National Arbitration Forum

 

DECISION

 

Boston Law Collaborative (BLC), LLC v. Netico, Inc. a/k/a Jack D.

Claim Number: FA0410000358038

 

PARTIES

 

Complainant is Boston Law Collaborative (BLC), LLC, 99 Summer Street, Suite 1600, Boston, MA 02110 (“Complainant”).  Respondent is Netico, Inc. a/k/a Jack D. (“Respondent”), represented by Stephen H. Sturgeon of Law Offices of Stephen H. Sturgeon & Assoc of Washington, DC, 11116 Hurdle Hill Drive, Potomac, MD 20854.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

 

The domain name at issue is <blc.com>, registered with Enom, 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.

 

Hugues Richard as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 29, 2004; the National Arbitration Forum received a hard copy of the Complaint on November 1, 2004.

 

On November 1, 2004, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <blc.com> is registered with Enom, Inc. and that the Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 8, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 29, 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@blc.com by e-mail.

 

A deficient Response was received by the National Arbitration Forum on November 30, 2004.  The Response was received after the deadline and was not received in hard copy.  Therefore, the National Arbitration Forum does not consider this Response to be in compliance with ICANN Rule #5 (a).

 

Paragraph 15 (a) of the ICANN Rules serves to instruct the Panel as to the principles the Panel is to utilize in settling the dispute. As such, the Panel shares the opinion set forth by the Panel in the decision Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002), namely, that the Panel has the liberty to decide whether a Response should be declared inadmissible in view of Respondent’s failure to comply with the provisions of the ICANN rules or if said Response should be considered regardless of non-compliance. Further, the Panel concurs with the decision of the Panel in the previously cited case to consider the Response, on the basis that ¨ruling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process¨. The Panel thus rules the Response admissible.

 

On December 10, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hugues Richard as Panelist.

 

RELIEF SOUGHT

 

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

 

PARTIES’ CONTENTIONS

 

A. Complainant

 

Complainant submits as follows:

 

a) Identical and /or Confusingly Similar:

 

The <blc.com> domain name is identical to the abbreviated term BLC, under which Complainant conducts business.

 

The disputed domain name is confusingly similar to the logo utilized by Complainant, and for which Complainant has filed a trademark application.

 

            Complainant has widely come to be known by the public in general as BLC.

Such a contention is upheld by the augmentation (258 megabytes in September 2003 to 1.15 gigabytes in September 2004) in the number of individuals which visit the website with the address <bostonlawcollaborative.com> operated by Complainant.

 

b) Rights or Legitimate Interests:

 

Respondent fails to use or demonstrate any preparations to use the domain name in question, in conjunction with a bona fide offering of goods and services.

 

            Respondent has not made any legitimate non-commercial or fair use of the domain name.

 

Neither Mr. Doumanian, nor Respondent is connected in any form to the disputed domain name, the acronym BLC or any configuration of the letters “b,” “l” or “c.”

           

Respondent’s utilization of the disputed domain name misleadingly diverts potential clients of Complainant, an allegation, which is supported by both Respondent’s offer to transfer the domain name to the Complainant in exchange for $17 000, as well as the pecuniary gain which Respondent receives each time the website Respondent operates is visitied.

           

            c) Registration and Use in Bad Faith:

   

            Respondent registered the disputed domain name for the primary purpose of selling, renting, or otherwise transferring the domain name registration for a pecuniary     consideration superior to any expenses incurred by Respondent as a result of said registration.

 

Respondent is simply ¨passively holding¨ the domain name with the expectation that a business with an existing or future trade or service mark identical or similar to the domain name in question will offer an exorbitant monetary consideration in exchange for its transfer.

 

            Respondent has shown a documented pattern of bad faith with respect to illegitimate use of several domain names.

 

            The acquisition and ownership by Respondent of the disputed domain name should be construed as a deliberate attempt to prohibit Complainant from its utilization.

 

B. Respondent

 

Respondent submits as follows:

 

a) Identical and/or Confusingly Similar:

 

Complainant’s failure to possess any registered or common law rights to a trademark which precede the date in which the domain name was registered should be regarded as fatal to Complainant’s request that the domain name be transferred.

           

Complainant has not set forth any substantive proof that demonstrates that the words comprising the Complainant’s name are associated with any services or products that Complainant markets or provides.

 

b) Rights or Legitimate Interests:

 

Complainant has failed to prove absence by Respondent, of any rights or legitimate interests in the disputed domain name.

 

            The fact that the domain name in question was not utilized at the time the present complaint was filed is not detrimental to Respondent’s contention that it has a legitimate interest in the domain name.

