Live Earth, LLC v. Designers for Change Ltd c/o Mustafa Sami
Claim Number: FA0908001280449
Complainant is Live Earth, LLC (“Complainant”), represented by Gregory
Nylen, of Greenberg Traurig, LLP,
California, USA. Respondent is Designers
for Change Ltd c/o Mustafa Sami (“Respondent”), represented by James Moore,
of SCL Internet,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <liveearth.com>, registered with Tucows Inc.
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.
Dennis Foster as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 19, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 24, 2009.
On August 20, 2009, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <liveearth.com> domain name is registered with Tucows Inc. and that the Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 September 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 21, 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 September 21, 2009.
Complainant submitted an Additional Submission to the National Arbitration Forum on September 28, 2009, which complied with the requirements of Supplemental Rule 7(a). The Panel will consider said submission in rendering its decision.
On October 2, 2009, Respondent filed an Additional Submission with the National Arbitration Forum. This Additional Submission also conformed to the requirements of Rule 7(a) and shall be considered by the Panel in the ruling issued below.
On October 9, 2009, Complainant filed another Additional Submission and, on October 14, 2009, Respondent filed another Additional Response. Neither document complies with National Arbitration Forum Supplemental Rule 7, which limits the parties to one Additional Submission each. Therefore, the Panel has not considered these documents in reaching its Decision.
On October 1, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
- Complainant was founded in 2007 as a for-profit company to address global environmental issues. Since at least March 2007, Complainant has used its LIVE EARTH mark to identify activities, including several high-profile concerts in conjunction with former United States Vice President Al Gore, that have been staged to achieve Complainant’s goals. Complainant’s concerts have been hosted on all seven continents and telecast in 132 countries.
- On March 21, 2009, Complainant filed for a trademark registration with the United States Patent and Trademark Office (“USPTO”) with respect to the LIVE EARTH mark. Complainant applied for a similar registration for another mark, LIVE EARTH THE CONCERTS FOR A CLIMATE IN CRISIS, on April 17, 2007.
Complainant registered the domain name, <liveearth.org>, on or
about June 1, 2005. Since then,
Complainant has acquired eighty different domain names that incorporate the
words “live earth” or similar terms (i.e., <aboutliveearth.com>,
<friendsofliveearth.com>, <liveearthcampus.com>, etc.). Through its concerts, its advertising and the
use of websites found at the domain names, Complainant has created recognition
- The disputed domain name, <liveearth.com>, is identical or confusingly similar to Complainant’s mark. The confusion is only enhanced by Respondent’s use of the name to promote environmental issues similar to those championed by Complainant. Reasonable consumers will be confused as to the auspices of the disputed domain name relative to Complainant and its mark.
- Respondent has no rights or legitimate interests in the disputed domain name. Complainant has granted Respondent no permission to use Complainant’s LIVE EARTH mark or register the domain name in question.
- The disputed domain name was simply a place holder until Complainant’s mark gained notoriety. At one point in 2007, Respondent redirected the name to one of Complainant’s domain names. Respondent now uses the disputed domain name to redirect internet users to a third party website found at <lifeafterpeakoil.com>. That site refers to climate change issues – creating more confusion with Complainant’s own websites – but also contains links to numerous other third-party commercial websites. Presumably, Respondent collects fees when internet users click on to said third party links.
- Respondent registered and is using the disputed domain name in bad faith. Respondent intended to profit from the reputation of Complainant’s mark by registering a confusingly similar domain name to which consumers seeking Complainant’s services would be drawn. This confusion was designed by Respondent to result in its commercial gain.
- Respondent intended to sell the name for an exorbitant price. During negotiations between the parties, Complainant offered $50,000 USD, but Respondent demanded $450,000 USD.
