National Arbitration Forum

 

DECISION

 

GS Ente rprises LLC v. Thierry Ehrmann

Claim Number: FA1005001324481

 

PARTIES

Complainant is GS Enterprises LLC (“Complainant”), represented by J. Elliot Alfred, of Craft Chu PLLC, Texas, USA.  Respondent is Thierry Ehrmann (“Respondent”), represented by Josette Mey, France.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <peaceandlove.com>, registered with NETWORK SOLUTIONS, LLC.

 

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.

 

Q. Todd Dickinson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 13, 2010.

 

On May 13, 2010, NETWORK SOLUTIONS, LLC confirmed by e-mail to the National Arbitration Forum that the <peaceandlove.com> domain name is registered with NETWORK SOLUTIONS, LLC and that the Respondent is the current registrant of the name.  NETWORK SOLUTIONS, LLC has verified that Respondent is bound by the NETWORK SOLUTIONS, LLC 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 May 14, 2010, Complainant submitted a First Amended Complaint to the National Arbitration Forum. 

 

On May 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 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 postmaster@peaceandlove.com.  Also on May 14, 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 June 2, 2010.

 

On June 8, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Q. Todd Dickinson

as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.     Complainant

Complainant contends that it is entitled to have the registration for the domain name <peaceandlove.com> transferred to it for the following reasons:

 

a.       That the domain name <peaceandlove.com> is identical to or confusingly similar to the Complainant’s trade or service marks registered in the U.S. Patent and Trademark Office, which are specified in Annexes A and B of the complaint, and that they have thereby established rights and legitimate interests to the use of the phrase “Peace & Love”;

b.      That the Respondent has no rights or legitimate interests in respect of the domain name <peaceandlove.com>,  in that Respondent has not used, nor shown demonstrable preparations to use the domain name <peaceandlove.com> in connection with a bona fide offereing of goods or services, or a legitmate non-commercial or fair use; nor is there evidence of Respondent being commonly known by the domain name; and   

c.       That the domain name <peaceandlove.com>  should be considered to have been registered and being used in bad faith, since the Respondent is purportedly passively holding the domain name and appears not to have plausible actual or contemplated active use of the domain name.

 

B.     Respondent

Respondent responds to Complainants allegations as follows:

 

a.       That there is a significant visual difference between “peace and love” and “peace & love” sufficient to distinguish the domain name and the trademark and its registrations;

b.      That the Respondent had a legitimate interest in registering the domain name “for a fair use”; and

c.       That the Respondent cannot be accused or adopting or using the domain name in bad faith because Respondent registered the domain name 10 years before Complainant filed for his trade and service mark registrations, and that he has never offered the domain name for sale or rent, and that the Complainant never approached Respondent about acquiring the domain name and that this is therefore attempt at “reverse domain name hijacking”.

 

FINDINGS

The Panel finds for the Complainant on all allegations, for the reasons stated below.

 

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.” Further, 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.

 

Accordingly, the Panel finds as follows:

 

Identical and/or Confusingly Similar

 

Complainant alleges it has rights in the PEACE & LOVE mark because it has registered the mark with the United States Patent and Trademark Office (“USPTO”) (e.g.,  Reg. No. 3,291,917 issued Sept. 11, 2007).  The Panel find thats evidence of USPTO trademark registration sufficiently establishes Complainant’s rights in the mark, regardless of where the Respondent lives or operates.  See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business), and Respondent has neither alleged nor proven that this is not sufficient to establish such right.

 

Complainant contends that Respondent’s <peaceandlove.com> domain name is confusingly similar to Complainant’s PEACE & LOVE mark because the disputed domain name merely replaces the ampersand in Complainant’s mark with the word “and” and adds the generic top-level domain (“gTLD”) “.com.”  The Panel finds that replacing the ampersand symbol with the word “and,” which carries the same meaning, does not distinguish the disputed domain name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i).  See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to the complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at <pge.com> because the ampersand symbol is not reproducible in a domain name).  The Panel also finds that the gTLD “.com” is not taken into account when evaluating confusing similarity under Policy ¶ 4(a)(i).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).’

 

While Respondent contends that the <peaceandlove.com> disputed domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds 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 or confusingly similar 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 s unprotectable is at odds with the anti-dissection principle of trademark law.”).

 

Rights or Legitimate Interests

 

The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and that the burden then shifts to Respondent to show that it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

To that end, Complainant alleges that Respondent is not commonly known by the <peaceandlove.com> domain name.  The WHOIS information for the disputed domain name lists the registrant as “Thierry Ehrmann,” which the Panel finds to be evidence that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests in the disputed domain name according to Policy ¶ 4(c)(ii).  See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

Furthermore, Complainant argues that Respondent lacks rights and legitimate interests in the <peaceandlove.com> domain name because Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.  Specifically, Complainant contends that Respondent is not making any use of the disputed domain, as all attempts to visit the disputed domain name fail to resolve to any website or online content. 

 

The Panel finds that Respondent’s failure to make active use of the <peaceandlove.com> domain name signals a lack of rights and legitimate interests according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).  See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website.  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).”); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name).

 

Accordingly, the Panel finds that the Complainant has established a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).

 

Respondent’s primary arguments attempting to rebut the Complainant’s allegations are that he is a registered artist and author and that he registered the domain name “with a view towards using it as a window for his interest in sociology and a possible study of the hippie movement”, and that is not customary for authors to reveal their projects or book titles before publication, and the domain name was registered ten years before the applications for U.S. trade and service marks were made.

