Buckley Johnson v. Virtual Services Corporation
Claim Number: FA0905001261997
Complainant is Buckley Johnson (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nmclassified.com>, registered with Name.com Llc.
The undersigned 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
A timely Response was received and determined to be complete on
On June 18, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
NMCLASSIFIEDS.COM is the common-law copyrighted property of Buckley Johnson. This is a website as well as a print newspaper that were started in 1999.
Respondent copied the name of my website and changed one letter in order to confuse people. My website is <nmclassifieds.com> and they are using <nmclassified.com> (the only difference is the s). They took data off of my website to further this fraud.
This is a clear cut case of typo-squatting and using my work to drive traffic to their web site to generate revenue from the pay-per click advertising they have.
Complainant has signed a binding contract to purchase the domain name at issue. Complainant has breached its contractual obligations.
This case is a classic example of Reverse Domain Name Hijacking, i.e. use of the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.
Complainant is not able to prove any of the three UDRP elements.
To prevail under the first UDRP element, Complainant must establish unregistered or common law rights in the asserted mark. Complainant does not expressly claim to have acquired common law trademark rights, but makes a vague reference to “common law copyrighted property” presumably as a result of a domain name registration.
Even if Complainant claimed he is in fact making trademark use of the
name, the asserted mark is entirely descriptive of the goods and services
offered. “Classified” is a noun defined
as an advertisement grouped with others according to subject. Complainant uses the term together with the
abbreviation for New Mexico (NM) in connection with online classified
To establish common law rights in a mark, the Complainant must prove by a preponderance of evidence, that the mark had achieved secondary meaning at the time and place that the infringing use began. Complainant has not submitted any of the evidence required to show secondary meaning.
A Google search for “NM classifieds” confirms that the terms are by no means exclusively associated with Complainant.
Respondent uses the Domain name in its descriptive/generic sense, i.e. in connection with classified advertising. The use of a generic/descriptive domain name in connection with information related to the subject matter of which the name is descriptive is a legitimate use.
The Domain Name is generic and as the first to register, Respondent holds a “right or legitimate interest” therein.
Because Complainant has not established any trademark rights, there cannot be any bad faith intent on the part of Respondent to exploit or benefit from such rights.
There is no indication that Response registered the Domain Name in order to prevent Complainant from doing so.
Bald assertions of bad faith are not sufficient and they should not act to shift the burden of proof to Respondent.
Respondent declares that the Complaint was brought in bad faith and constitutes abuse of the proceeding. Pursuing a complaint in clear breach of contract is also evidence of bad faith intent.
For the reasons set forth below, the Panel finds that the relief requested by Complainant is denied.
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.
Respondent asserts that Complainant
has not established common law rights in the NMCLASSIFIEDS.COM mark since
Complainant failed to submit any evidence of a secondary meaning or use in
commerce since the claimed date of 1999.
The Panel finds that Complainant’s bald assertions are insufficient to
establish common law rights in the NMCLASSIFIEDS.COM mark under Policy ¶ 4(a)(i). See Cashmore v. URLPro, D2004-1023 (WIPO
Complainant has not proven this element.
Since the Panel has found that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the mark,
the Panel will not analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty.
Ltd., FA 116765 (Nat. Arb. Forum
Reverse Domain Name Hijacking
the Panel finds that Complainant has failed to satisfy its burden under the
Policy, this does not necessarily require a finding of reverse domain name
hijacking on behalf of Complainant in bringing the instant claim.
The Panel finds Reverse Domain Hijacking has not been proven.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <nmclassified.com> domain name remain with Respondent.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 13, 2009
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