Michael Leslie Jones a/k/a Mick Jones v. Stephen Gregory
Claim Number: FA0209000125747
Complainant is Michael Leslie Jones a/k/a Mick Jones, New York, NY, USA (“Complainant”) represented by Richard Pawelczyk, of Shukat Arrow Hafer & Weber, LLP. Respondent is Stephen Gregory, Angeles City (“Respondent”) represented by David J. Loundy, of Law Offices of David J. Loundy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <foreigner.com>, registered with DotRegistrar.com, Inc.
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.
Anne M. Wallace, Q.C., David H. Bernstein and Diane Cabell as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 20, 2002; the Forum received a hard copy of the Complaint on October 3, 2002. .
On September 23, 2002, DotRegistrar.com, Inc. confirmed by e-mail to the Forum that the domain name <foreigner.com> is registered with DotRegistrar.com, Inc. and that the Respondent is the current registrant of the name. DotRegistrar.com, Inc. has verified that Respondent is bound by the DotRegistrar.com, 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 October 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 23, 2002 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 October 23, 2002.
On November 19, 2002, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Anne M. Wallace, Q.C., David H. Bernstein and Diane Cabell as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is the founding member, guitarist and primary songwriter of the musical group Foreigner. Complainant has three U.S. trademark registrations for the FOREIGNER mark, as well as one European CTM trademark registration. The group, Foreigner, has been performing live concerts and producing records on an international scale for twenty-five years. Foreigner has sold over sixty million records worldwide. The group’s official website receives over a million hits a month. The total venue capacity for the group’s most recent tour is over half a million.
No other use of the term FOREIGNER has attained anywhere near the level of fame or recognition as the mark owned by Complainant. For that matter, no other business has attained any level of recognition that would act as a source identifier for the term FOREIGNER, other than the mark as used by Complainant. There are no other valid registrations for the mark FOREIGNER in any trademark classes.
Respondent’s registration is identical to Complainant’s registered trademarks.
Respondent has no legitimate interest or rights in the domain name by virtue of its lack of use of the domain name. Respondent’s sole use is to offer the registration for sale. Respondent registered hundreds of names solely for the purposes of reselling the registrations. Complainant has the only trademark registrations and past bona fide use of the mark FOREIGNER. Respondent is not the owner of any trade name or service mark, nor does it have legitimate rights in the domain name.
Not only has Respondent not made any legitimate use of the domain name, Respondent has linked the domain name to a site containing explicitly pornographic material and has posted a $10,000 demand for buy-out of the domain name registration. This amount far exceeds the fees that Respondent has incurred to register and maintain the domain name. The web page demanding payment to Respondent indicates that there are hundreds of other domain name registrations that are for sale at non-negotiable amounts of up to $500,000.
Complainant further asserts that the name has been registered in bad faith as indicated by Respondent’s lack of use of the domain name and the fact that FOREIGNER is a famous mark as indicated by Complainant’s evidence. Respondent has linked the domain name to a pornographic site and has posted a $10,000 demand for a buy-out of the domain name registration. This link to a non-commercial site and demand for payment is evidence of bad faith.
The domain name is a common word in the English language. Respondent did not register the name with the intent to sell the domain name registration to Complainant. Respondent’s actions have been challenged three times in the past and each time the panel found that he had not acted in bad faith by engaging the exact same actions complained of in this case. See Allocation Network GmbH v. Steve Gregory, D2000-0016 (WIPO March 24, 2000), Capt’n Snooze Mgmt. Pty Ltd. v. Domains 4 Sale, D2000-0488 (WIPO July 10, 2000), John Rush & Annette Witzel v. Oregon CityLink, FA 95318 (Nat. Arb. Forum September 7, 2000).
Respondent has registered numerous domain names consisting entirely of common words chosen many years ago while perusing a dictionary, short phrases, and geographical locations. He offers these domain registrations for sale at <rockbottomdomains.com>. Respondent asserts that he has never intentionally registered a domain name that matches another’s trademark, and has never intended or attempted to register a domain name to sell to a trademark holder with a matching mark. Respondent has merely registered common words and phrases that he believes may have value in an attempt to maximize that value. There is nothing improper or unlawful in doing so. Respondent is not a pirate intent on holding corporate trademarks for ransom, but rather an entrepreneur speculating as to a domain name’s value to unknown parties.
