DINGBATS/Michael Starr v. Pool.com In Trust
Claim Number: FA0912001296562
PARTIES
Complainant is DINGBATS/Michael Starr (“Complainant”), represented by Charles E. Runyan, of Runyan Law, Arizona, USA.
Respondent is Pool.com In Trust (“Respondent”), represented by Richard Schreier,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dingbats.com>,
registered with Rebel.com.
PANEL
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.
Dr. Reinhard Schanda as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 30, 2009; the National Arbitration Forum received a
hard copy of the Complaint on December 3, 2009.
On December 3, 2009, Rebel.com confirmed by e-mail to the National
Arbitration Forum that the <dingbats.com>
domain name is registered with Rebel.com and that the Respondent is the current
registrant of the name. Rebel.com has
verified that Respondent is bound by the Rebel.com 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 December 10, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 30, 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@dingbats.com by e-mail.
A timely Response was received and determined to be complete on
December 29, 2009.
On January 4, 2010, Complainant submitted an Additional Submission that
was in compliance with Supplemental Rule #7.
On January 8, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
On January 10, 2010, Respondent submitted an
Additional Submission that was in compliance with Supplemental Rule # 7.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that it registered
the DINGBATS trademark first on November 26, 1996. The first use in commerce was
at least as early as December 1, 1995. Complainant used this trademark on
watches, among other goods. Complainant has sold over 500,000 watches using the
trademark at major US retail stores such as Wal-Mart and Zany Brainy. The mark
is famous. Various other DINGBATS trademark applications and registrations have
been filed or issued dating from 1996 to the present. Non-paid editorials
regarding these goods with these trademarks began appearing in trade
publications at least as early as 1997. These dates fall well before the
current registration or re-registration of the domain name in dispute, which
occurred on September 5, 2004. On a separate note, the original DINGBATS.COM
registration was created circa July 1996, by Karen Allport who had related
trademark applications, as well. This domain name missed renewal shortly before
respondent gained control of the DINGBATS.COM domain name due to bankruptcy of
Ms. Allport's registrar. DINGBATS has purchased all of
Ms. Allport's rights to the domain name in dispute.
According to Complainant the domain name at dispute absent the
top-level domain name, is identical to DINGBATS's famous trademarks. The domain
name is identical to Allport's domain name, the rights to which Complainant
owns.
Neither of the parties described in the respondent section above, at
the time of the domain name’s failed-renewal-expiry-auction nor up until now,
had begun or prepared to use the disputed domain name in connection with a bona
fide offering of goods and services. respondent holds
the domain name passively, which does not represent a bona fide offering of
goods or services.
Respondent
traffics in premium domain names.
While some of these domain names may inherently have premium value, many are
only worth a premium price because of their similarity to someone else's
trademark or tradename. Respondent's intent to sell renewal for domain names
that are confusingly similar to an established, famous, trademark violates the
Anticybersquatting and Consumer Protection Act. This type of trademark
violation prevents Respondent's plans to sell the domain name from being a bona
fide offering of goods or services.
Moreover,
Respondent sold or attempted to sell the domain name in dispute to Mr. X.
Therefore, both broke the domain-name-trafficking section of the ACPA. This
activity on Respondent's part is chargeable to respondent on its own behalf.
This trafficking activity on Mr. X.'s part is chargeable to respondent as Mr.
X.'s trustee.
There
is no evidence that Mr. X or Respondent has been commonly known by the domain
name. For instance, the whois data shows “Pool in Trust” which bears no
similarity to the domain name in dispute.
Since
the domain name is not being used at all, Respondent is not making a
legitimate, non-commercial or fair use of the domain name.
Respondent
should be considered as having registered or reregistered the name in bad faith
because the domain name in dispute was registered, with full knowledge of the
famous trademarks, without having any existing connections to the marks;
respondent traffics in premium domain names that are confusingly similar to
established trademarks, trade names, and business names; Respondent passively
held the domain name by allowing it to remain dormant during the litigation and
by not using it or preparing to use it since the litigation’s resolution; and
respondent sold, auctioned, or intended to sell the domain name in dispute to
an individual or entity who should be considered as having a bad faith intent
to register the domain name.
