Joseph L. Carpenter v. Foresight.com and Andy Booth
Claim Number: FA1004001319483
Complainant is Joseph L. Carpenter (“Complainant”), represented by Erik M. Pelton, of Erik M. Pelton &
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myschool.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Anne Wallace and Christopher Gibson as Panelists, Richard Hill as Presiding Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 15, 2010.
On April 16, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <myschool.com> domain name is 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 April 21, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on April 21, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on May 10, 2010.
A timely Additional Submission from the Complainant was received and deemed to be compliant with Supplemental Rule 7 on May 17, 2010. A timely Additional Submission from the Respondent was received and deemed to be compliant with Supplemental Rule 7 on May 24, 2010.
On May 20, 2010, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Anne Wallace and Christopher Gibson as Panelists and Richard Hill as Presiding Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant alleges that he has used MYSCHOOL® as a trademark and brand name in connection with online information and advertisements in the field of education since at least December of 2008. He operates his website in connection with the domain name <myschool411.com>. And he states that the disputed domain name is identical (in the sense of the Policy) to his MYSCHOOL trademark.
According to the Complainant, he learned some time in 2009 that the disputed domain name was being used to redirect traffic to competing web sites and sent a cease and desist letter to the previous owner of the disputed domain name. In the fall of 2009, that previous owner offered to sell the disputed domain name to the Complainant for US$ 25,000, later reduced to US$ 15,500. In December 2009, the disputed domain name was sold to the Respondent.
The Complainant states that the disputed domain name is being used solely for the purpose of serving sponsored links and generating click through advertising revenue. Consequently, the Respondent has no rights or legitimate interests in the disputed domain name as it is set up solely to run an advertising service through use of an advertisement service, possibly Google Adsense or DomainSponsor.
According to the Complainant, the Respondent registered and is using the disputed domain name in bad faith because it was registered after the Complainant’s mark; because it was transferred to the Respondent after the Complainant sent a cease and desist letter; because the Respondent registered and is using the domain name primarily for the purpose of disrupting the Complainant’s business; and because the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or the advertisements thereon.
Further, says the Complainant, confusion arises because the site connected to the disputed domain name displays a “Myschool.com” logo in the upper left corner.
The Respondent states that the MYSCHOOL.COM mark has been used in conjunction with educational information and resources services since April 4, 1994, until December 2009 when it was purchased, assigned, and transferred to the Respondent, along with the goodwill of the business, for the sum of US$ 12,700. The mark has achieved acquired distinctiveness and, therefore, has obtained substantial common law rights. An application for registration has been filed in 2010.
Alternatively, says the Respondent, the phrase “MY SCHOOL” is consists of common generic terms and the Respondent has fairly used the terms to describe the services that it offers. The Complainant has offered no evidence to support its assertions that the Respondent does not have rights in the disputed domain name, or that it registered and is using the disputed domain name in bad faith.
Indeed, continues the Respondent, the Respondent was not aware of the Complainant when it acquired the disputed domain name and the mark MYSCHOOL.COM.
The Respondent is in the business of locating generic domain names the reflect projects that the Respondent is interested in developing and does not engage in cybersquatting, is not a domain name aggregator and has not been a party to any other Policy proceedings.
The Respondent alleges that, in April 1996, the previous owner of the disputed domain name created a web site for educational services, specifically for teaching children about the Internet. In June 2008 the domain name was redirected to an advertising platform that contained links associated with educational institutions and services. This is a legitimate use of the disputed domain name, which is generic in nature.
According to the Respondent, it is well established under the Policy that domain names containing common dictionary words may be registered in good faith and, per se, establish the Respondent’s legitimate interest. A person may register such a common, generic, word on a first come, first served basis. The Respondent cites precedents to this effect.
Further, says the Respondent, it is well established under the Policy that, where there is a trademark or service mark corresponding to ordinary terms as is the case here, bad faith registration and use can only be proven if there is evidence that the Respondent registered the domain name “specifically to sell to the Complainant” or that the “value of the domain derived exclusively from the fame of the trademark”. The Respondent cites precedents to this effect. But, in the present case, there is no evidence to support such conclusions. The Respondent acquired the disputed domain name simply because there were common law rights associated with it. Moreover, the term MY SCHOOL is generic.
The Respondent alleges that the Complainant brought this action in bad faith and thus the Panel should find reverse domain name hijacking. The Complainant does not present any evidence to support its allegations, and it knew, or should have known, that it could not have exclusive rights to the term MY SCHOOL.
The Respondent presents some additional arguments that are not summarized here because the Panel does not consider them relevant.
C. Additional Submissions
In his Additional Submission, the Complainant states that the Respondent has not proven that it has common law rights in the term MY SCHOOL and he disputes the reliability of the evidence offered by the Respondent. In addition, the Complainant presses its case, reiterating the arguments presented in the Complaint. Further, he refutes the additional arguments of the Respondent that are not summarized above.
In its Additional Submission, the Respondent refutes the Complainant’s allegations regarding its trademark and the reliability of its evidence. In addition, the Respondent presses its case.
