Tony Novak v. Marchex Sales, Inc / Brendhan Hight
Claim Number: FA1112001418478
Complainant is Tony Novak (“Complainant”), Pennsylvania, USA. Respondent is Marchex Sales, Inc / Brendhan Hight (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freedombenefits.com>, registered with Enom, 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.
Mr. Maninder Singh as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2011; the National Arbitration Forum received payment on December 6, 2011.
On December 15, 2011, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <freedombenefits.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 (the “Policy”).
On December 16, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 5, 2012 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@freedombenefits.com. Also on December 16, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 December 22, 2011.
On 29.12.2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Maninder Singh as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
· Complainant is stated to be an employee health benefits professional doing business as "Freedom Benefits" as licensed by all 50 States and the District of Columbia.
· "Freedom Benefits" is claimed to be a trademark of the Complainant, which is stated to have been a fictitious name registration filed by the Complainant and is stated to be in use by him since 1996. Complainant in this regard has annexed the current Federal Trademark Status Report.
· The Complainant contends that <freedombenefits.com> is a domain name which was originally registered and used by him in the normal course of his business until 2002 when it was acquired by a cybersquatter after the Complainant’s accidental failure to timely renew the domain registration. In this regard, the Complainant has annexed the copy of the home page of its former website <freedombenefits.com> as proof of its having been registered and used the disputed domain name.
· Complainant contends that the use of the disputed domain name by the Respondent is not in connection with a bona fide offering of goods or services.
· Complainant further contends that the Respondent is not commonly known by the disputed domain name.
· Complainant alleges that the Respondent is using the disputed domain name by misleading / diverting consumers of the Complainant and also to tarnish the trademark or service mark at issue for unfair and illegal commercial gains.
· Complainant contends that the Respondent has acquired / registered the disputed domain name primarily for the purpose of selling web traffic and "leads" derived from the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the disputed domain name.
· Complainant contends that the Respondent has registered the disputed domain name to prevent the owner of the trademark or service mark from re-registering the domain name.
· Complainant alleges that the registration and use of the disputed domain name by the Respondent is intentional, with a view to attract internet users for commercial gain, to the website of the Respondent or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
· Complainant contends that the Respondent has not responded to its letter dated October 12, 2011 for resolution of the dispute between the parties with regard to disputed domain name.
B. Respondent
The Respondent in his response dated 21.12.2011 has, inter-alia, submitted the following:-
· The disputed domain name, <freedombenefits.com> which is claimed to have been registered by the Complainant about 10 years ago, had not been renewed by him thereafter. Having recently decided to have the disputed domain name re-registered in his name after a decade, the Complainant had filed a trademark registration application with the USPTO for return of the disputed domain name.
· The first criterion required to be proved by the Complainant is that the disputed domain name is identical or confusingly similar to a trade or service mark in which the Complainant has rights. To this end, the Complainant has relied upon a recently filed trademark registration application, and a fictitious business name registration. None of these documents is competent evidence of a trade or service mark right. The TM application US TM Reg. App. No. 85/416,972 filed by the Complainant with the USPTO in Sept. 2011, evidence nothing other than that the Complainant has filed a trademark registration application. In this regard, Respondent contends that it is well established that a pending trademark registration application confers no cognizable rights to an applicant under the Policy. In this regard, the Respondent has relied upon the following decision of this Forum :
(i) Enki LLC v. Black Bayou LLC, FA 1142379 (Nat. Arb. Forum Mar. 28, 2008)
(ii) Cohen v. Smoking Domains, LLC, FA 1155799 (Nat. Arb. Forum May 7, 2008)
(iii) Gurreri v. To Thai Ninh , FA 1328554 (Nat. Arb. Forum July 12, 2010)
(iv) Bus. Architecture Group, Inc. v. Reflex Publ’g, FA 97051 (Nat. Arb. Forum May 5, 2001)
· With regard to Complainant’s claim that its registration and use of the disputed domain name prior to 2002 establishes its trade or service mark right, Respondent has controverted that under 15 USC 1127, an abandonment deemed to have arisen - “When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment.”