By the
time Respondent became involved with trafficking the domain name in dispute, Complainant had developed a famous trademark and
registered that trademark. The trademark registration provides constructive
knowledge to Respondent and Mr. X of the existence of DINGBATS's trademark.
Auctioning or registering the domain name in dispute while having this
knowledge constitutes bad faith. The registration that was carried out by Mr. X
or that Mr. X intended to carry out became chargeable to Respondent as trustee
when the domain name became trust property. Therefore, registration under these
circumstances is bad faith on Respondent's part as trustee.
If
Respondent becomes the owner of the domain name, they will reregister the
domain name to themselves. That registration will occur with Respondent's
actual knowledge of the famous trademark. Therefore, registration under these
circumstances will be bad faith on Respondent's part on its own behalf.
Respondent
regularly offers domain names as they become available, presumably using
automated programs to find those names. Respondent does not consider whether
the domain names it traffics in are confusingly similar to trademarks of third
parties. Turning a blind eye to Complainant’s trademarks and profiting in
confusingly similar domain names by auctioning them is bad faith.
In this
case, Respondent had at least constructive knowledge of the domain name, and
could have easily had actual knowledge of the trademark rights if it had
bothered to do a simple search of the USPTO’s online trademark databases. Yet
respondent chose to traffic in the domain name nonetheless.
Keeping
this domain name tied up interfered with Complainant reflecting the mark in a
corresponding domain name. As Complainant will discuss more fully below, from
an informal perusal of email notifications from respondent, Complainant
documents more than 90 potential instances of this type of interference in a
single month. This constitutes a pattern of such conduct, which on the face of
the Policy is bad faith.
More specifically,
Respondent regularly traffics in domain names that are confusingly similar to
established trademarks, trade names, or business names. These domain names
achieve a higher valuation because of their similarities to these established
trademarks and names. As a point of reference, from the period of September 25,
2009 to October 23, 2009, respondent sent out emails offering at least 90 such
domain names. Respondent calls these types of domain names "TOP
DOMAINS" and advertises them as such. These domain names are "TOP DOMAINS"
in Respondent's parlance because they are more highly desirable and have a
higher monetary value than typical, newly created domain names. Of course, in
the case of domain names that are confusingly similar to established trademarks,
this enhanced value arises from Respondent's intent to sell the domain name to
someone who intends to sell it to the trademark owner or arises because the
rightful trademark owner has developed goodwill in the name.
If
Respondent becomes the owner of the domain in question, their business model
makes it clear that they will not use it for a bona fide business use. Instead,
they will attempt to sell it or hold it. The sale will be trafficking, which is
bad faith; passively holding it is bad faith, as well. The Policy does not
require Complainant to wait on Respondent's bad faith use to institute the
arbitration in this case.
Moreover,
Respondent or Mr. X allowed the domain name to remain dormant during
litigation. But some of the domain names that were a part of the litigation in
Canada remained active during the pendency of the litigation. This is evidence
that either Respondent or Mr. X could have negotiated an agreement with the
defendant in the litigation, best, to use the domain name if using the domain
name was important to implementing a particular business plan. There is no
evidence that either Respondent or Mr. X attempted to negotiate such an
agreement. This failure is evidence that the value placed on the domain name by
Respondent or Mr. X did not come from their expectation to use it to offer
goods or services, but rather came from its value to an owner of already
established trademark rights, such as Complainant.
If the
domain name where necessary or even useful for implementing a particular
business, an agreement to use it during the litigation would have been a
reasonable business course. But if the value arose from selling it, ultimately,
to be trademark owner, then allowing it to remain dormant during the pendency
of the litigation fully met respondent and Mr. X.'s business interests to
profit from trafficking in the domain name in a bad-faith manner. Since a
reasonable business plan would have implemented a different domain name or a
reasonable business person would have negotiated an agreement to use an
indispensable domain name during the litigation, the only conclusion to be
drawn is that no such business plan existed the value in domain name in dispute
arose from respondent and Mr. X's intention to ransom the domain name to the owner
of the famous DINGBATS trademark.
Finally,
Respondent auctioned this domain name to an entity that should be considered as
having registered the domain name in bad faith. Respondent auctioned and Mr. X
purchased the domain name immediately after its expiration, which is evidence
of bad faith on either party. At the time of the auction Mr. X had not used or
demonstrably prepared to use the domain name in dispute for a bona fide
offering of goods or services.
