duPont Publishing, Inc. v. Simon S.
McNally
Claim Number: FA0212000137169
PARTIES
Complainant
is duPont Publishing, Inc., St.
Petersburg, FL (“Complainant”) represented by J. Douglas Baldridge, of Howrey
Simon Arnold & White.
Respondent is Simon S. McNally,
Lancashire (“Respondent”) represented by Simon
S. McNally.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <dupontregistry.biz>,
registered with CSL COMPUTER SERVICE
(D.B.A. JOKER.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.
Edward
C. Chiasson, Q.C. as Panelist.
PROCEDURAL HISTORY
The
Complainant submitted a Complaint to the National Arbitration Forum (the
“Forum”) electronically on December 18, 2002; the Forum received a hard copy of
the Complaint on December 19, 2002.
On
December 20, 2002, CSL COMPUTER SERVICE (D.B.A. JOKER.COM) confirmed by e-mail
to the Forum that the domain name <dupontregistry.biz>
is registered with CSL COMPUTER SERVICE (D.B.A. JOKER.COM) and that the
Respondent is the current registrant of the name. CSL COMPUTER SERVICE (D.B.A. JOKER.COM) has verified that
Respondent is bound by the CSL COMPUTER SERVICE (D.B.A. JOKER.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 20, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of, 2002 by which the Respondent could file a Response to the Complaint, was
transmitted to the 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@dupontregistry.biz by e-mail.
A
timely Response was received and determined to be complete on January 9, 2003.
On
January 13, and 20, 2003, the Complainant and the Respondent respectivley filed
timely additional material.
On January 22, 2003, pursuant to the Complainant’s
request to have the dispute decided by a single-member
Panel, the Forum appointed Edward C.
Chiasson, Q.C. as Panelist.
RELIEF SOUGHT
The
Complainant requests that the domain name be transferred from the Respondent to
the Complainant.
A. Complainant
The following information derives from the Complaint.
The Complainant publishes magazines devoted to luxury items,
including without limitation, automobiles, yachts and homes. These publications target the international
high-end luxury market and attract advertisers that promote collectible,
customized and luxury goods to affluent customers.
The Complainant first published the duPont
REGISTRY magazine in 1985 as an international forum for owners or dealers in
exotic, collectible and luxury automobiles.
Since then the Complainant has expanded to separate
magazines devoted to luxury yachts and homes.
The magazines include: A BUYERS GALERY OF FINE BOATS; A BUYERS GALLERY
OF FINE AUTOMOBILES; A BUYERS GALLERY OF FINE HOMES (“the duPont REGISTRY
publications.") On each of these
publications the duPont REGISTRY mark is prominently displayed to identify the
source of the magazine.
The Complainant's magazines are distributed in a number of
international jurisdictions, including the United States and the United
Kingdom.
The Complainant also has developed a significant presence on
the Internet, including its website accessible through the address
<dupontregistry.com>. Four to
five million persons each month obtain access to the Complainant’s web site
connected with this domain name. The
Complainant’s website includes the duPont REGISTRY publications, as well as
commentary and opinions from affluent celebrities.
In connection with the duPont REGISTRY publications, the
Complainant owns the following United States trademark applications, among
others (the “duPont REGISTRY marks”):
|
Trademark |
Country |
Serial No. Registration No. |
Filing |
Exhibit Number |
|
DUPONTREGISTRY.COM |
U.S. |
2,616,090 |
7/2/96 |
4 |
|
DR DUPONT REGISTRY (Stylized) |
U.S. |
75/635,068 |
1/28/99 |
5 |
|
DUPONT REGISTRY A BUYERS GALLERY OF FINE AUTOMOBILES (Stylized) |
U.S. |
76/424,835 |
6/18/02 |
6 |
|
DUPONT REGISTRY A BUYERS GALLERY OF FINE BOATS (Stylized) |
U.S. |
76/424,836 |
6/18/02 |
7 |
|
DUPONT REGISTRY A BUYERS GALLERY OF FINE HOMES (Stylized) |
U.S. |
76/424,837 |
6/18/02 |
8 |
For over fifteen years, the Complainant
has prominently and extensively used, promoted, and advertised its duPont REGISTRY
mark and more recently its <dupontregistry.com> domain name. The Complainant has spent millions of
dollars promoting its magazines through varied promotional and advertising
media.
By virtue of the Complainant’s extensive marketing of its
duPont REGISTRY magazines, the duPont REGISTRY marks and domain name have
become recognized by high-end luxury consumers throughout the world as
designating the Complainant as the source of the publications so marked.
A recent newscast referred to the Complainant as the “world
famous duPont REGISTRY” and a feature story about the Complainant on
“Lifestyles of the Rich and Famous”, which was run dozens of times throughout
the United States and internationally, focused on the fame of duPont REGISTRY
among the “rich and famous.”