· The Complainant has admitted that it has failed to renew the disputed domain name nearly ten years ago and had approached the Respondent in October 2011 - for getting the disputed domain name registered in his favour - goes against accepting his claimed use of the domain name prior to 2002 owing to such long-discontinued use.
· The Complainant has failed to establish that the disputed domain name is identical or confusingly similar to a trade or service mark in which the Complainant has rights.
· The Complainant has failed to prove that the Respondent lacks legitimate rights or interests in the disputed domain name. The Respondent contends that this criterion is not limited to trade or service mark rights, but includes equitable interests such as expectation and reliance interests implicated by the use of the domain name prior to notice of a dispute in connection with a bona fide offering of goods and services.
· The Respondent contends that in late 2004 it has purchased a large portfolio of domain names from Ultimate Search Inc. This portfolio consisted of a collection of common words, phrases, and combinations of common words used for the purpose of publishing advertising content having some relationship with the words constituting the domain name itself, as has been held in the following UDRP proceedings :
(i) Multicast Media Networks, LLC v. MDNH, Inc., FA 434268 (Nat. Arb. Forum Apr. 28, 2005) (denying a claim for the <multicast.com> domain name)
(ii) iFranchise Group v. Bean, D2007-1438 (WIPO Dec. 18, 2007) (denying a claim for the <franchise.com> domain name)
(iii) Advanced Drivers Educ. Products & Training, Inc v. MDNH, Inc., FA 567039 (Nat. Arb. Forum Nov. 10, 2005) (denying a claim for the <teensmart.com> domain name)
(iv) Advanced Educ. Sys. LLC v. Bean, FA 948593 (Nat. Arb. Forum May 23, 2007) (denying a claim for the <trainingpros.com> domain name)
(v) Modern Beauty Supplies Inc. v. MDNH, Inc., FA 975334 (Nat. Arb. Forum May 25, 2007) (denying a claim for the <modernbeauty.com> domain name)
(vi) Nat’l Patent Servs. Inc. v. Bean , FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) (denying a claim for the <nationalpatent.com domain name)
(vii) Robinson v. Hight, D2008-1313 (WIPO Oct. 27, 2008) (denying a claim for the <my-life.com domain name)
(viii) Mittman v. Hight, D2008-1946 (WIPO Mar. 16, 2009) (denying a claim for the <frontrunners.com domain name)
(ix) Word of Faith Int’l Christian Ctr. v. Hight, FA 1251581 (Nat. Arb. Forum May 1, 2009) (denying a claim for the <wordoffaith.com> domain name)
· The Complaint has not made any factual allegation but has merely repeated the wording of the Policy. The Respondent alleges that the disputed domain name comprises two common words “freedom” and “benefits”, which is consistent with the Respondent’s regularly-examined use of common words for advertising purposes. Additionally, in the field of employee benefit programs and in specific relation to the word “FREEDOM” in connection with benefit programs, the word is not distinctive of any provider of health insurance benefit programs. In this regard, the Respondent has relied upon the following US trade mark registrations (Exhibit-A to the response) relating to health insurance benefit programs which uses the word “freedom” in it : -
(i) US TM Reg. No. 1795275 “VERMONT FREEDOM PLAN”
(ii) US TM Reg. No. 2460227 “FREEDOM MEDICARE SUPPLEMENT”
(iii) US TM Reg. No. 3347718 “FLEX FREEDOM”
(iv) US TM Reg. No. 3364924 “FREEDOM SOLUTIONS”
(v) US TM Reg. No. 3142875 “CERIDIAN FREEDOM”
(vi) US TM Reg. No. 3070937 “FREEDOM HOSPITAL SUPPLEMENT”
(vii) US TM Reg. No. 2989697 “FAMILY FREEDOM ACCOUNT”
· The widespread non-distinctive use of the word “FREEDOM” in connection with benefit programs, as demonstrated in these existing US trademark registrations likely presages the fate of the Complainant’s application for registration, and a UDRP Panel would likely be placing itself well ahead of the USPTO in relation to the Complainant’s undocumented claim of exclusive rights, to opine otherwise here.
