Smooth Corporation v. InNetWeTrust.com - This Web Site For Sale c/o SPAM-Rod SPAM-Aries
Claim Number: FA0609000809773
PARTIES
Complainant is Smooth Corporation (“Complainant”), represented by Karl S. Kronenberger, of Kronenberger Hanley, LLP, 220 Montgomery Street, Suite 1920, San Francisco, CA 94104. Respondent is InNetWeTrust.com - This Web Site For Sale c/o SPAM-Rod SPAM-Aries (“Respondent”), 915 Neptune Avenue, Encinitas, CA 92024.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <ifloorcoverings.com>, registered with Enom, 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.
Robert T. Pfeuffer, Senior District Judge as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 29, 2006.
On October 3, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <ifloorcoverings.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 October 5, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 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@ifloorcoverings.com by e-mail.
A timely Response was received and determined to be complete on October 24, 2006.
On
November 1, 2006, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the
National Arbitration Forum appointed Robert T. Pfeuffer, Senior District Judge as
Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant raises three main
issues under ICANN Policy ¶ 4(a)(i)
“confusing similarity,” Policy ¶ 4(a)(ii) “no rights or legitimate interests,”
and Policy ¶ 4(a)(iii) “bad faith registration and use.” Complainant contends that it has established
rights in the IFLOOR.COM mark through registration of the mark with the United
States Patent and Trademark Office under Registration No. 2,733,575 which was
issued July 1, 2003. It further asserts
that it has been using the IFLOOR.COM mark extensively and continuously since
January 1998. To substantiate its claim,
Complainant includes documentation in its presentation of its advertising efforts,
unsolicited media coverage of its business and its sales success as evidence
that secondary meaning has been established in the mark.
Identical or
Confusingly Similar: Policy ¶
4(a)(i).
In
addition, Complainant contends that the <ifloorcoverings.com> domain name is confusingly similar to
Complainant’s IFLOOR.COM mark. It
asserts that the disputed domain name includes the IFLOOR.COM mark in its
entirety combined with the term “coverings.”
Complainant points out that the term “coverings” is a descriptive term
that refers to Complainant’s business offering different types of floor
coverings for sale, and therefore, does not distinguish the disputed domain
name from the Complainant’s mark.
Rights and Legitimate
Interests: Policy ¶ 4(a)(ii).
With respect to this issue, the Complainant says
that Respondent lacks rights or legitimate interests in the disputed domain
name pursuant to Policy ¶ 4(a)(ii).
Complainant asserts that it has established a prima facie case to shift the burden to the Respondent to
demonstrate that it does have rights or legitimate interests as contemplated by
Policy ¶ 4(c).
Complainant further asserts that the Respondent is using the disputed domain name to attract Internet users to its website featuring links to third-party commercial websites offering goods and services in direct competition with Complainant. It further contends that such use is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Complainant says that the use of Complainant’s mark to attract Internet users precludes the possibility of a bona fide offering of goods or services. In addition, it contends that Respondent’s use is not noncommercial because Respondent is receiving pay-per-click referral fees from the advertising hosted at Respondent’s website.
Complainant also argues that Respondent is not commonly known by the disputed domain name as allowed by Policy ¶ 4(c)(ii). In support thereof, Complainant points to Respondent’s WHOIS information identifying Respondent as “InNetWeTrust.com” and therefore is not commonly known by the disputed domain name.
Registration and Use
in Bad Faith: Policy ¶ 4(a)(iii).
Complainant asserts that Respondent’s WHOIS information offers the disputed domain name for sale to the general public and that this offer is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i).
Additionally,
Complainant argues that Respondent’s use of the disputed domain name to
redirect Internet users to Respondent’s website featuring links to competing
third-party websites disrupts the Complainant’s business, therefore evidencing
bad faith registration and use pursuant to Policy ¶ 4(b)(iii). Complainant contends that Internet users
seeking Complainant’s genuine website at <ifloor.com> may instead find
themselves redirected to Respondent’s website, and once there may follow the
links to third-party websites and do business with the Complainant’s
competitors instead of with Complainant.
Complainant alleges that Respondent
is using its confusingly similar domain name to attract Internet users to its
website for financial gain thereby evidencing bad faith pursuant to Policy ¶
4(b)(iv). Complainant contends that
Internet users may easily find themselves redirected to Respondent’s website
and because of the confusingly similar domain name combined with the links to
competing goods and services may mistakenly believe that the Complainant is
affiliated with Respondent’s website.
It further argues that Respondent is capitalizing on this confusion by
receiving pay-per-click advertising revenues from its website.
B. Respondent
Identical or
Confusingly Similar: Policy ¶
4(a)(i).
