Dancesoft v. Avyn / Linh Ngo
Claim Number: FA1104001381556
Complainant is Dancesoft (“Complainant”), represented by Stephanie O. Sparks of Hoge, Fenton, Jones & Appel, California, USA. Respondent is Avyn / Linh Ngo (“Respondent”), represented by Wendi S. Temkin of Garlin, Driscoll, Howard LLC, Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dancepartners.com>, registered with eNom, Inc on Dec 20, 1999 (“the Domain Name”).
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.
Clive L Elliott as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 1, 2011; the National Arbitration Forum received payment on April 1, 2011.
On April 4, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 2011 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@dancepartners.com. Also on April 7, 2011, 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 April 26, 2011.
On April 29, 2011 Complainant submitted its additional submissions.
On May 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Clive Elliott as Panelist.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it has exclusive ownership of the United States trademark DANCEPARTNER.COM and that it has used this trademark in connection with a website located at the <dancepartner.com> domain name.
Complainant advises that its website, which was registered in 1998, is a website for dancers whereby individuals may post their profile and offers consumers a broad variety of dance-related services, including dance partner searching and matching, social networking, assisting members in locating dance teachers and locations, and providing profiles of professional and amateur dancers who are members of the DANCEPARTNER.COM community.
Complainant contends that the Domain Name is substantially and confusingly similar to Complainant’s DANCEPARTNER.COM mark in that it includes the entire DANCEPARTNER.COM mark with addition only of the letter “s” and Complainant submits that the variation to its mark in this way does not defeat substantial and confusing similarity. Complainant contends that Respondent’s use of the Domain Name is likely to cause, and may already have caused, consumers to become confused as to the source, sponsorship, affiliation or endorsement of the Domain Name. In addition, Complainant submits, that there is an even greater likelihood of confusion because the Domain Name until recently displayed pay-per-click links to websites offering dance related services that compete directly with those offered by Complainant.
Complainant advises that in October 2010 it printed screen shots of the Domain Name website and then on October 26, 2010 it sent a letter to Respondent in an effort to resolve amicably its trademark and domain name issues with Respondent’s parked <dancepartners.com> website. After receiving this letter Complainant noted that Respondent changed its website so that visitors were redirected to another website at <dance.net>, which website offers dance-related services that compete with those offered by Complainant in connection with its DANCEPARTNER.COM trademark. Complainant submits that Respondent has misappropriate Complainant’s goodwill and cheated consumers by tricking them into clicking on its <dancepartners.com> website which then took them to a site offering the same dance-related services as those of Complainant.
Complainant states that Respondent is neither licensed nor otherwise authorised to use its DANCEPARTNER.COM mark and therefore has no legitimate interest in the Domain Name or any legal right to use that name. Complainant also contends that there is no evidence that Respondent is commonly known by the Domain Name. Complainant submits that this is supported by the fact that the Domain Name is not registered under a name containing <dancepartners.com> but rather it is registered to Avyn, care of Linh Ngo, and that the Domain Name has from time to time redirected Internet users to the website located at <dance.net>. Complainant asserts that none of these uses of the Domain Name suggest that Respondent is known by any name containing <dancepartners.com> or the DANCEPARTNER.COM mark.
Complainant also asserts that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but rather Respondent appears to have registered the Domain Name for the purpose of profiting from pay-per-click advertisements, many of them for goods and services that directly compete with Complainant’s services. Complainant contends that Respondent may also have registered the Domain Name to redirect Internet traffic to the website located at <dance.net>, which offers competing services to those provided by Complainant through the DANCEPARNTER.Com trademark thereby intentionally profiting from consumer confusion by misleadingly diverting Internet users attempting to locate the <dancepartner.com> domain name to a competing website. This, Complainant submits, is not a legitimate noncommercial or fair use of the Domain Name.
Complainant states that Respondent has demonstrated his intent to sell the Domain Name. On September 17, 2009 Respondent contacted Complainant stating that the Domain Name was for sale through Sedo.com and invited Complainant to make an offer. Complainant advises that it offered to purchase the Domain Name on September 22, 2009 for $1,000 which it believes was a generous amount far in excess of Respondent’s out-of-pocket costs to register the Domain Name. On that same day Respondent offered to sell the Domain Name to Complainant for $25,000. On October 8, 2009 Respondent again offered to sell the Domain Name to Complainant, this time for $7,000. With both counteroffers Respondent stated it was also negotiating with other parties for the purchase of the Domain Name. This, Complainant contends, supports its contention that Respondent’s registration of the Domain Name is not a bona fide offer of goods and services or a legitimate noncommercial or fair use of the Domain Name, and asserts that Respondent has registered and is using the Domain Name in bad faith.
