Claim Number: FA0610000826565
PARTIES
Complainant is Roderick W. Accetta (“Complainant”), represented by Halle
B. Markus, Esquire of Arent Fox PLLC, 1050 Connecticut
Avenue, NW, Washington, DC 20036- 5339.
Respondent is Covanta Corporation (“Respondent”), represented by Ari
Goldberger, Esquire of ESQwire.com Law Firm,
The domain name at issue is <rollabout.com>, registered with Moniker
Online Services, Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Kelly Tillery, Esquire as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 24, 2006; the
National Arbitration Forum received a hard copy of the Complaint on October 25, 2006.
On November 2, 2006, Moniker Online Services, Inc. confirmed by
e-mail to the National Arbitration Forum that the <rollabout.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 November 8, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 28, 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@rollabout.com by
e-mail.
A timely Response was received and determined to be complete on November 27, 2006.
A timely Additional Submission was received from Complainant on
December 4, 2006 and was determined to be complete pursuant to Supplemental
Rule 7.
On December 5, 2006, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed M. Kelly Tillery, Esquire as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that:
1. It owns a United States Federal Registration for ROLL-A-BOUT. (Application filed on March 9, 2000, and Reg. No. 2,533,554 issued on January 29, 2002);
2. It has established common law rights in
its mark by selling personal mobility devices under the mark in
3. It is the only party with an active U.S. Application or Registration for any mark containing the term ROLL-A-BOUT or ROLLABOUT;
4. It has invested substantial sums of money in developing and marketing its ROLL-A-BOUT product and as a result, consumers in the relevant field have come to associate the mark with Complainant’s high quality product;
5. It uses the domain name <roll-a-bout.com> to advertise its products extensively on its web site;
6. Many years after it adopted and first used its mark, and long after the mark became well-known, Respondent registered the domain name <rollabout.com> on December 7, 2005, without authorization of Complainant;
7. Respondent’s domain name is confusingly similar to Complainant’s mark;
8. Respondent has no rights or legitimate interests in the domain name; it is not licensed or authorized to use Complainant’s mark and is not named or commonly known as ROLLABOUT;
9. Respondent commercially benefits from the disputed domain name by redirecting Internet users to a commercial search engine;
10. Respondent registered and is using the <rollabout.com> domain name in bad faith.
B. Respondent
Respondent contends that:
1. “Roll about” is a common term used to describe something with wheels on it and there are numerous third parties that sell “roll about” products;
2. Anyone is entitled to register a domain name incorporating a generic or descriptive term and such registration establishes the registrant’s legitimate interest;
3. It hosts the Disputed Domain with a third party service that places pay-per-click advertising links on the web page and shares the revenue earned with Respondent which constitutes use in connection with the bona fide offering of goods and services;
4. The
descriptive term “roll about” is in common use
by third parties, appearing on over 180,000 third party web pages;
5. Respondent
had no knowledge of Complainant, its business, its web site or trademarks when
it registered the Disputed Domain, and Complainant has
proffered no evidence to the contrary;
6. Complainant cannot establish that Respondent lacks a legitimate interest in the Disputed Domain;
7. Complainant has not established that Respondent has registered or used the Disputed Domain in bad faith;
8. Respondent registered the domain name because it was a descriptive term to which he believed no party could claim exclusive rights;
9. It takes no position as to the validity of Complainant’s mark or its applicability in these proceedings.
C. Additional Submissions
Complainant further contends that:
6. Respondent has not demonstrated any
legitimate interest in the terms “roll about” because the <rollabout.com>
domain name is not being used with any goods or services related to products
that “roll about;”
7. One link at <rollabout.com> labeled “Rollabout” redirects to a new search page that advertises a knee walker competitive with Complainant’s ROLL-A-BOUT knee walkers;
9. Respondent has a history of bad-faith use and registration of domain names;
10. Respondent’s claim that it had no knowledge of Respondent’s marks or business is highly unlikely since even a simple Internet search would have quickly revealed Complainant’s business and a cursory search of the PTO’s online website would have uncovered Complainant’s federal registration;
FINDINGS
1)
Complainant
has met its burden to prove by a preponderance of the relevant, admissible
evidence that Respondent’s domain name is identical or confusingly similar to a
trademark in which Complainant has rights.
