Commerce LLC v. Charles M. Hatcher
Claim Number: FA0203000105749
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goodtidings.com> (“the Domain Name”), registered with Tucows.
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.
David H. Bernstein as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 5, 2002; the Forum received a hard copy of the Complaint on March 13, 2002.
On March 5, 2002, Tucows confirmed by e-mail to the Forum that the domain name <goodtidings.com> is registered with Tucows and that the Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 8, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on March 21, 2002.
On March 27, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David H. Bernstein as Panelist.
The Complainant requests that the Domain Name be transferred from Respondent to Complainant.
Complainant alleges that the Domain Name is identical to its mark, GOOD TIDINGS, a version of which (with design elements) is registered with the U.S. Patent and Trademark Office for use in connection with Christmas ornaments and decorations (Reg. No. 1,240,014, registered May 31, 1983).
Complainant contends that Respondent has no rights or legitimate interests with respect to the Domain Name because it has made no use of, or demonstrable preparation to use, the Domain Name in connection with the bona fide offering of goods or services. Moreover, Complainant states that, to the best of its knowledge, Respondent has never been known by the Domain Name and has never sought to obtain trademark rights in the Domain Name. Finally, Complainant denies that Respondent is making a legitimate noncommercial or fair use of the Domain Name.
The Complainant’s allegations of bad faith, in their entirety, are as follows: “The domain name should be considered as having been registered in bad faith because Complainant is the rightful owner of the service mark, having made continuous use of the GOOD TIDINGS mark since 1979. Respondent has made no use whatsoever of the goodtidings.com domain name. Respondent has failed and refused to transfer the domain name to Complainant.”
Although Respondent admits that the Domain Name is identical to the word mark portion of the trademark referred to by Complainant, it asserts that Complainant has not proven its ownership of the GOOD TIDINGS mark.
Respondent asserts it has a right to use the phrase “good tidings” in its generic sense as a domain name in connection with delivering news and announcements of a religious nature. As to Complainant’s claim that Respondent is not currently using the Domain Name, Respondent argues, first, that it uses the Domain Name for legitimate e-mail purposes, and, second, that it ceased the development of a web site after receiving notice of the current dispute.
Respondent alleges that it did not register or use the Domain Name in bad faith. It argues it had a good faith basis for believing it was entitled to register and use the Domain Name because the phrase “good tidings” is used extensively by third parties. Respondent also notes that its use of this generic phrase cannot constitute bad faith because Complainant’s registration is a design mark and Complainant’s mark is neither famous nor distinctive. In addition, Respondent denies registering the Domain Name in order to sell it to Complainant or Complainant’s competitors, to prevent Complainant from reflecting its mark in a domain name, to disrupt Complainant’s business, or to attract Internet users to its web site by creating a likelihood of confusion.
Finally, Respondent requests that the Panel make a finding of Reverse Domain Name Hijacking against Complainant, as provided for by Paragraph 15(e) of the Rules for the Uniform Domain Name Dispute Resolution Policy (the “Rules”).
Complainant has submitted a printout from the U.S. Trademark Electronic Search System indicating that “Commerce Distributors, Inc.” is the current owner of a United States Trademark Registration for the design mark GOOD TIDINGS (and design) for flasher control units and for Christmas ornaments and decorations (Reg. No. 1,240,014, registered May 31, 1983).
Respondent registered the Domain Name with Tucows Inc. on February 5, 2001.
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 the Complainant 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests with respect to the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The record is unclear on the relationship between Complainant (Commerce LLC) and Commerce Distributors, Inc., the entity listed as the owner of the GOOD TIDINGS (and design) trademark registration. Complainant has not submitted evidence that the registration was assigned to it, or that the registrant changed its name. Because the resolution of that question is irrelevant to the ultimate decision, the Panel assumes for purposes of this decision that Complainant has rights in the GOOD TIDINGS mark. Although Respondent alleges that Complainant’s mark is generic, ownership of a federal trademark registration is prima facie evidence of ownership of a valid trademark. See EAuto, LLC v. Available-Domain-Names.com, D2000-0120 (WIPO Apr. 13, 2000).