B. Respondent
Respondent acknowledges that the Domain Name is very similar to the Complainant’s “dancepartner.com” trademark but notes it is in the plural form whereas the Complainant’s mark is singular and the Complainant’s mark’s validity is specious at best due to its generic nature and contends it is therefore unenforceable.
Respondent contends that the term “dance partner” is generic because there is no other way to describe the person someone dances with and asserts that trademarks cannot be enforced if they are generic. Respondent asserts that the term “dance partner” is so generic and ubiquitous that a ‘google’ search of that term results in approximately 942,000 hits and a search of the term “dance partners” results in more than 815,000 hits. An internet search reveals countless similar domains, including but not limited to <dancepartnersusa.com>, <ineedadancepartner.com>, <dancepartners.info>, <carolinadancepartners.com>, and <seniordancepartners.co.uk>. Respondent therefore contends that the terms “dance partner” and “dance partners” are fair game for anyone’s use.
Respondent states that it first registered the Domain Name on December 20, 1999, more than three years before Complainant began using “dancepartner.com” in commerce and more than four years before Complainant registered its mark on April 20, 2004. Respondent submits that while the Domain Name is very similar to Complainant’s trademark the analysis must fail not only because the Complainant’s trademark is unenforceable but also because Respondent’s use of the Domain Name preceded Complainant’s constructive use of its trademark by several years.
Respondent does not argue that he or his business has been commonly known by the Domain Name or that he is making a legitimate noncommercial use of it and asserts that he began using the Domain Name in connection with a bona fide offering of goods or services years before he had any knowledge of this dispute. Respondent advises that he registered the Domain Name in 1999 and as of that date he had been running a website at <dance.net> for some three years. Dance.net includes photo sharing, forums, dance related news, job postings, a dance directory service, a dance partner listing service, and a newsletter, among other features.
Respondent states that in 2001 it developed a functional website to which the Domain Name resolved and this website contained among other things, a java chat applet, forum, photo album, bookmarks and event pages. At some point in approximately March 2003 Respondent began using the Domain Name to redirect visitors to <dance.net>. Respondent contends that because it offers dance partner listings on his dance.net site, the redirection of a domain called “dance partners” was done in good faith and was not misleading to visitors.
Respondent decided to reactivate the Domain Name in December 2004, using much of the content from <dance.net>. Sometime in 2005, however he again chose to use the Domain Name to redirect visitors to dance.net because it was a more cost-effective use of this resource. The Domain Name has continued to be used to redirect traffic to dance.net until the present, with the exception of a period of approximately one year from late 2009 through to October 2010 when Respondent was attempting to sell it and thus had it parked with Sedo.com, a service he was using for that purpose.
Respondent states that the first knowledge he had that there was any dispute about his use of the Domain Name occurred in mid 2004 when Complainant sent a letter suggesting he had no right to retain ownership of the Domain Name based upon the trademark Complainant had just obtained. Respondent replied that he did not believe the trademark gave Complainant superior rights to a domain he had registered and used for four years prior to the registration of the trademark. Complainant did not press the issue further and instead inquired if they could come to a reasonable deal on the sale of the Domain Name. As such, Respondent reasonably believed the dispute was moot.
It was not until October 26, 2010, some six years after the original discussion about the trademark, that Complainant again attempted to raise the dispute, by which time Respondent had been using the Domain Name in various ways to generate revenue for the better part of nine years.
Respondent asserts that using a domain to resolve to another website is a legitimate use of that domain and he has used the Domain Name either as his own stand-alone website or to redirect to his <dance.net> site, which he contends are legitimate uses of his domain. Respondent further asserts that he was making bona fide use of the Domain Name before he had notice of the initial round of this dispute in 2004 and he has made continuous legitimate use of the Domain Name for approximately 90 percent of the time since he first developed it in 2001.
Respondent submits that Complainant cannot prove that Respondent has no rights or legitimate interests in respect of the Domain Name and that in virtually every case cited by Complainant in its Complaint involves facts that are not present in this case, including trademark rights that precede registration of a potentially infringing domain name. No such inference is possible when the domain registration pre-dates by many years the existence of the trademark.
