TXDC, L.P. v. Lee Gordon
Claim Number: FA1101001368396
Complainant is TXDC, L.P. (“Complainant”), represented by Remy M. Davis, Texas, USA. Respondent is Lee Gordon (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gordons.com>, registered with GoDaddy.com, Inc (“Domain Name”).
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.
Clive L. Elliott as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 19, 2011; the National Arbitration Forum received payment on January 19, 2011.
On January 20, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <gordons.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 9, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@gordons.com. Also on January 20, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on February 8, 2011.
On February 14, 2011 The National Arbitration Forum received an Additional Submission from Complainant together with the appropriate payment.
On February 15, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Clive L. Elliott as Panelist.
On February 28, 2011 the Panelist issued an Order stating that upon reviewing the Complaint, Response and Additional Submissions it was noted that while Respondent contended that he has legitimately used the Domain Name in connection with the Gordon Tree Farm and for purposes of business and personal e-mails that no evidence was provided to support this contention. It was also noted that Complainant disputed this contention and referred to the lack of any supporting evidence. Given the importance of this issue Respondent was given 5 days to provide supporting evidence, accompanied to the extent necessary, by any brief written explanation or statement.
Respondent availed himself of this opportunity and his Additional Submission accompanied by four signed statements was received by the Forum on March 4, 2011.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant advises that it is a wholly owned subsidiary of Zale Corporation, together with its general partner Zale Delaware, Inc, (collectively referred to as “Zale”), and is the owner of numerous trademarks and service marks incorporating and featuring the term “Gordon’s” in connection with retail jewelry store services in the United States and throughout the world. The trademark GORDON’S has been in use since 1915 in connection with retail jewelry store services and Complainant contends it has come to exclusively signify jewelry store services originating with Zale. Complainant states it has invested substantial effort and expense in developing goodwill in the Gordon marks and contends that the public recognizes the Gordon marks as distinctively designating its goods and services.
Complainant advises that it owns the domain name <gordonsjewelers.com> (the "Gordon's website"), and for the past 13 years it has used this website to provide a source of advertising and sales for its jewelry store services and that the GORDON'S and GORDON'S JEWELERS marks are used extensively on the Gordon’s website. Complainant states that is commonly known by the mark "Gordon's".
Complainant contends that the Domain Name is confusingly similar to its own distinctive and famous Gordon Marks, and more particularly to its GORDON'S mark. Complainant submits that it has clear priority rights in the GORDON'S, GORDON'S JEWELERS, and GORDON'S JOYEROS marks, which have all been in use prior to Respondent's registration of the Domain Name in 1995.
Complainant states that the Domain Name incorporates the entire word portion of its GORDON'S mark, and the distinctive portion of its other Gordon Marks and further submits that neither the inclusion of a top-level domain name, such as ".com," nor the exclusion of the apostrophe diminishes the confusing similarities between the Domain Name and the Gordon mark.
Complainant states that Respondent has no rights or legitimate interest in the Domain Name as it has not been authorised to use GORDON’S in its domain name and it is not affiliated with Complainant. Complainant acknowledges that Respondent’s surname is Gordon but understands that it is not commonly known as any of Complainant's Gordon Marks and is not affiliated with any business known by the name <gordons.com>.
Complainant contends that Respondent has registered the Domain Name in bad faith and is not using the Domain Name in connection with any bona fide offering of goods and services. Complainant further contends that Respondent is exploiting the fact that Complainant's customers and potential customers may believe that the official website for Complainant's services is located at the Domain Name instead of the Gordon’s website. Complainant submits that the Domain Name is a parked website which redirects consumers to third party domain names thereby operating as a pay per click website earning Respondent a fee when users are redirected to third party websites featured as "Sponsored Links" and which are competitors of Complainant.
B. Respondent
Respondent contends that whilst Complainant is a corporation with a market capitalization of $140,000,000, Respondent is a private individual. Respondent advises that since it received the Complaint it has redirected <gordons.com> to a different web site and will continue to do so until this dispute is resolved. For the purposes of this response Respondent references <gordons.com> website to refer specifically to the website as it generally appeared on January 19, 2011 and other references to <gordons.com> refer to the Domain Name.
