The Landmark Group v. DigiMedia.com, L.P.
Claim Number: FA0406000285459
PARTIES
Complainant
is The Landmark Group
(“Complainant”), represented by John
Schroeder, 326 First St., Suite 39,
Annapolis, MD 21403. Respondent
is DigiMedia.com, L.P. (“Respondent”),
represented by Ari Goldberger, of ESQwire.com Law Firm, 35
Cameo Drive, Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <landmarks.com>,
registered with Tucows Inc.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict in serving as Panelists in
this proceeding.
David
H. Bernstein, Diane Cabell and Hugues G. Richard as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 10, 2004; the Forum received a hard copy of the
Complaint on June 15, 2004.
On
June 14, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain
name <landmarks.com> is
registered with Tucows Inc. and that Respondent is the current registrant of
the name. Tucows Inc. has verified that
Respondent is bound by the Tucows 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
June 17, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 8,
2004 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@landmarks.com by e-mail.
A
timely Response was received and determined to be complete on July 7, 2004.
On July 19, 2004, pursuant to Respondent’s request to
have the dispute decided by a three-member
Panel, the Forum appointed David H.
Bernstein, Diane Cabell and Hugues G. Richard as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to
Complainant. Respondent requests a
finding of Reverse Domain Name Hijacking.
PARTIES’ CONTENTIONS
Complainant
filed this proceeding on June 10, 2004 with the National Arbitration
Forum. As grounds for the dispute,
Complainant contends that Respondent’s domain name, <landmarks.com>, is identical to Complainant’s corporate name
and trademark of LANDMARKS, which has been in continuous use since 1990. Complainant further contends that Respondent
has no legitimate interest in the domain name and has never developed any bona
fide product or service in connection with the domain name <landmarks.com>.
Further, Complainant contends that Respondent is not known by the name <landmarks.com> and simply
registered the name with the intent to resell or lease it for profit.
In
its response, Respondent contends that the word “landmarks” is a generic and
descriptive term that is used extensively by third parties. Further, Respondent alleges that it has a
legitimate interest in the domain name <landmarks.com>. As
part of its business strategy, Respondent registers generic domain names
such as <landmarks.com> and
provides advertising related to the generic nature of each domain name.
Respondent receives revenue through pay-per-click advertising of these
links. In addition, Respondent argues
that it did not register the domain name in bad faith because it had never
heard of Complainant’s trademark LANDMARKS when it registered the domain name
in 1998. Finally, Respondent alleges
that Complainant is attempting to take this name through reverse domain name
hijacking because Complainant knew or should have known at the time it filed
the Complaint that it could not prove that the domain name <landmarks.com> was registered in bad faith.
FINDINGS
1. Complainant, The Landmark Group, specializes in
the production of magazines, pamphlets, DVDs and other publications for the
tourism industry.
2. One of the company’s publications is entitled
“Landmarks.”
3. Complainant registered the LANDMARKS trademark
and service mark with the United States Patent and Trademark Office in July
2003, claiming first use back to 1990.
4. Respondent, DigiMedia.com, L.P., registered the
domain name <landmarks.com> in 1998.
5. As part of its business model, Respondent
registers, owns and operates a number of websites based on dictionary words
such as <chairs.com>, <pants.com>, <decorations.com>,
<dress.com>, <cook.com>, <trips.com> and
<webdesign.com>.
6. Each of Respondent’s websites provides
advertising related to the generic nature of each site’s name and Respondent
receives revenue through pay-per-click advertising of these links.
7. The website at <landmarks.com> presents what
Respondent characterizes as advertising relating to various landmarks and
travel destinations. The alleged
advertising is minimal—so much so that the page looks like a generic
placeholder page—but nonetheless does include a link to at least one well-known
landmark, the Empire State Building.
8. Respondent did not attempt to sell or
lease the domain name, <landmarks.com>,
to Complainant.
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.
The domain name <landmarks.com> is identical to the trademark LANDMARKS in
which Complainant has rights. Complainant registered the LANDMARKS trademark
with the United States Patent and Trademark Office. Federal registration of a trademark is prima facie evidence of
its validity. Eauto, LLC v. Triple
S. Auto Parts, D2000-0047 (WIPO Mar. 24, 2000).
Respondent nevertheless argues that
Complainant’s registration should be disregarded because Complainant applied
for this registration after the registration of the domain name, and thus
Complainant lacked trademark rights predating the date of the domain name
registration. That argument is without
merit. First, Complainant has alleged
common law trademark rights back to 1990, as reflected in Complainant’s
trademark registration. Respondent has
submitted no facts suggesting that Complainant did not have such trademark
rights, and its legal arguments that the mark lacks secondary meaning are
insufficient to overcome the presumption of validity. Elec. Commerce Media v. Taos Mountain, FA 95344 (Nat. Arb.
