New Jersey Divorce Center, Inc. v. iGenesis
Limited
Claim Number: FA0510000584783
PARTIES
Complainant is New Jersey
Divorce Center, Inc. (“Complainant”), represented by Donna A. Tobin, of Aronauer Goldfarb Re & Yudell LLP, 444 Madison Avenue, 17th Floor, New
York, NY, 10025. Respondent is iGenesis Limited (“Respondent”),
represented by Howard M. Neu, of Law Offices of Howard M. Neu, P.A., 1152 North Univeristy Drive, Pembroke Pines, FL 33024.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <divorcecenter.com>,
registered with Fabulous.Com Pty Ltd.
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.
Hon. Tyrus R. Atkinson, Hon. Ralph Yachnin, and Mr. Paul M. DeCicco, as
Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 24, 2005; the National Arbitration Forum received a
hard copy of the Complaint on October 27, 2005.
On October 24, 2005, Fabulous.Com Pty Ltd. confirmed by e-mail to the
National Arbitration Forum that the <divorcecenter.com>
domain name is registered with Fabulous.Com Pty Ltd. and that Respondent is the
current registrant of the name. Fabulous.Com
Pty Ltd. has verified that Respondent is bound by the Fabulous.Com Pty Ltd.
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 October 27, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 16, 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@divorcecenter.com by
e-mail.
A timely Response was received and determined to be complete on November
16, 2005.
A timely Additional Submission was received from Complainant on
November 21, 2005.
On November 30, 2005, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon.
Tyrus R. Atkinson, Hon. Ralph Yachnin and Mr. Paul M. DeCicco as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends as follows:
Respondent iGenesis, Ltd. (“iGenesis”) has
registered the domain name <divorcecenter.com>, which is identical
to Complainant’s trademark DIVORCE CENTER.
Complainant owns U.S. Reg. No. 2,902,903 for the mark for “Retail store
services featuring do-it-yourself legal forms and typing services.” Successful
trademark registration in the United States Patent and Trademark Office creates
a presumption of rights in a mark. Registered
marks hold a presumption under U.S. Trademark law that they are “inherently
distinctive and have acquired secondary meaning.”
Complainant has used its mark continuously since 1981 in connection with
providing forms and typing services to individuals wishing to procure an
uncontested divorce. Complainant has
provided such services for approximately 100,000 clients and has spent over
$3,000,000 advertising its goods in connection with its DIVORCE CENTER mark.
Complainant also offers franchises for its DIVORCE CENTER businesses under the
DIVORCE CENTER mark.
Identical or confusingly similar
Respondent’s domain name comprises Complainant’s
well-known mark in its entirety, with the addition only of the generic
top-level domain “.com.” This addition
is not sufficient to distinguish Respondent’s domain name from Complainant’s
mark. “Divorcecenter.com” clearly is identical to DIVORCECENTER.
Before any notice to Respondent of the dispute,
Respondent’s use of, or demonstrable preparations to use, the domain name or a
name corresponding to the domain name were not in connection with any bona fide
offering of goods or services.
Respondent is using the domain name in connection with a website
offering links to products and services in the area of divorce, which compete
with Complainant. Such use was prior to notice by Complainant and is not in
connection with any bona fide offering of goods or services.
Complainant is aware that current WHOIS
information for the domain name shows ownership by registrant iGenesis.com and
a date of creation of March 12, 1997.
Upon information and belief, the creation date information is
false. In about April 2005, the domain
name divorcecenter.com was registered by Modern Empire Internet Ltd. (“Modern
Empire”, the same registrant in ABC Distrib., Inc. v. Modern Empire Internet,
FA 126639 (Nat. Arb. Forum Nov. 13, 2002), in which the subject domain name was
ordered transferred from Modern Empire to Complainant and owner of a U.S.
Trademark Registration for the mark at issue).
On April 19, 2005 the status of the domain name changed, and on April
22, 2005 the name servers associated with the mark were changed to the servers
used today in connection with the domain name.
