National Arbitration
Forum
DECISION
Cornerstone Research Group,
Inc. v. George Marion-Landais
Claim Number: FA0811001233380
PARTIES
Complainant is Cornerstone Research Group, Inc. (“Complainant”), represented by Eugene
Patrick Sunday, of Cornerstone Research Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cornerstoneresearchgroup.com>,
registered with Godaddy.com, Inc.
PANEL
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.
Timothy D. O’Leary as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 11, 2008; the
National Arbitration Forum received a hard copy of the Complaint on November 13, 2008.
On November 11, 2008, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <cornerstoneresearchgroup.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-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On November 20, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 10, 2008 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 postmaster@cornerstoneresearchgroup.com
by e-mail.
A timely Response was received and determined to be complete on December 8, 2008.
An Additional Submission was received from Complainant on December 12,
2008, and was determined to be timely and complete pursuant to Supplemental
Rule 7.
On December 17, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Timothy D. O’Leary as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
The service marks Cornerstone Research Group and
cornerstoneresearchgroup, relate to the company Cornerstone Research Group,
Inc. which is a privately help research and development company that was
incorporated in Ohio on Mar 10 1997, Ohio Business Reg. No. 973578, and has
been in business for over eleven (11) years.
Cornerstone Research Group, Inc. combines creative science and
engineering to discover, develop, and deliver innovative materials-based
solutions to our customers’ varied challenges. Cornerstone Research Group, Inc.
focuses on the design and application of state-of-the-art materials for
commercial and government markets.
Cornerstone Research Group, Inc. is acknowledged to be a leader in the
development and application of state-of-the-art materials.
Complainant has rights to use its company name, Cornerstone Research Group, as an unregistered service mark based on its registration with the State of Ohio as a legally incorporated entity as noted above, the time of use (more than eleven (11) years), and its world-wide reputation as a leader in the development and application of state-of-the-art materials. Additionally, Cornerstone Research Group, Inc. has registered the domain names cornerstoneresearchgroup.net, crgrp.com, and crgrp.net as they relate to this service mark. The infringing domain name <cornerstoneresearchgroup.com> is identical to the company name used by Complainant.
While
Complainant acknowledges that there is no U.S.P.T.O. registration of the service
mark Cornerstone Research Group, previous panels have held that unregistered
service-mark and trademark rights are sufficient to bring proceedings under the
U.D.R.P.
Respondent has held the disputed
domain name since at least May 16, 2007 and as of the filing of this complaint
has failed to place any content on the website other than the statement “Coming
Soon . . .”
Complainant has not been able to locate any application that Respondent
has filed to use the mark “cornerstoneresearchgroup,” “Cornerstone Research
Group,” or other similar mark as of the date of this filing. Respondent is not commonly known by the
“cornerstoneresearchgroup.com” domain name nor has it ever been the owner or
licensee of the Cornerstone Research Group mark. The WHOIS listing for the
disputed domain name lists Respondent as “George Marion-Landais” which
is assumed to be an individual not a corporate name. Complainant has established that Respondent has no rights or legitimate interests in the
domain name at issue.
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith.
Complainant contacted respondent via e-mail in an attempt to quickly transfer the disputed domain name to complainant. Complainant offered respondent two hundred dollars ($200.00 US), over six times what Respondent has paid to register and maintain the disputed domain name, which was summarily refused. In response to the offer, Respondent stated “I have reviewed your company's profile and understand the name would be beneficial to you. I would sell the domain name for somewhere in the neighborhood of $200k.”
Paragraph 4(b) of the ICANN Policy sets out four circumstances, any one of which is evidence of the registration and use of a domain name in bad faith. The first specified circumstance is that the “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 the respondent’s documented out‑of‑pocket costs directly related to the domain name.”
Respondent has offered to sell the
disputed domain name to its rightful owner for well over six thousand (6,000)
times what it has costs Respondent to register and maintain the disputed domain
name. This is prima facie evidence of
cyber squatting and has been held on numerous occasions to be prima facie
evidence of bad faith registration and that there is no legitimate
non-commercial, commercial or fair use intended by the registrant/Respondent. See Neiman Marcus Group, Inc. v.
AchievementTec, Inc., FA 192316 (Nat. Arb.
Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name
for $2,000 sufficient evidence of bad faith registration and use under Policy ¶
4(b)(i)).
Respondent’s company name,
Cornerstone Research Group, is used by two business partners, Stella C.
