Gianni Dorini v. Worldwide Media, Inc. a/k/a
Michael Berkens
Claim Number: FA0512000615429
PARTIES
Complainant is Gianni Dorini (“Complainant”), Tigne Palace, Suite 7, Bisazza Street, Sliema, Malta. Respondent is Worldwide Media, Inc. a/k/a Michael Berkens (“Respondent”), represented by Stephen H. Sturgeon, of Law Offices of Stephen H. Sturgeon and Associates, PC, 11116 Hurdle Hill Drive, Rockville, MD 20854.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is <betclass.com>,
and it is registered with Domainbank.
PANEL
The undersigned – David H Tatham, G Gervaise Davis III and James A
Crary – 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(“the NAF”) electronically on December 27, 2005; the NAF received a hard copy
of the Complaint on December 27, 2005.
On December 28, 2005, Domainbank confirmed by e-mail to the NAF that
the <betclass.com> domain name
was registered with Domainbank and that the Respondent was the current
registrant of the name. Domainbank has
verified that Respondent is bound by the Domainbank 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 5, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 25, 2006 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@betclass.com by e-mail.
A timely Response was received and determined to be complete on February
7, 2006.
A timely Additional Submission was received from Complainant on
February 13, 2006.
On February 14, 2006, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the NAF
appointed David H Tatham, G. Gervaise Davis III and James A Crary as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
FACTUAL AND LEGAL GROUNDS
Complainant
Complainant was established in
May 2001 and shortly thereafter it registered the domain name <betclass.com>.
Since 2001 Complainant has used the BETCLASS mark in relation to an online
sports betting service, which it has publicized in some magazines.
More than US$400,000 has been
wagered through Complainant’s website in one year.
For technical reasons,
Complainant was not able to renew its domain name online with DomainBank and
Respondent registered the disputed Domain Name on 13 May 2002.
Respondent
Respondent
provided no specific facts about itself.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Mr. Gianni Dorini,
filed a very short half page Complaint in which he makes the following points:
·
Respondent has made no
legitimate use of the domain name “Betclass,” and as it has no business related
to the name “Betclass,” it registered the Domain Name “Betclass” in May 2002 in
bad faith and has no rights or legitimate interest in respect to said Domain
Name or Mark.
·
Respondent appears to be in
the business of selling domain names for profit. It is currently advertising on
various websites where, if people want a domain they can click and be exposed
to different domain names for them to bid for. In November 2005 Complainant
offered US$2,000 for the disputed domain name but Respondent wanted $20,000.
He attached to this a sworn
Affidavit, of which the following is the relevant text –
1. I am a the [sic] director of the mentioned company
Betclass Ltd, a registered online gaming agency by the Maltese Gaming Authority
, located at Tigne Palace, Suite 7, Bisazza Street, Sliema , Malta SLM 15. I
have held the position since January 2005. I have personal knowledge of the
facts stated in this affidavit. To my knowledge, all of the facts stated in
this affidavit are true and correct.
2. Betclass Ltd has been
operating since 2001 and has been offering online betting since then.
3. Betclass Ltd has its own
domain names that carry the trade mark name Betclass www.betclass.net
/.it/.biz/.co.uk and also advertises on other betting forums.
B. Respondent
At the outset, Respondent pointed out that the UDRP was established to
permit the expedited disposition of clear abuses and that a clear abuse was
certainly not present in the instant case.
It drew attention to the fact that, in confirming the purpose of the
UDRP process, one of the undersigned Panelists, G. Gervaise Davis III, Esq.,
stated in the case of America Online, Inc. v John Deep d/b/a Buddy USA Inc.,
FA 96795 (Nat. Arb. Forum July 7,2001), that “the purpose of the ICANN UDRP is to deal with simple, clear,
abusive registrations of domain names, and not complex trademark
disputes or to inject the Panel’s views that someone should not be doing this
since it might be wrong or unfair.” [Underlining added]
Respondent also referred to the case of J. Crew v. Crew.com,
D2000-0054 (WIPO Apr. 25, 2000), where the following similar statement
appeared, “[t]he ICANN policy is very
narrow in scope; covers only clear cases of "cybersquatting" and
"cyber piracy," and does not cover every dispute that might rise over
domain names. See, for example, Second Staff Report on Implementation Documents
for the Uniform Dispute Resolution Policy (October 24th, 1999),
http://www.icann.org/udrp/ udrp-second-staff-report-24oct99.htm 4.1(c)”
Respondent contended that the instant case is not a clear case of
“cybersquatting” and “cyber piracy”, and accordingly requested the Panel not to
grant the Complainant’s request to have the Respondent’s domain name
transferred.