It was about that time that Complainant noted the owner of the domain
name, as reflected by WHOIS information, had changed. Prior to that time, a
Leslie Wright of Marietta, Georgia owned the domain name. Upon information and belief, Ms. Wright did
not use the domain name. A WHOIS report
shows ownership by Ms. Wright as of October 7, 1999, with a creation date of
March 12, 1997.
Upon learning of respondent Modern Empire’s registration and use of the
domain name Complainant immediately sent a cease and desist letter to Modern
Domain Internet. A lawyer named Mr.
Howard Neu responded on behalf of Modern Empire, confirming that his client
used the domain name “as a search engine for various legal matters.” The lawyer asserted that his client had used
the mark at least since March of 1997.
This representation was clearly false, as Ms. Wright owned the domain
name at that time. It is not known
whether Mr. Neu represents iGenesis. In the interest of resolving this matter
amicably, Complainant offered to purchase the domain name for Modern Empire’s
reasonable costs of registration.
Modern Empire refused to sell the name for lower than $13,000.
There is no proof that either registrant,
iGenesis, or its predecessor, Modern Empire ever has used the domain name in
connection with any bona fide offering of goods or services.
Respondent has no rights or legitimate interest
in the domain name pursuant to Policy ¶4(c)(ii). Neither Modern Empire nor the current Registrant, iGenesis Ltd.
can offer any evidence that either of them has ever been commonly known by the
domain name <divorcecenter.com>.
Complainant, as the owner of a U.S. Registration of the mark DIVORCE
CENTER, has not licensed or otherwise authorized Respondent to use its mark.
Thus, Respondent has no rights or legitimate interest in the domain name it has
adopted.
Respondent is not making a legitimate noncommercial or fair use of the
domain name. Respondent intends to commercially gain by misleadingly diverting
consumers or by tarnishing Complainant’s mark.
Neither Modern Empire nor iGenesis have made, or are making, a
legitimate noncommercial or fair use of the domain name. Complainant further contends that using a
trademarked domain name to link to a competing business is not a bona fide
business use of the domain name.
Bad Faith
Respondent should be considered as having been
registered and being used in bad faith pursuant to ICANN Policy ¶ 4(a)(iii) for
at least the following reasons:
Respondent or Modern Empire obtained in some way
the domain name at issue from Ms. Leslie Wright, for the purpose of preventing
Complainant, the owner of the trademark DIVORCE CENTER, from reflecting the
mark in a corresponding domain name.
Respondent and its related entities have engaged in a pattern of such
conduct. As shown in two reported domain name decisions, Modern Domain Internet
has a pattern of adopting the trademarks of others as domain names for such
purposes. Aero California S.A. v. Domainmonkey-1144, FA 494590 (Nat.
Arb. Forum June 7, 2005); ABC Distrib., Inc. v. Modern Empire Internet,
FA 126639 (Nat. Arb. Forum Nov. 13, 2002). Moreover, Complainant notes that
Modern Empire is also known as Franky Tong.
ABC Distrib., Inc. v. Modern Empire Internet a/k/a/ Franky Tong,
FA 126639 (Nat. Arb. Forum Nov. 13, 2002).
In another reported decision, Bank of Am. Corp. v. Tong, FA
128074 (Nat. Arb. Forum Dec. 9, 2002), the panel found that Franky Tong used
the complainant’s mark as a domain name which resolved to a search engine and
found that Mr. Tong was trading off the goodwill of the complainant’s mark by
diverting Internet traffic to its search engine for profit. The panel relied on yet another dispute
involving Mr. Tong in which he registered <expedia.com> and diverted
Internet traffic to a search engine. See
Bank of America, supra. Mr.
Tong’s address in Bank of America is similar to that used by Modern
Empire and iGenesis. It is clear that
iGenesis, Modern Empire, and Franky Tong are either related or are one and the
same. Each entity has misappropriated
the trademarks of others and used them to resolve to search engines offering
services related to the complainant’s mark.
Registrant’s bad faith and that of Modern Empire
also is demonstrated by their attempt to “tack” their date of use, which was
clearly after registration by Complainant of its mark, to that of Ms. Wright in
1997.
