Elizabeth "Betsy" Gunnels v.
Patsy Strong
Claim Number: FA0506000499337
PARTIES
Complainant
is Elizabeth "Betsy" Gunnels (“Complainant”),
represented by Donald D. Long, of Feil, Pettit & Williams, PLC, 530 East Main Street, PO Box 2057, Charlottesville, VA 22902. Respondent is Patsy Strong (“Respondent”), represented by Caroline D. Bragg, of Cattano Law Firm, One Boar's Head Lane,
Charlottesville, VA 22903.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <betsysellsfluvanna.com>
and <betsysellslakemonticello.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.
Hon.
Charles K. McCotter, Jr. (Ret.), G. Gervaise Davis, III and Dennis A. Foster as
Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
17, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 20, 2005.
On
June 20, 2005, Network Solutions, Inc.
confirmed by e-mail to the National Arbitration Forum that the domain names <betsysellsfluvanna.com> and <betsysellslakemonticello.com> are 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
June 27, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 18,
2005 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@betsysellsfluvanna.com and
postmaster@betsysellslakemonticello.com by e-mail.
A
timely Response was received and determined to be complete on July 18, 2005.
Per
the Forum’s Supplemental Rule no. 7, a timely Additional Submission was
received from Complainant on July 22, 2005.
A
timely Additional Submission was received from Respondent on July 27, 2005
On July 28,
2005, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Charles K.
McCotter, Jr. (Ret.), G. Gervaise Davis, III and Dennis A. Foster as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
--Complainant
has continuously operated under the name Betsy Gunnels and has used that name
in commerce since 2001 (Complaint Exhibit A).
Indeed, Complainant has even registered that service mark with the
Virginia State Corporation Commission (Complaint Exhibit B).
--Complainant
began marketing her services under the marks “Betsy Sells Fluvanna” and “Betsy
Sells Lake Monticello” in or about 2001 and has continuously done so
since. Her business card displays the
“Betsy Sells Fluvanna” mark. The advertisements attached as Exhibit C
demonstrate her use of the “Betsy Sells Lake Monticello” mark.
--On
February 17, 2005, just days after receiving Complainant’s business card,
Respondent registered the following domain names: <
betsysellsfluvanna.com> and <betsysellslakemonticello.com>. Copies of the Whois Searches showing the
registrations are attached as Exhibit D.
--Respondent
knew at the time of the registration of the disputed domain names that
Complainant was using the service mark “Betsy Sells Fluvanna” and intended to
register the domain name <betsysellsfluvanna.com> because that domain
name was shown on her business cards.
See Complaint Exhibit A.
Further, Respondent knew that Complainant was using the “Bestsy Sells
Lake Monticello” mark as revealed by the advertisement attached at Exhibit C.
--Complainant
had been working with a website designer to develop the website
<betsysellsfluvanna.com>. When
Complainant attempted to register <betsysellsfluvanna.com> on February
18, 2005, she discovered Respondent had already registered that name as well as
others. At the time of this discovery,
Complainant was not aware that <betsysellslakemonticello.com> had also
been registered by Respondent.
--Respondent
has not used the disputed domain names or any names corresponding to the
disputed domain names in connection with a bona fide offering of goods or
services.
--Respondent
is not commonly known by the disputed domain names.
--Respondent
is not making a legitimate noncommercial or fair use of the disputed domain
names because she is only holding the disputed domain names to keep Complainant
from using them.
--Respondent’s
registration of the disputed domain names has prevented the Complainant from
reflecting the service marks in corresponding domain names, and Respondent has
engaged in a pattern of such conduct which is shown through the registration of
the domain name of her former employer, Monticello Country Realtors. See Monticello County Realtors,
Inc. v. Patsy Strong (NAF), filed contemporaneously with this Complaint.
--The
disputed domain names are confusingly similar to Complainant’s service marks
for the purposes of paragraph 4(a)(i) of the ICANN Policy. Further, the use of the domain names by
Respondent, who is not named “Betsy,” is likely to confuse consumers into
believing that Respondent’s web sites are owned and supported by
Complainant. Thus, Complainant
satisfies its burden under paragraph 4(a)(i) of the ICANN Policy of
demonstrating that the trademark is identical or confusingly similar.
--Complainant
has rights in the service marks through ownership of a common law mark. A common law mark is established when a
complainant’s mark becomes distinctive or acquires secondary meaning. Complainant has continuously, consistently,
and exclusively used the marks “Betsy Sells Fluvanna” and “Betsy Sells Lake
Monticello” since 2001, and the Service Marks have acquired secondary meaning
and have become distinctive. Complaint
Exhibits A and C.