The previous owner of the disputed domain name used it to provide a web site offering information on educational products and services, including advertising links.
The previous owner of the disputed domain name had common law rights in the mark MYSCHOOL.COM.
The Complainant made a firm offer to purchase the disputed domain name from the previous owner, but it was sold to the Respondent for a higher price.
The Respondent acquired the disputed domain name, and the associated common law rights, and uses the disputed domain name to provide advertising links to educational products and services. The purchase agreement, dated December 2009, explicitly includes trademark rights associated with the domain name.
The disputed domain name consists of the generic terms “my” and “school”.
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 Complainant has provided evidence that it has trademark rights in the mark “MY SCHOOL” and it is obvious that the disputed domain name is identical to that mark.
The Respondent alleges (and has provided evidence to support the allegations, even if such evidence is disputed by the Complainant) that it has rights and legitimate interest in the disputed domain name because the Respondent has concurrent rights in the MYSCHOOL.COM mark, which was established under common law as far back as 1994 by the previous owner of the disputed domain name. When the Respondent purchased the disputed domain name from its predecessor in interest in December 2009, the Respondent also acquired all rights, title and interest, goodwill associated with the disputed domain name and the service mark MYSCHOOL.COM. The Panel finds that these facts are evidence of Respondent’s concurrent rights in the disputed domain name.
Further, the disputed domain name is composed of the common, generic, words “my” and “school” and is being used to advertise products related to those words, namely educational products and services. Thus, the Panel finds that the Respondent does have rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also The Knot, Inc. v. In Knot We Trust LTD, D2006-0340 (WIPO June 16, 2006) (landing page was not legitimate where the domain name, knot.com, was being used for links related to wedding planning; that use was not directly linked to the generic meaning of the word “knot” but rather appeared designed to take advantage of the trademark meaning of the mark THE KNOT, which is used as a mark for a well-known wedding planning website). In Advanced Drivers Educ. Prods. & Training, Inc. v. MDNH, Inc., FA 567039 (Nat. Arb. Forum Nov. 10, 2005), the Panel found that the disputed domain name was not used in the trademark sense, but was “a descriptor of the site’s intended content or theme.” Therefore, the Panel found that the Complainant had failed to prove that Respondent lacked any rights or legitimate interests in the disputed domain name. Similarly, in Multicast Media Networks, LLC v. MDNH, Inc., FA 434268 (Nat. Arb. Forum Apr. 28, 2005), the Respondent operated a pay-per-click search engine from which the Respondent derived revenue to post advertisements to various goods and services. The panel in that case found that “[t]his was a bona fide use within the meaning of ¶ 4(c)(i), particularly in light of the extended period of such use.”
It goes without saying that this finding is without prejudice to what a national court might or might not conclude if one of the parties chose to initiate a national action under national law.
The Panel also notes that a national court would be a more appropriate venue than the present proceedings to consider and resolve the Complainant’s allegations regarding the reliability of the evidence presented by the Respondent.
The Panel finds that the Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii), because he provides insufficient evidence to support his allegations. 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).
Further, since the Panel has concluded that that Respondent has rights and legitimate interests in the disputed domain name, the Panel also finds that the Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Indeed, as noted above, the disputed domain name is comprised of common generic terms, which the Respondent was free to register and use. See Zero Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (“Common words and descriptive terms are legitimately subject to registration as domain names on a ‘first-come, first-served’ basis.”); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
The Respondent requests the Panel to find that the Complainant has engaged in Reverse Domain Name Hijacking. That term is defined in Paragraph 1 of the Rules as:
Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.
The general conditions for a finding of bad faith on the part of the Complainant are well stated in Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO Oct. 18, 2000):
Clearly, the launching of an unjustifiable Complaint with malice aforethought qualifies, as would the pursuit of a Complaint after the Complainant knew it to be insupportable.
These conditions are confirmed in Goldline International, Inc. v. Gold Line, D2000-1151 (WIPO Jan. 4, 2001) and Sydney Opera House Trust v. Trilynx Pty. Limited, D2000-1224 (WIPO Oct. 31, 2000) (where the condition is stated as “the respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge”), which in turn cites Plan Express Inc. v. Plan Express, D2000-0565 (WIPO July 17, 2000).
Although the Panel has ruled for Respondent, there is nothing in the record to indicate either malice aforethought or harassment by the Complainant. It is true that the Complainant pursued the Complaint (by filing an Additional Submission) after he should have realized that it was not sustainable, because the Response presented the Respondent’s case clearly. However, the Additional Submission also rebutted certain allegations by the Respondent that the Panel has not summarized because it considers that they were not relevant for the case. Thus, the Complainant did have a legitimate reason for filing his Additional Submission.
Accordingly, the Panel denies the Respondent’s request for a finding of Reverse Domain Name Hijacking.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. The request for a finding of Reverse Domain Name Hijacking is also DENIED.
Richard Hill, Presiding Panelist
Christopher Gibson, Panelist
Anne Wallace, Panelist
Dated: June 2, 2010
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