Respondent and Modern Empire also have registered
the domain name primarily for the purpose of disrupting the business of
Complainant. Respondent and Modern Empire have used an identical domain name to
operate a website that features links to competing services and products which
is evidence of bad faith.
Respondent registered the domain name after the
issuance of Complainant’s trademark registration. Respondent’s predecessor’s
attempts to misrepresent its date of registration likely were due to actual
knowledge of Respondent’s U.S. Trademark registration. In any event,
Complainant’s rights in the mark span over twenty years. Respondent can be
charged at least with constructive notice of Complainant’s rights, due to
Complainant’s registration in the U.S. Patent and Trademark Office and its
aggressive promotion of its mark in commerce.
Further, by using the domain name, Respondent and
Modern Empire have intentionally attempted to attract, for commercial gain,
Internet users to Respondent’s web site or other on-line location, by creating
a likelihood of confusion with Complainant’s mark as to the source,
sponsorship, affiliation, or endorsement of Respondent’s web site or location
or of a product or service on Respondent’s web site or location. Users familiar
with Complainant’s services will attempt to find Complainant by using its
trademark as a domain name. Once they do, they are directed to Respondent’s
site where similar services are offered.
B. Respondent
Respondent contends as follows:
Respondent iGENESIS Ltd is the successor in
interest to Modern Empire Internet, Ltd. who registered the domain name <divorcecenter.com>
on April 21, 2005, and has been using it as a search engine web site containing
links to various legal sites relating to the practice of Family Law. The site links to web sites on saving a
marriage after separation. The website is the most comprehensive information
portal that a consumer can find that is specific to assisting troubled
marriages and that has no advertising on the web site.
Complainant’s website,
<thedivorcecenter.com>, is directed specifically at New York and New
Jersey clients, sells complete divorces for $634.00 in New York and $549.00 in
New Jersey, provides directions on how to get to Complainant’s offices in
various locations in both states, sells franchises of their law office, and
allows clients to get a divorce by mail.
It is highly localized and self-serving.
Though
Complainant alleges that it has used its mark “Divorce Center” since 1981, it
did not obtain a Registered trademark for the words “Divorce Center” until
November 2004. Furthermore, its mark,
which is as generic as one can get and still be registered, is in class 035 for
“Retail store services featuring do-it-yourself legal forms and typing
services.” Respondent neither operates
a retail store nor provides do-it-yourself legal forms or typing services. Therefore, there can be no confusion between
Respondent’s Domain Name and Complainant’s mark.
Complainant’s
marks are not famous and its advertising is not sufficient to create secondary
meaning, given beforehand that distinctiveness is a requirement for common law
marks.
No
evidence of this fame or distinctiveness has been forthcoming from
Complainant. Respondent is located in
Hong Kong and had no prior knowledge of a trademark obtained 6 months earlier
for a business that advertises solely in New York and New Jersey.
Respondent argues that its use of the mark as a
domain name referencing a website merely for the purpose of redirecting
visitors to a different site constitutes a legitimate fair use, so long as this
use is not misleading to consumers and does not tarnish a trademark.
Respondent did not register the domain name in
question for the purpose of selling, renting or otherwise transferring the
domain name to Complainant or a competitor of Complainant. Respondent did not register the domain name
in question in order to prevent the owner of the subject trademark from
reflecting the mark in a corresponding domain name, nor has it done so. Respondent did not register the domain name
for the purpose of disrupting the business of a competitor, nor is it a
competitor of Complainant. Respondent
does not use the domain name to intentionally attempt to attract, for
commercial gain, Internet users to Respondent’s web site, by creating
confusion.
Respondent avers that Complainant does not
show “bad faith” registration and use
under Policy ¶ 4(b)(i). There is no
evidence in the Complaint or in the attachments thereto that Respondent engages
in a pattern of registering the trademarks of others as domain names. Nor can Complainant show that Respondent
intentionally attempted to create a likelihood of confusion with Complainant’s
mark.
