AFN Investments, Ltd. v. MM
Biz
Claim Number: FA0610000819167
PARTIES
Complainant is AFN Investments, Ltd. (“Complainant”), represented by Susan
Okin Goldsmith, of Duane Morris LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <laborforce.com>, registered with Domaindiscover.
PANEL
The undersigned 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.
Honorable Charles K. McCotter, Jr. (Retired),
Steven L. Schwartz Esq., and Alan L. Limbury Esq., as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 12, 2006; the
National Arbitration Forum received a hard copy of the Complaint on October 13, 2006.
On October 16, 2006, Domaindiscover confirmed by e-mail to the
National Arbitration Forum that the <laborforce.com> domain name is
registered with Domaindiscover and that
the Respondent is the current registrant of the name. Domaindiscover
has verified that Respondent is bound by the Domaindiscover
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 17, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 6, 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@laborforce.com by
e-mail.
On November 2, 2006 Respondent requested an extension of time to
respond with consent of Complainant pursuant to Supp. Rule 6. An extension was granted setting a new
deadline of November 16, 2006 for the receipt of a Response.
A timely Response was received and determined to be complete on November 16, 2006.
On November 21, 2006, Complainant submitted a timely Additional
Submission that was determined to be complete.
On November 27, 2006, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Honorable Charles K. McCotter, Jr., Steven
L. Schwartz Esq., and Alan L. Limbury Esq., as Panelists. On November 27, 2006,
due to exceptional circumstances, the Panel by order extended until December
15, 2006 the time period within which the Panel shall be required to render its
Decision.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the assignee of two
Complainant says the disputed domain name, which was registered on
October 30, 2002, is identical or confusingly similar to Complainant’s LABOR
FORCE mark. It says that Respondent is not commonly known by the domain name;
has constructive notice of Complainant’s mark; is neither sponsored by nor
affiliated with Complainant nor permitted by Complainant to use the mark; and
is using the domain name in connection with a website that provides links to
services similar to those of Complainant. Hence Respondent has no rights or
legitimate interests with respect to the domain name.
Complainant further says Respondent registered and is using the
disputed domain name in bad faith, pointing to the use of the domain name to
lead to a website displaying sponsored links offering competing and confusingly
similar services; to Respondent’s trading off Complainant’s goodwill to attract
customers; and to correspondence over the possible sale of the domain name in
which Respondent said “I paid $1700 in order to sell for 20 times that…” and
subsequently raised its asking price to $50,000 once it knew it was dealing
with Complainant.
B. Respondent
Respondent says this is a blatant case of Reverse Domain Name Hijacking
because Complainant should have known that it has no case under the
Policy. “Labor force” is a common
dictionary term meaning the total number of employed or employable persons. The
term is subject to over 18.6 million third party uses. As a matter of public
policy it is inappropriate to allow Complainant to have a monopoly on the
common term “labor force”. Complainant’s business is regional only and there is
no evidence that Complainant is well known. Although incontestable, the mark is
extremely weak, being descriptive. Indeed the first registration disclaims
“labor” and the second (which includes a design) disclaims “labor force”.
Respondent, not knowing at the time of Complainant’s marks and not
having Complainant in mind, chose the domain name with intent to develop a
job-related website and because it contains the common term “labor force”. This
demonstrates legitimacy.
The correspondence over the possible sale does not establish bad faith:
Respondent was responding to an approach from someone who did not reveal that
he represented Complainant. This cannot establish the required intent at the
time of registration to sell to the trademark owner. The facts of this case are
similar to those in Pocatello Idaho
Auditorium District v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum
Feb. 21, 2002), in which a trademark owner contacted the respondent inquiring
if it was willing to sell the disputed domain name. The respondent sought $50,000. The 3-member
Panel rejected the submission that this constituted bad faith registration,
saying there was “no evidence that [r]espondent registered the name for such
purpose [and that] …the Complainant, itself, actually initiated the inquiry for
purchase” and that there are “numerous ICANN decisions which have recognized
the owner of a domain name has a legal right to sell a domain name when asked
if he or she is willing to transfer or sell it”.
C. Additional Submissions
In reply, Complainant says this is a classic case of cybersquatting.
Its incontestable trademark registrations give Complainant the exclusive right
to use the mark in commerce for the services set forth in the registrations.
Complainant has been energetic in enforcing its rights. Complainant does not
use the mark LABOR FORCE in its dictionary sense, rather as an indicator of the
source of services for the placement of temporary workers and temp-to-permanent
employees.
Even if Mr. Mann had no actual knowledge of Complainant’s rights, he
must be charged with constructive knowledge. He is a sophisticated domain name
purchaser who knows full well the need to investigate the trademarks of others.