McDonald and Catherine Jones-Landais, in the State of
Respondent recognizes the fact that no content other than the text “Coming Soon…” has existed on the cornerstoneresearchgroup.com web site due to the fact the web site is still under construction. Proof of web site development can be found in the document which details the contract dated June 28, 2007 between Cornerstone Research Group partner Stella C. McDonald and web developer and art designer Victor L. Perez. This shows demonstrable preparations to use the domain name cornerstoneresearchgroup.com in connection with a bona fide offering of services.
Respondent has provided proof of doing business under the name “Cornerstone Research Group” since at least May 9, 2007, as documented in an e-mail sent May 9, 2007 at 7:51pm, which details a business services offering from Cornerstone Research Group partner Stella C. McDonald to client Lynn Lambert.
Respondent is making fair use of the domain name cornerstoneresearchgroup.com, without intent for commercial gain to misleadingly divert consumers or to tarnish any trademark held by the Complainant, as evidenced by an e-mail sent May 16, 2007 at 9:05pm, which details the initial conversation between Cornerstone Research Group partners Catherine Jones-Landais and Stella C. McDonald, in which Catherine discusses the business purposes for securing the cornerstoneresearchgroup.com domain name.
Respondent has registered the cornerstoneresearchgroup.com domain name for legitimate business purposes, and not for the purpose of selling, renting, or transferring the domain name registration to any other party. Complainant contacted Respondent on October 28, 2008 with an offer to purchase the cornerstoneresearchgroup.com domain name for two hundred dollars ($200.00 US). This offer was refused by the Respondent, who estimated the true value of the domain name at that time to be approximately two hundred thousand dollars ($200,000.00 US). In determining this amount, Respondent believes the transfer of the cornerstoneresearchgroup.com domain name to any other party would have to take into consideration the investments already made in the cornerstoneresearchgroup.com brand: networking and gathering of clientele under said name, website development and graphic design (logo, business cards, letterhead), as well as the costs of having to modify existing materials should the Respondent decide to transfer the domain name to another party. Therefore, this estimation is not evidence of cyber-squatting or bad faith registration. Rather, it should be viewed as a fair business transaction between two legitimate business entities.
No evidence exists proving 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. Furthermore, no evidence exists proving Respondent has engaged in a pattern of such conduct.
No proof exists that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.
No proof exists that by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s 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 or location or of a product or service on Respondent’s web site or location. Complainant has already confirmed the only text on the cornerstoneresearchgroup.com web site has been “Coming Soon…”, which could in no way be used for commercial gain.
Respondent states that “The domain name cornerstoneresearchgroup.com in no way relates to the business being conducted by the Complainant, who holds the domain name crgrp.com, and operates as a research and development company in the State of Ohio.”
Complainant believes that the use to which Respondent would utilize the domain name is irrelevant to the allegation that cornerstoneresearchgroup.com is identical, or in the alternative, confusingly similar to the mark held by the Complainant.
Therefore, based on the submissions offered with the Complaint, Complainant has proven a prima facie case under Policy ¶ 4(a)(i) that the mark registered by Respondent is identical, or confusingly similar to the mark held by Complainant in that Complainant’s mark, Cornerstone Research Group, and Respondent’s domain name, cornerstoneresearchgroup.com, are identical except for the inclusion of the TLD .com and that the words of the mark are not separated.
Respondent has not Proven it has Rights and Legitimate Interests in the Disputed Domain Name.
Respondent states that “Respondent’s company name, Cornerstone Research Group, is used by two business partners, Stella C. McDonald and Catherine Jones-Landais, in the State of Georgia and the State of Texas to render services as a clinical research company, specializing in the recruitment and training of registered nurses and consulting services for the clinical research industry.”
A thorough review of corporate registrations
in the State of
A mere assertion that Respondent is using or will use the mark for legitimate business purposes is not enough to show legitimate rights in the disputed domain name. Therefore, the mere registration of a domain name is not sufficient to create rights or a legitimate interest.
The only evidence proffered by Respondent of the use of the name Cornerstone Research Group is two emails which use the name, dated May 9 and 16, 2007. These emails are directly contradicted by the other evidence submitted by Respondent and Respondent’s other website, gcnbinc.com, which is offering the same services as Respondent claims the disputed domain name will offer.
