Traditional Medicinals Inc. v. Worldwide Media Inc. c/o Domain Administrator
Claim Number: FA0902001247728
Complainant is Traditional Medicinals Inc. (“Complainant”),
represented by Jay H. Geller, of Jay H. Geller a Prof. Corp.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <smoothmove.com>, registered with Homestead Limited d/b/a Namevault.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.
Anne Wallace, Joel Grossman and Paul M. DeCicco as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 15, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 16, 2009.
On February 18, 2009, Homestead Limited d/b/a Namevault.com confirmed by e-mail to the National Arbitration Forum that the <smoothmove.com> domain name is registered with Homestead Limited d/b/a Namevault.com and that the Respondent is the current registrant of the name. Homestead Limited d/b/a Namevault.com has verified that Respondent is bound by the Homestead Limited d/b/a Namevault.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 February 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 16, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on March 16, 2009.
An Additional Submission was received from Complainant on March 20, 2009, and was determined to be timely under Supplemental Rule 7.
On March 24, 2009, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Anne Wallace, Joel Grossman and Paul M. DeCicco as Panelists.
On March 26, 2009, an Additional Submission was received from Respondent and was determined to be timely under Supplemental Rule 7.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends as follows:
Complainant is the holder of several U.S.P.T.O trademark registrations to wit:
· SMOOTH MOVE – Reg. No. 3344362 – herbal supplements and nutritional supplements
· SMOOTH MOVE – Reg. No. 2520275 – medicinal herb teas and herb teas for food purposes
· SMOOTH MOVE – Reg. No. 1258223 – herbal teas for use as a laxative
The at-issue domain name is identical to Complainant’s registered trademarks.
Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the complaint because: 1) Before any notice to the Respondent of the dispute, Respondent’s has made no bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the offering of goods or services; 2) Respondent has not been commonly known by the domain name, and has not acquired trademark or service mark rights to the name; or Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The domain name should be considered as having been registered and being used in bad faith as follows: 1) Complainant believes that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name on the ground that Respondent has no legitimate interest in the domain name and has not developed or sold any goods or services under the name SMOOTH MOVE even though it has owned the domain name since September, 2003; 2) Complainant believes that Respondent has registered the domain name primarily for the purpose of disrupting its business on the ground that Respondent has no legitimate interest in the domain name and has not developed or sold any goods or services under the name SMOOTH MOVE even though it has owned the domain name since September, 2003; 3) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s website or location name on the ground that Respondent has no legitimate interest in the domain name and has not developed or sold any goods or services under the name SMOOTH MOVE even though it has owned the domain name since September, 2003.
Respondent contends as follows:
Respondent registered the at-issue domain name on September 4, 2003 based on its value as a descriptive term to which it believed no party could claim exclusive rights. Respondent’s registration of the at-issue domain name had nothing to do with Complainant. Respondent had no knowledge of Complainant, its website, its business name or trademark when it registered the at-issue domain name. Respondent did not register the at-issue domain name with the intent to sell to Complainant, to disrupt Complainant’s business, or to confuse consumers seeking to find Complainant’s website. Respondent did not register the at-issue domain name to prevent Complainant from owning a domain name incorporating its trademark.
“Smooth move” is a descriptive term, composed of two common dictionary words. The term “smooth move” is a common expression that, depending on the context, can mean either a brilliant move or a stupid one. “Smooth move” is also a descriptive term that refers to a good experience with a move to a new location, as in “they had a smooth move into their new home.” It is with respect to this latter meaning that Respondent registered the at-issue domain name.
Respondent has also registered several domain names, incorporating common descriptive phrases including the word “move.”
The term “smooth move” is subject to substantial third party use. There are numerous Google references to the mark. There are also three third-party registered trademarks for “smooth move.” Respondent has used the at-issue domain name to display Pay-Per-Click (“PPC”) advertising links. Over the years, the links which have appeared have been generic and also related to moving services and real estate. Respondent has also maintained a link on its website for purchase inquiries regarding the at-issue domain name.
Respondent takes no position with respect to the enforceability of Complainant’s trademark in these proceedings.
Respondent has rights and legitimate interests in the disputed domain. The registration of descriptive term domain names, such as <smoothmove.com>, ipso facto establishes the Respondent’s legitimate interest, provided the domain was not registered with a trademark in mind.