B. Respondent
Respondent contends that it operates a domain name marketplace, whereby sellers of domain names may list their domains for sale, and buyers may offer to purchase and purchase domains listed. The Respondent is not a registrar within the Registry System but it operates through a network of registrars in competing for the opportunity to assist customers in the registration of deleted domain names, i.e. domain names whose registrations have not been renewed by the previous registered owner of such names within the required time and have been dropped or deleted from the relevant Internet registry in accordance with the procedures within the Registry system.
In its Complaint, the Complainant discusses at length, the apparent reasoning for the Legal proceeding which resulted in the Respondents acquisition of the Domain Name. However, the Complainant has neglected to provide all of the details of the Respondents legal action. Rather, the Complainant has relied heavily on assertions made in the Legal Proceedings which were rejected by both the Ontario Superior Court of Justice, and subsequently on appeal. These assertions have no relevance in this proceeding. The chronology of the Domain Name and the court proceedings that resulted in the Domain Name being awarded to the Respondent shall be provided herein.
On or about September 1, 2004, Respondent
received a backorder from a customer for the domain.
On or about September 5, 2004, Respondent
acquired the domain on behalf of its customer.
On or about September 9, 2004, Respondent
received payment for the registration of domain from customer. The Respondent’s then Registrar Partner, Best
Registration Services (Registrar) registered the Domain in the name of the
Respondent’s customer.
On or about September 15, 2004, Registrar stole the Domain Name from
the customer and removed the whois data for Respondent’s customer, the then
owner of the domain. Registrar subsequently placed all stolen domain names in
an entity that was owned and controlled by the Registrar.
On or about September 28, 2004, and in
mitigation of its damages, the Respondent terminated its Agreement with the
Registrar. The Registrar refused to change the WHOIS information for the stolen
domain names to reflect the rightful owners of the same, knowing that harm to
the Respondent’s business, trade and commercial prospects would ensue.
Consequently, the Respondent was forced to
reimburse the affected customers for the domain names held illegally by the
Registrar including the rightful owner of domain from whom the domain was
stolen. The Respondent suffered damage
to its business, trade and commercial interests, its reputation and
goodwill.
On or before October 25, 2004, the Respondent
commenced a legal proceeding
against Registrar regarding the group of domain names for relief
of damages.
On or before December 8, 2006, a decision by
the courts was handed down which awarded the group of domain names that had
been originally stolen to Respondent.
The Court ordered that the domain names be transferred to a registrar of
the Respondents choosing.
On or before February 14, 2008, Registrar
appealed the decision of the Ontario Superior Court of Justice.
On or before March 14, 2008, the previous
decision was upheld in a court of appeal.
Respondent notes that throughout the legal proceeding, the courts agreed
with the position presented by Respondent and ultimately decided in Respondents
favour. Allegations made by Registrar in
the proceeding have been proven false by both the original court decision and
the court of appeal and therefore have no relevance to this proceeding.
The Respondent submits that it did not
acquire the domain name in bad faith and it has a legitimate interest in the
Domain Name on the basis that the Domain Name was included in a court
settlement for damages (and such decision was subsequently upheld in a court of
appeal) which awarded the domain registration to Respondent.
The Complainant would have the panel believe
that it is well-known throughout the United States, and thus the Respondent
should have known about the Complainant and its mark when it acquired the
Domain Name. While the Respondent concurs that the Complainant may have rights
to the trademark DINGBATS, by virtue of the United States trademark
registration No’s.75/138,325, 77/302,199, 77/432,615, and 78/046,976 (the
Respondent notes that contrary to the Complaint, two of the Complainants said
trademark applications are indeed “DEAD” such rights are confined to the United
States only. The Complainant has neglected to produce evidence that it holds any
superior rights to the mark in Canada or that its mark is known in Canada, the
jurisdiction of the Respondent. This is highly relevant to the current dispute
as there have been several decisions under the Policy where a Panel has been
unable to infer knowledge of a Complainant’s marks, and hence bad faith because
the Complainant operated and owned marks in one country but the Respondent
operated in another country where the Complainant owned no mark Indeed, as the
Complainant and the Respondent reside in different jurisdictions, the
Complainants assertion that the Respondent should have known about the
Complainant is not valid.
