national arbitration forum

 

DECISION

 

Hyland Software, Inc.  v. Hyland Business Solutions / Justin E Hyland

Claim Number: FA1104001385810

 

PARTIES

Complainant is Hyland Software, Inc. (“Complainant”), represented by Abby C. Moskovitz of Hyland Software, Inc., Ohio, USA.  Respondent is Hyland Business Solutions / Justin E Hyland (“Respondent”), Ohio, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The first domain name at issue is <hylandsolutions.com> registered with MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE.  The second domain name at issue is <hylandsolutions.net>, registered with GoDaddy.com, Inc. (together, “the domain names”)

 

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 26, 2011; the National Arbitration Forum received payment on April 27, 2011.

 

On April 26, 2011, MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE, confirmed by e-mail to the National Arbitration Forum that the <hylandsolutions.com> domain name is registered with MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE, and that Respondent is the current registrant of the name.  MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE has verified that Respondent is bound by the MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE 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 28, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <hylandsolutions.net> domain name is registered with GoDaddy.com, Inc., and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On May 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 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@hylandsolutions.com and postmaster@hylandsolutions.net.  Also on May 2, 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 May 20, 2011.

 

On May 24, 2011, Complainant made Additional Submissions which complied with Supplemental Rule 7.

 

On May 27, 2011, pursuant to the parties’ request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts trade mark rights in HYLAND and HYLAND SOFTWARE and alleges that the domain names are confusingly similar to the trademarks. 

 

Complainant alleges that Respondent has no rights or legitimate interests in the domain names.

 

Complainant alleges that Respondent registered and used the domain names in bad faith.

 

B. Respondent

Respondent broadly denies those allegations and argues that it has a legitimate interest in the domain names and both registered and has used the domain names in good faith.

 

C. Additional Submissions

Complainant made additional submissions which have been taken into account by the Panel.

 

Further detail of the submissions of both parties is included where appropriate in the Discussion which follows.

 

FINDINGS

The uncontested facts relevant to the decision in this case are that:

1.         Complainant is incorporated and headquartered in Ohio, USA.

2.         Complainant has since 1991 developed and sold software products under the trademarks HYLAND and HYLAND SOFTWARE.

3.         The domain name <hylandsolutions.com> was registered on June 17, 2006 and the domain name <hylandsolutions.net> was registered on August 12, 2009.

4.         The domain names resolve to a website which promotes the sale of software products and the supply of related services.

5.         There has been no commercial or other relationship between the parties prior to this dispute.

6.         Pre-Complaint correspondence between the parties failed to resolve the dispute.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry - a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the trademark and the disputed domain name are identical or confusingly similar.

 

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights.  It is accepted that a trademark registered with a national authority is prima facie evidence of trademark rights for the purposes of the Policy[1].

 

Complainant contends that it holds two trademark registrations for the HYLAND SOFTWARE mark with the United States Patent and Trademark Office (“USPTO”), specifically Reg. Nos. 2,273,700 and 3,010,346.  There is no registration for HYLAND per se.  Copies of the original registration certificates are exhibited to the Complaint.  They show, in one case, a plain word mark and in the other, what is essentially a word mark in a faintly stylised font.

 

What is not disclosed by the Complaint is the fact that on January 3, 2011 both registrations were recorded by the USPTO as having been assigned to Credit Suisse[2].  For reasons which follow I do not need to consider whether, for the purposes of the UDRP, a complainant can still be considered as having trademarks rights by reason of registration when legal ownership of the trademark has passed to another under a security agreement[3].  

 

The UDRP also recognizes unregistered, or so-called “common law”, rights in a trademark acquired through use and reputation.  Complainant asserts unregistered rights in the terms HYLAND and HYLAND SOFTWARE by reason of their continuous use since 1991.  Trademark Reg. No. 2,273,700 corroborates that claim to some degree.  The registration carries a date of first use of November 1990.  It disclaims monopoly rights in the work “software” per se (a matter of no special importance to the Panel in the context of this decision), but carries the noteworthy endorsement that the ordinary surnominal signification of “Hyland” was recognised as having secondary trademark meaning by virtue of acquired distinctiveness[4].  Put another way, this means that at least in so far as the goods of that particular registration are concerned, namely, “computer software for imaging and document management”, Complainant was able to satisfy the USPTO through documentary proof of use that, at the time the trademark was filed in December 1997, the trademark fulfilled certain threshold criteria which the USPTO reasonably regarded as indicative of acquired distinctiveness.

 

The Complaint states (and it is not contested) that in the past six years Complainant’s revenue has exceeded USD650 million and it has expended more than USD18 million advertising its goods and services[5].  It has regularly received industry and media attention.  It has offices, not only in the United States, but in Brazil, Japan and the United Kingdom.  It has over 1000 employees.

