national arbitration forum

 

DECISION

 

Foster and Smith, Inc. v. Rarenames Inc.

Claim Number: FA1111001413736

 

PARTIES

Complainant is Foster and Smith, Inc. (“Complainant”), represented by Kourtney A. Mulcahy of Hinshaw & Culbertson LLP, Illinois, USA.  Respondent is Rarenames Inc. (“Respondent”), represented by Erik S. Zilinek of NameMedia, Inc., Massachusetts, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <diversden.com>, registered with Tucows, Inc.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

Calvin A. Hamilton, G. Gervaise Davis III and The Honorable James A. Carmody as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2011; the National Arbitration Forum received payment on November 2, 2011.

 

On November 1, 2011, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <diversden.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 November 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 22, 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@diversden.com.  Also on November 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 November 23, 2011.

 

Claimant filed an Additional Submission which, although not in compliance with the Supplemental Rule 7, will be considered by the Panel. Respondent timely filed an Additional Submission on December 5, 2011 which will be considered by the Panel.

 

On November 30, 2011, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton, G. Gervaise Davis III and The Honorable James A. Carmody as Panelists.

 

On December 12, 2011 the Panel issued a procedural Order extending the time for the Panel to submit its decision until December 21, 2011.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Claimant alleges that since its inception in 1983, it has sold animal products under various trade and service marks. On July, 11, 1996, Complainant reserved the domain “drsfostersmith.com” to be used in connection with the sale of its animal products. Complainant also owns the domains “liveaquaria.com” and “flyingfishexpress.com” which were registered on October 30, 2000 and September 24, 1999 respectively. These domains are used by Complainant in relation to websites for the sale of its aquatic livestock (such as tropical fish) and related items.

 

Complainant acquired the company called FlyingFishExpress on or about 2004 with all rights, title and interests in the mark, DIVER’S DEN. The acquired company used the service mark DIVER’S DEN since November 18, 1999 for a website related to the sale of aquatic livestock. On November 23, 2005 Complainant filed a service mark application for the mark DIVER’S DEN which was issued on October 10, 2006. Complainant redirected all flyingfishexpress customers to its websites at <liveaquaria.com/ffexpress/>. On that web site Complainant displayed the mark DIVER’S DEN and provided links to <liveaquaria.com>.

 

Complainant has spent significant sums on the advertising of the family of marks. Complainant has sold its products, along with its DIVER’S DEN products, in the U.S., France, Japan, Canada, Switzerland, Belgium and Germany. Complainant has obtained millions of dollars in revenue from its commercial activity. Complainant has received several awards related to its web site and quality of products. Accordingly, Complainant and its products are well-known in the market place and their trademarks have become a widely recognized source identifier of quality animal products. In particular, the mark DIVER’S DEN has become well-known in relation to aquatic livestock (such as tropical fish) and related items.

 

Claimant states that there is no license or other business relationship between Complainant (or Complainant’s predecessor) and Respondent. Accordingly, Respondent has no permission whatsoever to use the Complainant’s service mark DIVER’S DEN.

 

Currently, and for a period of time, Respondent has maintained a commercial website associated with the disputed domain name located at <diversden.com>. The domain name associated with this website contains the entire portion of Complainant’s mark; i.e. “Diver’s Den”. In addition, the homepage shows that the name of the site is “diversden.com”, and features links to aquatic related products and services. If a visitor to Respondent’s website searches for the term “fish”, he or she is taken to a page containing “Sponsored Listings” for a variety of companies that sell aquatic stock and related items, including Complainant’s competitors Living Sea Aquarium, Dexknows, and Local.com. Each of these competitors sells fish, aquariums and/or related aquatic supplies. As one can see from a review of the Respondent’s site, one of the purposes of the site is to reach users interested in purchasing aquatic livestock and related products. Accordingly, internet users are falsely led to believe that the Respondent’s website is provided or sponsored by Complainant.

 

 

B. Respondent

The Respondent respectfully requests the Administrative Panel to deny the remedy requested by the Complainant.

