Steven Saltman d/b/a DearDiary v.
Dreamissary
Claim Number: FA0109000099701
PARTIES
The Complainant is Steven
Saltman d/b/a DearDiary, Somerville, MA (“Complainant”). The Respondent is Dreamissary,
Portola Hills, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is
<deardiary.com>, registered with Network Solutions.
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.
R. Glen Ayers served as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a
Complaint to the National Arbitration Forum (“the Forum”) electronically on
September 12, 2001; the Forum received a hard copy of the Complaint on
September 18, 2001.
On September 14, 2001, Network
Solutions confirmed by e-mail to the Forum that the domain name <deardiary.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 September 18, 2001, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 9, 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 postmaster@deardiary.com by e-mail.
A timely response was received
and determined to be complete on October 9, 2001.
On October 18, 2001, pursuant
to Complainant’s request to have the dispute decided by a single-member Panel,
the Forum appointed R. Glen Ayers as Panelist.
RELIEF SOUGHT
The Complainant requests that
the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant, Steven Saltman, owns and operates
an on-line diary web service called DearDiary. Complainant alleges that he has used DearDiary in commerce and
has rights to the trademark “DearDiary” as related to on-line diaries, web-logs
and photo albums. Complainant has filed
for registration of DearDiary. He
alleges that there are no other, similar trademarks.
Complainant alleges that <deardiary.com>
is identical to the trademark in question.
Complainant has established a domain name and web site, www.Dear-Diary.com, because Respondent had previously
registered the domain name <deardiary.com>.
The Complainant asserts that he has no knowledge of
any service or product produced by the Respondent or that Respondent utilizes
“deardiary” in any manner. The Respondent is not known by DearDiary or any
derivative of that name. Complainant
asserts that the Respondent is not making use of the domain and, in fact, as of
September 10, 2001, he asserts that there was no web site at <deardiary.com>. After Complainant contacted Respondent regarding the
domain name, Complainant asserts that Respondent redirected the domain to
another, unrelated domain.
Respondent allegedly told Complainant on the telephone
and in writing that the domain is “for sale” for “oodles of money” and gave a
quote of $125,000. Complainant asserts
that the Respondent believes that rightful owners of trademarks should be
required to pay large amounts to re-acquire those trademarks for Internet use.
B. Respondent
Respondent asserts that
Complainant does not own the trademark “DearDiary.” Respondent asserts that Mr. Saltman filed a trademark application
for the term “DEARDIARY” with United States Patent and Trademark Office on
September 10, 2001, the same day Complainant called Respondent to inquire about
the availability of the domain name <deardiary.com>. The application was filed only eight days
prior to the filing of the Complaint. This, says Respondent, is “is a clear
attempt in reverse-hijacking.”
Respondent also asserts that,
even if the trademark application is granted, Complainant will not have any
“claim to the domain name <deardiary.com>, because we have had the
domain name registered since September 1999.”
Respondent alleges that he
registered the domain name <deardiary.com> “ with intent to
develop an interactive Web site, similar to what we have done with Funny.com.
... We have the technology and the
intent to develop <deardiary.com> into a database-driven dynamic
Web site, where users could maintain, comment, message, and vote on other
users’ diary entries....”
Respondent denies that he
registered or the domain name for the purpose of selling or renting it: “When
Mr. Saltman called to inquire about the availability of the domain name, I told
him over the phone that the domain name was not for sale.” Respondent alleges that Complainant “pressed
the issue” and was told that the name was available “for the right price ....”
Respondent also alleges that
the URL “www.deardiary.com” has pointed to “Funny.com for a long time.”
Respondent asserts, again, that
the actions of the Complainant amount to “reverse-hijacking.”
FINDINGS
Certainly, the alleged
trademark and the domain name are identical.
The fact that the mark has not yet been accepted for registration is not
necessarily relevant, since common law marks are sufficient to establish
Complainant’s rights. See SeekAmerica Networks Inc. v. Tariq Masood and Solo
Signs, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not
require that the Complainant's trademark or service mark be registered by a
government authority or agency for such rights to exist. Rights in the mark can
be established by pending trademark applications).
However, Complainant has
offered no evidence of the existence of a common law mark. And, the Complainant
has offered no evidence of the existence of a common law mark in 1999 when
Respondent registered the disputed domain name. Apparently, from the pleadings, Complainant learned of
Respondent’s use when Complainant began to prepare his trademark application
or, at lease, when he registered its “dear-diary” domain name; Complainant
states that he could not register the domain name “deardiary” because the name
was already taken.
Obviously, where the alleged
trademark involves very generic words, the burden to show the existence of a
common law mark is and should be high.
Further, this Panel agrees with the holding in CRS Technology
Corporation v. Condenet, Inc., FA 93547 (Nat. Arb. Forum March 28,
2000). In that case, the panel held
that the first to register a domain name should win even if there was an
arguable trademark where the domain name/trademark involved generic terms. Here, the term “dear diary” is obviously
generic. In order to establish the
existence of a preclusive trademark at common law, the Complainant must offer
more than an allegation that the term has been used by the Complainant in
commerce, especially where the domain name appears to have been registered long
before the Complainant either claimed or perhaps could have claimed any
trademark rights.
Absent evidence of the
existence of a common law mark, the Complainant’s request must be denied.
Respondent’s letter response
was “incomplete” -- the Response was not verified, as required by ICANN Rule
5(b). In such cases, the Panel has the
option of ignoring the Response. In this case, neither party is represented by
counsel. Ordinarily, in cases where
counsel are not involved, this Panel and others have waived this and similar
formalities, and I will do so in this case.
Even if the Response were excluded, the incomplete response is not
crucial, for Complainant has failed to state a prima facie case for the
existence of a mark.
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.
Identical and/or Confusingly
Similar
While the alleged mark and
domain name are identical, Complainant has failed to show the existence of a
mark at common law. Therefore, the
Complaint may be denied without considering the other issues under Paragraph 4
of the ICANN Policy.
Rights or Legitimate Interests
No findings are made.
Registration and Use in Bad
Faith
No findings are made.
Respondent contends that
Complainant is engaged in reverse domain name hijacking with respect to the
disputed domain name. See
Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001)
(finding that to prevail on a claim of reverse domain name hijacking,
Respondent must show that Complainant brought the claim in bad faith despite
the knowledge that Respondent has an unassailable right or legitimate interest
in the disputed domain name, or that Respondent lacks the requisite bad faith
registration and use of the disputed domain name).
Because Respondent has not
presented sufficient evidence, and because Respondent’s pleading is
“incomplete,” I decline to make any findings concerning the Complainant’s
conduct.
DECISION
The relief requested by
Complaint is denied. The domain
name will not be transferred.
R. Glen Ayers, Panelist
Dated: October 28, 2001
Click
Here to
return to the main Domain Decisions Page.
Click
Here to
return to our Home Page