Etsy, Inc. v.
Claim Number: FA0809001222645
PARTIES
Complainant is Etsy, Inc. (“Complainant”), represented by David
A. W. Wong, of Barnes & Thornburg LLP,
REGISTRAR
The domain name at issue is <etsey.com>, registered with Compana, LLC.
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 29, 2008; the
National Arbitration Forum received a hard copy of the Complaint on September 2, 2008.
On September 3, 2008, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <etsey.com> domain name is registered
with Compana, LLC and that the Respondent
is the current registrant of the name. Compana, LLC has verified that Respondent is
bound by the Compana, LLC 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 September 8, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of September 29, 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@etsey.com by e-mail.
A timely Response was received and determined to be complete on
An Additional Submission was received from Complainant on
An Additional Submission was received from Respondent on
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant states that it is an online marketplace for buying and
selling “all things handmade.”
Complainant began offering its services on
Respondent’s web site features a search engine which includes links to
competitors of Complainant. Complainant
asserts that Respondent has a pattern of registering domain names in bad faith.
B.
Respondent
Respondent states that “etsey” is a surname and is not confusingly
similar to Complainant’s mark.
Respondent states that the links on its site go to a variety of
businesses, and relate to a variety of topics, many of which have nothing to do
with Complainant’s business (e.g., information technology,
Respondent states that it has not acted in bad faith because when the
disputed domain name was registered on
C.
Additional
Submissions
The
Complainant and Respondent each made Additional Submissions. With one exception the arguments in the
Additional Submissions were similar to those made in the Complainant and
Response. In its Additional Submission, Respondent contests Complainant’s
Additional Submission, claiming it to be improper because it was not solicited
from the Panel. Respondent cites Rule
12, which states that “[i]n addition to the complaint and the response, the
Panel may request, in its sole discretion, further statements or documents from
either of the Parties.”
FINDINGS
The ETSY mark was registered with the United
States Patent and Trademark Office (“USPTO”) (Reg. No. 3,179,782) on
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.
Preliminary
Issue: Complainant’s Additional Submission
In its Additional Submission, Respondent contests
Complainant’s Additional Submission, claiming it to be improper because it was
not solicited from the Panel. Respondent
cites Rule 12, which states that “[i]n addition to the complaint and the
response, the Panel may request, in its sole discretion, further statements or
documents from either of the Parties.”
It is true that the Panel may request additional statements or documents
pursuant to Rule 12 as it deems necessary.
It is also true, pursuant to the National
Arbitration Forum’s Supplemental Rule 7, that “[a] party may Submit additional
written statements and documents to the Forum and the opposing party(s) within
five (5) Calendar Days after the date the Response was received by the Forum,
or, if no Response has been filed, the last date the Response was due to be
received by the Forum.” Moreover, the preamble
to the Rules states that the administrative proceeding “shall be governed
by these Rules and also the Supplemental Rules of the Provider administering
the proceedings.”
Respondent argues that Supplemental Rule 7 is
invalid because it conflicts with ICANN Rule 12. It should be noted that Respondent has
presented this argument before previous UDRP panels, and these panels have held
Supplemental Rule 7 to be valid, and not in conflict with ICANN Rule 12. See, e.g.,
Alive Hospice, Inc. v.
Accordingly, the Panel finds that
Complainant’s filing of its Additional Submission is proper, and that
Supplemental Rule 7 does not conflict with ICANN Rule 12.
The ETSY mark was registered with the United
States Patent and Trademark Office (“USPTO”) (Reg. No. 3,179,782) on
In analyzing what should be the issue of bad
faith, some decisions have found that, as part of the analysis under Policy
¶ 4(a)(i), a complainant’s rights in a registered mark
relate back to the filing of the application for registration. See, e.g., Hershey Co. v. Reaves,
FA 967818 (Nat. Arb. Forum
In some
decisions, albeit treating the issue under Policy
¶ 4(a)(i), panels have held that a complainant’s rights in a mark date back to the trademark application’s filing date
under Policy ¶ 4(a)(i). Hershey
Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007); Bob Jones Univ. v. Kane, FA 324692 (Nat. Arb. Forum
At first blush these cases appear inconsistent. But when looking carefully at the “relate back” cases the panels which have held that trademark rights relate back to the filing of a trademark application did so in situations where, unlike the present case, the trademarks were widely known or where the complainant also had established common law rights in the mark. See, e.g., Hershey Co. v. Reaves, supra (“The Panel has little difficulty in finding that Complainant’s continuous and extensive use of the KISSES mark for 100 years demonstrates that the mark has acquired secondary meaning in association with Complainant’s products, which shows that Complainant has common law rights in the mark pursuant to Policy ¶ 4(a)(i).”); FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003) (“The Fire Department of the City of New York, commonly known as FDNY, was established in 1898 and has continuously used the FDNY Marks to identify its services for over a century.”). In other words, as one panel explained, there is a “legal presumption” of bad faith if a respondent reasonably should have been aware of the complaining party’s rights in the mark. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002).
Therefore,
because those cases finding the registration of a mark relates back to the filing
of an application involve situations in which the mark is well established, these
cases are not necessarily inconsistent with the decisions holding that trademark
rights of the complaining party must exist prior to the registration of the
domain name. Thus, “[n]ormally speaking, 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.” WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, http://www.wipo.int/amc/en/domains/search/overview/#31;
see also Robert A. Badgley, Domain Name Disputes § 8.03 (2002).
Therefore, because the Complainant has not
established that during the last six months of 2005 it had common law trademark
rights in the ETSY mark, or that its mark was so well known that Respondent
reasonably should have been aware of it, I find that Respondent lacked actual
or constructive knowledge of Complainant’s mark when the domain name was
registered. Because Complainant did not
hold “rights” in the ETSY mark prior to the registration of the domain name,
Respondent did not register its domain name in bad faith.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Dated: November 11, 2008
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