Digital Alchemy, LLC v.
Digital Alchemy c/o Ramon Felciano
Claim Number: FA0911001295928
PARTIES
Complainant is Digital Alchemy, LLC (“Complainant”), represented by Deborah
L. Lively, of Thompson & Knight LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <digitalalchemy.com>, registered with
Enom, Inc.
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.
Joel M.Grossman, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 23, 2009; the
National Arbitration Forum received a hard copy of the Complaint on November 24, 2009.
On November 24, 2009, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <digitalalchemy.com> domain name is
registered with Enom, Inc. and that the
Respondent is the current registrant of the name. Enom, Inc.
has verified that Respondent is bound by the Enom,
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 November 30, 2009, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 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 postmaster@digitalalchemy.com by
e-mail.
A timely Response was received and determined to be complete on December 21, 2009.
An Additional Submission was received from Complainant on December 28,
2009 and determined to be timely and complete pursuant to Supplemental Rule 7.
On December 29, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Joel M. Grossman, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant first contends that it does business as Digital Alchemy,
LLC and has provided services under the common law “Digital Alchemy” mark since
1996. Complainant does not assert that it has a registered trademark for
“Digital Alchemy.” However, it indicates that by using its mark in commerce
since 1996, including extensive exposure over the Internet, and by providing
services to customers nationwide, it has common law rights in the mark
throughout the
B. Respondent
Respondent does not deny that its domain name is similar to
Complainant’s mark. However, Respondent sees a major difference between the
consulting services it provides to its customers and the CRM services which
Complainant provides. Respondent further states that it is, in fact, known by
the Digital Alchemy name, and has been known by that name since 1993, three
years earlier than Complainant began using its mark in commerce. Respondent
states that it registered the fictitious business name Digital Alchemy in
C. Additional Submissions
In its Additional Submission, Complainant makes the following points:
first, Complainant notes that while Respondent’s submission evidenced use of
the Digital Alchemy name in commerce in 1995 and 2009, there was no evidence of
ongoing use in the intervening period. Second, Complainant asserts that
Respondent’s “Linkedin” account, which was one of the points used by Respondent
to show that it is commonly known by the domain name, was in fact created on
December 4, 2009, after this matter had commenced. Complainant next contends
that Respondent altered the look of its website during the pendency of this
matter. Finally, Complainant states that in February, 2006 it offered to buy
the domain name from Respondent. Respondent then offered to sell the domain
name to Complainant for $25,000. Based on this proposed transaction,
Complainant makes two points. First, Complainant argues that the fact that
Respondent was willing to sell the domain name indicates that Respondent
neither had legitimate rights or interests in the name nor legitimate use of
the name. Second, Complainant asserts that Respondent’s offer to sell the
domain name to Complainant for a price that greatly exceeds the cost of
registering and maintaining the domain name is evidence of bad faith.
FINDINGS
The Panel finds that (1) the domain name is not
confusingly similar to a mark in which the Complainant has rights; (2)
Respondent has rights and legitimate interests in the domain name; and (3) the
domain name was not registered and is not being used in bad faith.
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.
Complainant is surely correct that the domain
name <digitalalchemy.com>
is identical to, or confusingly similar to its DIGITAL ALCHEMY mark. The
omission of spacing between the two words, and the inclusion of a gLTD are
irrelevant in connection with this inquiry. See
Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000). Complainant,
however, has not demonstrated that it has rights in the mark. Complainant
acknowledges that it has no registered trademark for the mark. Complainant
asserts that it has a common law right in the mark. In the Complaint it states:
“Complainant has provided its technology-related services under the mark
DIGITAL ALCHEMY exclusively and continuously since 1996 and has had extensive
exposure via the Internet, providing its services to businesses nationwide.”
However, this conclusory statement by counsel in the Complaint is not
accompanied by any evidence other than screen shots from Complainant’s website,
which, it is noted, bears the following domain name: <data2gold.com>.
Additionally, through a simple Google search, the Panel found the following
domain names: <digitalalchemypro.com>; <digitalalchemy.net>; and <digitalalchemy.tv>.
