Blue Ox Technologies Ltd. v. Asians, Inc. / Richard L. Young, Esq.
Claim Number: FA1205001441706
Complainant is Blue Ox Technologies Ltd. (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondent is Asians, Inc. / Richard L. Young, Esq. (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <7littlewords.com>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
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.
R. Glen Ayers served as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 1, 2012; the National Arbitration Forum received payment on May 1, 2012.
On May 2, 2012, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <7littlewords.com> domain name is registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 8, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 29, 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@7littlewords.com. Also on May 8, 2012, 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 May 29, 2012.
Additional submissions were timely received from both parties and have been considered by the Panel.
On May 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed R. Glen Ayers as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant assets that it holds a mark, registered with the USPTO, “7 Little Words.” The application for the mark was filed on June 30, 2011, and issued on March 6, 2012. Complaint’s application states that the first use in commerce was May of 2012, shortly after Complainant released a software application entitled 7 Little Words, which Complainant asserts has become a popular word game.
In addition, Complainant states that it:
Complainant asserts that its mark has become famous and that Respondent’s use is in bad faith, illustrated by the use of Respondent’s domain to compete with Complainant’s product. This, says Complainant, drives revenue from it to Respondent.
Complainant also asserts that Respondent is not licensed or otherwise authorized to use the name.
All of this allegedly shows that Respondent’s registration and use is “not legitimate.”
B. Respondent
Respondent begins its defense by showing that it registered the domain name <7littlewords.com> before the Complainant applied for its mark and nearly a year before the mark was issued by the USPTO.
Respondent goes on to submit that:
Both parties filed timely additional submissions and both additional submissions have been considered.
Complainant states that it had “accrued trademark rights” before the Respondent registered the domain name. As evidence, it asserts the first use in commerce recited in its trademark application.
Complainant also asserts that Respondent knew of the new, popular word game software application, 7 Little Words, when it registered the name. Complainant argues that the success of its application has made the mark a famous mark. The domain name is used by Respondent “mainly to derive CPC Revenue.”
Respondent points out, once again, that the domain name was registered before the Complainant had applied for the mark, showing that at the time the name was registered, the registration was not a violation of Policy, in particular, ¶ 4(a)(i).
In addition, Respondent asserts that “date of first use in commerce” assertions must be supported by more than the USPTO application statement. Here, there is no other evidence of first use.
Respondent denies that it knew of Complainant’s new software program when it registered the domain name; after the registration, it discovered, through privately developed software, that the name was “trending.”
Finally, Respondent asserts “fair use.” Respondent says that the domain is used for “the primary purpose of posting answers to and commentary on Complainant’s” word game.
Certainly, Complainant has made a prima facie and conclusive case that the mark and domain name are identical, and has satisfied the requirements of ¶ (4)(a)(i). The fact that the domain name predates that application or registration of the mark is not relevant.
The issue of “rights in the name,” is less easy to resolve. The domain name was certainly registered before the mark was issued by the USPTO and before the Complainant’s USPTO application was even filed. Respondent’s statements about its initial use are confusing, but the burden is on the Complainant to show the date of the first use in commerce; Complainant could also submit evidence, if any, that the mark achieved the status of a common law mark prior to the registration by the UPTO. The Complainant’s evidence of first use is limited to its representation in the USPTO application. The Complainant has not offered any evidence that the name had acquired anything remotely approaching common law trademark status prior to actual registration.
Respondent, in rebutting the issue, has specifically stated that the name was registered by Respondent “as part of Respondent’s complement of generic and common word domain names.”
Complainant has also failed to make a prima facie showing that Respondent’s registration and use was in bad faith. There are enough assertions and representations, by both parties, to suggest strongly that Respondent was aware of the new word game “7 Little Words,” and took advantage of that fact to register the domain and “win the race.” However, the actual evidence of “opportunistic bad faith” is not persuasive, and Respondent has denied such a tactic.
Finally, again as to bad faith, Complainant may have made a prima facie case for bad faith – the facts support at least a prima facie finding, given Respondent’s admitted registration of the name as the popularity of Complainant’s product began to crest. However, Respondent has offered strong evidence of fair use, while the only rebuttal is by Complainant is that Respondent is generating some income, “click thru income,” from a domain name making “fair use” of the name “7LITTLE WORDS” on a web site devoted to discussion of the game.
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.
The <7littlewords.com> domain name is identical (and certainly confusingly similar) to the 7 LITTLE WORDS mark. The disputed domain name includes the entire mark, while only adding the generic top-level domain (“gTLD”) “.com.” Previous panels have determined that adding a gTLD to a given mark makes the two identical for the purposes of the Policy. See W. Union Holdings, Inc. v. XYZ, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark).
Respondent’s disputed domain name, <7LITTLE WORDS.COM> is identical to Complainant’s 7 LITTLE WORDS mark under Policy ¶ 4(a)(i).
Certainly “Respondent is not commonly known by” the disputed name. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
However, 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)).
Respondent cites a number of Decisions holding that prior registration of the domain name, before the existence of a common law mark or issuance of a registration, is not defeated by the subsequent issuance of a mark (or the subsequent creation of a common law mark). See EzCommerce Global Solutions, Inc. v. AlphaBase Interactive , D2002-0943 (WIPO Nov. 21, 2002); Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001); see also José de Jesus Velázquez Jiménez v. Velazquez-Perez, CPA, D2001-0342 (WIPO May 8, 2001); Sealstore.com L.C. v. Sealpool, FA 96535 (Nat. Arb. Forum Mar. 8, 2001); Diamond Shamrock Ref. & Mktg. v. CES Mktg. Group, FA 96766 (Nat. Arb, Forum Apr. 20, 2001); Bus. Architecture Group, Inc. v. Reflex Publ’g, FA 97051 (Nat. Arb. Forum June 5, 2001).
Here, where the domain name was registered before any actual evidence of first use, other than the USPTO application, was registered before the filing of the USPTO application, and where there is no evidence of the existence of a common law mark as of the date of registration of the domain name, it is almost impossible to find that Respondent had no rights in the name, or to put it more clearly, that the Complainant had exclusive rights in the name.
Having determined that the Complainant has failed to show that Respondent does not have rights in the name, it is not necessary to reach Policy ¶ (4)(a)(iii). However, the Panel would note that there is evidence of bad faith that can be inferred. Registration of this domain name almost certainly took place after the release of the word game, “7 LITTLE WORDS.” Such registration can support a finding of “bad faith.” See, e.g., Yahoo!Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006). This is certainly some evidence of “opportunistic bad faith.”
However, Respondent has offered persuasive evidence of fair use, even though “click through” income was generated. See, e.g., Pensacola Christian College Inc. v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001).
Given the facts, the Panel finds that Complainant did not meet its burden of proof on the issue of “bad faith” in the light of the Respondent’s evidence of the current nature of the site as shown by its annexed evidence.
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 <7littlewords.com> domain name REMAIN WITH Respondent.
R. Glen Ayers, Panelist
Dated: June 10, 2012
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