IDENTICAL OR CONFUSINGLY
SIMILAR
Under this heading Respondent contends that although Complainant made
certain statements with respect to its trademark rights in the term Betclass
Ltd nevertheless “no definite proof
whatsoever” was provided to prove that Complainant does, in fact, own these
trademark rights.
This failure is contrary to, and not in compliance with, ICANN Rule 3(b)(viii)
which requires that there be specification of the trademark or service mark on
which the complaint is based, or with
ICANN Rule 3(b)(xv) which
specifically requires documentation to prove that the Complainant owns a
trademark
Respondent also pointed out that UDRP case law has held that failure to submit a formal trademark
certificate or other comparable authenticated document is fatal to a complaint,
and quoted a number of UDRP Decisions to support the principle that a
Complaint must specify the details of the alleged trademark and must provide
documentation of the existence of the trademark. Respondent contends that the
Complaint in the instant case fails to provide these required elements.
NO LEGITIMATE INTEREST IN THE
DOMAIN NAME
Under this heading, Respondent further contends that Complainant has
also failed to sustain its burden of proving that Respondent did not have any
legitimate interest in the domain name and only makes some unsupported
statements that do not relate to the issue of the Respondent’s “legitimate
interest in the domain name.”
Respondent maintains that in a domain name dispute under the UDRP, the burden
of proof is on a Complainant and he referred to a number of UDRP Decisions in
this respect.
Respondent contends that Complainant has failed to satisfy the test
laid down in Policy ¶ 4(a)(ii), in that he has failed to prove that the
Respondent has no rights or legitimate interests in respect of the domain
name.
Nevertheless, despite the burden of proof
being on the Complainant, Respondent set out to demonstrate that it does have a
legitimate interest in the disputed domain name, referring to one of the
several circumstances in paragraph 4(c) of the Policy which, if proved,
demonstrate that a Respondent has rights or legitimate interests to the domain
name.
Respondent asserts that it has rights in the domain name since it has
engaged in the preparation for the use of the domain name in connection with a
bona fide offering of goods and services before any notice of the dispute.
Attached to the Response was what Respondent described as a “notarized
affidavit signed under oath of the top website designer and programme” which
confirms that the Respondent has, inter alia, “engaged in a considerable
amount of planning, development and refinement of the website for BETCLASS.COM
in order to utilize the domain name and website for a profitable business
activity as well as for educational services provided for a fee. Considerable materials and resources have
been invested and services have been purchased for this purpose.”
Respondent concludes this section of the Response by saying that
although the Respondent does not have the burden of proving that it does have
legitimate rights in the domain name, it believes it has provided substantial
evidence, legal rationale, and case law support to prove that Respondent does,
in fact, have legitimate rights in the domain name.
BAD FAITH
Once again Respondent points out (with reference to several UDRP
Decisions) that the burden of proving bad faith lies on a Complainant and that
in this case, Complainant has completely failed to satisfy that burden.
Respondent emphasized that the Uniform Domain Name Dispute Policy requires that
Complainant must prove bad faith both at the time of registration and
in the current use of the domain name but in this case Complainant has failed
to do either.
Indeed, Respondent contends that Complainant’s only allegations with
respect to the presence of “bad faith” are that it has offered to purchase the
domain name and that there has been some communication initiated by the
Complainant.
In support of its argument, Respondent refers to several UDRP
Decisions, as well as quoting an extract from McCarthy on Trademarks and
Unfair Competition (2000).
