eWomenNetwork, Inc. v. Terra Serve c/o Domain Administrator
Claim Number: FA1506001622849
Complainant is eWomenNetwork, Inc. (“Complainant”), represented by Jason R. Fulmer of Gardere Wynne Sewell LLP, Texas, USA. Respondent is Domain Administrator / Terra Serve (“Respondent”), represented by Ari Goldberger of ESQwire.com, P.C., New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ewomen.com>, registered with Rebel.com Corp.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Honorable Richard DiSalle, (Ret.) , Chair of the three-member Panel, with Honorable Karl V. Fink, (Ret.) and The Honourable Neil Anthony Brown QC as Panelists.
Complainant submitted a Complaint to the Forum electronically on June 4, 2015; the Forum received payment on June 4, 2015.
On June 10, 2015, Rebel.com Corp. confirmed by e-mail to the Forum that the <ewomen.com> domain name is registered with Rebel.com Corp. and that Respondent is the current registrant of the name. Rebel.com Corp. has verified that Respondent is bound by the Rebel.com Corp. 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 June 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 2015 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@ewomen.com. Also on June 12, 2015, 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 July 2, 2015.
Complainant submitted a timely Additional Submission, which was received on July 7, 2015.
On July 17, 2015, pursuant to Respondent's request to have the dispute decided by a three-member Panel, the Forum appointed Honorable Richard DiSalle, (Ret.) , Chair of the three-member Panel, with Honorable Karl V. Fink, (Ret.) and The Honourable Neil Anthony Brown QC as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant has registered the EWOMEN mark in stylized form with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,257,345, first use in commerce Dec. 30, 2000, filed Apr. 24, 2012, registered Dec. 11, 2012)( “the EWOMEN mark”).
2. Complainant also asserts unregistered common law rights in the EWOMEN stylized mark dating back to at least December 30, 2000.
3. The mark is used in connection with providing marketing services for the purpose of promoting the goods and services of women-owned businesses via the Internet.
4. The <ewomen.com> domain name is identical or confusingly similar to the EWOMEN stylized trademark. Complainant notes in that regard that the domain name contains the entire mark and differs only by the addition of the gTLD “.com” top level domain.
5. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor is Respondent a licensee of Complainant. Further, the domain name is being used to display unrelated pay-per-click hyperlinks as well as to introduce viruses and other malware. Respondent’s use also shows that it is engaging in a general attempt to divert Internet users who were searching for Complainant.
6. Respondent has engaged in bad faith registration and use of the disputed domain name. Respondent has attempted to sell the disputed domain name, in violation of Policy ¶ 4(b)(i). Respondent is disrupting Complainant’s business by diverting Internet users away who were originally searching for Complainant’s website, which constitutes bad faith enumerated by Policy ¶ 4(b)(iii). Also, Respondent had actual and/or constructive knowledge of Complainant’s trademark rights.
B. Respondent
Respondent made the following contentions.
1. Respondent does not dispute Complainant’s registered rights in the EWOMEN design mark.
2. Respondent, however, contends that its rights in the <ewomen.com> domain name predate Complainant’s rights in the EWOMEN design mark as Complainant had no relevant rights in the EWOMEN mark when Respondent registered the disputed domain name in May 2009 as the filing date for Complainant’s EWOMEN mark dates back to 2012.
3. The <ewomen.com> domain name is not confusingly similar or identical to the EWOMEN mark because the mark appears in stylized form.
4. Respondent has rights or legitimate interests in the disputed domain name because Respondent is making a bona fide offering of services as a generic domain name reseller.
5. Respondent also contends that the terms of the disputed domain name are generic and/or descriptive.
6. Respondent has not engaged in bad faith registration or use of the domain name as it did not have knowledge of any relevant rights in the EWOMEN mark at the time the domain name was registered, as there was no trademark registration for the mark which existed at that time.
7. Further, Complainant has failed to provide sufficient evidence of Respondent’s bad faith registration and use of the generic <ewomen.com> domain name.
C. Additional Submissions
Complainant made the following contentions.
1. In addition to the registered EWOMEN mark referred to above, Complainant
holds a trademark registration with the USPTO for the EWOMEN NETWORK.COM mark (Reg. No. 3,081,154, registered Apr. 18, 2006), ( “the EWOMEN NETWORK.COM mark”) which further serves to demonstrate its rights per Policy ¶ 4(a)(i).
2. Respondent has engaged in bad faith by offering the <ewomen.com> domain name for sale to the public. Respondent has also been the named respondent in a number of previous UDRP proceedings, evincing a pattern of bad faith registrations per Policy ¶ 4(b)(ii).
