Club 1948, an Illinois not
for profit corporation v. Sari Zats
Claim Number: FA0908001277416
PARTIES
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”).
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@club1948.org, postmaster@club1948.com, postmaster@club1948.net, postmaster@myclub1948.com, and postmaster@myclub1948.net 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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.
FINDINGS
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.
DISCUSSION
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.
DECISION
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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