Riveron Consulting, L.P. v.
Claim Number: FA1002001309793
Complainant is Riveron Consulting, L.P. (“Complainant”), represented by Thomas
A. Kulik, of Scheef & Stone, L.L.P.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <riveron.com>, registered with Fabulous.Com Pty Ltd.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 24, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 25, 2010.
On February 24, 2010, Fabulous.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <riveron.com> domain name is registered with Fabulous.Com Pty Ltd. and that the Respondent is the current registrant of the name. Fabulous.Com Pty Ltd. has verified that Respondent is bound by the Fabulous.Com Pty Ltd. 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 February 26, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 18, 2010 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 Response was received and determined to be complete on March 19, 2010, which is after the deadline for response of March 18, 2010. Therefore, Respondent’s Response is deemed deficient.
On March 23, 2010, the National Arbitration Forum received Complainant’s Additional Submission. Complainant’s Additional Submission complies with Supplemental Rule 7, and was timely.
On March 24, 2010, the National Arbitration Forum received Respondent’s Additional Submission in compliance with Supplemental Rule 7.
On March 29, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends as follows:
The Complainant contends that the <riveron.com> domain name is substantially and confusingly similar to the Complainant's RIVERON marks and the disputed domain name includes the entire RIVERON mark. The fact that the Respondent has added the generic top-level domain ("gTLD") ".com" is irrelevant in distinguishing a disputed domain name from a registered mark.
Respondent has no rights or legitimate interests in respect of the domain name <riveron.com> because the Respondent is not authorized by the Complainant to use Complainant's RIVERON marks and there is no evidence that the Respondent is known by the disputed domain name.
Respondent's use of the domain name, to point to a "parked" webpage that advertises and links to various sponsored listings is not a bona fide offering of goods or services, nor a legitimate noncommercial use, or fair use pursuant to Policy 4(c)(iii).
Respondent's use of Complainant's trademark in its entirety as a domain name, using an automatically generated "parked" page, generates search terms that, by design, correlates to the value of the trademark and may ultimately redirect potential customers of Complainant.
Respondent has also asserted at the top of the parked page "Riveron.com Riveron Resources and Information. This website is for sale!" The "parked" page also states "the domain riveron.com may be for sale by its owner!" In December 2009, the Complainant requested a domain appraisal of <riveron.com> from GoDaddy.com. The domain name registration was appraised at $1,682.00. Complainant offered this amount and the Respondent counter offered with $19,000.00. Complainant asserts that Respondent's $19,000.00 offer to transfer the disputed domain name clearly rests well beyond Respondent's out of pocket costs. Such offer to transfer the <riveron.com> domain name for an amount far in excess of reasonable costs supports findings of bad faith registration and use pursuant to Policy 4(b)(i).
Respondent's use of the <riveron.com> domain name essentially involves nothing other than directing confused Internet users, who are in search of a legitimate business, to Respondent's parked page. The Panel may infer that Respondent is profiting from such use through the collection of click-through and pop-up fees for each redirected Internet user, and that such use is likely to lead to confusion among Internet users as to Complainant's sponsorship of or affiliation with the resulting websites and supports findings of bad faith registration and use pursuant to Policy 4(b)(iv).
Respondent's <riveron.com> domain name is a disruption of Complainant's business and constitutes bad faith registration and use pursuant to Policy 4(b)(iii).
Respondent contends as follows:
The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. However, Complainant does not have exclusive rights to this mark and Respondent’s rights pre-date Complainant’s rights by several years.
The registration of <riveron.com> predates Complainant’s trademark registration by many years.
Even if <riveron.com> had been registered yesterday, a registrant could still have legitimate interests. “Riveron” is not an arbitrary or fanciful term. It is both a generic Spanish word and a Spanish surname. Using surnames for email is a legitimate business use of a domain name and was Respondent’s plan for the at-issue domain name.
A review of <alexa.com> for the popularity of < riveronconsulting.com> show that it has no rank. This means that it is not in the top 30 million sites in the world. None of the automatically generated ads on the <riveron.com> website have anything to do with Complainant’s consulting business.
When approached to sell the name, Respondent offered to sell it. This is entirely within Respondent’s rights since the use of the term by Respondent predates Complainant’s use and since the term is generic.
An appraisal by Godaddy is completely irrelevant and has no bearing on this case.
C. Additional Submissions
Complainant additional contends as follows:
Respondent submitted an untimely response to the arbitrator in contravention of the technical requirements of the ICANN Rules and NAF Supp. Rules. Complainant provides its Additional Written Statement to address fundamental flaws and conclusory statements in Respondent's response.
