NJ-AERIAL PHOTOGRAPHY v. Darren Large
Claim Number: FA1105001387124
Complainant is NJ-AERIAL PHOTOGRAPHY (“Complainant”), represented by Michael Nolan, New Jersey, USA. Respondent is Darren Large (“Respondent”), represented by Stephen H. Sturgeon of The-Internet-Lawyers.com, P.C., Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <njaerialphoto.com>, registered with Wild West Domains, Inc.
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.
Dr. Reinhard Schanda, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 4, 2011; the National Arbitration Forum received payment on May 4, 2011.
On May 06, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <njaerialphoto.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the domain name. 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 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 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@njaerialphoto.com. Also on May 9, 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 June 1, 2011.
On June 6, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is an aerial photography supplier serving New Jersey, Pennsylvania and Delaware since 2007. According to Complainant it owns all rights, title and interest in and to the name “NJ-Aerial Photography”, as well as in and to a logo incorporating the name: NJ-Aerial Photography.
Such rights are protected under New Jersey trade name registration No. 0001356714. NJAERIAL uses this mark in the United States in conjunction with selling aerial photography services. NJ-AERIAL's trade name registration has been in full effect for 3 years, since April 25, 2008, and subject to the protective trademark laws of that state.
Complainant further contends that it owns the domain names <NJ-AERIAL.COM> and <NJAERIALPHOTOGRAPHY.COM>, among others, which exist as a single operating commercial website. These specific domains were registered in September 2007.
Complainant contends that Respondent’s Domain Name, <NJAERIALPHOTO.COM> is identical to and incorporates the “NJ-Aerial Photography” name. While Complainant has not obtained federal trademark registrations for its name or logo, it is settled that the term “trademark or service mark” as used in Paragraph 4(a)(i) of the Policy encompasses both registered marks and common law marks. Complainant has a state trade name registration in effect, as registered on April 25, 2008
Further Complainant is primarily known by its web marks <NJ-AERIAL.COM> and <NJAERIALPHOTOGRAPHY.COM>. The disputed domain <njaerialphoto.com> is confusingly similar in both name and nature of the services provided. Without any distinctive elements in the Domain Name, the <njaerialphoto.com> domain appears to visitors as an official website owned and operated by Complainant.
Moreover, the Domain Name reads as though it is the official website of Complainant and there is nothing in the Domain Name to dissuade users otherwise. Thus, when average Internet users enter <njaerialphoto.com> into their web browser, they have a legitimate expectation that they are viewing an official NJ-AERIAL website regarding aerial photography services.
In short, as the Domain Name incorporates the “NJ-Aerial Photography” name, the Domain Name is identical to Complainant’s mark.
Complainant contends that it never authorized Respondent to use the “NJ-Aerial Photography” name, logo or marks in any manner, nor to register the Domain Name. Likewise, there is no evidence that Respondent is or has been commonly known as “NJ-Aerial Photography,” has acquired any trademark or service mark rights in the “NJ-Aerial Photography” mark, or has ever offered any bona fide goods or services of any kind on the Infringing Website.
The Respondent has no license or agreement to use the “NJ-Aerial Photography” mark, the WHOIS information for <njaerialphoto.com> is listed as of 05/02/2011 as DomainsByProxy.com, 15111 N. Hayden Rd., Ste 160, PMB 353,
Scottsdale, Arizona 85260 and does not identify the Respondent as being commonly known by the disputed domain name, and the <njaerialphoto.com> website itself does not identify the Respondent as having any association with the disputed domain name. The Respondent was not using the disputed domain name for any bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Complainant registered its principal domains in September 2007 and was granted New Jersey trade name protection in April 2008. Respondent registered the Domain Name on April 7, 2010, approximately two and a half years after Complainant had begun operating under the name “NJAerial Photography.” Respondent’s Domain Name is trading a similar service on the goodwill of Complainant’s trademark, “NJ-Aerial Photography.” Complainant became aware of the registration in March 2011 while trying to register additional domain names similar to the “NJ-Aerial Photography” trade name. Such example is <njaerialphoto.com> as registered in February 2011. The use of domain <njaerialphoto.com> creates confusion as to Complainant’s sponsorship or affiliation with the resolving website. The Respondent took advantage of Complainant’s domains and market credibility by registering a domain name containing Complainant’s trademark to sell similar services and diverting potential customers away.
B. Respondent
Respondent initially points out that the UDRP was established to permit the expedited disposition of clear abuses. According to Respondent clear abuse is certainly not present in the instant case.
Respondent contends that the ICANN policy is very narrow in scope; covers only clear cases of "cybersquatting" and "cyber piracy," and does not cover every dispute that might rise over domain names.
Respondent is of the view that the instant case is not a clear case of “cybersquatting” and “cyber piracy”. Accordingly, Respondent requests that the Panel not grant the Complainant’s request to have the Respondent’s domain name taken away.
Respondent notes that the Complaint does not provide any proof, evidence or substantiation to prove that the Complainant has any trademark rights with respect to the terms included in the domain name. Although Complainant has submitted a document with respect to a “trade name” filing with respect to the term “NJ AERIAL PHOTOGRAPHY” a filing for the use of a “trade name” in a state does not establish trademark rights that can be used as a basis for the taking-away of a domain name in a UDRP proceeding.
