Stephen Wheatcraft v.
Reison, Inc. c/o Domain Manager
Claim Number: FA0811001232650
PARTIES
Complainant is Stephen Wheatcraft, represented by R.
Cameron Garrison, of Lathrop & Gage, LC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wheatcraft.com>, registered with Dotster.
PANEL
The undersigned, Daniel B. Banks, Jr., as panelist, 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 November 5, 2008; the
National Arbitration Forum received a hard copy of the Complaint on November 6, 2008.
On November 5, 2008, Dotster confirmed by e-mail to the National
Arbitration Forum that the <wheatcraft.com> domain name is
registered with Dotster and that the
Respondent is the current registrant of the name. Dotster
has verified that Respondent is bound by the Dotster
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 November 12, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 2, 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@wheatcraft.com by
e-mail.
A timely Response was received and determined to be complete on December 2, 2008.
An Additional Submission was received from Complainant on December 8,
2008, which was determined to be timely and complete under the National
Arbitration Forum’s Supplemental Rule 7.
An Additional Submission was received from Respondent which was
determined to be timely and complete.
On December 9, 2008, pursuant to complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Daniel B. Banks, Jr. as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant obtained
a Ph.D. from the University of Hawaii, Hawaii Institute of Geophysics in
1979. He has been teaching at
universities and conducting research on issues of groundwater contamination for
over thirty years and has earned an international reputation as an expert in
the field of hydrology. He was featured
on the television networks NOVA and BBC’S Horizons. He has held esteemed positions with
international public recognition. He was
the 1990-91 Henry Darcy Distinguished Lecturer for the National Groundwater
Associations’s lecture series, speaking to over thirty universities in the
Because of Dr.
Wheatcraft’s expert reputation in the hydrology field, practitioners from the
indicators of Dr.
Wheatcraft’s services, and have achieved common law service mark status. Dr. Wheatcraft applied to the USPTO for
federal registration of “Wheatcraft &
Associates, Ltd.”
on August 1, 2008. In his application,
Dr. Wheatcraft sought registration of the mark in connection with “litigation support
services; expert witness services in legal matters in the field of groundwater contamination;
[and] consulting for expert witness services in legal matters in the field of groundwater
contamination.” The USPTO has yet to respond to Mr. Wheatcraft’s application.
The domain name is confusingly similar to service marks in which the
Complainant has rights. “Wheatcraft” is
the dominant and most important part of Complainant’s marks because it is the
primary indicator of Complainant’s reputation and expert services he sells, due
in part to the fact it is a unique surname.
The consuming public immediately associates Dr. Wheatcraft’s name and
“Wheatcraft & Associates, Ltd.” with Dr. Wheatcraft’s expertise and
services, and attaches significant goodwill to both marks.
Respondent registered the disputed domain name on May 16, 2001. The domain name is identical to Dr.
Wheatcraft’s last name. Consumers are
likely to be confused into thinking that Complainant sponsors Respondent’s
domain which is identical to his name.
Respondent has no
rights or legitimate interests in respect of the domain name. Respondent’s use of the domain name is not in
connection with a bona fide offering of goods or services. Respondent is using the domain in connection
with a web site that merely contains commercial advertising for third-party
sellers of a variety of products and services.
Most of the advertisements contain the word “wheat” or “craft” or are related
to wheat or craft in some way, but have no other connection to the domain name
or Respondent. The web site does not
contain any information about Respondent, its business, or any goods or
services Respondent offers for sale, and is therefore not a valid use of the
domain name as a bona fide offering of goods or services.
Respondent has not
been commonly known by the domain name.
The domain name <wheatcraft.com>
does not have any source-indicating significance toward Respondent.
“Wheatcraft” is not at all similar to Respondent’s name, “Reison, Inc.”. Furthermore, Complainant is unaware of
Respondent having any history of using “wheatcraft” as a trademark. The domain
serves no purpose for Respondent other than marking a web site where Respondent
links to commercial advertisers. The web site conveys no information about
Respondent whatsoever.