Registration of a domain name does not confer trademark rights to a domain name registrant. The domain name registrant must use the domain name as an identifier or distinguisher of goods or services in order to secure trademark rights in the domain name. Domain names used only to indicate an internet address will not garner any rights as a trademark. Where the domain name registrant later intends to use the domain name commercially, the domain name registrant still fails to garner trademark rights in the domain name without actual use of the domain name as a source identifier of goods or services. Furthermore, registration of a domain name does not confer the right to infringe on trademark rights. It is an unreasonable to assert that the act of acquiring a domain name gives the registrant the legal right to use the domain name as the registrant sees fit. Simple registration of the domain name does not trump federal trademark law, nor does it confer trademark rights on the registrant.
Complainant has, inter alia, a registered trademark to the term "RIVERON" - a valid and subsisting trademark registration that is not only presumed valid, but prima facie evidence that the registered mark is not a generic name. On these facts alone, Respondents arguments as to the alleged genericness of the Complainant's registered trademark are inadequate.
Respondent's arguments of alleged genericness also fail in light of Respondent's use of the domain name. Generally, where a respondent alleges that the registered trademark is generic, whether transfer should be ordered depends on the manner in which the allegedly generic domain name is used by the registrant. Where web users were more likely to look for information regarding the trademarked goods or services rather than the allegedly generic term, transfer was appropriate over a use directing individuals to material associated with the alleged generic term.
Contrary to Respondent's assertions, the high page ranking of the Complainant's website for the term "RIVERON" indicates high global link popularity and shows that the relevant marketplace associates the Complainant, and Complainant's services, with the registered trademark "RIVERON". Lastly, a recent review of the Respondent's parked page has uncovered reference to the category "Finance", with various subcategories, one of which is "Investments" that can direct consumers to other sites unaffiliated with Complainant. Expanding upon Complainant's assertions in the Amended Complaint, the parked pages under the domain name at issue now currently present sponsored links that appear directly competitive with Complainant's business in direct violation of Paragraph 4(c) of the ICANN Policy.
Respondent additionally contends as follows:
Registering a domain name does not confer a formal trademark but just because someone registers a trademark after someone has registered a domain name does not mean that the domain name is not the Complainant’s property. <riveron.com> predates Complainant’s company and company trademark
None of the content at <riveron.com> has anything to do with specialize consulting which is apparently what Riveron Consulting does. The main page of <riveron.com> has hundreds of links ranging from Dating to Electronics to Travel. The exhibits attached in the Complainant's response are either altered or produced by deliberately searching for "Finance" in the search box. Even if you search for Finance on the parked page for <riveron.com> all you get are results for stock trading and commercial banking links, neither of which are even close to being competitors of <riveronconsulting.com>, a highly specialized boutique consulting firm, according to the <riveronconsulting.com> website:
"Riveron is a unique financial consulting firm serving middle-market private equity funds, mezzanine and senior lenders, family offices, and companies growing through acquisitions. Our mission is to help clients maximize the value of both strategic and financial transactions through buy-side financial due diligence, sell-side services, and post-transaction special projects."
Complainant's assertion that the term Riveron is known more for the small consulting business than the term's generic Spanish meaning and surname is completely false, as shown by Google Adwords search data. In the month of Feb, Google controlled 65.5% of all internet searches (comScore, JP Morgan analyst report). Of those searches, "Riveron" was searched over 10,000 times per month. 8100 of these searches were for the generic term/surname alone. Over 2000 were for dozens of personal names ending in Riveron.
Only 210 searches were made for "Riveron Consulting". And several of those searches were me trying to figure out who was trying to hijack my domain name.
Complainant currently has trademark rights in the word mark RIVERON by virtue of its registration with the United States Patent and Trademark Office. Complainant thereby demonstrates rights in such mark no sooner than August 15, 2006.
The RIVERON mark is identical to the at-issue domain name <riveron.com>.
The at-issue domain name was registered prior to the Complainant acquiring trademark rights in RIVERON.
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.
The National Arbitration Forum, the dispute resolution provider in this matter, received the Response after the submission deadline and has determined that the Response is not in compliance with ICANN Rule 5. However the Panel may nevertheless choose whether or not to accept and consider it. See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding that the respondent’s failure to submit a hard copy of the response and its failure to include any evidence to support a finding in its favor placed the respondent in a de facto default posture, permitting the panel to draw all appropriate inferences stated in the complaint); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”). Since under the circumstances striking the Response would be an unduly harsh consequence of what appears to be a minor inadvertent procedural error on the part of Respondent, and since the Complainant has neither formally objected nor suggested any unfair prejudice to its position resulting from Respondent’s procedural transgression, the Panel will consider the Response as if it were timely.
