Kevin Aylward v. GNO, Inc. and Gregg Ostrick
Claim Number: FA0607000751622
Complainant is Kevin Aylward (“Complainant”), represented by Martin Schwimmer, of Schwimmer Mitchell Law Firm, 40 Radio Circle, Suite 7, Mt. Kisco, NY 10549. Respondent is GNO, Inc. and Gregg Ostrick (“Respondent”), represented by John Berryhill, 4 West Front Street, Media, PA 19063.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wizbang.com>,
registered with Moniker Online Services,
Inc.
PANEL
The undersigned certifies 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.
Honorable Karl V. Fink (Ret.), Mr. David E. Sorkin and Mr. Jeffrey M.
Samuels, as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 14, 2006; the National Arbitration Forum received a hard
copy of the Complaint on July 18, 2006.
On July 24, 2006, Moniker Online Services, Inc. confirmed by e-mail to
the National Arbitration Forum that the <wizbang.com>
domain name is registered with Moniker Online Services, Inc. and that the
Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is
bound by the Moniker Online Services, 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 July 25, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of August 14, 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@wizbang.com by e-mail.
A timely Response was received and determined to be complete on August
17, 2006.
A timely Additional Submission was received from Complainant on August
22, 2006 and determined to be complete pursuant to Supplemental Rule 7.
A timely Additional Submission was received from Respondent on August
29, 2006 and determined to be complete pursuant to Supplemental Rule 7.
On August 25, 2006, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Hon. Karl V. Fink (Ret.), Mr. David E.
Sorkin and Mr. Jeffrey M. Samuels, as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The
United States Patent and Trademark Office (“USPTO”) has granted a federal
trademark registration for the WIZBANG mark covering “news analysis and
features distribution.” This
registration date was January 3, 2006, with a date of first use of April 22,
2003.
Since
2003, Complainant has used the mark “WIZBANG” in connection with his news
analysis and commentary blogging website at <wizbangblog.com> and
<wizbang.blogspot.com>.
The term WIZBANG is well known throughout the blogging community
due to the popularity of the <wizbangblog.com> website and the attention
Wizbang receives by sponsoring events.
The domain name <wizbang.com> is confusingly similar to Complainant’s WIZBANG mark, incorporating the WIZBANG mark in its entirety.
Respondent has no legitimate interest in the Infringing Domain Name.
Respondent
has no connection or affiliation with Complainant and has not received any
license or consent, express or implied, from Complainant to use the WIZBANG
Mark in a domain name or in any other manner.
The Infringing Domain Name resolves to a web
page that reads “WIZBANG Poster Shop” and consists of thumbnail images
of posters for sale, ultimately resolving to a third party website,
<allposters.com>.
Respondent registered the <wizbang.com> domain shortly after a surge in traffic for Complainant’s blog,
resulting from publicity caused by Complainant’s selection as one of the
bloggers to cover the 2004 Republic National Convention.
Respondent’s bad faith is
manifested in several other ways. Respondent’s domain name incorporates the
entirety of Complainant’s mark.
Respondent is using the domain name to divert Internet users to an
active website, from which it is reaping commercial benefit.
Respondent has engaged in a pattern of bad
faith conduct by registering and using numerous infringing domain names in an
attempt to purposely attract Internet users to Respondent’s commercial web
site.
B. Respondent
Complainant has attempted to use the United States Patent and Trademark
Office to obscure certain facts concerning the registration and use of the
domain name by Respondent and Respondent’s predecessor.
In May 1994, computer graphics experts G. Andrew Johnston and Stuart
Rosen formed Wizbang! Software Productions Inc. In 1996, Wizbang Software registered the domain name <wizbang.com> as their corporate
website.
Wizbang Software wound up operations in 2002, and all remaining assets
of the company were transferred to Mr. Johnston and Mr. Rosen personally. Rights in and to the Wizbang Logo, including
claims for past and present infringement, and the right to make derivative
works, have since been assigned exclusively to Respondent, GNO Inc., for use in
connection with GNO Inc.’s affiliate poster sales at the “Wizbang Poster Shop.”