· The Respondent claims that there are many unregistered uses of the word “FREEDOM” in relation to various insurance, financial and employee benefit programs, and indeed non-exclusive and non-distinctive uses of the phrase “FREEDOM BENEFITS” as demonstrated in Exhibit B, which includes:
(i) “Alliance Consumer Freedom Benefits” in relation to an array of benefit programs offered by the Alliance for Consumer Freedom at
(ii) “Advantra Freedom Benefits” in relation to benefit programs offered by Advantra Freedom at <livestrong.com/article/276787-advantra-freedom-benefits/>
(iii) “Chase Freedom Benefits” in relation to financial benefits available in financial programs offered by Chase Bank
(iv) “Freedom Benefits” in relation to employee benefit programs offered by Freedom Communications
· The Complainant is obliged to prove that the disputed domain name was registered and used in bad faith by the Respondent. The Complainant alleges that the Respondent has engaged in “selling web traffic and ‘leads’ derived from the domain name registration to the Complainant . . . or to a competitor of the Complainant, for valuable consideration in excess of Respondent’s document out-of-pocket costs directly related to the domain name.” The Complainant has not given any evidence to prove that the Respondent has attempted to sell web traffic, customer leads, the domain name, or anything else to the Complainant. The Respondent submits that it derives revenue from directing web traffic to advertisers by the use of this demonstrably non-distinctive term, but one would imagine the Complainant would have direct evidence of the Respondent attempting to sell anything to the Complainant if such were the case. Respondent submits that the term “FREEDOM” is non-distinctive in relation to insurance or other benefit programs, and hence it is not clear why the Complainant believes that the use of the domain name would be illicit, even if proved.
· The Complainant has alleged “bad faith” against Respondent merely because it failed to submit a response to the Complainant to the letter purportedly directed to the Respondent in October 2011. The Respondent submits that it is not obligatory for it to correspond with anyone who may direct communications to it. In this regard, the Respondent has relied upon a decision of WIPO in EAuto, L.L.C. v. Triple S. Auto Parts, D2000-0047 (WIPO Mar. 24, 2000).
· The Respondent contends that the Complainant appears to be unfamiliar with the Policy. The Complainant had failed to renew the disputed domain name since its expiry in 2002, and has thereafter not taken any action for renewal of the same, until letter dated October 2011. In relation to the equitable defense of laches, the Respondent relies upon the decision of this Forum in New York Times Co. v. Name Admin. Inc. (BVI), FA 1349045 (Nat. Arb. Forum Nov. 17, 2010).
· Respondent contends that an alternative view to the above could be that while laches may not be a per se defense, a substantial lapse of time between the alleged injury and any effort to seek relief raises a sufficient question as to whether a complainant may credibly claim significant business disruption in the absence of such effort. Moreover, the passage of time increases the respondent’s reliance interest in continued registration and use of the domain name. In support of its argument, the Respondent has relied upon the following decisions of this Forum:
(i) Mega Shoes, Inc. v. Ostrick, FA 1362894 (Nat. Arb. Forum Feb. 1, 2011) (finding that although laches by itself is not a defence to a complaint brought under the Policy, it was held in Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003), that “Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”)
(ii) 3DCafe, Inc. v. 3d Cafe.com, FA 1351489 (Nat. Arb. Forum Dec. 20, 2010) (finding that the complainant fails to appreciate the need to show that the reputation of the mark was such in 2004 that the Respondent should have known about its alleged common law mark at the date of registration of the disputed domain name).
· The Respondent contends that the equitable doctrine of laches need not play any part in the Panel’s assessment. The longer a complainant delays in seeking relief under the Policy, the more difficult it is to confer it bad faith registration. Accordingly, the Complainant has failed to prove that the disputed domain name was registered and used in bad faith.