 

 There is no basis for transferring the disputed domain name <diversden.com> (the “Disputed Domain”) to Complainant.  Complainant does not have exclusive rights to the phrase “diver’s den” which is not a “coined” or unique phrase, but rather is a common phrase widely used by numerous parties.  Respondent registered <diversden.com> on May 26, 2003, as many as eight (8) years ago, when it became available for anyone to register.  Respondent selected the Disputed Domain because it incorporates two short, common words in a common commercial phrase to which no single party has exclusive rights.  Respondent had no knowledge of Complainant’s purported mark, and did not register the Disputed Domain to sell it to Complainant, to disrupt its business, to prevent it from acquiring a domain name reflecting its trademark, or to confuse users.

Respondent did not register the Disputed Domain because it incorporates Complainant’s mark, or any mark. Respondent registered the Disputed Domain because it is comprised of a common, highly descriptive commercial phrase.  Such registration is entirely permissible under the UDRP and under trademark law. Further, Respondent registered the Domain Name more than two (2) years before Complainant filed a trademark application, therefore Respondent could not have known of, much less anticipated, Complainant’s claim of worldwide exclusivity to this common commercial phrase, and thus could not have registered the Disputed Domain with the intent of selling it to Complainant, to disrupt its business, to prevent it from acquiring a domain name reflecting part of its company name, or to confuse users seeking Complainant’s various domain name.

 

Complainant alleges that Respondent has violated the UDRP because it offers the Disputed Domain for sale.  However, it is well-established that public offers for sale of a domain name comprised of common words in a common commercial phrase do not constitute bad faith under the Policy but, instead, constitute a bona fide business activity that establishes the Respondent’s legitimate interest. 

 

C. Additional Submissions

Claimant filed an Additional Submission. The Submission was not filed in compliance with Supplemental Rule 7. The Panel nevertheless has considered the Additional Submission.

 

Respondent timely filed an Additional Submission in accordance with Supplemental Rule 7.

 

Neither document has influenced the Panel’s decision.

 

FINDINGS AND 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

 

Complainant furnishes the Panel with a trademark certificate from the United States Patent and Trademark Office ("USPTO") for the DIVER’S DEN mark (Reg. No. 3,154,091 filed November 23, 2005; registered October 10, 2006).  Complainant contends that such evidence establishes its rights in the DIVER’S DEN mark under Policy ¶ 4(a)(i).  The Panel agrees and finds that Complainant has rights in the DIVER’S DEN mark under Policy ¶ 4(a)(i) and that those rights date back to Complainant’s filing date with the USPTO of November 23, 2005.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).

 

Complainant asserts that the DIVER’S DEN mark was put into use on November 18, 1999 by a company called FlyingFishExpress.  Complainant contends that it purchased the FlyingFishExpress company in 2004, including all of its assets.  Complainant argues that since the previous company used the service mark, DIVER’S DEN in 1999, that Complainant’s rights in the mark date back to then as well. The Panel agrees and finds that Complainant has established that the DIVER’S DEN mark achieved secondary meaning beginning in 1999 and that Complainant’s rights in that mark, through its purchase of the company, establishes Complainant’s rights in 1999.  See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).

 

Complainant contends that the <diversden.com> domain name is identical to its DIVER’S DEN mark.  The Panel notes that the Domain Name removes the apostrophe and the space between the terms of the mark, while adding the generic top-level domain (“gTLD”) “.com.” Notwithstanding, the Panel finds that the domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).  See Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark); see also Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

 

Respondent contends that the <diversden.com> domain name is comprised of common and generic terms and as such cannot be found to be identical to Complainant’s mark. However, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also 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.”).

 

Complainant argues that Respondent is not commonly known by the disputed domain name and that Respondent will be unable to produce any evidence that will establish that Respondent is commonly known by the domain name.  Complainant alleges that the WHOIS information identifies “Rarenames Inc.” as the registrant.  Complainant submits evidence to indicate that Respondent’s disputed domain name resolves to a website featuring a search engine and various third-party links to competing and unrelated companies. The Panel notes that Complainant’s screen shot evidence shows that the links are available under headings such as “Snorkeling Scuba Diving,” “Dive Shops,” “Aqualung scuba equipment,” “Tropical fish,” and “Aquarium Shops,” among others.  Complainant claims that such use results in commercial gain for Respondent and therefore Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) of the domain name.

