It Takes 2 v. C.,J.
Claim Number: FA0412000384923
Complainant
is C.K.P., Inc. d/b/a It Takes 2 (“Complainant”), represented by its President, Carrie
Daichman, 4050 Innslake Drive, Suite 110, Glen Allen, VA 23060, USA. Respondent is named in the Complaint as C.,J. and in the Response as VerkkoStadi Technologies Inc.,
represented by Jean Conille (“Respondent”), 1405
Route Trans-Canada, Dorval, Québec, Canada, represented by Dr. Sunny Handa, of Blake, Cassels & Graydon LLP, Québec, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <ittakes2.com>,
registered with Network Solutions, 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.
Honorable
Marilyn W. Carney, Robert A. Fashler and Alan L. Limbury (Presiding) as
Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
17, 2004. The Forum received a hard
copy of the Complaint on December 21, 2004.
On December 23, 2004 the Forum invited the Complainant to remedy certain
formal deficiencies and an Amended Complaint was submitted on December 28, 2004
On
December 21, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum
that the domain name <ittakes2.com>
is registered with Network Solutions, Inc., that the current registrant of the
name is Respondent, C.,J.
ATTN:ITTAKES2.COM c/o Network Solutions P.O. Box 447 Herndon, VA 20172-0447. The name Verkkostadi Technologies, of the
same address, is mentioned together with C., J. as the Administrative and
Billing Contacts. Network Solutions,
Inc. verified that the registrant 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
January 3, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of January 24,
2005 by which Respondent could file a Response to the Complaint, was
transmitted via e-mail and by post to Respondent C., J.; to the entities and
persons listed on Respondent’s registration as administrative and billing
contacts, namely C., J. and Verkkostadi Technologies, and by e-mail to
postmaster@ittakes2.com.
The
exhibits annexed to the Complaint and Amended Complaint, not being available in
electronic form, were not transmitted via email. The mailed Commencement Notification, which contained hard copies
of the Complaint, the Amended Complaint and all the exhibits thereto, was returned
to the Forum as undeliverable. No facsimile
address appeared in the registration data.
Regarding
the requirements of Rule 2(a), the Panel is satisfied that the Forum discharged
its responsibility to employ reasonably available means calculated to achieve
actual notice to Respondent.
A
timely Response was received and determined to be complete on January 24, 2005.
On
January 26, 2005 a timely additional submission was received from Respondent in
compliance with Supplemental Rule 7. It
asserted that Complainant did not transmit to Respondent a copy of the
Complaint and exhibits, as required by the Rules, the Supplementary Rules and
the Filing Instructions and that, although the Forum transmitted an electronic
copy of the Complaint to Respondent, the exhibits were never communicated to
Respondent either by the Forum or by Complainant. Respondent asks the Panel to take into consideration under Rule
14(b) the prejudice to Respondent caused as a direct result of Complainant’s
failure to communicate the exhibits to Respondent.
On
January 28, 2005 a timely additional submission was received from Complainant
in compliance with Supplemental Rule 7, providing evidence that on December 28,
2004 Complainant did indeed send a hard copy of the complete Complaint to
Respondent’s address as appearing in the WHOIS database, namely PO Box 447
Herndon, VA 20172-0447 but that the mail was returned as undeliverable at that
address. Network Solutions was unable
to provide to Complainant any other address for Respondent.
The
Panel is satisfied that Complainant complied with Rules 2(b) and 3(b)(xii),
Supplemental Rule 4(c) and the Filing Instructions and that any prejudice
suffered by Respondent was the consequence of Respondent having chosen, when
registering the domain name, to nominate as its address one to which mail was
undeliverable and having failed to nominate a facsimile number.
On February 3, 2005, pursuant to Respondent’s request to
have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Honorable Marilyn W. Carney, Robert A. Fashler and Alan L.
Limbury (Presiding) as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
has rights in the IT TAKES 2 trademark, which it has used since February 1,
1998 as a business name and trademark in connection with a “personalized
introduction / dating service”. On
November 25, 2003 it applied to register IT TAKES 2 as a service mark in the
State of Virginia. The disputed domain
name is identical to the mark.
Respondent
commenced operation of a dating service after Complainant and with knowledge of
the goods and services Complainant provided.
Respondent commenced its business under the domain name after refusing
an offer from Complainant to acquire the domain name.
Respondent
has no rights or legitimate interest with respect to the domain name. It has no association with Complainant, is
not commonly known by the domain name, does not operate an independent business
by that name and intentionally chose to use Complainant’s mark in order to
mislead and divert consumers seeking Complainant’s services and financially to
gain from such diversion. This is not a
bona fide offering of goods or services and also evidences bad faith
registration and use.
Respondent has a history of bad faith
intentions in creating identical domain names.
