National Arbitration Forum

 

DECISION

 

The Atlantic Paranormal Society and Pilgrim Films and Television, Inc. v. Domain Admin

Claim Number: FA0901001242901

 

PARTIES

Complainants are The Atlantic Paranormal Society and Pilgrim Films and Television, Inc. (“Complainants”), represented by Stephen J. Strauss, of Fulwider Patton LLP, California, USA.  Respondent is Domain Admin (“Respondent”), identified further in the Response as Seb Schmitt, France.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <taps.com>, registered with Enom, Inc.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

Hon. Carolyn M. Johnson (Ret.), Prof. David E. Sorkin, and James A. Carmody, Esq. (Chair), as Panelists.

 

PROCEDURAL HISTORY

Complainants submitted a Complaint to the National Arbitration Forum electronically on January 14, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 16, 2009.

 

On January 15, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <taps.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 January 21, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 10, 2009 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@taps.com by e-mail.

 

On February 11, 2009, Respondent’s Response was submitted in hard copy with payment subsequent to the Response deadline.  Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5.

 

Each of the parties filed an Additional Submission which was taken into consideration by the Panel.

 

On February 20, 2009, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Carolyn M. Johnson (Ret.), Prof. David E. Sorkin, and James A. Carmody, Esq. (Chair), as Panelists.

 

RELIEF SOUGHT

Complainants request that the domain name be transferred from Respondent to Complainants.[1]

 

PARTIES’ CONTENTIONS

            A.  Complainants

Complainant The Atlantic Paranormal Society was founded in 1990 and currently includes 46 branches in the United States and 14 overseas.  The society has operated a website at <the-atlantic-paranormal-society.com> since at least as early as 2000.  Since October 6, 2004, the society’s activities have been the subject of a television series on the SciFi cable network.  Complainant TAPS is the owner of the registered trademark TAPS, which is the subject of the following registrations on the Principal Register of the U.S. Patent & Trademark Office:

·        TAPS (standard characters), Reg. No. 3,339,437, registered November 20, 2007, filed January 3, 2006, first use and first use in commerce October 18, 2005, for pre-recorded video discs featuring television programs;

·        TAPS (standard characters), Reg. No. 3,401,788, registered March 25, 2008, filed January 3, 2006, first use and first use in commerce 1995, for men’s, women’s, and children’s clothing;

·        TAPS (stylized lettering), Reg. No. 3,401,794, issued March 25, 2008, filed January 24, 2006, first use and first use in commerce 1999, for men’s, women’s, and children’s clothing; and

·        TAPS (standard characters), Reg. No. 3,457,018, issued July 1, 2008, filed August 28, 2007, first use and first use in commerce December 9, 2005, for duffel bags, attaché bags, and other bags.

 

Complainants state that as a result of the success of the television series, various items of merchandise have been sold depicting the TAPS mark, including clothing, headgear, travel bags, and DVDs.  Complainants allege that the disputed domain name <taps.com>, registered by Respondent on March 20, 2002, is identical to the TAPS mark.

 

Complainants further allege that Respondent has never used or developed the <taps.com> domain name in connection with the bona fide offering of any goods or services, nor made demonstrable preparations to do so; and that Respondent is not known by the TAPS mark and has not been licensed or otherwise authorized to use the mark.  Complainants allege on this basis that Respondent lacks rights or legitimate interests in respect of the disputed domain name.

 

Finally, Complainants assert that Respondent had actual knowledge of the TAPS mark when he registered the disputed domain name; that Respondent registered and is using the disputed domain name in an attempt to purposely attract Internet users seeking Complainant TAPS’s website to Respondent’s own commercial website, from which he receives click-through revenues; and that Respondent’s passive holding of the domain name is evidence of bad faith.  Based upon these assertions Complainants allege that the disputed domain name was registered and is being used in bad faith.

 

            B.  Respondent

Respondent denies that the disputed domain name is identical or confusingly similar to a mark in which Complainants have exclusive rights.  Respondent asserts the disputed domain name is a short and valuable generic domain name that was registered by Respondent long before Complainant TAPS filed its trademark applications.  Respondent further asserts that the sole purpose for the trademark applications was to enable Complainants to initiate this proceeding in an attempt to obtain the domain name from Respondent.