 

Having regard to the traditional criteria for determining such matters, the Panel is satisfied that Complainant has unregistered trademark rights in HYLAND and HYLAND SOFTWARE.   The remaining question is whether the domain names <hylandsolutions.com> and <hylandsolutions.net> are confusingly similar to the Complainant’s trademark rights.  In making that comparison, the Panel is content to treat HYLAND as the relevant trademark.

 

For the purposes of testing confusing similarity, the generic top-level domains, “.net” and “.com” can be ignored[6].   The domain names then differ from the trademark by the addition of the word “solutions”, being generic as Respondent acknowledges in its own submissions.  Countless earlier decisions under this Policy have held that the addition of a non-distinctive integer to a trademark does nothing to avoid confusion[7].  The Panel has no hesitation finding that the domain names are confusingly similar to the trademark.

 

Accordingly, Complainant has satisfied paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

“(i)        before any notice to you of the dispute, your use of, or demonstrable 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;  or

 

(ii)        you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii)          you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[8].  The Panel finds that Complainant has established a prima facie case under paragraph 4(c) of the Policy.

 

There is no submission that Respondent is making noncommercial or fair use of the domain names within the meaning of paragraph 4(c)(iii) of the Policy.  However there is much discussion centering on the issues of whether, before any notice of the dispute, Respondent made use of the domain names in connection with a bona fide offering of goods or services, or had been commonly known by the domain names.

 

The WHOIS information identifies Respondent as “Justin Hyland / Hyland Business Solutions”.   It is sufficient to state that prior to the filing of the Complaint (or, as may be apt, prior to the time of receipt of pre-Complaint correspondence from Complainant), there is no conclusive evidence in the record that Respondent was commonly known by the domain names – that is, as “Hyland Solutions”, as opposed to its trading name, Hyland Business Solutions.  The distinction may seen pedantic but the weight of former decisions insists on strict correspondence between the names before either paragraphs 4(c)(i) or (ii) of the Policy can be engaged.

 

For these reasons, Respondent has not discharged the onus which fell upon it and Panel finds that Complainant has satisfied the second limb of the Policy.

 

Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out specific scenarios which are to be treated as conclusive of registration and use in bad faith.  The Panel will return to paragraph 4(b) however the Panel finds it more appropriate in this case to first examine the claims that Respondent registered the domain names in bad faith and used them in bad faith.

 

Complainant alleges that:

 

Respondent is taking advantage of the confusing similarity between the disputed domain names and Complainant’s HYLAND SOFTWARE mark in order to profit from the likelihood of confusion with Complainant’s mark.  Complainant claims that Respondent registered and is using the disputed domain names to offer and sell goods and services in direct competition with Complainant’s software business and within the same geographic location as Complainant.

 

Respondent has replied to those broad allegations at various points in the submissions.  In particular, Respondent has argued that it has an unfetted right to use its own surname.  It has questioned the strength of Complainant’s trademarks given the fact that Hyland is a not uncommon surname.  It has pointed to the apparent multiplicity of businesses using Hyland as part of their trading names.  It has attempted to draw lines which might separate the parties’ core businesses within what is the same sector.  Respondent also asserts that the Complaint is not a completely candid account of Complainant’s own conduct.

 

In greater or lesser degree, each of those assertions might have a bearing on whether Respondent acted in bad faith or not.  The issues deserving separate attention are set out below. 

 

Name rights generally

It is clear from the Response as a whole that Respondent believes it has an unlimited right to use its own surname.  That is a mistaken belief.  The right to use of one’s own name is a qualified right as explained below.

 

In 1997, the United Kingdom High Court was asked to decide the appeal in a long running dispute between Elvis Presley Enterprises Inc., the successor in title to the merchandising interests of the late singer and actor and the interests of a British trader in Elvis memorabilia not put on the market or authorized by Enterprises Inc[9].   Mr. Justice Laddie took some time to explain naming rights.  Although the case was concerned with British law, much of what the judge says applies generally to common law systems.  He wrote:

 

[Enterprises Inc.] applied to register three trade marks under the provisions of the Trade Marks Act, 1938. The first, numbered 1371624, is for a manuscript version of the name "ELVIS A PRESLEY". This mark was referred to before me as the "signature mark". The second mark, numbered 1371627, is for the word "ELVIS" simpliciter and the third, number B1371627, is for the words "ELVIS PRESLEY" simpliciter.

 

There is no doubt that the name, "Elvis Presley", continues to conjure up in the mind of a very large part of the population in this country the image of the now-deceased rock and roll performer. I take judicial notice of the fact that over the years there have been numerous programmes on television and radio and articles in newspapers and magazines which centred on or made reference to Elvis Presley. He must be counted amongst the most well known popular musicians this century.  …

 

Although the arguments before me have ranged over a considerable area, at their heart are two crucial issues; (a) can anyone claim the exclusive right under the 1938 Act to use the names Elvis and Elvis Presley or the signature as a trade mark for a range of common retail products and, if so, (b) who?

 

Before considering what rights might be acquired under the Trade Marks Act, 1938, it is useful to have a basic concept in mind. As Mr. Prescott put it in his skeleton argument, Enterprises is a company which has "as its principal object the exploitation of the name and likeness" of the late Elvis Presley. That it engages in such exploitation and benefits financially from Elvis Presley's continued fame is not in dispute. But, ignoring for the moment the effect of any registration of trade marks which it may secure, it does not own in any meaningful sense the words "Elvis" or "Elvis Presley". There is nothing akin to a copyright in a name. This has been part of our common law for a long time. In Du Boulay v. Du Boulay (1869) LR 2 PC 430 the Privy Council said;

 

"... in this country we do not recognise the absolute right of a person to a particular name to the extent of entitling him to prevent the assumption of that name by a stranger. ... the mere assumption of a name, which is the patronymic of a family, by a Stranger who had never before been called by that name, whatever cause of annoyance it may be to the family, is a grievance for which our Law affords no redress."

 

Even if Elvis Presley was still alive, he would not be entitled to stop a fan from naming his son, his dog or goldfish, his car or his house "Elvis" or "Elvis Presley" simply by reason of the fact that it was the name given to him at birth by his parents. To stop the use of the whole or part of his name by another he would need to show that as a result of such use, the other person is invading some legally recognised right. This also is reflected in many cases in the law of passing off. In a well known and frequently cited passage in Burberrys v. JC Cording & Co Ltd (1909) 26 RPC 693, Parker J. said;

 

"On the one hand, apart from the law as to trade marks, no one can claim monopoly rights in the use of a word or name. On the other hand, no one is entitled by the use of any word or name, or indeed in any other way, to represent his goods as being the goods of another to that other's injury. If an injunction be granted restraining the use of a word or name, it is no doubt granted to protect property, but the property, to protect which it is granted, is not property in the word or name, but property in the trade or goodwill which will be injured by its use".

 

In this case the “legally recognised right” invaded by Respondent is Complainant’s Federal trademark registration.  In so far as the UDRP has adopted as its own general principles of national trade mark law, the position is faithfully represented by Complainant who cites former decisions under this Policy which have restated that “under U.S. trademark law, the fact that a person holds a particular family name does not create an entitlement to use the name to compete in a line of commerce with the registered trademark holder for the same term.”[10]

 

The names

The Panel has already found the domain names to be confusingly similar to the trademark HYLAND for the purposes of paragraph 4(a)(i) of the Policy.  The parties have however debated the question of whether the terms “Hyland Software” and “Hyland Solutions” are somehow more similar and the inferences which might then arise under paragraph 4(a)(iii) of the Policy.

 

Respondent submitted that “the addition of the word SOLUTIONS does not imply or is (sic.) synonymous with SOFTWARE.  The use of the descriptive work (sic.) SOLUTIONS in the disputed domain name is used to imply Business Solutions in Hyland Business Solutions.”

 

On the other hand, Complainant characterizes the domain names as “nearly identical” to HYLAND SOFTWARE.  It cites Pivotal Corporation v. Discovery Street Trading Co. Ltd., D2000-0648 (WIPO Aug. 14, 2000), as support for the proposition that a domain name that consists of a registered trademark and a second term that indicates the business for which the trademark was registered is a domain name confusingly similar to that trademark.  It argues that use of the word SOLUTIONS increases the likelihood of confusion and goes on to cite TPI Holdings, Inc. v.  Carmen Armengol, D2009-0361 (WIPO May 19, 2009) , where the domain name <autotradertransactions.com> was in dispute.  The panel there wrote:

 

Respondent's Domain Name incorporates Complainant's AUTO TRADER Mark, adding only the generic term “transactions”. The inclusion of this generic term does not negate the confusing similarity of the Domain Name to Complainant's AUTO TRADER Mark. On the contrary, the addition of the word “transactions” to the Domain Name increases the confusing similarity, as Complainant's Mark is used in connection with advertising for automobile sales transactions.