---Pursuant
to paragraphs 4(a)(ii) and 4(c) of the ICANN Policy, Respondent has no rights
or legitimate interests in the disputed domain names. Respondent has not used the disputed domain names or a name
corresponding to the disputed domain names in connection with a bona fide
offering of goods or services.
Respondent is not making a legitimate noncommercial or fair use of the
disputed domain names.
--Pursuant
to paragraph 4(a)(iii) of the ICANN Policy, Respondent has registered and used
the disputed domain names in bad faith.
Respondent’s sole use of the disputed domain names has been to attempt
to deprive Complainant of an effective Internet marketing tool.
--Respondent’s
registration of the disputed domain names was in bad faith, i.e., the act of
registering disputed domain names that are identical to Complainant’s service
marks.
--Although
Respondent is not actively using the disputed domain names, a finding of bad
faith is supported because Respondent could not possibly use the domain names
in a manner that does not infringe Complainant’s service marks.
--Respondent’s
passive holding of the disputed domain names is also evidence of bad faith
registration and use.
B.
Respondent
--The
scope of an ICANN UDRP proceeding is extremely narrow. It only targets abusive cybersquatting and
nothing else.
--Prior
UDRP decisions make clear that this Panel should not engage in attempts to
resolve matters where there are facts in dispute.
--The
Complainant provides no evidence that she used the name “Betsy Gunnels” as anything
other than her name before this dispute began.
--The
Complainant must provide credible, relevant evidence in order to prove that the
descriptive mark has acquired secondary meaning among the relevant consuming
public. In response to its burden [of
proof], the Complainant has not offered a single piece of credible, relevant,
admissible evidence.
--In
fact, the Complainant has not used either of the names “Betsy Sells Fluvanna”
or “Betsy Sells Lake Monticello” consistently, continuously, or exclusively. See Response Exhibits A, B, C, D, E, F, G.
--If,
as the Complainant maintains, Complaint Exhibit A is in fact a copy of the
Complainant’s actual business card, then she is advertising a website which she
does not own and has never had rights to.
As such, the Complainant’s Exhibit A is an example of fraud and is not a
trademark use which subsequently provides her trademark rights.
--In
this case Complainant asserts mark rights in a fully descriptive phrase that
could fairly be used by Respondent in a descriptive sense in regards to her
services.
--While
working with the Complainant, the Respondent learned that the Complainant was
intentionally using the Respondent’s name, advertising slogans, and marketing
techniques to divert business to the Complainant. See Response Exhibit J.
--The
Complainant has not proved any of the facts under Policy paragraphs 4(b)(i-iv)
to show the Respondent registered and is using the disputed domain name in bad
faith.
C.
Additional Submissions
Complainant’s
Additional Submission
--Complainant
has continuously operated under the service marks (“Betsy Sells Fluvanna” and
“Betsy Sells Lake Monticello”) since 2001 and has used the marks in commerce
during that entire period in connection with the purchase and sale of real
estate in Fluvanna County, Virginia and in Central Virginia. Recognition of a common law mark under these
circumstances is well-established.
--Respondent
acknowledges that she was aware of Complainant’s use of the service marks and
of Complainant’s intention to market a website using those marks yet
intentionally registered the disputed domain names to prevent the Complainant
from doing so.
--In
addition, passive holding of the disputed domain name is also evidence of bad
faith registration and use.
--Respondent’s
claim that she is not acting in bad faith because she is attempting to minimize
customer confusion with her own advertising slogans is specious at best.
Respondent’s
Additional Submissions
--The
Respondent does not concede that the Complainant has been “marketing her
services” under the terms “Betsy Sells Fluvanna” and “Betsy Sells Lake
Monticello.”
--The
Respondent has no information as to whether or not the Complainant provided her
or any member of her real estate firm with a copy of the Complainant’s card in
February 2005.
--The
Complainant attaches an exhibit (Exhibit B) to her Additional Submission
indicating that she attempted to register the “Betsy Sells Fluvanna” mark with
the Virginia State Corporation Commission.
This registration is dated May 25, 2005, just weeks before the
Complainant filed her Complaint in this matter. More importantly however is the fact that this registration
states on its face that the date claimed for the first use of the mark anywhere
is January 15, 2005. Therefore, by her
own admission, the Complainant has not used this mark continuously,
consistently, or exclusively since 2001.
--In
her Additional Submission, the Complainant merely rehashes her earlier argument
that the Respondent registered the disputed domain name in bad faith.. As previously set forth in her initial
Response, the Respondent registered the disputed domain name to prevent further
confusion between her advertising slogans and those of the Complainant.
