NetLearning, Inc. v. Dan Parisi
Claim Number: FA0008000095471
The Complainant is NetLearning, Inc., Knoxville, TN, USA ("Complainant").
The Respondent is Dan Parisi, Secaucus, NJ, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "netlearning.com", registered with Network Solutions, Inc.("NSI").
The Panelist 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 the panelist in this proceeding.
The Panelists are the undersigned, Robert R. Merhige, Jr., Chairperson; Honorable Carolyn M. Johnson (Ret.) and David E. Sorkin, each of whom 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 a Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 08/21/2000; The Forum received a hard copy of the Complaint on 8/21/2000.
On 8/22/2000, NSI confirmed by e-mail to The Forum that the domain name "netlearning.com" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.
On 08/23/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 9/12/2000 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 firstname.lastname@example.org by e-mail.
On September 28, 2000, pursuant to the request to have the dispute decided by a Three Member panel, The Forum appointed Robert R. Merhige, Jr., Carolyn M. Johnson, and David E. Sorkin as Panelists.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
Complainant, NetLearning, Inc., is a Tennessee corporation doing business in the fields of corporate training and certification. Complainant asserts that it maintains trademark and service mark rights in the name "netlearning." Its first use of the subject trade mark / service mark commenced in June, 1997. In addition to its claimed common-law rights, Complainant has applied for registration of the subject trade mark/service mark with the United States Patent and Trademark Office ("USPTO)."
Complainant asserts that the domain name in issue being used in bad faith by the Respondent is identical or confusingly similar to that of Complainant.
Rights in the mark can be established by pending trademark applications. See SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, D2000 - 0131 (WIPO April 13, 2000) (finding that the Rules do not require that the Complainant’s trade mark or service mark be registered by a government authority or agency for such rights to exist).
The Complainant also contends that it has common law rights in the mark. See Tuxedos By Rose v. Hector Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding that the mark has sufficient secondary association with the Complainant that common law trademark rights exist).
Respondent, Don Parisi, is an individual whose address is given as P.O. Box 1230, Secaucus, New Jersey 07094. Respondent contends that the domain name in issue is a common generic name and further that on April 5, 1996, he had registered the domain name with Network Solutions, Inc. ("NSI"). He contends that in April 1996 he had developed a plan to use NETLEARNING.COM as a web site and had filed a trademark application with the U.S. Patent and Trademark Office to offer "educational entertainment services and multi-media interactive products" and for "providing access to information available on computer networks" which was refused on the grounds that NETLEARNING was confusingly similar to a preexisting trademark. Respondent denies Complainant’s allegations.
For the reasons which follow, we conclude that the Complainant is entitled to the relief sought.
As of May 1997, Respondent did not have a webserver connected to the domain name netlearning.com.
Subsequent to being contacted by the Complainant, Respondent commenced his practice of simply holding the domain name in issue and hyper-linking it to pornography web sites. Evidence reflects that this deliberate redirection apparently was for the purpose of ultimately securing from Complainant, who had previously expressed an interest in the domain name in issue, a higher price to preclude its customers being directed to pornographic sites, or to induce anyone with an interest in aspects of "learning" to be unsuspectingly subjected to pornographic material and adult entertainment sources.
This egregious method of connecting a domain name attractive to teachers and what is common knowledge to young and impressionable students is both reckless and distasteful and found by this panel to be in bad faith.
The record reflects that Respondent’s sole utilization of the domain name netlearning.com was to hyper-link it to his other site which as the record reflects, was www.whitehouse.com, a repository for adult entertainment links and pornographic images.
The record before us is devoid of any web site of the Respondent which offers bona fide goods and services having any relationship to the domain name at issue. Other than the use as described, the domain name, netlearning.com has simply been utilized for the purpose of attracting individuals reasonably assumed to be interested in educational pursuits, including young and impressionable students – a category of individuals well known to use the internet in their learning endeavors to pornography sites. We deem this as a perversion of the appropriate development and use of the internet.
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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.
Identical and/or Confusingly Similar
Complainant properly contends that the domain name in question is identical and confusingly similar to its pending trademark application for the mark "NetLearning." The slight and insignificant difference is in the fact that Complainant’s mark does not include a top-level ".com" designation, a fact which does not preclude a finding of "identical and/or confusingly similarity." Medical Solutions Management, Inc. v. WebNet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 6, 2000). The fact that the domain name may be composed of generic terms is of no consequence. See COMING ATTRACTIONS, LTD. v. COMINGATTRACTIONS.COM, FA 94341 (Nat. Arb. Forum May 11, 2000) (finding Respondent had the right to register the subject domain name, <comingattractions.com>, based upon the generic usage of the term "coming attractions"); General Machine Products Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum) (finding that the domain name is comprised of generic or descriptive term).
Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in the domain name because the Respondent has failed to utilize the mark in commerce at any time in the last three years. The record reflects that the Respondent linked the domain name to pornography sites or allowed the domain name to sit dormant. The fact is that the Respondent has not used the domain name in connection with a bona fide offering of goods and services, is not commonly known by the domain name, and has not used the domain name in connection with a noncommercial purpose. Policy ¶ 4.c.(i) - (iii). See PayChex, Inc. v. Goodsoft/Unjin No., FA 95075 (Nat. Arb. Forum July 26, 2000) (finding that the Respondent had no rights or legitimate interests in the domain name); World Wrestling Federation Entertainment, Inc. v. Matthew Bessette, D2000-0256 (WIPO June 7, 2000) (finding that the Respondent had not made a legitimate, noncommercial, or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue).