3. Additionally, Complainant reasserts that Respondent had knowledge of Complainant’s rights which are infringed by the <ewomen.com> domain name.
1. Complainant is a United States company engaged in the provision of marketing services for promoting the goods and services of women-owned businesses via the Internet.
2. Complainant has trademark rights in the EWOMEN mark in stylized form registered by Complainant with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,257,345, first use in commerce Dec. 30, 2000, filed Apr. 24, 2012, registered Dec. 11, 2012)( “the EWOMEN mark”).
3. The mark is used by Complainant in connection with providing the marketing services referred to above.
4. The disputed domain name was first registered on April 18,1997 and was acquired by Respondent in May 2009 after the original registration had lapsed
5. The domain name has been used by Respondent to display pay-per-click hyperlinks to subjects relating to women, such as “women” and “ older women” and to other links of a more generalized nature, such as “school” and “ career”.
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.
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. In its Complaint, Complainant put it that it had trademark rights to several trademarks for EWOMEN, EWOMENNETWORK and EWOMENNETWORD.COM and “derivatives”. However, the only trademark of which Complainant gave evidence and the trademark to which it addressed its arguments was EWOMEN. In that regard, Complainant submitted that it registered the EWOMEN design mark in “stylized” form with the USPTO (e.g., Reg. No. 4,257,345, first use in commerce Dec. 30, 2000, filed Apr. 24, 2012, registered Dec. 11, 2012)( “the EWOMEN mark”). Complainant has adduced evidence to that effect which the Panel accepts. The mark is registered in connection with providing marketing services for the purpose of promoting the goods and services of women owned businesses via the Internet. The Panel finds that registration of a trademark with the USPTO is sufficient to establish rights in the trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). The Panel also notes that the relevant date of acquiring rights in a registered mark is the day the trademark application was filed, in the present case April 24, 2012. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Therefore, the Panel finds that Complainant has registered trademark rights in the EWOMEN mark that date back to April 24, 2012. It should also be noted that this date is after the date on which the domain name was first registered, namely April 18, 1997 and after it was bought by Respondent in May 2009, by which time the original registration had lapsed.
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s EWOMEN mark. Complainant argues that the <ewomen.com> domain name is identical or confusingly similar to the EWOMEN mark. Complainant notes that the domain name contains the entire mark and differs only by the addition of the gTLD “.com.” Prior UDRP Panels have been consistent in ruling that a generic top level domain, such as “.com,” does not negate a finding that a domain name is identical or confusingly similar to a trademark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 of identical confusing similarity (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). That of course does not mean automatically that the domain name is identical or confusingly similar to the trademark in question, although it often is. It still remains for the Panel to do what the Policy in effect instructs it to do, namely make a comparison between the domain name and the trademark. In the present case it is clear when that comparison is made they are identical. The Panel therefore finds that the <ewomen.com> domain name is identical to the EWOMEN mark pursuant to the Policy ¶ 4(a)(i) analysis.
Before leaving this issue, several other contentions that arose in the proceeding should be noted. The first is the fact that the EWOMEN mark relied on by Complainant is described by the USPTO in its registration as follows:
The second aspect that arose is, that as well as its registered trademark, Complainant also submitted that it has unregistered common law rights in the “eWomen” design mark dating back to at least December 30, 2000, the mark’s alleged first use in commerce. Complainant did not specifically argue in its original Complaint that it has common law trademark rights to EWOMEN, although it correctly submitted that:
“As this Panel is aware, it is not necessary for a complainant to
possess a registered trademark in order to prevail under the Policy. In fact, numerous Panels have recognized that a showing of common law trademark rights is sufficient. See e.g., Southern Bank and Trust Co. v. Pogrebetsky, FA0002000093673 (NAF,March 15, 2003) (Complainant’s common law rights in its trademark constituted valuable and legally protectable rights);Winterson v. Hogarth, Case No. D2000-0235 (WIPO, May 23, 2000) (the Policy does not require a trademark registration in order for Complainant to claim that an identical or confusingly similar domain name infringes on Complainant’s trademark
rights); Roberts v. Boyd, Case No. D2000-0210 (WIPO, May 30, 2000) (it is sufficient that the Complainant satisfies the Panel that she has rights in common law).” Indeed, it could be said that this principle is now well-established. Nor did Complainant submit in its supplementary submission that it has common law rights to the EWOMEN mark and its submission concentrated not on that notion but on its “federally registered trademark.” In any event, Complainant’s problem is not whether there is such a principle of the adequacy of common law trademark rights, which there clearly is, but whether it has been established by the evidence in the present case. To acquire common law rights in a mark for purposes of a UDRP proceeding, Complainant must show that the trademark at issue has acquired secondary meaning. Relevant evidence of secondary meaning includes “length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011). Here, Complainant has provided a number of screenshots of its website, to which its <ewomennetwork.com> domain name resolves. See Compl., at Attached Ex. B. Complainant asserts that this is the website from which it operates its business under the “eWomen” trademark. This extensive evidence of the valuable work of Complainant in providing business networking opportunities for women, however, does not show that Complainant has used the name or brand “eWomen” at all; rather the evidence shows extensive use of quite different expressions, namely EWOMEN NETWORK and other associated businesses that always include the word “network”, such as “eWNRadio Network”, “eWomen Network Success Institute” and “eWomen Publishing Network Foundation”, where Complainant seems to have gone out of its way to show that it always uses “Network” as part of its nomenclature and not the generic word “eWomen.” There being no evidence of secondary meaning and little if any evidence of the use of the name or expression “Ewomen” at all on Complainant’s website, the Panel finds that Complainant has not established that it has or had a common law trademark for EWOMEN.