The Complainant’s trademark is comprised of the dictionary term
“dingbat” which denotes a variety of connotations.
First, this term is commonly used in slang to mean an empty-headed or silly
person. This term can also be referred to as an object, such as a brick or
stone, used as a missile. Further, the term can be used to mean an unspecified
gadget or other small article, especially on whose name is unknown or
forgotten. Finally, the term is commonly used in printing to mean a
typographical ornament or symbol. Clearly the word “Dingbats” has little
inherent distinctiveness and therefore as a mark or feature of a mark should be
given limited scope of protection. The word “Dingbats” has been the subject of
many United States trade-mark registrations which stand in the name of various
third parties and have been used in association with a variety of wares and
services. These facts are supported and supplemented by the results of
electronic searches of the US trade-mark registrations. The genericness of this
mark is thus clear.
In the Complaint, the Complainant asserts
that it has divested many resources into its marks and thus the Respondents
acquisition of the Domain Name has a negative impact on the Complainants
efforts. However, while this may be the case, it was determined in Hood LLC
v. hood.com, FA0408000313566 [Nat. Arb. Forum- October 20th,
2004] that this cannot be a basis for determining that one has the rights to a
particular domain name. In Hood the Panel denied the
complainant’s domain name transfer request on the basis that while the
complainant had spent millions building secondary meaning in its marks, the
generic nature of the mark and the disputed domain name caused the panel to
decide in favor of the respondent. One of the panel’s reasons for finding Hood
generic was the fact that the term “hood” was used in several million websites.
Similar circumstances frame the current dispute, in that the term “Dingbats”
appears on over 1,310,000 websites.
Where a Complainant’s mark is generic there
is a presumption that a domain name registration has been made in good faith,
and given the reality that the Domain Name is derived from a mere generic term
as established above, the Complainant is unable to rebut this presumption.
Ultimately, it is clear that this is not a case in which the Respondent
selected a domain name incorporating a famous or distinctive mark that it
should have known it was not entitled to use. As such, the Respondent
respectfully submits that the Complainant has not demonstrated that the Domain
Name is confusingly similar to the Complainants mark, based on the generic
nature of the name in question.
In its Complaint, the Complainant makes
reference to the fact that because it was the Legal Registrant of the Domain
Name from 1996 to 2004, it is thus “known” by the Domain Name in dispute.
However, not only is the Complainant not known by the mark, as established above,
but the Respondent submits that it is also not known by the Domain Name. The
reality is that the Complainant has conducted business without use of the
Domain Name for five years. As such, it is unlikely that the complainant is
still known by this Domain Name. It is submitted therefore, that the general public
would be accustomed to differentiating the Complainants brand from the content
currently listed on the Respondents website and would not confuse the
Respondents Domain Name with the Complainants mark.
In addition to determining the right to the
mark, and the genericness of the name, the Panel shall also take into account
the nature of the wares, services and business of the parties in dispute. The
Complainant sells a brand of watches. The Respondent offers domain name
registration services. Indeed, the Complaint and the Respondent are not
Competitors. As such, it is unlikely that one would confuse the Respondents
acquisition of the Domain Name to be in affiliation with the Complainants broad
authority to sell watches under the trademark DINGBATS.
Given the difference in both the
jurisdiction and the services offered by the parties, the generic nature of the
Domain Name, and the fact that a substantial amount of time has elapsed since
the Complainant was the legal Registrant of the Domain Name, it is submitted
that an Internet user would not likely conclude that the Internet services
offered by the Respondent under the domain name <dingbats.com> are
offered by the same corporate body who sells a brand of watches under the
trademark DINGBATS. Indeed, the Complainant has failed to prove the first test
under section 4(a) (i) of the Policy.
Respondent did not register the domain name,
but merely acquired it as result of a recent legal proceeding. Further since
the Respondent’s acquisition of the Domain Name, the Domain Name has never been
offered for sale, for rent or otherwise.
In its Complaint, the Complainant asserts
“the Respondent traffics in premium domain names that are confusingly similar
to established trademarks, trade names, and business names” thus constituting a
pattern of conduct whose intention is to deprive trademark owners like the
Complainant of their right to reflect their names in a corresponding domain
name. Indeed, the Respondent did not intentionally register the Domain Name,
but was awarded it as a result of a court proceeding and therefore could not
have had such an intention. Not only this, but the Respondent submits that none
of its business practices reflect the definition “trafficking” under the ACPA.
