International Special Events Society v. Pierce Events
Claim Number: FA1112001420422
Complainant is International Special Events Society (“Complainant”), represented by Nathan J. Breen of HOWE & HUTTON, LTD., Illinois, USA. Respondent is Pierce Events (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <isespittsburgh.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2011; the National Arbitration Forum received payment on December 20, 2011.
On December 16, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <isespittsburgh.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 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@isespittsburgh.com. Also on December 22, 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 January 17, 2012.
On January 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, International Special Events Society, Inc. (“ISES”) an Indian not-for-profit corporation, contends that the Complainant is based on the ISES service mark, Registration No. 2,281658 (“Service Mark”), which is registered on the Principal Register in International Class 42 in conjunction with association services; namely, promoting the interests of special events planners, producers and professionals.
Complainant contends that Respondent’s Domain Name is confusingly similar to Complainant’s Service Mark, Respondent has no rights or legitimate interests in or to the mark “ISES” and is using the Domain Name in bad faith.
Complainant is comprised of over 7,200 members from all types and sizes of special events organizations throughout the world. In addition, Complainant; operates 49 regional chapters throughout the world, including a chapter in Pittsburgh, PA. The domain name for the Pittsburgh Chapter is <isespittsburgh.org>.
Complainant began using the service mark “ISES” in interstate commerce in 1987. On September 17, 1998, ISES filed an application to register the Service Mark with the United States Patent and Trademark Office. The United States Patent and Trademark Office issued a registration for the Service Mark on September 28, 1999. The registration has been continuously in effect since that time and remains in effect today. By virtue of its continuous use of the mark and maintenance of the corresponding registration of the Complainant’s Service Mark has become incontestable.
Since it first began to use the Service Mark, Complainant has spent more than $300,000 in connection with advertising and promotional materials which use the Service Mark. Accordingly, the Service Mark has acquired secondary meaning and has become a strong source designator in the special events planning and related industries, including caterers, decorators, florists, destination management companies, rental companies, special effects experts, tent suppliers, audio-visual technicians, event and convention coordinators, balloon artists, educators, journalists, hotel sales managers, specialty entertainers, convention center managers, and many more professional disciplines.
Complainant contends that Respondent registered the Domain Name, <isespittsburgh.com> with GoDaddy.com, Inc. on November 14, 2009.
According to Complainant Shaun Pierce, President of Respondent was a former board member of the Pittsburgh Chapter of Petitioner. Despite the fact that Mr. Pierce is no longer a Board Member of the Pittsburgh Chapter, he has refused to relinquish the rights to the Domain Name as requested by Petitioner and is instead using it for his own business. The domain name currently redirects to <http://www.pierceevents.net/c5/indes.php?cID=143>, Respondent’s business.
By using the <isespittsburgh.com> domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 Respondent’s web site in violation of Paragraph 4(b)(iv) of the Uniform Dispute Resolution Policy.
On July 28, 2011, Complainant sent Mr. Pierce an email requesting that Respondent relinquish the Domain Name to ISES in exchange for Respondent’s out of pocket expenses. Mr. Pierce responded “As I expressed multiple times, I will be happy to work with the board to purchase the domain if you wish and are required to own it. Yet in order to transfer ownership it must be purchased not simply reimbursed.”
Respondent’s actions demonstrate that it is using 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 “ISES” service mark for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name in violation of Paragraph 4(b)(i) of the Uniform Dispute Resolution Policy.
To date, Respondent has not relinquished the Domain Name to Complainant, which therefore continues to cause confusion as to the trademark rights and goodwill earned by Complainant.
B. Respondent
Respondent denies that it has no rights or legitimate interests in or to the mark “ISES” and is using the domain name in bad faith. Respondent has been a member of ISES since 2009 and as such is entitled to use the ISES Service Mark.
The domain name for the Pittsburgh Chapter of ISES was <isespittsburgh.com> from before the official inception of the chapter in 2009 until August 2011 when the Chapter President indicated in an email that the Chapter would move forward with another web site.
Respondent will stipulate to the years the Service Mark has been used but disputes the fact claimed by the Complainant that the Service Mark is incontestable since there are numerous organizations and entities using the acronym ISES as evidenced by a simple Google search.
Respondent contends that it has paid for and maintained the domain since 2009 and the demand to relinquish implies without compensation. Complainant is without standing since a number of offers were made to the Pittsburgh Chapter of ISES and their response was from Chapter President Ed Amori, who informed Pierce Events LLC via email that the chapter no longer wished to use the domain in question.
According to Respondent there is nothing posted on the web site <isespittsburgh.com>. The ip address indicates “No Page at this address”.
Respondent rejects the notion that it is somehow causing confusion. The term “ISES” is not a term generally used by the public. Respondent submits the term would only be known to industry insiders who in no way could confuse Pierce Events LLC with the International Special Events Society. Also, ISES is an acronym used broadly through other industries outside of special events.