In response to Complainant’s assertion of registration in bad faith, Respondent asserts that Complainant cannot show that Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting or transferring the Domain Name registration to the complainant or a competitor of the complainant for valuable consideration in excess of the out-of-pocket expenses directly related to the Domain Name. Respondent registered the Domain Name some three and a half years before Complainant was even in business and as such he could not have done so for the express purpose of trying to profit off the Domain Name at the expense of the Complainant. In addition, when the parties first discussed the sale of the Domain Name, it was Complainant who approached Respondent and Complainant who re-initiated sales discussions a year later. The only time Respondent initiated contact with Complainant to discuss the possible sale was in 2009, when he placed the Domain Name on the open market, thereby showing Complainant a courtesy by letting someone who had twice before expressed interest in the Domain Name know it was up for sale.
Respondent argues that because it registered the Domain Name in December 1999 and Complainant did not use its mark in commerce until March 2003, Respondent could not have had the bad faith intention of creating consumer confusion with the then-nonexistent mark at the time of registration. Respondent further asserts that as the Domain Name is composed entirely of generic/descriptive elements it should be considered a relevant factor in the calculation of Respondent’s bona fides at the time of registration. Respondent states that one of the reasons he chose the Domain Name was its broad appeal, which he believed could someday be used for his commercial gain if he chose to sell it to a third party. This, Respondent contends, does not constitute bad faith and as bad faith will only be found if the domain was registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses. Complainant did not own the mark at the time of registration, so selling the Domain Name to Complainant could not possibly have been Respondent’s motive for registration. Further evidence that Respondent did not register the Domain Name with any bad faith intent to profit from Complainant is the fact that whilst Respondent and Complainant have discussed a possible sale of the Domain Name at least three times over the years, the first two rounds of these discussions were initiated by Complainant.
C. Additional Submissions
Respondent asserts the DANCEPARTNER.COM trademark is unenforceable because of its generic nature. Complainant states that this argument lacks merit as Respondent relies on unsuitable authority to support his position. Respondent relies on provisions of the Lanham Act and holdings from various Federal Circuits to conclude trademarks are deemed unenforceable if they are found to be generic. Complainant disputes this and says to the contrary that the Lanham Act states registration of a trademark on the federal principal register is prima facie evidence of the validity of the registered mark, registration, registrant’s ownership of the mark and of registrant’s exclusive right to use the mark. Furthermore Complainant states that the National Arbitration Forum has continually held a determination of genericness is not necessary as the core consideration is whether the Domain Name is identical or confusingly similar to Complaint’s mark.
Complainant claims that if the panel were to engage in an analysis of whether DANCEPARTNER.COM trademark is generic, the sole evidence submitted by Respondent is a search on Google of the terms “dance partner” and “dance partners” that returned 815,000 to 942,000 hits. Complainant argues that this is not compelling or even helpful where Respondent fails to provide any qualitative analysis. A search of any term on Google will generate hundreds of thousands of hits and moreover a cursory review of Respondent’s Annex 1 shows that it is Complainant’s website, DANCEPARTNER.COM, that is the first hit of each search, and that the majority of returned hits are of domain names that are not substantially or confusingly similar to Complainant’s DANCEPARTNER.COM website.
Complainant asserts that DANCEPARTNER.COM is not in such wide use among potential users of websites that provide dance related services that it has become the common descriptive name of this category of websites and advises that one test for descriptiveness is whether competitors need to use the term to describe their goods or services. As the Response acknowledges there are numerous other domain names and marks dissimilar to Complainant’s mark that can and are being used to describe other dance related websites. DANCEPARTNER.COM describes the specific services provided to consumers by Complainant on the website and thus the trademark DANCEPARTNER.COM is not generic.
Respondent admits the Domain Name is substantially similar to Complainant’s registered trademark DANCEPARTNER.COM, and that he uses his confusingly similar Domain Name to redirect traffic to another primary website <dance.net> and Complainant asserts that as a result consumers and potential consumers will indisputably by confused when attempting to locate Complainant but being redirected to Respondent’s website regardless of Respondent’s intent.
Complainant states that Respondent supports his claim of legitimate rights and interests in the Domain Name by citing authority which states the use of a domain name to resolve to another website is a legitimate use of that domain. Complainant argues that the authority relied upon by Respondent is inapposite as the facts and circumstances leading to this dispute are dissimilar from the ones found in the Discount Embroidery Supply case. In that case Respondent was able to provide evidence actually selling embroidery supplies on its website continuously for more than six years and the panel concluded Respondent had legitimate rights and interests in its domain name because it offered bona fide goods to customers for a lengthy, uninterrupted period of time.
