CB Publishing, LLC v. Akway
International Ltd c/o Hostmaster
Claim Number: FA0702000926506
PARTIES
Complainant is CB Publishing, LLC (“Complainant”), represented by Wendy
E. Miller, of Cooper & Dunham LLP, 1185 Avenue of
the
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cbpublishing.com>, registered with Fabulous.com
Pty Ltd.
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.
Hugues G. Richard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On March 8,
A timely Response was received and determined to be complete on
On March 27, 2007 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hugues G. Richard as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant first asserts that CB Publishing is the owner of an
application to register the CB Publishing
trademark in the U.S. Patent and Trademark Office, Application No. 78/361,603,
filed February 3, 2004. Complainant’s
contentions are that the domain name <cbpublishing.com>
is identical and confusingly similar to Complainant’s name and CB PUBLISHING
trademark.
Complainant further alleges that Respondent has no rights or legitimate
interest in the disputed domain name, as:
a)
it
registered the domain name <cbpublishing.com>
on
b)
Respondent
is using the domain name to collect leads, by misleadingly diverting costumers
who search the Internet for Complainant;
c)
Respondent’s
domain name links to a website that advertises entities which provide related
goods and services;
d)
Respondent
does not operate a legitimate business in connection to the domain name, since
there is no evidence that Respondent is commonly known by the domain name.
Furthermore, Complainant contends that Respondent registered the domain
name in dispute in bad faith, in order to attract customers who are looking for
Complainant’s business, and misleadingly divert those customers to competitors,
for the purpose of disrupting Complainant’s business. It also alleges that Respondent’s use of the
disputed domain name creates a likelihood of confusion with Complainant’s mark
and that Respondent refused to transfer said domain pursuant to Complainant’s
request.
B. Respondent
Respondent expressly responds to Complainant’s allegations and includes
all bases for Respondent to retain the registration of the domain name in
dispute. Respondent also asks the Panel
to make a finding of reverse domain name hijacking.
Respondent first alleges that CB Publishing is not the trademark owner
and that an application for a trademark is not sufficient to establish rights
to a trademark for the purposes of the UDRP.
Furthermore, since CB Publishing’s mark is not registered, it would
have to prove that it has a common law (unregistered) trademark. According to Respondent, previous UDRP Panels
accepted that “[t]o establish common law trademark, the Complainant must show
that the name … has achieved sufficient secondary meaning or association with
Complainant.” Universal City Studios, Inc. v. David Burns and Adam – 12 Dot Com,
D2001-0784 (WIPO Oct. 1, 2001). Respondent
contends that in fact, Complainant did not claim such rights and there is no
evidence in the Complaint that the term “CB Publishing” has acquired any
secondary meaning. Moreover, the
Complaint is based on the trademark application only.
Respondent then asserts that since Complainant’s business is
headquartered in the
Moreover, Respondent alleges that the Policy does not offer protection
to company names or trade names and that Complainant misrepresented the
trademark information submitted as per ICANN Rule 3(b)(viii) since the
following goods are not supposed to be covered by the trademark: “books and
printed materials, including children’s books; educational books in the fields
of elementary level reading, mathematics, science and social studies; printed
teaching materials; children’s activity books; children’s arts and craft books;
arts and craft paint kits; rubber stamps; stencils; pens; and stickers.”
Respondent further contends that “CB Publishing” is a combination that
is used by many organizations in many countries, and that the domain name
should be considered as comprising generic and descriptive terms. In such case, the first person to register it
in good faith is entitled to the domain name and this is considered as having a
legitimate interest. Also, Respondent
uses the domain name in connection with a website that posts links related to
publishing, which is a bona fide offering of goods and services. Previous UDRP Panels accepted that this
concept can be of legitimate interest.
Respondent further contends that it is not using the domain name in bad
faith, as it is a generic and/or descriptive term. Also, Complainant’s allegations regarding bad
faith are only based on the website content. In addition, Respondent is not a competitor
and his website does not specially advertise anything related to kids,
including printed materials for kids, which are claimed by Complainant as being
covered by its pending trademark registration.
Respondent certifies that he never heard of Complainant and that there
is no evidence that Complainant or its products are known outside the
Respondent also alleges that he acquired the domain name from a list of
expiring and abandoned domain names and that there is an element of “finders keepers, losers weepers.”
Finally, Respondent requests that the Panel make a finding of
reverse domain name hijacking.
FINDINGS
Complainant, CB Publishing, is the owner of
an application to register the CB PUBLISHING trademark in the U.S. Patent and
Trademark Office, Application No. 78/361,603, filed February 3, 2004.
Complainant has been in business through its
predecessor since as early as 1998, has been doing business as CB Publishing
since 2001, and has been selling goods under the CB PUBLISHING trademark since
2003.
Respondent registered the <cbpublishing.com>
domain name on February 2, 2007. Respondent
is using the domain name in connection with a website that posts advertising
links related to publishing goods and services.
For the reasons set
forth below, the Panel finds that Complainant has not proved he is entitled to
have the domain name transferred.
