DECISION

 

Carl J. Reid d/b/a Pure Gold v. Peter Chao

Claim Number: FA0304000154587

 

PARTIES

Complainant is Carl J. Reid d/b/a Pure Gold, Pinehurst, NC (“Complainant”) represented by Edward H. Green, of Coats & Bennett PLLC. Respondent is Peter Chao, Santa Monica, CA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <puregold.com>, registered with Network Solutions, Inc.

 

PANEL

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.

 

Judge Irving H. Perluss (Retired) is the Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 15, 2003; the Forum received a hard copy of the Complaint on April 17, 2003.

 

On April 17, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <puregold.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 April 21, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 12, 2003 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@puregold.com by e-mail.

 

A timely Response was received and determined to be complete on May 12, 2003.

 

An Additional Submission by Complainant was received on May 19, 2003, and was timely.

 

On May 19, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

1.                  The disputed domain name <puregold.com> is virtually identical and confusingly similar to Complainant’s mark PURE GOLD®.  The only difference is the absence of a space between the words “pure” and “gold.”

 

2.                  On information and belief, Respondent has no rights or legitimate interests in respect of the disputed domain name <puregold.com>.  Respondent has not used the domain name in connection with a bona fide offering of goods or services; is not commonly known by the domain name; and is not making a legitimate noncommercial or fair use of the domain name.  Respondent is not making use of the domain name at all, other than as a commodity to sell to legitimate trademark owners at an exorbitant price.  The domain name does not resolve to any functional website.  On information and belief, Respondent has maintained the <puregold.com> domain name for nearly five years, yet has never published any website under the domain name.

 

3.                  The disputed domain name <puregold.com> was registered and/or is being used in bad faith solely for the purpose of selling the domain name registration to Complainant, who is the owner of the registered trademark PURE GOLD®, for valuable consideration for $30,000, which is far in excess of Respondent’s conceivable out-of-pocket costs directly related to the domain name.

 

B. Respondent

1.                  Respondent concedes that Complainant’s mark and the disputed domain name are substantially similar, but contends that the words “pure” and “gold” are generic.  There is no clear association of the term “puregold” to the Complainant’s business interest of Gentlemen’s Clubs that creates a position above any of the other registered trademark holders.  There are numerous businesses throughout the United States that operate under the name Pure Gold or Puregold that are not affiliated with the Complainant.  A search using <Google.com> (on 5/7/03) returned 1.4 million results for “pure gold” and 2,400 results for “puregold.”  There are seventeen currently live registered trademark holders of “Pure Gold” or Puregold.”

 

2.                  Respondent is the co-founder and co-owner of two businesses based in California.  Both businesses are Electronics (industrial and consumer) manufacturing and distribution related.  Respondent’s original purchase of the disputed domain name was intended for online distribution of consumer electronics products as related to one of the entities.  The first company was incorporated prior to 1991.  Operating under the name “Varad,” using <Varad.com> as its website, there was discussion about rebranding the company as “PureGold.”  Respondent has within the past 18 months formed a new entity for which the disputed domain name may be well suited.  Respondent is the owner of five domain names at this time and has reserved domains that will suit future businesses.  Respondent asserts that his history of legitimate entrepreneurial activity and the absence of any effort to actively market the domain names he controls reflect a pattern of legitimate use of domain names for commercial activity.  Respondent has not created a business vehicle that currently uses the disputed domain name but he reserves the right to do so in the future.

 

3.                  Respondent registered the disputed domain name prior to the Complainant’s trademark filing.  Respondent had never heard of Complainant’s business, which is confined to the East Coast, until contacted by the Complainant’s representative.  Respondent has never solicited Complainant nor has he solicited Complainant’s competitors or any other entity for the sale of the disputed domain name.  Respondent has no intentions of using the disputed domain name in connection with Gentlemen’s Clubs nor would he sell the domain name to a competitor of Complainant or use it in a manner harmful to Complainant.  Complainant has omitted in its claim of bad faith registration with intent to sell the disputed domain name that Complainant has initiated all contacts between Respondent and Complainant.

 

4.                  The disputed domain name was not registered in bad faith for the purpose of selling it to Complainant.

 

5.                  Complainant claims that the disputed domain name is being maintained solely for sale to Complainant.  It made an unsolicited offer of $2,500 for the domain name.  Moreover, Complainant had responded to Respondent’s counteroffer of $30,000 with a second offer of $4,000.  The omission of this information in the filing of the Complaint constitutes the use of the UDRP policy in bad faith.

 

6.                  Complainant claims that the disputed domain name is confusingly similar to its trademark although Respondent provided Complainant with information about the generic nature of the term “Pure Gold” and a printout from USPTO identifying the plethora of Pure Gold trademarks indicating that many people would have a claim on <puregold.com> if any trademarker of a generic term were allowed to lay exclusive claim to the disputed domain name.  Using the UDRP policy to secure through arbitration what they failed to secure through attempted purchase and knowing their claim is impaired by the generic terms involved constitutes the use of the UDRP to hijack the <puregold.com> domain.