As previously established, the Respondent co-ordinates an orderly marketplace
for domain name registration services whereby sellers of domain names may list
their domains for sale, and buyers may offer to purchase and purchase domains
listed. Further, the Respondent, through its network of Registrar Partners
competes for the opportunity to assist customers in the registration of deleted
domain names, i.e. domain names whose registrations have not been renewed by
the previous registered owner of such names within the required time and have
been dropped or deleted from the relevant Internet registry in accordance with
the procedures within the Registry system. Indeed, the sale of an available
Domain Name does not constitute a pattern of trafficking. In addition,
Respondent does not acquire domain names for which they do not have a customer
backorder. Respondent provides a service
to customers who wish to register their domains of choice. Indeed, many such customers have legitimate
prior rights to established trademarks, trade names and business names and
Respondent provides a valuable service to these customers to acquire their
domains. As such, the Respondent also does not fall
under provision (ii) above, as the Complainant has not shown, and indeed cannot
show, that the registration of the Domain Name is part of a pattern of conduct
whose intention is to deprive the Complainant of its right to reflect its name
in a corresponding domain name.
Furthermore at the time it acquired the Domain
Name, the Respondent had no knowledge of the Complainant, and thus could not
have had the intention to disrupt its professional activities. In addition, the Respondent is not a
competitor of the Complainant. Therefore, the Complainant cannot rely on
element (iii) to show bad faith.
Alas, the rest of the Complainants
assertions of bad faith are focused around clause (iv)
of the four pillared test as outlined above. However, each of the said
assertions made by the Complainant are either false or
immaterial based on the special circumstances surrounding the Respondents
acquisition of the Domain Name. The Respondent submits that it has not acquired
the Domain Name in bad faith. Nonetheless, such assertions are considered in
turn below.
Because the Respondent does not consider
whether the domain names it advertises for sale are confusingly similar to
trademarks of third parties, the Complainant suggests this constitutes “bad
faith”. The Complainant goes on to further
suggest that in order to rectify the Respondents apparent “bad faith”, it
should perform trademark searches for each domain name it acquires for sale.
However, the problem with these statements is two-fold. First, as the Panel
will note, a trademark claim can be made by anyone. As such, it is difficult,
if not impossible, to ask a commercial vendor such as the Respondent to form a
legal opinion as to the potential for infringement, particularly when there is
no indication of use upon which to base any form of determination. This is
doubly true with respect to areas of legal ambiguity, including the treatment
of generic names or dictionary words such as DINGBATS. Indeed, neither the
Respondent, nor its Registrar partners are qualified or accredited to
adjudicate trademark disputes. Such determinations are best left up to the
courts. Furthermore, as the Panel will note, each day, various administrators of top level
and country code domain names, including VeriSign, publish a list of domain
that they will be deleting. As over
70,000 domains are deleted every day, the Respondent continuously advertises,
using an automated process, various domains names that are going to be
available for sale. No human decision making is involved in the process of
determining which domain the Respondent will advertise for sale. The Algorithm
used in determining which Domain Names the Respondent will advertise is
determined by the number of backorders the Respondent receives for a particular
domain. In other words it is customer demand that regulates the popularity of domain
names and Respondent will only attempt to acquire domain names for which a
customer has placed a backorder. A trademark claim
can also be claimed in any number of legal Jurisdictions. As such, not only is
the Respondent incapable of conferring ones right in a particular domain name,
but requiring the Respondent to conduct such a vast amount of searches per day
is simply unreasonable. This is particularly true considering that Respondent
only acquires domains for which it has received a customer backorder and thus
would require Respondent to conduct a real-time UDRP-like validation for each
order it received in less than five days (the time during which backorders for
available names are accepted). Indeed,
while this claim is ultimately immaterial to the current dispute, the
Respondent has nevertheless established that it cannot be held accountable for
conducting business in bad faith on these grounds.
The Complainant also attempts to
characterize the Respondent as a cybersquatter for offering domain names to
consumers as they become available.