Respondent then quotes extensively from the Policy and copies the
wording of the Affidavit from one of its employees which was annexed to the
Response, as proof that Respondent:
·
did not
register or acquire the disputed domain name primarily for the purpose of
selling, renting, or otherwise transferring the domain name registration to the
complainant or to one of his competitors for valuable consideration in excess
his out-of-pocket costs in registering the domain name;
·
did not
register the disputed domain name in order to prevent Complainant from
reflecting the mark in a corresponding domain name, and has not engaged in a
pattern of such conduct;
·
did not
register the disputed domain name primarily for the purpose of disrupting the
business of a competitor; and
·
has not used
the disputed domain name to attract, for commercial gain, Internet users to its
web site, by creating a likelihood of confusion with the complainant's mark as
to the source, sponsorship, affiliation, or endorsement of its web site or
location or of a product or service on its web site.
Respondent concludes by contending that as no conclusive evidence has
been presented by Complainant to show any of the circumstances listed in the
Policy or any other circumstance of bad faith, the Complainant has failed to
establish this required element and in particular Complainant has failed to
prove that there was bad faith both at the time of registration and
in the current use of the domain names.
C. Additional Submission
Complainant filed an Additional Submission,
with several annexes, which was far more comprehensive than the initial
Complaint. In it, Complainant states that since it was incorporated in May 2001
it has used and promoted its goods and services under the trademark BETCLASS,
in particular through its web sites <betclass.com>,
<betclass.net> and <betclass.co.uk>. In addition, Complainant is
the owner of the 2005 Maltese trademark registrations No. 43267 for ‘Bet Class’
(device mark) and No. 43266 for ‘BET CLASS’ (word mark), copies of which were
annexed to the Submission. The disputed domain name can be considered identical
to Complainant’s registered trademark “BETCLASS” and to Complainant’s trade
name Betclass Ltd.
Complainant maintains that the first test under Policy ¶ 4(a) may still
be met even though the disputed domain names were registered before the
trademark in question. In other words, Complainant argues, this test requires
the existence of rights in a trademark, but the date of such rights
registration is not decisive and Complainant referred to two UDRP Decisions to
this effect.
Respondent’s lack of rights and
legitimate interest
Complainant states
that:
(a) no agreements, authorisations or licenses have
been granted to Respondent to use Complainant’s trademark;
(b) The use of Complainant’s entire mark in the
Domain Name, makes it difficult to infer a legitimate use of the Domain Name by
Respondent because the domain name included Complainant’s entire trademark and
because it is not possible to conceive
of a plausible circumstance in which Respondent could legitimately use the
domain name;
(c) Complainant registered and used the domain name <betclass.com>
before the Respondent, namely on April 1, 2001 when it was registered in the
name of Maurizio Pieretti the Managing Director of Betclass Ltd., but
immediately after the company was incorporated the domain name was transferred
to Betclass Ltd.;
(d) Complainant has used the BETCLASS mark to offer
online sports betting and has promoted the trademark in some magazines. Through
the web site at <betclass.com> bets were placed for an amount
exceeding US$400,000 in the year from April 2001 to April 2002;
(e) Complainant started operating and publishing
the company’s services, always under the trademark BETCLASS, through the
corresponding web sites at <betclass.com>,
<betclass.net>, and
<betclass.co.uk> immediately after its registration; and annexed to the
Submission were a table of Usage Statistics confirming the above figures, and
Complainant’s Investment data for 2001. Subsequently, due to an unknown
technical problem, DomainBank.com allowed the domain name to lapse in 2002. The
disputed domain name was then registered by Respondent, immediately afterwards,
preventing Complainant from re-registering it;
(f) as soon as Respondent registered the disputed
domain name, he placed on its home page sponsored links to Complainant’s
competitors, and afterwards an advertisement stating : “this domain is for
sale”;
(g) Complainant then tried to buy the domain name
and offered US$2000 for it but Respondent refused, only to request the much
higher amount of US$20,000. Copies of the relevant exchange of e-mails, all
dated in November 2005, were annexed to the Submission;
(h) Upon
Complainant’s information and belief, Respondent has no registered trademark
identical to or including the word “betclass” as can be proven by the fact that
there was no mention of any trademark or other rights in the name BETCLASS in
the Response;
(i) Upon
Complainant’s information and belief, Respondent, since its registration, has
never made any bona fide use of the disputed domain name and has not become
known under this domain name. In addition, the Response confirms Respondent’s
lack of any right or legitimate interest in the domain name. Without
demonstrating or otherwise providing any proof of any rights in the disputed