A trademark registration with the USPTO is sufficient to establish rights in a mark for the purposes of Policy ¶4(a)(i). Complaint has such a registration for RIVERON. Therefore, Complainant demonstrates that it has adequate “rights” pursuant to Policy ¶ 4(a)(i) to proceed. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Respondent’s <riveron.com> domain name is identical to Complainant’s RIVERON mark. The disputed domain name contains Complainant’s entire mark, only adding the generic top-level domain (“gTLD”) “.com.” It is well settled that the addition of a gTLD is immaterial to a panel’s inquiry regarding Policy ¶4(a)(i) since all domain names are required to have a gTLD. See SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”).
Furthermore, Respondent admits that the at-issue domain name is identical to Complainant’s mark in his Response.
Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to paragraph 4(a)(ii) of the Policy. The threshold for such prima facie showing is low. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005). Once a prima facie case is established, the burden then shifts to Respondent who must demonstrate that it nevertheless has rights and legitimate interests in the at-issue domain name.
Complainant contends, and Respondent does not dispute, that Respondent is not known by the at-issue second level domain name, RIVERON, and further contends that Respondent is not authorized to use Complainant’s RIVERON mark. Normally, such undisputed assertions are sufficient to carry Complainant’s slight initial burden. In the instant case however, Complainant fails to demonstrate that it had any rights in the RIVERON mark at the time Respondent registered the disputed doain name.
Because the <riveron.com> domain name registration pre-dates Complainant’s trademark registration as well as Complainant’s first use of the RIVERON mark, under Policy 4(a)ii and as discussed below 4(a)iii, Complainant logically needs to show either that it had common law trademark rights in RIVERON at the time the disputed domain name was registered despite the first use date reflected on its USPTO registration, or show that Respondent’s rights and interests in <riveron.com>, although ripe at the time of registration, have since been vitiated. To prove the former Complainant must provide the Panel with competent evidence demonstrating common law trademark rights dating back to the time of the domain name’s registration. This it did not do. To prove the latter (that Respondent lost any rights it might have had), Complainant must at least suggest some circumstance which divested Respondent of its rights and interests in the domain name since such rights and interests are acquired at the time of registration, by the fact of registration, and are maintained by conduct consistent with the terms and conditions of the registration agreement. Without evidence of either Complainant’s trademark rights at the time of the at-issue domain name’s registration, or a showing that Respondent somehow lost any rights and interests in the domain name, there is no foundation from which to conclude that Respondent is, or was, legally bound to license the mark from the Respondent. If Respondent had no duty to license the domain name before registering it, then the fact that there was no license from Complainant and the fact that Respondent did not commonly go by the domain name, are each ultimately immaterial regarding paragraph 4(a)ii.
Complainant presents some colorable evidence that might tend to show that the rights granted to Respondent by virtue of the domain name registration agreement were lost through Respondent’s subsequent bad faith conduct in violation of such agreement. Respondent attempts to support its having rights and interests in the domain name by urging that circumstances relevant to paragraph 4(c)i are operative. However, because the Panel finds that Complainant fails to meet its burden of proof concerning bad faith registration and use under Policy ¶4(a)(iii) as discussed below, a determination as to whether Respondent has established rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)ii is unnecessary.
The undisputed facts in this matter foreclose a finding of bad faith registration and use under Policy 4(a)iii. While Complainant currently has trademark rights in the at-issue mark by virtue of its RIVERON trademark registration, such rights do not magically relate back to the time that Respondent first registered the <riveron.com> domain name, a time well prior to Complainant’s first use of its mark.
Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, http://www.wipo.int/amc/en/domains/search/overview/index.html#31 (April 7, 2009).
There is no evidence within the record which tends to show that Complainant had trademark rights in RIVERON at the time Respondent first registered <riveron.com>. As noted above, it is axiomatic that if a complainant lacks trademark rights at the time the respondent registered the disputed domain name, there can be no finding of bad faith registration. Numerous decisions support this very logical proposition. For example see, John Ode dba ODE and ODE - Optimum Digital Enterprises v. Intership Limited D2001-0074, (WIPO May 1, 2001) ; Digital Vision, Ltd. v. Advanced Chemill Systems D2001-0827, (WIPO September 23, 2001); PrintForBusiness B.V v. LBS Horticulture D2001-1182, (WIPO December 21, 2001); Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001); Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000); San Diego Hydroponics & Organics v. Innovative Growing Solutions, Inc., D2009-1545 (WIPO March 3, 2010).
There may be exceptions to the rule, but such exceptions require that “it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights.” See supra, WIPO Overview. Here there is no evidence that supports a finding that at the time he registered <riveron.com> Respondent believed that Complainant would subsequently acquire rights in RIVERON. Nor is there evidence suggesting that Respondent hoped to take advantage of any other party’s future trademark rights when he registered the disputed domain name. Therefore, the Panel concludes that the at-issue domain name, <riveron.com>, was not registered and used in bad faith. The Complaint thus fails under Policy ¶4(a)iii.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Paul M. DeCicco, Panelist
Dated: April 12, 2010
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