Respondent is
using the domain name with intent for commercial gain to misleadingly divert
consumers. Respondent is not making a
legitimate noncommercial or fair use of the <wheatcraft.com> domain name without intent for commercial
gain. Respondent’s advertising of goods
and services for sale on its site, a fortiori constitutes a commercial
use of the domain name. Respondent
presumably receives click-through fees for
the third-party
advertisements on its web site, which constitutes commercial gain and a bad
faith use of the domain name. Even if
the Registrar is controlling the advertising appearing on Respondent’s web
site, Respondent is ultimately responsible for any activities carried out using
the domain name. Moreover,
the fact that Respondent’s <wheatcraft.com>
domain name infringes Complainant’s service marks, as
shown above, evidences that Respondent is making a commercial
use of the domain name for non-legitimate and non-fair use purposes.
The web site
itself contains evidence that Respondent has registered the domain
<wheatcraft.com> primarily for the purpose of selling,
renting, or otherwise transferring the domain name registration to the
Complainant who is the owner of the service mark for valuable consideration in
excess of Respondent’s documented out-of-pocket costs directly related to the domain
name. As documented by the screen capture of Respondent’s web site on September
21, 2008, attached hereto as Annex X, directly below the web site’s heading
“wheatcraft.com” is the phrase: “This is a future home page.” Respondent
registered the domain name in 2001, and has not used it for its own home page
since then; therefore, this language indicates that Respondent intends to sell
the domain name for a profit to the party entitled to use the domain as its homepage,
namely, Dr. Wheatcraft. Further,
Respondent has intentionally attempted to attract, for commercial gain,
Internet users to Respondent’s web site by creating a likelihood of confusion
with Complainant’s mark as to the source, sponsorship, affiliation, or
endorsement of Respondent’s web site or of services on Respondent’s web site.
Respondent has sought to capitalize on Dr. Wheatcraft's reputation and goodwill
by using Dr. Wheatcraft’s mark to divert internet users searching for his
services to Respondent’s strictly commercial web site that is unrelated to Dr.
Wheatcraft. Respondent’s web site contains
references to apparent consulting services such as “Searching For New Craft”
and “Personal Development” that could be confused with the consulting services
offered by Dr. Wheatcraft. Respondent's web site contains nothing but
advertisements and links to various commercial web sites wanting to capitalize
off of individuals seeking services offered under Dr. Wheatcraft’s service
marks. Despite Respondent's web site's implication to the contrary, Respondent
is not, nor has it ever been, associated with Dr. Wheatcraft in any way. By registering
the domain <wheatcraft.com>,
Respondent is clearly seeking to confuse viewers regarding its association with
Dr. Wheatcraft in an attempt to profit off of Dr. Wheatcraft’s service marks. Further evidence of the bad-faith nature of
Respondent’s use of the domain is Respondent’s refusal to respond to the
inquiries of Dr. Wheatcraft and his counsel. Dr. Wheatcraft attempted to
contact Respondent on two different occasions with the purpose of negotiating a
transfer of the domain name. On February
11, 2008, Dr. Wheatcraft sent Respondent an e-mail asking for transfer of the
domain name, but Respondent did not respond.
Shortly thereafter, Dr. Wheatcraft made an offer to Respondent to
purchase the domain name using a service provided by Network Solutions. Respondent did not respond to Dr. Wheatcraft’s
offer. Finally, Dr. Wheatcraft’s counsel, Cameron Garrison, attempted to
contact Respondent by mail with a letter sent on June 11, 2008.
B. Respondent
Respondent’s
registered domain “Wheatcraft.com” is a sir name held by thousands of people
worldwide and is not the same as any registered marks of Complainant.
Complainant’s position that they have the same sir name and use it as a
component
of
their registered marks is not sufficient to meet the requirement of being
substantially similar.
Respondent
provides personalized email services to individuals and companies by allowing
them to hold email addresses such as realestate@wheatcraft.com or dad@wheatcraft.com. There are numerous
entities providing such services such as www.netidentity.com
which claims to hold thousands of sir names and provides a similar service.
Legitimate use of a registered domain is not limited
to websites. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶ 4(a)(ii).
Respondent
did not register Wheatcraft.com in bad faith. ICANN Rule 3(b)(ix)(3); ICANN
Policy ¶ 4(a)(iii).
[The Panel may consider any relevant
aspects included in, but not limited to ICANN Policy ¶ 4(b):
(i.)
The domain was not registered with the intent of selling it to
Complainant and Respondent had no knowledge of who Complainant was at the time
of registration. The domain was selected as to have value to Complainant due to
the large number of individuals in the world with the name “Wheatcraft” to
which personalized emails services could be provided.