domain name that he might have, the Response relies primarily on a plethora of
legal arguments and innumerable prior decisions but does not even try to
explain why, if he was conducting a bona fide offering of goods and services,
he put the disputed domain name on sale immediately after its registration and
maintained the same on sale for years. Given the above evidence, Complainant
leaves it to the Panel to decide if and how to consider the credibility of the
Affidavit Under Oath signed by Adam Matuzich and particularly his affirmation
that: “I know that neither he
(Respondent), his company, his business activities nor any of his associates
have ever sold or attempted to sell any domain name”. Complainant points
out that this affirmation is in fact the only part of the Affidavit that was
not copied into the Response. Complainant also asserts that although the
affirmation in the Affidavit “has engaged
in a considerable amount of planning, development and refinement of the website
for BETCLASS.COM in order to utilise the domain name and website for a
profitable business activity as well as for educational services provided for a
fee” may be confirmation that Respondent registered the domain name and used
it for commercial gain, it in no way demonstrates that this use or preparation
to use the domain name is in connection with a bona fide offering of goods or
services. Even less, it does not confer on Respondent any legitimate right on
the disputed domain name. On the contrary, as stated in several prior decisions
rendered under the UDRP Policy, the registration and use of a domain name
corresponding to a third party’s trademark, in order to create a search engine
of sponsored links for commercial gain is evidence of bad faith. Visitors to
the site at <betclass.com> are currently presented with a page
that is basically composed of sponsored links to third parties’ web sites
unrelated to those of the Complainant and competing with him. Complainant
considers it evident that this use of the disputed domain name cannot be
considered a bona fide use.
Registration and use of the
disputed domain name in bad faith.
Regarding the circumstances indicating that the
domain name was registered or acquired primarily for the purpose of selling,
renting or transferring it to the rightful owner of the trademark, Complainant
considers that Respondent is not making any good faith use of the disputed
domain name. Moreover, there are reasons to believe that Respondent knew of Complainant’s
activity and trademark when registering the disputed domain name. This belief
is supported by the fact that:
a) Respondent registered the disputed domain name
immediately after Complainant’s registration lapsed which can be no
coincidence. On the contrary it was probably due to the fact that Respondent,
knowing that the domain name was already registered by Complainant, placed a
“Backorder Now” e.g. from SnapNames;
b). Respondent immediately after his registration
of the disputed domain name used the same to advertise sponsored links to
Complainant’s competitors. It is therefore evident that Respondent, when
registering this domain name was aware not only of Complainant’s trademark but
also of its field of use. This implies actual knowledge of the trade mark BETCLASS, so Complainant alleges that
Respondent chose and registered the disputed domain name aware of the fact that
BETCLASS was Complainant’s
trademark, promoted and used mainly in the online sports betting field. Actual
knowledge of the Complainant’s rights on the trademark is a factor that has
been repeatedly considered in previous UDRP decisions as supporting bad faith.
With regard to whether the domain name was registered to prevent the
owner of the trademark from reflecting the mark in a corresponding domain name,
Complainant states that the actual registration of the Domain Name by the
Respondent de facto prevents
Complainant, the rightful owner of the trademark, from using it in the
corresponding domain name.
Although it cannot be stated that the intention of Respondent was to
disrupt Complainant’s business, according to Complainant, it is definitely
confirmed that he has been and is severely hindered and penalised by the use of
this Domain Name which is misleading Internet users and creating a likelihood
of confusion with Complainant’s trademarks and domain names.
As regards the use of the domain name to attract Internet users by
creating a likelihood of confusion with Complainant itself, it is confirmed
that Respondent has never received any authorisation to sell products or
services under the Complainant’s trademark in any form, and that the domain
name has never been used in good faith.
Complainant considers that several of the criteria set out in the case
of Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) are present in this case. In that
Decision it was said: “The four criteria set forth in the Policy
paragraph 4(b) are nonexclusive. In addition to these criteria, other factors
alone or in combination can support a finding of bad faith”. See Telstra Corp. Ltd., D2000-0003
(WIPO Feb. 18, 2000).
Nonexclusive Criteria:
Actual Knowledge
Complainant alleges that Respondent knew or should have known of
his trademark and services at the time he registered the domain name. Thus
Respondent had actual knowledge of Complainant’s mark.
