National Arbitration Forum

DECISION

Picture it SOLD!, Inc. v. Strathcom Media Inc.

Claim Number: FA0602000645998

PARTIES

Complainant is Picture it SOLD!, Inc. (“Complainant”), represented by Kevin McGinnis, 600 Harrison St., Berkeley, CA 94710. Respondent is Strathcom Media Inc. (“Respondent”), represented by Rob Reay, 8407 A Coronet Road, Edmonton, Alberta, T6E 4N7, Canada.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <pictureitsold.com> and <pictureitsold.org>,

registered with All West Communications, Inc. d/b/a Aw Registry.

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.

Carol M. Stoner, Esq. as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“NAF”) electronically on February 15, 2006;

On February 16, 2006, All West Communications, Inc. d/b/a Aw Registry confirmed by e-mail to the National Arbitration Forum that the <pictureitsold.com> domain name is registered with All West Communications, Inc. d/b/a Aw Registry and that the Respondent is the current registrant of the name. All West Communications, Inc. d/b/a Aw Registry has verified that Respondent is bound by the All West Communications, Inc. d/b/a Aw Registry 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”).

Complainant filed an Amended Complainant on February 23, 2006, which was

received by NAF on February 27, 2006. The Amended Complaint amended as to

make the additional domain name <pictureitsold.org> a subject of the Complaint,

and stated, in regards thereto, that All West Communications, Inc. d/b/a Aw Registry was the Registrar of the additional domain name.

On March 3, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 23, 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@pictureitsold.com and postmaster@pictureitsold.org by e-mail.

A timely Response was received and determined to be complete on March 17, 2006.

On March 22, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol M.Stoner, Esq.

as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names <pictureitsold.com> and <pictureitsold.org> be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that Respondents’ domain name registrations of <pictureitsold.com> and <pictureitsold.org.> are identical or confusingly

similar to its business name of PICTURE IT SOLD!, which has also been

registered as a federal service mark. Complainant further contends that Respondent

had no rights or legitimate interests in the domain names, yet registered and renewed

the disputed domains in bad faith, for the purpose of diverting internet inquiries

intended for Complainant, to an unrelated website owned by Respondent.

B. Respondent

Respondent contends that Strathcom Media Inc. registered the domain name <pictureitsold.com> on June 22, 1998, and the domain name <pictureitsold.org> on April 14, 2005, for the future purpose of using them for online businesses. On June 14, 2003, Respondent received an email, advising that Complainant was starting a new business, and inquiring as to the sale of the domain names by Respondent. Respondent refused to sell the domain names to Complainant, who thus never possessed, nor acquired,

rights or legitimate interests in the domain names. Complainant thereafter, without rights or permission, used the confusingly similar business name PICTURE IT SOLD and registered and used the confusingly similar servicemark PICTURE IT SOLD!

Therefore, Respondent had rights and legitimate interests in the disputed domain

names and registered and renewed these domain names in good faith.

FINDINGS

Complainant has established that the <pictureitsold.com> and <pictureitsold.org> domain names registered by Respondent are confusingly similar to the registered

service mark of Complainant. However, Complainant has not established that

Respondent lacks rights or legitimate interests in the domain names; nor has

Complainant established that the domain names have been registered and are being

used in bad faith. As such, the Panel finds that the relief requested by Complainant is denied and the <pictureitsold.com> and <pictureitsold.org> domain names shall

not be transferred 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.

Identical and/or Confusingly Similar

Respondent’s domain names <pictureitsold.com> and <pictureitsold.org>

are confusingly similar to Complainant’s PICTUREITSOLD! Mark, because they incorporate Complainant’s Mark in its entirety, with the mere additions of the

generic top-level domains of “.com” and “.org”, which are not sufficient to distinguish

the domain names from the Servicemark. See Busy Body, Inc. v. Fitness Outlet,

D2000-0127 (WIPO Apr. 22, 2000) (finding that “the addition of the generic top-level domain (gTLD) name “com” is...without legal significance since use of a gTLD is required of domain name registrants”); see also Pomellato S.p.A. v. Tonetti, D2000-

0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainants’ mark because the generic top level domain (gTLD) “.com” after the name POMELLATO

is not relevant).

Complainant has satisfied ICANN Policy Par. 4 (a)(i).