While
not disputing that Complainant holds a USPTO registration for the IFLOOR.COM
mark, Respondent asserts that the <ifloorcoverings.com>
domain name is not confusingly similar to Complainant’s mark because the
terms “floor” and “coverings” are common and generic descriptive terms used by
many people and businesses in addition to Complainant. Respondent has listed numerous domain names
in its response listed under BuyDomains.com, all of which are for sale, and
includes the words “floor” and “covering”.
Also listed under Fabulous.com are domains for sale including “floor”
and “floor covering.com” and additionally lists domains for sale at Sedo.com
also including “floor coverings” such as <floorcoverings.bus>,
<floorcoverings.info> and <floorcoverings.net>. All of the above are listed as of October
24, 2006.
Additionally,
Respondent points out that Complainant owns a number of domain names including
<ifloor.com> through <ifloorsupply.com> a total number listed of 40
separate listings including the word “ifloor.com” and variations thereof. Respondent asserts that because floor
coverings is a generic common word used extensively by other companies and
people not affiliated with Complainant, Respondent is not using the domain name
for the purpose of tarnishing the Complainant’s mark and that Respondent has
not registered the domain name as part of a pattern to prevent Complainant from
reflecting its trade mark in a domain name.
Respondent points out that other domain variations of
“ifloorcoverings.com” are currently unregistered and freely available to the
Complainant to purchase as indicated in the list of names available set out
above. Respondent says it has a
contract with a pay-per-click advertising third party consolidator. Under such arrangement, Respondent provides
relevant, targeted web traffic to advertisers and shares in a commission paid
by advertisers to the advertising consolidator. Respondent claims a legitimate expectation interest in the
undisturbed use of common descriptive terms.
It therefore is using the domain name <ifloorcoverings.com> in keeping with the generic and widely
used term “floor coverings” to provide paid advertising links relative to the
search terms.
Further,
Respondent alleges that it did not register <ifloorcoverings.com> domain name because it incorporated
Complainant’s mark or any other mark.
It says that it registered the disputed domain name because it had been
deleted and made available for anyone in the general public to register. It asserts that the term “floor coverings”
is subject to substantial third party use on thousands of Internet web pages
and therefore certainly is not a term that can be exclusively associated with
Complainant. Respondent asserts that
Complainant does not have exclusive rights to the generic and widely used term
“floor coverings”, which is subject to substantial third party use. Respondent claims it registers domain names
that incorporate common words, descriptive terms, and/or words and terms in
which it believes no single party has exclusive rights.
Respondent
therefore concludes that the Complainant has not established that the disputed
generic domain name <ifloorcoverings.com>
is either identical or confusingly similar to the Complainant’s trademark.
Rights and Legitimate
Interests: Policy ¶ 4(a)(ii).
Respondent asserts that it had a legitimate right and interest in its offering of bona fide services and that its operation is endorsed and supported under well established policy. It claims that these legitimate rights and interests under the policy are not limited to trademark or service rights but include use of domain names in connection with legitimate business purposes. Respondent claims that it is well established that the sale of domain names constitutes a bona fide offering of goods and services when the offeror is unaware of a party’s trademark rights.
Respondent asserts that its business operations include, in part, the registering of a portfolio of domain names that incorporate common and generic terms, short terms and useful phrases. It seeks to obtain such domain names by attempting to register presumptively abandoned and expired domain names which have been dropped from registration. When it acquires a domain name the Respondent “parks” the domain by pointing it to a page of general interest links. The Respondent claims it then creates a search page with corresponding search terms that are connected to the domain names content. The domain name is then used in conjunction with a third party advertising subscription database operated by an advertising consolidator which is based on the Nexus between terms in the domain name and those search terms for which advertisers have paid subscriptions on a performance basis. Respondent alleges that it derives substantial revenue from its targeted web traffic business and does not register domain names only for resale.
Respondent alleges that it is well established that the use of generic key word domain names in connection with third party advertising services related to the descriptive meaning of the domain name constitutes use in connection with a bona fide offering of goods or services.
Respondent also claims that it is well established that the sale of generic domain names constitutes a bona fide offering of goods and services where a Respondent is unaware of any party’s rights in a mark.
Respondent asserts that it is not a violation of policy to simply seek to register generic words as they become abandoned and match those words with a pool of advertisers seeking to use them. It says that it is making extensive efforts and expending considerable time and resources to configure the domains for shared use among advertisers in the third party database. Respondent alleges that it derives significant revenue from its business and has a legitimate expectation in the continuation of its revenue. It claims that Respondent is using the name for what has been repeatedly held as legitimate business purposes in decisions by the National Arbitration Forum and WIPO.
Registration and Use
in Bad Faith: Policy ¶ 4(a)(iii).