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 Complainant proves 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 Respondent is
identical or confusingly similar to a trademark or service mark in which
Complainant has rights;
(2) 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 ICANN Rules DEFINITIONS
state:
Reverse Domain Name Hijacking means using the Policy in bad faith to attempt
to deprive a registered domain-name holder of a domain name.
Rule 15(e) Panel Decisions states … “If after
considering the submissions the Panel finds that the complainant was brought in
bad faith, for example in an attempt at Reverse Domain Name Hijacking or
was brought primarily to harass the domain-name holder, the Panel shall
declare in its decision that the complaint was brought in bad faith and
constitutes an abuse of the administrative proceeding.”
According to Complainant, “CB Publishing is
the owner of a trademark application to register the CB PUBLISHING trademark in
the U.S. Patent and Trademark Office.” In
CyberTrader, Inc. v. Bushell, D2001-1019
(WIPO Oct. 30, 2001), the panel was of opinion that “[m]ere applications for
registration do not prove any protectable rights.” See also
Point to Point Bus. Dev., Inc. v. Di Lello, FA 609360 (Nat. Arb. Forum Jan.
24, 2006). Also, according to Wave Indus., Inc. v. Anger Supply, FA 304784 (Nat. Arb. Forum Sept. 20, 2004), “an
application for mark is not per se
sufficient to establish rights to a trademark for the purposes of the UDRP.” Thus, a trademark did not exist at the time
the disputed domain name was registered and cannot prove any protectable rights
under ICANN’s dispute resolution system.
UDRP panels accepted “common law”
unregistered trademarks for reasons of fairness. The Panel finds that Complainant has failed
to prove common law rights in the CB PUBLISHING mark. The Panel finds that Complainant did not
provide sufficient evidence of secondary meaning, and concludes that section 4(a)(i)
has not been satisfied. Prior UDRP
precedent, Weatherford Nutrition, Inc. v.
Wells, FA 153626 (Nat. Arb. Forum May 19, 2003), did not support the
finding of common law rights in a mark in lieu of any supporting evidence,
statement or proof such as business sales figures, revenues, advertising
expenditures, or number of consumers served. In Molecular
Nutrition, Inc. v. Network News & Publ’ns., FA 156715 (Nat. Arb. Forum
June 24, 2003), the panel applied the principles outlined in the prior decision
that recognized “common law” trademark rights as appropriate for protection
under the Policy “if Complainant can establish that it has done business using
the name in question in a sufficient manner to cause a secondary meaning
identifiable to Complainant’s goods or services.” A Complainant fails to prove trademark rights
at common law if he does not prove the mark was used to identify the source of
sponsorship of goods or services or that there was a strong consumer
identification of the mark as indicating the source of such goods or
services. See Cyberimprints.com, v. Alberga, FA 100608 (Nat. Arb. Forum Dec.
11, 2001).
As it appears from the evidence produced by
Respondent, CB PUBLISHING did not acquire a secondary meaning since the public
does not identify the CB PUBLISHING mark exclusively with Complainant’s
products. Therefore, Complainant cannot
claim “common law” trademark rights.
Once Complainant makes a prima facie
showing that Respondent lacks any legitimate interest, the burden shifts to
Respondent to come forward with evidence proving that it does have a legitimate
interest or other rights in the domain name. See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002); Electronic
Commerce Media, Inc. v. Taos Mountain, FA 95344 (Nat. Arb. Forum Oct. 11,
2000); Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
Even
though Respondent has offered no evidence suggesting that Respondent is
commonly known by the <cbpublishing.com>
domain name and never applied for a licence or permission from Complainant to
use the name, as required by some UDRP decisions, Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000); Gallup Inc., v. Amish Country Store, FA 96209
(Nat. Arb. Forum
The
disputed name is a combination of a two-letter acronym (CB) and a dictionary
word (PUBLISHING). Respondent has shown
the generic nature of the acronym CB that can have an unlimited number of
meanings, which can be used together with “publishing.” Respondent has
persuasively shown that the domain name is comprised of generic and/or
descriptive terms, and in any event, is not exclusively associated with Complainant’s
business. See Coming Attractions, Ltd. v. Comingattractions.com, FA 94342 (Nat. Arb. Forum
Furthermore,
the Panel finds that Respondent has rights or legitimate interests in the
disputed domain because it is using it to make a bona fide offering of goods or services pursuant to Policy
paragraph 4(c)(i), by advertising various publishing services. See Funskool
(
For all the reasons above, the
Panel finds that Respondent has a legitimate interest in respect of the domain
name that is subject to the Complaint.
The Panel finds that Respondent did not
register the disputed domain name in bad faith because it is comprised of
common terms. In Canned Foods Inc. v. Ult. Search Inc.,
FA 96320 (Nat. Arb. Forum Feb. 13, 2001), the panel held that when the
domain name is generic, it is difficult to conclude that there was a deliberate
attempt to confuse on behalf of the respondent, and stated that “it is
precisely because generic words are incapable of distinguishing one provider
from another that trademark protection is denied them.”
