Monkey-Says, LLC v. Admin Administrator
Claim Number: FA1104001386071
Complainant is Monkey-Says, LLC (“Complainant”), represented by Daniel J. Holmander of Barlow, Josephs & Holmes Ltd., Rhode Island, USA. Respondent is Admin Administrator (“Respondent”), represented by Jeff Bolin, Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <monkeysays.com>, registered with Wild West Domains, Inc.
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.
Hector A. Manoff as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 28, 2011; the National Arbitration Forum received payment on April 28, 2011.
On May 1, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <monkeysays.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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@monkeysays.com. 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 24, 2011.
On May 27, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hector A. Manoff as Panelist.
An additional submission from Complainant was timely received by the Forum on June 1, 2011.
An additional submission from Respondent was timely received by the Forum on June 7, 2011.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant has obtained in 2009 a US Federal Trademark Registration for the mark MONKEY∙SAYS (U.S. Fed. Trademark Reg. No. 3,618,714 registered May 12, 2009) – in connection with tote bags of class 18 and shirts, t-shirts, infant bodysuits and toddler bodysuit of class 25. Complainant declared first use in May 2007 and first use in commerce in April 2008.
2. Complainant has filed an application for MONKEY SAYS (U.S. Fed. Trademark Ser. No. 85078699) in connection with some goods of class 25. Complainant declared first use in May 2007 and first use in commerce in April 2008.
3. Complainant contends that it has common law rights in the marks because it has been operating a website – <monkey-says.com> and <monkeysays.net>- since at least 2007.
4. Complainant alleges that the term MONKEY∙SAYS is related to its business – shirts, t-shirts, infant bodysuits and toddler bodysuits.
5. Respondent registered the domain name <monkeysays.com> which Complainant argues is identical to or confusingly similar to its mark MONKEY∙SAYS (U.S. Fed. Trademark Reg. No. 3,618,714).
6. Respondent has no known rights or legitimate interests in the <monkeysays.com> domain name, since there is no evidence that it holds a trademark registration reflecting <monkeysays.com> and respondent is not commonly known by the disputed domain name.
7. Complainant argues that there is no legitimate purpose for the Respondent to own <monkeysays.com> since the Respondent’s use of the disputed domain name (before notice of this dispute) or demonstrable preparations to use, is not in connection with a bona fide offering of goods or services. The website <monkeysays.com> has a general parking page provided by Sedo.com with no specific theme associated therewith and is available for sale.
8. Complainant alleges that since early 2004 there has not been any bona fide offering of goods or services and that Respondent has not made a legitimate noncommercial or fair use of the domain name without intent for commercial gain.
9. Complainant contends that the Respondent is commonly known by a non-descript title of “Admin Administrator” which appears to be an attempt at concealingly the true identity of the owner of <monkeysays.com>.
10. Complainant argues that Respondent has registered and renewed the domain name <monkeysays.com> primarily for the purposes of selling, renting, or otherwise transferring the domain name registration to the Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.
11. Respondent has been annually renewing the domain name monkeysays.com on June 30 of each year and since Complainant started usage MONKEY∙SAYS as of April 2008, Moreover, Respondent had constructive notice of two federal trademark filings and at least one registration for MONKEY SAYS as well as a private letter on October 18, 2010 informing them of Complainant’s ownership of MONKEY∙SAYS.
12. Complainant contends that Respondent has a history of buying domain names for the purposes of extracting valuable consideration in excess of Respondent’s documented out-of-pocket costs.
13. Respondent has registered and renewed the domain name primarily for the purpose of disrupting the business of the Complainant and is using the mark to generate traffic for third parties and intended to divert traffic from Complainant for its legitimate products.
14. Complainant argues that the parking or passively holding domain names in parked landing pages without legitimate usage or for pay-per-click fees is considered bad faith.
B. Respondent
1. Respondent registered the domain name <monkeysays.com> on January 13, 2004 in good faith years before the Complainant Trademark or common law claims, and it could have neither contemplated the Complainant’s then non-existent right nor have had the purpose of disrupting the business that would not exist for years into the future.
2. The original purchase was based on the dictionary terms “monkey” and “says” which brought to mind humor and primate intelligence. The original intent was and still is for development.
3. Respondent contends that the Complainant registered <monkeysays.net> on March 14, 2006, <monkey-says.com> and <monkey-says.net> on March 16, 2007, (several years after the Respondents registrations of <monkeysays.com> and that the Complainant).
4. Complainant also claims Trademark and potential common law rights that would have been obtained several years after the Respondents registration and use of <monkeysays.com> which has been used for pay per click based on the dictionary words “monkey” and “says” before the existence of Complainant’s domain.