 

Respondent also denies Complainant’s claims that Respondent lacks rights or legitimate interests in respect of the disputed domain name, and that he has registered and is using the domain name in bad faith.  Respondent states that he resides in France and uses the <taps.com> domain name at issue in connection with a website maintained to sell goods in the United Kingdom.  He asserts that he was not aware until January 2009 that the Google Adsense links displayed on this website included advertisements related to the TAPS mark, when viewed from the United States; Respondent claims that he had never heard of Complainant TAPS until this time.  Respondent asserts that Complainant TAPS and its mark are unknown in Europe, or at least in France and the United Kingdom, noting that a Google-UK search for “taps” yields no references to Complainant TAPS.  Further, Respondent says that “taps” is a generic word not exclusively belonging to the Complainant.  Accordingly, Respondent denies that Complainant has superior rights to the use of “taps,” asserts that he has both rights and legitimate interests in <taps.com>, and denies registration and use of the domain name in bad faith.

 

Finally, Respondent asks the Panel to find Complainants guilty of reverse domain name hijacking.

 

C.  Additional Submissions:

The Additional Submissions of the parties did not provide the Panel with anything materially beyond the evidence and arguments in the Complaint and Response.

 

 

 

FINDINGS

The Panel finds that Complainants have failed to satisfy their burden under Paragraph 4(a)(iii) of the Policy to prove that the disputed domain name was registered and is 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 Complainants 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: Deficient Response

Respondent’s Response was submitted only in electronic format prior to the Response deadline; a hard copy and payment for the three-member panel was received subsequent to the Response deadline.  Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5.  (Respondent claims that it was not initially served with a complete copy of the Complaint including the accompanying annexes, and that it did not receive the complete Complaint until the National Arbitration Forum provided a copy several days later.)  The Panel, in its discretion, chooses to accept and consider the deficient Response.  See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding that the respondent’s failure to submit a hard copy of the response and its failure to include any evidence to support a finding in its favor placed the respondent in a de facto default posture, permitting the panel to draw all appropriate inferences stated in the complaint); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).

 

Registration and Use in Bad Faith

It is not necessary for the Panel to make findings on the first two elements of the Policy since Complainants have clearly failed to show registration and use in bad faith on the part of Respondent.  See Am. Online, Inc. v. GSD Internet, D2001-0629 (WIPO Jun. 25, 2001).  Complainants do not allege any common-law trademark rights, and in any event have not provided sufficient evidence to support such a claim.  Two of the four trademark registrations bear first-use dates of 2005, three years after the disputed domain name was registered.  The other two trademark registrations, both for articles of clothing, claim dates of first use of 1995 and 1999.  The Complaint, however, asserts that clothing and other merchandise depicting the TAPS mark has been sold “[d]ue to the success of the GHOST HUNTERS television show.”  The Panel presumes, therefore, that relatively little use was made of the TAPS mark prior to 2004, two years after the disputed domain name was registered.

 

Nor is there any evidence that the TAPS mark is well known or associated with Complainants in France or the United Kingdom, let alone that this was so back in 2002.  Respondent denies having had any knowledge of Complainants or the TAPS mark prior to the commencement of this proceeding, and the Panel considers this denial to be plausible and credible.  It appears to the Panel that Respondent did not register the disputed domain name with Complainants or the TAPS mark in mind, as required by Paragraph 4(a)(iii) of the Policy.  See Franklin Mint Fed. Credit Union v. GNO, Inc., FA 860527 (Nat. Arb. Forum Mar. 9, 2007) (holding that bad faith requires the respondent to have harbored a specific intent directed against the complainant); see also Google Inc. v. Tex. Int’l Prop. Assoc., FA 1212995 (Nat. Arb. Forum Aug. 25, 2008) (requiring that both the original domain name registration and the current use of the domain name be targeted at the complainant or its mark).

 

Complainant has 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. SamjoCellTech.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 Complainant has not satisfied Policy ¶ 4(a)(iii).

 

Reverse Domain Name Hijacking

The Panel declines to make a finding of reverse domain name hijacking on the part of the     Complainant.

 

DECISION

The Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

 

 

 

 

James A. Carmody, Esq. (Chair)

Hon. Carolyn M. Johnson (Ret.)

Prof. David E. Sorkin

 

Dated: March 5, 2009

 

 

 

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum