national arbitration forum

 

DECISION

 

ScribeWrite, LLC v. Buydomains.com / Inventory Management

Claim Number: FA1107001398963

 

PARTIES

Complainant is ScribeWrite, LLC (“Complainant”), represented by Adam Stephenson of Adam R. Stephenson, LTD., Mesa, Arizona, USA.  Respondent is Buydomains.com / Inventory Management (“Respondent”), represented by Erik S. Zilinek of NameMedia, Inc., Waltham, Massachusetts, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <schoolwebmaster.com>, registered with eNom, Inc.

 

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.

 

Fernando Triana, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 15, 2011; the National Arbitration Forum received payment on July 18, 2011.

 

On July 18, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <schoolwebmaster.com> 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 (hereinafter, the “Policy” or “UDRP”).

 

On July 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 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@schoolwebmaster.com. Also on July 21, 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 August 11, 2011.

 

On August 15, 2011, Complainant timely filed an additional submission. On August 19, 2011, Respondent timely filed a response to Complainant’s additional submission.

 

On August 17, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Fernando Triana, Esq. as Panelist.

 

On August 31, 2011, due to exceptional circumstances and at the sole panelist’s request, the time period during which he was required to render his decision, was extended until September 6, 2011,

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

 

A.      Complainant

 

The Complaint is based on the Complainant’s use and ownership of the trademark SCHOOL WEBMASTERS.

 

Complainant’s main contentions are as follows:

 

1.         The domain name <schoolwebmaster.com> (hereinafter, “Disputed Domain Name”) is confusingly similar in appearance, sound, connotation and commercial impression to the trademark SCHOOL WEBMASTERS.

 

2.         Respondent is not using and has no demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. Respondent has had the Disputed Domain Name for over five (5) years and has done very little with it, apart from attempting to resell it. Respondent has no legitimate commercial interest in the Disputed Domain Name beyond the intention to resell it.

 

3.         Respondent is not commonly known by the Disputed Domain Name.

 

4.         Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. 

 

B.      Respondent

 

Respondent responded to Complainant’s contentions as follows:

 

1.         There exists no legal basis for transferring the Disputed Domain Name to Complainant.

 

2.         Complainant does not have the exclusive right to use the generic English words “School” and “Webmasters”, since this ordinary two-word phrase is neither fanciful nor unique.

 

3.         Respondent first registered the Disputed Domain Name more than five (5) years ago and at least eight (8) months before Complainant applied to register its first of two semantically trademarks, when the previous registration expired and it became available for anyone to register. In this sense, Respondent could have not known of, much less anticipated, Complainant’s purported trademark and, thus could have not have registered the Disputed Domain Name with the purpose of selling it to the Complainant, of disrupting its business, of preventing it from acquiring a domain name reflecting its trademark, or of confusing users seeking Complainant’s website.

 

C.     Additional Submissions

 

Complainant alleges SCHOOL WEBMASTER is not a common dictionary word and that it is not possible to argue that anyone may have a legitimate interest in a domain name that is a two-word phrase, as long as the words of the phrase, when taken separately and singly, are common dictionary words. Complainant expresses that the United States Patent and Trademark Office (hereinafter, “USPTO”) would have rejected the registration of both the Complainant’s trademarks, had they been generic or merely descriptive. Instead, SCHOOL WEBMASTER trademarks were registered since they were found not to be generic or merely descriptive.

 

Respondent argues that Complainant has not provided the evidence needed to prove that it is entitled to obtain the transfer of the Disputed Domain Name. Specifically, Respondent emphasizes that:

 

a)        Respondent registered the Disputed Domain Name before Complainant registered or applied for Complainant’s two federal trademark registrations. Consequently, Respondent did not register the domain in bad faith and had no reason to suspect, much less anticipate, anyone would ever adopt as a trademark the plural form of an ordinary two-word phrase, nearly six (6) months later.

 

b)        Complainant failed to evidence that Respondent is using or has used the website of the Disputed Domain Name in a manner that is likely to confuse the consumers or in any way that might impinge on Complainant’s trademarks.

 

c)         Complainant failed to evidence that its marks do not have any strength as indicators of source or that they have acquired the status of famous trademarks.

 

d)        Complainant has the burden of proof on all counts, including trademark rights and the evidence of bad faith registration and use. In this case, Complainant has not met that burden. In consequence, the Complaint should be denied and the Disputed Domain Name should not be transferred to Complainant.   

 

FINDINGS

Paragraph 15 (a) of the Rules of the Uniform Domain Name Dispute Resolution Policy (hereinafter, the “Rules”) instructs the Panelist to: “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”. Likewise, paragraph 10 (d) of the Rules provides that: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.

 

DISCUSSION

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three (3) elements to obtain an order that a domain name be cancelled or transferred:

 

(i)         The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

 

(ii)        Respondent has no rights or legitimate interests in respect of the domain name; and

 

(iii)       The domain name has been registered and is being used in bad faith.

 

This discussion, base on the evidentiary support submitted by the parties, will be developed as follows:

 

First of all (Section A), the sole panelist will determine whether or not the Disputed Domain Name is identical or confusingly similar to the trademarks in which Complainant has rights. Secondly (Section B), the sole Panelist will verify if Respondent has any rights or legitimate interests in respect of the Disputed Domain Name; and thirdly (Section C), the sole Panelist will establish whether or not the Disputed Domain Name has been registered and is being used in bad faith.

 

A.      Identical and/or Confusingly Similar

 

Complainant contends that the Disputed Domain Name <schoolwebmaster.com> is confusingly similar in appearance, sound, connotation and commercial impression to Complainant’s SCHOOL WEBMASTERS trademarks.

 

a)      Existence of a trademark or service mark in which the Complainant has rights

 

Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in a number of many jurisdictions of the world.

 

The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.

 

When a sign is registered as a mark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.

 

However, the UDRP does not discriminate between registered and unregistered trademarks[1] and thus, it is well established that a Complainant does not require owning a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.

 

In this case, Complainant proved its rights in the SCHOOL WEBMASTERS trademarks by means of the USPTO Certificates of Registration numbers 3,268,431 and 3,908,889 (See Complaint, Annexes K and L) which appear to be incontestable and conclusive evidence of its ownership of the mark and the exclusive right to use it in connection with the stated goods and services. The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.[2] 

 

Under Certificate of Registration number 3,268,431 the SCHOOL WEBMASTERS trademark is registered in the International Class 42 for computer programming services for others website design and development services for others, graphic designs of websites for others, website content writing services for others, website management services for others. This trademark was registered on July 24, 2007 and its first use in commerce dates back to August 2006. 

 

Under Certificate of Registration number 3,908,889 the SCHOOL WEBMASTERS trademark is registered in the International Class 35 for advertising and promotion services and related consulting. This trademark was registered on January 18, 2011 and its first use in commerce dates back to October 2009.

 

Thus, Complainant established its rights in the SCHOOL WEBMASTERS trademark, not only based on the USPTO certificates of registration but also by means of its use in commerce in the United States of America.

 

Therefore, the sole Panelist concludes that Complainant has demonstrated registered rights in the SCHOOL WEBMASTERS mark for purposes of Paragraph 4(a)(i) of the Policy. 

 

b)      Identity or confusing similarity between the Disputed Domain Name and the Complainant’s trademark.

 

Regarding the identity or the confusing similarity between the Disputed Domain Name and the Complainant’s trademark, Complainant alleges that there are only three differences between these two, which, instead of making them different, make them confusingly similar: i) Respondent removed the space between SCHOOL and WEBMASTERS; ii) Respondent has added “.COM” to the end; iii) Respondent has removed the “S” at the end, so that it is the singular and not the plural form.

 

According to the Complainant, these changes do not affect the appearance, sound, connotation or commercial impression sufficiently to eliminate likelihood of consumer confusion. 

 

In turn, Respondent alleges that Complainant does not have the exclusive right to use these generic English words that describe a type of webmaster because this ordinary two-word phrase is neither fanciful nor unique, but rather an ordinary two-word phrase used by innumerable third parties to provide school and/or webmaster information, or advertise school and/or webmaster job openings, among other things.

 

Before establishing whether or not the Disputed Domain Name is confusingly similar to the Complainant’s SCHOOL WEBMASTERS trademark, the sole Panelist wants to point out that the addition of generic top-level domains (gTLD), i.e., “.com,” “.biz,” “.edu,” “.org”, ”.co” cannot be considered when determining if the registered domain name is identical or confusingly similar to the registered trademark. Neither the addition of country code top-level domains (ccTLD), i.e., .co., .de, .cr, .es, nor the insertion of a gTLD have a distinctive function.

 

UDRP Panels have unanimously accepted that the inclusion of the “.com” (gTLD), in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000), the Panel stated that: “the addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.” 

 

In addition, the sole Panelist agrees with the Complainant on the conclusion that removing the space between SCHOOL and WEBMASTERS, and that removing the “S” at the end, is not sufficient to make the disputed domain name different from the SCHOOL WEBMASTERS trademark[3].

 

As to the argument of Respondent, according to which Complainant does not have the exclusive right to use these English words (“SCHOOL” and “WEBMASTERS”) that describe a type of webmaster (because they are neither fanciful nor unique, but rather ordinary and used by innumerable third parties to provide school and/or webmaster information, or advertise school and/or webmaster job openings) the sole Panelist must state that the distinctiveness of Complainant’s trademark SCHOOL WEBMASTERS shall not be object of the present discussion, nor shall be Complainant’s rights over said trademark. In fact, as mentioned above, the sole Panelist considers that Complainant duly evidenced its rights in the SCHOOL WEBMASTERS trademark, not only by means of the USPTO certificates of registration but also by means of its use in commerce in the United States of America. Additionally, as said before, the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.[4] 

 

In consequence, as per this reasoning, the sole Panelist finds that, in the present case, the Disputed Domain Name is confusingly similar to the Complainant’s trademark and thus, the requirement set forth in Paragraph 4(a)(i) of the Policy is duly complied with.

 

B.      Rights or Legitimate Interests

 

a)      Prima Facie Case

 

Regarding this second element (“respondent has no legitimate interests in respect of the domain name”) of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent.

 

In Julian Barnes v. Old Barn Studios Limited, D2001-0121 (WIPO Mar. 30, 2001), the Panel stated that:

 

Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head.

 

Therefore, a Complainant is required to make a prima facie case that the Respondent lacks of rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of proof shifts to Respondent, who must prove those rights or legitimate interests. If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.

 

In this case, the sole Panelist concludes there is a prima facie case, as will be explained below.

 

Firstly, with regard to the use of its SCHOOL WEBMASTER trademark, Complainant alleges that:

 

a)        It uses the SCHOOL WEBMASTERS trademark in conjunction with various computer and website related services since at least 2006;

 

b)        It uses SCHOOL WEBMASTERS trademark in conjunction with advertising, marketing, promotion services and related consulting since at least 2008;

 

c)         It operates the <schoolwebmasters.com> website since 2006;

 

d)        It has designed websites under the SCHOOL WEBMASTERS trademark for clients in several States of the U.S.A., and currently serves over four hundred (400) schools, school districts, teacher sites and businesses;

 

e)        It markets itself nationally and its many clients and vendors have come to associate its quality services with the SCHOOL WEBMASTERS trademark.

 

The sole Panelist, Ex Officio, visited Complainant’s website and found sufficient evidence of the use of the SCHOOL WEBMASTERS trademark. Additionally, as concluded in Section A  above (“Identical and/or Confusingly Similar”) Complainant proved not only that it has rights over the SCHOOL WEBMASTERS trademark, but that the Dispute Domain Name is confusingly similar to its trademark. In the sole Panelist’s criteria, these circumstances suffice to consider the Complainant has duly structured a prima facie case. 

 

As a consequence, it is now the Respondent’s burden to evidence it has rights or legitimate interest in the Disputed Domain Name.

 

b)      Respondent’s rights or legitimate interests in the Disputed Domain Name

 

Paragraph 4(c) of the Policy determines that the following circumstances in particular but without limitation, if found by the sole Panelist to be present, shall demonstrate the Respondent’s rights or legitimate interest to the domain name:

 

a)    Before any notice to Respondent of the dispute, Respondent’s 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

 

b)        Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

 

c)         Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Respondent claims that it registers domain names that become available for registration through expiration and deletion, and that its policy is to register and maintain only those domain names that incorporate common and/or generic words, phrases, acronyms, abbreviations and/or descriptive terms over which the available evidence suggests no third parties has no exclusive rights.

 

Respondent contends that particularly, the disputed domain name does not offer any links, information or advertising related to, or competitive with, the Complainant’s goods and/or services.

 

As per Respondent’s arguments, Respondent listed the domain name for sale, but it did not register such domain name with the purpose of selling it to a specific third party, nor to Complainant. Respondent did not register the disputed domain name, having Complainant’s trademark in mind and had no knowledge of either Complainant’s asserted marks or their geographic use.

 

Respondent asserts it did not register the disputed domain name with the intent to disrupt Complainants business, to confuse consumers looking to access Complainant’s website, or to prevent Complainant from owing a domain name reflecting its trademark in one or two domain names.

 

Respondent submitted the following evidence that supports the statements above:

 

·               Response, Exhibit A: affidavit of Kelly Conlin, Chairman and CEO of NameMedia, Inc. Mrs. Conlin asserts, among other relevant statements that:

 

1.    Respondent employs

 

a corporate policy of registering and maintaining only those domain names that incorporate common and/or generic words, terms or descriptive phrases for which available evidence suggests no single party has exclusive rights” and that since 1999 Respondent has “developed a large portfolio of domain names incorporating common words, as well as descriptive terms and phrases.

 

2.    Respondent has registered under 150 domain names that incorporate the word “WEBMASTER”, most of the times alongside descriptive words, such as: <advancedwebmaster.com>; <jobwebmaster.com>; <juniorwebmaster.com>; <specialwebmaster.com>; <professionalwebmaster.com>; and <worldclasswebmaster.com>.

 

3.    Respondent registered the Disputed Domain Name on January 9, 2006, this is, over seven (7) months before Complainant’s first use in commerce of its trademark SCHOOL MASTERS, and thus, could have not known or anticipated that any third party had interests in a descriptive two-word phrase.

 

4.    Respondent uses technology to regularly screen acquired domain names for, among other things: conflict with exclusively-owned, descriptive, or fanciful trademarks applied for and/or registered at, among other places, the USPTO; and significant market presence on the Internet of non-USPTO trademarks.

 

5.    Upon acquisition of the Disputed Domain Name, the results for a query on “SCHOOL WEBMASTER” revealed no active or pending registration for Complainant’s mark at the USPTO.

 

·               Copy of the first one-hundred (100) results for query on “SCHOOL WEBMASTER” using GOOGLE® search engine, which displays zero references to Complainant or its trademark. The sole Panelist, Ex Officio, on September 5, 2011, confirmed this conclusion by visiting the GOOGLE® search engine and looking up the expression “SCHOOL WEBMASTER”.

 

Ex officio, the sole Panelist, also on September 5, 2011, visited the Disputed Domain Name website and found the following relevant information:

 

·               The website indicates, at the top of the page: “The domain schoolwebmaster.com is for sale. To purchase, call BuyDomains.com at 718-839-7903 or 866-866-2700. Click her for more details.”

 

·               The website’s main page includes, among others, the following links: “school photos”; “apples”; “artichoke dips”; “buy domain”; “graduate school education”; “school bell system”; “online school degree”; and “masters in school.”

 

·               By clicking on the “buy domain” link for instance, user finds a list of websites that offer domain name registration and search services, among other Internet-related services. By clicking on the “artichoke dip” link, user finds a list of websites apparently related to cooking recipes. By clicking on the “school photos” link, user finds a list of websites apparently related to photographs. Every link displays a list of websites related to various topics which even seem to be random.

 

·               By clicking on the “About Us” link, user finds the following text: “schoolwebmaster.com is partnered with SmartName to bring you targeted search terms designed specifically to enhance the users overall online search experience. schoolwebmaster.com displays the top advertisers for and more. We've taken the confusion out of searching online, allowing you to find what you want in a timely manner. We understand everyone searches with different criteria in mind. That's why we've designed schoolwebmaster.com to be navigated on your terms. schoolwebmaster.com brings you the most comprehensive group of advertisers in an easily navigated format, giving users a vast range of choices in as few clicks as possible.”

 

It is important to note that the links and contents made available at the Disputed Domain Name website are not similar to those made available at the Complainant’s website <schoolwebmasters.com>.

  

Ex Officio, the sole Panelist, on September 5, 2011, visited the Buy Domain’s website (<buydomains.com>) and found the following relevant information:

 

·               The website offers over 1,500,000 premium domain names.

·               By searching “webmaster” in the “search domain” option, over three-hundred (300) domain names for sale, including the expressions “webmaster” or “webmasters”, are listed.

 

To begin with, the reselling or trading domain names may be considered a bona fide offering of goods and services, and shall not in every case, be considered illegal per se. Regarding this issue, it is important to point out that by the time Respondent registered the disputed domain name, Complainant had not registered its SCHOOL WEBMASTERS trademark before de USPTO, and thus, Respondent could not have known that the disputed domain name would, in the future, be confusingly similar to a trademark.