2)
Complainant
has not met its burden to prove by a preponderance of the relevant,
admissible evidence that Respondent has no rights or legitimate interests in
respect of the domain name.
3)
Complainant
has not met its burden to prove by a preponderance of the relevant,
admissible evidence that Respondent’s domain name has been 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.
As a preface to this Panel’s Decision, it will be helpful to set forth a Chronology of Undisputed Facts and Dates.
CHRONOLOGY OF UNDISPUTED FACTS AND DATES
10/4/94 First use of TM by Complainant
10/28/94 First use of TM in commerce by Complainant
11/19/97 Domain Name <roll-a-bout.com> registered by Complainant
3/9/00 USPTO TM application filed by Complainant (ROLL-A-BOUT)
[Class 10 – Invalid Walkers]
11/06/01 TM “ROLL-A-BOUT” published for opposition
1/29/02 TM “ROLL-A-BOUT” registered by USPTO to Complainant
6/7/04 USPTO TM Application filed by Complainant (ROLLABOUT)
[Class 10 – Invalid Walkers]
1/5/05 Accused Domain Name <roll-a-bout.com> registered by Respondent
5/3/05 TM “ROLLABOUT” published for opposition
10/24/06 ICANN Complaint filed by Complainant
Respondent does not
dispute Complainant’s ownership and Federal Registration of the Trademark
“ROLL-A-BOUT.” Nor does Respondent
dispute Complainant’s claimed common law rights in and to the mark “ROLLABOUT”
or oppose Complainant’s pending USPTO Application therefor. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the
MICROSOFT mark through registration of the mark with the USPTO.”); see also
Since the Domain Name in question is identical to the second mark, Complainant has met its burden of proof in regard to the First UDRP Requirement. However, even the first mark is clearly confusingly similar to the Domain Name. See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant’s mark); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (finding that the domain name, <tippex.com> is confusingly similar to the complainant’s mark, TIPP-EX and that use of a hyphen does not negate likelihood of confusion).
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks
rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and the burden then shifts to Respondent to show it
does have rights or legitimate interests.
See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002); see
also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat.
Arb. Forum Aug. 18, 2006).
Complainant has failed to establish a prima facie case in support of its
allegations that Respondent lacks rights and legitimate interests under Policy
¶ 4(a)(ii). See The Workshop
Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding
that the respondent overcame the complainant’s burden by showing it was making
a bona fide offering of goods or
services at the disputed domain name); see
also Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum
Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its
burden and as a result found that the respondent had rights and legitimate
interests in the domain name under Policy ¶ 4(a)(ii)). Complainant has herein merely confirmed that
Respondent is using the Domain Name for a legitimate purpose.
Respondent asserts that it uses the disputed
domain name in connection “with a third party service that places pay-per-click
advertising links on the web page and shares the revenue earned with
Respondent.” Respondent claims this
constitutes a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) because the terms of the <rollabout.com> domain name are of
common usage and do not refer to Complainant or its products. Respondent’s use of the <rollabout.com> domain name to
operate a pay-per-click search engine is a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), based
on previous UDRP decisions holding such use to give rise to rights or
legitimate interests in a respondent. See Target Brands, Inc. v.
ALDnet Media Group and Edward Harrison, FA 227647 (Nat. Arb. Forum
Mar. 24, 2004) (holding that the respondent’s use of the
<targetwholesale.com> domain name to offer search engine services to
wholesale vendors and their customers was a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i)); see also Eastbay Corp. v. VerandaGlobal.com,
Inc., FA 105983 (Nat. Arb. Forum May 20, 2002) (finding that the
respondent’s use of the disputed domain name as a portal to a commercial
website featuring various advertisements and links constituted a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i)).
