RMO, Inc. v Andy Burbidge
Claim Number: FA0103000096949
The Complainant is RMO, Inc., Denver, CO, USA ("Complainant") represented by Dana Hartje Cardwell, of Sheridan Ross P.C. The Respondent is Andy Burbidge, Rochester Hills, MI, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "rmo.com" registered with Network Solutions.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on March 27, 2001; the Forum received a hard copy of the Complaint on March 26, 2001.
On April 2, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "rmo.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 April 2, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 23, 2001 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 email@example.com by e-mail.
A timely response was received and determined to be complete on April 23, 2001.
On May 2, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr, as Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
RMO, Inc. is a family owned business located in Denver, Colorado.
RMO, Inc. has used the mark RMO in connection with research, development, manufacture, distribution, sale and advertising of dental and orthodontic goods and services since 1933.
RMO, Inc. has been a leader in orthodontic goods and services and provides an entire range of products and services for the orthodontist.
Complainant does business in the both in the United States and in international markets.
Complainant is the owner of U.S. Trademark Registration No. 1,488,072 for the mark RMO. Complainant is also owner of numerous foreign trademark registrations for the mark RMO.
Complainant operates a web site located at RMORTHO.COM which presents information and a video directed toward early treatment and intended to help children make successful dental transitions before their teen years.
Complainant has invested substantial resources in developing and marketing its orthodontic goods and services and the mark RMO. Millions of dollars have been spent in connection with product research and development, intellectual property protection, and advertising and promotion of goods and services offered in connection with the mark RMO. Sales of goods and services under the RMO mark amount to over 23 million dollars annually.
The general public has come to associate the name and mark RMO with orthodontic goods and services of a high and uniform quality. RMO is famous and distinctive.
On May 5, 1996, Respondent registered the domain name RMO.COM. Complainant contacted Respondent on several occasions to discuss a transfer of the domain name to Complainant, in exchange for Respondent’s out-of-pocket costs directly related to the domain name. These efforts were unsuccessful. Attempts were made in the year 2000 by telephone and mail to contact Respondent. Respondent made no response to these communications.
The RMO.COM domain name is identical to the RMO mark used and federally registered by Complainant.
Respondent has no rights and interests in the domain name. Respondent is not commonly known by the name or mark RMO and has no affiliation or relationship with Complainant. Respondent has made no legitimate use of the RMO.COM domain name and Respondent’s intent in registering the domain name appears to have been to misleadingly divert/confuse consumers and to tarnish Complainant’s trademark rights.
Respondent had knowledge or reasonably should have had knowledge of Complainant’s prior adoption, use and registration of the well-known RMO mark.
Respondent registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name to Complainant for valuable consideration in excess of out-of-pocket costs, and to prevent Complainant from reflecting the mark in a corresponding domain name, for disrupting the business of Complainant and to intentionally attempt to attract Internet users to the domain site by creating a likelihood of confusion with RMO, as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site.
Respondent is Andrew Burbidge of Rochester Hills, Michigan.
Prior to May 1996 Burbidge was the webmaster for a web site entitled Rocky Mountain Outfitters in Rochester, Michigan. This business was the original owner of RMO.COM, but went out of business late in 1995 or early 1996. When the renewal of the domain name came up, the original owner did not want to retain the site or domain name so the registration was changed to Burbidge.
Burbidge took over the domain name because he considered it to be short, easy to remember and would help his friends and family to remember his e-mail address and web site.
RMO.COM was to be used by Respondent to present "my life" and to assist him in a small web design business that he ran.
Until the time Complainant contacted Burbidge, he was not aware of its business, trademark, or of its existence.
Complainant contacted Respondent on June 29, 1999 looking to obtain the domain from Respondent. Respondent told Complainant on this occasion and to many other inquiries made by Complainant that Respondent had a lot invested in the domain name and was not interested in selling the domain name.
Respondent uses the web site for a combination of purposes from presenting many details and accounts of his life, family and friends to hosting small web pages for friends’ businesses, giving Respondent an opportunity to learn about web site design.
A lot of time was invested recounting this site, in word and picture; many events of deep personal meaning to Respondent and his family are involved. A large number of e-mail addresses for friends and family at RMO.COM have been created. RMO.COM is synonymous with the Burbidge family and friends.
There is no similarity between the trademark and the domain name.
There has never been anything on the site that relates to the dental field.
There is nothing on the web site that would lead a visitor to believe that the visitor had reached a site belonging to Complainant.
Respondent contends that he is commonly known as RMO.COM by an extremely large circle of family, friends, acquaintances and co-workers all over the world.
RMO is not a famous trademark name. It is limited to the field of orthodontics.
Respondent has never resold or leased a domain name.
There is no confusion created by the web site. Anyone reaching it will see that it has nothing to do with a dental company.
Respondent acquired the domain name for honest and valid reasons. Complainant waited three years to make contact with Respondent.
Respondent denies an attempt to sell the domain name to Complainant, to attract Complainant’ customers, to prevent Complainant from registering the domain name, to disrupt Complainant’s business or create confusion.
Respondent did not choose the domain name at random, or with a hidden agenda. The letters RMO are not instantly recognizable as anything, as would be IBM or CBS, so there was no reason for Respondent to suspect that anyone had a strong claim to the domain name. Had Respondent, at the time and with no investment in the domain name, known about Complainant’s trademark, he would have entertained discussions about its transfer. That is now "water long under the bridge."
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.