Respondent does not contest that the domain name is identical to Complainant’s mark; however Respondent says that the UDRP is not intended to give any party a worldwide monopoly in domain space of a common word in the English language.
Complainant seeks to use limited trademark registrations and discussions of how successful the band Foreigner has been, to take away a domain name that matches a common word in the English language from a resident of the Philippines. The word FOREIGNER was a commonly used term in the English language before Complainant was born, and before he emigrated to the U.S. from England, and as a foreigner, started his band. The Foreigner website at <foreignerfiles.com> claims that the name Foreigner was thought of by Complainant basing it on the fact that half of the band was American and the other half English. Thus, the mark was chosen for its independent meaning in the English language, and not as a coined term with unique trademark significance. Use of the word FOREIGNER to mean “one who is from a foreign country or place” is a use of the term that has a greater level of fame and recognition than the mark owned by Complainant. Just as Complainant found a common word to be salable as a band name, so Respondent independently found the same common word attractive as a salable domain name.
Respondent’s registration of the disputed domain name predates the registration of Complainant’s Community trademark and two of the three U.S. registrations, and is under two months shy of predating the registration of all of Complainant’s trademark registrations. Respondent has owned the domain name registration for more than half a decade. This is evidence that the name was not registered with the intent to sell the domain name registration specifically to Complainant, which is what the UDRP prohibits.
Complainant alleges lack of use by Respondent as evidence of bad faith and then contradicts that allegation by alleging Respondent is using the domain name to connect to a pornographic site and has posted a $10,000 demand for buy-out of its rights in the name. Respondent points to other cases where panels have concluded that registration and sale of domain name registrations as a form of speculation is not a demonstration of bad faith giving rise to a cognizable dispute under the UDRP. In particular he refers to the Allocation Network case, supra, where the panel says:
Respondent has registered over 400 domain names, all of which contain or are composed of common words or short phrases from the English language or misspellings of such words. In trademark terms, many of these domain names would be considered descriptive of certain goods or services, or generic. Registration of descriptive or generic terms as a domain name is possible under the ,com TLD. As the commercial value of such domain names has increased, brokers like Respondent have seized the opportunity to sell such domain names to the highest bidder. In principle, such a practice may constitute use of the domain name in connection with a bona fide offering of goods or services (i.e. the sale of the domain name itself). The difficulty lies in the fact that the domain name allocation.com, although descriptive or generic in relation to certain services or goods, may be a valid trademark for others… Therefore, although the registration and offering for sale of allocation.com as a domain name may constitute a legitimate interest of Respondent in the domain name, this is different if it were shown that allocation.com has been chosen with the intent to profit from or otherwise abuse Complainant’s trademark rights. Respondent’s explanation that he selected many of the domain names offered for sale at random from a dictionary appears prima facie acceptable. Complainant has not disputed the fact that (many of) Respondent’s domain names – including allocation.com – represent words or short phrases found in an English language dictionary.
Respondent also refers to Scorpions v. Alberta Hot Rods, D2001-0787 (WIPO Nov. 7, 2001); John Fairfax Publ’ns Pty. Ltd. v. Domain Names 4U and Fred Gray, D2000-1403 (WIPO Dec. 13, 2000); and Cream Holdings Ltd. v. Nat’l Internet Source, Inc., D2001-0964 (WIPO Sept. 28, 2001), in which latter case the following appears:
‘Cream’ is merely a common generic word in which the Complainant cannot have exclusive rights. Thus the Respondent has rights and a legitimate interest in the disputed domain name by virtue of having been the first to register it. “Where the domain name and trademark in question are generic – and in particular where they comprise no more than a single, short, common term – the rights/interests inquiry is more likely to favor the domain name owner”. Recognizing that anyone has a right to register common words in the language, a legitimate interest is even established where a Respondent’s only purpose in register[ing] a common word domain name is for resale.