Bad faith is demonstrated by the statement of his representative that the domain
name had been purchased in order to sell it for 20 times that much and, in
classic cybersquatting behaviour, by the increase in price once Complainant’s
identity was revealed to Mr. Mann.
FINDINGS
Complainant has established all the elements
required to entitle it to the relief it seeks.
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.
Respondent does not dispute that the domain
name <laborforce.com> and the trademark LABOR FORCE are
identical. The Panel so finds. It is
well established that the gTLD “.com” is inconsequential and must be ignored.
Complainant has established this element of
its case.
The Panel accepts that Respondent is not commonly known by the domain name and is neither sponsored by nor affiliated with Complainant nor permitted by Complainant to use its mark. This establishes a prima facie case against Respondent and shifts the burden on to Respondent to provide evidence of its right or legitimate interests under paragraph 4(c) of the Policy. See Cassava Enter. Ltd. v. Victor Chandler Int’l Ltd., D2004-0753 (WIPO Nov. 11, 2004).
Respondent relies on the common dictionary meaning of “labor force’ as giving it a legitimate interest in the domain name yet it has not used those words in the dictionary sense to describe the body of persons in or available for employment. Like Complainant, it has used those words to present employment placement services, a field reserved to Complainant by reason of its incontestable trademark registrations. The argument is akin to saying that the domain name <apple.com> may be used by anyone in connection with computers because it may be used by anyone in connection with the fruit.
As appears below under the next heading, the Panel has found that the Respondent’s statement that he paid $1700 “in order to sell for 20 times that” revealed that his primary purpose at the time of registration was to sell the domain name to the trademark owner or to its competitor. Given that primary purpose, generating “click-thru” revenue from sponsored links to employment-related services of the kind offered by the trademark owner does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. See Transamerican Auto Parts Co., LLC v. TireDiscounter.com, FA 778966 (Nat. Arb. Forum Oct. 25, 2006). Such activity is calculated to put pressure on the trademark owner to pay the Respondent’s price.
Complainant has established this element of
its case.
The
critical passage in the case on which Respondent relies, Pocatello Idaho Auditorium
District v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) is:
“What makes an offer to sell a domain bad faith is some accompanying evidence that the domain was registered because of its value that is in some way dependent on the trademark of another…”
There is such accompanying evidence in this case, namely the statements by Respondent’s representative (appearing below as “R”) in the course of correspondence initiated by an undisclosed representative of Complainant (appearing below as “J”) in November 2005 (Complaint, Ex. 7), the relevant parts of which were as follows:
J. Checking on the availability of this name. Is it for sale. I am a webdev who is thinking of approaching a local company for a site here.
R. what is your offer?
J. I could make an offer of $350 because I feel pretty positive at landing this account.
R. not even remotely close
J. Well what would be an acceptable offer?
R. about 30K
J. I think something around $600 would be acceptable seeing I am trying to get the account (have not made the pitch yet) and that you paid all of $5 for it. Let’s please be reasonable… This is not coca-cola.com we are speaking of
R. I paid $1700 in order to sell for 20 times that, but then again your opinion isn’t really going to help you in this case. I’m happy keeping the name forever if nobody cares enough to pay for it
A price of about $30,000 - $34,000 (20 x $1700) reflects the value a trademark owner or a competitor of the trademark owner would be expected to place on the domain name. The Panel accordingly infers actual knowledge on the part of Respondent of Complainant’s registered LABOR FORCE marks at the time of registration of the disputed domain name.
These circumstances lead the Panel to conclude that Respondent registered the domain name primarily for the purpose of selling the registration to Complainant, the owner of the LABOR FORCE trademark, or to a competitor of Complainant, for valuable consideration in excess of its out-of-pocket costs directly related to the domain name. Pursuant to the Policy, ¶ 4(b)(i), these circumstances are evidence of both bad faith registration and use.
The use to which Respondent put the domain name was to create a website containing links to employment related services. Having regard to its finding of actual knowledge of Complainant’s mark, the Panel finds that this was a use calculated to serve as an irritant to the trademark owner by siphoning away putative customers from its licensee and thereby to increase Respondent’s prospects of achieving its primary purpose. It was also a use which falls within the Policy, ¶ 4(b)(iv), providing further evidence of bad faith registration and use.
Complainant has
established this element of its case.
Reverse
Domain Name Hijacking
Complainant having succeeded, there is no
basis for such a finding.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <laborforce.com> domain name be TRANSFERRED
from Respondent to Complainant.
Alan L. Limbury, Esq., Presiding Panelist
Honorable Charles K. McCotter, Jr., Panelist Steven L. Schwartz,
Esq., Panelist
Dated: December 15, 2006
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