The third aspect is the “new“ trademark relied on by Complainant. In its
supplementary submission, Complainant made the submission that it also has a registered trademark for EWOMEN NETWORK.COM mark (Reg. No. 3,081,154, registered Apr. 18, 2006), (“the EWOMEN NETWORK.COM mark”) which further serves to demonstrate its rights per Policy ¶ 4(a)(i). There is no doubt that Complainant has trademark rights to EWOMEN NETWORK.COM. But the question remains whether the domain name is identical or confusingly similar to that trademark. Comparing the two, the domain name is clearly not identical to the trademark and it is not confusingly similar to the trademark, as the objective bystander would not assume or think that a domain name invoking women in general was referring to the more limited ambit of an “e” or electronic network of or for women.
Finally, Respondent contends that the <ewomen.com> domain name is comprised of common and generic/descriptive terms and as such cannot be found to be identical/confusingly similar to Complainant’s mark. The Panel finds that such a determination is not necessary or relevant under Policy ¶ 4(a)(i) as the first element of the Policy under Policy ¶ 4(a)(i) considers only whether Complainant has rights in a marks and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Nevertheless, Complainant has established that it has a registered trademark, namely EWOMEN and that the domain name, <ewomen.com>, is identical to that trademark.
Complainant has thus made out the first of the three elements that it must establish.
Respondent has presented a detailed case, supported by UDRP decisions cited in the submission, to that effect that it registered a domain name essentially generic in nature and used it only for promotion of goods and services that came within the meaning of the domain name, that it did not engage in any targeting of Complainant or its trademark and that it otherwise used the domain name for legitimate purposes. In particular, Respondent submits that its website contains ”links for items of interest to or associated with the key word “women…””, such as training, health insurance, working from home and other generalized services. On the other hand, Complainant submitted and also supported its submission with references to UDRP decisions, to the effect that the domain name has in fact been used for malware and “phishing”, “running third-party advertisements and affiliate advertisements on its site” from which it earns “click-through” fees and diverting Complainant’s customers away from Complainant’s site. In its supplementary submission, Complainant demonstrated that Respondent’s website had carried specific references to “eWomens Network”, although this was in the period of two years 2006-2008, before Respondent had acquired the domain name.
The Panel finds it difficult to reach a conclusion on this issue because of the varied nature of the links on the website and whether they show that the website was being used within the generic meaning of the domain name. Accordingly, the Panel does not make a specific finding on this element of the Policy. But in any event, as will be seen, the Panel is able to make a clear finding in this proceeding on the basis of third element, namely bad faith, to which the Panel will now turn.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Complainant relies on several grounds to show bad faith registration and use of the domain name. The Panel has given careful consideration to all of those grounds and the submissions and evidence said to be in their support. The Panel readily acknowledges that they raise some serious questions. In particular, there are the submissions that Respondent has displayed bad faith under Policy ¶ 4(b)(ii) by engaging in a pattern of bad faith registrations, that Respondent’s use of the domain name is diverting Internet users away who were originally seeking Complainant’s website, that Respondent has attempted to profit in bad faith from the confusing similarity associated with the <ewomen.com> domain name and Complainant’s EWOMEN mark and that Respondent must have had constructive and/or actual notice of Complainant's rights in the “eWomen” design mark prior to registration of the domain name because of Complainant's widespread use of the mark and its trademark registrations with the USPTO.