 

The cited case is not well taken by the Panel.  The cases are not on all fours with each other.  The words “auto trader” are descriptive of the relevant service.   The word “Hyland” is not.  Respondent might provide waste management solutions or human resource solutions.  All the Panel is prepared to acknowledge based on its own general observations is that the word “solutions” is quite commonly used in the IT and software industry.

 

Respondent’s business

Respondent claims that a website corresponding with the <hylandsolutions.com> domain name “has been fully developed with a clear representation of Respondent’s business”.

 

In its machination at the time of the Complaint, Respondent’s website stated that “Hyland Business Solutions, LLC has been incorporated since 2007. We have and continue to cater to the needs of small businesses. From database maintenance to creating small, job specific applications, we focus on delivering solutions inside the budgets of today's small businesses.”

 

Respondent asserts that “the principle (sic.) member of Hyland Business Solutions, LLC has been offering computer support services for over 12 years and has been offering software development consulting services for the past seven years”. 

Complainant’s conduct

Rule 3(b)(xii) required a complainant to certify (and Complainant did so certify) that:  the information contained in this Complaint is to the best of Complainant's knowledge complete and accurate …  

 

Respondent asserts a lack of candor on part of Complainant.  The Respondent notes, for example, that Exhibit 10 to the Complaint alleges to be a list of the domain names owned by Complainant.   What is missing from that list is the domain name <hylandbusinesssolutions.com>.  That domain name corresponds directly with Respondent’s business name.  The Panel observes that the Complaint was filed on April 27, 2011, however, Complainant had registered <hylandbusinesssolutions.com> on April 22, 2011.

 

In its Additional Submissions, Complainant said merely that the omission was “inadvertent as the domain name was registered after the exhibit was prepared, but it should have been amended to reflect the recent registration”.  

 

The Panel has already noted that the United States Federal trademark registrations on which Complainant premised its claim to trademark rights had been transferred to a third party some time before the dispute.  That fact was also not disclosed in the Complaint.

 

Panel makes the following general assessment of this evidence.

 

The parties both operate in Ohio.  Depending on when and how their proximity is measured, they are or have been physically distanced between three and fifty-two miles from one another.  Complainant submits that Respondent had actual notice of Complainant’s business and trademark rights[11].   Panel observes that nowhere does Respondent deny knowledge of these matters. 

 

Respondent asserts that “the principle (sic.) member of Hyland Business Solutions, LLC has been offering computer support services for over 12 years and has been offering software development consulting services for the past seven years”.  The Panel assumes that the reference to “the principle (sic.) member” is a reference to Respondent himself. 

 

Panel notes that Hyland Business Solutions, LLC. was incorporated after registration of the <hylandsolutions.com> domain name.   Panel also notes that whatever might be said of the evidence of Respondent’s own offerings before the 2007 incorporation, the earliest claimed date still postdates both the establishment of Complainant’s trademark rights and its reputation.

 

In spite of the submissions made by Respondent regarding possible differentiation of the services it provides from those offered by Complainant, the Panel is satisfied that in so far as application of the Policy is concerned, nothing turns on the distinctions argued by Respondent.

 

Taken in their entireties, the Panel also finds that the trademark HYLAND SOFTWARE and the term “Hyland solutions” exhibit considerable overall resemblance – there is no doubt that they are confusingly similar.

 

Finally, Panel agrees with Respondent that questions hang over Complainant’s Rule 3(b)(xii) certification.  Putting to one side the undisclosed assignment of Complainant’s registered rights, Complainant gives no explanation of why it should have registered Respondent’s business name as a domain name.  Were the matter of more direct relevance to this decision, the Panel would have been free to draw an inference that this registration by Complainant was not a good faith action[12].  As it happens, Panel determines that Complainant’s actions in these respects has no ultimate bearing on the critical question of Respondent’s good or bad faith.

 

The recent WIPO Overview 2.0[13] asks at paragraph 4.7:  What is the standard of proof under the UDRP?  It answers that question by setting out the consensus viewpoint that: “The general standard of proof under the UDRP is ‘on balance’ - often expressed as the ‘balance of probabilities’ or ‘preponderance of the evidence’ standard. Under this standard, an asserting party would typically need to establish that it is more likely than not that the claimed fact is true.”

 

Put a different way yet again, the accepted standard is the “civil” standard.  Tested against that standard, there is nothing in the evidence to suggest that Respondent is a cyber-squatter.  There is nothing incontestable in the evidence which might show that Respondent registered the domain names with a conscious ambition to abuse Complainant’s trademark rights.  On the other hand, it can also be said that there is a cluster of facts which do not reflect favourably upon Respondent.  There being no clear preponderance of evidence to support a finding one way or that other that, at the relevant dates, Respondent registered the domain names in bad faith, the Panel returns to the directions given by the Policy.

