2008 Democratic National Convention Committee, Inc. v.
Fernstrom Inc.
Claim Number: FA0703000933062
PARTIES
Complainant is 2008 Democratic National Convention
Committee, Inc. (“Complainant”),
represented by Joseph E. Sandler, of Sandler, Reiff & Young, 50 E Street, S.E. #300, Washington, DC 20003. Respondent is Fernstrom Inc. (“Respondent”), represented by Stephen
R. Smith, of Powell Goldstein LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <democraticconvention.com>,
registered with Network Solutions, 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.
David E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 5, 2007; the
National Arbitration Forum received a hard copy of the Complaint on March 6, 2007.
On March 6, 2007, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <democraticconvention.com> domain
name is registered with Network Solutions, Inc.
and that Respondent is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 March 13, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 2, 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@democraticconvention.com by e-mail.
A timely Response was received and determined to be complete on March 29, 2007.
An Additional Submission from Complainant was received on April 2, 2007,
and was considered to be timely and complete pursuant to Supplemental Rule 7.
An Additional Submission from Respondent was received on April 4, 2007,
and was considered to be timely and complete pursuant to Supplemental Rule 7.
On April 5, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David E. Sorkin as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that the disputed domain name <democraticconvention.com>
is confusingly similar to the registered service mark DEMOCRATIC NATIONAL
CONVENTION, U.S. Patent & Trademark Office registration number
2,087,234. Complainant states that it is
the owner of this mark as a successor organization to and assignee of the 1996
Democratic National Convention Committee, which originally registered the mark
in 1997.
Complainant further contends that Respondent lacks rights or legitimate
interests in respect of the disputed domain name, having registered it in
August 1998 but never having used it for a website or any offering of goods or
services.
Complainant contends that the disputed domain name was registered and
is being used in bad faith because Respondent registered the domain name for
the purpose of selling it to Complainant or its competitors at a substantial
profit, and because if Respondent does plan to use the domain name in the
future, such use will be for the purpose of misleading Internet users by
creating a likelihood of confusion with Complainant’s mark.
In support of its contentions as to bad faith, Complainant states that
Respondent’s principal is a former Republican convention official, and describes
a telephone conversation in which she allegedly stated that she expected to
receive a substantial price for the domain name.
B. Respondent
Respondent contends that Complainant is not the owner of the DEMOCRATIC
NATIONAL CONVENTION registered mark, because in fact the mark was registered to
the Democratic National Convention Committee Inc. and subsequently assigned to
the Democratic National Committee, Inc., rather than to Complainant, as
asserted in the Complaint.
Respondent contends that Complainant has failed to make a prima facie showing that Respondent
lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Respondent contends that Complainant has failed to establish
that the disputed domain name was registered and used in bad faith. Respondent disputes the relevance of its
principal’s political associations, and provides a sworn affidavit in which
Respondent’s principal contradicts Complainant’s account of the parties’
telephone conversation. The affidavit
states that Respondent did not register the disputed domain name for the
purpose of selling it, and that Respondent has never offered it for sale.
C. Additional Submissions
Both parties have tendered Additional Submissions pursuant to the
Forum’s Supplemental Rule 7. The
parties’ Additional Submissions primarily restate arguments contained in the
parties’ initial submissions or respond to material contained in opposing
submissions that the parties should have anticipated. While Supplemental Rule 7 sets forth a
procedure for the submission of additional statements and documents, it does
not confer upon parties any right to have such submissions considered by a
panel. Under Paragraph 12 of ICANN’s
Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”),
discretion to request additional submissions rests solely with the Panel, and
such submissions should be permitted only in exceptional circumstances. See,
e.g., Aylward v. GNO, Inc., FA 751622 (Nat. Arb. Forum Sept. 8, 2006). Having carefully reviewed the record before
the Panel and the parties’ Additional Submissions, the Panel finds no such
circumstances to be present in this case, and therefore disregards both
parties’ Additional Submissions in their entirety.
FINDINGS
The Panel finds that the disputed domain name
is confusingly similar to a trademark or service mark in which Complainant has
rights, that Respondent lacks rights or legitimate interests in respect of the
disputed domain name, and that the disputed domain name was registered and is
being used in bad faith.
DISCUSSION
Paragraph 15(a) of 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 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 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 disputed domain name is quite similar to
the DEMOCRATIC NATIONAL CONVENTION registered mark; the primary issue here is
whether Complainant has rights in that mark.
The Panel does not consider the distinctions between the various
affiliated entities (the Democratic National Committee, the 2008 Democratic
National Convention Committee, and predecessor convention committees) to be
consequential for purposes of this proceeding, and notes that the parties
themselves seem to have treated these entities interchangeably for most
purposes. The Policy requires merely
that Complainant have rights in the mark, not that it be the owner of the
mark. The Panel therefore finds that the
disputed domain name is confusingly similar to a mark in which Complainant has
rights.
Complainant contends that Respondent lacks
rights or legitimate interests in the disputed domain name because it has never
made active use of the name despite having registered it more than eight years
ago. This allegation suffices to shift
the burden of production to Respondent, to rebut Complainant’s prima facie showing with concrete
evidence that Respondent has rights to or legitimate interests in the disputed domain
name, although the ultimate burden of proof remains with Complainant. See Deer Valley Resort Co. v. Intermountain Lodging, FA 471005
(Nat. Arb. Forum June 9, 2005).
Respondent has not met that burden of
production in this case. Indeed,
Respondent has not offered any basis from which the Panel might reasonably
conclude that Respondent has rights or legitimate interests in the domain name,
let alone concrete evidence of such rights or interests. The Panel therefore finds that Respondent
lacks rights or legitimate interests in respect of the disputed domain name.
Complainant contends that the disputed domain name was registered and
is being used in bad faith because, inter
alia, Respondent registered the domain name for the purpose of selling it
to Complainant or its competitors at a substantial profit. Such circumstances, if found by the Panel to
be present, shall serve as evidence of registration and use in bad faith under
Paragraph 4(b)(i) of the Policy.
In support of its claim Complainant refers to a telephone conversation
between the parties, although the content of that conversation is in
dispute. The Panel does not consider
that evidence to be particularly probative.
However, the Panel notes that Respondent registered the disputed domain
name over eight years ago, has apparently made no active use of it during that
period, and—most tellingly—offers no explanation of its reasons for registering
the domain name, let alone a plausible reason or one supported by
evidence. Although the Panel is
exceedingly reluctant to find bad faith registration and use based upon mere
passive holding of a domain name, Respondent has not provided the Panel with
any viable alternative explanation for its actions. The Panel therefore concludes that the
disputed domain name was registered and is being used in bad faith.
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 <democraticconvention.com> domain
name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 10, 2007
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