Chronic Disease Fund v. Phillip Quick a/k/a Dan Quick
Claim Number: FA0810001228655
Complainant is Chronic Disease Fund (“Complainant”), represented by David
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cdfund.com>, registered with Innerwise, Inc. d/b/a Itsyourdomain.com.
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.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 9, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 10, 2008.
On October 10, 2008, Innerwise, Inc. d/b/a Itsyourdomain.com confirmed by e-mail to the National Arbitration Forum that the <cdfund.com> domain name is registered with Innerwise, Inc. d/b/a Itsyourdomain.com and that the Respondent is the current registrant of the name. Innerwise, Inc. d/b/a Itsyourdomain.com has verified that Respondent is bound by the Innerwise, Inc. d/b/a Itsyourdomain.com 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 October 20, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on November 5, 2008.
Complainant submitted an Additional Submission on November 7, 2008 that was determined to be timely and complete pursuant to Supplemental Rule 7.
On November 10, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that since 2003 the Chronic Disease Fund has operated nationally and on the Internet as CDFUND using the domain names “cdfund.org” and “cdfund.net.” Users of Complainant’s services readily recongize the CDFUND service mark as an extension of the Chronic Disease Fund name. Complainant asserts that the disputed domain name “cdfund.com” is confusingly similar to the mark in which Complainant has acquired rights, as well as to the existing domain names under which CDFUND operates. Complainant asserts that it has invested substantial sums of money in developing and marketing its services and in establishing goodwill in the mark. Complainant alleges that it has used the CDFUND mark continuously and extensively in Interstate Commerce since it adopted the mark in January 2003.
Complainant contends that Respondent Phillip Quick had a legitimate interest in the disputed domain name <cdfund.com>. Complainant also contends that Respondent merely uses the domain name as a pass through to direct Internet users to a website advertising its IT and consulting services. Complainant contends that Respondent has not used the disputed domain name for any legitimate purpose and has no legitimate interest in the <cdfund.com> name.
In support of its claim that Respondent has registered and used the disputed domain name in bad faith, Complainant notes that Respondent has offered to sell the domain name for $5,000, even though its actual cost would have been a small fraction of that amount. Complainant alleges that Respondent acquired the disputed domain name primarily for the purpose of selling it for a profit and that its offer to sell without any intent to use the domain name for a legimate purpose shows bad faith.
Respondent contends that Complainant has no exclusive rights to the CDFUND mark. Respondent points to the fact that Complainant has not applied for or registered the service mark with the United States Patent and Trademark Office. Respondent also states that Complainant does not use the CDFUND mark on its website and, instead, refers to itself as “CDF.” Respondent also asserts that the terms “cd,” “fund” and “CDFUND” are generic and commonly used to describe other funds. On this basis, Respondent contends that Complainant has failed to show that the mark has acquired distinctiveness or secondary meaning as required.
Respondent contends that it has rights and legitimate interests in the disputed <cdfund.com> domain name. The domain name <cdfund.com> is in stock in Respondent’s inventory in connection with Respondent’s business in registering domain names and designing websites. The domain name is currently being used to promote Respondent’s professional web design business. As a professional web designer, Respondent registers many generic descriptive domain names for the purpose of designing and selling websites. Respondent asserts that the fact he has offered to sell the domain name does not make his interest illegitimate.
In contending that he has not registered or used the <cdfund.com> domain name in bad faith, Respondent points out that he registered the disputed domain name on March 5, 2002 before Complainant even began its existence. He registered the domain name with the intent of designing a website for a client in the banking industry in order to advertise a “certificate of deposit fund” for the banking client. Respondent states that he was unaware of the existence of Complainant before October 20, 2008 and denies having ever contacted Complainant.
C. Additional Submissions
Complainant in its additional submission points out that it is a charitable 501(c)(3) organization and that it uses its <cdfund.net> and <cdfund.org> domain names in accepting donations through its website. Complainant alleges that UDRP policy does not require that the domain name to be registered with a governmental authority for rights to exist. Complainant also contends that even though the terms “CD” and “FUND” may be generic, the two terms in combination are not. Complainant says that it attempted in good faith to contact Respondent on many occasions but unsuccessfully. Complainant alleges that Respondent’s failure to update his registration information violates the terms of his Registrar’s Terms of Service.
The Panel finds that Complainant has failed to meet its burden of proving that Respondent registered and used the disputed domain name in bad faith within the meaning of Policy ¶4(a)(iii).
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.
The Panel has determined that it is unnecessary to discuss whether the disputed domain name is identical to or confusingly similar to Complainant’s service mark. The Panel also determines it is unnecessary to discuss whether Complainant has met its burden to prove that Respondent lacks rights or legitimate interests in the disputed domain name. The Panel has concluded that, regardless of those issues, Complainant has failed to demonstrate that Respondent registered and used the disputed domain name in bad faith within the meaning of Policy ¶4(a)(iii). Respondent’s registration of the disputed domain name predated Complainant’s alleged common law rights in the disputed domain name by at least nine months. There is thus no possibility that Respondent registered or used the <cdfund.com> domain name in bad faith pursuant to Policy ¶4(a)(iii). See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001). Complainant’s organization did not even exist at the time of Respondent’s registration of the disputed domain name.
The Panel also finds no evidence that Respondent, who is not a competitor of Complainant, registered or used the domain name for any purpose of disrupting Complainant’s business or that Respondent is using the domain name to divert Internet users for commercial gain. See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001).
Because Complainant has not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Mark McCormick, Panelist
Dated: November 24, 2008
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