Spinsix Strategic Marketing Design, LLC v. RareNames, WebReg
Claim Number: FA0907001273907
Complainant is Spinsix Strategic Marketing Design, LLC (“Complainant”),
represented by Matthew Massari, of Downey Brand LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lincs.com>, registered with Domaindiscover.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol M. Stoner, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 14, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 15, 2009.
On July 16, 2009, Domaindiscover confirmed by e-mail to the National Arbitration Forum that the <lincs.com> domain name is registered with Domaindiscover and that the Respondent is the current registrant of the name. Domaindiscover has verified that Respondent is bound by the Domaindiscover 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 July 21, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on August 11, 2009.
On August 20, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol M. Stoner, Esq., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Respondent requests that the Complaint be dismissed and that
Complainant be charged with Reverse Domain Name Hi-jacking.
Complainant is the owner of U.S. Registration No. 3,630,753, issued on June 02, 2009, for the mark LINCS for “technology platform services, namely, providing a non-downloadable web-based electronic software platform for managing and optimizing internet marketing campaigns, namely, facilitating data collection, data analysis, real-time access to data and reports to track and optimize marketing.” Complainant has used its mark in interstate commerce since at least as early as January, 2004. A true and correct copy of Complainant’s registration certificate is attached as Exhibit A.
The domain name <lincs.com> is identical to Complainant’s federally registered trademark LINCS, pursuant to policy ¶ 4(a)(i), because the domain name incorporates the mark in its entirety without modification.
Respondent has no rights or legitimate interests in the mark LINCS or in the disputed domain name <lincs.com>. The facts demonstrate that Respondent registered the <lincs.com> domain name on September 01, 2003, with the sole intent to warehouse and sell the domain name for profit. Respondent has never offered any goods or services under the domain name and has only held the name for sale at an excessive price. Respondent currently uses the website associated with the disputed domain name to display third party click-through, including advertisements that are related to the services sold by Complainant.
Respondent registered and is using the domain name in bad faith. The very first information on the Whois page in connection with the <lincs.com> domain is an offer to sell the domain for the sum of $22,000., which amount is far in excess of Respondent’s out-of-pocket costs related to this domain name. A host of UDRP complaints filed against Respondent make it clear that Respondent is known for acquiring and maintaining domain names in bad faith and offering them for sale at excessive prices.
Additionally, Complainant’s trademark LINCS is not a common word nor a dictionary term, but is a fanciful trademark used in connection with its non-downloadable web-based electronic software platform.
Respondent uses its website to redirect Internet users to websites that host links to external websites for profit. This, in itself, is evidence of bad faith.
On the website of the disputed domain, Respondent provides links, information, and advertising related to the generic nature of the five-letter abbreviation or acronym, “lincs” including topics related to homes for sale, apartments, dating services, chat rooms, and airline tickets; topics entirely unrelated to Complainant or to its services. The disputed website does not offer any links, information or advertising related to, or competitive with, the goods or services provided by Complainant, regardless of Complainant’s manufacture of evidence showing otherwise.
Complainant does not have exclusive rights to the five- letter acronym, which is neither “fanciful” nor unique, but rather a common five letter acronym or abbreviation used by numerous parties for a variety of goods and services.
Respondent first registered the disputed domain name nearly six years ago more than five years before Complainant filed an application with the United States Patent and Trademark Office( the “USPTO”) for its asserted mark; and at least four (4) months before Complainant alleges it first used the same in commerce when the previous registration expired and it became available for anyone to register. Thus, Respondent could not have known of, much less anticipated, Complainant’s purported mark, and therefore could not have registered the disputed domain to sell it to Complainant; to disrupt its business; to prevent it from acquiring a domain name reflecting its trademark; or to confuse users seeking Complainant’s domain name.
Respondent does not dispute that the mark LINCS and the domain name <lincs.com> are essentially identical, but does dispute that Complainant holds exclusive rights in the acronym, and further disputes that the mark LINCS has any strength as an indicator of source regarding the Complainant.
The fact that the Complainant first
used its trademark in
Respondent have registered it to confuse customers seeking to find Complainant’s website.
Several ICANN Panels have recognized the principle that the mere ownership of a domain comprising a common acronym or abbreviation, or combination of common words, should, in and of itself, establish the owner’s rights and legitimate interest. It is well established that the use of a common acronym or abbreviation as a domain name in connection with third party advertising constitutes use in connection with a bona fide offering of goods or services. It is likewise well-established that the sale of domain names constitutes a bona fide offering of goods and services where Respondent is unaware of a party’s rights in a mark.
There is nothing to indicate that Respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor in violation of the policy. To prove bad faith registration under the Policy, it must be shown that a domain name was registered primarily for the purpose of selling it to the owner of the trademark, or with Complainant’s trademark in mind. Furthermore, merely offering to sell a domain name to the general public is not bad faith under the Policy.