Respondent registered the
at-issue domain name because it incorporates the descriptive term “smooth
move.” Respondent had no knowledge of
Complainant, its alleged trademark or business when it registered the at-issue domain name more than five years
ago in September 2003 and, thus, did not register the domain name to profit
from Complainant’s mark. The descriptive
nature of “smooth move” is underscored by substantial third party use of the
mark, evidenced by over 187,000 third party results on the Internet for this
descriptive term, as well as three third-party
Respondent registered the term because it believed it was a good name for a moving service. The fact that Respondent registered the at-issue domain name solely based on its descriptive nature--and not because of Complainant’s trademark--is corroborated by several other descriptive domain names Respondent has registered which incorporate the words “smooth” and “move.”
Respondent has also registered several domain names, incorporating common descriptive phrases including the word “move.”
Respondent’s legitimate interest is bolstered from its use of the at-issue domain name for a website which displays PPC advertisements. Over the years the PPC ads have been for generic links, as well as links related to moving and real estate. This constitutes use of the at-issue domain name in connection with a bona fide offering of goods and services under the Policy. There can be no doubt as to the legitimacy of Respondent’s use of the at-issue domain name because no links related to Complainant’s goods and services have appeared on Respondent’s website, nor is there any allegation that such links have ever appeared there.
C. Additional Submissions
In its Additional Submission Complainant contends:
The mark SMOOTH MOVE has been
continuously used by TMI in the
Respondent’s website homepage makes no reference to moving services, or anything “smooth” or anything “move.” There is no justification given as to why this domain name was chosen other than to sell it. The <smoothmove.com> domain name has always been for sale. There is no evidence that the domain was ever legitimately used to offer any good or service. Contrary to Respondent’s statement that it “uses the domain for a web site which displays Pay-Per-Click (“PPC”) advertising links related to the term ‘smooth move’” a review of the website shows Respondent’s statement is false. There is no reference on the <smoothmove.com> website to the term “smooth move.” None of the Google searches should be considered since no foundation has been laid for their authenticity.
Respondent argues that “[a]t the outset, there can be no doubt that ‘smooth move’ is a common descriptive term that existed in the English language prior to Complainant adapting it as a trademark.” This argument is totally irrelevant here since this is not an issue that was raised in the Complaint. While Respondent argues that it “registered [the at-issue domain name] based on its value as a descriptive term to which it believed no party could claim exclusive rights,” it had constructive knowledge trademark SMOOTH MOVE was registered to TMI and that TMI had a legitimate claim to the registered trademark as a domain name.
Since TMI’s SMOOTH MOVE trademark was registered well before Respondent acquired its domain, Respondent was on constructive notice of TMI’s trademark rights to SMOOTH MOVE and its legitimate interest in acquiring that domain name. Consequently, it knew that TMI could claim exclusive rights in the domain name <smoothmove.com> and this element of establishing TMI’s case is met.
Respondent claims that “Complainant has proffered no evidence showing that, in the more than five years since Respondent registered the at-issue domain name, Respondent has attempted to sell it the Disputed Domain.” This is false. Respondent had constructive notice of TMI’s rights to the name SMOOTH MOVE. The fact that the domain name has been for sale since Respondent acquired it establishes that Respondent was attempting to sell the domain name to TMI, whose interest in the domain name was constructively known by Respondent.
Respondent also claims that TMI has not provided any evidence that Respondent has targeted its trademark in any way. This is also false. Since Respondent had constructive knowledge of TMI’s trademark rights, it most definitely targeted TMI’s trademark. Furthermore, Respondent’s registration of the at-issue domain name effectively prevented TMI from owning the domain name incorporating its trademark.
Respondent also claims that TMI has not provided evidence that Respondent has used the at-issue domain name in a manner intended to confuse users seeking Complainant. The results of the Google search: “smooth move – tea” clearly show TMI’s product. The Google search on “smooth move moving” is totally irrelevant to this case.
Respondent argues that its alleged selection of the at-issue domain name based on incorporating a descriptive term, and not based on Complainant’s mark, is supported by the numerous other domain names Respondent has registered which incorporate the common words “smooth” and “move” and variations thereof. All these websites demonstrate no relation to smooth or move. Furthermore, several of these domain names are the same as registered trademarks, all of which were registered prior to Respondent acquiring the domain name.