Use of Entire Mark Without Plausible Good Faith
Use
The use of Complainant’s entire mark in the Domain Name makes it
difficult to infer a legitimate use of the Domain Name by Respondent. No
plausible explanation exists as to why Respondent selected the name
Betclass.com as a Domain Name other than to trade on the goodwill of
Complainant.
Use of the domain name
Respondent’s use of the disputed domain name to
advertise links to web sites promoting and/or offering products and services of
third parties similar to and also competing with those provided by Complainant
cannot be considered a bona fide use.
Domain for sale
That this is the main purpose (or at least one of them) of the
registration is demonstrated primarily by the fact that for years on the
website at the disputed domain name there appeared the message: Betclass.com
For Sale. Secondly, because of Respondent setting a price, initially of US$15,000 and then US$20,000 to sell the disputed domain
name to Complainant. This clearly demonstrates not only the activity of
reselling domains but also the intent to profit from the goodwill of a domain
name previously used and registered by Complainant.
In addition, Complainant refers to two cases in which the present
Respondent has been involved: in RentRight,
Inc. v. Worldwide Media Inc. a/k/a/ Michael Berkens, FA 99675 (Nat. Arb. Forum Sept. 18, 2001), Respondent offered
to sell the domain name <rentright.com> for US$3,000; and in Deanna S.p.A. v. Worldwide Media Inc., D2003-0964 (WIPO Feb. 16, 2004), it
appears that the Respondent put the domain name <deanna.com> up for sale
for the sum of US$20,000 once it was challenged by the Complainant.
[Complainant points out that the domain name <deanna.com> is still
registered in the name of Worldwide Media Inc., and is on sale at the web site
<mostwanteddomains.com>.]
Complainant annexed a copy of a WHOIS printout showing that the domain
name <mostwanteddomains.com>, is
in fact registered by Respondent and Complainant alleges that at this site
there are thousands of domain names for sale. Complainant maintains that this
provides further proof that Respondent is engaged in the business of selling
domain names.
In view of all the above, Complainant believes that the statement in the
signed Affidavit, that “neither Respondent, his company, his business
activities nor any of his associates has ever sold or attempted to sell any
domain name”, is so blatantly in contrast with the demonstrated activity of
Respondent, that it should be considered as further inference of Respondent’s
bad faith and invalidate the credibility of the entire Affidavit.
DISCUSSION AND FINDINGS
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.
Firstly, with regard to the question of
similarity between Complainant’s trademark and the disputed domain name, it is
customary when comparing a domain name and a trade mark to disregard a suffix
such as ‘.com’, so in this case the comparison is between “Bet Class” and
“betclass”. Since spaces cannot appear in domain names, many cases have
concluded that in similar circumstances the domain name and the trademark are
identical, and the Panel sees no reason why it should not concur with this.
Complainant claims to have earlier rights in
the name ‘Bet Class’ by virtue of two trademark registrations of this name in
Malta, one of them a figurative device. However they date from March 8, 2005
which is significantly after the date when the disputed domain name was
registered by Respondent (May 3, 2002). It is also noteworthy that the
trademark authorities in Malta clearly felt that the mark was barely
distinctive, for they would only register it with a disclaimer to the exclusive
use of the words ‘bet’ and ‘class’ except when these were used together.
The lack of a trademark registration at the
time the disputed domain name was registered is not necessarily fatal to a
finding of identity or confusing similarity, as the Policy makes no specific
reference to the date when a Complainant acquired his rights. There are some
Decisions under the UDRP where it was held that the existence of trademark
rights dated subsequent to the registration of the domain name was held not to
invalidate a claim to have such rights. For example, in Digital Vision, Ltd. v. Advanced Chemill Systems, D2001-0827 (WIPO
Sept. 23, 2001), it was held that a trademark registration that post-dated the
registration of the domain name was sufficient, although the Panel remarked it
could “be relevant to the assessment of
bad faith”. This case was cited approvingly in A B Svenska Spel v. Andrey Zacharov, D2003-0527 (WIPO
Oct. 2, 2003) in which the domain name had been registered in August 1998 and
the Complainant’s trademark in August 2002. See also the recent Decision in MediaSpan Group, Inc. v. Raghavan
Rajagopalan, D2005-1282 (WIPO Feb. 20, 2006) in which the Panel denied the
Complaint because Complainant’s rights in MEDIASPAN were non-existent when the
disputed domain name was registered so there was no bad faith.