- The Live Earth Trust was created
in 1990, and Respondent contributed to a book entitled Save the Earth
that year. The mission of the Trust was
to alert mankind to the degradation of the world’s ecosystem. Throughout the decade starting with 1990, the
Trust members participated in various projects in the
- Respondent obtained registration
of the trademark, LIVE EARTH, in the
- Respondent registered the disputed domain name on May 11, 1998. The name was registered for the purpose of creating a strong brand for Live Earth Trust. Complainant even congratulated Respondent on its efforts with respect to stewardship of the name and their mutual cause concerning the earth’s environment.
- Complainant sought to purchase the disputed domain name from Respondent in 2006, well before Complainant’s activities gained notoriety in 2007. In 2007, Respondent agreed to redirect the disputed domain name to a domain name owned by Complainant if both parties shared in the charitable proceeds from a Complainant-planned event. When Respondent determined that such proceeds would not be forthcoming, Respondent discontinued the redirect.
- All negotiations between the parties after that noted above involved Respondent’s attempt to gain a share of the charitable revenues obtained at Complainant’s events, as a means to promote Live Earth Trust’s goals. Complainant’s characterization of Respondent’s actions as attempts to extort payment is incorrect.
- Respondent does not believe that the websites found at <lifeafterpeakoil.com> and Complainant’s domain name, <lifeearth.org>, are similar.
- In all the prior UDRP cases cited in the Complaint, the corresponding complainant had obtained a registered trademark before registration of the domain name at issue.
- Respondent did not register the
disputed domain name in bad faith as evidenced by the fact that Respondent
registered the name (and obtained a corresponding
C. Complainant’s Additional Submission
- Complainant concedes that Respondent founded Live Earth Trust in 1990 and Live Earth, Ltd. in 1998, and registered the disputed domain name in 1998. Complainant also admits that Respondent still holds regular meetings with respect to the Trust. However, neither Respondent nor the Trust have held any significant events concerning environmental issues for more than five years. Furthermore, the disputed domain name does not now lead to an active website (the redirect to <lifeafterpeakoil.com> having been discontinued upon filing of this Complaint).
- Respondent is unwilling to acknowledge that its own attempts to use the LIVE EARTH mark have been unsuccessful, and it is now attempting to cash in on the value in that mark created by Complainant.
D. Respondent’s Additional Submission
- Complainant has not registered its trademark, LIVE EARTH, with the USPTO, but has filed only an application to do so.
- An unnamed holding company, and not Complainant, is the proper party entitled to make a Complaint under the UDRP with respect to the disputed domain name.
- Complainant concedes the establishment by Respondent of Live Earth Trust in 1990 and Live Earth, Ltd. in 1998. Thus Complainant cannot contend credibly that the registration of the disputed domain name in 1998 was in bad faith. Such a contention smacks of reverse domain name hijacking.
Complainant is a
Respondent is a
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.
The Panel finds
that the disputed domain name, <liveearth.com>,
is identical to the LIVE EARTH mark claimed by Complainant. See
Vin Diesel v. LMN a/k/a L.M. Nordell, FA
804924 (Nat. Arb. Forum
However, for Complainant to succeed under this element of the Policy, Complainant must establish its rights in the claimed mark. As evidence of its rights, Complainant refers the Panel to: Complainant’s use of said mark since 2007 in conjunction with certain international concerts; its internet promotion of activities through domain names that incorporate the LIVE EARTH mark (e.g., <aboutliveearth.com>, <friendsofliveearth.com> and<liveearthcampus.com>); and its application for a trademark registration of LIVE EARTH with the USPTO.
With respect to the
last piece of evidence noted above, prior Policy panels have been consistent in
holding that a pending application for a trademark is insufficient to establish
rights in a mark for the purposes of paragraph 4(a)(i)
of the Policy. See Wave
Industries, Inc. v. Angler Supply, FA 304784 (Nat. Arb. Forum
Complainant’s trademark claim dependent upon its demonstrating common law
rights in its mark. In determining
whether a complainant possesses such rights in a trademark, previous UDRP
panels have demanded a showing that a secondary meaning has attached to the
mark by considering such factors as longevity of use, amount of sales, nature
and extent of advertising, consumer surveys and media recognition. See Control Techniques Ltd.
v. Lektronix Ltd., D2006-1052 (WIPO
In this case, the words “live earth” are highly descriptive, presenting Complainant with a significant hurdle in demonstrating that those words have taken on a secondary meaning which identify Complainant’s activities. Moreover, Complainant’s claimed use of its mark since 2007, little more than two years, does not impress the Panel as to longevity. On the other hand, Complainant’s contention that its concerts have gained worldwide coverage and notoriety does bolster its claim to rights in its mark. Also, the extensive use of internet domain names, which incorporate the mark, to further promote those activities is another factor in favor of Complainant’s claim.