While this argument too is ultimately immaterial to the current dispute,
the Respondent will refute this assertion as well as it is simply both
inaccurate and unconvincing. Advertising domain names available for sale does
not make one a cybersquatter. Under the UDRP, the definition of a
“cybersquatter” is one that registers, traffics in or uses a domain name with
bad faith intent to profit from the goodwill of a trademark belonging to
someone else. The Respondent did not register the Domain Name to profit from
good will in the Complainant’s mark, but acquired it by virtue of a court
proceeding. The Complainant cannot prove that the Respondent inappropriately
acquired the Domain Name in order to profit from the Complainant’s good will,
as the Respondent’s interest in the Domain Name is entirely divorced from the
Complainant’s good will in the DINGBATS mark. In fact, the Respondent submits
that this is not a case of cybersquatting, but rather one of Reverse Domain
Name Hijacking. Indeed, the Complainant is making an attempt to secure a domain
name by making false cybersquatting claims against the Respondent, which
according to Paragraph 15(e) of the UDRP constitutes a filing of a complaint in
“bad faith”, and an abuse of the UDRP administrative process. Furthermore, the
Respondent’s normal business practice is to register only those names for which
a customer has placed a backorder. In
this context, Respondent is not the registrant of the domain names they acquire
as part of their normal business practice.
Finally, in its Complaint, the Complainant
asserts that “the Respondent is holding the domain name passively, which does
not represent a bona fide offering of goods and services.” However, this
argument too, is unfounded. As previously established, the Domain Name was
acquired by the Respondent as a result of a recent court proceeding. As the
Respondent is aware of the fact that passively holding a domain name does not
constitute a bona fide offering of goods and services, upon receipt of the
Domain Name, the Respondent immediately incorporated the same into a parked
page, which is intended to remain until the Domain Name can be further
developed. As the panel will note, a parked page performs several functions. In
addition to providing links for PPC advertisers, the Domain Name also includes
a sophisticated search engine and general informational links. The Panel will
note that none of the informational links contained on the current search page
refer to any of the Complainants products or services. Passive holding is
registering a domain name without using it. In this case the Respondent is
making several uses of the Domain Name both in connection with a bona fide
offering of goods and services and in connection with information services
constituting a fair use of the Domain Name. As such, the Complainant cannot
prove that the Respondent has intentionally attempted to attract internet users
to the respondent’s web site, by creating a likelihood of confusion with the
complainant’s mark, as there is nothing about the Respondent’s use of the
Domain Name which is contrary to the Complainants authority to provide its
services.
Ultimately, because the Respondent did not
intentionally register the Domain Name, but merely acquired it by virtue of a
legal proceeding, the Respondent’s situation does not fall within any of the
four circumstances which constitute bad faith under the policy. One cannot be
liable for registering a domain name in bad faith if that domain name was granted
as settlement by a court. It is the Respondents submission, therefore, that the
Complainant has not, and indeed cannot prove that the Respondent is guilty of
speculative and abusive registration by virtue of its acquisition of the Domain
Name. The Complainant has thus failed to prove the second test under section 4(a)(ii) of the Policy.
The Respondent submits that it has a
legitimate interest in the Domain Name pursuant of the Policy.
The Complainant makes various
references to the former Registrant and its apparent ill intentions in the
Domain Name. Specifically, the Complainant asserts that, because the former
Registrant has not used or demonstrably prepared to use the domain name in
dispute, this does not confer a bona fide offering of goods or services, thus
constituting illegitimate use. However, as the Panel will note, neither the
Respondent, nor the Complainant are in a position to confer ones interest in a
Domain Name. As previously established, such determination is best left up to
the courts. Not only this but contrary to the Complainants assertions, the
Respondent is not and never has been “affiliated” with the former Registrant.
The former Registrant operates at arm’s length to the Respondent. While the
Respondent and the former Registrant have a good customer relationship, that
relationship is no different from its relationships with other members of the
general public who are its customers. As
such, the former Registrant’s interest in the domain is immaterial to the
current dispute rendering this a moot point.
As previously established the Domain Name
was one of many acquired by the Respondent for the damages incurred by the
Respondent as a result of a rogue Registrar Partners’ wrongful interference
with the business, trade and commercial prospects of the Respondent. Because
the Domain Name is comprised of a common dictionary term, the Respondent hopes
to develop a brand and offer a bona fide service in association with the Domain
Name. As such, and until such brand can be developed, immediately after
acquiring the Domain Name it was incorporated into a Parked Page such that
Internet users who typed the Domain Name into their Internet browser were
directed to results of searches. These search results provide a sophisticated
search engine and general informational links for Internet users. This page was
produced so as to ensure the Domain Name is not simply being held passively.