 

The domain name was registered for a fair purpose.

 

Respondent has partaken in measures to utilize the disputed domain name in conjunction with a site for a ¨Bug Lovers Club¨.

 

            The domain name in question was not registered in an attempt to divert those seeking the Respondent’s website, as it was to eventually become utilized by those seeking the ¨Bug Lovers Club¨, thus establishing that the letters “b,” “l” and “c” were chosen purposely.

 

c) Registration and Use in Bad Faith:

 

The argument set forth by Complainant in which Respondent was in bad faith at the time the domain name was registered and subsequently thereafter, is without any factual bearing.

 

The registration of the domain name could not have been undertaken in bad faith, since the rights in the mark at which such argument is directed, were establish after the domain name was already registered.

 

The fact that the rights obtained in the disputed domain name precede the date in which Complainant was incorporated further demonstrates that the registration of the domain name occurred without prior knowledge of any potential claim by Complainant to the letters forming integral part of the domain name.

 

            Consumers do not readily associate the term ¨BLC¨ with Complainant, thus demonstrating the absence of any claim by Respondent to the term ¨BLC¨.

 

            The Panel should dismiss the allegation set forth by the complainant regarding previous cybersquatting activity, as Complainant failed to submit any evidence in support of       such pretension.

 

FINDINGS

 

Having reviewed the evidence submitted by the parties, and their written representations, the Panel makes the following findings:

 

The Respondent registered the <blc.com> domain name on November 18, 1999.

 

On August 1 2003, Complainant filed an Intent to Use application with the United States Patent and Trademark Office (“USPTO”) for the trademark of a column design bearing the letters ¨BLC¨ and used by Complainant as a logo.

 

Upon publication on July 14, 2004 by the USPTO of the aforementioned trademark bearing the serial number 781281920, a notice of allowance was issued in favor of Complainant on October 5, 2004.

 

As required, the Complainant filed the documentation regarded as necessary for the completion of the allegation of use application on October 27, 2004.

 

Complainant has not established a necessary trademark right in the <blc.com> domain name due to the fact that said domain name was registered some four years before Complainant applied for a trademark.

 

Complainant has failed to prove to the Panel a secondary meaning to the term “BLC” such that the public in general would be inclined to associate the aforementioned domain name with Complainant.

 

FACTUAL BACKGROUND

 

Complainant, which specializes in family and collaborative law, as well as mediation and arbitration was incorporated on May 27, 2003, and began offering the aforementioned services on August 15, 2003.

 

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts that the <blc.com> domain name registered by Respondent is identical to Complainant’s BLC mark, in that the domain name is comprised of the        mark in its entirety, adding only the generic top level domain (“gTLD”) ¨.com¨. Furthermore, Complainant argues that the Respondent’s domain name is confusingly similar to both Complainant’s service mark and pending trademark.

 

It has long been regarded, that the mere addition of a gTLD to a mark is without bearing and insufficient for the purposes of distinguishing domain names and marks. See Rollerblade, Inc. v. Mc Grady, D 2000-0429 (WIPO June 25, 2000) (wherein it was decided that the top level of the domain name such as ¨.net¨ or ¨.com¨ does not influence the domain name for the purpose of deciding whether it is identical or confusingly similar), see also Caplin v. SLP, FA 210305 (Nat.Arb. Forum Jan.7 2004) (finding that Respondent’s domain name was identical to Complainant’s mark despite the addition of the top level domain), see also Busy Body, Inc. v. Fitness Outlet Inc., D 2000-0127 (WIPO Apr. 22, 2000) (wherein the Panel concluded that the addition of a top level domain is insignificant); see also Execujet Holdings Ltd. V. Air Alpha America Inc., D 2002-0669 (WIPO Oct. 7, 2002) (stating that the Panel need not consider the addition of a top level domain indicator in deciding whether a domain name and mark are identical or confusingly similar); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar.13, 2003) (reaching similar conclusions).

 

Whereas the Panel concurs with the previously mentioned decisions, the question of whether the domain name operated by Respondent is identical or confusingly similar with Complainant’s service mark is quite irrelevant for reasons set forth below. See Church in Houston v. Moran, D 2001-0683  (WIPO Aug. 2, 2001) (¨before a Panel can determine whether the alleged mark is identical or confusingly similar to the domain name, it must be satisfied that Complainant has established its trademark or service mark rights in the first place¨). 

 

            Complainant asserts that it has established rights in the BLC mark through the filing         of an Intent to Use application with the USPTO.

