Club 1948, an Illinois not for profit corporation v. Sari Zats
Claim Number: FA0908001277416
Complainant is Club 1948, an Illinois not for profit corporation (“Complainant”), represented by Daniel M. Pomerantz, of Pomerantz & Associates LLC, Illinois, USA. Respondent is Sari Zats (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <club1948.org>, <club1948.com>, <club1948.net>, <myclub1948.com>, and <myclub1948.net>, registered with Godaddy.com, Inc. (the “Disputed Domain Names”).
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.
Kendall C. Reed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 4, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 6, 2009.
On August 4, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <club1948.org>, <club1948.com>, <club1948.net>, <myclub1948.com>, and <myclub1948.net> domain names are registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.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 August 10, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 31, 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, email@example.com, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
A Response was received on August 31, 2009, but no hard copy was received before the due date, and so the Response was determined to be deficient pursuant to ICANN Rule 5.
On September 10, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kendall C. Reed as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant possesses common law trademark rights in the mark "CLUB 1948" ("Complainant’s Trademark"). These rights arise from Complainant’s use of Complainant's Trademark in commerce as early as December 20, 2007 and continuously since that date. During this time, Complainant has used Complainant’s Trademark as an identifier for itself and its activities within Illinois, as well as nationally and internationally. Complainant has used Complainant’s Trademark and continues to use Complainant’s Trademark in connection with e-mail addresses, Facebook groups, the company's website, printed marketing materials, published advertisements, and prominent displays at community events.
Respondent does not own, operate nor have any affiliation with any organization bearing a trade-name or trademark in any way similar to Complainant's Trademark. Respondent has at no time, presently or in the past, made any use of the Disputed Domain Names or any similar trade name, trademark or service mark, other than to cyber-squat on Complainant’s Trademark and an attempt to sell the Disputed Domain Names for a profit.
During the period of time from approximately November to December 2008, Respondent briefly performed minor volunteer work for Complainant. At that time, the Disputed Domain Names <club1948.org>, <club1948.com>, and <club1948.net> were registered to a third-party individual who had previously assisted in the formation of Complainant as a business entity. Without the knowledge or consent of Complainant, Respondent contacted said third-party individual and fraudulently misrepresented herself as being an employee of, and an attorney for, Complainant. Respondent is not an attorney and was not hired nor professionally engaged by the Complainant. On or about January 6, 2009, Respondent acquired said Disputed Domain Names from said third-party individual, who was under the impression that he was, in good faith, turning control of these Disputed Domain Names over to a legal representative of Complainant.
Since that time, Respondent has failed and refused to turn control of said Disputed Domain Names over to Complainant despite Complainant's diligent requests and demands that they be transferred Complainant. Further, Respondent has communicated via e-mail to Complainant that Respondent is entertaining an offer from an interested buyer to sell certain of the Disputed Domain Names to that interested person.
When Complainant was initially formed as a business entity, one of the founders of the Complaint, the above mentioned third-party individual, acquired the Disputed Domain Names <club1948.org>, <club1948.com>, and <club1948.net> on behalf of and for the benefit of Complainant. Within several months thereafter, said third-party individual ended his association with Complainant under less than friendly circumstances.
At the time Respondent acquired the Disputed Domain Names <club1948.org>, <club1948.com>, and <club1948.net> from said third-party individual, Respondent was an employee of Complainant and had been since July 2008. In fact, Complainant asked and gave permission to Respondent to seek said Disputed Domain Names from said third-party individual.
Respondent did contact said third-party individual and did negotiate the return of the Disputed Domain Names held by him to Complainant. Respondent personally reimbursed said third-party individual for his out-of-pocket expenses incurred in acquiring said Disputed Domain Names.
At least one of said founders and board members of Complainant knew of this transaction and agreed to reimburse Respondent once the Complainant had sufficient funds.
Respondent initially acquired said Disputed Domain Names on behalf and for the benefit of Complainant, and Respondent never intended to hold ownership of any of said Disputed Domain Names. Respondent's intention in withholding transfer of said Disputed Domain Names to Complainant has been to be reimbursed for the amount Respondent paid out-of-pocket to obtain said Disputed Domain Names.
Complainant has rights in a common law trademark CLUB 1948, which rights were acquired prior to Respondent acquiring the Disputed Domain Names <club1948.org>, <club1948.com>, and <club1948.net>.
Respondent initially acquired said Disputed Domain Names on behalf of Complainant and with the knowledge and consent of Complainant.
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.
Preliminary Issue: Deficient Response
Respondent filed a timely response electronically, but failed to follow this with a timely hard copy thereof, which is in violation of ICANN Rule 5. However, given the technical nature of this deficiency, the Panel accepts Respondent’s response and shall give it due consideration. See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the response is solely in the discretion of the panelist); see also Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“[R]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process. . ."); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where the respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
Preliminary Issue: <myclub1948.com> and <myclub1948.net>
The Policy places the burden of proof on a complainant for each of the three elements listed in policy paragraph 4(a): "In the administrative proceeding, the complainant must prove that each of these three elements is present."