There are numerous Third Parties using the
term “roll about,” including “Roll-about videoconferencing system; roll-about
abrasive blasters; roll-about chair; roll-about shovel; roll-about fan.” A Google search of the term “roll about,”
yields 184,000 Third-Party uses of the term.
Respondent establishes rights or legitimate
interests in the <rollabout.com>
domain name under Policy ¶ 4(b)(ii), because it is
composed of common terms. See FilmNet Inc. v. Onetz,
FA 96196 (Nat. Arb. Forum Feb. 12, 2001) (finding that the complainant
failed to establish that the respondent did not have rights or legitimate
interests in the <filmnet.com> domain name, where the disputed domain
name is wholly comprised of common words, even though the complainant is the
owner of the FILMNET mark); see also
Shirmax Retail Ltd. v. CES Mktg., Inc., AF-0104 (eResolution Mar. 20, 2000)
(“[G]iven the generic nature of the domain name, [Respondent] has at least a
tenable argument that its use on the web merely for the purpose of redirecting
visitors to a different site constitutes a legitimate fair use, as long as this
use is not misleading to consumers and does not tarnish a trademark.”).
Complainant has thus failed to meet its
burden of proof on the Second UDRP Requirement.
Although this Third UDRP Requirement need not
be reached, this Panel finds that Respondent did not register or use the Domain
Name in bad faith pursuant to Policy ¶ 4(a)(iii). See
Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept.
20, 2002) (finding that because the complainant must prove all three elements
under the Policy, the complainant’s failure to prove one of the elements makes
further inquiry into the remaining element unnecessary); see also Pensacola Christian Coll. 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.”).
Respondent claims that it registered the
disputed domain name in good faith to maintain a commercial search engine and
not to disrupt Complainant’s business or divert Internet users seeking
Complainant’s products to Respondent’s own website for commercial gain. Respondent’s registration and use of the
domain name does not constitute bad faith because Respondent has not
violated any of the other factors listed in Policy ¶ 4(b). See
Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand Ag, D2001-0916
(WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to
sell the domain name for profit, has not engaged in a pattern of conduct
depriving others of the ability to obtain domain names corresponding to their
trademarks, is not a competitor of the complainant seeking to disrupt the
complainant’s business, and is not using the domain name to divert Internet
users for commercial gain, lack of bona
fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts
Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9,
2005) (finding that the complainant failed to establish that respondent
registered and used the disputed domain name in bad faith because mere
assertions of bad faith are insufficient for a complainant to establish Policy
¶ 4(a)(iii)).
Respondent also alleges that it did not
deliberately register the domain name in bad faith because the domain name is
made up of common terms that have many meanings apart from use in Complainant’s
mobility products business. Respondent’s
registration and use of a domain name consisting of common terms does not
violate Policy ¶ 4(a)(iii), because the domain name is
not likely to confuse Complainant’s consumers and misleadingly divert them to
Respondent’s website. See Canned Foods, Inc. v. Ult. Search inc.,
FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (holding that, where the domain name
is comprised of a generic term, it is difficult to conclude that there was a
deliberate attempt to confuse on behalf of the respondent, and stating that
“[i]t is precisely because generic words are incapable of distinguishing one
provider from another that trademark protection is denied them”); see also Vitello v. Castello, FA 159460
(Nat. Arb. Forum July 1, 2003) (“As to both registration and use, the generic
nature of the disputed domain name itself rebuts any allegation by Complainant
that Respondent registered or used the disputed name in bad faith.”).
Thus, Complainant has failed to meet its
burden of proof on this Third UDRP Requirement.
DECISION
Having failed to establish all three elements
required under the ICANN Policy, the Panel concludes that the relief requested
shall be DENIED.
Accordingly, it is Ordered
that Complainant’s Complaint is hereby DISMISSED.
M. Kelly Tillery, Esquire, Panelist
Dated: January 2, 2007
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