Contrary to Respondent’s claims, there is absolutely no merit to its claim that it registered the at-issue domain name because it was descriptive, or that it acquired the domain name without knowledge of Complainant’s trademark, or that it has used the at-issue domain name in connection with the bona fide offering of goods and services that are not related in any way to Complainant’s trademarks. Accordingly, the Complaint is well founded and TMI is entitled to the relief it seeks.
Because Respondent had constructive knowledge of TMI’s trademark rights, it knew that is had no legitimate interest in the domain name. Respondent’s claim that it registered the term because it believed it was a good name for a moving service is not supported by any evidence. While Respondent attempts to bolster its argument by reference to a plethora of other domain names it has acquired (most of which are for sale), the evidence submitted herewith shows that there are several other of these domain names that were acquired AFTER others had acquired trademark rights. Many of these “move” websites make no reference to the moving service industry. The relevance of the “smooth” domain names is never explained. Respondent has made a habit of acquiring domain names covered by registered trademarks.
Respondent also claims that its alleged legitimate interest is bolstered from its use of the at-issue domain name for a website which displays PPC advertisements. While there is no evidence to support this statement – the exhibits attached are illegible - and while there is no evidence that Respondent received any revenue from these alleged PPC advertisements, this argument is irrelevant. Since Respondent had constructive knowledge of TMI’s trademark rights, it had no legitimate interest in the domain name. Respondent’s conclusion that “[t]here can be no doubt as to the legitimacy of Respondent’s use of the at-issue domain name because no links related to Complainant’s goods and services have appeared on Respondent’s web site” is not relevant to the Panel’s determination here.
Respondent has not satisfied its burden of establishing its legitimate interest in the at-issue domain name since it had constructive knowledge of TMI’s trademark rights to the domain name and acquired the domain name knowing that it did not have a legitimate right to the name.
The disputed domain was registered or used in bad faith. The fact that Respondent had constructive notice of TMI’s trademark rights and proceeded to acquire the <smoothmove.com> domain name, with no intent to actually provide any goods or services using that name clearly establishes Respondent’s bad faith. All Respondent has done is park the domain name waiting for someone to come along and purchase it, as it has with a plethora of other domain names. As noted above, Respondent appears to be nothing more than a cybersquatter – taking names, holding them for sale and for many, never offering any goods or services related to the domain name, including <smoothmove.com>. There is no evidence that Respondent ever offered any goods or services related to a “smooth move” under the <smoothmove.com> domain name.
The fact that Respondent alleges irrelevant third party use of the term “smooth move” does not lend credence to its claim that it did not have Complainant’s mark in mind when it registered the domain. All the discussion of third-party uses is inadmissible.
Respondent disputes TMI’s allegation that Respondent registered the at-issue domain name with the intent to create confusion and lure users seeking its website to Respondent’s site. Once again, the fact that Respondent had constructive knowledge of TMI’s trademark defeats this argument. The very fact that Respondent acquired a domain which it knew TMI had rights to establishes that it intended to create consumer confusion.
As with all the other issues here, Respondent’s constructive knowledge of TMI’s trademark rights establishes that Respondent registered the at-issue domain name with the intent to sell it to TMI (or anyone else).
Complainant has not engaged in reverse domain name hijacking. Respondent claims that “[a] finding of Reverse Domain Name Hijacking is warranted because TMI knew or should have known at the time it filed the Complaint that it could not prove that the domain name was registered in bad faith.” Since Respondent had constructive knowledge of TMI’s trademark rights in SMOOTH MOVE, the claim of bad faith on the part of Respondent is fully warranted.
In its Additional Submission in reply to Complainant’s response, Respondent contends as follows:
Constructive notice of a common word or descriptive term trademark does not preclude the good faith registration and bona fide use of an identical or confusingly similar domain, particularly where the term is subject to third-party use. There were three other registered marks for SMOOTH MOVE in existence when Respondent registered the at-issue domain name. Accordingly, it cannot be concluded, as Complainant urges, that it was the “special target” of the registration. There is no evidence that Respondent ever promoted goods or services related to the goods and services covered by Complainant’s mark, so there is absolutely no evidence of any kind demonstrating an intent to cause consumer confusion as Complainant argues.
Respondent has a legitimate interest in the disputed domain. Contrary to Complainant’s theory in its Additional Submission, constructive notice of Complainant’s trademark does not preclude a finding of legitimate interest on the part of Respondent. Respondent registered the at-issue domain name based on its descriptive meaning because Respondent believed it would be a good domain name for a moving service website.