(ii.)
(ii.) Respondent did not register the domain with the intent of
preventing Complainant from registering the domain.
(iii.)
(iii.) Respondent does not use the domain to disrupt the business or
interests of Complainant.
(iv.)
Respondent does not obtain any commercial value from the
website. The website
page
is a generic posting from Dotster.com and was not even established by
Respondent.
C. Additional Submissions
Complainant
Subsequent to the filing of the Complaint, the United States Patent and
Trademark Office approved for publication Complainant’s application for
registration of the mark “Wheatcraft & Associates, LTD.”, Serial No.
77,537,188. At the Examiner’s request,
Complainant agreed to an amendment of the application disclaiming any exclusive
right to use “ASSOCIATES, LTD.” apart from the mark. Complainant’s application will be published
in the Official Gazette on December 23, 2008.
Federal registration of a mark is prima
facie evidence of validity and creates a rebuttable presumption that the
mark is inherently distinctive. Complainant cites Abbott Laboratories v. Texas International Property Associates, FA 1227146 (Nat. Arb. Forum November
13, 2008). Although Complainant’s mark
has not achieved registration, the Examiner’s finding that the mark is entitled
to registration constitutes strong evidence that the mark is inherently
distinctive.
Respondent
Complainant’s
registration of the Mark “WHEATCRAFT AND ASSOCIATES, LTD” is
not prima facia
evidence of validity as cited in Abbott Laboratories vs.
International
Property Associates for the
following reasons:
a) As stated in
Plaintiff’s addendum, “Abbott is ranked among the top 100 companies
globally, with
sales exceeding 22 billion in 2005.” Had Plaintiff not provided
articles and
information about himself, it is unlikely that anyone involved would
have even heard of
him.
b) Abbott’s
Service Mark was identical to the Domain Name in dispute. That
factor is not
present in this case.
c) Abbott’s
Service Mark was registered on September 13, 1963 – nearly half a
century before the
Domain was registered. Registration of Wheatcraft.com by
Respondent
occurred nearly 8 years before Registration of Complainants service
mark. Such claim
to validity is only applicable if the Service Mark is registered
prior to
registration of said Domain Name.
d) In this case,
Respondents nature of business was confusingly similar to that of
Complainant.
Wheatcraft.com is being used by Respondent to provide
personalized email
services – potentially to thousands of individuals and business
with the name
‘Wheatcraft’ and has nothing to do with the business of
Complainant.
e) Respondent in
Abbott consented to transfer the Domain eliminating the need for
the Panel to issue
a decision in this case. Therefore, this case provides no
precedence of a
‘ruling’ in favor of Complainant.
FINDINGS
1 – The disputed domain name is not identical
nor confusingly similar to a trademark or service mark in which Complainant has
rights.
2 – The Respondent has rights and legitimate
interests in respect of the domain name.
3 – The domain name was not registered nor is
it being used in bad faith.
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.
Complainant does not hold a
registered trademark for the WHEATCRAFT mark, but this is not necessary under
Policy ¶ 4(a)(i) if Complainant can demonstrate common law rights in the
mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006)
(finding that the complainant need not own a valid trademark registration for
the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy
¶ 4(a)(i)); see also Artistic Pursuit LLC v.
calcuttawebdevelopers.com,
FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that
Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can
establish common law rights in its mark).
In this case, the Complainant’s common law rights, if they exist, are
in the mark Wheatcraft & Associates
or Dr. Stephen Wheatcraft, Ph.D. or variations thereof. While Respondent’s domain name contains the
word “Wheatcraft”, the Panel finds this to be a common descriptive term and as
such, cannot be found to be identical to Complainant’s mark. However, this argument is inapplicable to to Policy ¶ 4(a)(i), and
will be analyzed in greater detail in the discussions of Policy ¶¶ 4(a)(ii) and
(iii).
The Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has not established
a prima facie case in support of its arguments that Respondent lacks
rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum
Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its
burden and as a result found that the respondent had rights and legitimate
interests in the domain name under UDRP ¶ 4(a)(ii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16,
2003) (finding that absent a showing of any facts by the complainant that
establish the respondent lacks rights or legitimate interests in the disputed
domain name, “the Panel may decline to transfer the disputed domain name”).