 

C.        Additional Submission by Complainant

1.                  The disputed domain name <puregold.com> is virtually identical to Complainant’s mark.  The existence of other registrations of the mark, relating to different goods and services, is irrelevant.

 

2.                  Complainant’s mark is not generic as a matter of law.  The mark would be generic only if it related to the sale of items made entirely of the metal gold.  A generic term is one that refers to the genus of which the particular product is a species.  Exotic dancing is obviously not one species in the genus of objects made from the element Au.  Thus, the term “Pure Gold” as applied to exotic dancing is arbitrary, and as such is inherently distinctive, and afforded the strongest protection under trademark law.

 

3.                  Respondent admits that in the many years since he registered the disputed domain name, he has never operated any website using the domain name in association with any legitimate business.  He sets forth an unsubstantiated claim to a one-time intent to possibly use the domain name in association with a re-branded business – a use that never occurred.  Respondent then alleges following many years of no use, he has recently formed a business entity where the domain name “may be well suited.”  However, in the year and half that this new entity has allegedly existed, Respondent has failed to utilize the domain name other than to offer it for sale for $30,000.

 

4.                  Respondent admits making two statements that Complainant asserts prove bad faith registration of the mark:  (1) He offered it for sale to Complainant for $30,000, and (2) He threatened to sell the domain name to another trademark owner for $1 if Complainant pursued his legal rights in the mark.  The price is exorbitant by any reasonable standard.  Furthermore, despite Respondent’s attempt to couch it as a “defensive response,” the statement that he would sell the domain name to another trademark owner for $1 in the face of legal action is difficult to characterize as anything other than a threat calculated to dissuade Complainant from pursuing his legal rights.

 

5.                  Even if credence were given to Respondent’s unsubstantiated allegation that he originally obtained the domain name for use in association with a business, many years of no such actual use, coupled with an offer to sell the domain name for $30,000 (or $1 if legal action is pursued) evidences bad faith in the ongoing use of the domain name, regardless of Respondent’s motivation in initially registering it.  Respondent’s manifest primary interest in maintaining the domain name is to sell it to an owner of a “Pure Gold” trademark for an exorbitant sum, whether or not he knew of Complainant’s particular business at the time he initially registered the domain name.  It is precisely this speculation in domain names that are identical to registered trademarks that ICANN Policy ¶ 4(b)(i) is designed to thwart.

 

6.                  Respondent’s allegation of Reverse Domain Name Hijacking is without merit.  The relative timing of Complainant’s trademark registration filing and Respondent’s registration of the domain name is irrelevant.  Whether or not a trademark filing predates a domain name registration is simply not an element of a UDRP dispute.  Complainant’s initiation of negotiations to purchase the domain name at a reasonable price evidences nothing more than a good faith attempt at a mutually beneficial business transaction for an unused domain name, avoiding the expense, delay, and hostility of initiating legal action.

 

FINDINGS AND DETERMINATIONS

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.

 

This matter calls for summary disposition.

 

Respondent registered the disputed domain name with a Registrar, Network Solutions, Inc., on May 2, 1997.  Complainant filed its application with the United States Patent and Trademark Office for the mark “Pure Gold” on November 20, 1997, and the registration date for the mark is November 16, 1999.  While the Trademark Electronics Search System indicates a first use of the mark in commerce on November 11, 1993, there is no substantiation of this indication, nor is there any evidence presented to the Panel that would establish that Complainant had common law rights in its mark prior to the registration of the disputed domain name by Respondent.

 

Thus, it may be assumed arguendo that Complainant’s mark and the disputed domain name are identical and confusingly similar (which clearly they are).[1]

 

Further, it may be assumed arguendo that Respondent does not have a legitimate interest or rights in the disputed domain name by virtue of its failure to use the name over an extended period.[2]

 

Finally, it even may be assumed arguendo that Respondent is using the disputed domain name in bad faith by holding it passively,[3] and by offering the name for sale.[4]

 

Nevertheless, the essential prerequisite which Complainant has not demonstrated is bad faith registration.  The disputed domain name was registered on May 2, 1997, while the application for Complainant’s mark was filed on November 20, 1997, and the actual registration date of the mark with the United States Patent and Trademark Office was November 16, 1999.

 

Respondent asserts that it did not know of Complainant’s existence at the time it registered the disputed domain name and, obviously, it cannot be charged with constructive knowledge of Complainant’s mark at the time of registration.

 

The Panel finds and determines, accordingly, that Respondent’s registration of the disputed domain name prior to Complainant’s application for a mark renders Complainant’s reliance on its mark irrelevant and that Complainant has not established bad faith registration as required by Policy ¶ 4(a)(iii).  See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (stating that “We are of the unanimous view that the trademark must predate the domain name”).

 

The Panel declines to find that there was reverse domain name hijacking because it believes that Complainant acted in good faith, albeit erroneously.

 

DECISION

The Complainant having failed to establish all three elements required under ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

 

Judge Irving H. Perluss (Retired), Panelist
Dated: May 29, 2003

 

 

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