Furthermore, nothing on the current page references any of the products or
services of the Complainant. It is clear that the Respondent is not using the
Domain Name with the intention to divert customers or to tarnish the
Complainant’s mark. Rather, the Respondent has a bona fide service interest in
the Domain Name.
Not only this, but at the time of the
Respondents acquisition and use of the Domain Name, the Respondent was not
aware of the identity of the Complainant, as the Respondent did not willfully
register the Domain Name. Furthermore, the Respondent’s acquisition and use of
the web site located at <www.dingbats.com > commenced well in advance of
the date that this Complaint was filed and prior to receipt by the Respondent
of the initial cease and desist letter dated July 8, 2009, sent by the
Complainant.
Although the Respondent submits that there
is no current demonstrable link between the Respondent and the Domain Name in
question, the reality is that there is also no demonstrable
link between the Complainant and the Domain Name, as the domain name is not a
personal name. The Domain Name is comprised of a common dictionary term,
which is one of many domains using the word for similar services on the
Internet. Further, while it has been determined that the Complainant has
acquired a right to the name, it has also been established that the name has
also been registered numerous times by independent third parties, for a variety
of wares and services. It is clear that the Complainant has coexisted with many
such domains in the past. It is simply justice that the Respondent be allowed
to coexist in this arena.
The Respondent is not using the Domain Name
with the intent to mislead or divert consumers or to tarnish the Complainant’s
mark. Rather, the Respondent is making fair use of the Domain Name by
incorporating it into a Parked page and thereby providing Internet users with
relevant information, in particular information relating to graphics and
design. Further, the Respondent has future plans to develop the site which too
constitutes fair use of the Domain Name.
As the Respondent’s use of the webpage
located at <dingbats.com> is in good faith, in furtherance of its
business plan and objectives, and in association with a provision of services,
the Respondent has a legitimate interest in the Domain Name. It is submitted
therefore, that the Complainant has not demonstrated that the Respondent is not
acting within the requirements set forth under section 4(a) (iii) of the
Policy.
The purpose of the Policy is to provide a
forum where clear cases of bad faith registration of .com domain names can be
dealt with expeditiously. The Policy is not intended to cover disputes between
two parties with legitimate interests in the domain name. The Respondent
respectfully submits that the Complainant has not demonstrated that a)
the Respondent’s Domain Name is confusingly similar to a trademark of the
Complainant in which the Complainant has rights; b) the Respondent has
registered the Domain Name in bad faith; and c) the Respondent has no rights or
legitimate interest in the Domain Name.
C. Additional Submissions
In its Additional Submission to the Response Complainant corrects
Respondent’s genericness arguments, discusses the relevance of Respondent’s
relationship to its former client, and clarifies the “special” circumstances
surrounding the registration of the domain name at dispute. Furthermore
Complainant mainly emphasizes that it has established all three elements
required under the ICANN Policy
In its Additional Submission Respondent contends at great length that
Complainant has not established all three elements under the ICANN Policy.
Further Respondent alleges that Complainant has engaged in reverse domain name
hijacking through the filing of the instant Complaint.
FINDINGS
The Panel finds that:
1. the Domain Name <dingbats.com> is confusingly similar to Complainant’s marks,
2. the Respondent has not established any right or legitimate interest in the Domain Name <dingbats.com> and
3. the Respondent has registered and is using the Domain Name <dingbats.com> 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 provides evidence it registered the DINGBATS mark with the
United States Patent and Trademark Office (“USPTO”) on November 26, 1996 (Reg.
No. 2,019,932). The Panel finds
Complainant’s registration of its DINGBATS mark with the USPTO sufficiently
establishes its rights in the mark under Policy ¶ 4(a)(i). See
Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a
trademark registration adequately demonstrates a complainant’s rights in a mark
under Policy ¶ 4(a)(i)); see also
Respondent’s disputed domain name contains Complainant’s entire DINGBATS
mark with the addition of the generic top-level domain (“gTLD”) “.com.” The Panel further finds the addition of a
gTLD is irrelevant for the purposes of a Policy ¶ 4(a)(i)
analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to the complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see
also Jerry Damson, Inc. v.