See Park Place Entm’t Corp.
v. Conille, FA 95492 (Nat. Arb. Forum Oct. 6 2000)
Respondent
is offering dating services that are similar to and compete with those of
Complainant. Registering a domain name
primarily for the purpose of disrupting the business of a competitor also
evidences bad faith registration and use.
B.
Respondent
[The
Response makes no distinction between the company, VerkkoStadi Technologies
Inc., and its Director, Jean Conille].
Respondent
began using the name “It Takes 2”
in 1997 to market a weekly singles social event at a Montreal nightclub, Le Sanctuaire. The popularity of this event led Respondent to develop its matchmaking
business and to develop an online presence.
On November 12, 2003, Respondent acquired the domain name from the
previous registrant, a Dutch businessman.
On
February 12, 2004, Respondent filed formal applications in Canada and the
United States to register its common law mark, IT TAKES 2, as a trademark.
On February 20, 2004, Respondent received Complainant’s cease and desist
letter.
Before
any notice of this dispute, namely since 1997, Respondent has acquired common
law rights in Canada in and has used the
IT TAKES 2 mark in connection with a bona fide offering of services,
namely matchmaking activities targeting singles. In 2003, the business developed an online version of this dating
service with the acquisition and registration of the disputed domain name.
Respondent
registered and has used the domain name in good faith. When Respondent, located in the Province of
Québec, registered the disputed domain name, it had no knowledge of
Complainant’s services nor of its business name license or its claimed
trademark in the State of Virginia. Nor
could Respondent reasonably have been expected to have had such knowledge. Respondent declined Complainant’s offer to
purchase the domain name. There is no
evidence of bad faith on the part of Respondent.
Complainant’s
reference to Park Place Entm’t Corp. v.
Conille, FA 95492 (Nat. Arb. Forum Oct. 6, 2000) is irrelevant and
inadmissible and should be struck from the Complaint. In any event, that case was decided by default.
Although
the domain name is similar to Complainant’s purported trademark, it does not
create a likelihood of confusion with Complainant’s services. The parties’ businesses are completely
different and do not target the same market.
Complainant seems to offer personalized and discreet dating services in
the State of Virginia, whereas Respondent offers a public online dating service
for singles intended for a worldwide market.
A number of U.S. courts have held that the issue of whether a domain
name will cause confusion with a trademark may not be determined solely by a
comparison of the trademark and domain name.
Thirteen
different trademarks comprising IT
TAKES 2 have been registered with the United States Patent &
Trademark Office (“USPTO”). It would
therefore be unjust for the Panel to single out Respondent’s alleged violation
of Complainant’s rights when the mark is widely used. See Tech. Props.
Inc. v. Design Shack, FA 94807 (Nat. Arb. Forum June 30, 2000).
C.
Additional Submissions
Complainant’s
additional submission, having responded to the procedural issue raised in
Respondent’s additional submission, also annexed exhibits relating to issues
that should have been fully covered in the Complaint. This amounts to an amendment to the Complaint, contrary to
Supplemental Rule 7(d). The Panel gives
no regard to those exhibits.
FINDINGS
Complainant
has failed to establish all elements necessary to entitle it to relief.
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.
Since
1998 Complainant has operated a “Personalized Introduction / Dating Service” in
the State of Virginia under the IT TAKES 2 business name and service mark.
Although
Complainant has applied to register that mark in the State of Virginia, there
is no evidence before the Panel that the application has been granted. Trademark registration applications do not
give rise to trademark rights. See
Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001); see
also Spencer Douglass MGA v. Absolute Bonding Corp., D2001-0904 (WIPO Sept.
5 2001).
To
succeed in a Complaint under the Policy in relation to an unregistered mark,
Complainant must prove that, prior to filing the Complaint, it had acquired
rights in the unregistered mark such as would enable it to bring a legal action
against a third person using the mark without its consent. See British Heart Found. v. Meyer,
AF-0957 (eResolution Nov. 13, 2001).
The
Panel finds the Complainant has shown that it has established common law rights
in the State of Virginia for the IT TAKES 2 mark in connection with
personalized introduction/dating services.
Many
cases have established that "essential" or "virtual"
identity is sufficient for the purposes of the Policy. See, e.g., Stanley Works v. Camp Creek Co., Inc., D2000-0113 (WIPO Apr. 13, 2000). For a U.S. case see Brookfield Communications, Inc. v. West Coast Entm’t Corp., 174
F.3d 1036, 1055 (9th Cir. 1999) (differences between the domain name
<moviebuff.com> and the MOVIEBUFF mark are “inconsequential”).
The
Panel finds the domain name to be identical to Complainant’s mark. Complainant has established this element.
Complainant provides
a very localized service within the State of Virginia where the parties are
subjected to personal interviews by Complainant’s President, Carrie Daichman,
while Respondent, through its website located at the disputed domain name,
provides a worldwide facility where the parties meet online without similar
personal involvement of Respondent.