The Respondent registered the subject
domain name on November 14, 2001, which was after the duPont REGISTRY marks
achieved consumer recognition.
duPont REGISTRY is a distinctive term which, in composite
form, has no meaning outside its use as a means to identify the Complainant as
a source of certain products and services.
The Respondent is not a licensee of the
Complainant and is not otherwise authorized to use the Complainant’s marks for
any purpose.
The Respondent is not known commonly by the
subject domain name.
The Respondent has made no efforts to develop an
active web site in connection with the subject domain name before or since
registering the name as is evidenced by The Administrative and Technical
Contact's "Domain Under Construction" page to which the subject
domain name resolves, that is, the Respondent currently is making no use of the
subject domain name.
The Respondent registered the subject
domain name with Joker.com after the Complainant’s adoption, use and
applications for its duPont REGISTRY marks, but it has
held the subject domain name for over a year without making any apparent steps
to activate it.
B.
Respondent
The following information derives from
the Response.
The
Respondent has no interest in <dupontregistry.com> in the United States
and does not wish to sell, promote or manufacture goods in the United States.
The
Respondent is the Managing Director of Dupont Registry Limited, a limited
company incorporated in England.
The
Respondent denies that he has committed any deliberate wrong-doing and says
that he owns the British trademark for dupont registry. He asserts that the Complainant has
infringed his trademark rights by using the words “dupont registry” on its magazines.
The
Respondent states that it does not wish to sell the subject domain name.
Any
delay developing the site to which the subject domain resolves was due to a
very serious injury to the Respondent which left him in a coma and in hospital
for a long time.
C.
Additional Submissions
The following information derives from
the Complainant’s additional submission.
The
date of incorporation of the Respondent’s company was January 6, 2003 and on
the basis of various searches, there is no indication that the company is
active. There is no telephone listing
for the company.
The
Respondent does not have a trademark registration for the words “dupont
registry”. It merely has applied for
one. The application has not been
published for opposition and when it is, the Complainant will oppose.
Notwithstanding
the Respondent’s “illness” he has had “…a significant amount of time to develop
his web site”. He was healthy enough to file a trademark application in August
2002 and to register his company in January 2003.
The
Respondent’s trademark application covers essentially the same goods and
services as the Complainant’s marks.
The
following information derives from the Respondent’s addition submission.
Neither
the Respondent not his company is listed in any telephone directories to avoid
“…many pointless calls and junkmail from either sales people or non lead
enquiries”.
The
corporate search appended to the Complainant’s additional submission describes
the Respondent’s company as active.
The
Respondent has been very busy and had no reason to incorporate until 2003. He states that it “…does take time if your
learning website construction with good security from scratch”.
The
Respondent states that he has “…no reason to divert customers in bad faith”.
The
Respondent’s “…coma was not due to illness, it was caused by bodily injury,
which takes a long time for recovery”.
In
answer to the Complainant’s contention that the he was well enough to apply to
register his trademark and company, but did not develop his web site, the
Respondent states that “[t]his is because I have trouble understanding design
and running of a website but have the knowledge of running a company”. He asserts that: “I do not want to design a
cheap website as this rubs off [sic] on my company…I’m [sic] not in a rush at
the moment due to been very busy. I am
setting everything up slowly but surely as I do not want to cause customer
complaints due to domain crashing or un-answered emails”.
PARTIES’ CONTENTIONS
Complainant
The Complainant
relies on its registration and use of the words “dupont registry”. It asserts that the subject domain name is
either identical or confusingly similar to the Complainant’s marks and states:
“[a]ny difference between [the Complainant’s] duPont
REGISTRY marks and [the subject] domain name is an irrelevant distinction which
does not change the confusing similarity between the terms.
A
lack of legitimate interest is said to be evidenced by the Respondent’s lack of
use of the subject domain name and the fact that the Respondent has not been
authorized by the Complainant to use its mark.
Registration of the Respondent’s company was after this proceeding was
initiated. The Respondent must have
known about the Complainant and his trademark application is for essentially
the same products marketed by the Complainant.
The Respondent is not known commonly by the words “dupont registry”.
Similar
facts are relied in support of the contention that the subject domain name has
been registered and is being used in bad faith. The Respondent’s lack of preparation
of a web site is said to constitute passive use.
Respondent
The
Respondent does not dispute the existence of the Complainant’s mark or its
relationship to the subject domain name.
The
Respondent asserts that he has no interest in the Complainant and does not want
to “sell/promote or manufacturer goods within the USA”. He asserts that he owns the trademark
“dupont registry” for the United Kingdom.
Any
delay was caused by an injury and the need to understand the required
technology.
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 relies on a number of decisions in previous domain name
disputes. While these are neither
controlling nor binding on this administrative panel, reference to them often
is of assistance. This case must be
decided within the context of the Policy and the facts presented by the
parties.