Respondent further argues that one common feature of all the indicia of bad faith listed in the Policy is that at the time of registration of the domain name Respondent had Complainant in mind, either intending to extort money from Complainant, to block Complainant, to disrupt Complainant’s business or to mislead Internet users into believing Respondent is somehow associated with Complainant. Respondent argues that there is no evidence in this case to show that Respondent had Complainant in mind when he registered the domain name.
Respondent submits that he has no obligation to respond to Complainant’s demand letters
to surrender his domain name.
Complainant has failed to raise a cognizable dispute under the UDRP as ¶¶ 4(a)(ii) and 4(a)(iii) are both unsatisfied. Failure to satisfy either one of them is sufficient to support dismissal of the Complaint in this matter. Respondent has a legitimate claim to the domain name as a long-time registrant of the domain name. The name was not registered and is not being used in bad faith. The domain name was not registered with the intent to sell the registration to Complainant, and Respondent has never contacted Complainant other than through the response to this proceeding conducted through counsel. Respondent has not registered the domain name to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. Complainant individually and as a band has established websites, and is well represented on the various fan websites all incorporating the FOREIGNER term and all linking to Complainant’s websites. Complainant and Respondent are not competitors and have coexisted on the Internet for some time with no cited incidents of confusion or interference. Finally, Respondent has no intention to attract or confuse those looking for Complainant, nor is Respondent attempting to imply that it is affiliated or endorsed by Complainant, and no evidence has been presented to the contrary. Complainant may not like Respondent’s business of domain name speculation, but that does not mean that it is an improper activity under the UDRP. Respondent is an entrepreneur, not a squatter. Respondent agrees that as a matter of public policy, squatters should not be allowed to register famous marks as domain names to ransom trademark owners. This is not the conduct in which Respondent has engaged. For these reasons, Respondent asks that the Complaint be dismissed.
C. Additional Submissions
When the Panel reviewed the evidence and submissions of the parties in this case, it concluded that more information was required before it would make a decision. On December 10, 2002, the Panel issued the following Order for Additional Submissions and Extending Time for Rendering a Decision:
The Panel has reviewed all the evidence submitted by Complainant and Respondent to date. In his submissions with respect to rights and legitimate interests and with respect to bad faith, Complainant submitted evidence that Respondent uses the domain name <foreigner.com> to link to a website containing one link to a list of domain name registrations for sale and eight links to sites offering "adult services”. In defense to Complainant's claim of lack of use, Respondent makes reference to his use of the domain name to link to these "adult services.
This allegation makes this case different from the typical domain name speculator cases cited in Respondent's Response. The parties have not, however, addressed how, if at all, these offered links to adult entertainment services affect the cybersquatting analysis. Accordingly, before this Panel makes a decision with respect to this case, we request, pursuant to UDRP Rule 12, that the parties address this issue in more detail. Under Rule 12, the Panel may, "request, in its sole discretion, further statements or documents from either of the Parties." See, e.g., Tribeca Film Center, Inc. v. Brusasco-Mackenzie, D2000-1772 (WIPO April 10, 2001). Although this is intended to be a summary procedure, the parties have raised an important question in this case with respect to the use of this domain name, and the Panel believes it in the best interests of the parties and the Policy that the parties address this question in more detail.
We would therefore ask that, within ten days from its receipt of this request (by December 20, 2002), Respondent submit an additional submission, by email to the Forum (with a copy to Complainant), that addresses the following questions and any related topics raised by the Panel's inquiries:
1. If available, Respondent should provide a detailed explanation, in an affidavit with supporting documentary evidence, discussing all revenue it has derived from Internet traffic coming through the <foreigner.com> domain name (or through "foreigner" searches on any of Respondent's websites) and any bids it has received to purchase, lease, or otherwise use, or any other emails or other communications concerning the <foreigner.com> domain name.
2. More generally, Respondent should provide a detailed explanation, in an affidavit with supporting documentary evidence, on its business model, including details on its revenue and profits from the purchase and sale of domain names and its revenue and profits from the sale of, or provision of links to, adult entertainment or other services or websites.