The
nature of Complainant’s service and the ordinary English expression which
constitutes Complainant’s mark provide no basis for concluding that Respondent,
in Canada, knew of Complainant, its services or its mark in November 2003 when
Respondent purchased the disputed domain name from the previous
registrant. There is no evidence that
Respondent had any such knowledge.
Paragraph
4(c) of the Policy sets out, without limitation, circumstances which, if
proved, establish the Registrant’s rights or legitimate interests to the
disputed domain name. Respondent relies
on the circumstances specified in sub-paragraph 4(c)(i):
“(i) before any notice to you of the
dispute, your use of, or demonstrable preparations to use, the domain name or a
name corresponding to the domain name in connection with a bona fide
offering of goods or services;”
Even perfunctory preparations have been
held to suffice for this purpose. See
Shirmax Retail Ltd. v. CES Mktg. Group, Inc., AF-0104 (eResolution Mar. 20,
2000); see also Lumena s-ka so.o. v. Express Ventures Ltd., FA 94375
(Nat. Arb. Forum May 11, 2000); see also Royal Bank of Canada v.
Xross, AF-0133 (eResolution May 19, 2000).
Preparations for developing a business that could logically be marketed
under a certain domain name can constitute legitimate preparations for use,
even if the proposed business has no need to use the exact name at issue. See Goldline Int’l, Inc. v. Gold Line, D2000-1151 (WIPO Jan. 4, 2001); see also PRIMEDIA Special Interest Publ’ns Inc. v.
Treadway, D2000-0752 (WIPO Aug. 21, 2000).
The evidence establishes that a weekly
singles night marketed as “It Takes 2” took place in 1997 at a nightclub in
Montréal, Québec known as Le Sanctuaire. Respondent asserts it organized these events
but there is no evidence of this before the Panel.
The evidence does, however, establish
that Jean Conille, a director of Verkkostadi Technologies, acquired the domain
name from the previous registrant for $3,500 in November 2003. By February 12, 2004 Respondent had retained a
trademark agent to prepare and file applications in Canada and the United
States to register the IT
TAKES 2 mark with respect to services that included “providing on-line information concerning dating and personal
relationship issues through a web site…” The applications were subsequently filed.
The next day, February 13, 2004,
Complainant’s attorney mailed a cease and desist letter to Respondent. There are two copies of this letter in
evidence, an unsigned copy dated February 2, 2004 forming part of the Complaint
(which the Panel takes to be a draft) and a signed copy dated February 12, 2004
(which the Panel takes to be the letter actually sent to Respondent on February
13, 2004). These dates are important
because that letter is the first evidence of knowledge on the part of
Respondent of this dispute, a critical factor under Policy 4(c)(i).
It is common ground that Complainant
offered to purchase the domain name from Respondent and that Respondent
declined the offer. However, there is
no evidence as to when this occurred and the Panel is unable to conclude that
what transpired amounted to notice to Respondent of this dispute. The cease and desist letter contained no
such offer or any reference to an offer.
The only challenge to the legitimacy of Respondent’s
services is the unproven allegation that Respondent intentionally sought to
divert trade from Complainant. In the
absence of any evidence of knowledge on the part of Respondent, prior to
receipt of Complainant’s cease and desist letter, of Complainant or its mark or
services, the Panel finds that Respondent’s preparations to use the domain name
in connection with its online services, constituted by its expenditure of
$3,500 to acquire the domain name and its preparations to lodge trademark
registration applications, demonstrate Respondent’s rights and legitimate
interests in the domain name.
Complainant has failed to establish this
element.
Likewise,
in the absence of any evidence of knowledge on the part of Respondent of
Complainant, its mark or its services at the time Respondent acquired the
domain name, the Panel finds Complainant has failed to establish registration
in bad faith.
Even
if, subsequent to receipt of the cease and desist letter, Respondent’s use of
the domain name has been to divert trade from Complainant (as to which the
Panel is not persuaded), evidence of bad faith use under Policy 4(b)(iv) is not
conclusive evidence of both bad faith registration and use. The Panel is not required to assign
substantial weight to evidence of constructive bad faith registration furnished
by paragraph 4(b)(iv) and may give regard to other evidence in determining
whether the requirements of 4(a)(iii) have been proved. See Passion Group Inc. v. Usearch, Inc.,
AF-0250 (eResolution June 9, 2000); see also Shirmax Retail Ltd./D¢etaillants Shirmax Lt¢ee v. CES Mktg. Group Inc., AF-0104 (eResolution Mar. 20, 2000); see also Viz
Communications, Inc., v. Redsun, D2000-0905 (WIPO Dec. 22, 2000).
Although prior cases involving Respondent may be
relevant, the Panel derives no assistance from the case cited by Complainant.
Complainant has failed to establish this element.
DECISION
Complainant
having failed to establish all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
Alan L. Limbury, Presiding Panelist
Marilyn W. Carney
& Robert A. Fashler, Panelists
Dated: February 15, 2005
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