· The Panel finds that the disputed domain name <freedombenefits.com> had been registered and used by the Complainant until 2002. Thereafter, the Complainant had not got the domain name renewed in its favour. The disputed domain name was registered by the Respondent in its name and the said domain name is presently registered in favour of the Respondent. The Complainant is seeking to get the disputed domain in its favour after a lapse of about 10 years. It has, admittedly, written a letter to Respondent on 12.10.2011 to settle the issue but the Respondent has chosen not to part with the disputed domain name. The Panel finds that the Complainant has no rights or legitimate interests in relation to the domain name as it has failed to give any plausible reason as to why the domain name was not used / registered by it for about a decade. The domain name not with the complainant and not used by the complainant for more than 10 years, would not extend any right to the complainant under the policy for the prayer made in the present complaint.
· The Panel also finds that the domain name <freedombenefits.com> deserves to be denied to the Complainant and the Respondent is entitled to continue to use this domain name. The Complaint deserves to be rejected and the Panel decides accordingly. However, in terms of the ICANN Policy and the requirements thereunder, the formal observations / findings of the Panel are as under.
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.
Doctrine of Laches
· The Panel finds that the doctrine of laches does not apply as defense, however, before adverting to decide the present complaint on merits, in accordance with the Policy, the Panel considers it necessary to decide the issue of laches alleged by the parties. With regard to Complainant’s contention that it allowed the disputed domain name registration to lapse in 2002, Respondent argues that impugning an action which had taken place in 2011 is too late and time barred. As to Complainant’s contention that it had an illness which prevented it from re-registering the disputed domain name, Respondent argues that the elapse of time is evidence that Respondent’s ownership of the <freedombenefits.com> domain name is not problematic and does not negatively impact Complainant. Therefore, the Panel considers the doctrine of laches as evidence for Respondent in its considerations of the elements of the Policy. In this regard, the Panel relies upon the decisions of this Panel in –
(i) Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (holding that “[a]lthough laches by itself is not a defense to a complaint brought under the Policy, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”).
(ii) Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (holding that “[a]lthough laches is not a defence in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”).
· Complainant asserts it is an employee health benefits professional doing business as FREEDOM BENEFITS. Complainant claims that it is licensed under its FREEDOM BENEFITS mark in every state in the United States. Complainant provides evidence of its filing of a business entity registration in Pennsylvania, USA that it registered on November 14, 1996. According to Complainant, it had applied for a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its FREEDOM BENEFITS mark (App. No.85,416,972 filed on September 7, 2011). Complainant claims in its application about its first use of the trademark in commerce date of April 15, 1997.
· Complainant contends that it originally registered the disputed domain name <freedombenefits.com>, but that Complainant lost the disputed domain name when it inadvertently allowed the domain name to lapse in 2002. Complainant has annexed a printout of Complainant’s alleged website to substantiate that it had owned the disputed domain name.
· Respondent contends that Complainant does not own rights in the FREEDOM BENEFITS mark. Respondent argues that Complainant’s trademark application with the USPTO does not confer any rights because anyone can file for a trademark registration. In this regard, it is to be noticed that the complainant has also filed an application for registration of the trade mark in September 2011 and had never obtained grant of registration of the trade mark in its favour by the USPTO.
· Respondent further claims that Complainant’s evidence of Complainant’s business name is insufficient to demonstrate common law rights because Complainant must show that Complainant’s mark acquired distinctiveness associated with Complainant’s services. Previous panels found that a complainant must provide sufficient evidence that the mark acquired secondary meaning in order for the complainant to demonstrate rights in a mark. On the other hand, it is obvious that for more than 10 years the complainant had not felt any loss or prejudice i.e. during the period in which the domain name was not registered with the complainant and was not used by the complainant for more than 10 years. This Panel finds the following decisions of this Forum to be relevant in this regard: -
(i) Witteles v. Domain Guy, FA 616302 (Nat. Arb. Forum Feb. 27, 2006) (holding that the complainant failed to prove common law rights because it “did not provide any evidence of secondary meaning or continuing use . . .”);
(ii) Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (holding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products).
· As the Complainant has failed to satisfy the requirements of Policy 4(a)(i) because it has failed to establish common law rights in the disputed domain name, the Panel is not analyzing the other two elements of the Policy. The Panel in this regard finds strength from the following decisions of this Forum : -
(i) Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (holding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary);
(ii) Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy 4(a)(i)).
· The Panel observes that a 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. The Panel observes that the following decisions of this Forum are relevant for the present issue.
(i) 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);
(ii) 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 contends that Respondent is not commonly known by the disputed domain name <freedombenefits.com>. Complainant does not present any arguments aside from this contention. The WHOIS information lists “Marchex Sales, Inc / Brendhan Hight” as the registrant of the disputed domain name. This Panel observes that past panels have held that a respondent was not commonly known by a disputed domain name if the WHOIS information was not similar to the disputed domain name and the respondent failed to present any other evidence. The Panel relies upon the following decisions of this Forum in this regard:
(i) 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);
(ii) M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy 4(c)(ii) based on the WHOIS information and other evidence in the record).
· In the present case the Complainant had registered and been using the disputed domain name up to 2002 whereafter it failed to renew the disputed domain name in its favour. The respondent is stated to have registered the disputed domain name some time from 2002 and since then it is stated to have been using the disputed domain name. Even presently, as per WHOIS information, the registration for the disputed domain name is in favour of respondent. The Complainant has also not disputed the fact that the respondent has legally and validly registered the disputed domain name and is using the same. The Panel finds that the contention of the Complainant that Respondent is not commonly known by the disputed domain name <freedombenefits.com> does not have merit as the Respondent is commonly known by the <freedombenefits.com> pursuant to Policy 4(c)(ii).
· Complainant has argued that Respondent uses the “freedombenefits.com” domain name to sell web traffic and “leads” derived from the disputed domain name to Complainant. Complainant contends that this use is not a bona fide offering of goods or services or a legitimate non-commercial or fair use of the disputed domain name. As Complainant does not provide further information or evidence about Respondent’s use of the disputed domain name, the Panel finds Respondent’s use of the disputed domain name as unrelated to Complainant. This Panel observes that the past panels has held that a respondent’s unrelated use of a confusingly similar domain name is not a bona fide offering of goods or services under Policy 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy 4(c)(iii). In this regard, the following decisions of this Forum are relevant:
(i) Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (holding that “[d]iverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy 4(c)(i), nor does it represent a noncommercial or fair use under Policy 4(c)(iii).”);
(ii) Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (holding that “Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”).
· The Panel finds that the 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). In this regard, it finds the following decisions of this Forum to be appropriate in the facts and circumstances of the present case: -
(i) 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));
(ii) 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 it is a wholly-owned subsidiary of Marchex Inc., which is a NASDAQ-listed public company. According to Respondent, it has purchased a large portfolio of domain names from Ultimate Search Inc. Respondent asserts that the portfolio of domain names contained a collection of common words and phrases for the purpose of publishing advertising content relating to the words or phrases. Respondent argues that Complainant does not provide any evidence that Respondent’s business is not a bona fide offering of goods or services. Respondent contends that the disputed domain name is comprised of two common words “freedom” and “benefits” which Respondent claims is the basis for the advertisements found on the resolving website.
· This Panel observes that past panels have found that the operation of an advertising website demonstrates a bona fide offering of goods or services under Policy 4(c)(i). In this regard it finds strength from the following decisions of this Forum: -
(i) McMullen Argus Publ’g Inc. v. Moniker Privacy Servs., D2007-0676 (WIPO July 24, 2007) (holding that “pay-per-click websites are not in and of themselves unlawful or illegitimate”);
(ii) Williams, Babbitt & Weisman, Inc. v. Ultimate Search, FA 98813 (Nat. Arb. Forum Oct. 8, 2001) (holding that “[n]either the current UDRP nor current ICANN registrar contracts preclude” the practice of registering domain names in connection with an advertising venture).