Identical and/or Confusingly Similar
It cannot seriously be argued that the trademark RMO and the domain name RMO.COM are not identical. See BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) which found that there was no doubt that the domain name, "bmw.org" is identical to Complainant’s well-known and registered trademark, BMW. See also Interstellar Starship Ltd. v. EPIX, Inc., 983 F.Supp. 1331 (D.C. Or. 1997) which held that "epix.com" was identical to "EPIX". See also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000). Complainant has rights in the trademark. Complainant prevails on this issue.
Rights or Legitimate Interests
Complainant has shown that it owned the registered trademark RMO at the time that the domain name ROM.COM was registered and renewed. Complainant has further shown that it has no relationship of any kind with Respondent nor has Complainant authorized or licensed Respondent to use the trademark. Respondent makes no showing that it has permission from Complainant to use the trademark in a domain name. Respondent admits that he has nothing at all to do with Complainant. Both parties agree that Complainant contacted Respondent with the request that the domain name be transferred to Complainant. Under these factual circumstances, the burden must shift to Respondent to illustrate that he has rights or legitimate interests in the domain name. See Sony Corporation v. Times Vision, Ltd., FA 95686 (Nat. Arb. Forum Mar. 9, 2001).
Respondent may do so in any of the ways stated in Paragraph 4(c) of the Uniform Domain Name Dispute Resolution Policy. The methods set out in Paragraph 4 (c) are as follows:
Respondent contends that he has been commonly known by the domain name by his family and friends and thus satisfies Paragraph (ii). It is clear from the evidence that Respondent was never known by the domain name prior to his registration of it but only thereafter. This Panel interprets Paragraph (ii) to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail. Respondent’s showing fails to prove the elements of Paragraph (ii).
Respondent contends that he uses the domain name by making a legitimate noncommercial or fair use of it, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of Complainant. Reference to the printouts of web site pages presented by Complainant as evidence in this case displays a site devoted to the personal activities of Respondent, his family and his friends. No commercial purpose is evident. Respondent admits that he, as a "small web design business" uses "RMO.COM as the advertised e-mail address, source for portfolio listing and test bed for trying out new ideas for my customers." The admission of commercial use on an occasional basis does not change the site from its basic purpose as a personal site since there is no evidence in this record to illustrate that these occasional uses are intended for commercial gain to misleadingly divert consumers of Complainant or to tarnish Complainant’s trademark. Respondent strongly avers that he has no intent to divert consumers of Complainant to his web site. Respondent contends that there is no problem of Complainant’s customers being misled to Respondent’s web site and no chance of confusion of one believing that one reaching Respondent’s web site has actually reached a web site operated or authorized by Complainant. None of the content of Respondent’s web site deals with dentistry or any of the types of goods or services offered in commerce by Complainant.
The inference can be fairly drawn that Respondent may well be correct. Complainant waited for approximately three years to challenge Respondent’s right to use the domain name. It can be inferred that Complainant would not tolerate customer confusion and suffer its trademark to be tarnished for such a long period of time if these alleged conditions constituted a material matter.
A family information site is a legitimate non-commercial use. The use of domain names for non-commercial purposes is a recognized method of proving rights and legitimate interests on the part of such user even when the use may cause some disadvantage or harm to other parties. See Kendall v. Mayer, D2000-0868 (WIPO Oct. 26, 2000), TMP Worldwide, Inc. v. Potter, D2000-0536 (WIPO Aug. 5, 2000), See also Lockheed Martin Corp. v. Etheridge, D2000-0906 (WIPO Sept. 24, 2000).
The general burden of proof in all domain name dispute cases is upon the Complainant. Mere allegations are not sufficient unless supported by some proof or facts to confirm the allegations to be true. "The policy is only designed to deal with clear cases of cybersquatting. This procedure is not a convenient forum for resolving borderline disputes and/or cases involving material conflicts of fact." Centennial Communications Corp. v. Centennial, D2000-1385 (WIPO Jan. 31, 2001).
Complainant has failed to prove that Respondent has no rights or legitimate interests in the domain name RMO.COM.
Registration and Use in Bad Faith
No evidence has been presented to confirm that Respondent registered the domain
name with an intent to sell, rent or transfer it to Complainant or a competitor of Complainant. The evidence presented is that Complainant sought transfer of the domain name some three years after Respondent registered and began using it for his family web site. Respondent alleges that he would have considered a transfer at or near the time of registration had he known of Complainant’s position, but was unwilling to transfer the domain name some three years later after having put considerable effort into its content.
No evidence has been advanced to show that Respondent has engaged in a pattern of conduct of registering domain names to prevent the owner of the trademark from reflecting the mark in a corresponding domain name.
No evidence is present to display a purpose by Respondent to disrupt the business of a competitor. Respondent is not a competitor of Complainant. Respondent is apparently not a competitor of anyone in the operation of his personal web site.
No evidence appears that indicates an intentional attempt by Respondent to attract, for commercial gain, Internet users to Respondent’s web site, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or to a product or service on the web site.
The examples of registration and use in bad faith set out in Paragraph 4(b) of the Uniform Domain Name Dispute Resolution Policy, as discussed above, are not proved. Respondent must prevail on the issue of bad faith registration and use.
THE COMPLAIN OF RMO, INC. v. ANDY BURBIDGE, IS HEREBY DISMISSED AND COMPLAINANT’S DEMAND THAT THE DOMAIN NAME, RMO.COM BE TRANSFERRED TO COMPLAINANT FROM RESPONDENT IS DENIED.
Tyrus R. Atkinson, Jr., Esq.
Dated: May 16, 2001
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