It is irrelevant that the website make little or no reference to moving services. Respondent’s legitimate interest is established because it registered the at-issue domain name with the intent to use as a moving business site. There is no evidence of any links having appeared that relate to the goods/services covered by Complainant’s trademark, and there certainly have been moving service related links on Respondent’s website. Similarly, the links posted on Respondent’s web site as of May 4, 2006 including links for “moving services.” While the most recent links do not contain links related to moving, there are no links related to Complainant’s goods and services either. In any event, the earliest links, which were clearly related to moving, demonstrate Respondent’s earliest intentions and establish its legitimate interest in at-issue domain name.
Respondent registered the at-issue domain name because it was valuable because of its descriptive meaning. In fact, there are many moving companies that call themselves “Smooth Move,” and there are many third party uses that demonstrate this moving-service-meaning of the term. Nothing in the manner Respondent has used the at-issue domain name demonstrates an attempt to profit from Complainant’s mark or confuse users.
Respondent is not a cybersquatter. The offering for sale of descriptive term domain names does not violate the UDRP absent specific evidence a trademark was targeted. Complainant alleges that Respondent has engaged in bad faith by having offered domain names for sale. Respondent operates a business which is lawful and appropriate under the UDRP. Well-established UDRP precedent cited in the Response holds that the sale of descriptive term domain names, in and of itself, is a bona fide offering of goods and services provided there is no evidence the complainant’s trademark was targeted. There is no evidence whatsoever that Respondent targeted Complainant’s mark. As indicated in the Response, specific evidence of targeting is required where a domain name incorporates a common or descriptive term.
Complainant has argued that some of Respondent’s other domain names are the subject of trademarks. As noted in the Response, Respondent registers common word and descriptive term domain names. It should be no surprise that many of these popular common terms would be the subject of trademarks but this is because the words are popular, not because Respondent has sought to register domain names incorporating trademarks. There is no evidence supporting such an allegation.
Complainant has trademark rights in a name that is identical to the at-issue domain name.
Respondent’s business model depends on its trafficking in domain names. Respondent’s pattern and practice of registering domain names ensures that it will register others’ trademarks.
Respondent does nothing to prevent its registration of trademarks as domain names even though it is able to do so
Respondent profits from registering trademarks as domain names.
The use of the domain name which motivated registration of the at-issue domain name is not primarily for any specific end use or purpose, such as a moving related but rather to profit from the purpose or purposes another might have for the domain name.
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 demonstrates that it has trademark rights in its SMOOTH MOVE mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO (Reg. No. 920,862, issued on September 21, 1971). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”)
Respondent’s <smoothmove.com> domain name is identical to Complainant's SMOOTH MOVE mark. The <smoothmove.com> domain name differs from Complainant’s mark only in that the generic top-level domain (gTLD) “.com” is thereafter appended. It is well settled that the addition of “.com,” “.net,” “.org” or other gTLDz is insufficient to distinguish a domain name from the mark it incorporates, since every domain name must include a top-level domain. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Therefore, the Panel finds that Respondent’s disputed domain name is confusingly identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Additionally, the Respondent makes no contentions regarding this section of the Policy thereby admitting by silence that it agrees with Complainant's position.
Complainant must first make out a prima facie showing under paragraph 4(a)(ii) of the Policy that Respondent lacks rights or legitimate interests in the disputed domain name. The threshold for such showing is low. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005). Once a prima facie case is established, the burden then shifts to Respondent who must demonstrate that it nevertheless has rights or legitimate interests in the at-issue domain name. Complainant contends that it did not authorize Respondent to use the <smoothmove.com> domain name. Respondent is neither affiliated with, nor commonly known as, SMOOTHMOVE. Complainant also asserts that Respondent has no legitimate business use for the domain name. Therefore, Complainant has satisfied its light burden.
Respondent argues that it registered the at-issue domain name entirely because of its descriptive value but nevertheless admits that its method of registration makes it no surprise that it registers some trademarks as a consequence thereof. Respondent’s aversions imply that it has a general intent to register trademarked domain names but that such intent should be excused since there was no specific intent to register the Respondent’s trademark or any particular trademark for that matter. Carried to its logical conclusion Respondent’s rationale suggests that one might register any trademarked domain name so long as the registrant did not actually know that the particular registration was a trademark and so long as the trademark was descriptive. But elsewhere in its papers Respondent recognizes certain factors, such as the domain name containing a famous trademark, which if present do permit a finding that a trademarked domain name registration was improper even without showing a respondent had actual knowledge of the particular trademark at the time of registration. This case seems to confirm the latter position.