 

            The Panel finds that the mere filing of an application for a trademark is insufficient to       establish rights to a trademark for the purposes of the Uniform Domain Dispute            Resolution Policy (hereinafter referred to as the ¨UDRP¨). Therefore, Complainant          fails to establish rights in the BLC mark, in this respect. See Amsec Ent. v. Mc Call,    D2001-0083 (WIPO Apr. 3 2001) (stating that Complainant’s pending trade-mark             applications do not establish an enforceable right to the mark until a trademark     registration is issued).

 

            The Complainant is not however without recourse, both registered and common law trademark rights are regarded by the UDRP as sufficient to establish rights in a mark.

Such notion is also espoused by Professor McCarthy in his treatise (McCarthy, Trademarks and Unfair Competition, section 25:74.2, 4ed. 2002), in which said Professor states that the UDRP requires only that Complainant demonstrate that Respondent’s domain name be identical or confusingly similar to a trademark in which the former has rights. Furthermore, Professor McCarthy asserts that according to the UDRP, rights in trademarks may be acquired through their registration or the acquisition of common law or service mark rights.

 

            Accordingly, the Panel must determine if Complainant has demonstrated detention of common law rights, acquired through the use of the BLC service mark.

 

            As such, in establishing common law rights, it is paramount that the party, in this instance Complainant, demonstrate to the Panel that the mark in question has achieved distinctiveness capable of being protected. Said distinctiveness may be inherent to the        mark, or acquired through secondary meaning. See Weatherford Int’l, Inc. v. Wells, FA      153626 (Nat. Arb. Forum May 19, 2003) (¨Complainant must establish that the public             associates the asserted mark with its goods and services.¨).

 

Further, as espoused in the decision Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003), Complainant’s rights, be they by virtue of registered or common law rights, must always predate those of the Respondent. In the previously cited decision, the Panel concluded that a ¨finding to the contrary would obviate the intention of the Policy, which was prescribed to protect infringement of existing trademark rights through identical or confusingly similar domain name registration”. See also Bus. Architecture Group, Inc. v. Reflex Publ’g, FA 97051, (Nat. Arb. Forum June 5, 2001) (where the Panel denied Complainant’s request to transfer the domain name, in the absence of proof that Complainant’s rights in the mark preceded those of Respondent), Phonenix Mortgage Corp. v. Toggas, D 2001-0101 (WIPO Mar. 30, 2001) (wherein the Panel concluded that Policy Paragraph 4 (a)(i) should be read as implying that Complainant’s trademark rights predate those of Respondent), and Ezcommerce Global Solutions, Inc. v. Alphabase Interactive, D 2002-0943 (WIPO Nov. 21, 2002) (which states that it would be contrary to the intention of the Policy to permit the transfer of a domain name where the  Complainant’s rights in a mark ensued subsequently to the date in which the Respondent registered the domain name).

 

Accordingly, the key issue in the present proceedings is whether, Complainant can establish common law rights, and if such rights are established, whether Complainant is able to demonstrate that said rights arose prior to the date in which Respondent acquired rights in the domain name.

 

Complainant argues that it has acquired notoriety as ¨BLC¨ by virtue of, inter alia, the website Complainant operates in which Complainant’s logo clearly appears. Whereas Complainant attempts to demonstrate said notoriety, by submitting to the Panel that traffic at the aforementioned website has augmented from 358 megabytes in September 2003 to 1.15 megabytes in September 2004, it does not however provide the Panel with any evidence confirming such a pretension. The Panel holds that the affirmations set forth by Complainant are ¨self-serving¨. Consequently, the Panel accords no significance to such arguments. See Weatherford Int’l Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (wherein the Panel concluded that Complainant’s allegations must be supported by evidence and not self-serving assertions).

 

According to Complainant, Complainant’s name has become synonymous with the term ¨BLC¨, and has acquired secondary meaning.  Complainant offers the following evidence in support of its contentions:

 

 

            Whereas Complainant is inclined to regard such submissions as conclusive to the fact          that Complainant and the term ¨BLC¨ are interchangeable and that consequently, the   public is likely to associate the <blc.com> domain name with the Complainant, the Panel   finds such ¨evidence¨ unconvincing.

 

In fact, Complainant fails to provide sufficient, rather any, evidence to this Panel as to, for example, the number of individuals present at the aforementioned meetings who actually read the literature distributed. The Panel holds that simply stating that the American Bar Association Journal ¨has an internal subscription base of approximately 500,000 attorneys’, law firms, and other professionals¨ is not enough. Complainant must submit proof in support of such assertions; otherwise such arguments must be regarded as self-serving and therefore inadmissible. See Weatherford Int’l Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003).