3. If available, Respondent should provide his referrer logs for <foreigner.com> for the last six months, including the keyboard search terms as indicated by major search engines.
4. The parties are invited to discuss the legal significance of this evidence, and how it bears on the allegations of cybersquatting, with specific reference to the provisions of the Policy.
5. The parties are invited to address whether the provision of links to adult entertainment services is a fair use of the <foreigner.com> domain name. Cf. Etam, plc v. Alberta Hot Rods, D2000-1654 (WIPO Jan. 31, 2001).
Respondent’s submission should be certified as provided by UDRP Rule 5(b)(viii). All documentary evidence should be scanned and submitted in electronic form, by email.
Upon receipt of Respondent's evidence and argument with respect to these questions, Complainant will have an additional seven days in which to respond by email with evidence and argument (certified pursuant to UDRP Rule 3(b)(xiv)), following which Respondent will have three days to file by email any certified rebuttal submissions. The Panel thereafter expects to issue its ruling within fourteen days from its receipt of Respondent's final submission (UDRP Rule 10(c)).”
With respect to the Panel’s requests, Respondent made the following responses:
1. This information is not available to Mr. Gregory to provide in response to the Panel’s order. All of Respondent’s domain names point to the same “Fast Start Index” page. Logs are not kept for this page, as they have never been relevant to the Respondent. It is impossible to separate out any revenue that may have been generated as a result of linking through the <foreigner.com> domain. His revenue from affiliate programs has always been substantially less than his domain name registration/renewal costs.
Respondent has received one inquiry about the <foreigner.com> domain name from someone supposedly interested in setting up a fan page featuring Complainant (this person would arguably also have superior rights to the domain name over Complainant, if he had acquired the name first). See Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club, D2000-1532 (WIPO Jan. 25, 2001). Because this offer did not comply with the stated purchase requirements, and was for a domain name registration no longer listed as for sale, Respondent refused to sell its rights to the domain name to the inquiring party.
2. Respondent’s business model is to register domain names and sell the registrations. He has never knowingly registered a domain name that matches a famous trademark. He has never registered a domain name because he knew that any party had trademark rights in the name. All of the domain names he has registered are common dictionary words, place names, or short phrases and misspellings of the above. He does not negotiate domain name prices. He has never refused to sell a domain name registration for its listed price. Most domain names he has carried in his inventory for half a decade or so, paying renewal fees and for hosting until his price is met by any interested party. He has never actively solicited a buyer for any domain name in his inventory, including a trademark holder, which is the only type of sale explicitly prohibited by the UDRP. See Policy ¶ 4(b)(i).
Mr. Gregory does not wish to make public details of his domain name sales activities, as this is confidential information that could prove damaging to his business and legal interests, and, as discussed below, should not be relevant to this dispute. Mr. Gregory is willing to assemble and provide this information to the Panel, as it has requested, for in camera review with assurances from the Panel and from the National Arbitration Forum of confidentiality of this information as a trade secret provided under seal.
3. As is the case with question #1, this information is not available to Mr. Gregory to provide in response to the Panel’s order. Such logs are not kept, as they have never been relevant to Respondent.
4. The requested evidence should not be at all relevant to the Panel’s inquiry in this matter. The UDRP applies as a limited contract remedy to a small set of defined disputes. Strictly speaking, it does not address traditional U.S. or Philippino common law or statutory concepts of confusion, dilution, trademark law in general, or equity. This matter is not a cognizable dispute under the provisions of the UDRP, and thus the Panel should never get to a point in its analysis where this information is relevant. Paragraph 4(a)(iii) of the UDRP requires that the domain name both be registered and used in bad faith for the dispute to be a dispute for which the UDRP is applicable. As discussed in the Response to the Complaint, the definitions of bad faith in Policy paragraph 4(b) are not met in the present case, and three previous Panels have found that Mr. Gregory’s actions do not amount to bad faith. Furthermore, as the domain name is a common term (and one that applies to Mr. Gregory in his present circumstances, according to the dictionary definition of that word), and as he is the first-in-time registrant, Mr. Gregory has a legitimate interest in the domain name under Policy paragraph 4(a)(ii). For these reasons, the Panel should dismiss the Complaint and not have to make any inquiry into the effectiveness of Mr. Gregory’s domain name sales and linking efforts.
