national arbitration forum

 

DECISION

 

Ray Communications, Inc. v. Dan Shuler

Claim Number: FA1210001469044

 

PARTIES

Complainant is Ray Communications, Inc. (“Complainant”), represented by Michael S. Culver of Millen, White, Zelano & Branigan, P.C., Virginia, USA.  Respondent is Dan Shuler (“Respondent”), represented by Geoffrey D. Swindler of LAW OFFICE OF GEOFFREY D. SWINDLER, Washington, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <agrinet.com>, registered with NETWORK SOLUTIONS, LLC.

 

PANEL

The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2012; the National Arbitration Forum received payment on October 26, 2012.

 

On October 25, 2012, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the <agrinet.com> domain name is registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the name.  NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, LLC. 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 October 29, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 19, 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@agrinet.com.  Also on October 29, 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 November 19, 2012.

 

On December 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is the owner of the service mark AGRINET for radio broadcasting services. Complainant has registered this mark with the U.S. Patent and Trademark Office as follows: (A) Reg. No. 935,512 issued June 6, 1972 for educational services rendered through the medium of radio, namely, a program of interest to farmers; and (B) Reg. No. 4,022,959 issued September 6, 2011 for (1) broadcasting programs via a global computer network; (2) entertainment services, namely, providing a radio program in the field of agriculture, food, farming, agribusiness news, agricultural trade news, trade information, import export trade news, farm news and information, agricultural and food legislation, commodity market news and information and policy analysis relating to agriculture, food and farming via a global computer network; and (3) entertainment services, namely, providing a television program in the field of agriculture, food, farming, agribusiness news, agricultural trade news, trade information, import export trade news, farm news and information, agricultural and food legislation, commodity market news and information and policy analysis relating to agriculture, food and farming via a global computer network.

 

Complainants principal, William (“Bill) Ray began his career as a radio broadcaster in 1966 with Charlottesville Broadcasting Corporation, and he was the principal broadcaster when the trademark AGRINET was first adopted and used in 1971.  In the early 1970s, he quickly established a network of radio stations that carried the AGRINET branded agricultural news broadcasts.

 

Under Mr. Rays guidance over the years, including marketing and promotional activities, the AGRINET network of radio stations has expanded. According to trade data, the AGRINET network in 1991 was 100 stations in eleven states, including Washington State where Respondent is located. The current data for 2012 shows 93 radio stations in 30 states, again including Washington State.

 

Complainant has long protected its AGRINET trademark. Through demand letters and follow-up negotiations, Complainant stopped the use of Agrinet by the Tribune Company in Chicago in 1986, the use of American Agrinet in 1987, the use of Kentucky Agrinet in 1993, the use of Florida Agrinet in 1994, and the use of AgriNet Marketing & Sales and Mississippi Agri-Net in 2007. Complainant commenced litigation in June 2008 against Clear Channel Communications, Inc. involving Oklahoma Agrinet (and other uses of Agrinet). See Ray Commc’ns., Inc. v. Clear Channel Commc’ns., Inc., 673 F.3d 294 (4th Cir. 2012). That case was recently resolved by settlement and a dismissal is pending.

 

In short, by virtue of factors such as Complainants longstanding use of its AGRINET mark, its marketing and promotional activities, and Complainants strong enforcement and registration program, the AGRINET mark was extensively and prominently used prior to the Domain Registration Date, and was as of that date and continues to be a highly distinctive trademark that symbolizes substantial goodwill.

 

Factual  and Legal Grounds

 

The UDRP requires the transfer or cancellation of a domain name if the Complainant can establish (1) that the domain name at issue is identical or confusingly similar to a service mark in which the Complainant has rights; (2) that the Respondent has no rights or legitimate interests with respect to the domain name; and (3) that the Respondent has registered and used the domain name in bad faith. UDRP ¶4(a). Each of these factors favors Complainant in this case. Accordingly, transfer of the Domain Names is appropriate.

 

A.          The Domain Name is Identical to Complainant’s Trademark

The Domain Name is identical Complainants AGRINET mark. The generic, top-level domain .com is not relevant in determining whether a domain name is confusingly similar to a trademark. See, e.g., 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.)).

 

Complainant submits that the Panel readily must find in its favor on this element of the UDRP.

 

B.          Respondent has no Right or Legitimate Interest in the Domain Name

The UDRP sets forth a list of circumstances that can demonstrate a right or legitimate interest in a disputed domain name. It appears that none of these circumstances are present in this case. Accordingly, the Panelist must conclude that Respondent has no right or legitimate interest in the Domain Name.

 

Complainant must make a prima facie showing that Respondent has no rights or legitimate interests in the Domain Names. UDRP ¶4(a)(ii). This burden has been described as light. See Ray Marks Co., LLC v. Rachel Ray Techniques Pvt. Ltd., FA 1319966 (Nat. Arb. Forum July 7, 2010); see also Rockstar, Inc. v. Belis, FA 1266184 (Nat. Arb. Forum July 20, 2009). This burden essentially requires a complainant to prove a negative, and thus generally the mere assertion by a complainant that a respondent has no rights is sufficient. See David Keirsey v. Caribbean Online Intl Ltd., FA 1106078 (NAF December 27, 2007); see also Lovett v. Website Work, FA 1087392 (Nat. Arb. Forum Nov. 16, 2007).

 

The UDRP provides that a right or legitimate interest in a disputed domain name may be demonstrated where the registrant has been commonly known by the domain name, even if it has acquired no trademark or service mark rights. UDRP ¶4(c)(ii). To the best of Complainants knowledge, Respondent is not known by a name consisting in whole or in part of the word agrinet or any substantial equivalent; indeed, it could not be without authorization from Complainant. Respondent also is not an agent or licensee of Complainant. The Whois information for the Domain Name identifies only Dan Shuler as the registrant. Thus, there is no information linking Respondent to any rights or legitimate interests in the mark or to indicate that Respondent is commonly known as agrinet.”

 

Otherwise, a respondent may demonstrate a right or legitimate interest in the domain name only if it can establish (a) that prior to receiving any notice of the dispute, it used or made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services (UDRP ¶4(c)(i)); or (b) that it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the trademark or service mark at issue (UDRP ¶4(c)(iii)). Respondent clearly cannot make such a showing.

 

The Domain Name currently resolves to a web page stating, This Site Is Under Construction and Coming Soon.” This under construction” page is inserted by the Registrar Network Solutions, not by Respondent, because the website is inactive.

 

Additionally, searches from the Internet Archive (http://archive.org/web/web.php) show that this website has long been passive without any legitimate use. Web pages from this archive dated April 29, 2005 and February 28, 2007 show a picture of a cartoon rabbit and carrot without any other wording or context. This passive use of a website does not create a right or legitimate interest in the Domain Name, as shown in recent cases. See World Triathlon Corp. v. brisport science/fabrizio fabrizio, FA 1459277 (Nat. Arb. Forum Sept. 24, 2012); see also Dollar Financial Group, Inc. & National Money Mart Co. v. 1604140 Ontario Inc., FA 1456816 (Nat. Arb. Forum Sept19, 2012). As stated in one case:

 

The Panel finds that the passive holding of a domain name that is identical to Complainants mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor is it a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii).

 

Bloomberg L.P. v. SC Media Services and Info, SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004).

 

In view of the foregoing, the criterion under UDRP ¶4(a)(ii) is therefore satisfied.

 

C.           Respondent’s  Registration And Use In Bad Faith

Respondents inactive website, over many years, also establishes that the Domain Name is being used in bad faith. See World Triathlon Corp, supra; Dollar Financial Group, Inc. and National Money Mart Co., supra; see also SIGARMS, Inc. v. Sigsauer Dot Com, FA 1024240 (Nat. Arb. Forum Aug. 9, 2007); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum April 25, 2007).

 

The Domain Name is identical to Complainants mark and prevents Complainant from exercising the rights to its mark and managing its presence on the Internet. Respondents actions have prevented Complainant from using the logical choice for a web address for its broadcasting and entertainment services which only heightens the disruption to its business.

 

In view of the foregoing, the criterion under UDRP ¶4(a)(iii) is therefore satisfied.

 

B. Respondent

A.  Respondent admits that agrinet.com is identical to Complainants

Trademark.

 

B.  Respondent Has a Right or Legitimate Interest in the

Domain Name.

 

Respondent is a private citizen and business man in Spokane, Washington. Respondent was born and raised in Warden, Washington. Warden is a small agricultural community in Eastern Washington. Respondents father was a farmer and rancher. His brother is a farmer in Warden.

 

Respondent earned a B.A. in agricultural economics from Washington State University in 1983. After graduation, he worked for Cenex until 1988.

 

Respondent registered agrinet.com in 1997 for the sole purpose of pursuing an agricultural enterprise.  He wanted to use the forum to market services for agricultural products. He planned to use agrinet.com to assist farmers in the marketing and sale of their products.

 

Respondent actively used the agrinet.com from 1999 thru 2001 to assist farmers. Consistent with his commercial intentions, Respondent even spent the time and money to obtain agrinet.com business cards.