Respondent acknowledges that Complainant is the owner of the trademark "Gordon's", in connection with "retail jewelry store services" and he also acknowledges that the domain name <gordons.com> is, for practical purposes, identical to the trademark.
Respondent contends that it has both rights and legitimate interests in using <gordons.com> and that it has been used in connection with a bona fide offering of goods and services. Respondent argues that because Gordon is a common surname, its use in a trademark requires the addition of a secondary meaning and that a trademark using a common name can only be applied in the narrow context of its secondary meaning and even then, such a trademark is exceptionally difficult to defend. Respondent states that this difficulty is demonstrated by the large number of retail jewelry stores that use the name Gordon or Gordon's, and notes by way of example:
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Store name Samuel Gordon Jewelers Ariel Gordon Jewelry Scott Gordon Jewelry Susan Gordon Jewelry Gordon Jewelers (Missouri) Gordon Jewelers (New Mexico) Whitney Gordon's Jewelry Goldstein Swank and Gordon Jewelers
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Domain name samuelgordons.com arielgordonjewelry.com scottgordonjewelry.com susangordonjewelry.com gordonsnm.com gordonjewelers.corn whitneygordons.com goldsteinswankgordon.com |
Respondent suggests that whilst many of these jewelry store names are confusingly similar either to "Gordon's" or to "Gordon's Jewelers", none of them were registered prior to the date the trademarks "Gordon's" and "Gordon's Jewelers" were registered and yet there is no record in the FORUM of challenges regarding any of the domain names listed. Respondent argues that given Complainant's size and the value it claims to place on its trademarks, it must have been aware of these stores and their websites.
Respondent contends that the goods and services advertised on its <gordons.com> website are bona fide offerings of goods and services and claims that the primary use of <gordons.com> is in connection with the Gordon Tree Farm which Respondent manages and which is entirely owned by RLG LLC (Arkansas). The Gordon Tree Farm consists of timberland in southeast Arkansas and Respondent regularly uses <gordons.com> for timber transactions and farm management.
Respondent asserts that its use of <gordons.com> is necessarily hidden from public view because, unlike a large jewelry company like Zale which makes many transactions every day, timber transactions are infrequent because decades can pass from the time a tree is planted to when it is harvested. Respondent says that the community that includes both timber services and timber customers is tiny compared with the market for jewelry and whereas Zale would welcome frequent contact from people buying jewelry, Respondent on the other hand would be overwhelmed if he had to service the same traffic on his website as does Zale. With that in mind, Respondent takes steps to limit traffic on his website, whilst still encouraging traffic from members of the timber community. Respondent explains how Google Maps illustrates how this is done. After creating a map, one may mark it public, which means that it can be discovered by search services, or private, which means that visitors must have the exact URL to get to the map. Respondent places resources on his website when he has a requirement to do so, then notifies appropriate people how to access the resources. When the resources are no longer required, he removes them to prevent access to out-of-date resources. Respondent advises that has no such resources on his website today.
Respondent submits that a further reason to keep <gordons.com> resources hidden from view of the general public is to protect the domain against spammers and hackers. <gordons.com> gets a great deal of traffic because there are so many businesses that use the name Gordon. Because of this, Respondent advises it takes two additional steps, firstly he prevents the URLs http://www.gordons.com or http://gordons.com from resolving to resources associated with his business, and he places a file, robots.txt, in the root directory to which the names resolve, to prevent search bots from indexing the website. This is why a Google search on the keyword "gordons" fails to turn up <gordons.com>.
Respondent asserts he has developed significant customer goodwill in his community for high quality products and high integrity in his business dealings and his domain name is an important factor in this goodwill.
Respondent submits that it is not possible for Complainant to judge the legitimate commercial use of the <gordons.com> web pages on the basis of what is visible on the domain's main web pages and whilst Complainant has created a prima facie case that Respondent has made no legitimate use of <gordons.com>, information to which Complainant has no access demonstrates that its case is not valid.