5. The domain <monkey-says.net> has been on a parked page and offering pay per click.
6. The <google.com> search supplied by the Complainant shows 64,300,000 matches on the dictionary words “monkey says”.
7. Respondent argues that all its domain names were purchased in good faith and some of them have been developed and are no “merely parked”(for instance lcsw.us), and <monkeysays.com> will be developed as funding becomes available.
8. Respondent has no history of buying domain names for the purpose of extracting valuable consideration or other Trademark or Cybersquatting infringements and this complaint is the first UDRP challenge received on any registered domain.
9. Respondent has not shown any history and pattern of using an identical or confusingly similar domain names to marks owned by other companies.
10. Respondent’s domain monkeysays.com was registered and used for pay per click advertising years before the existence of the Complainant’s claim.
11. Respondent has not completed any sale of their domain names and monkeysays.com was briefly listed on Sedo without any asking price and without any offers or negotiation’s to purchase and is no longer listed.
12. <monkeysays.com> is still used base on the dictionary terms “monkey” and “says” and does not capitalize on the Complainant’s trademark. Respondent has made no attempts to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
C. Additional Submissions
Complainant
1. Respondent has renewed, maintained and used the disputed domain name for almost 7 years without legitimate usage of the website or any noticeable preparations for usage, and Complainant argues that according to most panel decisions is more than enough time to provide some evidence of actual usage.
2. Complainant argues that the fact that the respondent has not used the accused domain name to identify an active Web site should be considered as probative of bad faith (passive holding rule).
3. Complainant contends that Respondent has failed to show any good faith steps to develop a web site under the name <monkeysays.com>.
4. Complainant argues that intentional renewal of a contested domain name registration after a Respondent has received notice from a Complainant as to its legitimate interests in the domain name is evidence of bad faith.
5. Complainant asserts that Monkey Says is clearly the dominant portion of the mark and, for the purpose of a domain name, the portion that is used by the Respondent in a clearly confusingly similar manner. Moreover, Complainant has common law rights in Monkey Says (word mark).
6. Complainant argues that Respondent has admitted that <monkeysays.com> was listed on Sedo.com for sale which clearly reflects the purpose of the Respondent’s registering of Monkeysays.com for resale only.
Respondent
1. Respondent contends that Complainant registration of <monkeysays.net> is evidence that the complainant was clearly aware of the Respondent’s good faith registration of the <monkeysays.com> before registration of their domains and trademark and did deliberately create this trademark conflict and is using the UDRP process to gain control of the monkeysays.com domain.
2. Complainant has <monkey-says.net> parked and offering pay-per-click advertisements.
3. Respondent has been actively developing domains (<Fatalvirus.com> and <Panamacentro.com>) and development begun before the Complainants complaint and show that domains are not being passively held.
4. Respondent was using the <monkeysays.com> for pay-per-click before any rights by the Complainant and there has been no financial gain based on the trademark of the Complainant.
5. <monkeysays.com> was never targeted for sale and neither the Complainant nor any competitors were contacted for sale.
6. Respondent agrees to list a reasonable disclaimer for the Complainant’s trademark and block any ads from the Complainant or competitors.
The panel finds that complainant has failed to demonstrate bad faith in registration of <monkeysays.com> by the Respondent. Therefore the Complainant cannot prove the elements necessary to obtain transfer of the disputed domain name.
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 trademark rights and common law rights on MONKEY∙SAYS and MONKEY SAYS.
Complainant uses the mark to market and sell clothes, books, and other accessories for infants and young children and the first use in commerce declared by the Complainant is April 2008.
The Panel finds it establishes common law rights in the mark dating back to Complainant’s first use of the mark in commerce in April 2008. See Toyota Sunnyvale v. Adfero Publ’g Co., FA 921194 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the complainant’s TOYOTA SUNNYVALE mark had acquired secondary meaning sufficient for it to establish common law rights in the mark through continuous and extensive use of the mark since 2003 in connection with a car dealership under that mark).
As regards trademark rights, Complainant submitted evidence of US Federal Trademark Registration for the mark MONKEY∙SAYS, Reg. No. 3,618,714, – in connection with tote bags of class 18 and shirts, t-shirts, infant bodysuits and toddler bodysuit of class 25. It was registered on May 12, 2009, and a pending application for MONKEY SAYS (U.S. Fed. Trademark Ser. No. 85078699) in connection with goods of class 25, which was filed in 2010.