Forum Oct. 1, 2000). Thus, Complainant
does appear to have had trademark rights in the LANDMARKS mark at the time
Respondent registered the domain name.
In any event, the issue under the first
factor is limited to whether Complainant has trademark rights as of the time of
the filing of the Complaint. See
generally HQ Holdings, LLC v. EquiCorp, Inc., FA 256402 (Nat. Arb. Forum
June 15, 2004) (Kyle, concurring). It
may be very relevant to the third factor, and indeed dispositive of the
challenge, if Complainant had no trademark rights at the time of the domain
name registration, as the registration cannot, therefore, have been in bad
faith vis-à-vis Complainant. See
E-Duction, Inc. v. Zuccarini, D2000-1369 (WIPO Feb. 5, 2001); see also
Intermap Techns. Corp. v. Salvage Elec. Inc., FA 203130 (Nat. Arb. Forum
Dec. 14, 2003). However, under the
first factor—which is a kind of threshhold factor designed to determine whether
Complainant has standing—the issue is only whether Complainant has trademark
rights today and, if so, whether the domain name is identical or confusingly
similar to that mark.
Complainant has failed to sustain its
burden of proving that Respondent has no legitimate interest in the domain name
<landmarks.com>.
Respondent alleges that its business
model is the registration of large numbers of dictionary words commonly
searched by Internet users, and that it generates revenue by providing
pay-per-click advertising links related to the generic nature of each site’s
domain name. For example, in addition
to the generic domain name <landmarks.com>,
Respondent also owns and operates websites such as <chairs.com>,
<pants.com>, <dress.com> and <webdesign.com>. As long as the domain names have been
registered because of their attraction as dictionary words, and not because of
their value as trademarks, this is a business model that is permitted under the
Policy. Gen. Mach. Prods. Co. v.
Prime Domains, FA 92531 (Nat. Arb. Forum Jan. 26, 2000).
Complainant has also failed to prove that
Respondent registered and used the domain name <landmarks.com> in bad faith. The affidavit of Respondent’s Vice President, Jay Chapman, states
that Respondent had no knowledge of Complainant or its publications at the time
it registered the domain name.
Respondent cannot be found to have engaged in bad faith registration of
Complainant’s mark if it had never heard of Complainant’s mark at the time of
the registration. DK Bellevue, Inc. v. Landers, D2003-0780 (WIPO Nov.
24, 2003) (no bad faith registration if respondent had not heard of
complainant’s mark at time of registration); Intermap Techns. Corp.
v. Salvage Elec. Inc.,
FA 203130 (Nat. Arb.
Forum Dec. 12, 2003); Experimental Aircraft Ass’n (EAA) v.
EAA.COM, FA 206309 (Nat. Arb. Forum Dec. 16, 2003).
This is a close case for Reverse Domain Name Hijacking. On the one hand, the Complaint is so bare
bones that it suggests a failure to investigate properly the facts and to
consider whether this was a proper case for a UDRP complaint. Nevertheless, because the nature of
Respondent’s business was not obvious from its websites, which, as noted, have
such minimal advertising that they appear to be mere placeholder pages, and
because Complainant did not know whether Respondent was aware of Complainant
and its mark at the time it registered the domain name, the Panel declines to
enter a finding of Reverse Domain Name Hijacking in this case.
DECISION
Upon
careful review of all the evidence, the Panel concludes that the domain name in
dispute is confusingly similar to a mark in which Complainant has rights, but
that Complainant has failed to prove that Respondent lacks a legitimate
interest in the domain name, nor has it proven that Respondent registered and
used the domain name in bad faith.
Further, the Panel concludes that Complainant did not engage in
Reverse Domain Name Hijacking. The
Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <landmarks.com>
domain name NOT be transferred from Respondent to Complainant.
David H. Bernstein, Diane Cabell, and
Hugues G. Richard, Panelists
Dated: August 6, 2004