However, in view of the reasoning below and the requirement that Complainant prevail on all three elements, the Panel need not draw a conclusion as to Complainant common law rights in the LIVE EARTH mark. The Panel has made the analysis above to demonstrate only that Complainant’s possession of those rights is hardly clear-cut for purposes of the reverse domain name hijacking claim considered below.
In Paragraph 4(c)(ii), the Policy provides explicitly a circumstance that a respondent may cite to demonstrate conclusively its rights or legitimate interests in a disputed domain name:
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights [emphasis added].
In its Additional Submission, Complainant concedes that Respondent founded Live Earth Trust in 1990 and Live Earth, Ltd. in 1998. It even concedes further that Respondent still holds meetings with respect to the former organization to this day. The names of these businesses/organizations are nearly identical to the disputed domain name, <liveearth.com>. Therefore, the Panel finds that Respondent’s entities are likely to be commonly known by that name.
As a result, the Panel rules that Complainant has failed to carry its burden to prove that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy requires Complainant to prove that Respondent registered the disputed domain name in bad faith. Complainant concedes that Respondent registered the disputed domain name in 1998, some nine years before Complainant began its operations or used the LIVE EARTH mark in a continuous manner. Is Complainant asking the Panel to believe that Respondent is so prescient as to register dishonestly the disputed domain name with foresight of Complainant’s formation nearly a decade in advance (and to cover its malignant intent by cleverly founding a “phony” organization, Live Earth Trust, nearly another decade prior to such registration)? Even if the Panel grants any weight to Complainant’s contention that it registered the domain name, <liveearth.org>, on June 1, 2005 to initiate Complainant’s activities, that is still seven years after the disputed domain name was registered.
In short, the Panel
is compelled to find that the disputed domain name was not registered by
Respondent in bad faith. See Telecom
Italia S.p.A. v. NetGears LLC c/o Domain Admin, FA 944807 (Nat. Arb.Forum
As a result, the Panel rules that Complainant has failed to carry its burden to prove that the disputed domain name was registered and is being used in bad faith.
In its Additional Submission, Respondent raises the issue of reverse domain name hijacking. Reverse domain name hijacking is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”
In this case, evidence of Complainant’s bad faith use of the Policy abounds. With the benefit of counsel, Complainant initiated this proceeding based upon a common law claim to trademark rights that is tenuous at best. Moreover, Complainant’s filings have ignored the applicability of Policy paragraph 4(c)(ii), which makes it painfully obvious that Respondent has rights and legitimate interests in the disputed domain name by virtue of Respondent’s founding and operation of an organization with almost exactly the same name. Also, those filings have completely disregarded the fact that registration of the disputed domain name predated any claim to Complainant’s ownership of said trademark rights by about nine years, which makes it even more painfully obvious that the disputed domain name was not registered in bad faith relative to Complainant.
The Panel notes
that prior UDRP panels have found conclusive evidence of reverse domain name
hijacking based solely on the last factor cited above, let alone in combination
with the other factors cited. See, e.g.,
Proto Software, Inc. v. Vertical Axis,
Inc/PROTO.COM, D2006-0905 (WIPO
As a result, the Panel must conclude that Complainant’s institution of this case represents a glaring example of reverse domain name hijacking.
For all the foregoing reasons, the Panel concludes that relief shall be DENIED, and that a finding of reverse domain name hijacking shall be sustained.
Dennis A. Foster,
Dated: October 15, 2009
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