Respondent asserts that his business is known through his <gordons.com> domain, his personal email address at <gordons.com> is also his primary and permanent personal email address, through which he is known as well as members of his family. Respondent states that he registered the Domain Name in 1995 with the primary intent of using it for email and he has used it since then as his primary email address. He has also used it in his timber business since becoming the manager of RLG LLC and the loss of the <gordons.com> email would cause irreparable harm to the operation of Respondent's timber business. Because this email address is also Respondent’s permanent personal email address Respondent states that there are many people with whom he must remain in contact, whose means of contacting him is his email address and the loss of <gordons.com> for email would cause irreparable personal harm to him and other members of his immediate and extended family. Respondent also asserts that his family often creates private web pages for the benefit of family and friends, including for example links in Christmas cards to private web pages incorporating videos of his children and the aftermath of the 2003 Cedar fire in his neighborhood.
Respondent advises that he has never had any interest in selling the Domain Name although he contends that he has received many offers to resell <gordons.com>, for sums in the region of $10,000 - $20,000, but he has never countered an offer with a higher price.
Respondent argues that when he registered the Domain Name, he had no knowledge of the "Gordon's" trademark and it was at least five years before Complainant had established a web site at <gordonsjewelers.com>.
Respondent states that he began to use the services of a domain monetization company only recently after such a company contacted him. With effect from October 2010 Respondent began using the services of <DomainSponsor.com>, primarily because of this service's "patented keyword optimization", combined with their "optimized landing page designs". These services alleviated the need for Respondent to have to develop his own design or to decide what to put on the website. <DomainSponsor.com> recommended its jewelry landing page because that is one of their top revenue producers.
Respondent suggests that for the above reasons the Panel should find the Complaint is an effort at reverse domain name hijacking by Complainant.
C. Additional Submissions
Complainant notes that Respondent attempts to establish that his use of the Domain Name is in connection with a legitimate offering of bona fide goods or services but contends that Respondent's assertions are without merit. Respondent first argues that Complainant lacks exclusive rights because Complainant's Gordon marks incorporate the name "Gordon," which can be a surname. In support, Respondent cites certain third-party domain names that may use the term "gordon" or "gordons" in a domain name. Secondly, Respondent attempts to distinguish his use of the term GORDON'S on the website located at the Domain Name from Complainant's based on the fact that Complainant's use of the GORDON'S mark is in connection with "retail" jewelry store services, as opposed to "online" jewelry store services.
Complainant submits that not only does Respondent admit that Complainant owns valid trademark rights in the GORDON'S mark, Respondent makes no valid argument attacking the validity of Complainant's Gordon Marks and instead makes unsupported and vague statements related to the difficulty of defending rights in a trademark in a surname by citing websites that include the term "gordon" or "gordons" in connection with jewelry store services.
Complainant contends that Respondent attempts to claim that Complainant's rights in its Gordon marks are limited to brick-and-mortar stores because of the use of the term "retail" in Complainant's Certificates of Registration and that such differentiates Complainant's use of the Gordon Marks from Respondent's use of the term "Gordons" allegedly in connection with "online" jewelry-store services. Complainant submits that this argument is entirely without merit and that the definition of "retail" is "to sell in small quantities directly to the ultimate customer". Respondent is misguided in his claim that "retail" differentiates the sale of goods by location (brick-and-mortar instead of online), when in fact, the term "retail" differentiates the method by which a product is sold—either retail directly to an ultimate consumer or "wholesale", in which goods are sold for resale (as by a retail merchant). To the contrary of Respondent's claim that consumers differentiate between a retail and on-line stores, the pervasive use of the Internet simply means that consumers assume that retail stores will also have an on-line presence by which consumers can order the goods on-line.
Complainant submits that the Domain Name, as such existed prior to the institution of this proceeding, was a parked website with pay-per-click links to websites owned by competitors of Complainant and that Respondent operated the website for no purpose other than profiting from the initial interest confusion created when consumers typed in the <gordons.com> domain name in search of Complainant's official website located at <gordonsjewelers.com>. Upon reaching the <gordons.com> domain name, a user would see advertisements for jewelry products and "sponsored links" that redirected the consumer to competitor websites of Complainant.