C. Additional Submissions
In its supplemental submission Complainant
reiterates its contentions regarding the similarity of the mark and domain name
and points out that for the purposes of the Policy at least one panel has held
that a likelihood of confusion between the mark and the domain name is not
required. Complainant also urges that
the dissimilarities between the mark and the domain name pointed to by
Respondent, are not dispositive of the mark and Domain Name being identical or
confusingly similar under the Policy.
Complainant also claims that since it is not
asserting common law trademark rights but rather registration on the USPTO principal register that based on the
registration Complainant has acquired exclusive rights in the mark and the mark
has acquired secondary meaning. While the presumption might be rebutted,
Respondent failed to offer sufficient evidence to do so. Therefore, there
should be a finding that Complainant has rights in the mark. Complainant goes on to state that it has spent
considerable amounts on marketing its products, that the mark has become well
know with regard to pro se divorce forms and related services, and that
such evidences that Complainant’s mark has acquired secondary meaning.
FINDINGS
Although Complainant has shown that the Domain
Name is identical to a mark in which Panel assumes it has rights, Complainant
has failed to establish that Respondent lacks a legitimate interest and that it
registered and used the Domain Name in bad faith. Accordingly, the Panel denies the request to transfer the Domain
Name 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 at-issue mark and the Domain Name are identical. Disregarding punctuation, the string “divorcecenter” comprising Respondent’s second level domain name matches Complainant’s mark character for character. See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003). Furthermore, it is widely held that the top-level domain is insignificant since the top-level is a required element of every domain name. Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003).
The threshold issue of whether or not Complainant has sufficient trademark rights in the Domain Name to proceed under the UDRP is more problematic. While Complainant enjoys the presumption of trademark rights arising from the fact of registration on the Principal Register, the presumption is rebuttable. Panels have held that where, as here, the mark appears to be generic there must be an affirmative showing that the mark has acquired secondary meaning. In the instant case the Panel does not resolve this issue, but rather moves forward under the working assumption that that the Complaint has trademark rights in the DIVORCE CENTER while making no finding that it actually does. As shown below the resolution of this issue is not determinative of the ultimate outcome of this proceeding.
Respondent is neither known by the Domain
Name nor is it licensed to use the name.
Nevertheless the descriptive nature of the mark and the manner of its
use leads to a finding that Respondent does have some rights or legitimate
interests in the Domain Name.
Respondent has a legitimate right to incorporate generic terms when registering a domain name. See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also CRS Tech. Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (“CONCIERGE is not so associated with just one source that only that source could claim a legitimate use of the mark in connection with a website.”). If the generic terms are subject to trademark registration then we must consider whether or not the terms are used by Respondent in a trademark sense or in a descriptive sense. If the trademarked terms are being used to identify the source of the goods or services provided by the Domain Name registrant (or other party), then such use would be a trademark use and likely infringe any, if any, trademark owner’s rights. On the other hand if the terms are used to describe what goods or services provided, then such use might be considered a fair use and not offend another’s trademark in the generic terms.
Here, absent any
evidence to the contrary, it appears that the terms in the Domain Name are
being used precisely because of their descriptive quality rather than due to
any trademark value they might have. Respondent’s
website, referenced by the Domain Name, acts as a portal to web objects related
to divorce. In that regard the portal is aptly described as “divorce
center.” As such, the Domain Name seems
to be used in a descriptive sense rather than in a trademark sense. For example, persons looking for divorce
information might use as search engine keywords “divorce center” to locate
information and services generally about divorce and might likely be directed
to Respondent’s website.