Even if the Panel looks to Policy ¶ 4(b)(i), as discussed in the Response to the Complaint, there was still no intent to sell the domain name registration to the Complainant at the time the domain name was registered. Therefore, whether or not Mr. Gregory is attempting to sell its rights in the domain name at issue for more than documented out of pocket costs is also irrelevant. Furthermore, the UDRP does not specifically look to a pattern or practice of domain name sales. To the extent that it is of any relevance, his attempted actions are publicly displayed. His success, or lack thereof, at selling domain name registrations not at issue in this dispute (also common names) is not relevant, and three other panels did not find his line of business a factor indicating he should lose the disputes to which he has been a party.
Because server logs do not exist, it is a moot issue as to whether or not they are probative of anything of value in resolving this case. However, as pointed out in the Response to the Complaint, a Google search turns up Complainant’s website as the very first hit. Complainant is also the first listed result with Altavista, and third with HotBot, though the first two hits are fan sites related to Complainant. To the extent that the Panel is worried about Respondent diverting traffic intended for Complainant as a result of search engine searches, there does not appear to be a concern of Respondent’s making.
Given Respondent’s arguments that this is not a cognizable dispute under the UDRP, as there was no bad faith in the registration of the domain name, and that he has a legitimate interest in the domain name, arguably even a later use of the domain name intended to damage the trademark of Complainant would not turn this into an applicable dispute under the UDRP. However, Mr. Gregory is not using the domain name to damage Complainant’s mark. Providing a link from which Internet users have the option to connect to an adult entertainment site does not make Complainant’s trademark a stronger mark, and it does not affect the legitimacy of Mr. Gregory’s registration of the domain name or his rights in that name.
5. Because Complainant has not met its burden of proof and shown bad faith in the registration of the domain name, and because Mr. Gregory’s legitimate interest in the domain name has not been refuted, there is no cognizable complaint under the UDRP. As a result, his use of the domain name to link to adult entertainment sites is an acceptable and fair use for the purposes of the UDRP. Because Complainant’s mark is not a “famous” mark in the trademark sense, is geographically limited in its scope, and is used for goods and services substantially distinct from domain name speculation and linking to pornography (whether featuring local models or foreigners…), even in the trademark sense, Respondent’s use of the domain name is a fair one.
Linking from the domain name to adult entertainment sites, which Mr. Gregory’s affidavit states has not been done for over a year, is simply a means of trying to generate some revenue to offset the carrying costs of what the Etam case refers to as Respondent’s “legitimate interest in using the domain name for goods or services, the domain name is a business asset.” As cited by the winning party in Scorpions Musikproductions und Verlagsgesellschaft MBH .v. Alberta Hot Rods, D2001-0787 (WIPO Nov. 7, 2001) (“[t]he mere fact that Respondent gains income from the domain name is not, in itself, bad faith”). If Mr. Gregory’s ownership of the domain name does not offend the UDRP, there is nothing in the UDRP that makes his use of the domain name to link it to adult entertainment sites unfair.
Finally, although the Panel’s order states that “[t]his allegation [involving links to adult entertainment sites] makes this case different from the typical domain name speculator cases cited in Respondent's Response,” it is in fact the exact same circumstances in the three preceding cases successfully defended by Mr. Gregory in which he listed domain names for sale on the same page as <foreigner.com>, each of which were linked to exactly the same page contained in Complainant’s Exhibit O to its Complaint.
Respondent has failed to provide the requested information; therefore, Complainant is incapable of submitting meaningful, responsive commentary. Respondent states that “the requested evidence should not at all be relevant to the panel’s inquiry in this matter.” Notwithstanding Respondent’s disregard for the Panel’s inquiry, this information is indeed significant, which is presumably why Respondent did not provide said information.
