John R. Wood, Inc. v Oxana Savostina

A timely Response was received and determined to be complete on September 2, 2008.

On September 8, 2008 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant has been using the JOHN R. WOOD mark to identify its real estate related goods and services since 1962 and operates under the domain name <johnrwood.com>. The United States Patent and Trademark Office has issued Complainant a series of federal registrations for marks comprised in whole or significant part of JOHN R. WOOD. Complainant has provided copies of these registrations which date from 1998-2008.

Complainant contends that it has made substantially exclusive and continuous use of the JOHN R. WOOD mark for the last five years and that consumers have come to “automatically” associate the name with its goods and services.

On or about April 11, 2003 Respondent registered the domain name <johnrwoods.com>. On or about October 21, 2004 Respondent registered <john-r-woods.com>. Complainant contends that there is no evidence that Respondent has any trademark or rights with respect to either of the domain names. Furthermore, Complainant notes that these domain sites contain no content, other than links to a number of real estate related entities.

Complainant contends that Respondents website is confusingly similar because the only difference is the addition of an “s.”

Complainant contends that Respondent has no legitimate rights or interests with respect to the domain name because Respondent is not related to Complainant, nor authorized to use Complainant´s work, nor commonly known as John R. Woods, nor listed as such in telephone books or listed as such in the WHOIS data provided. Furthermore, Respondent has not registered the mark at either the state or federal levels.

Complainant asserts that the domain names in dispute are intended to confuse Internet users for commercial gain by diverting them to a website featuring links to a variety of third-party commercial websites. Complainant asserts that this is done in order to create a likelihood of confusion because it creates confusion as to Complainant’s affiliation with the resulting search engine websites and diverting business.

B. Respondent

Respondent is a sole individual but refers to herself as “we” throughout the response, stating that “we” are in the technology business developing original software and websites. According to Respondent she acquired the domains <johnrwoods.com> and <john-r-woods.com> several years ago because one of her associates was developing a literary site for an author by that name. Because the software portion of the business has taken off, they are producing websites at a slower pace. Respondent acquired the domains from Marlene Graham, a former employee of Complainant. According to Respondent <johnrwoods.com> contains a “no results page” and <john-r-woods.com> contains links to various types of companies including car dealerships, wedding photographers, heating & cooling companies, among others, not solely real estate companies.

Respondent claims that she did not intend to use the domain names in any profit making venture, or cash parking. Respondent claims that she did not plan to use the domain names in any manner to market real estate out of respect for the previous owner (Marlene Graham) and Mrs. Graham’s former employer, consequently, Complainant. According to Respondent, Respondent agreed with Marlene Graham to not use the domains for real estate purposes when the transfer occurred.

Respondent contends that she has not received prior correspondence from Complainant or an offer to acquire the domain names. Nor has she approached Complainant with an offer to sell the domain names. Respondent asserts that John R. Wood and John R. Woods are similar names held by many individuals. Respondent declares that it would have been impossible for her to register the name in bad faith, as she was not the original registrant.

Respondent notes that Complainant owns the domain name <John-R-Wood.com>. Said domain name leads to a sponsored links page. As a result, Respondent argues that Complainant is engaging in acts that would lead to confusion and/or drive business away from Complainant (itself). Therefore Respondent does not understand why its actions are being censured.

Respondent contends that her associate is willing to complete the website in question planned for an individual by the name of John R. Woods, or follow up on past inquiries from individuals by the name of John R. Woods who have expressed an interest in their given name’s domain name.

As evidence, Respondent submits a letter from Marlene Graham, a former employee of Complainant. According to the letter, Mrs. Graham and her husband were employed by Complainant as real estate agents. During this time Mrs. Graham registered 15 domain names with the name “John R. Wood” with the intent of using them in anticipation of contributing to the success of the company. In addition, Mrs. Graham had purchased the <johnrwoods.com> domain from a real estate website provider in anticipation of joining Complainants firm. She also registered <john-r-woods.com> separately. In 2005, at the request of Complainant, Mrs. Graham turned over the 15 domain names under “John R. Wood” without compensation. Mrs. Graham was then asked to do the same with the “John R. Woods” domain names. Mrs. Graham states that she was unable to comply because she was not listed as the registered owner of one of the sites. The firm she had bought the domain name from was listed as the owner. Both Mrs. Graham and her husband were terminated from Complainant’s employment for not turning over the domain names containing “John R. Woods.” Mrs. Graham claims that she transferred the domain name to Respondent because Complainant instructed her to transfer the website to anyone, as long as it was not used for real estate purposes.

Respondent contends that there are many individuals and companies throughout the United States and the world with the name, “John R. Woods” and has supplied a range of Internet pages proving this.

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.

Identical and/or Confusingly Similar

Complainant asserts that Respondent´s domain names <johnrwoods.com> and <john-r-woods.com> are confusingly similar to Complainants mark, JOHN R. WOOD. The main distinction between Respondent’s domain names and Complainant’s mark is the inclusion of an “s” with respect to both domain names and the use of hyphens with respect to <john-r-woods.com>. As held previously, the inclusion of an “s” does not prevent the likelihood of confusion, nor is it sufficient to differentiate Respondent´s domain names from Complainant’s under ¶ 4(a)(1). See Nat´l Geographic Soc´y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant´s NATIONAL GEOGRAPHIC mark); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the complainant´s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark”).