The Panel also finds that the Domain Name is identical to Complainant’s mark. The only difference between the word portion of Complainant’s mark and the Domain Name is the absence of spaces and the addition of the “.com” gTLD – differences that are irrelevant when considering the similarity of a domain name (which cannot have spaces and must have a gTLD) to a trademark. See Universal City Studios, Inc. v. G.A.B. Enterprises, D2000-0416 (WIPO June 29, 2000). Moreover, the design elements of Complainant’s mark cannot be captured in a domain name and thus are considered irrelevant for purposes of this analysis. See General Mach. Prod. Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum Mar. 17, 2000); Playboy Enter. Int’l, Inc. v. Rodriguez, D2000-1016 (WIPO Nov. 7, 2000).
Rights or Legitimate Interests
Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent has never been known by the Domain Name and has not used the Domain Name for any purpose. These unsupported assertions leave much to be desired, particularly in light of the fact that Complainant cannot claim an exclusive and presumptive right to a generic phrase like “good tidings.” However, the Panel finds that Complainant’s allegations, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.
Once a Complainant makes a prima facie showing that a Respondent lacks rights to the domain name at issue, the burden of production shifts to the Respondent to come forward with proof of its rights to or legitimate interests in the domain name. As explained in Document Technologies, Inc. v. International Elec. Communications Inc., D2000-0270 (WIPO June 6, 2000):
This “burden shifting” is appropriate given that Paragraph 4(c) of the Policy, which is entitled “How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint,” discusses the kind of evidence a Respondent should provide to show that it has rights to or legitimate interests in the domain name. The burden of proof, however, does not shift as the Policy makes clear that “the complainant must prove that each of these three elements are [sic] present.” Policy, ¶ 4(a).
According to Paragraph 4(c) of the Policy, Respondent may demonstrate its rights to or legitimate interests in the Domain Name by proving any of the following circumstances:
(i) before any notice to it of the dispute, its use of, or 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; or
(ii) it (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
To qualify under paragraph 4(c)(i), Respondent must show “use of, or demonstrable preparations to use” the Domain Name. Respondent asserts that it is using the Domain Name as the host name of its e-mail address. It is true that pointing to a web site is only one possible use of a domain name and that using a domain name in connection with an e-mail address may constitute a legitimate use. See, e.g., Pueblo Int’l, Inc. v. Pueblo Tech. Publ’g, FA 95252 (Nat. Arb. Forum Aug. 7, 2000) (finding that “Respondent’s utilization of the domain name as an e-mail address, although not as a website,” is sufficient to show rights and legitimate interests in the domain name). In this case, though, Respondent has not provided any proof that it uses the e-mail address, other than the bald assertion that it does. Respondent’s defense on this point is thus as stark as Complainant’s allegations.
Likewise, Respondent has not shown any demonstrable preparations to use the Domain Name. Respondent claims its preparations to publish a website were halted at the time it received Complainant’s demand letter. While the failure to publish a web site for seven months between domain name registration and receipt of a demand letter might be excusable, see Meredith Corp. v. City Home, Inc., D2000-0223 (WIPO May 18, 2000) (non-use of domain name for eight months is reasonable time to engage in research and development), the Panel cannot accept Respondent’s claims of preparation unsupported by any evidence. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Mere assertions of preparations to make a legitimate use are not enough.”); Document Technologies, Inc., supra. (holding that “the mere assertion of such an intention [to use a web site] is insufficient”).
Nor can the Panel presume a legitimate interest based on the Domain Name’s allegedly generic nature. In some cases, such a finding is appropriate, such as when the Domain Name incorporates a bona fide personal name used for e-mail purposes, see Buhl Optical Co. v. Mailbank.com, Inc., D2000-1277 (WIPO Mar. 1, 2001), or when the Respondent proves that it engages in offline activities that give meaning to the choice of a domain name. Here, Respondent only makes a vague and unsupported claim that it is involved with the delivery of religious news and announcements. It does not provide a business plan or any evidence regarding the extent of its activities. In the absence of such evidence, and without a published web site, the Panel cannot presume a legitimate interest in the Domain Name. See World Wrestling Fed’n Entm’t, Inc., supra.; Van Halen v. Morgan, D2000-1313 (WIPO Dec. 20, 2000).