Tex. Int’l Prop. Assocs.,
FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic
top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the
Domain Name from the mark.”).
While Respondent contends that the <dingbats.com> domain name is comprised of common and generic terms and as such cannot be found to be identical to Complainant’s mark, the Panel is of the view 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 to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
The
Complainant must show that the Respondent has no rights or legitimate interests
in respect of the disputed domain name. The Respondent does not assume the
burden of proof, but may establish a right or legitimate interest in a disputed
domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(i) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(ii) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(iii) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The
Panel determines that the Complainant has discharged the onus of proof for the
second criterion: The Respondent has failed to demonstrate any legitimate right
or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Techs., Inc. v. Int’l Elec. Commc’ns, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corp. v. Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends Respondent is not commonly known by the disputed domain name. The WHOIS information lists the registrant as “Pool.com In Trust,” which bears no resemblance to the <dingbats.com> domain name. The Panel also finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant contends Respondent’s disputed domain name does
not resolve to an active website. The
Panel is of the view that Respondent’s failure to make an active use of the
disputed domain name is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Thermo
Electron Corp. v. Xu,
FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that
the respondent’s non-use of the disputed domain names demonstrates that the
respondent is not using the disputed domain names for a bona fide
offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Hewlett-Packard Co. v. Shemesh, FA 434145
(Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an
active use] of a domain name that is identical to Complainant’s mark is not a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of
the domain name pursuant to Policy ¶
4(c)(iii).”).
Complainant further
contends Respondent is a premium domain name reseller and that Respondent has
attempted to sell the disputed domain name to an unknown third-party. The Panel finds Respondent attempted to
market the disputed domain name. As a result the Panel finds this is evidence
Respondent lacks rights and legitimate interests in the disputed domain name
under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v.
Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a
respondent’s willingness to sell a domain name to the complainant suggests that
a respondent has no rights or legitimate interests in that domain name under
Policy ¶ 4(a)(ii)); see also Vance Int’l,
Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is
clear that auctioning domains does not constitute a bona fide offering of goods
and services or a legitimate noncommercial or fair use of domains.”).
Complainant contends Respondent has sold or
attempted to sell the disputed domain name to an unknown third-party. Since the Panel also finds Respondent has
attempted to sell the disputed domain name for an amount in excess of its
out-of-pocket registration costs, the Panel is of the view that Respondent has
engaged in bad faith registration and use under Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium
Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21,
2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some
accompanying evidence that the domain name was registered because of its value
that is in some way dependent on the trademark of another, and then an offer to
sell it to the trademark owner or a competitor of the trademark owner"); see also CBS Broad. Inc. v.
Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4,
2000) (“There is nothing inherently wrongful in the offer or sale of domain
names, without more, such as to justify a finding of bad faith under the
Policy. However, the fact that domain name registrants may
legitimately and in good faith sell domain names does not imply a right in such
registrants to sell domain names that are identical or confusingly similar to
trademarks or service marks of others without their consent”).
Furthermore, the Panel finds the list of bad faith factors enumerated
in Policy ¶ 4(b) is not meant to be exclusive.
See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”). Since the Panel agrees to Complainant’s
allegations that Respondent has failed an active use of the disputed domain
name, the Panel finds that Respondent’s failure to use the disputed domain name
in any manner is evidence of bad faith registration and use pursuant to Policy
¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding
that the respondent’s failure to make active use of its domain name in the
three months after its registration indicated that the respondent registered
the disputed domain name in bad faith); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith).
Reverse Domain Name Hijacking
Respondent has alleged that Complainant has
engaged in reverse domain name hijacking through the filing of the instant
Complaint as Respondent contends Complainant has never been famous or
well-known. According to Respondent the mere existence of a trademark should
not be sufficient to preclude a finding of bad faith by the Complainant. The
Panel finds that such an assertion is without merit in this case, and that
Complainant’s filing of the instant Complaint was based on a good faith belief
in its rights to the <dingbats.com> domain name through its trademark registration
of the mark, and as such, Complainant’s filing is not an abuse of the UDRP
Policy.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dingbats.com>
domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: January 20, 2010
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