--Intent
to minimize consumer confusion cannot possibly be considered bad faith because
it is the public policy upon which trademark law was founded. The Respondent is making a legitimate
noncommercial or fair use of the domain name and has never misleadingly
diverted consumers or tarnished the trademark or service mark of another.
FINDINGS
Both the Complainant and the Respondent
are real estate agents operating in the same area of Virginia. The parties are competitors.
The disputed domain names,
<betsysellsfluvanna.com> and <betsysellsmonticello.com> were
registered on February 17, 2005. In
addition to their dispute over these two domain names, the parties have a
background dispute over allegedly unfair trade practices.
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 Complainant acknowledges that she
does not have a registered service mark
for the phrase
“Betsysellsmonticello.” As to the
phrase “Betsysellsfluvanna”, the Complainant has exhibited a copy of a Commonowealth of Virginia service mark
registration dated May 25, 2005 with a claimed first use on January 15, 2005
(Complainant Additional Submission Exhibit B).
This registered service mark is for selling real estate in Virginia.
The Claimant further contends that she
has common law service mark rights in both
“Betsysellsmonticello” and “Betsysellsfluvanna.” In support of this contention, the
Complainant has exhibited clippings from publications ( Complaint Exhibits A
and C ) and a copy of a business card with the Complainant’s name and one of the
disputed domain names, viz., <betsysellsfluvanna.com> (Complaint Exhibit
A).
The Panel can readily see that the two
disputed domain names are identical or confusingly similar to the two phrases
in which the Complainant is claiming service mark rights, i.e., the two
disputed domain names are <betsysellsfluvanna.com> and
<betsysellsmonticello.com>, and
the Complainant claims service mark rights in the phrases “Betsy Sells
Fluvanna” and “Betsy Sells Monticello”.
The problem is the Panel can not see that the Complainant has
demonstrated any service mark rights in those names.
To begin, the two claimed phrases are
highly descriptive. Thus, in the
Panel’s view, it would take the Complainant some time to establish secondary
meaning that would lead to service mark rights in the two phrases, assuming she
would ever be able to do so. The
Complainant claims to have used the two phrases since 2001, but there is strong
evidence that this is false. The
Complainant only claims to have used the business card with the email address
<betsysellsfluvanna.com> as of February, 2005, i.e. recently and almost
contemporaneous with this dispute.
Next, the Complainant claims to have used
the phrases (“Betsy Sells Fluvanna” and “Betsy Sells Monticello”) in
publications and on this point offers Complaint Exhibits A and C. But in Exhibit A there are merely some
articles showing that the Complainant sells real estate. In Exhibit C we do see the phrase “Betsy
sells Monticello,” but it is used to say just that. The phrase is not clearly used as a service mark. Moreover, the only indication of date is the
Complainant writing in by hand “May 29-June 4, 2003.”
The most telling evidence that the
Complainant’s use of the claimed two phrases is of recent vintage is the
Virginia Commonwealth registration for “Betsysellsfluvanna,” which the
Complainant exhibited at Exhibit B in its Additional Submission. Here the Complainant claims a first use of
January 15, 2005. Yet, as the
Respondent points out, at several places in the Complaint the Complainant
contends to have used both claimed phrases continuously since 2001 (at pp. 3,
4, and 5 of the Complaint). This clearly is untrue. While United States law on the amount of
time necessary to establish secondary meaning in a descriptive mark does not
prescribe a precise lapse of time, the Panel is confident it is more than a few
months, which is all the Complainant comes close to showing here (See McCarthy
on Trademarks and Unfair Competition, Vol. 11, Sect. 15:54, 2005 ed.).
The Panel concludes the Complainant has not shown that it
has service mark rights in the two disputed domain names,
<betsysellsfluvanna.com> and <betsysellsmonticello.com>. The Complainant thus has failed to carry its
burden of proof under paragraph 4(a)(i) of the Policy.
Since the Policy requires the Complainant
to carry its burden of proof under paragraphs 4(a)(i-iii) inclusively, the
Panel does not need to reach the issues of Legitimate Rights and Interests or
of Bad Faith.
DECISION
The Complainant having failed to carry its
burden of proof under paragraph 4(a)(i) as
required under the ICANN Policy, the Panel concludes that relief shall
be DENIED.
Dennis A. Foster
Presiding Panelist
Hon. Charles K. McCotter, Jr. (Ret.), G.
Gervaise Davis, III
Panelists
Dated: August 10, 2005
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