In the present action, the complaint does not address either of these Disputed Domain Names in any way in the complaint except to list them as Disputed Domain Names and assert that Respondent is cyber-squatting on all of the Disputed Domain Names; no facts are presented with respect to these two Disputed Domain Names. As such, this panel can make no determination with respect to the issues of legitimate interest in respect thereto under Policy paragraph 4(c) or bad faith under Policy paragraph 4(b). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
As such, Complainant has failed in its burden of proof with respect to these two Disputed Domain Names, and as such relief is DENIED with respect to these two Disputed Domain Names.
A threshold requirement under policy paragraph 4(a)(i) is that a complainant has rights in a trademark. For purposes of this Policy, it is not necessary that a complainant have rights in a registered trademark, but rather a common law trademark is sufficient. See America Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
In order to establish a common law trademark, a complainant must demonstrate the development of secondary meaning, which requires a showing of use in commerce before respondent registered the disputed domain name. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name); see also Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).
In the present action, Complainant provides exhibits which demonstrate use of Complainant's Trademark to advertise its activities. These uses are sufficient to establish the existence of a common law trademark for purposes of the Policy.
With respect to the issue of timing, Complainant’s asserts, and this Panel accepts, that Complainant's first use in commerce of Complainant's Trademark was in December 2007. Respondent acquired said Disputed Domain Names in early 2009 as demonstrated by e-mails attached to the response. This timing supports the acquisition by Complainant of Complainant's Trademark prior to Respondent's acquisition of said Disputed Domain Names.
Having established the existence of trademark rights, the next issue under Policy paragraph 4(a)(i) is to analyze whether a respondent’s domain name is identical or similar to the trademark. In making the comparison between a trademark and a disputed domain name, minor variations such as spaces, individual letters, and generic top-level domains (gTLDs) are typically ignored. Tech. Props., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name <radioshack.net> is identical to the complainant’s mark, RADIO SHACK); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
In the present action, Complainant's Trademark is “CLUB 1948” and the Disputed Domain Names <club1948.org>, <club1948.com>, and <club1948.net> are, after removing the top-level domains (gTLDs) and ignoring the lack of a space, is "club 1948."
As such, said Disputed Domain Names are identical to Complainant's Trademark, and as such, Complainant has established the first element of the Policy with respect thereto.
In the present action, it is abundantly clear that Respondent is not commonly known by the Disputed Domain Names <club1948.org>, <club1948.com>, and <club1948.net>. Further, Respondent admits that Respondent initially acquired said Disputed Domain Names on behalf of Complainant. Further, it is abundantly clear that by holding said Disputed Domain Names under the facts of this present action, Respondent is not making a legitimate noncommercial or fair use of said Disputed Domain Names.
As such, Respondent does not have rights or legitimate interests in respect to said Disputed Domain Names, and as such, Complainant has established the second element of the Policy.
Under policy paragraph 4(a)(iii), a respondent must have registered and be using the disputed domain names in bad faith, and as such, the circumstances surrounding the acquisition of the disputed domain names by respondent can be critical. Where a respondent acquires a disputed domain name with a complainant's consent, that does not constitute bad faith under the Policy. See Sanitech Corp. v. Paton, FA 935273 (Nat. Arb. Forum Apr. 30, 2007) (holding that Policy ¶ 4(a)(iii) requires bad faith registration and use, so where a respondent initially registered the disputed domain name in good faith, the panel should deny the transfer of the disputed domain name to the complainant); see also Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) (finding that the respondent did not register the disputed domain name in bad faith where it “registered the Domain Name with the full consent and knowledge of Complainant” and therefore “did not have the requisite bad faith when he registered the Domain Name, which is an express requirement of the Policy”)
In the present action, emails attached as exhibits to the response demonstrate that Complainant was aware of Respondent's efforts to obtain the Disputed Domain Names <club1948.org>, <club1948.com>, and <club1948.net> at the time Respondent was attempting to do so and further demonstrate that Complainant was aware of the means employed by Respondent in accomplishing this task. As such, Respondent was acting with Complainant's permission, and as such, Respondent was not acting in bad faith.
Complainant asserts that Respondent has attempted to demand sums in excess of Respondent's out-of-pocket expenses associated with the Disputed Domain Names <club1948.org>, <club1948.com>, and <club1948.net> as a condition for transferring them to Complainant. A copy of an e-mail from Respondent to Complainant's attorney attached as an exhibit to the complaint supports this assertion, and this would tend to support a finding of bad faith. However, the amounts demanded by Respondent do include Respondent’s out-of-pocket expenses with respect to said Disputed Domain Names, and otherwise the amounts demanded in excess are relatively minor. This does not negate the more significant point set out above that said Disputed Domain Names were not initially acquired in bad faith.
Complainant has not provided evidence that would support a finding of bad faith under the other options listed in Policy paragraph 4(b), namely that the Respondent registered said Disputed Domain Names in order to prevent Complainant from reflecting Complainant's Trademark in a corresponding domain name, or that Respondent has registered said Disputed Domain Names primarily for the purpose of disrupting the business of a competitor, or that by using said Disputed Domain Names, Respondent has intentionally attempted to attract for commercial gain Internet users to its website or other online location, by creating a likelihood of confusion with Complainant's Trademark.
As such, Complainant has failed to establish the third element under the Policy.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Kendall C. Reed, Panelist
Dated: September 23, 2009
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