 

The Panel notes that Respondent’s plans to use the disputed domain name in relation to his work on sociology and the hippie movement may satisfy Policy ¶ 4(c)(i) or 4(c)(iii) as a bona fide offering of goods or services or a legitimate noncommercial or fair use.  See IG Index PLC v. Index Trade, D2000-1124 (WIPO Oct. 16, 2000) (finding that the respondent has rights in the domain name because the respondent’s claimed use of the domain name is a “plausible explanation” to which the panel must give weight).  However, in this case, the Panel does not find the Respondent’s rebuttal compelling.  Even if one accepts the premise that Respondent was intending to use the domain name in such a project, the fact that 10 years has passed and Respondent has offered up no evidence of the actual use of the domain name for this purported purpose weighs heavily against his argument.  While the Panel appreciates the need to sometimes keep such projects confidential, Respondent has not alleged nor shown that that is what he was doing in this case, nor offered any compelling rationale for such confidentiality in this case.  The Panel therefore finds that Respondent has not met his burden of demonstrating that it does have rights or legitimate interests sufficient to rebut Complainant’s prima facie case.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent registered and is using the <peaceandlove.com> domain name in bad faith because Respondent is not making an active use of the disputed domain name or displaying any online content on the resolving website.  The Panel finds that Respondent’s failure to make active use of the disputed domain may indicate bad faith registration and use according to Policy ¶ 4(a)(iii).  See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).   In this case, the Panel finds it troubling that Respondent apparently has not made substantial use of the domain name in any way other than to post a single page of apparent art work, for over 13 years.  (The record does not indicate how long this particular post has been present.)  However, the Panel is also mindful of the high burden required for an actual showing of bad faith for non-use alone.

 

While prior panels have found passive holding constitutes bad faith, these findings typically occur: (1) when the respondent failed to make active use of a domain name and the complainant’s rights in a mark predated the respondent’s registration; or (2) when the respondent registered a domain name that was identical or confusingly similar to a famous trademark and the surrounding circumstances justified a finding of bad faith.

 

Panels have found failure to make active use of a domain name can constitute bad faith use when the domain name registration occurred after the complainant acquired rights in a mark.  See Accor v. Value-Domain Com, Value Domain, D2009-1797 (WIPO Feb. 8, 2010) (finding bad faith use where respondent passively held the domain name and the domain name registration occurred approximately 19 years after the complainant had filed trademark registrations in the mark); see also OneWest Bank, FSB v. Jacob Zakaria d/b/a EQ Funding, FA 1328894 (Nat. Arb. Forum July 20, 2010) (the panel found bad faith use where respondent failed to make active use of the disputed domain name and the respondent registered the domain name approximately 7 years after the complainant registered its trademark with the USPTO).  However, the Panel distinguishes the present case from these decisions because Complainant registered the <peaceandlove.com> domain name on April 3, 1997, approximately 10 years before Complainant’s registration of the PEACE & LOVE mark with the United States Patent and Trademark Office (“USPTO”) (e.g.,  Reg. No. 3,291,917 issued Sept. 11, 2007). 

 

Prior panels have also found passive holding qualifies as bad faith use when the respondent registered a domain name that was identical or confusingly similar to a very famous or distinctive trademark and the overall circumstances justified such a finding.  For example, in Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006), the panelist, Professor Darryl C. Wilson, found that the respondent should have known of the DISNEY mark because it is domestically and internationally famous.  The panelist concluded that the respondent’s failure to use the <disneyparks.com> domain name seven years after its creation date supported a finding of use in bad faith.  In this case, the complainant’s rights also predated the respondent’s registration of the disputed domain name.  Additionally, in eBay Inc. v. xu kefei (kefei xu), D2008-0481 (WIPO July 7, 2008), the panelists found the respondent’s inactive use constituted bad faith use. 

 

Here, the panelists relied on Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).  In Telestra, the panel held that passive holding can, in some circumstances, support a finding of use in bad faith.  Id.  In particular, the panel relied on five factors:

 

(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,

(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,

(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and

(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.  Id.

 

Overall, the panelists in Disney and eBay found the complainant’s famous mark, combined with other extenuating circumstances, justified a finding of bad faith use based on the respondent’s passive holding of the domain name. 

 

By contrast, the Panel in this case finds that Complainant’s PEACE & LOVE mark does not possess the same fame or distinctiveness as DISNEY or EBAY (Telestra factor 1), nor has the Complainant presented evidence to the contrary.  In addition, Respondent provided evidence of contemplated good faith use (Telestra factor 2).  Respondent stated he intends to eventually use the <peaceandlove.com> domain name to display content relating to Respondent’s studies, essays and databases on sociology and the hippie movement.  Furthermore, Respondent did not attempt to hide his true identity.  Instead, he listed his personal name, “Thierry Ehrmann,” as the registrant (Telestra factor 3).  The record also does not indicate Respondent provided false contact details, in breach of its registration agreement (Telestra factor 4).  Lastly, in contrast to the respondents in Disney and eBay, Respondent’s registration date occurred before Complainant existed, and over a decade before Complainant acquired trademark rights in the PEACE & LOVE mark.  Therefore, while troubled again by the length of time that the passive holding has occurred, the Panel finds, given the particular circumstances surrounding this case, that Respondent’s passive holding of the <peaceandlove.com> domain name does not constitute use in bad faith pursuant to Policy ¶ 4(a)(iii).

 

DECISION

Complainant having failed to establish all three elements required under the ICANN Policy, in particular that the domain name was registered and used in bad faith, the Panel concludes that relief shall be DENIED.

 

 

Q. Todd Dickinson, Panelist
Dated: August 5, 2010

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum