national arbitration forum




Walkaway Canada Incorporated v. Marchex Sales, Inc / Brendhan Hight

Claim Number: FA1105001387536



Complainant is Walkaway Canada Incorporated (“Complainant”), represented by Nicolette R. Hudson of Barnes & Thornburg LLP, Ohio, USA.  Respondent is Marchex Sales, Inc / Brendhan Hight (“Respondent”), represented by John Berryhill, Pennsylvania, USA.



The domain name at issue is <>, registered with eNom, Inc.



Each of the undersigned 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 Panelist in this proceeding.


David H. Bernstein as Panelist, Professor Diane Cabell as Panelist, Sir Ian Barker as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on May 6, 2011; the National Arbitration Forum received payment on May 6, 2011.


On May 6, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <> Domain Name is registered with eNom, Inc. and that Respondent is the current registrant of the name.  eNom, Inc. has verified that Respondent is bound by the eNom, 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 May 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 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  Also on May 9, 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 June 1, 2011.


An Additional Submission by the Complainant was received on June 6, 2011.


An Additional Submission by the Respondent was received on June 13, 2011.


In the meantime, on June 7, 2011, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Diane Cabell and Ian Barker as Panelists and David H. Bernstein as Presiding Panelist.




Complainant requests that the Domain Name be transferred from Respondent to Complainant. 



A. Complainant


Complainant asserts that the Domain Name is identical to Complainant’s WALKAWAY trademark, which is registered for “insurance services” and is used in connection with providing insurance coverage for debt relief (such as to permit a consumer to return a car and “walk away” from car finance or lease payments in the event of job loss, disability, bankruptcy or other covered events). 


Complainant further asserts that Respondent has no legitimate rights or interests with respect to the Domain Name.  Complainant states that Respondent is not commonly known by the <> Domain Name and does not have authorization from Complainant to use any version of Complainant’s marks.  Complainant further states that there is no other connection between Respondent and the disputed Domain Name.  Complainant argues that Respondent’s use of the site is not a bona fide commercial use and that Respondent’s website, which displays pay-per-click (“PPC”) advertising, provides links to Complainant’s competitors’ websites.  Complainant also argues that “merely because the domain at issue is not a coined or fanciful term does not mean that Respondent has a legitimate business interest in the same and that Respondent’s use of the domain must be taken into consideration when evaluating the legitimacy of the claimed business interest.”


Lastly, Complainant alleges that Respondent registered and is using the Domain Name in bad faith.  Complainant claims that it is in the business of providing insurance coverage for debt relief and that Respondent’s website provides links to Complainant’s competitors’ websites.  Complainant claims that Respondent receives revenue for diverting Internet users to third-party websites via the links on its website and via the search engine provided through its website (which leads to more PPC listings).  Complainant also states that Respondents were on constructive notice of Complainant’s rights in the WALKAWAY trademark because Complainant had registered certain of its trademarks prior to Respondent’s registration of the domain name.  Finally, Complainant asserts that Respondent “has a pattern of registering domain names in bad faith and then hiding behind a shield of proclaimed good faith based on the fact that domains contain ‘dictionary’ terms that are acquired in bulk, and by blocking robot.txt from creating an archive of Respondent’s historical use of such domain names.” 


B. Respondent


Respondent claims that only three of Complainant’s trademark registrations pre-date Respondent’s registration and use of the Domain Name, and none of those three confer any trademark rights in the term “WALKAWAY” standing alone.  However, Respondent concedes that one subsequent U.S. registration for “WALKAWAY” in connection with insurance services is sufficient for the purposes of Paragraph 4(a)(i) of the Policy. 


Respondent claims that it has legitimate rights or interests in the Domain Name.  Respondent states that it has been using the Domain Name in connection with the generic meaning of the words “walk away,” when used in connection with home mortgage foreclosure and foreclosure alternatives.  Respondent argues that “there is nothing about the words ‘walk away’ or ‘walkaway’ which, apart from the specific services for which the Complainant has obtained registration, that [sic] is uniquely or exclusively associated with the Complainant as words per se.”  Respondent also denies that it provides links to Complainant’s competitors websites, and that such listings can only result when the user searches for specific terms (such as “lease”) in the search bar, which then pulls up “sponsored links” (e.g., Adwords advertising) related to the searched term (and no longer keyed off of the Domain Name). 