 

In January of 2002, Respondent started HiTechnique, an information technical company based in Spokane.  HiTechnique has been a successful enterprise that has enjoyed tremendous growthThat growth has temporarily limited and hindered Respondents intentions to pursue agrinet.com.

 

Nevertheless, Respondent still intends to use agrinet.com for commercial purposes. He plans to continue to use agrinet.com to promote his business.

 

C.  Respondent Registered the Domain Name in Good Faith.

 

As established above, Respondent used the Domain Name for two years for legitimate commercial interest. Respondent still intends to use agrinet.com for commercial purposes. Therefore, he has acted in faith.

 

Moreover, Complainant still has access to <agrinet.org> and <agrinet.net>. Complainant has offered to reason why it has not acquired those Domain Names.

 

FINDINGS

(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.

 

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 claims it is the owner of the service mark AGRINET for radio broadcasting services.  Complainant registered the AGRINET mark with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 935,512 registered June 6, 1972).  The Panel finds Complainant’s trademark registrations with the USPTO are sufficient for Complainant to establish its rights in the AGRINET mark under Policy ¶4(a)(i).  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶4(a)(i)).

 

Complainant claims Respondent’s <agrinet.com> domain name is identical to Complainant’s AGRINET mark, which Respondent admits. The Panel agrees and finds the disputed domain name is identical to Complainant’s mark under Policy ¶4(a)(i).  See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶4(a)(i) analysis.”).

 

The Panel finds Policy ¶4(a)(i) satisfied.

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii).  Then the burden shifts to Respondent to show it has 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 claims Respondent is not known in whole or in part by the word “agrinet” or any substantial equivalent.  Respondent apparently concedes this point. The WHOIS information for the <agrinet.com> domain name identifies “Dan Shuler” as the registrant.  Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii).  See 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).

 

Complainant claims Respondent does not have authorization from Complainant to use the mark and is not an agent or licensee of Complainant.  Respondent apparently concedes this point as well.

 

The disputed domain name currently resolves to a website that states, “This Site Is Under Construction and Coming Soon.”  Complainant claims Respondent has passively held the disputed domain name for some time, at least since April 29, 2005.  Respondent admits the domain name has not been actively used since that time.  Respondent registered the domain name on June 28, 1997.  Complainant contends that such passive use does not create a right or legitimate interest in the disputed domain name.  Respondent agrees it is not presently using the domain name.  Respondent has not produced any evidence of current demonstrable preparations to use the domain name, although Respondent hopes to use the domain name in some unspecified way at some unspecified time in the future.  This alone is not sufficient to acquire rights or legitimate interests.

 

The interesting question is whether Respondent’s prior use of the domain name from 1999-2001 was of such a nature Respondent acquired rights or a legitimate interest.  Regrettably, Respondent does not give the Panel much to go on.  The fact Respondent printed “Agrinet.com” business cards (but doesn’t even claim to have used them) is not sufficient to acquire rights.  The Panel finds Respondent has failed to meet its burden or persuasion on this element and Respondent does not make (and has never made) 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).  See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶4(c)(iii).”).

 

The Panel finds Policy ¶4(a)(ii) satisfied.

 

Registration and Use in Bad Faith

 

This is the most troubling element. 

 

Policy ¶4(b) provides a non-exclusive list of ways to prove bad faith, none of which Complainant uses in this case.  For example, Complainant does not claim Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.

 

Complainant claims Respondent registered the domain name to prevent the Complainant from reflecting the mark in a corresponding domain name, which is not true (as Respondent pointed out).  Complainant has other domain names available so its mark can be incorporated.  Complainant has not claimed Respondent has engaged in a pattern of such conduct.

 

Complainant has not claimed Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor.

 

Complainant has not claimed Respondent intentionally attempted to attract, for commercial gain, Internet users to the domain name, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or product.

 

The only thing left is an analysis based upon the totality of the circumstances. 

 

Respondent’s website resolves to an “Under Construction” page with no active content.  Respondent does not claim it was ever otherwise with any specificity.  This Panel does not think printing a business card for “agrinet.com” constitutes use of the domain name (especially since Respondent never even claimed to have used the business cards). The domain name was registered on June 29, 1997 and nothing specific has been done with it since then.  Under these circumstances, the Panel finds Respondent registered and is using the disputed domain name in bad faith under Policy ¶4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.  See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).

 

The Panel finds Policy ¶4(a)(iii) satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.

 

Accordingly, it is Ordered the <agrinet.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Thursday, December 6, 2012

 

 

 

 

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