The evidence which contradicts the emails provided by the Respondent is the contract submitted which Respondent claims “shows demonstrable preparations to use the domain name cornerstoneresearchgroup.com in connection with a bona fide offering of services.”
Nowhere in the document provided does the name “Cornerstone Research Group” appear. The only possibly place for the name to appear is the upper right side of page one (1) of the contract. However, in this location the name “Cornerstone Recruitment” is shown.
Respondent further alleges that the disputed domain “web site is still under construction.” Respondent and Complainant acknowledge that the domain name cornerstoneresearhcgroup.com does not have any active content other than the text “Coming Soon…” and that this text has existed for at least eighteen (18) months with no effort to update it, despite the contract submitted by respondent to develop a website and Respondent’s contention that this contract was to develop the website for the disputed domain name.
Paragraph 4(b) of the ICANN
Policy sets out four circumstances, any
one of which is evidence of the registration and use of a domain name in
bad faith. Therefore, in order to prove
bad faith only one of the criteria must be met.
The first specified circumstance is that the “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 the respondent’s documented out‑of‑pocket costs directly
related to the domain name.” ICANN Policy ¶ 4(b)(i).
Respondent has admitted to offering
to sell the disputed domain name to its rightful owner for well over six
thousand (6,000) times what it has costs Respondent to register and maintain
the disputed domain name. This is prima
facie evidence of cyber squatting and has been held on numerous occasions to be
prima facie evidence of bad faith registration and that there is no legitimate
non-commercial, commercial or fair use intended by the registrant/Respondent. See Neiman Marcus Group, Inc. v.
AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000
sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i));
see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain
name registration for sale establishes that the domain name was registered in
bad faith under Policy ¶ 4(b)(i)”).
Respondent
has provided no, or insufficient, evidence to show the “investment already made
in the cornerstonereaserchgroup.com brand.”
The arguments against Respondent having legitimate rights in the
disputed domain name, apply equally here to refute Respondent’s contention that
the offered price of Two hundred thousand and 00/100 Dollars ($200,000 US) is
“a fair business transaction.”
Respondent has provided no proof to demonstrate the costs or efforts
Respondent has made in promoting the mark Cornerstone Research Group. Thus, Respondent has made no effort to, or
abandoned the name after minimal effort, to promote the name to make the
Respondent’s offered price a “fair business transaction.”
Therefore
the preponderance of the evidence indicates that there are circumstances
indicating that Respondent has registered or has 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 service
mark for valuable consideration vastly in excess of Respondent’s documented
out-of-pocket costs directly related to the domain name. Thus, Complainant has made a prima facie case
of bad faith registration, and alternatively, overcome Respondents minimal
showing of legitimate business use.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 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 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 in respect of the domain name; and
(3) the domain name has been registered and is
being used in bad faith.
FINDINGS
Identical and/or Confusingly Similar: Policy
¶ 4(a)(i)
I find
the issues on this element in favor of Complainant.
Complainant does not hold a
registered trademark for its alleged CORNERSTONE RESEARCH GROUP mark. However, the Panel finds that such a
trademark registration is not necessary if Complainant can establish common law
rights in the mark pursuant to Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA
721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant
need not own a valid trademark registration for the ZEE CINEMA mark in order to
demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat.
Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a
trademark registration if a complainant can establish common law rights in its
mark).
Complainant asserts rights in the CORNERSTONE RESEARCH GROUP mark as
its business name by virtue of its incorporation in the state of
Having found that Complainant has established protectable rights in the CORNERSTONE RESEARCH GROUP mark under an analysis of Policy ¶ 4(a)(i), the Panel must next determine under this element of the Policy whether or not the disputed domain name is identical or confusingly similar to Complainant’s mark. Complainant argues in its Complaint and Additional Submission that the <cornerstoneresearchgroup.com> domain name contains the CORNERSTONE RESEARCH GROUP mark in its entirety, but removes the spaces and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds these changes to be insignificant under an analysis of the Policy based on the inherent limitations of domain names. Therefore, the Panel concludes that Respondent’s <cornerstoneresearchgroup.com> domain name is identical to Complainant’s CORNERSTONE RESEARCH GROUP mark pursuant to Policy ¶ 4(a)(i). See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”).
Rights or Legitimate Interests: Policy ¶ 4(a)(ii)
I find
the issues on this element in favor of Complainant.
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. 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).