The Panel finds that Complainant has established rights in the mark under Policy ¶ 4(a)(i), dating back to August 13, 2008, because registration of a mark with a federal trademark authority, such as the USPTO, establishes rights in a mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO);
As regards Respondent allegations about the date of the <monkeysays.com> registration, which predates Complainant’s alleged rights in the mark, the Panel finds that this argument is not applicable under Policy ¶ 4(a)(i), and it will be presented under Policy ¶ 4(a)(iii). 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));
Complainant alleges that the <monkeysays.com> domain name is confusingly similar to the MONKEY SAYS mark. Complainant asserts that in creating the disputed domain name, Respondent merely removes the space between the terms of Complainant’s mark. Furthermore, Complainant avers that Respondent added the generic top-level domain (“gTLD”) “.com” to Complainant's mark. Based on the fact that the only differences between the trademark and the domain name are the space between the terms of Complainant’s mark and the addition of the generic top-level domain (“gTLD”) “.com” the Panel finds that Respondent’s disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also 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).
Once the Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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.”).
According to submitted evidence, Respondent does not have any trademark rights in the mark and since the WHOIS information lists the registrant of the disputed domain name as “Admin Administrator,” the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
However, prior Panels have underscored that Respondent’s use of a pay-per-click website is a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i)., see Jack Rogers Operating Company LLC v. George, FA0905001263143, (Nat. Arb. Forum June 29, 2009), see also EU Prop. Portfolio Ltd. v. Salvia Corp., FA 873726 (Nat. Arb. Forum Feb. 7, 2007) (holding that the respondent’s website usage of pay-per-click links was a bona fide offering of goods and services).
Moreover, Complainant has not filed evidence about the fact that the Respondent has started the use of the website after notice of the dispute. Thus, the Panel finds that the use has been in connection with a bona fide offering of goods or services. See Wicked Fashions, Inc. v. WebQuest c/o Chad Wright, FA0807001215980, (Nat. Arb. Forum September 17, 2008) (Turning to the remaining aspects of Policy ¶ 4(c)(i), there is nothing in the evidence to suggest that Respondent’s use of the domain name only occurred after notice of this dispute—quite the contrary—and for the following reasons the Panel finds that the use has been in connection with a bona fide offering of goods or services).
In addition, Respondent has registered the domain name prior to Complainant’s trademarks and based on this fact the Panel finds Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See PPTP.NET,LLC v. Hoa But, FA1002001310141 (Nat. Arb. Forum Apr. 12, 2010) (Respondent asserts that its registration of the <pptp.com> predates Complainant’s use of the mark in commerce. Respondent registered the disputed domain name on November 22, 1996, nearly thirteen years before Complainant’s formation on October 28, 2009. This is another reason why the Panel finds that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).).
Accordingly, the Panel finds that Respondent has legitimate interests in the disputed domain name.
According to the submitted evidence, this Panel notes that Respondent registered the domain name <monkeysays.com> on January 13, 2004 at least three years before the first use declared by the Complainant, who has not submitted any evidence of prior use of MONKEY SAYS. In the opinion of this Panel, Complainant has not provided evidence of trademark rights before the date of registration of the domain monkeysays.com by the Respondent.
Furthermore, Complainant’s business with the name MONKEY SAYS had not started by the registration date of the domain <monkeysays.com>. Consequently, the Respondent could neither have registered the domain name primarily for the purposes of selling, renting or transferring to the complainant nor to prevent the owner of the trademark from reflecting the mark in a corresponding domain name.
This Panel agrees with Respondent in the fact that Respondent could not possibly have had the purpose of disrupting the business that would not exist for years into the future.
The Panel finds that Respondent’s domain name registration predates Complainant’s rights which demonstrates that Respondent failed to engage in bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark), see also PPTP.NET,LLC v. Hoa But, FA1002001310141, (Nat. Arb. Forum Apr. 12, 2010), see also HotCam, Ltd. v. RNIS Telecommunication inc., FA0907001273417 (Nat. Arb. Forum Aug. 24, 2009).
With respect to Complainant’s argument about renewal of the domain name in bad faith, this Pannel finds that the bad faith has to be present when registering the domain name. See HotCam, Ltd. v. RNIS Telecommunication inc., FA0907001273417 (Nat. Arb. Forum Aug. 24, 2009) (the relevant date for assessing bad faith registration is the date upon which the domain name was initially registered or acquired by the respondent; mere renewal in bad faith is insufficient), see also WIPO Overview, supra, § 3.7 (describing this as the consensus view), see also GOL TV, Inc. v. Onyx Domain, FA0703000944251 (Nat. Arb. Forum, May 14, 2007) (the fact that the domain name was registered without knowledge of Complainant, before there was any such business and before there was any such mark, precludes any finding of bad faith registration in this case).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
DECISION
Since Complainant has failed to meet the burden of proof of bad faith registration and use under ICANN Policy ¶ 4(a)(iii), the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <monkeysays.com> domain name be RETAINED by Respondent.
Héctor A. Manoff, Panelist
Dated: June 16, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page