Complainant contends that in this case Respondent purportedly used the Domain Name for a multitude of purposes but none of which can be considered the bona fide offering of services. Respondent declares he registered the Domain Name in 1999, however for approximately three years prior to that time, he was purportedly running a website by the domain name of <dance.net>. Respondent alleges he used the Domain Name for legitimate purposes such as offering photo albums, bookmarks and event pages from 2001 to 2003. However Respondent’s primary support is a self-serving declaration describing printouts that purport to offer goods and services but appear merely to be links. Moreover, Respondent divulges the fact that he did not use the Domain Name from his date of registration until 2001 at the earliest and that his use was not continuous.
Complainant asserts that the timeline was in fact that in March 2003 Respondent began using the Domain Name to redirect visitors to his other domain name <dance.net>, then for an indefinite period of time from March 2003 to December 2004 Respondent discontinued use and deactivated his Domain Name. Beginning 2005 Respondent recommenced using the Domain Name again to redirect visitors to his <dance.net> domain name, which was well after Complainant began using its website and registered trademark continuously). Finally from late 2009 to late 2010 Respondent placed the Domain Name on Sedo.com for the purpose of selling the Domain Name to Complainant or a third party for an unreasonable amount with the intention of securing an unfair financial gain.
Complainant states that it registered is <dancepartner.com> domain name on October 14, 1998 which is prior to Respondent’s registration of the Domain Name in 1999 and thus Respondent was put on notice as to the existence of the <dancepartner.com> domain name prior to his date of registration. Complainant submits that despite Respondent’s mischaracterization of facts, the evidence indicates Respondent lacks legitimate rights and interest in the Domain Name.
Complainant contends that whilst Respondent claims Complainant cannot make a showing of bad faith he fails to cite to any legal authority to support his position that he did not register or acquire the Domain Name primarily for the purpose of selling, renting or transferring the Domain Name registration to the Complainant or a competitor of the Complainant for consideration in excess of the out-of-pocket expenses directly related to the Domain Name.
Respondent contends the only time he initiated contact with Complainant to discuss the possible sale of the Domain Name was in 2009, when he placed the Domain Name on the open market, and he further asserts he was simply showing Complainant a courtesy by letting someone who had twice before expressed interest in the Domain Name know it was up for sale. Complainant suggests that Respondent misrepresents the facts that led to this dispute and asserts that it has plainly established the course of events, which are that Complainant offered to purchase the Domain Name on September 22, 2009 for $1,000, Respondent counter offered on the same day for $25,000. Respondent also stated in his response that he was negotiating with other parties for the sale of the Domain Name at the same time so as to induce Complainant to accept the unscrupulous offer for fear of an unaffiliated third party purchasing the Domain Name. Such deceitful behaviour, Complainant submits, can only be characterised as bad faith.
Respondent alleges Complainant cannot make a showing of bad faith because he did not use the Domain Name intentionally to attempt to attract, for commercial gain, internet users to his website or other on-line location, nor did he create a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his website or location. Complainant submits that this argument lacks merit, as the facts admitted by Respondent demonstrates his intent to cause confusion with Complainant’s DANCEPARTNER.COM trademark.
Complainant contends that despite Respondent’s assertion that he used the Domain Name for legitimate purposes from 2001 to 2003 by offering, inter alia, a forum to post photos, the facts acknowledged by Respondent confirm that he used the Domain Name as a parked website from 1999 to 2001 and he also used the Domain Name to reroute consumers to the <dance.net> domain name as a means of causing confusion to consumers who are searching for DANCEPARTNER.COM. Complainant argues that Respondent’s own admissions lead to the conclusion that he registered and used the Domain Name in bad faith.
For the reasons set out below the Panel finds that Complainant has failed to satisfy the three elements required under the ICANN Policy and accordingly that that relief shall be denied.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 asserts that it has established rights in the DANCEPARTNER.COM mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,834,659 issued April 20, 2004). The Panel finds that Complainant’s registration adequately demonstrates its rights in the DANCEPARTNER.COM mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that the Domain Name is confusingly similar to its DANCEPARTNER.COM mark. There is obvious merit in this argument. They are virtually identical.
While Respondent argues that its registration of the Domain Name predates Complainant’s alleged rights in the mark, the Panel is of the view that such 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 AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)). The latter part of the above quote is important, for the reasons which follow below.