In mid-2003, the domain name <wizbang.com>
expired. Respondent obtained the domain
name through an expired domain auction service on September 28, 2004.
On October 7, 2004, Complainant wrote to Respondent to inquire about
buying the name, which Respondent was not willing to sell.
On November 16, 2004, clearly having been aware of the prior
registration of the domain name, Mr. Aylward applied to obtain a federal
trademark registration for services having nothing to do with the Respondent’s
use of the domain name. Complainant
then waited until after the registration issued to bring this proceeding.
Respondent uses the common term “Wizbang” in
- Wizbang Technologies
at <wizbang.co.nz>
- Dr. Wizbangs
Warehouse at <drwizbang.com>
- WIZbang Computers at
<wizbangcomputers.com>
- WIZBANG PRODUCTIONS
at <wizbangproductions.com>
Complainant does not dispute that the Respondent has been making use of
<wizbang.com> for its “Wizbang
Poster Shop” to sell posters since prior to notification of a dispute.
All Respondent knew at the time of registration of the domain name <wizbang.com> was that it had
been used for several years and then abandoned by a defunct software
publisher. Respondent had no knowledge
of Complainant, nor did Respondent have any duty to know of Complainant.
C. Additional Submissions
The Forum’s Supplemental Rule 7 sets forth procedure for the submission
of additional statements and documents, but it does not confer upon parties any
right to have such submissions considered by a panel.
[T]he controlling provision is Paragraph 12 of ICANN’s Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), under which
discretion to request such supplementation rests with the Panel. In general, a Panel should consider
additional submissions only in exceptional circumstances, such as where they
reflect newly discovered evidence not reasonably available to the submitting
party at the time of its original submission or rebut arguments by the opposing
party that the submitting party could not reasonably have anticipated.
Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006)(citations omitted).
The Panel has reviewed the parties’ proposed additional submissions for
the purpose of determining whether to consider them and has concluded that
additional submissions are not warranted and therefore they have not been
considered by the Panel.
FINDINGS
Complainant has a federal trademark
registration for the WIZBANG mark covering “News analysis and features
distribution.” The registration was
January 3, 2006, with a date of first use of April 22, 2003. The domain name <wizbang.com>
was first registered in 1996. The
registration expired and Respondent obtained the domain name from an auction
service on September 28, 2004. There is
no evidence that Respondent was aware of Complainant or otherwise acquired and
used the domain name in bad faith.
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.
Since Complainant has failed to satisfy the third element of Registration
And Use In Bad Faith it is unecessary for the Panel to address this element.
Since Complainant has failed to satisfy the third element of Registration
And Use In Bad Faith it is unecessary for the Panel to address this element.
The Panel finds that the disputed
domain name incorporates a term that is commonly used in ways unrelated to its
trademark sense, and that Complainant has not demonstrated to the Panel’s
satisfaction that Respondent selected or has used the domain name for reasons
related to its trademark sense.
Furthermore, Respondent registered and used the domain name prior to
Complainant obtaining rights in the WIZBANG mark. The
Panel finds that Respondent did not register and use the disputed domain name
in bad faith pursuant to Policy ¶ 4(b)(iii).
See Successful Money Mgmt. Seminars, Inc. v.
Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding the
domain name <seminarsuccess.com> to be generic and that the respondent
registered and used the domain name in good faith “because Respondent selected
the name in good faith for its web site, and was offering services under the
domain name prior to the initiation of the dispute”).
Complainant has failed to sustain its burden of proof that a domain
name has been registered and is being used in bad faith.
DECISION
Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the complaint
be dismissed.
Honorable Karl V. Fink (Ret.), Chair
Mr. David Sorkin, Panelist
Mr. Jeffrey .M. Samuels, Panelist
Dated: September 8, 2006
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