In general, and especially in light of these other domain names, Complainant
bears the burden of demonstrating that the public has come to identify the term
“Digital Alchemy” with its products. Complainant,
however, offers no evidence by way of declaration or otherwise that in fact the
term DIGITAL ALCHEMY has acquired a secondary meaning in connection with
Complainant’s products. In the absence of any evidence of secondary meaning,
Complainant has failed to support its assertion of a common law trademark. See Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 24, 2005). In declining
to recognize the complainant’s common law mark in Kip Cashmore the panel stated:
“Here, Complainant has not presented any credible evidence establishing
acquired distinctiveness [for the complainant’s goods and services]. The record
is devoid of any declarations of unaffiliated parties attesting that the mark
of Complainant serves as an identifier of origin or services. Complainant’s
record consists of merely a declaration of Complainant with unsupported facts…”
Here the record is even more paltry than in Kip
Cashmore, as there isn’t even a self-serving declaration by Complainant
that its mark serves as an identifier of its goods and services in the public’s
mind. In the absence of any evidence of secondary meaning, the Panel finds that
Complainant has not demonstrated common law rights in the mark, and thus has
failed to prevail on this first issue.
The Panel notes that Complainant must first
make a prima facie case that
Respondent lacks rights and legitimate interests in the domain name. The Panel
concludes that Complainant has not fulfilled this obligation. Complainant asserted “on information and
belief” that Respondent is not known by the domain name and is not using the
domain name for the bona fide
offering of goods and services. However, in the Response, Respondent asserts,
and provides documentary evidence, that it has indeed been doing
business—providing consulting services-- since 1993 under the name Digital
Alchemy. See Digital Interactive Sys.
Corp. v. Christian W. , FA 708968 (Nat. Arb. Forum July 3, 2006) (holding
that the complainant failed to satisfy Policy ¶ 4(a)(ii) because respondent
provided sufficient evidence that it was using the domain name for a bona fide offering of goods and
services). Moreover, Respondent has been
using the name in the offering of goods and services since 1993, prior to
Complainant’s use of its mark in commerce, and Respondent therefore has rights
in the name irrespective of Complainant’s subsequent use of its mark. See Fuji Photo Film Co. v. Fuji Publ’g
Group, D2000-0409 (WIPO July 2, 2000). In its Additional Submission,
Complainant argues that there is no evidence of continuous use of the name throughout the period of 1993 to 2009. The
Panel is not aware of such a requirement. A Respondent may show that it has
rights or legitimate interests in a name by showing that is commonly known by
the name or that it uses the name for the bona
fide offering of goods or services, and Respondent has made such a showing.
The fact that the showing does not cover all of the years required is of no
moment. Similarly, the fact that Respondent may have set up a “Linkedin”
account during the pendency of this matter means only that this fact is of no
benefit to Respondent in showing that it is commonly known by the domain name,
and the Panel did not look to this factor as a major one in any case. Finally,
the fact that Respondent, after being solicited by Complainant, offered to sell
the domain name in 2006 for $25,000 does not show that Respondent has no rights
or legitimate interests in the domain name. Rather, it shows only that at that
particular moment in time Respondent was willing to sell the domain name for
the stated price. The Panel therefore
concludes that Complainant has failed to show that Respondent lacks rights or
legitimate interests in the domain name.
Given Respondent’s use of the Digital Alchemy
name in its business since 1993, and the Panel’s finding that Respondent has
rights and legitimate interests in the domain name, the Panel concludes that
Respondent did not register and is not using the domain in bad faith. Indeed,
as prior panels have held, once a panel has determined that a respondent has
rights and legitimate interests in a domain name, the question of bad faith is
moot. See Lockheed Martin Corp. v.
Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005); see also Vanguard Group Inc. v. Investors
Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007). Complainant argues
in its Additional Submission that the fact that Respondent demanded a high
price for the sale of the domain name is evidence of bad faith. While in some
cases an offer to sell the domain name for a sum much higher than the cost of
registration and maintenance could be evidence of bad faith, in the instant
case in light of Respondent’s rights and legitimate interests in the name,
there is no showing of bad faith. The Panel therefore concludes that Complainant
has failed to show that Respondent registered and used the domain name in bad
faith.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Joel M. Grossman, Panelist
Dated: January 12, 2010
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