While Respondent contends that the Domain Name is comprised of common and descriptive/generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel again 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.
The issue may however be relevant to the other grounds (discussed below) because if Complainant’s mark is made up of generic and descriptive terms it may either be unenforceable or weak, and that the Domain Name is not confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Webvan Group, Inc. v. Atwood, D200-1512 (WIPO Feb. 20, 2001) (“[W]hen a mark is a relatively weak non-distinctive term, courts have found that the scope of protection may be limited to the identical term and that the addition of other descriptive matter may avoid confusion”).
In the present case the Panel is not prepared to go that far. It concludes that Complainant has satisfied the first part of the Policy, but only by a narrow margin.
Respondent maintains that he registered the Domain Name in 1999 and that as of that date he had been operating the <dance.net> website for three years as a forum for sharing dance-related news, job postings, and dance partner listings. Respondent claims that in 2001, he finally developed the Domain Name website to include a java chat applet, forum, photo albums, and event pages, and that in 2003 he decided to redirect the Domain Name website.
Respondent claims that he deactivated and reactivated this routing feature once but that the Domain Name has been used to redirect Internet traffic to <dance.net> until the present except for a period of one year where Respondent attempted to sell the Domain Name and parked it with <sedo.com>. The Panel may find that these activities constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Digital Interactive Sys. Corp. v. Christian W, FA 708968 (Nat. Arb. Forum July 3, 2006) (concluding that the complainant failed to satisfy Policy ¶ 4(a)(ii) because the respondent provided sufficient evidence to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).
As noted above, Respondent also maintains that the terms “dance” and “partners” of the Domain Name are common and generic/descriptive, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. The Panel accepts that the terms “dance” and “partners” have a particular descriptive meaning, particularly for people and entities looking for dance partners or to put dance partners in touch with each other.
On this basis, the Panel finds that Respondent is involved in the “dance” area and has established sufficient rights or legitimate interests in the 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).
This factor is also relevant in so far as the evidence seems to establish that Respondent was using the Domain Name before Complainant had established any effective rights in the DANCEPARTNER.COM mark.
For these reasons Complainant fails to establish this ground.
Having concluded that Respondent has rights or legitimate interests in the Domain Name pursuant to Policy ¶ 4(a)(ii), the Panel is entitled to find that Respondent did not register or use the 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).
In any event, the Panel is of the view that Respondent has not registered or used the Domain Name in bad faith. Respondent claims that the parties only discussed the sale of the Domain Name after Complainant approached Respondent and that Complainant later re-initiated the sale discussions. Previous panels have found that when a complainant initiates an offer or negotiations to purchase a disputed domain name, there is insufficient evidence to show that the domain name was registered in bad faith under Policy ¶ 4(b)(i). See Puky GmbH v. Agnello, D2001-1345 (WIPO Jan. 3, 2002) (finding insufficient evidence to hold that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) where the complainant initiated contact with the respondent and the respondent responded with an offer to sell its domain name registration for $50,000). While this factor is certainly not determinative it is still relevant.
What is particularly relevant is that Respondent insists that he did not register or use the Domain Name to intentionally attract Internet users, for commercial gain, to his website by creating a likelihood of confusion with Complainant’s mark, on the basis that he asserts to have registered the Domain Name well before Complainant’s commercial use of the DANCEPARTNER.COM mark, so there could not have been intent to create confusion with a non-existent mark. The Panel concludes that Respondent did not register the Domain Name in bad faith according to Policy ¶ 4(b)(iv). See Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where the respondent has an active website that has been in use for two years and where there was no intent to cause confusion with the complainant’s website and business).
As noted above, Respondent argues that the Domain Name is comprised entirely of the common terms “dance” and “partners” that have many meanings aside from use in Complainant’s DANCEPARTNER.COM mark. Furthermore, Respondent contends that the registration and use of domain name comprising such common terms is not necessarily done in bad faith. The Panel accepts this argument and sees it as providing relevant guidance in this particular situation as to whether Respondent has acted in bad faith or not.
This consideration has a particular resonance given Respondent maintains that its registration of the Domain Name predates Complainant’s trademark registration of its DANCEPARTNER.COM mark and arguably predates Complainant’s common law rights in the mark, an argument which Complainant failed to adequately rebut in its reply submissions.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the Domain Name <dancepartners.com> REMAIN WITH Respondent.
Clive Elliott, Panelist
Dated: May 16, 2011
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