It would seem that in neither of the above
quoted Decisions were common law rights cited in addition to the trademark, but
this Panel feels that they are an issue in this case for Complainant’s
trademark is merely two common descriptive words conjoined, and in those
circumstances the onus is surely on Complainant to prove that his mark has
acquired a secondary meaning through use. The “WIPO Overview of Panel Views on Selected UDRP Questions” published
in 2005 (“the WIPO Overview”) states that the consensus view among Panelists is
that in order to rely on common-law or unregistered trademark rights a
Complainant “must show that the name has become a distinctive identifier
associated with the complainant or its goods and services”. As was said in
the case of Essential Travel Ltd v.
essentialtravel.com and Underground Digital Media Ltd., D2004-0205 (WIPO July 7, 2004), “[t]o
acquire common law trademark
rights, both under English law and under the case law which has developed under
the Policy, a Complainant must establish evidence of acquired distinctiveness.
The burden in this respect is particularly high where the mark asserted
comprises words in common usage -- namely, ESSENTIAL TRAVEL -- as it does in
this case.” [Emphasis added.]
In the present case, Complainant’s trademark Bet Class is, like
ESSENTIAL TRAVEL, descriptive of the services for which it is used. However the
only ‘evidence’ of common law rights filed by Complainant were a copy of a
letter from the authorities in Malta by which it was granted permission to
operate a betting office from June 17, 2001, a page containing some details for
Complainant’s expenditure in 2001 amounting to $486,000, and some figures
showing the use of his website for 2001/2002. From this latter it would appear
that by April 2002 visits to his websites were running at over 23,000 per
month. It was also claimed that between April 2001 and May 2002 over $400,000
had been wagered through the web site. In the opinion of the Panel, such use is
not sufficient to be able to claim that a mark had acquired sufficient
secondary meaning to become registrable as a trademark, and even though the
tests to be applied under the UDRP are less stringent, the Panel feels that
Complainant’s use was not sufficient for him to have established common law
rights in the descriptive name Bet Class – as opposed to its use in the form of
the company name Bet Class Limited.
Regarding this use as a business name, we think it very
relevant to quote at length from the Decision in the case of Candy Direct, Inc. v. itsalldirect2u.com, FA 514784 (Nat. Arb. Forum July 13, 2005),
for the facts in that case were very similar to those in the present case–
Complainant has used the term CANDY DIRECT as a
business identifier for many years and the Panel is satisfied that Complainant
has rights in that business identifier. Under the Policy, however, Complainant
must have rights in a mark (trademark or service mark). Complainant has no
registration of the words CANDY DIRECT as a mark.
According to the Policy ¶ 4(a)(i), common law rights
are sufficient and a complainant thus need not hold a registered trademark to
establish rights in a mark. The ICANN dispute resolution policy is thus broad
in scope in that the reference to a trademark or service mark in which the
complainant has rights means that ownership of a registered mark is not
required and unregistered or common law trademark or service mark rights will
suffice to support a domain name Complaint under the Policy. See British
Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 27, 2000).
Respondent contends that the CANDY DIRECT mark is
merely composed of the descriptive word “candy” and the common term “direct”
and that Complainant’s mark cannot be afforded common law protection since it
has not acquired a secondary meaning. See Coupons Inc. v.
Motherboards.com, FA 192249 (Nat. Arb. Forum Sept. 8, 2003); see also
Advanced Relational Tech., Inc. v. Domain Deluxe, D2003-0567 (WIPO Oct.
13, 2003). To establish common law rights in a mark requires that Complainant
shows that its mark has acquired secondary meaning. In other words, Complainant
must establish that the public associates the asserted mark with its goods and
services.
Relevant evidence of secondary meaning includes length
and amount of sales under the mark, the nature and extent of advertising,
consumer surveys and media recognition. See Amsec Enters., L.C. v.