Complainant also alleges that Complainant has a common law trademark without any proof. Complainant fails to present competent evidence that it has legal rights in the trademark.
Since protectable trademark rights at common law are initially premised upon secondary meaning or inherent distinction, Complainant must prove one or the other. Distinctive marks do not describe any ingredient, quality or characteristic of the good or service at issue. In the instant case, the phrase is not specific to or synonymous with the product but rather derives from two generic words. As such, the term “NJ AERIAL PHOTOGRAPHY” is descriptive, not distinctive. According to Respondent secondary meaning is demonstrated where in the minds of the public, the primary significance of a product feature or term is to identify the source of the product itself. Among the factors to be considered on the question whether a mark or name has attained a secondary meaning are the length of use, exclusivity of use, any copying, and actual confusion. The Complainant has therefore failed to demonstrate that the public sees the phrase primarily as a means of identifying the product. Moreover, to whatever extent the term is distinctive or has otherwise achieved secondary meaning, it is not exclusively, or even primarily, through the efforts of the Complainant.
Respondent further contends that Complainant has also failed to sustain its burden of proving that Respondent did not have any legitimate interest in the domain name.
Furthermore, Respondent does have a bona fide good reason to have and utilize the domain name. Respondent has, in fact, been operating a bona fide business goods and services.
It is noteworthy that the false nature of the Complainant’s complaint is vividly demonstrated by the fact that it contains obviously false statements and multiple grossly contradictory allegations.
Respondent emphasizes that the Uniform Domain Name Dispute Policy requires that Complainant must prove bad faith both at the time of registration and in the current use of the domain name. An examination of Complainant’s filing does not provide proof or evidence to support the allegation that Respondent acted in bad faith either at the time of registration or in the current use of the domain name.
There is absolutely no proof presented in the Complaint to support a finding of bad faith in these or any other ways. Therefore, the Complainant has failed to establish this required element.
The Panel finds that:
1. the Domain Name <njaerialphoto.com>, is confusingly similar to Complainant’s marks,
2. the Respondent has a legitimate interest in the Domain Name <njaerialphoto.com>, and
3. the Respondent has not registered and is not using the Domain Name <njaerialphoto.com> in bad faith.
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.
Respondent contends that Complainant has failed to establish its rights in the NJ-AERIAL PHOTOGRAPHY mark under Policy ¶ 4(a)(i). The contention stems from Respondent’s belief that Complainant has offered no evidence to show that it has used the mark continuously for a period of time sufficient to establish a secondary meaning, as well as, Respondent’s assertion that registering a trade name with the State of New Jersey does not confer rights in the name registered under the UDRP to Complainant. The Panel also finds that Complainant has failed to sufficiently establish its rights under Policy ¶ 4(a)(i). See Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (failing to find common law rights where the complainant provided little evidence showing the extent of its use of the mark over the three years that the complainant claimed to have been using the mark); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the respondent’s state trademark registration and intent-to-use application for YAHOO VENTURES were not enough to establish rights and legitimate interests in <yahooventures.com> within the meaning of Policy ¶ 4(a)(ii) because the respondent had not established an actual business at the domain name before initiation of the dispute, and the facts as to use—similarity of the marks and terms in question, similarity of products and services, similarity of channels of distribution, and similarity of consumer—all point to a lack of rights and legitimate interests.).
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent contends that it is engaging in a bona fide offering of goods or services through the <njaerialphoto.com> domain name under Policy ¶ 4(c)(i). Respondent allegedly offers aerial photography services via the disputed domain name and contends that this usage is a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i). Since sufficient evidence is on record indicating that fact the Panel finds that Respondent is making a bona fide offer of services from the disputed domain name 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)); see also Secondary Sch. Admission Test Bd., Inc. v. Severino & Hosko, FA 408094 (Nat. Arb. Forum Mar. 24, 2005) (holding that the respondent’s use of the <prepssat.com> domain name was a legitimate use because respondent provided services designed to help students prepare for the SSAT, also the complainant’s mark).
Respondent also argues that the terms of the <njaerialphoto.com> domain name are common and descriptive, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. Since the Panel agrees with Respondent, the Panel finds that Respondent can establish rights or legitimate interests in the disputed domain names 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); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
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).
Since the Panel concludes that Respondent has rights or legitimate interests in the <njaerialphoto.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed 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); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Since the Panel is of the view that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii) the Panel further finds that Respondent has not registered or used the <njaerialphoto.com> domain name in bad faith. See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also 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 respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent contends that the <njaerialphoto.com> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s NJ-AERIAL PHOTOGRAPHY mark. Moreover, Respondent contends that the registration and use of domain name comprising such a common term is not necessarily done in bad faith. Since the Panel finds that a Respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common terms, the Panel finally finds that Respondent did not register or use the <njaerialphoto.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <njaerialphoto.com> domain name REMAIN WITH Respondent.
Dr. Reinhard Schanda, Panelist
Dated: June 9, 2011
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