 

Regarding domain name speculation, the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center, in the case of Micron Technology, Inc. v. Null International Research Center, D2001-0608 (WIPO June 20, 2001) (emphasis added), expressed:

 

The Panel agrees with the Respondent that domain name speculation can be a legitimate interest if the Respondent was not aware of Complainant’s trademark rights. See id.; Audiopoint, Inc. v. eCorp., [ ] D2001-0509 ([WIPO] June 14, 2001); General Machine Prods. Co. v. Prime Domains, No. FA0001000092531 ([Nat. Arb. Forum Mar.] 16, 2000). Here, Complainant has proffered no evidence that Respondent likely was aware of its trademark rights at the time it registered the domain name or otherwise was targeting Complainant or its mark. This conclusion is bolstered by the fact that Respondent has registered other, similar domain names such as <populartechnology.com>, <thirdgenwireless.com>, <biotechrevolution.com>, <seniorhealthissues.com> and <bravenewbiotech.com>. See Complaint, Exhibit E. Accordingly, the Panel finds, on this admittedly truncated record, that Complainant has failed to show that Respondent lacks a legitimate interest.

 

All of the evidence submitted by Respondent and found Ex Officio by the sole Panelist, studied in the light of previous decisions such as the above transcribed, leads to the conclusion that Respondent has legitimate interest in the Disputed Domain Name, which consists in the lawful commercial activity of reselling domain names.

 

Complainant alleged that Respondent did not use the Disputed Domain Name in years, and attempted to use this fact as an argument to support Respondent’s lack of interest in the Disputed Domain Name. However, as previously explained, the reselling of domain names is a legitimate activity, and the lack of use of the registered domain names which are being offered, is purely logical, since it is a good that is to be used exclusively by the purchaser.

 

In this sense, Complainant has failed to prove compliance with the requirement set forth in Paragraph 4(a)(ii) of the Policy.

 

C.     Registration and Use in Bad Faith

 

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the sole Panelist to be present, shall be evidence of the registration and use of a domain name in bad faith:

 

(1)       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 trademark 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

 

(2)       You have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

 

(3)       You have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(4)       By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.

 

After reviewing the arguments of the parties and the evidence submitted, the Panelist concludes that Respondent did not register the disputed domain name in bad faith and does not currently use it in bad faith, since by the time Respondent registered the disputed domain name, Complainant had neither registered its SCHOOL WEBMASTERS trademark before the USPTO, nor used it in commerce, and thus, Respondent could not have known that the disputed domain name would, in the future, be confusingly similar to a trademark.  

 

Additionally, the selection of the words SCHOOL and WEBMASTERS appears random, since they are commonly used in the English language, and the disputed domain name website does not display any contents related to Complainant’s businesses.

 

With regard to the offer made by Complainant to purchase the Disputed Domain Name (offer made by means of the cease and desist letter sent to respondent on January 28, 2011, see Complaint, Annex A) it is important to point out that it was the Complainant who demanded Respondent to transfer the Disputed Domain Name for the price of USD $800. In response to this cease and desist letter, Respondent did not mention the price for this domain name.

 

However, when visiting the <buydomains.com> website, it is clear that the prices of the domains and of the Disputed Domain Name are not publicly available. These may only be requested by e-mail or by phone.

 

Consequently, the sole Panelist believes that Respondent did not: i)  registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; ii) registered the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name; iii) registered the domain name primarily for the purpose of disrupting the business of a competitor; iv) intentionally attempted to attract, for commercial gain, Internet users to the disputed domain name website 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 the website or location or of a product or service on said website or location.

 

Therefore, the sole Panelist finds that Complainant did not satisfy the elements of Paragraph 4(a)(iii) of the Policy.

 

This allows the sole Panelist to conclude that: even if the Disputed Domain Name is confusingly similar to the trademarks in which Complainant has rights, Respondent has legitimate interests in respect of the Disputed Domain Name and did not register or uses the Disputed Domain Name in bad faith.

 

DECISION

Not having established all three elements required under the ICANN Policy, the sole Panelist concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <schoolwebmaster.com> domain name REMAIN WITH Respondent.

 

 

Fernando Triana, Esq., Panelist

Dated:  September 6, 2011.



[1] See MatchNet PLC. V. MAC Trading, D2000-0205 (WIPO May 11, 2000) (citing British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000)).

[2] See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO May 5, 2002).

[3] See Microsoft Corporation v. Brown, FA 1387342 (Nat. Arb. Forum June 13, 2011).

[4] See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO May 5, 2002).


 

 

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