içtem and Att.
Gönenç Gürkaynak. As is seen, the mark “ELIG” consists of the initials of the
last names of the aforementioned founding partners. The official website of the
Complainant is <eliglegal.com> and such website was registered with
Tucows Inc. on January 31, 2005.
Since 2005 the Complainant continuously used ELIG mark to identify itself which established a common law trademark right for the Complainant.
The disputed domain name registered and used by the Respondent is virtually identical to the ELIG mark of the Complainant. The domain name features entire ELIG mark and simply adds the generic top-level domain “.com.”
Complainant does not address Policy ¶ 4(c)(ii) specifically, in its Complaint, but in other references argues that Respondent is not authorized to use the ELIG mark and generally has no rights of legitimate interest in the disputed domain name.
As explained above, ELIG mark represents the initials of the last names of the founding partners of the Complainant. However, there is no reasonable meaning for the Respondent to choose these specific letters to operate a website which contains links to other commercial website. The fact that the Respondent is Canadian and that the content of <elig.com> is in Turkish, is a clear indication with respect to bad faith of the Respondent who most presumably is aware of the prominence of the Complainant in legal world and intends to sell the disputed domain name <elig.com> to Complainant for profit. The Respondent indisputably using the <elig.com> domain name to operate a website featuring links to commercial websites, some of which contain e-commerce websites, from which the Respondent presumably receives referral fees. According to established decisions of the Panel, such commercial use is neither a bona fide offering of goods or services as per Policy (c)(i) nor a legitimate non-commercial or fair use pursuant to Policy 4(c)(iii). Such use for the Respondent’s own commercial gain is evidence of bad faith registration. Most importantly potential clients of the Complainant may become confused as to affiliation of the Complainant with the Respondent, which is a further evidence of bad faith registration and use.
I.
Respondent’s Contentions
Respondent registered the domain <elig.com> (the “Domain”) on March 7, 2000. This registration was approximately 5 years before the Complainant started using the ELIG initials in 2005 according to the Complaint. Prior to receipt of the Complaint at the beginning of June 2008, the Respondent had no knowledge whatsoever of the Complainant. Clearly, when Respondent first registered the Domain on March 7, 2000, it had no way of knowing that there would be a law firm in Istanbul that would, five years into the future, decide to adopt the ELIG initials as its name.
The Respondent registered the Domain in 2000 for use at any moment by the Respondent for one of its new business enterprises. Such holding of a domain for future use is fair use of a domain.
Despite the existence of the registration of elig.com in 2000, the Complainant chose to select a trade name using “elig” in 2005.
The Complainant states that “there is no reasonable reason of the Respondent to choose these specific letters . . .” In fact, the Domain was registered for the specific purpose of an online brand needing a short name, i.e. a short (4 letter) “.com” domain name that is also pronounceable and easily spellable and also that was available at the time of registration in 2000.
Short domains make it easier for all users of the domain (i.e. senders and receivers of e-mail and owners and users of a website using the domain) to type in the domain accurately.
The Complainant states they selected in 2005 “elig” due to the initials of their principals. If they had wanted a “.com” domain name available in 2005, they had the choice to choose a different set of order of initials, could have chosen them in different order. The Complainant could have chosen LGEI or EILG. ELIG, however, is pronounceable. That was their choice. Also, it was their choice to use their initials at all. Law firms, as can be seen from the materials that the Complainant has filed, generally use the full last names of partners rather than only initials. The Complainant, in choosing to use a short trade name that was easily spellable and pronounceable, rather than the last names of the partners, recognized what the Respondent recognized 5 years prior in 2008 and now, 8 years later in 2008, the Complainant wishes to take the domain away from the Respondent.
The Complainant submits that it has
common law trademark rights. It does not
submit that it has ever registered ELIG as a trademark in any jurisdiction,
including
A Google search of “elig”
shows 544,000 results. There are
numerous other users of “elig,” including as a personal surname of many people.
The Complaint’s domain <eliglegal.com>
appears 4th on a Google search. It
appears only a few times in the top 100 Google results. <elig.org> appears first.
At approximately the same time as it registered the Domain in 2000, the Respondent registered other domain names such as <clera.com>, <rore.com>, <morb.com> and <plon.com>, all meeting the same above criteria.
The Respondent registered <elig.com>, <rore.com>, <clera.com>, <morb.com> and <plon.com> to use at a moment’s notice for new business enterprises since the Respondent was concerned that such domains would not be available when the Respondent needed short (4 letter), pronounceable “.com” domains for company names and websites.
Maintaining the registration of the Domain for this use is fair use of the Domain. Otherwise, the Respondent, each time it establishes a new business, would now need to spend many hours to search for and identify several suitable domains and then, as such domains are all currently registered, spend much time and money to negotiate the purchase of the such domains so as to settle on one domain to purchase, which negotiation tine and purchase cost could be prohibitive to the quick establishment of a new small business.
The Domain was parked just like many other domain names that are currently not being used. The parking page showed very general broad categories of advertisers.
On June 7, 2008, after receiving the Complaint, so as to respond to the Complainant’s claim that Respondent was improperly using the domain by parking it in a same manner that millions of domains other are currently parked pending their more comprehensive use by the domain registrant, Respondent instructed the parking page company to temporarily disable the Domain. On June 9, 2008, the domain was disabled and is no longer parked. Respondent disputes the Complainant’s claim that parking is improper use. Complainant argues that there are established decisions of the Panel to this effect but, despite the fact that Complainant is a law firm, Complainant does not cite to any of these decisions. If the Panel determines that to maintain Respondent’s registration of the domain, the Respondent must not park it, Respondent hereby agrees not to park it.