Rights or Legitimate Interests

The Panel finds that Respondent has a right and legitimate interest in the domain name <pictureitsold.com> because Respondent registered this domain name in 1998, well before the date of Complainant’s Service mark application was filed with the USPTO

in 2004. Therefore, Respondent registered said domain name before Complainant established rights in the Mark. See Latent Tech Group , Inc. v. Fritchie, FA 95385 (Nat..Arb. Forum Sept. 01, 2000) (finding that the respondent does have a legitimate interest in the domain name where the complainant applied for registration of the mark after the respondent registered the domain name and the complainant has not proven any earlier use of the mark); see also Warm Things, Inc. v. Weiss, D2002-0085

(WIPO Apr. 2002) (finding that the respondent had rights or legitimate interests in a domain name when its registration of that domain name occurred before the complainant had established rights in its alleged mark).

Further, prior to any purported adoption or use of the disputed domain names by Complainant, Complainant acknowledged Respondent’s rights and legitimate interest

In the <pictureitsold.com> domain name in his email of June 1, 2003 to Respondent, wherein he stated that “He and his wife are starting a small business in California called Picture It Sold” and inquired as to Respondent’s interest in selling the rights to this domain name.

With regards to Respondent’s domain name <pictureitsold.org>, his rights are a bit

more problematic; however, his legitimate interests are solid. Respondent registered this domain name on July 14, 2004, which was after Complainant filed for USPTO

registration on February 3, 2004. However, in a covert second email, dated April 6, 2004, Complainant stated that “he was looking into domain names and really liked <pictureitsold.com> and offered to buy it for $100.00 US, concealing the fact that on February 3, 2004, he had applied to the USPTO for registration of PICTURE IT SOLD!, for an on-line retail consignment store featuring household goods, clothing automobiles, purses, backpacks, shoes, cameras, jewelry and furniture, and concealing his so-called prior use of the name, as he had stated first use of July 1, 2003 and first use in interstate commerce of August 11, 2003, in his USPTO application.

Respondent, in an email of April 6, 2004, declined Complainant’s offer to purchase and stated that “he has significant plans for the name.” Therefore, Respondent had both disputed rights and legitimate interests in a second extension of a name which he calculated that Complainant would co-opt. The Panel finds that Respondents’ possession of these disputed rights and legitimate interests in the <pictureitsold.org> domain name are sufficient to negate ICANN’s second prong of “no rights or legitimate interests in respect of the domain name” (emphasis added).

Complainant has not satisfied ICANN Policy Par. 4(a)(ii).

Registration and Use in Bad Faith

Bad faith registration of <pictureitsold.com> is negated because Respondent registered the domain name in 1998, six years before Complainant applied for USPTO registration of the PICTURE IT SOLD! Service mark in 2004, and eight years before same was registered in 2006; that is, Registration No. 3,037,580. Respondents’ registration of <pictureitsold.org> on July 14, 2004, cannot be proven to be in bad faith, as Respondent had declined Complainant’s offer to purchase in April of 2004, which offer had concealed Complainant’s alleged use and prior PTO registration. In addition, there is no bad faith use of either disputed domain name, in that, Respondent did not use either domain name to resolve to its own competing website.

As the Panel has previously concluded, Respondent had disputed or established

rights and/or legitimate interests, in both the <pictureitsold.com > and <pictureitsold.org> domain names pursuant to ICANN Policy Par. 4(a)(ii). The Panel further concludes that Respondent did not register nor use the disputed names in bad faith, pursuant to Policy Par. 4(a)(iii). See Lee Procurement Solutions Co. v. Get LocalNews.com, Inc., FA 366270 (Nat.Arb Forum Jan. 7, 2005) (“Respondent's rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), allow a finding that there was no bad faith registration or use under Policy ¶ 4(a)(iii).”); see also Pensacola Christian College v. Gage, FA 101314 (Nat. Arb. Forum Dec.12, 2001) (“Because the Panel has found that Respondent has rights and interests in respect of [sic] the domain name at issue, there is no need to decide the issue of bad faith.”)

Complainant has not satisfied ICANN Policy Par. 4(a)(iii).

DECISION

As Complainant has failed to prove all three elements required under the

ICANN Policy, the Panel concludes that neither the <pictureitsold.com>

domain name, nor the <pictureitsold.org> domain name shall be

transferred from Respondent to Complainant.

Carol M. Stoner, Esq., Panelist
Dated: April 5, 2006