Respondent is using the <wheatcraft.com> domain name in connection
with a bona fide offering of goods or
services under Policy ¶ 4(c)(i) in that it offers personalized email services
to individuals and companies by allowing them to hold email adresses such as “realestate@wheatcraft.com”
or “Dad@wheatcraft.com.” The Panel finds
that Respondent is using the <wheatcraft.com>
domain name in accordance with a bona
fide offering of goods or services under Policy ¶ 4(c)(i). See
Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum
Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by
showing it was making a bona fide offering of goods or services at the
disputed domain name); see also Digital
Interactive Sys. Corp. v. Christian W,
FA 708968 (Nat. Arb. Forum July 3,
2006) (concluding that the complainant failed to satisfy Policy ¶ 4(a)(ii)
because the respondent provided sufficient evidence to convince the panel that
it was using the disputed domain name for a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i)).
Also, the terms of the <wheatcraft.com> domain name are generic and of common use as surnames. Therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. The Panel finds that Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
It must be noted that the Respondent registered the disputed domain name on May 16, 2001. This is more than 7 years prior to the Complainant applying for federal registration of the mark “Stephen Wheatcraft & Associates, Ltd.”. The Panel finds that Complainant failed to meet the 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 the 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).
The Panel concludes that Respondent
has rights or legitimate interests in the <wheatcraft.com> domain name pursuant
to Policy ¶ 4(a)(ii), and did not register or use the
disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding
that the issue of bad faith registration and use was moot once the panel found
the respondent had rights or legitimate interests in the disputed domain name);
see also Vanguard Group Inc. v. Investors Fast Track, FA 863257
(Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests
in the disputed domain name, his registration is not in bad faith.”).
Further, Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also 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 UDRP ¶ 4(a)(iii)).
Respondent categorically denies all of Complainant’s arguments. First, Respondent denies it has intentions to sell the <wheatcraft.com> domain name. Complainant has not proved its allegation that Respondent has offered the disputed domain name for sale. See PRIMEDIA Special Interest Publ’ns Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (finding that the respondent did not register the domain names in bad faith where there is no evidence that the respondent intended to sell the domain names and actually refused several offers from third parties);
Second, Respondent claims that it does not use the disputed domain name in order to disrupt the business or interests of Complainant. There is no evidence to support a finding that Respondent is using the name in order to disrupt the business of Complainant. Respondent highlights that its purpose was to offer email services to individuals with the last name “Wheatcraft.” The Panel finds that Respondent did not register the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding that the respondent did not register and use the <racegirl.com> domain name in bad faith because the complainant provided no evidence that the respondent intended to disrupt or divert business from the complainant); see also Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding the domain name <seminarsuccess.com> to be generic and that the respondent registered and used the domain name in good faith “because Respondent selected the name in good faith for its web site, and was offering services under the domain name prior to the initiation of the dispute”).
Also, Respondent contends that it
does not obtain any commercial value from the disputed domain name. Respondent alleges that the resolving website
consists of a generic posting from the domain name registrant and was not
established by Respondent. Respondent underscores that is simply provides
e-mail services though the disputed domain name. The Panel finds that this
evidence is sufficient to prove that Respondent did not register the disputed
domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See DJF
Assocs., Inc. v. AIB Commc’ns, FA 95612 (Nat. Arb. Forum Nov. 1, 2000)
(finding the respondent has shown that it has a legitimate interest in the domain
name because the respondent selected the name in good faith for its website,
and was offering services under the domain name prior to the initiation of the
dispute); see also Schering AG v. Metagen
GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that the respondent did not
register or use the domain name <metagen.com> in bad faith where the
respondent registered the domain name in connection with a fair business
interest and no likelihood of confusion was created).
And finally, the <wheatcraft.com> domain name is comprised
entirely of a common surname that has many meanings apart from use in
Complainant’s WHEATCRAFT mark. The Panel
determines that the disputed domain name contains commonly-used terms and that
Respondent did not register and use the <wheatcraft.com>
domain name in bad faith under Policy ¶ 4(a)(iii). See Target Brands, Inc. v. Eastwind Group, FA
267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s
registration and use of the <target.org> domain name was not in bad faith
because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v.
Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because
the respondent was using the <highlife.com> domain name, a generic
phrase, in connection with a search engine, the respondent did not register and
was not using the disputed 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.
Daniel B. Banks, Jr., Panelist
Dated: December 22, 2008
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