Legitimate rights in the use of a common, descriptive, or generic phrase to provide paid advertising search results to relevant information is an issue that has been examined repeatedly under the Policy. Legitimate rights have been found in numerous cases. Some representative examples include the following: Snowboards-for-sale.com, Inc. v. Name Admin. Inc., D2002-1167 (WIPO Feb. 19, 2003) (<snowboardsforsale.com>); Canned Foods, Inc. v. Ultimate Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (<groceryoutlet.com>); Sweeps Vacuum & Repair Ctr., Inc. v. Nett Corp, D2001-0031 (WIPO Apr. 13, 2001) <sweeps.com>); Career Guidance Found. v. Utimate Search, D2003-0323 (WIPO Jul. 21, 2003) (<collegesource.com>); U.S. Nutraceuticals, LLC v. Telepathy, Inc., FA 365884 (Nat. Arb. Forum Jan. 17, 2005) (<naturedirect.com>); Lawfinders Assocs., Inc. v. Ultimate Search, D2004-0163 (WIPO May 28, 2005) (<lawfinder.com>); Minka Lighting, Inc. v. Hall, D2005-0684 (WIPO Sep. 21, 2005) (<ambience.biz>); Bag Boy LLC v. Wright, FA 530334 (Nat. Arb. Forum Sept. 15, 2005) (<bagboy.com>).
It is Complainant’s burden to prove that a
Respondent lacks rights or legitimate interests in the Domain Name. Because
there is a reasonable connection between Respondent’s use of the domain name as
a descriptor, rather than for any trademark value, Complainant has not
succeeded in proving that Respondent lacks rights or legitimate interest in the
Domain Name. See generally Canned Foods,Iinc. v. Ultimate Search Inc., FA 96320
(Nat. Arb. Forum Feb. 13, 2001) (respondent had legitimate interest in domain
name <groceryoutlet.com> because site consisted of portal
providing links to groceries and similar goods); Landmark Group v. DigiMedia.com,
L.P., FA 285459 (Nat. Arb. Forum Aug. 6, 2004) (respondent had legitimate
interest in domain name <landmarks.com> because site contained paid links
to “landmark”-related websites.).
Complainant alleges that Respondent acted in
bad faith in registering and using the Domain Name. In support of its contention Complainant presents evidence that
Respondent exhibited a pattern of registering the trademarks of others as
domain names. Respondent also asserts that the instant Domain Name registration
was made for the purpose of disrupting Complainant’s business and to cause
confusion thereby diverting web traffic from Complainant to Respondent. As to the later claims, Complainant presents
no compelling evidence. As to the former, while if taken as true Complainant
has shown that Respondent may have acted in bad faith with regard to prior
registrations, these prior bad acts standing alone do not logically lead to a
presumption that the at-issue Domain Name registration was made in bad faith.
Such an inference, resting solely only on Respondents prior foul registrations,
is speculative at best. While prior
conduct of Respondent might be competent circumstantial evidence, it is not
conclusive.
Perhaps more importantly there is no showing that Respondent was actually
aware of Complainant’s claimed trademark rights in the at-issue mark. Respondent avers in its Response that at the
time of registration it was unaware of Complainant’s claim of trademark rights.
Complainant suggests that constructive knowledge of Respondent’s trademark
registration shows bad faith. But while the fact of registration leads to a
pronouncement of constructive notice regarding Complainant’s trademark, there
is no direct evidence, or other competent evidence for that matter, that
Respondent had any actual knowledge of the mark at the time Respondent
registered the domain name.
If at the time of registration Respondent
lacked actual knowledge or belief of Complainant’s trademark rights, as appears
to be the case here, then a finding of bad faith registration is precluded. See
generally, Advanced Drivers Educ. Prods. and Training, Inc v. MDNH,
Inc. (Marchex), FA 567039 (Nat. Arb. Forum, Nov. 10, 2005). To hold otherwise would imply that the mere
fact of trademark registration necessitates a finding of bad faith. However, a
finding of bad faith by its nature entails that there be some intentional act
on the part of the party purported to be acting in bad faith such that that
party reasonably believes or should believe it is offending the rights of
another.
The lack of evidence regarding Respondent’s
knowledge of Complainant’s trademark rights coupled with facially
generic/descriptive nature of the mark allowed Respondent to register the and
use the domain name without running afoul of the UDRP’s “bad faith” prong.
Having not established all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Hon. Ralph Yachnin, Panelist
Paul M. DeCicco, Presiding Panelist
Dated: December 14, 2005
Panelist Tyrus R. Atkinson dissents and would have granted Complainant
the relief requested.
Hon. Tyrus R. Atkinson, Panelist
Dated: December 14, 2005
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