Throughout his supplemental response, Respondent intimates that it is too burdensome to secure the information requested by the Panel. It is difficult to believe that Respondent has actual knowledge of figures such as the amount of money expended on his business endeavors, but he lacks knowledge about income generated. In addition, Respondent states that he “has never asked [his] web hosting service to provide [him] with logs of any kind.” Thus, Respondent indicates that he made no effort to secure this information. The Panel should not allow Respondent to hide information, or hide behind said information, which is completely out of the reach of Complainant. The Panel should consider these tactics as further admissions of bad faith.
Respondent’s lack of cooperation serves to reinforce the allegations set forth in the Complaint – that Respondent engaged in bad faith registration of the domain name. Respondent’s unpersuasive apology for utilizing the domain name for pornographic purposes (i.e., that he needed the money) does not excuse the fact that he took a famous, registered trademark and linked it to material that has nothing to do with his alleged status as foreigner. See Valspar Sourcing Inc. v. TIGRE, FA 112596 (Nat. Arb. Forum June 4, 2002) (holding that <paint.biz> is protectable by complainant based on common law use of trade names and slogans by complainant).
Respondent’s fair-use analysis is suspiciously devoid of any UDRP analysis of whether adult entertainment services constitute fair use of a domain name. Respondent’s analysis is inapposite with the decision cited by this panel, Etam, plc v. Alberta Hot Rocks, D2000-1654 (WIPO Jan. 31, 2001). That panel held that Etam provided no evidence of the strength of its “Tammy” mark. By comparison, the Complaint at hand includes numerous examples of the strength of Complainant’s mark (e.g., the sale of sixty million albums worldwide, which does not even include even more substantial sales of merchandise and concert tickets). That panel also drew a correlation between a woman’s name, Tammy, and pornographic site featuring women. Respondent at hand does not even attempt to explain the correlation between the pornographic content on his website and his self-proclaimed “experiences as a foreigner living in a third world country.”
Putting aside Respondent’s broad, unfounded claim of fair use, the panel in Matchnet PLC v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (determining that it is not a bona fide offer of goods and services to use <americansingle.com> for commercial gain by attracting Internet users to third-party sites offering sexually explicit and pornographic material, and that such use is calculated to mislead consumers and tarnish Complainant’s mark). Arguably, “American Single” has even a stronger conceptual link to pornographic material than “Tammy.” On the other hand, “Foreigner” has nothing to do with pornography and is an internationally recognized trademark.
Respondent admits to registering numerous domain names. He would have us believe that he thumbed through the dictionary looking for common names, as indicated in his Affidavit. However, he admits to intentionally registering misspelled names. This is yet another example of Respondent’s efforts to surreptitiously divert traffic to his websites. Very similar circumstances existed in Traditions Ltd. v. noname.com, FA 94388 (Nat. Arb. Forum May 8, 2000) (finding bad faith when the following circumstances are present: registration of numerous domain names, having no business plan, engaging in no business activity in connection with domain name, as well as submitting no reliable evidence of any legitimate use of domain name).
Respondent’s contention that he has “never refused to sell a domain name for its listed price” is Respondent’s way of avoiding the real issue of whether said price is solely based upon Respondent’s actual registration and transfer costs. Conspicuously absent from the Attachment to Respondent’s Affidavit are Respondent’s portion of the e-mail dialogues. The information withheld by Respondent also makes it impossible for Respondent to prove its contention that “it has never actively solicited a buyer for any domain name in his inventory…” See Hearst Communications, Inc. and Hearst Magazines Prop., Inc. v. David Spencer d/b/a Spencer Assocs., and Mail.com, Inc., FA 93763 (Nat. Arb. Forum April 13, 2000) (Respondent had registered a number of generic names as well as many others that were held to be identical or confusingly similar to registered trademarks of other entities. Respondent listed domain name registrations for sales at prices considerably above cost of acquiring them, including <esquire.com>, which was held to constitute bad faith); see also X/Open Co., Ltd. v. Marshall Sorensen, D2002-0297 (WIPO June 24, 2002) (finding that a link to a commercial site can constitute bad faith use).