Under Policy ¶ 4(c)(iii), by maintaining registration for future use, the Respondent is making “fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Respondent is currently the CEO of a small pharmaceutical company, Clera Inc., (using the domain <clera.com>). As far as the Respondent is aware, all of the large global pharmaceutical companies in the world register the “.com” domain of a variety of their potential brand names well in advance of them selecting which one to use and then starting to use it. Many such registered domains have never yet been used but are maintained registered as they may be used in the future. It is very likely the same in many other industries.
When Respondent registered the Domain and now, Respondent was intending to start up new businesses and develop new brands. Respondent specifically did not want to register trademarks and went out of the way in 2000 to avoid them. In 2000, as far as Respondent was aware, no trademark for “elig” existed anywhere in the world.
Respondent’s legitimate interest in the Domain is to use it for one of its future businesses, i.e. Respondent prefers, short (4 letter), pronounceable and easily spellable “.com” domain name and e-mail address for the reasons set out above.
Under Policy ¶ 4(a)(iii) Complainant has the onus to prove that that the “domain name has been registered and is being used in bad faith.” The complainant must prove both that it was registered in bad faith and that it is being used in bad faith. Complainant has not presented any such evidence of bad faith in either the registration or any use Respondent has ever made of the domain. Prior to the Complaint, Respondent had no knowledge of Complainant.
Complainant alleges that Respondent has acted in bad faith because “the Respondent presumably is aware of the prominence of the Complainant in the legal world and intends to sell the disputed domain <elig.com> to Complainant for profit.” Prior to this complaint, Respondent had no knowledge of Complainant and, therefore, never did and never could contemplate selling the domain to Complainant. Further, Respondent registered the Domain in 2000 before Complainant started using the mark in 2005 and therefore could not possibly have registered the domain name for the purpose of selling to Complainant.
Complainant argues that Respondent was using the Domain in bad faith pursuant to Policy ¶ 4(b)(iv) since Complainant says that there were Turkish advertisements displayed on the parking page. Firstly, any advertisement and the language of the advertisements were entirely in the control of the domain parking company. Respondent was only aware that general categories of goods and services were advertised in English. Respondent was not aware that Turkish ads were displayed nor was Respondent aware at all of the existence Complainant or where it was located.
Complainant has not presented any evidence that Respondent have “intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location of a product of service on your website or location.” [Policy ¶ 4(b)(iv)]. Complainant has presented no evidence of intent. Respondent had no such intent. The fact that Respondent registered the Domain in 2000 and Complainant admits that it started its use in 2005 is evidence of no such intent.
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.
FINDINGS
The Panel finds the issues on this element in favor of Respondent.
The Panel finds that Complainant failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
As the disputed domain name was registered at least five years prior to the formation of Complainant and its use of the alleged ELIG mark, the Panel finds that Respondent could not have registered the <elig.com> domain name in bad faith as required for Complainant to prove Policy ¶ 4(a)(iii). See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (finding no bad faith registration and use where the respondent registered the disputed domain name before the complainant began using the mark); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant's company did not exist at the time of registration).
The Panel determines the <elig.com> domain name is a generic domain name and therefore finds that the disputed domain name was not registered or used in bad faith under Policy ¶ 4(a)(iii). See Franklin Mint Fed. Credit Union v. GNO, Inc., FA 860527 (Nat. Arb. Forum Feb. 23, 2007) (finding no bad faith registration and use of the <fmcu.com> domain name because it was a four-letter abbreviation for many things, and the respondent was in the business of registering generic four-letter domain names); see also Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no bad faith where the domain name involves a generic term, and there is no direct evidence that the respondent registered the domain name with the intent of capitalizing on the complainant’s trademark interest).
Respondent contends that it had no knowledge of Complainant at the time at which the disputed domain name was registered, as Complainant did not yet exist, and as such, the <elig.com> domain name could not have been registered in violation of Policy ¶ 4(b)(i). The Panel agrees. See Seaway Bolt & Specials Corp. v. Digital Income Inc., FA 114672 (Nat. Arb Forum Aug. 5, 2002) (finding that the speculation in domains that reflect ordinary dictionary words is not bad faith unless the respondent registered the name with the intent of selling the registration to the complainant or a competitor of the complainant).
Respondent also asserts that the <elig.com> domain name is not capable of creating a likelihood of confusion with Complainant, as the disputed domain name and resulting website are not connected with the legal profession. The Panel agrees and finds that Respondent did not register or use the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Hydrologic Servs., Inc. v. Name Delegation, FA 707617 (Nat. Arb. Forum July 12, 2006) (finding no bad faith registration and use of the <hysr.com> domain name because “Given the brevity of the disputed domain name, the obscurity of the mark, the geographic locations of the parties, and the nature of the parties' activities, it would not be reasonable to infer that Respondent had actual knowledge of Complainant or its mark when it registered the disputed domain name.”).
Because the Panel has found that Complainant has not established that Respondent
acted in bad faith in its registration of the domain name, the Panel declines
to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty.
Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the
complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining
element unnecessary).
DECISION
Under the ICANN Policy the Complainant must prove all three elements in
order to prevail. Complainant has failed
to establish one of the elements and therefore the Panel concludes that relief
be DENIED.
Timothy D. O’Leary, Panelist
Dated: July 9, 2008
National
Arbitration Forum
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