Therefore, the Panel concludes that Respondent owns rights and legitimate interests in the <freedombenefits.com> domain name pursuant to Policy 4(c)(i).
· Respondent also argues that the terms of the <freedombenefits.com> domain name are common and generic, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. Even when such an argument may not be fully acceptable in as much as joining of two common words may give rise to an inventive word which may still be distinct an unique, the Panel has on other grounds come to the conclusion that the complaint deserves to be denied. The Panel agrees with Respondent and finds that Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy 4(a)(ii).
· Hence, the Panel finds that the Respondent’s use of its registered domain name is bona fide. The Panel also finds that the Complainant does not have any right or legitimate interests in the disputed domain name.
· Complainant alleges that Respondent’s actual purpose of registration of the domain name is to sell it to Complainant or Complainant’s competitors for an amount in excess of Respondent’s registration costs. Complainant does not provide any evidence of an offer to sell. Complainant also claims that Respondent registered and uses the “freedombenefits.com” domain name in order to prevent Complainant from registering and using the disputed domain name. Complainant does not support this claim with any evidence or other arguments.
· Complainant contends that Respondent registered and uses the <freedombenefits.com> domain name for the purpose of selling web traffic and “leads” derived from the domain name to Complainant or Complainant’s competitors. Complainant alleges that Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain name.
· The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy 4(a)(iii). In this regard, the Panel relies upon the following decisions of this Forum in –
(i) Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (holding 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));
(ii) Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (holding 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).
· The Panel concludes that Respondent has rights or legitimate interests in the disputed domain name <freedombenefits.com> pursuant to Policy 4(a)(ii), the Panel also finds that the registration and use of the disputed domain name by the Respondent is not in bad faith pursuant to Policy 4(a)(iii). The Panel in this regard finds the following decisions of this Forum to be relevant: -
(i) Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (holding 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);
(ii) Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (holding that “[b]ecause Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
· The Panel finds that the Respondent has not registered or used the <freedombenefits.com> domain name in bad faith pursuant to Policy 4(a)(iii). In this regard, the Panel finds the following decisions of this Forum to be appropriate: -
(i) Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (holding 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);
(ii) Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (holding 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 asserts that it did not attempt to sell the disputed domain name to Complainant or Complainant’s competitors. Respondent claims that Complainant’s allegations about selling “leads” does not apply to Policy 4(b)(i). Past panels found that a respondent did not register or use a disputed domain name in bad faith if there is no evidence that the respondent intended to sell the domain name.
(i) PRIMEDIA Special Interest Publ’ns Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (holding that the respondent did not register the domain names in bad faith where there is no evidence that the respondent intended to sell the domain names and actually refused several offers from third parties);
(ii) Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (holding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses).
Thus, the Panel concludes that Respondent did not register or use the <freedombenefits.com> domain name in bad faith under Policy 4(b)(i).
· Respondent argues that it registered and uses the “freedombenefits.com” domain name for the purpose of providing advertisements relating to the terms found in the resolving website. Respondent contends that this is a legitimate business in the disputed domain name. Respondent further alleges that it did not attempt to create confusion as to Complainant’s affiliation with the domain name. This Panel observes that past panels in the following decisions had held that a respondent did not register or use a disputed domain name in bad faith if it had a legitimate business interest and did not intend to create confusion : -
(i) Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (holding that the respondent did not register or use the domain name <metagen.com> in bad faith where the respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created);
(ii) Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (holding no bad faith where the respondent has an active website that has been in use for two years and where there was no intent to cause confusion with the complainant’s website and business).
Thus, the Panel finds that Respondent did not register or use the <freedombenefits.com> domain name in bad faith pursuant to Policy 4(b)(iv).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED to Complainant.
Accordingly, it is Ordered that the <freedombenefits.com> domain name REMAIN WITH Respondent.
(MANINDER SINGH)
Panelist
Dated: 03.01.2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page