OnQ LLC v. Clinton Fein
Claim Number: FA0510000583019
PARTIES
Complainant is OnQ LLC (“Complainant”),
243 Lakeview Way, Emerald Hills, CA 94062.
Respondent is Clinton Fein (“Respondent”),
Suite 407, 555 Florida Street, San Francisco, CA 94110.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onq.com>,
registered with Network Solutions, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Richard Hill as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 20, 2005; the National Arbitration Forum received a
hard copy of the Complaint on October 31, 2005.
On October 25, 2005, Network Solutions, Inc. confirmed by e-mail to the
National Arbitration Forum that the <onq.com>
domain name is registered with Network Solutions, Inc. and that 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 November 8, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 28, 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@onq.com by e-mail.
A timely Response was received and determined to be complete on November
28, 2005.
On December 9, 2005, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard Hill as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, OnQ LLC was established in California in June 2004 to
offer promotional and marketing services for a wide range of Fortune 500
retail-sales companies. It has filed an
application for a trademark to be used within the context of retail displays.
Complainant alleges that Respondent does not assert ownership of any
registered mark for ONQ.
When Complainant first looked into registering the disputed domain
name, that domain name pointed to a URL with the mention “for sale,” with
Respondent requesting upwards of $800,000 for the domain name. Finding this too high, Complainant instead
registered <onqsolutions.com>.
For the past two years, according to Complainant, the disputed domain
name pointed to a page with the mention “for sale,” but the site recently was
changed to say “coming soon.”
Complainant
alleges that bad faith registration and use is proven by the fact that
Respondent, in an e-mail, clearly stated that the domain name is for sale, and,
in a telephone conversation, quoted the price as between $80,000 and
$100,000. Respondent has held the
domain name for a number of years, yet has made no use of it, thus, alleges
Complainant, Respondent’s interest in acquiring the disputed domain name could
only have been for the purposes of selling it, a classic case of
cyber-squatting. According to
Respondent, this constitutes evidence of bad faith in accordance with 4(b)(i)
of the Policy.
B. Respondent
Respondent alleges that Complainant is engaging in Reverse Domain Name
Hijacking, that confusion is unlikely, and that the disputed domain name has
been used to provide bona fide goods and services.
Respondent states that it neither registered nor acquired the domain
name for the purpose of selling, renting, or otherwise transferring the domain
name registration, least of all to Complainant, who did not exist at the time
the domain was registered.
According to Respondent, Complainant has not established that the
disputed domain name is identical or confusingly similar to a trademark or
service-mark in which Complainant has rights.
According to Respondent, the Panel, in order to determine whether there
is a likelihood of confusion, should look at factors such as: (1) the degree of
similarity between the marks in appearance and suggestion; (2) the similarity
of products or services for which the name is used; (3) the area and manner of
concurrent use; (4) the degree of care likely to be exercised by consumers; (5)
the strength of Complainant’s mark; (6) actual confusion; and (7) an intent on
the part of the alleged infringer to palm-off his products as those of
another. Weighted against these
criteria, there is not one factor that would suggest a likelihood of confusion
in the present case.
Respondent alleges that it registered the disputed domain name in
January 1996 to develop and deliver online media content, which was delivered
under the OnQ banner through America Online.
At its peak, OnQ was the single most popular forum on America Online,
visited over five million times a month.
Subsequently, the domain name was no longer used. Respondent acknowledges that it considered
selling the contested domain name after it was evaluated by an independent
third party, in July 2004. However, as
no offer was sufficiently high, Respondent chose to retain the domain name for
use related to an online service currently in development.
Respondent reiterates several times that it could not possibly have
acted in bad faith with respect to Complainant because it registered the
disputed domain name before Complainant existed.
It invokes
the AntiCyberquatting Consumer Protection Act, 15 U.S.C. § 1116, to claim an
award of costs and attorney’s fees, on the grounds that Complainant has
knowingly made a false representation that the disputed domain name is
identical or confusingly similar to a mark.
It does not quantify its claim for a monetary award.
FINDINGS
Complainant has been in business under the
name ONQ since June 2004.
Respondent registered the contested domain
name in January 1996 and used it to provide bone fide goods and services, in
particular content delivered under the OnQ banner via America Online.
Respondent offered to sell the contested
domain name for a price well in excess of out-of-pocket costs.
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.
Respondent argues that, in order to find
confusing similarity, this Panel must consider the same factors as would be
considered by a national court in a trademark infringement action. Such is not the case. It is well established that, under the
Policy, a prima-facie comparison of the disputed domain name with the trademark
suffices to establish confusing similarity.
As the Panel said in Broadcom Corp. v. Becker, FA 98819
(Nat. Arb. Forum October 22, 2001):
Respondent is under the mistaken impression that this Panel is bound by US trademark law when determining the issue of confusing similarity. Such is not the case. Indeed Paragraph 15(a) of the Policy requires the Panel to:
decide a complaint on the basis of … these Rules and any rules and principles of law that it deems applicable.
That is, the Panel has broad latitude to adopt whatever criterion for confusion that it considers appropriate.
Panels have consistently held that strict application of the confusion criteria arising out of national trademark laws is not appropriate, and that a broader notion of confusion should be used in these proceedings.
This principle is well stated in WIPO case D2000-0047 <eautolamps.com>:
When
a domain name incorporates, in its entirety, a distinctive mark, that creates
sufficient similarity between the mark and the domain name to render it confusingly
similar. Accordingly, the Panel holds that Complainant has satisfied the first
prong of the ICANN test.