Respondent would have this Panel be persuaded by decisions of previous panels for unrelated domain names registered by him. Cf. Univ. of Iowa v. Juraj Vyletelka, D2002-0349 (WIPO May 31, 2002) (finding that Respondent’s two other domain name registrations did not in and of itself disprove bad faith registration and use).
As for Respondent’s observation about Complainant’s Exhibit O as attached to the Complaint, as can be seen by the bottom margins in that Exhibit, the data printed via that particular web browser clearly bled from one printed page to another, thus the date needed to be provided separately. Unless Respondent is admitting his took down his pornographic content and/or ludicrous price demand on a certain date in fear of reprisal, Respondent’s concern is misplaced.
The Panel finds that:
1. With the exception of the “.com” extension, the disputed domain name is identical to the FOREIGNER trademark owned by Complainant;
2. Respondent, however, has rights or legitimate interests in 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 holds rights in the trademark FOREIGNER. The domain name in question is <foreigner.com>. With the exception of the extension “.com,” the domain name is identical to Complainant’s mark.
This has been a difficult case. The Panel has struggled with the fact that in proceedings of this nature there is no opportunity to test the veracity of the parties’ submissions through cross-examination. However, under the UDRP the Panel is required to make a decision based on the wording of the Policy and evidence before it. The Panel has reviewed all the evidence, the submissions of the parties and the authorities cited by the parties, and we have considered this matter at length. The majority of the Panel has concluded that, on the evidence before us, Respondent has shown a legitimate interest in <foreigner.com>.
It is clear from the evidence that Complainant does not hold exclusive rights in FOREIGNER. He does have exclusive rights in relation to the uses for which he has registered trademarks, but the word FOREIGNER itself is a common English language word.
Respondent has presented evidence, which Complainant has been unable to refute, that he is legitimately in the business of domain name speculation. He registers domain names comprised of generic words or geographic locations. Respondent contends that this is a legitimate business and that one does not seek out the value of domain names based on trademarks, but rather the value is perceived from the common use of a term or phrase registered in the domain name. Respondent therefore argues that this is a legitimate fair use of a generic domain name that confers rights or legitimate interests in the <foreigner.com> domain name. See Fifty Plus Media Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000) (finding that Complainant failed to prove that Respondent had no rights in the domain name and had registered and used the domain name in bad faith where Respondent is an Internet business which deals in selling or leasing descriptive/generic domain name registrations).
Based on the authorities cited, we agree that registering common or generic words, even with the intent to resell the registrations, can be a legitimate business activity. The evidence before us establishes that this is precisely the business in which Respondent is engaged. We do have some reservations about Respondent’s refusal to provide us with any financial information on the extent of his domain name sales business, but the ultimate onus in these cases is on Complainant who has been unable to refute Respondent’s evidence that sale of domain name registrations is his business.
The Panel was of the opinion that unless there were something in the evidence to distinguish this case from others where a legitimate interest was found in similar circumstances, we would be inclined to follow the line of cases that finds a legitimate interest in these circumstances. See, e.g., Allocation Network GmbH v. Steve Gregory, D2000-0016 (WIPO March 24, 2000); see also Cream Holdings Ltd. v. Nat’l Internet Source, Inc., D2001-0964 (WIPO Sept. 28, 2001).
There is no evidence before us that Respondent registered this domain name with the intent to sell the registration to Complainant or to a competitor. The unrefuted evidence is that he registered the domain name along with numerous others with the intent to sell those registrations to willing purchasers.
The one area of possible distinction that gave the Panel some difficulty was the fact Respondent linked the website in question to a number of “adult entertainment sites”. A review of the evidence established that the domain name <foreigner.com> linked to a web page containing one link to a list of domain name registrations for sale and eight links to sites offering “adult services”. In his supplemental submissions, Respondent admitted that he did derive some revenue by putting up links from his many domain names to adult entertainment sites as part of his business. While the Panel is of the view that linking to pornography might, in some cases, tarnish or dilute a famous mark (such as <candyland.com> tarnished Hasbro’s Candyland game) (Hasbro, Inc. v. Entm’t Group, Ltd. et al., 1996 WL 84853 (W.D. Wash. 1996)), the majority of the Panel is of the view that the mark in question must be distinctive. The word “foreigner” simply is not distinctive but rather is a common English word.