Respondent contends that it purchased the domain name on November 11, 2009 prior to the establishment of the ISES Pittsburgh chapter and has maintained sole ownership through August 2011 when the Chapter President indicated in an email that the Chapter would move forward with another web site.
The ip address <isespittsburgh.com> leads the searcher to No Page At This Address.
The Respondent objects to transferring the domain name without suitable remittance.
The Panel finds that:
1. the Domain Name <isespittsburgh.com>, is confusingly similar to Complainant’s registered trademark,
2. the Respondent has rights and legitimate interest in the Domain Name <isespittsburgh.com>, and
3. the Respondent did not use or register the Domain Name <isespittsburgh.com>, in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant alleges that it has rights in the ISES mark. Complainant argues that it uses its mark in connection with promoting the interests of special events planners, producers, and professionals with over 7,200 members from special events organizations and 49 regional chapters throughout the world, including Pittsburgh, PA. Complainant provides evidence of its registration of the ISES mark (Reg. No. 2,281,658 registered September 28, 1999) with the United States Patent and Trademark Office (“USPTO”). Panels have previously held that the registration of a mark with a federal trademark authority is sufficient to establish a complainant’s rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the ISES mark pursuant to Policy ¶ 4(a)(i).
Complainant contends also that Respondent’s <isespittsburgh.com> domain name is confusingly similar to its mark. Panels have previously held that the addition of a geographic term to a mark is not a substantial enough change to make the disputed domain name distinctive from the ISES mark. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also Sunkist Growers, Inc. v. S G, D2001-0432 (WIPO May 22, 2001) (finding that the domain names <sunkistgrowers.org>, <sunkistgrowers.net> and <sunkistasia.com> are confusingly similar to the complainant’s registered SUNKIST mark and identical to the complainant’s common law SUNKIST GROWERS mark). Additionally, panels in the past have found that the addition of a generic top-level domain (“gTLD”) fails to distinguish a disputed domain name from a mark. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel finds that Respondent’s full-incorporation of Complainant’s ISES mark with the additions of the geographic term “pittsburgh” and the gTLD “.com” is confusingly similar pursuant to Policy ¶ 4(a)(i).
While Respondent contends that the <isespittsburgh.com> domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, 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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent argues that it does have rights or legitimate interests in the disputed domain name. Respondent contends that it developed the website at the disputed domain name in response to a request by Complainant and, though Respondent is no longer a board member of the Pittsburgh chapter of the organization, it is still a member with rights to use the ISES mark. The Panel is of the view that Complainant failed to address that Respondent is commonly known by the disputed domain name and thus that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Am. Credit Union Buyers Ass’n v. Acuba Ltd., FA 164306 (Nat. Arb. Forum July 16, 2003) (finding that complainant’s allegations that “[n]o evidence indicates that Respondent has been known . . . by the Domain Name” did not acknowledge or address evidence that respondent was known by the disputed domain name, having registered <acuba.com> under the name Acuba Limited, and, therefore, were not a prima facie showing under Policy ¶ 4(a)(ii)); see also Toyota Motor Sales U.S.A. Inc. v. J. Alexis Prods., D2003-0624 (WIPO Oct. 16, 2003) (finding that the respondent was commonly known by the <lexusmichaels.com> domain name because the respondent’s stage name was LEXUS MICHAELS).
Respondent contends that its use of the <isespittsburgh.com> domain name is a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent claims that Complainant incorrectly states that the <isespittsburgh.com> domain name resolves to Respondent’s website and that the website actually resolves to a website which is now inactive. Respondent argues that there was a website developed for Complainant at Complainant’s request and, after two years of approved use, Complainant told Respondent that it no longer wanted to use the <isespittsburgh.com> domain name as the Pittsburgh chapter website. Respondent argues that it then made the <isespittsburgh.com> domain name inactive. The Panel finds that Respondent is using the <isespittsburgh.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). See Casual Corner Group, Inc. v. Young, FA 95112 (Nat. Arb. Forum Aug. 7, 2000) (finding that the respondent has rights and legitimate interests in the domain name even though he has made no use of the website at the time of the complaint); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (finding rights and legitimate interests in the domain name where the respondent sought to develop a bona fide business use for the domain name).
Respondent also argues that the terms of the <isespittsburgh.com> domain name are common and generic, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. Respondent contends that a Google search demonstrates that there are numerous organizations and entities using the acronym ISES. 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). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Since the Panel concluded that Respondent has rights or legitimate interests in the <isespittsburgh.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Panel further finds that Respondent has not registered or used the <isespittsburgh.com> domain name in bad faith if it finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent alleges that its willingness to sell the <isespittsburgh.com> domain name does not demonstrate bad faith because it has legitimate interest in the disputed domain name. Respondent argues that it requested an amount in excess of its out-of-pocket costs because it spent, at the request of Complainant, time and energy developing the website and maintaining it from November 11, 2009 until August 2011. Since the Panel finds that Respondent has a legitimate interest in the <isespittsburgh.com> domain name, it also finds that Respondent’s openness to a sale of the disputed domain name does not demonstrate bad faith under Policy ¶ 4(b)(i). See Etam, plc v. Alberta Hot Rods, D2000-1654 (WIPO Jan. 31, 2001) (“Respondent’s offer to sell the domain name does not constitute bad faith, in light of the fact that it has a legitimate interest in the domain name”); see also Physik Instrumente GmbH. & Co. v. Kerner, D2000-1001 (WIPO Oct. 3, 2000) (finding no bad faith where the respondent offered the domain name for sale while their business plans to use the domain name were in a state of unrest).
Respondent next argues that the <isespittsburgh.com> domain name is not disruptive to Complainant because it is not competitive. Respondent alleges that the <isespittsburgh.com> domain name resolves to a website which is inactive and whose IP address indicates “No Page at this address.” Respondent contends that an inactive website is not competitive with Complainant’s ISES mark and special events organization services. The Panel finds that bad faith is not demonstrated if it determines that Respondent’s registration and non-use of the <isespittsburgh.com> domain name is not disruptive under Policy ¶ 4(b)(iii). See PRIMEDIA Special Interest Publ’ns. Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (holding that the respondent did not register or use the <shutterbug.com> domain name to disrupt the complainant’s business because the respondent’s contemplated use at the time of acquisition was not necessarily competitive with the complainant’s SHUTTERBUG magazine); see also Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding that the respondent did not register and use the <racegirl.com> domain name in bad faith because the complainant provided no evidence that the respondent intended to disrupt or divert business from the complainant).
Respondent contends that it did not register and use the disputed domain name in bad faith because it had no intention of creating confusion as to the source of the domain name and commercially benefiting from this confusion. Respondent claims that the <isespittsburgh.com> domain name resolves to an inactive website. Respondent claims that it is not causing confusion because the page is inactive and the ISES mark would not be confused with Respondent in any way because only industry insiders are familiar with Complainant and know Complainant’s websites. Additionally, Respondent notes that other industries utilize the ISES acronym so widely that confusion cannot be created as to a generic term. The Panel finds that Respondent did not cause confusion and is not commercially benefitting from the registration and use of the <isespittsburgh.com> domain name pursuant to Policy ¶ 4(b)(iv). See Nintendo of Am. Inc. v. Jones, D2000-0998 (WIPO Nov. 17, 2000) (finding no bad faith where the respondent operated the fan club website without commercial gain, therefore the requirements of Policy ¶ 4(b)(iv) could not be established); see also Accu-Find Internet Servs. v. AccuFind, FA 94831 (Nat. Arb. Forum June 19, 2000) (denying the complainant’s request because the complainant’s allegations that the respondent registered the disputed domain name to divert Internet users from the complainant’s business were not sufficiently substantiated under Policy ¶ 4(a)(iii)).
Respondent argues that the fact that it is a former board member of Complainant’s Pittsburgh chapter is not additional evidence of bad faith and that it could not have registered the disputed domain name in bad faith because it did so with the full consent of Complainant. Respondent argues that it bought, developed, and maintained the disputed domain name at the request of Complainant to be used as the official website for the Pittsburgh chapter of Complainant’s organization. Panels have previously held that where a respondent had the consent of the complainant that bad faith registration was not shown and thus that the bad faith requirement of Policy ¶ 4(a)(iii) could not be met. See Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) (finding that the respondent did not register the disputed domain name in bad faith where it “registered the Domain Name with the full consent and knowledge of Complainant” and therefore “did not have the requisite bad faith when he registered the Domain Name, which is an express requirement of the Policy”); see also Greyson Int’l, Inc. v. Loncar, D2003-0805 (WIPO Dec. 3, 2003) (“Paragraph 4(a)(iii) is conjunctive [requiring that] both registration and use in bad faith must be proven. Numerous panels have applied this language strictly, to deny complaints [where the complainant fails to prove both].”). Respondent also contends that while it is no longer a board member it is still a general member and developed the <isespittsburgh.com> domain name for Complainant and therefore is authorized to have the <isespittsburgh.com> domain name. The Panel finds that Respondent’s position as a former board member of Complainant’s Pittsburgh chapter and as a current member of Complainant’s organization does not demonstrate bad faith under Policy ¶ 4(a)(iii) and that bad faith could not be possible due to Respondent’s registration of the disputed domain name with consent from Complainant. See YourTurf, Inc. v. Your Turf, FA 462460 (Nat. Arb. Forum May 30, 2005) (where it was undisputed that respondent had acted on behalf of the complainant in registering the disputed domain name, the panel refused to find bad faith because “To be a violation of Policy ¶ 4(a)(iii), a respondent must register and use a domain name in bad faith.”).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <isespittsburgh.com> domain name REMAIN WITH Respondent.
Dr. Reinhard Schanda, Panelist
Dated: January, 24,2012
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