 

Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith.  They are:

 

i.          circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;  or

 

ii.          you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct;  or

 

iii.         you have registered the domain name primarily for the purpose of disrupting the business of a competitor;  or

 

iv.        by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.

 

Complainant’s submissions rest on subparagraphs 4(b)(iii) and (iv), there being nothing in the evidence to support an adverse finding under the other two scenarios.

 

The Panel is not persuaded that there is a convincing case against Respondent under (iii) above.   The focus of paragraphs 4(b)(i) - (iii) is on the act of registration and, bearing in mind what has just been said about the onus, there is nothing in the Panel’s opinion to support a finding that Respondent registered the domain name primarily for the purpose of disrupting Complainant’s business.

 

On the other hand, paragraph 4(b)(iv) must be taken seriously.  All other elements of paragraph 4(b)(iv) being present, the only important issue is that of Respondent’s intentions.   In Paule Ka v. Paula Korenek, D2003-0453 (WIPO July 24, 2003), the panel held that the reference to the registrant’s intention in paragraph 4(b)(iv) of the Policy should be regarded as importing an objective, rather than a subjective, test:

 

…. how is the ‘intentional’ element required under paragraph 4(b)(iv) to be defined?  The Panel is guided in its consideration of the issue by the fact that a subjective test of intent (thus considered more or less as a mens rea element) would be difficult if not impossible to apply given that credibility must be assessed only on the basis of documentary evidence.  It is difficult to enter the minds of the parties to determine their subjective intent.  The proper test in this Panel’s view is whether the objective consequence or effect of the Respondent’s conduct is to free ride on the Complainant’s goodwill, whether or not that was the primary (subjective) intent of the Respondent.

 

Judged objectively in that way, the Panel finds that it is more likely than not that Respondent is enjoying a “free ride” on the back of Complainant’s reputation by using domain names which are confusingly similar to Complainant’s trademark.  Panel finds that Complainant has established that Respondent’s conduct falls under paragraph 4(b)(iv) of the Policy and so finds that Complainant has satisfied the third and final element of paragraph 4(a).

 

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 <hylandsolutions.com> and <hylandsolutions.net>  domain names be TRANSFERRED from Respondent to Complainant.

 

 

Debrett G. Lyons, Panelist

Dated:  June 16, 2011

 



[1] See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. 705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”);   see also Mothers Against Drunk Driving v. phix, NAF Claim No. 174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).

 

[2] The Panel has discretion to make limited research of its own volition in order to ascertain factual matters.  The Panel has used the USPTO’s TARR service to determine that the two registrations are valid and subsisting.

 

[3] Whilst this panel has no reason to further investigate the point, its own inclination would be that a reversionary right or beneficial or equitable interest in the trademark is insufficient and that nothing less than legal title would suffice to support a claim to rights under the UDRP based on registration alone.

 

[4] Registration No. 2,273,700 carries the endorsement that “Hyland” was accepted under section 2(f) of the Lanham Act (Trademark Act of 1946) which states, relevantly, that “nothing herein shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made.”

 

[5] Figures specific to 2010 are given on a confidential basis and need not be included or referred to any way, given the other indicia of reputation cited in the decision.

 

[6] See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. 153545 holding that: “The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.

 

[7] See Novell, Inc. v. Taeho Kim, NAF Claim No. 167964 (Nat. Arb. Forum Oct. 24, 2003), finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”. 

 

[8] See, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000‑0624;  Hanna‑Barbera Productions, Inc. v. Entertainment          Commentaries, NAF Claim No. 741828;  AOL LLC v. Jordan Gerberg, NAF Claim No. 780200.

 

[9] IN THE MATTER OF APPLICATIONS NOS. 1371 624, 1 371 627 AND 1 371 637 BY ELVIS PRESLEY ENTERPRISES INC

AND IN THE MATTER OF CONSOLIDATED OPPOSITIONS THERETO BY SID SHAW ELVISLY YOURS

 

[10] SBC Communications Inc. v Fred Bell aka Bell Internet, WIPO case D2001-0602

 

[11] Complainant also submits that Respondent had constructive notice of Complainant’s trademark rights.  This argument appears to be based on the prior existence of Complainant’s Federal trademark registrations.  For reasons which Panel need not go into for the purposes of this decision, that argument has been discredited by the majority of UDRP panelists.

 

[12] Whilst Bill Premier, CEO of Complainant, signed the Complaint the contact point for the Complainant is named as Abby Moskovitz, who it would seem is Associate General Counsel for Complainant. 

 

[13] http://www.wipo.int/amc/en/domains/search/overview2.0

 


 

 

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