Where as here the Respondent admittedly traffics in domain names, the ability to register trademarked domain names without recourse from the trademark holder simply by bulk registering according to a generally benign methodology (registering dictionary words or phrases) creates a windfall for the Respondent at the expense of trademark holders. Under this scheme Respondent suggests it may, without recourse via the UDRP, register domain names that have trademark value in addition to any intrinsic descriptive value. Respondent apparently believes that it has found a “loophole” whereby it may with admitted certainty register trademarked domain names, traffic in such names, offer such names for sale to the trademark holder, or otherwise profit from the fact that the registered domain name has trademark value apart from, and in addition to, its descriptive value but not have any exposure from a UDRP action. The Panel disagrees.
Respondent’s registration methodology ipso facto targets trademarks. Respondent admits in its papers that it knows that it will as a matter of course register trademarked domain names. Yet Respondent takes no steps to avoid such registration when it would be a simple matter to filter proposed domain names prior to registration to determine if they contain registered trademarks. With even less trouble the Respondent might after finding out that a trademarked domain name such as Complainant’s was registered as a domain name cancel the trademarked domain name or voluntarily transfer registration.
It thus seems disingenuous for Respondent to claim that notwithstanding the admitted fact that it knows it will be registering trademarked domain names that its only motivation is because of the target domain names’ descriptive value. And even if Respondents motivation is as stated, the fact that Respondent cares not that it also is registering trademarked names is troubling and further calls into question the bona fide nature of Respondent’s endeavor at least as it applies to the trademark holders whose trademarks are captured in Respondent’s purposefully indiscriminant web of nominally descriptive domain name registrations. Therefore the Panel finds that Respondent is not using the <smoothmove.com> domain name to make bona fide offerings of goods or services under Policy ¶ 4(c)(i), or to make legitimate noncommercial or fair uses under Policy ¶ 4(c)(iii).
Respondent thus fails to carry its burden to show that it has rights or legitimate interests in respect of the domain since a business, which admittedly and freely trades on the marks of others, cannot be said to be bona fide. Further, the Respondent appears to have breached conditions of the registrar-registrant agreement requiring that the registration is not against the rights of any other party.
As mentioned elsewhere Respondent admits that its registration policy ensures that it will register trademarked domain names. Yet on the other hand Respondent apparently thinks nothing of reselling trademarked domain names to the trademark holder because of its own indiscriminate policy. Whether or not Respondent knew for sure at the time of registration that the particular domain name now at-issue was the trademark of another seems insignificant. There is no dispute that Respondent knew that at least some trademarks were being registered as a direct result of its purely self-serving policy. Certainly then the act of registering Complainant’s trademarked domain name was willful and not inadvertent as Respondent would like the Panel to believe.
The United States Supreme Court recently held in Safeco Insurance
Company of America v. Burr, 551 U.S. 47, 127 S. Ct. 2201 (2007), “[w]here
willfulness is a statutory condition of civil liability, we have generally
taken it to cover not only knowing violations of a standard, but reckless ones
as well[.]” 127
Willfully registering the at-issue domain
name (although perhaps not knowing or caring that the particular registration
was trademarked) coupled with Respondent’s undisputed intent to sell the domain
name back to the trademark registrant or to any other party for the right
price, constitutes bad faith registration.
Likewise, using the at-issue domain name by holding it
out for sale knowing that it contained a trademark while continuing to ignore
that fact constitutes bad faith use. See
The Panel notes that this is not a case where an entity inadvertently or even negligently registers the mark of another for its own use to support its own business or vocation without any hint that the domain name contains a trademark. Rather it is a situation where the business method of a sophisticated domain name trafficker consciously and to its own benefit disregards with impunity the admitted certainty that it is registering another’s trademark and is happily disposed to trading in such trademarked domain name nonetheless.
Therefore the Panel concludes that the at-issue domain name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <smoothmove.com> domain name be TRANSFERRED from Respondent to Complainant.
Anne Wallace, Joel Grossman and Paul M. DeCicco as Panelists
Paul M. DeCicco, Presiding
Dated: April 7, 2009
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