Furthermore it is clear the mere addition of letters or words to a trademark does not create a distinct mark and results in a domain name that is confusingly similar to the mark in question. See for example the Forum’s case FA0095762 <victoriasecret.com>; WIPO case D2001-0026 <guinessguide.com> (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); and WIPO case D2000-1214 <bodyshopdigital.com> (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark).
Complainant has provided evidence to the effect
that it operates a business under the name ONQ. Thus, it has common law trademark rights.
The disputed domain name is clearly identical
to Complainant’s common law trademark.
The Panel holds that Complainant has met its
burden of proving this element of the policy.
Respondent has provided ample evidence to
show that it registered and used the disputed domain name to provide bona
fide goods and services, namely content distributed via American
Online. This establishes a legitimate
interest in accordance with ¶¶ 4(c)(i) and (ii) of the Policy.
The fact that it subsequently ceased to use
the disputed domain name and offered it for sale does not mean that Respondent
lost its legitimate interest. On the
contrary, as discussed further below, offering to sell a domain name is, in
itself, a bona fide use, absent other circumstances indicating bad
faith.
The Panel holds that Respondent has a
legitimate interest in the disputed domain name.
Complainant invokes 4(b)(i) of the Policy,
according to which the following constitutes evidence of bad faith registration
and use:
Circumstances indicating that you have
registered or you have acquired the domain name primarily for the purpose of
selling, renting, or otherwise transferring the domain name registration to the
complainant who is the owner of a trademark or service mark or to a competitor
of that complainant, for valuable consideration in excess of your documents
out-of-pocket costs directly related to the domain name
Respondent could not possibly have
registered the disputed domain name for the purposes of selling it to the
Complainant, because the Complainant didn’t exist at the time the disputed
domain name was registered. Furthermore,
the Complainant didn’t have a trademark (registered or otherwise) at that time,
since the Complainant had not yet started its business operations.
Thus, this allegation of bad faith must
fail. Similar reasoning can be found in Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (“[W]e are of the unanimous view that the
trademark must predate the domain name.”); 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's company did not exist at the time of registration).
Complainant does not argue, much less provide
evidence for, any other type of bad faith behavior by Respondent.
Complainant makes much of the fact that
Respondent offered to sell the disputed domain name for a price well in excess
of out-of-pocket costs. This fact is
not disputed. But, as the Panel stated in Manchester
Airport PLC v. Club Club Limited, D
2000-0638 (WIPO August 22, 2000):
[S]elling a
domain name is not per se prohibited by the ICANN Policy (nor is it
illegal or even, in a capitalist system, ethically reprehensible). Selling of domain names is prohibited by the
ICANN Policy only if the other elements of the ICANN Policy are also
violated, namely trademark infringement and lack of legitimate interest.
Such is clearly not the case here. Indeed, this case is similar in this respect
to Mark Warner 2001 v. Larson,
FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering
to sell a domain name is insufficient to amount to bad faith under the Policy;
the domain name must be registered primarily
for the purpose of selling it to the owner of a trademark for an amount in
excess of out-of-pocket expenses); and LifePlan
v. Life Plan, FA 94826 (Nat. Arb. Forum July 13, 2000) (“[T]he mere
offering [of the domain name for sale], without more, does not indicate
circumstances suggesting that Respondent registered the domain name primarily
for the purpose of selling, renting, or transferring the domain name to the
complainant as required under [Policy ¶ 4(b)(i)].”)
The Panel holds that Complainant has not met
its burden of proving bad faith registration and use.
Paragraph 1 of the Rules defines Reverse Domain Name Hijacking:
Reverse
Domain Name Hijacking
means using the Policy in bad faith to attempt to deprive a registered
domain-name holder of a domain name.
The general conditions for a finding of bad faith on the part of the complainant are well stated in Smart Design LLC v. Carolyn Hughes D2000-0993 (WIPO, October 18, 2000):
Clearly, the launching of an unjustifiable Complaint with malice aforethought qualifies, as would the pursuit of a Complaint after the Complainant knew it to be insupportable.
These conditions are confirmed in Goldline International, Inc. v. Gold Line, D2000-1151 (WIPO, January 4, 2001) and Sydney Opera House Trust v. Trilynx Pty. Limited, D2000-1224 (WIPO, October 31, 2000) (where the condition is stated as “the respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge”), which in turn cites Plan Express Inc. v. Plan Express D2000-0565 (WIPO, July 17, 2000).
Complainant’s only allegation of bad faith registration and use is based on the fact that Respondent offered to sell the disputed domain name for a price well in excess of out-of-pocket costs. But 4(b)(i) of the Policy clearly states that such behavior is to be considered in bad faith only if the disputed domain name was acquired primarily for the purpose of selling it to Complainant who is the owner of the trademark.
Complainant did not exist when Respondent registered the disputed domain name, and Complainant was well aware of this. Thus, Complainant should have known that its Complaint was groundless and doomed to failure from the start.
The Panel holds that filing the Complaint—in the face of clear knowledge that it must fail—amounts to abuse of the administrative proceeding and Reverse Domain Name Hijacking.
However, the Panel
has no power to award costs or other damages.
Indeed, 4(i) of the Policy explicitly restricts the Panel’s power to
ordering, if justified, “the cancellation of your domain name or the transfer
of your domain name registration to the complainant”.
DECISION
For the reasons set forth above, the Panel concludes that relief shall
be DENIED. The Complaint is
dismissed.
The Panel concludes that Complainant has engaged in Reverse Domain
Name Hijacking.
Richard Hill, Panelist
Dated: December 27, 2005
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