Respondent asserts that the
Complainant has wholly failed to provide any evidence of bad faith on
Respondent’s part and that it has offered no evidence of any kind demonstrating
that Respondent had any knowledge of Complainant’s mark or business operations at
the time the disputed domain name was registered or that Respondent registered
the <ifloorcoverings.com>
domain name for sale to the
Complainant in an effort to disrupt its business. It alleges that there is no
evidence that Respondent engaged in activity to prevent Complainant from
acquiring a domain name incorporating its trademark or to confuse users. Respondent pleads that it neither knew nor
should have known of the existence of Complainant or its trademark when
Respondent registered the disputed name.
Respondent asserts that all assertions by Complainant are mere
conclusions and in no way has Complainant offered proof of bad faith. Respondent asserts that one cannot infer
that Respondent had knowledge of Complainant when it registered the disputed domains
common nor is there evidence that the Respondent “targeted” the
Complainant. Respondent says it simply
registered the subject domain name because it was freely available for anyone
to purchase and because it incorporates common generic words. It claims there is precedent for the
acquisition of deleted domain names that has been endorsed by decisions as a bona fide practice under the policy.
Respondent concludes that the lawful registration
of a deleted domain name cannot be construed as bad faith towards the
Complainant and submits that the Complainant’s allegations of bad faith are
misplaced and wholly inconsistent with the examples of bad faith set out in the
decisions heretofore published on the subject.
Respondent ultimately submits that the Complainant has not proved any of the three conditions required for transfer of the disputed domain name.
FINDINGS
The Panel finds against the Complainant in the proof of the three elements needed to obtain an order that a domain name should be cancelled or transferred:
1. The Panel finds that the domain name registered by the Respondent is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. The Panel finds that the Complainant has failed to demonstrate that the Respondent has no rights or legitimate interests in respect to the domain name; and
3. The Panel finds that the Complainant has failed to prove by a preponderance of the evidence that the domain name was registered and is being used 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.
The Panel finds that the disputed domain name is composed of common terms and is not
confusingly
similar to Complainant’s mark. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) ("Similarity of marks or lack
thereof are context-specific concepts. In the Internet context, consumers are
aware that domain names for different Web sites are quite often similar,
because of the need for language economy, and that very small differences
matter."); see also Bank of Am.
Corp. v. Fluxxx, Inc., FA 103809 (Nat. Arb. Forum Feb. 18, 2002) (“[I]n
light of the common use of the words ‘nations’ and ‘banking,’ this Panel fails to see how there is a likelihood of
confusion between NATIONSBANK and <nationsbanking.com>.”).
Although asserting that it has established a prima facie case, the Panel finds that Complainant has failed to support its assertions with facts and evidence and thus, has not established a prima facie case. See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when the respondent does file a response, the complainant must allege facts, which if true, would establish that the respondent does not have any rights or legitimate interests in the disputed domain name); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, the panel may decline to transfer the disputed domain name).
The Panel finds that Respondent’s use of the disputed domain name in connection with its web traffic business is a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Landmark Group v. DigiMedia.com, L.P., FA 285459 (Nat. Arb. Forum Aug. 6, 2004) (holding that the registration of dictionary words to generate pay-per-click advertising revenue is legitimate as long as the domain names were not registered for their value as trademarks); see also Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002) (finding that using a domain name consisting of a common descriptive and generic expression as a portal to a website featuring various advertisements and links is a bona fide offering of goods or services).
The Panel finds that the Respondent
is offering the disputed domain name for sale in a manner that is a bona fide offering of goods and services
pursuant to Policy ¶ 4(c)(i). See Fifty Plus Media Corp. v. Digital
Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000) (finding that the
complainant failed to prove that the respondent had no rights in the domain
name and had registered and used the domain name in bad faith where the
respondent is an Internet business which deals in selling or leasing
descriptive/generic domain names); see
also Gen. Mach. Prod. Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum Mar. 16, 2000) (finding for the
respondent, who was in the business of identifying domain names comprised of
generic or descriptive terms, registering those domain names, selling them to
interested parties, and developing websites using those domain names for
clients where the respondent rebutted the argument that it had no legitimate
interest in the domain name <craftwork.com> since the name had not
acquired distinctiveness, and instead, was merely generic and descriptive at
the time of registration).
The
Panel finds that Respondent has not evidenced bad faith registration or use
under Policy ¶ 4(a)(iii). See 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);
see also 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)].”); see also
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.”); see
also Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding
that the respondent did not register or use the domain name <metagen.com>
in bad faith where the respondent registered the domain name in connection with
a fair business interest and no likelihood of confusion was created).
DECISION
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief sought by Complainant shall be DENIED.
Accordingly, it is Ordered that the <ifloorcoverings.com> domain name shall not be TRANSFERRED from Respondent to Complainant.
ROBERT T. PFEUFFER,
Senior District Judge, Panelist
Dated: November 14, 2006
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