Complainant disputes Respondent’s allegations that the <gordons.com> website is used in connection with an alleged family business, the Gordon Tree Farm. Complainant claims that this assertion is given without any supporting evidence, and is contradicted by the website printouts attached to the Complaint that show the website located at <gordons.com> domain name prior to the institution of this proceeding. Such website was not blocked from public access, as Respondent claims, nor was it associated with a tree farm to Complainant's knowledge. Instead, Complainant submits, the website located at the domain name operated as a parked website purporting to advertise jewelry products, but which then redirected consumers to third-party domain names. There is no evidence that Respondent has ever operated a website at the <gordons.com> for any purpose other than to profit off of the initial interest confusion of consumers that were searching for Complainant's website located at <gordonsjewelers.com> by redirecting such consumers through pay-per-click advertising to competitor websites.
Respondent also claims that he registered the Domain Name with the primary intent of using such for personal email and that Respondent uses the Domain Name to operate his personal and business email. Again, Respondent's claims are belied by the evidence submitted by Complainant regarding Respondent's actual use of the domain name, and also by the lack of evidence submitted by Respondent to support such claims. While Respondent also claims that his family often creates private web pages for the benefit of family and friends, Respondent has submitted no evidence that the <gordons.com> domain name is used or has been used for such a purpose.
Despite Respondent's claims that he has never tried to resell the <gordons.com> domain name, immediately upon the institution of this proceeding, Complainant states that Respondent contacted both Complainant and Complainant's attorney in such an attempt. In this correspondence, Respondent suggested that the parties pursue a "mutually beneficial, cooperative agreement" and claimed to redirect the Domain Name to Complainant's website located at the <gordonsjewelers.com> domain name. This correspondence both evidences Respondent's recognition of Complainant's rights in the domain name, and also contradicts statements in his Response that loss of the Domain Name would cause irreparable harm to Respondent's alleged timber business. The fact that Respondent immediately contacted Complainant to negotiate some type of agreement by which he would redirect the Domain Name to Complainant's <gordonsjewelers.com> domain name further indicates that Respondent neither had legitimate rights or interests in or to the Domain Name nor legitimate use of the Domain Name.
Complainant contends that Respondent has registered, and is using, the domain name in bad faith. Complainant's GORDON'S and GORDON'S JEWELERS marks have been in use since at least as early as 1915, and Complainant operates its retail jewelry store services throughout the country. When Respondent registered the Domain Name, Complainant had been using its GORDON'S and GORDON'S JEWELERS marks for over eighty years and both had been federally registered for four years. The federal registrations provide constructive notice of Complainant's registered marks, and therefore Respondent is deemed to have had knowledge of Complainant's trademark rights.
Complainant states that whilst Respondent acknowledges that his original website located at the Domain Name is maintained by a "domain monetization company" that uses a keyword system to create an "optimized landing page design," and that such "alleviated the need for Respondent to have to develop his own design or to decide what to put on the website", Complainant claims that this statement contradict claims by Respondent that he has used the domain name in connection with a tree-farm business and for personal family email, but submits that it is an admission that Respondent is profiting from a website that links consumers to jewelry-related websites because the term "gordons" is known by consumers to be associated with jewelry,.
Complainant disputes Respondent’s claims that he has "redirected <gordons.com> to a different web site since receiving the Complaint..." and submits that Respondent began directly copying the content of Complainant's website located at <gordonsjewelers.com> and displaying it on the <gordons.com> website as if his site were owned by, affiliated with, or sponsored by Complainant, and purporting to allow consumers to purchase jewelry by giving credit card information. Complainant submits that such trademark and copyright infringement is clear evidence of Respondent's bad faith use of the Domain Name. Only after the companies that host the <gordons.com> website were informed of Respondent's actions and blocked Respondent's site from incorporating the content from Complainant's site did Respondent change the content on the <gordons.com> site.
For the reasons set out below the Panelist concludes that Complainant has failed to establish all three elements of the Policy and accordingly that the Complaint is denied.
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; and
(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.