Registration and Use in Bad Faith
Offering a domain name for sale for valuable consideration in excess of documented out-of-pocket costs is evidence of bad faith. Policy ¶ 4.b.(i). See World Wrestling Fed. Entertainment, Inc. v. Bosman, D0099-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs); Randstad General Partnet, LLC v. Domains For Sale For You, D2000-0051 (WIPO Mar. 24, 2000) (finding bad faith where the Respondent offered the domain name for sale on its website <internetdomains4u.com> for $24,000); America Online, Inc. v. Netsbest, FA 93563 (Nat. Arb. Forum Mar. 29, 2000) (finding bad faith where the Respondent made no use of the domain name <icqguide.com> other than offering it for sale for $99,000).
Though Respondent states in a submission in this case that other than discussions with Complainant, "I have not offered to sell the domain name to any party," we reject the accuracy of that contention by reason of a statement under oath by one Jon Russell to the effect that "in addition to hyper-linking the domain name netlearning.com to a web site on which he offered over one hundred domain names for sale, . . . one of the domain names listed for sale on this site was netlearning.com."
The record discloses that the Respondent in the course of negotiating a possible sale of the domain name expressed the contention that he had paid as much as $25,000 for a name and would not sell the domain name in controversy for less than he had paid for other names. The record reasonably reflects that Respondent sought to sell the name for a sum well in excess of reasonable out-of-pocket costs related to the domain name; and we so find.
Finally, we are told by paragraph 4.b. "UDRP" that evidence of the registration and use of a domain name in bad faith may be established by intentionally attempting, as we find here, "to attract, for commercial gain, internet users to your web site or other on-line location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
The record establishes that at least three users of the web site established by the Respondent asserted under oath that the redirection to a pornographic web site after typing in the URL www.netlearning.com "caused myself and my company confusion as to the location of NetLearning, Inc.’s web site and the type of information which NetLearning, Inc. may sponsor, endorse and be affiliated with." The record reflects that each of the affiants who had been subjected to the confusion were employed in health associated endeavors.
A reasonable conclusion is that Respondent either intended for commercial gain either directly from the references to adult entertainment and/or pornographic material or as a bargaining tool in securing a higher price than had been offered by Complainant for the domain name in issue. However, it makes little difference as to Respondent’s specific motive in his deliberate efforts – in any event it encompassed both embarrassment and harm to Complainant.
At the very least, it entailed the registration and use of the name in bad faith.
For the reasons herein stated, it is decided as follows:
DIRECTED that the registration of the domain name "netlearning.com" be forthwith transferred to the Complainant.
For the Panel:
Robert R. Merhige, Jr. Chair
Carolyn Marks Johnson
David E. Sorkin
Panelist Sorkin DISSENTS:
I respectfully dissent from the decision of the majority of the Panel.
Respondent's domain name is identical to the "NetLearning" mark in which Complainant appears to have common-law rights. Respondent's claim that he also possesses trademark rights in the same term is irrelevant to the issue of identicality, although it may affect the legitimacy of Respondent's interests in the domain name. However, I venture no opinion as to legitimacy (nor as to use in bad faith), because it is abundantly clear to me that the domain name was not and indeed could not have been registered in bad faith, and thus Complainant cannot satisfy the third requirement set forth in paragraph 4(a) of the ICANN Policy.
Respondent registered the domain name at issue in April 1996, while Complainant's first use of the relevant trademark occurred more than a full year later, in June 1997. These facts, in my view, are dispositive of the case. Respondent clearly did not register the domain name in bad faith, as required under paragraph 4(a)(iii) of the ICANN Policy. Since the domain name was not registered in bad faith, the complaint should be denied.
Paragraph 4(a)(iii) of the policy requires that both bad faith registration and bad faith use be proved. Some confusion over this point may have arisen because of the fourth example set forth in paragraph 4(b), cited by the majority of this Panel, which appears to permit bad faith registration to be inferred from subsequent bad faith use. However, the registration-and-use requirement is clearly conjunctive, and if the evidence indicates that the domain name was not registered in bad faith, the complaint must be denied. See, e.g., Passion Group, Inc. v. Usearch, Inc., No. AF-0250 (eResolution Aug. 8, 2000); Shirmax Retail Ltd. V. CES Marketing Group, Inc., No. AF-0104 (eResolution Mar. 20, 2000). The chronology of this case makes it clear that the domain name could not have been registered in bad faith, despite any inferences that might be permitted by paragraph 4(b)(iv).
Bad faith must have existed at the time of Respondent's initial registration or acquisition of the domain name; mere renewal of a domain name in bad faith is insufficient. The decision in Artnews, L.L.C. v. Ecorp.com, No. FA95231 (NAF Aug. 22, 2000), to the extent that it holds to the contrary, is plainly incorrect.
I would deny the complaint based upon a failure to satisfy the requirement of bad faith registration. In fact, I would go one step further and find that the Complainant has abused the UDRP process in an attempt at reverse domain name hijacking. The decision of the majority of this Panel notwithstanding, the impossibility of proving bad faith registration should have been immediately apparent to Complainant at the time that it filed the complaint. See, e.g., K2r Produkte AG v. Trigano, No. D2000-0622 (WIPO Aug. 23, 2000); Loblaws, Inc. v. Presidentchoice, Inc. No. AF-0170 (eResolution June 7, 2000); Shirmax Retail Ltd., supra. Indeed, it appears that Complainant was aware of Respondent's existing registration of the domain name netlearning.com in May 1997, before Complainant even began using the term "NetLearning." If anyone here is guilty of bad faith, it is Complainant, not Respondent.
Finally, I express no view as to the propriety of Respondent's commercial activities. A pornographer he may be, but he is not a cybersquatter, at least not under the facts of this case.
Dated: October 16, 2000
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