 

In Media West-GSI, Inc. v. Earthcards.com, Inc., D 2000-0463 (WIPO July 28, 2000), the Panel concluded that the courts are inclined to consider various factors when analyzing the acquisition of secondary meaning in a term, namely advertising expenditures, consumer surveys linking the mark to a source, unsolicited media coverage of the service, sales success, attempts to plagiarize the mark, and length and exclusivity of the mark’s use. See Australian Trade Comm’n v. Reader, D 2002-0786 (WIPO Nov.12, 2002) (wherein the Panel concluded that Complainant had met its burden by submitting evidence of Complainant’s substantial investment in the promotion of its services as well as written materials in which Complainant’s services and name were documented).

 

Failure by Complainant to submit such evidence to the panel is paramount. Furthermore, although Complainant has asserted common law rights in the mark, the Panel holds that no conclusive evidence has been advanced in support of such a contention.

 

Consequently, the Panel finds that Complainant has not satisfied its burden under Policy 4(a)(i) with respect to the <blc.com> domain name.

 

In proceedings such as the present, the onus is on Complainant to prove all three elements under Paragraph 4(a) of the Policy. Once it is established that the complainant has failed to demonstrate the presence of one of the elements listed in Policy Paragraph 4(a)(i), the Panel is of the view that it need not consider whether the remaining elements contained in Policy Paragraphs 4(a)(ii) and (iii) have been proven by Complainant. See Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (wherein the Panel terminated its inquiry once satisfied that Complainant did not satisfy the requirements set forth in Policy Paragraph 4 (a)(i)); see also Decker v. Antwer, FA 263584 (Nat. Arb. Forum June 28, 2004); see also Creative Curb v. Edgetic Intl. Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary); see also Mattel, Inc. v. Domain Admin a/k/a ****** It’s all in the name ******, FA 248936 (Nat. Arb. Forum May 7, 2004) (wherein the Panel ended its analysis once it became apparent that Complainant did not demonstrate the elements listed in Policy Paragraph 4(a)(i)).      

 

No Rights or Legitimate Interests/ Domain Name Registered and Used in Bad Faith

 

            Even though the Panel does not need to address these issues, it wishes to succinctly state that in its opinion Complainant has not, regarding the other two elements i.e. ¨rights or legitimate interests¨ and ¨bad faith¨, proven either of said elements. In fact, the Respondent has shown (Respondent’s Exhibit B) that it has a project called ¨Bug Lovers Club (BLC) ¨, which supports the view that it has rights and legitimate interests in the domain name. Furthermore the Respondent has rightly argued that it could not have registered and used in bad faith the said domain name since its registration predates the incorporation of the Complainant by approximately four years. Under the circumstances the Complaint must be rejected.

 

Reverse Domain Name Hijacking

 

Respondent seeks a declaration that the Complainant is engaging in Reverse Domain Name Hijacking. It is therefore incumbent upon the Respondent to demonstrate that the Complainant knew or should have known that one of the three elements set forth in Paragraph 4 (a) of the Policy was absent. See Church in Houston v. Moran, D2001-0683 (WIPO Aug, 2, 2001) (where such was concluded by the Panel).

 

Reverse domain name hijacking is defined at Rule 1 of the ICANN rules as: “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”

 

As stated in Verkakik v. Crownonlinemedia.com, D 2001-1502 (WIPO Mar. 19, 2002), when Respondent seeks a reverse domain name hijacking declaration, it is he who bears the burden of establishing to the satisfaction of the Panel that Complainant had knowledge of the Respondent’s rights or legitimate interests in the domain name and that in virtue of such knowledge, Complainant has harassed Respondent. Similar conclusions were drawn in Plan Express Inc. v. Plan Express, D 2000-0565 (WIPO July 17, 2000) and Sydney Opera House Trust v. Trilynx Pty. Ltd., D 2000-1224 (WIPO Oct. 31, 2000).

 

In light of the failure of Respondent to provide sufficient evidence in this matter, the Panel finds that Complainant did not file the complaint in bad faith.

 

DECISION

 

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

 

Respondent did not establish to the satisfaction of the Panel that the Complaint was filed in bad faith and warrants a finding of reverse domain name hijacking.

 

Pursuant to Paragraph 4 (i) of the ICANN Policy, and Rule 15 of the ICANN Rules, the Panel dismisses the Complaint and orders that the <blc.com> domain name remain registered to the Respondent.

 

 

Hugues Richard, Panelist
Dated: December 24, 2004

 

 

 

 

 

 

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