McCall D2001-0083
(WIPO May 3, 2001). Complainant states that the <candydirect.com> website
receives on average nearly three million unique visitors each year, that the
website is ranked within the top 45.000 websites as rated by the Alexa Web
Search system and that Candy Direct Inc.’s revenues in the year 2004 exceeded
two million dollars. Complainant further claims that the mark has been used
since May 1997 and that Complainant and its founder have spent over one million
dollars advertising and promoting Complainant’s candydirect.com website and the
CANDY DIRECT trade name and marks. This has according to Complainant resulted
in Complainant becoming the best-known non-manufacturer distributor of candy
and gifts on the Internet. To support this, Complainant has adduced as evidence
records of the independent web traffic service Alexa regarding the web traffic
for <candydirect.com> for the period of May 2002 through June 24, 2005.
Numerous decisions have determined that the relevant point in time when
Complainant must establish rights in its mark is before Respondent’s
registration of the domain name. See Transpark LLC v. Network Adm’r,
FA 135602 (Nat. Arb. Forum Dec. 11, 2002); see also DJR Holdings, LLC
v. Paul Gordon a/k/a IQ Mgmt. Corp., FA 141813 (Nat. Arb. Forum Jan. 16, 2003). Even if the Panel accepted Complainant’s
contention that it has common law rights in the CANDYDIRECT mark as true, such
rights must be established prior to Respondent’s registration of the disputed
domain name, that is to say before December 18, 2002.
In that case, the
Complaint was denied and yet the evidence of Complainant’s common law usage of
its business name was considerably greater than the use we have been supplied
with in the case of Bet Class Ltd.
The Panel therefore feels that it cannot accept
that Complainant has established its earlier rights, and so finds that Policy ¶
4(a)(i) has not been proved. However taking up Respondent’s suggestion that the
UDRP procedure might not be the correct forum for deciding this dispute, the
Panel notes that under paragraph 4(k) of the Policy, neither party is prevented
“from submitting the dispute to a court
of competent jurisdiction for independent resolution ……after such proceeding is
concluded.”
As the Panel has determined that Complainant has failed to satisfy the
requirements of Policy ¶ 4(a)(i), there is no need to proceed further and
consider whether Respondent has any rights or legitimate interest in the
disputed domain name or whether he registered or used it in bad faith. However
before signing off, the Panel would like to comment that in its opinion, this
case is characterized by sloppy presentations on behalf of both parties.
For Complainant, there is some confusion as to who is the actual
Complainant. In the Complaint, Complainant is identified variously as –
“Betclass Ltd,” or “Gianni Dorini BetClass Ltd,” or “Gianni Dorini”; in his
Affidavit Mr Dorini identifies himself as “a the (sic) director of the mentioned company Betclass Ltd”; while the
trademarks are registered in the name of BetClass Ltd. Both the Complaint and
the Additional Submission do not discriminate between Mr. Dorini and Betclass
Ltd. when referring to Complainant. The Panel therefore concluded that it
should do the same and, throughout, has treated the Complaint as coming from
either Mr. Dorini or Betclass Ltd. or BetClass Ltd.
Respondent filed a lengthy Response, but despite its length,
it is actually very light on actual facts and the Panel agrees with the comment
of Complainant’s attorney that it is little more than “a plethora of legal arguments and innumerable prior decisions”.
About the only valid assertion in the Response, beyond its questioning
that Complainant had sufficient rights to prevail, appears to be that
Respondent does have a legitimate right to the disputed domain name because he
was in the process of making preparations to use it. In support of this, an
Affidavit from one of his employees was filed. This does not provide any specific
proofs of any such preparations, nor does it only address that particular
issue, and nor is it sworn or notarized, as claimed. But in particular the Affidavit contains the
bald assertion “I know that neither
he, his company, his business activities nor any of his associates have ever
sold or attempted to sell any domain name.” The ‘he’ and ‘his’ referred to
are not identified, but in fact this statement is plainly wrong for, in the
Additional Submission, Complainant cites two cases, one before the National
Arbitration Forum (FA 99675) and one before the World Intellectual
Property Organization (D2003-0964), in both of which Respondent was
clearly identified as offering numerous domain names for sale. Complainant also
refers to a website at <mostwantedomains.com> which belongs to Respondent
and at which thousands of domain names are listed as being for sale. Thus in the view of the Panel, the Affidavit
is highly questionable.
DECISION
Having established that one of the three elements required under the ICANN
Policy has not been proved, the Panel concludes that relief shall be DENIED.
David H Tatham, Chairman
G Gervaise Davis III, James A Crary Panelists
Dated: March 1, 2006
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