Furthermore, the same has been held true in instances where hyphens are used to differentiate marks. See Gen. Elec. Co. v. Bakhit, D2000-0386 (WIPO June 22, 2000) (finding that placing a hyphen in domain name between “General” and “Electric” is confusingly similar to the complainant’s mark). In the case before us, the inclusion of an additional “s” and hyphens are not sufficient to differentiate <johnrwoods.com> and <john-r-woods.com> from the mark JOHN R. WOOD.

Respondent contends that the domain names <johnrwoods.com> and <john-r-woods.com> consist of “common names” shared by various individuals and businesses and therefore cannot be confusingly similar to Complainant’s mark. However, this determination is not necessary under ¶ 4(a)(i). This portion of the Policy considers only a determination whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. A parties’ trademark registration of a mark overcomes the argument that the mark is generic. Vance Int´l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007). Here, Complainant asserts rights in the JOHN R. WOOD mark through registration of the mark with the United States Patent and Trademark office. (Reg. No. 2,174,456 issued July 21, 1998). This registration is sufficient to establish Complainant’s rights in the mark.

Based on the premise that the addition of and “s” and hyphens are not sufficient to differentiate the marks and the fact that Complainant’s trademark registration overcomes the argument that the mark is generic, this Panel finds that the domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights.

Rights or Legitimate Interests

Complainant has made a prima facie case in support of its complaint that Respondent does not have rights or a legitimate interest in the domain names. When this occurs the burden of proof turns to Respondent, to prove with concrete evidence using information that is “uniquely within the knowledge and control of the respondent.” See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).

Complainant contends that Respondent has no rights or legitimate interests in the domain names. Respondent is not related to Complainant, nor authorized to use Complainant’s work, nor commonly known as John R. Woods, nor listed as such in telephone books or WHOIS data. Furthermore, Respondent has not registered the mark at either the state or federal levels.

Respondent states that the <johnrwoods.com> domain name contains no content. Respondent also states that the <john-r-woods.com> domain name operates as a website that contains advertisements to commercial websites, some of which are competitors of Complainant. As a result, this Panel infers that Respondent is receiving click-through fees for each Internet user redirected to a commercial website unrelated to Complainant.

Respondent may rebut the presumption of having no legitimate rights by showing that it uses the domain names in connection with a bona fide offering of goods and services pursuant to ¶ 4(c)(i). Because the domain names contain no content of this nature, Respondent must prove that, prior to having received notice of this dispute, Respondent made “demonstrable preparations” to use the domain name in connection with a bona fide offering of goods and services by submitting “substantial, overwhelming and undisputed evidence.” See AutoNation Holding Corp. v. Alawneh, D2002-0058 (WIPO May 1, 2002).

Here, Respondent contends that it acquired the domain names in the anticipation of creating a literary site for an author by the name of John R. Woods. Respondent also indicates it has been approached by various individuals by the name John R. Woods expressing interest in the site. As evidence, Respondent has submitted printouts of Internet searches revealing the multitude of individuals and companies by the name of John R. Woods in Florida and the United States.

In this respect, Respondent has failed to provide sufficient evidence of “demonstrable preparations.” This Panel has not seen any correspondence between John R. Woods and Respondent. Nor has this Panel been presented with proposed website layouts, research, contracts or agreements, expenses related to the webpage production, evidence of monetary reliance on the webpage creation, or offers to contract a webpage from anyone by the name of John R. Woods. The information provided is highly generic, accessible to the general public and not demonstrative of having a bona fide interest in the goods or services.

Respondent has failed to meet its burden of proof. Therefore, the Panel finds that Respondent has no rights or legitimate interests with respect to the domain names.

Registration and Use in Bad Faith

Complainant contends that Respondent is using the <johnrwoods.com> and <john-r-woods.com> domain names to operate websites that provide links to various websites offering competing real estate services in Florida, in addition to several unrelated websites. Respondent admits that this is true. While Respondent states that it is making no monetary gain from this website, this Panel infers that Respondent is profiting from such use through the collection of referral fees for each redirected user. This is typically the manner in which these sites operate. A respondent acts in bad faith by attracting Internet users to a website that competes with the complainant´s business. See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000).

Here, Respondent admits that <john-r-woods.com> domain name has the effect of displaying links for other businesses, some of which are competitors of Complainant. Furthermore, Respondent calls this an “oversight” and apologizes, promising to change it once the issue is cleared. This is evidence of bad faith.

Moreover, Respondent claims that Respondent did not register the domain names in bad faith because Respondent was not the original registrant of the domain names. This fact is non-conclusive. Respondent is considered to have registered the domain names at the point in time when the domain names were transferred to Respondent’s name in early 2006. Considering the latter, Respondent claims to have promised Marlene Graham that Respondent would not use the domain names for real estate purposes, but yet much of the information on at least one of the domain names contains links to real estate companies. Furthermore, it can be inferred from Marlene Graham’s letter that Respondent was aware of the conflicts involving the domain name disputes in question between Mrs. Graham and Complainant. It can also be inferred that Respondent was aware of Complainant’s interest in the domain names when the transfer occurred. As a consequence of this, Respondent should have taken every necessary step to avoid real estate advertisements on the domain names. This creates the perception of bad faith.

Finally, the inference of bad faith can be overcome if Respondent demonstrates having rights or a legitimate interest in the disputed domain names. See Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005). As discussed previously, this Panel is unable to find that Respondent has rights or a legitimate interest in the disputed domain names. Therefore, based on the above the domain names have been registered and are being used in bad faith.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <johnrwoods.com> and <john-r-woods.com> domain names be TRANSFERRED from Respondent to Complainant.

Calvin A. Hamilton Panelist
Dated: September 23, 2008

National Arbitration Forum