Complainant argues that it has rights in the GORDON’S mark as a wholly owned subsidiary of Zale Corporation, the registered owner of the mark. Complainant owns a trademark registration for the GORDON’S mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,637,242 issued March 5, 1991). The Panel is satisfied that the said trademark registration sufficiently establishes Complainant’s rights in the GORDON’S mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that the Domain Name is identical to Complainant’s GORDON’S mark. This argument is hard to refute under the circumstances and Respondent did not seek to do so. The Panel has no difficulty in concluding that the GORDON’S mark and the Domain Name are identical according to Policy ¶ 4(a)(i).
Respondent asserts that his surname is "Gordon" and that he is known in his business through the Domain Name. Respondent asserts that his personal email is at <gordons.com> and that he has used the Domain Name in various personal dealings and in his timber business.
This is one of the issues that arose and was dealt with by the Order dated February 28, 2011 in response to which Respondent presented four signed statements. While this evidence is not provided in sworn form it does present some evidence that Respondent is commonly known by the Domain Name and as a result has rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Avnet, Inc. v. Aviation Network, Inc., D2000-0046 (WIPO Mar. 24, 2000) (finding that the respondent was commonly known by the <avnet.net> domain name because the respondent submitted “evidence that it was known by the name AVNET for at least ten years prior to its domain name registration”).
Respondent asserts that he uses the Domain Name in connection with a bona fide offering of goods and services, namely in connection with the Gordon Tree Farm. Respondent asserts that he regularly uses the Domain Name for timber transactions and farm management. Respondent also contends that he routinely uses the Domain Name for legitimate private noncommercial use, creating private web pages for the benefit of family and friends. The Panel considers that this explanation is reasonable and finds that Respondent has shown rights and legitimate interests in the Domain Name by using it in connection with a bona fide offering of goods or services according to Policy ¶ 4(c)(i) and a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent also argues that “Gordon” is a common surname, and therefore, its use in a trademark requires additional secondary meaning. Respondent asserts that there are a large number of jewelry stores that use the name “Gordon” or “Gordon’s” in both the business name and the corresponding domain names. Respondent asserts that Complainant’s trademark is specific to retail jewelry stores which are differentiated from online stores.
Respondent alleges that, because the term of <gordons.com> is common and generic or descriptive, Complainant does not have an exclusive monopoly on the term on the Internet. The Panel regards the first point in this paragraph as a relevant factor but not a particularly strong one. What it does however do is support the argument that not only the Complainant has a legitimate interest in the word Gordon’s.
Accordingly, Complainant fails to establish this element of the Policy.
The Panel considers that the above finding that Respondent has rights or legitimate interests in the Domain Name pursuant to Policy ¶ 4(a)(ii), is relevant to the question of whether Respondent registered and used the Domain Name in bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent argues that he did not register the Domain Name in bad faith. He asserts that he registered it in 1995 with the purpose of using the Domain Name for a permanent family email address. Respondent alleges that he has never tried to resell the Domain Name, even though various offers have been made through the years, with some as high as $20,000.
Respondent also contends that at the time he registered the Domain Name, he had no knowledge of Complainant’s GORDON’S trademark and Complainant had not yet even established its own website at the <gordonsjewelers.com> domain name.
Respondent contends that he only began to use the services of a domain monetization company recently after being contacted by that company.
The Panel finds that Respondent has established that he did not register and is not using the Domain Name in bad faith under Policy ¶ 4(a)(iii). The issue that arises in the present case is whether, even if it is found to be the case, questionable or improper use of a domain name (for example through monetization) can convert a name originally registered in good faith to a name registered in bad faith. That is, through later use or upon subsequent renewal of the domain name. The starting point for this enquiry must be that in the present case there is no evidence that the original registration was obtained in bad faith. On this basis, the Panel concludes that it is not open to find that subsequent bad faith use (if found to exist) is capable of converting prior good faith registration into bad faith conduct of the type contemplated by the Policy. See Sanitech Corp. v. Paton, FA 935273 (Nat. Arb. Forum Apr. 30, 2007) (holding that Policy ¶ 4(a)(iii) requires bad faith registration and use, so where a respondent initially registered the disputed domain name in good faith, the panel should deny the transfer of the disputed domain name to the complainant).
Accordingly, Complainant fails to establish this element of the Policy.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <gordons.com> domain name REMAIN WITH Respondent.
Clive L Elliott Panelist
Dated: March 22, 2011
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