Also, Respondent and Complainant are not
competitors and Respondent’s website does not specially advertise anything
related to kids, and printed materials are not covered by the trademark
application. Both parties are
established in different countries and there is no evidence that Complainant or
its products are known outside the
According to the WIPO decision IMMEDIATE Mktg. und Media v. Emmediate,
While that list is non-exhaustive, one common feature of all the examples given is that at the time of registration of the domain name the Respondent had the Complainant in mind. In other words, at the time of registration of the Domain Name, the Respondent intended to extort money from the Complainants, to block the Complainants, to disrupt the Complainants' business or to mislead Internet users into believing that the Respondent's online location is in some way associated with the Complainants' online location.
DBIZ2001-00007 (WIPO Feb. 13, 2002). In Advanced Drivers Educ. Prods. &
Training, Inc. v. MDNH, Inc. (Marchex), FA
567039 (Nat. Arb. Forum Nov. 10, 2005), the panel was of opinion that: “for such
bad faith to exist, it is axiomatic that the Respondent must have been aware of
the Complainant’s mark (or at least Complainant’s intent to adopt the mark) at
the time Respondent registered the Domain Name.”
Moreover, various UDRP panels have
declined to infer bad faith registration by a respondent in a different country
from that in which the complainant or its registered marks has had any
reputation. See John
Furthermore, the domain name was acquired as a new registration from a public list of expiring and abandoned domain names. In Corbis Corp. v. Zest, the Panel held
[A] domain registrant who knows a domain name has been abandoned should be more confident, not less so, that there is no competing trademark claim relating to the domain name; a person in the position of Respondent should be more confident than a registrant who selects a previously unregistered name.
There is an element of “finders keepers, losers weepers” in this decision. We believe that is as it should be.
In sum, where a party registers a lapsed domain name, and it is not attempting to use the name to compete with the mark holder or disrupt its business, we believe that ordinarily the trademark holder should be denied relief, whether the mark is a common law or a registered mark, whether the mark is “strong” or “weak.”
FA 98441 (Nat. Arb. Forum Sept. 12, 2001).
For
all the reasons above, the Panel finds that no bad faith can be found in this
case.
Reverse Domain Name Hijacking is defined by the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
Respondent requests the Panel to make a finding of Reverse Domain Name
Hijacking because Complainant did not act in good faith since in its e-mail
sent to Respondent on February 6th, Complainant represented himself as the
trademark holder and did not offer to pay Respondent’s legitimate out-of-pocket
costs with regard to the domain name registration. This case is similar to Qtrade Canada Inc. v. Bank of Hydro, AF-0169 (eResolution June
19, 2000), in which the same factors
allowed the panel to make a finding of Reverse Domain Name Hijacking: a) the complainant
represented itself as a trademark holder in the cease and desist letter to the respondent,
and b) the complaint was based on a pending trademark application. The panelist stated that in these
circumstances:
I
am … troubled by the Complainant’s over-statement of the status of its application
for a trademark for “QTRADE” in
Furthermore, Complainant expanded the list of goods and services covered by its trademark application. The Panel notes that Complainant, while it made reference to its trademark application, did not file a copy of same as an exhibit to its Complaint, which is the standard thing to do in such proceedings. Had it done so, it would have shown immediately that the list of goods enumerated in paragraph 4(c) of the Complaint is much broader than the list of goods appearing in the trademark application. It is Respondent who filed a copy of the application as Annex 3 of its Response. This less than forthright attitude of Complainant corroborates Respondent’s arguments.
Complainant knowingly omitted a
very important fact that its pending trademark application does not and would
not apply to anything connected with publishing or printing. This omission alone is sufficient to find bad
faith and Reverse Domain Name Hijacking. See General Media Commc’ns, Inc. v. Crazy Troll, FA 651676 (Nat.
Arb. Forum May 26, 2006). Complainant also listed in the Complaint extra
classes of goods and services as being covered by the trademark. According to previous UDRP Panels,
presentation of false or misleading information in a Complaint or any other
pleading under the UDRP is a serious abuse of the arbitration process. See Curb King Borderline Edging Inc. v. Edgetec Int’l Pty. Ltd., FA 105892 (Nat. Arb. Forum
May 10, 2002); G. A. Modefine S.A. v. Mani, D2001-0537 (WIPO
July 20, 2001).
The
registration of a domain name is done on the basis of “first come, first served.” Complainant did not in a timely fashion seek
the registration of the domain name in dispute. In fact, Respondent showed from its Google
search (Annex 1) and from other websites listed (Annex 2) that many other
persons could also claim rights to this domain name. Through these proceedings Complainant is
trying to secure a registration which he has failed to secure in a timely
fashion.
Accordingly,
the Panel finds that Complainant has engaged in Reverse Domain Name Hijacking.
DECISION
For all the foregoing reasons, the Complaint is DENIED and the Panel issues a finding that Complainant has engaged in Reverse Domain Name Hijacking.
Accordingly, it is ordered that the <cbpublishing.com> domain name
remains under the ownership of Respondent.
Hugues G. Richard, Panelist
Dated: April 18, 2007
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