 

Complainant satisfies its burden and it now shifts to Respondent to show that it does have rights or legitimate interests in the subject Domain Name.   

 

The Panel finds that respondent overcame the burden. 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 claims that its use of the domain name in connection with third-party advertising services related to the generic terms found in the domain name is legitimate.  Respondent maintains that it has used the domain name for eight years in connection with its bona fide use. Respondent also stresses that the terms of the <diversden.com> domain name are common and generic, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet.  Respondent submits that because the terms of the domain name are generic there are also many other websites that use the terms together in marketing diving products. The Panel notes that there are indeed many other websites that use the terms together in marketing diving products. Indeed, the fact that so many websites use the terms attests to the non-exactness and broadness of the said terms.

 

The Panel agrees with Respondent and finds that the facts do support Respondent’s legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Goepfert v. Rogers, 861124 (Nat. Arb. Forum Jan. 17, 2007) (finding that the respondent had rights or legitimate interests in the <sentimenttrader.com> domain name even though the complainant had common law rights in the SENTIMENTRADER mark, because the terms “sentiment” and “trader” are of common usage in the stock market industry).

 

Additionally, the Panel finds under Policy ¶ 4(c)(i), that using a domain name consisting of a common descriptive and generic expression as a portal to a website featuring various advertisements and links is a bona fide offering of goods or services. See also Multicast Media Networks, LLC v. MDNH, Inc., FA 434268 (Nat. Arb. Forum Apr. 28, 2005) (finding that the respondent’s use of the disputed domain name to operate a pay-per-click website from which Respondent derives revenue was considered a bona fide use within the meaning of Policy ¶ 4(c)(i), especially considering the extended period of such use).

 

Registration and Use in Bad Faith

 

In light of the Panel’s finding in favor of Respondent with respect to the existence of any rights and legitimate interests in the disputed domain name pursuant to Policy 4(a)(ii), there is no need to reach an analysis of the third element.  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).  The Panel nevertheless finds that Complainant failed to meet its burden of proving 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).

 

Because Respondent has rights or legitimate interests in the <diversden.com> domain name pursuant to Policy 4(a)(ii), it is axiomatic that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy 4(a)(iii).  See 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.”).  Indeed, having found that the DIVER’S DEN mark is comprised of generic terms, the Panel finds that Respondent is free to register domain names consisting of such common terms. 

 

Accordingly, the Panel finds that Respondent did not register the  <diversden.com> domain name in bad faith under Policy 4(a)(iii).

 

Further there is no evidence that Respondent  attempted to sell the domain name to Complainant or its competitor.  Nor is there any evidence to support Claimant’s assertion that Respondent is promoting Complainant’s competitors. Based on the evidence in the record, it cannot be said that Respondent is a competitor of Complainant, nor has Claimant refuted the assertions that Respondent employed “robots.txt” files on its web files so that its website will not come up in search results on Google and Yahoo!. 

 

The Panel agrees that Respondent has not registered or used the domain name in bad faith. See Schering Aktiengesellschaft v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that because “Respondent neither offered the Domain Name for sale, nor wanted it to disrupt Complainant’s business, [nor] prevent Complainant from reflecting the mark in its domain,” it did not register or use the domain name <metagen.com> in bad faith); see also McMullen Argus Publ’g Inc. v. Moniker Privacy Servs., D2007-0676 (WIPO July 24, 2007) (“Complainant must do more than just show pay-per-click use to establish bad faith... pay-per-click websites are not in and of themselves unlawful or illegitimate”).

 

Reverse Domain Name Hijacking

Complainant has satisfied Policy ¶ 4(a)(i), accordingly, the Panel finds that Complainant has not engaged in reverse domain name hijacking.  See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).

 

 

DECISION

The Complainant, having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <diversden.com> domain name REMAIN with Respondent

 

 

Calvin A. Hamilton (Chair)

 

G.Gervaise Davis III (Panelist), The Honorable James A. Carmody (Panelist)

Dated:  December 21, 2011

 

 

 

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