Respondent’s <cornerstoneresearchgroup.com> domain name resolves to a website that is blank except for the language “Coming Soon….” The Panel determines that Respondent’s inactive use of the <cornerstoneresearchgroup.com> domain name since its registration evidences Respondent’s failure to use the disputed domain name in a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel therefore concludes that Respondent lacks rights and legitimate interests in the <cornerstoneresearchgroup.com> domain name pursuant to Policy ¶¶ 4(c)(i) and (iii), respectively. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (concluding that the respondent had no rights or legitimate interests in the <worldgyms.com> domain name because it contained no substantive content, just the phrase “coming soon” and a picture of someone working out).
In Complainant’s Additional
Submission, Complainant provides evidence that Respondent’s statement,
“Respondent’s company name, Cornerstone Research Group, is used by two business
partners, Stella C. McDonald and Catherine Jones-Landais, in the State of
Georgia and the State of Texas to render services as a clinical research
company, specializing in the recruitment and training of registered nurses and
consulting services for the clinical research industry,” has no basis in
fact. Complainant states that it reviewed
“corporate registrations in the State of
Moreover, according to Complainant
in the Complaint and Additional Submission, “Respondent is not commonly known
by the <cornerstoneresearchgroup.com> domain name nor has it ever
been the owner or licensee of the CORNERSTONE RESEARCH GROUP mark.” The WHOIS information for the disputed domain
name registration identifies Respondent as “George Marion-Landais.” Therefore, the Panel concludes that
Respondent is not commonly known by the <cornerstoneresearchgroup.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Reese v. Morgan, FA 917029 (Nat. Arb.
Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by
the <lilpunk.com> domain name as there was no evidence in the record
showing that the respondent was commonly known by that domain name, including the
WHOIS information as well as the complainant’s assertion that it did not
authorize or license the respondent’s use of its mark in a domain name).
Lastly, Complainant urges the Panel in its Additional Submission to
reject Respondent’s assertion that an unsigned contract and a blank check to a
web developer is evidence of the intent to develop the <cornerstoneresearchgroup.com> domain name in connetion
with a bona fide offering of goods
and services. Also, Complainant points
outs the language in the apparent contract that gives the web developer “45”
days to create the web page. Complainant
states that the commencement of this case is beyond the “45” days outlined in
the contract and the website associated with the disputed domain name still is
blank. The Panel finds that Respondent
lacks the requisite intent in developing the blank web page associated with the
disputed domain name to prove that Respondent has rights and legitimate interests in the
dispute domain name. See Household Int’l, Inc. v. Cyntom Enters., FA 95784 (Nat. Arb. Forum
Nov. 7, 2000) (holding that the respondent’s “vague and unsupported assertion
of ‘plans to sell household goods, supplies and appliances over the Internet’”
was insufficient to be considered proof of a legitimate business plan); see also Bloomberg L.P. v. SC Media Servs.
& Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2,
2004) (“Respondent is wholly appropriating Complainant’s mark and is not using
the <bloomberg.ro> domain name in connection with an active website. 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).”).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii)
I find
the issues on this element in favor of Complainant.
In its Complaint and Additional Submission, Complainant states that it e-mailed Respondent and offered to purchase the <cornerstoneresearchgroup.com> domain name for US $200. In response, Respondent offered to sell the disputed domain name in exchange for US $200,0000. Complainant contends that this amount is well in-excess of Respondent’s out-of-pocket costs. Furthermore, since Respondent has not used the <cornerstoneresearchgroup.com> domain name since its registration, the Panel finds that Respondent registered the disputed domain name primarily with the intent to sell it to Complainant or another person or entity. Based on this evidence, the Panel finds that Respondent registered and used the <cornerstoneresearchgroup.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that bad faith existed where the respondent offered the domain name for sale to the complainant for $125,000); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to the complainant amounts to a use of the domain name in bad faith).
The Panel also determines that
Respondent’s failure to use the <cornerstoneresearchgroup.com> domain name since its
registration in May 2007 constitutes bad faith registration and use in and of
itself pursuant to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v.
Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding
that the respondent’s failure to make active use of its domain
name in the three months after its registration indicated that the respondent
registered the disputed domain name in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat.
Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the
domain name or website that connects with the domain name, and that inactive
use of a domain name permits an inference of registration and use in bad
faith).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cornerstoneresearchgroup.com> domain
name be TRANSFERRED from Respondent to Complainant.
Timothy D. O’Leary, Panelist
Dated: January 12, 2009
National
Arbitration Forum
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page