Given the sparseness of both Complainant’s allegations and Respondent’s defense, it is difficult to determine how to rule on the second factor. The Complainant, which bears the burden of proof, has made only the starkest of a showing, based solely on conclusory allegations; in response, the Respondent makes his own conclusory allegations but has not substantiated those allegations with any assertions of fact or documentary support. Given these battling conclusory allegations, the Panel is inclined to find that Complainant has not satisfied its burden of proof. See Tribeca Film Center, Inc. v. Brusasco-Mackenzie, D2000-1772 (WIPO Apr. 10, 2001). Ultimately, though, it is not necessary to resolve this issue in this case given the Panel’s decision on the third factor.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the 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 the Respondent’s web site or location or of a product or service on its web site or location.
In this case, Complainant has not produced any evidence whatsoever that Respondent acted in bad faith in registering or using the Domain Name. Indeed, Complainant has not even made a cognizable claim of bad faith on the part of Respondent.
Complainant alleges that Respondent acted in bad faith because it (1) registered a domain name that was identical to the word portion of Complainant’s trademark, and (2) has not made use of the Domain Name. However, these allegations merely go to the identicality and illegitimate use elements of the Policy. The element of bad faith is separate and distinct from these requirements. See Van Halen, supra. The Policy demands a showing of some improper motive on the part of the registrant; a trademark owner may not force a registrant who purchased and is using the domain name in good faith to transfer the domain name free of charge.
Complainant also points to Respondent’s refusal to transfer the Domain Name to Complainant as evidence of bad faith. The failure to turn over a domain name, without more, cannot constitute bad faith. See Estate of Tupac Shakur v. Barranco, AF-0348 (eResolution October 23, 2000) (“The mere refusal of a person to comply with a questionable demand does not constitute ‘bad faith’. Otherwise, that term and the ICANN provisions would lose all meaning and significance.”).
Finally, Complainant has failed to produce any evidence (or, in fact, even to suggest) that Respondent registered the Domain Name in order to sell it to Complainant, to prevent Complainant from reflecting its mark in a corresponding domain name, to disrupt Complainant’s business, or to attract users to its web site by creating a likelihood of confusion. By contrast, Respondent specifically denies engaging in any of these activities.
For these reasons, the Panel finds that Complainant fails to prove that Respondent acted in bad faith.
Attempted Reverse Domain Name Hijacking
Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking against Complainant. The Panel agrees that Complainant brought this action without a good faith basis and therefore grants Respondent’s request.
According to Paragraph 15(e) of the Rules, “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
Paragraph 4(a) of the Policy requires that the Complainant prove three factors in order to obtain an order that a domain name should be cancelled or transferred. To bring a complaint in good faith, the Complainant must produce evidence on all three of these factors. See Online Resources, Inc. v. On-Line Resources, D2001-0257 (WIPO May 15, 2001). In this case, Complainant’s evidence and allegations were incomplete on the first factor, merely conclusory on the second, and nonexistent on the third. Significantly, Complainant did not make a single assertion of bad faith on the part of Respondent. It did not allege that any of the factors in Paragraph 4(b) were met, nor did it claim the existence of any other circumstances or produce any evidence that would suggest Respondent’s bad faith. A complaint that is devoid of any evidence or allegations concerning one of the three elements under the Policy is clearly deficient, particularly when the Domain Name incorporates a phrase as common as “good tidings.” The Panel can only conclude that the Complaint was brought in bad faith.
Based upon the above findings and conclusions, it is the decision of the Panel that the domain name at issue, <goodtidings.com>, not be transferred to Complainant. The Panel also finds that Complainant is guilty of Reverse Domain Name Hijacking.
David H. Bernstein, Panelist
Dated: April 9, 2002
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