Respondent did not register the domain name in order to prevent the owner of the mark from reflecting its mark in a corresponding domain name. The disputed domain was not registered for the purpose of disrupting the business of a competitor, nor does Complainant allege that the parties are competitors. Complainant is in the business of providing non-downloadable web-based electronic software, whereas Respondent is in the business of buying, selling and developing domain names. Respondent is creating no likelihood of confusion with the business of Complainant. Complainant, other than the evidence it manufactured, has failed to identify any alleged competitor for which the disputed domain’s website provides links.
Respondent lastly asserts that the instant Complaint constitutes an abuse of the administrative proceeding tantamount to Reverse Domain Name Hijacking. Complainant’s bad faith acts warrant a finding of Reverse Domain Name Hijacking because, without manufacturing this evidence, Complainant knew, or should have known, at the time it filed the Complaint, that it could not prove one of the essential elements required by the Policy, namely ¶ 4(a)(iii), “whether the domain name has been registered and is being used in bad faith.”
(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; and
(2) the Respondent has rights or legitimate interests in respect of the domain name.
(3) The Panel has not made a bad faith analysis on the part of Respondent.
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:
(3) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(4) the Respondent has no rights or legitimate interests in respect of the domain name; and
(5) the domain name has been registered and is being used in bad faith.
Complainant asserts its rights in the LINCS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,630,753 issued June 2, 2009, filed October 23, 2008). The Panel finds that Complainant has sufficient rights in the LINCS Mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”
Complainant asserts that it has used the LINCS marc continuously in commerce since as early as January, 2004. However, Complainant has not provided Panel with sufficient evidence in the form of extensive advertising or consumer surveys, so as to make a finding that Complainant has acquired secondary meaning in the mark, and therefore has common law rights in the mark under Policy ¶ 4(a)(i) dating back to January, 2004. Complainant has not met the standard developed in Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat.Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years).
Complainant contends and Respondent
does not dispute, that the <lincs.com>domain
name is identical to the LINCS mark despite the addition of the generic
top-level domain “com.” The Panel agrees
and finds accordingly under Policy ¶ 4(a)(i). See Jerry Damson, Inc. v.
While Respondent argues that its registration of the disputed domain name predates
Complainant’s alleged rights in the mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶4(a)(i) but may prevent a finding of bad faith under Policy ¶4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007)(“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i)”).
Rights or Legitimate Interests
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent has offered convincing proof that it is in the business of registering generic domain names and displaying advertising that relates to the generic nature of the terms in the domain names. Respondent asserts that engaging in the sale of generic domain names is a legitimate business. The Panel finds that Respondent has used the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002) (finding that the respondent’s use of the disputed domain name, which was comprised of generic terms, as a portal to a commercial website featuring various advertisements and links constituted a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)); see also Allocation Network GmbH v. Gregory, D2000-0016 (WIPO Mar. 24, 2000) (holding that under appropriate circumstances the offering for sale of a domain name can itself constitute a bona fide offering of goods or services for purposes of paragraph 4(c)(i) of the ICANN policy).
Respondent also argues that the term in the <lincs.com> domain name is generic and of common use and therefore, Complainant does not have an exclusive monopoly on the term on the Internet. Respondent has offered convincing evidence that the contested
domain name is comprised of a common term, such that the Panel finds that Respondent has established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
Respondent registered the disputed domain name on September 1, 2003, before Complainant’s first use of the mark in January 2004.
As the Panel has concluded that Respondent has rights or legitimate interests in the
disputed domain name pursuant to Policy ¶4(a)(ii), the Panel is not required to make a bad faith analysis, pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005)(finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or
legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007)(“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Respondent asserts that Complainant has attempted to engage in reverse domain name hijacking by filing the instant UDRP case, with the knowledge both that Respondent had rights or legitimate interests in the disputed domain name, and that Respondent could not have registered the disputed domain name in bad faith, because its registration of September 01, 2003, pre-dated Complainant’s asserted common law usage of the mark in January of 2004.
The Panel finds that Respondent registered the disputed domain name prior to the time that Complainant obtained any rights in the mark, and therefore finds that Respondent did not register or use the disputed domain in bad faith under Policy ¶ 4(a)(iii). See Telecom Italia S.p.A. v. Netgears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).
The Panel finds that Complainant has engaged in reverse domain name hijacking. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that to prevail on a claim of reverse domain name hijacking, the respondent must show that the complainant brought the claim in bad faith despite the knowledge that the respondent has an unassailable right or legitimate interest in the disputed domain name, or that the respondent lacks the requisite bad faith registration and use of the disputed domain name); see also Mirama Enters. Inc. v. NJDomains, Abuse Contact: email@example.com, FA 588486 (Nat Arb. Forum Jan. 16, 2006) (finding that complainant has engaged in reverse domain name hijacking where the complainant commenced the proceeding despite possessing knowledge of the respondent’s rights in the disputed domain name); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that the respondent's registration of the <aspengrove.com> domain name two years before the complainant's incorporation justified a reverse domain name hijacking ruling).
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 <lincs.com> domain name shall NOT be TRANSFERRED from Respondent to Complainant.
Carol M. Stoner,
Dated: September 03, 2009
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