Identical
or confusingly similar
The
Complainant’s position on the first issue is somewhat ambiguous. It contends that the subject domain name is
identical or confusingly similar to the Complainant’s marks. The two are not
synonymous and require different considerations. The Complainant argues that the subject domain name is
confusingly similar, because if differs with the Complainant’s marks only by
the addition of .biz.
The
addition of .biz is of no consequence.
In
any event, the Respondent contests neither the Complainant’s rights in the
words “dupont registry” nor their relationship to the subject domain name.
The
Administrative Panel is satisfied that the Complainant has met the requirements
of paragraph 4(a)(i).
Legitimate
interest
The
Complainant points to many of the usual indicia: a lack of legitimate interest;
no authorization; a lack of use;
not known by the words “dupont registry”.
The Respondent offers an explanation for the latter, but the Complainant
reviewed the available time and questions the Respondent’s explanation.
The Complainant does not state when it
first learned of the Respondent’s registration of the subject domain name and
provides no information that it contacted or attempted to contact the
Respondent, but it contends that the Respondent knew of the Complainant’s marks
at the time it registered the subject domain name. The Respondent does not deny this contention.
Although
the Respondent incorporated a company, his timing is suspect. This proceeding
was initiated on December 18, 2002. The
Respondent was notified on December 20, 2002.
He asserts that he had no prior need to incorporate and that neither he
nor his company are in any telephone directories in order to avoid “…many
pointless calls and junkmail form either sales people or non lead enquiries”.
The
Respondent notes that the corporate search material supplied by the Complainant
shows his company as “active”. Nothing
turns on this fact. The company was incorporated only recently and would be
shown as such. The Respondent gives no
indication of what activity is planned for the company or when it will
undertake business. There is no
explanation why he felt it necessary to incorporate in January 2003.
The
delay in developing a web site is said by the Respondent to have been caused,
in part, by his injury, but also by a lack of understanding of technology and a
desire not to offend potential customers by poor technological service.
The
only information concerning the Respondent’s intended commercial interests is
provided by the scope of activity described in his trademark application. It was made some time after the registration
of the subject domain name.
The
facts alluded to by the Complainant support an inference that the Respondent
does not have a legitimate interest in the subject domain name. It is apparent that the Complainant has been
active in the United Kingdom. The
Complainant asserts that the Respondent must have known of that activity when
it registered the subject domain name and the Respondent does not deny the
assertion. The fact coupled with no
information concerning the proposed business activity of the Respondent further
supports the Complainant’s position.
The
Administrative Panel is satisfied that the Complainant has met the requirements
of paragraph 4(a)(ii).
Bad faith
A
finding that a respondent does not have a legitimate interest in a domain name
that is identical or confusingly similar to a mark does not lead automatically
to a conclusion of bad faith, but the facts that support the finding may be
relevant.
In
this case, the Complainant relies on the alleged notoriety of its mark and its
use of its mark and asserts that the Respondent must have known of the
Complainant and its use prior to registering the subject domain name. The Respondent’s subsequent trademark
application covers the products that the Complainant sells.
The
timing of the Respondent’s registration of his company tells against him. His explanations for delay are somewhat
contradictory or, at least, inconsistent.
The
Respondent denies that he intends to sell the subject domain name and the
Complainant offers no information that it has made any effort to acquire the
subject domain name from the Respondent.
It is usual for respondents to do so.
In addition, it is helpful for an administrative panel to know when a
complainant first learned of the domain name in issue. The matters weaken the Complainant’s case.
A
domain name dispute is not usually a forum in which to resolve disputes
concerning the ownership of trademarks.
It also has a limited capacity to consider contested issues of
fact. This case raises both matters,
albeit somewhat indirectly.
The
Administrative Panel does not opine on the legitimacy of the Respondent’s
United Kingdom trademark application save to note that the Respondent’s
assertion that “I own the trademark” was not accurate.
The
factual contest in this case is contextual.
There are few facts that are controverted directly. It is the inferences from the facts that
engage the issues. The Administrative
Panel must decide this case based on its overall assessment of the facts and
context of the dispute.
In
summary: the Respondent knew of the Complainant and its mark at the time the
subject domain name was registered; there has been no use of the subject domain
name and the Respondent’s explanations for his inactivity are unsatisfactory;
there is no apparent business plan; passive use of the subject domain name
blocks the Complainant from acquiring it.
The
Administrative Panel is satisfied that the Complainant has met the requirements
of paragraph 4(a)(iii).
FINDINGS
The subject domain name is identical to
the Complainant’s marks.
The Respondent does not have a legitimate
interest in the subject domain name.
Registration and use in bad faith
The subject domain name has been
registered and is being used in bad faith.
DECISION
Based
on the information provided to it and on its findings of fact, the
Administrative Panel concludes that the Complainant has established its
case.
The
Complainant requests that the subject domain name be transferred to it. The Administrative Panel so orders.
Edward C. Chiasson, Q.C., Panelist
Dated: February 3, 2003