Having found nothing to distinguish this case from other similar cases before it, the majority of the Panel therefore holds that Respondent has a legitimate interest in the contested domain name.
In light of the Panel’s findings with respect to rights or legitimate interests, the Panel need not deal with the question of bad faith.
The Panel would remind the parties, however, that this case was decided on the basis of the record before us which by virtue of the very nature of the proceeding is a truncated one without the benefit of discovery or the opportunity to make credibility determinations, and that this process does not preclude judicial intervention.
The Complaint of Michael Leslie Jones is hereby DISMISSED.
Anne M. Wallace, Q.C., Panel Chair
Dated: January 14, 2003
Diane Cabell, Panelist
I agree with much of the majority's analysis. I join the majority's decision with respect to the first UDRP factor (<foreigner.com> is obviously identical to the FOREIGNER trademark). I also agree that domain name speculation can be a legitimate activity when the registrant registers dictionary words, without any intent to trade on the value of a particular trademark. See Gen. Machine Prods. Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum Mar. 16, 2000). With all due respect to my co-panelists Anne Wallace and Diane Cabell, whose views I respect, I cannot agree that this Respondent's conduct is legitimate in this case.
Although "foreigner" is a dictionary term, it also is an inherently distinctive mark when used in conjunction with Complainant's entertainment services. Moreover, Complainant has submitted evidence that FOREIGNER is a famous mark for its entertainment services. That is true in cyberspace as well - many of the top references listed when "foreigner" is entered into a search engine refer to Complainant's band or its music. Perhaps to take advantage of this fame, Respondent's website at <foreigner.com> does not merely indicate that the domain name registration was available for sale (as is often the case with domain name speculators). Instead, the site consisted primarily of links to adult entertainment sites. Although Respondent was fairly evasive in his responses to the Panel's request for supplemental submissions, he has admitted that he derives revenue from these links.
The offering of adult entertainment at the <foreigner.com> website is not a legitimate interest or a fair use of that name. There is no relationship between the name and the adult content provided at the site. Cf. Etam plc v. Alberta Hot Rods, D2000-1654 (WIPO Jan. 31, 2001) (finding that the domain name <tammy.com>, used for an adult entertainment website, is a fair use). Rather, the offering of adult entertainment services, which results in commercial profit for Respondent, appears to have been merely gratuitous, and a fair inference can be drawn that Respondent provided those links in order to capitalize on the fame of the FOREIGNER trademark and on the traffic that would come to the <foreigner.com> website by Internet users looking for Complainant. In his supplemental submissions, Respondent did not provide any evidence that was sufficient to overcome this inference.
As for bad faith, numerous panels have found bad faith when a registrant provides adult entertainment services or links at a website accessible via a domain name containing a famous trademark. See, e.g., Fairchild Publ’ns Inc. v. Yomtobian, D2000-1003 (WIPO Feb. 14, 2001) (indeed, the mere threat to link to adult entertainment content has been sufficient to support a finding of bad faith); see also Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000); Rudner v. Internetco Corp., D2000-0581 (WIPO Aug. 3, 2000). Under these lines of precedent, I would find bad faith in this case as well. (For a discussion of the use of precedent in UDRP decisions, see Koninklijke Philips Elecs. N.V. v. Relson Ltd., DWS2002-0001 (WIPO June 14, 2002)).
I do agree with the majority that this was a difficult and close case. Moreover, deciding the case required reliance on inferences of Respondent's intent, which is difficult in UDRP proceedings where there is neither discovery nor live testimony. Should Complainant wish to probe Respondent's intent in greater detail, it may, as the majority also has suggested, pursue a court claim against Respondent under the Lanham Act.
David H. Bernstein, Panelist
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