However, Respondent makes some cogent arguments to the effect that it did not and, in effect, could not have registered the domain name in bad faith because it acquired the domain name before Complainant registered its EWOMEN trademark. It is here that the major problem with Complainant’s case arises, which like other aspects of this jurisdiction, comes about because of the terms of the UDRP itself and the fact that panels are bound by those terms and the proof they require. In that regard it is clear and has been stated many times that to succeed in the summary proceedings provided by the UDRP a complainant trademark owner must show that the domain name was registered in bad faith and used in bad faith. Respondent argues that it did not register the domain name in bad faith because it could not have had any animus directed at a trademark that had not been registered or filed for. The substance of Respondent’s case on this issue is put in the following way in its summary of argument: “Moreover, Complainant did not file its trademark until April, 2012 and did not receive its trademark until December, 2012 – over three (3) years after Respondent purchased the Disputed Domain.” Respondent verified those matters in its Attached Ex. 1 (declaration of Kurt Richter affirming the May 2009 registration). It will be recalled that the domain name was actually registered in 1997 and that Respondent bought it in 2009 after the registration had expired. Neither party gave in evidence the precise date when Respondent acquired the domain name, but it seems to be common ground that it was in May 2009. What is also clear beyond doubt is that three years later Complainant applied for its trademark for EWOMEN on April 24, 2012 and that it was registered on December 11, 2012.
Past panels have declined to find bad faith where, as in the present case, the respondent has shown that its rights in the domain name at issue predate the trademark rights of the complainant. See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant company did not exist at the time of registration). The Panel therefore finds on the evidence that Respondent’s rights in the <ewomen.com> domain name predate Complainant’s rights in the EWOMEN mark and declines to find bad faith registration of the domain name.
The Panel notes that it makes no judgment on whether, at any time after the registration of the domain name, Respondent engaged in bad faith use.
Nor is it necessary to make a specific ruling on Respondent’s further argument under this heading, namely that as EWOMEN is clearly a trademark made up of an essentially generic expression, it was entitled to register the domain name and did so in good faith.
LACHES
Respondent argues that Complainant was aware of Respondent and the <ewomen.com> domain name for at least six (6) years and failed to initiate an action under the UDRP. Respondent therefore maintains that the Complaint is barred by the doctrine of laches. Complainant argues that laches is inappropriate in UDRP proceedings and other opinions have been expressed that support Complainant’s view. Still other opinions have been expressed to the effect that delay in instituting proceedings may be taken into account as are all other facts established by evidence. See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”); see also Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defense in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”).
The
issue may be somewhat academic in the present case, as Complainant has not
succeeded on the merits. Accordingly, the Panel feels that it is not necessary
to say any more than to adopt the observations of the three person panel in
the recent decision in E-Renter USA Ltd. v. Domain Hostmaster, Customer lD.
55391430909834, Whols Privacy Services Pty. Ltd. / Domain Administrator,
Vertical Axis lnc, D2015-0784 (WIPO July 10, 2015), as the circumstances
were similar to those in the present case. The panel said:
"The
Respondent, in its Response also raises the question of laches. The Panel notes
that the Domain Name has been registered for 12 years and for 11 of those years
the Complainant has been an active business. This Panel's view is that delay in
filing a complaint is not an automatic bar to a complaint, but nor can it be
ignored, for all the facts must be taken into account in all UDRP proceedings
and a decision made in the light of all the circumstances of the individual case.
ln the present case, the Panel has found that the Respondent has not registered
the Domain Name in bad faith and the Complainant therefore cannot succeed on
the merits. ln these circumstances it is not necessary to make a finding as to
whether the Complainant is barred from commencing or succeeding in the proceeding
under the ground of Laches.".
REVERSE DOMAIN NAME HIJACKING
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this proceeding. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <ewomen.com> domain name, of its rights to use the disputed domain name. To support its claim for reverse domain name hijacking, Respondent claims that Complainant must have known about Respondent’s rights because of the generic nature of the terms used in the domain name. Respondent also argues that its rights in the disputed domain name predate Complainant’s trademark rights, and therefore Complainant must have known about Respondent’s rights in the domain name. The way a panel should approach the issue of reverse domain name hijacking has been commented on in numerous decisions, such as NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).
The panel notes in particular the requirement that as well as the lack of merit in a claim, there must also be evidence of harassment or some ill-motivated conduct directed to the respondent, before it can be found that a finding of reverse domain name hijacking is justified.
The Panel is of the view that the present case does not fall into that category but into the category of cases where the dominant motive of the complainant is not to harass the Respondent but to defend its trademark by legitimate means. That is essentially what Complainant has done and accordingly in all the circumstances the Panel finds that it s not appropriate to make a finding of reverse domain name hijacking.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <ewomen.com> domain name REMAIN WITH Respondent.
Honorable Richard DiSalle, (Ret.) , Chair of the three-member Panel, with Honorable Karl V. Fink, (Ret.) and The Honourable Neil Anthony Brown QC.,
Panelists
Dated: July 27, 2015
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