Finally, Respondent claims that the Domain Name was registered in good faith.  Respondent notes that the Domain Name was originally registered by Ultimate Search Inc., and Respondent concluded a $164 million asset purchase of Ultimate Search Inc. holdings in late 2004 and early 2005.  Respondent argues that it had no “duty of notice” with respect to the then-existing Canadian trademark registrations because there was no registration that listed “Walkaway” standing alone.  Respondent also denies any knowledge of Complainant prior to having been contacted by Complainant.  Respondent also asserts that Complainant has not demonstrated that Respondent used the Domain Name in association with the services for which Complainant’s trademarks are registered and used.  Additionally, Respondent argues that the four-and–a-half year lapse of time in which it was using the Domain Name without interruption shows that Respondent has not been disrupting Complainant’s business.  Respondent also argues that the use of robots.txt is to preserve server bandwidth and comply with contractual obligations and has no bearing on the issue of bad faith.  Finally, Respondents note that they take claims of alleged trademark violations seriously and neither blindly acquire domain names nor ignore such claims.    


C. Additional Submissions


Complainant submitted an additional submission to address what it claims are several misleading statements made by the Respondent.  Complainant argues that Respondent inaccurately describes the scope of Complainant’s rights in the WALKAWAY trademark as limited to automobile leasing and insurance services.  Complainant claims that its rights in the mark encompass “debt cancellation” and “payment relief.” Complainant also argues that Respondent has mischaracterized its own use of term “walkaway” by claiming it has limited its use of the term to its meaning in connection with home mortgages.  Complainant claims that Respondent’s use actually encompasses “debt relief and debt cancellation.”  Complainant alleges that this use demonstrates that Respondent intentionally targeted the Complainant.  Complainant also claims that the Respondent has chosen to ignore Complainant’s Canadian registrations and common law rights in making its arguments.  Lastly, Complainant argues that a company with a sophisticated practice of registering domain names could not have been unaware of the Complainant’s common law rights and trademark registrations in the U.S and Canada.  Because this additional submission purported to respond to alleged misstatements by the Respondent, the Panel has considered it, but on balance found that it did not address any issues that were not already adequately covered in the record or that could not have more fully been addressed in the Complaint.


Respondent also submitted a supplemental response.  Respondent asserts that, although the first prong of the policy is a straightforward binary determination, observations regarding chronology, subject matter, strength, distinctiveness and scope are relevant foundational observations to make before delving into the second two prongs of the policy.  Respondent asserts that Complainant is in the field of automotive leases, which are not a form of secured or unsecured debt.   Respondent also argues that there is no evidence on the record that Complainant had common law rights in the WALKAWAY mark.  Respondent also asserts that it did not engage in willful blindness, but combed through the portfolio to eliminate questionable domains from it.  Respondent also argues that “[t]here is simply no reputational basis in anything submitted by the Complainant to infer it was so well known in the US that anyone should have known of [Complainant], its business, or its claimed marks.”  Finally, Respondent states that it reviewed Complainant’s claim prior to the initiation of the complaint and provided a reasoned response to Complainant.  Because the Panel considered the Complainant’s additional submission, the Panel considered the Respondent’s additional submission as well, but as with the Complainant’s, the Respondent’s additional submission did not add any new facts or arguments that were not already adequately addressed in the record, available to the Respondent at the time of the Response, or readily apparent to the Panel.




The Complainant filed its application to register the WALK AWAY trademark in Canada in 2001; that mark was registered in 2003.  In the United States, the Complainant applied to register the WALKAWAY trademark in 2004; the mark was registered in July 2005.  Both of those applications claimed first use back to September 2000.  Complainant has rights in other trademark registrations that incorporate the terms WALK AWAY or WALKAWAY, including WALK AWAY COVERAGE (registered in Canada in 2003) and WALKAWAY PROTECTION FOR AUTOMOTIVE FINANCING (registered in Canada in 2004 and in the United States in 2009).


The Respondent registered the contested Domain Name in February 2005.  The Respondent is using the contested Domain Name for a landing page website containing PPC links advertising other sites relating to debt relief and debt cancellation. 



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.


Identical and/or Confusingly Similar


As the Respondent acknowledges, for purposes of the first factor, the question is only whether Complainant has trademark rights as of the time of the UDRP Complaint, and whether the Domain Name is identical or confusingly similar to that trademark.  See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, at §1.1 (“If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.”) (available at  Here, Complainant owns a Canadian registration in WALK AWAY, and has owned it since 2003, and a United States registration in WALKAWAY, which it has owned since 2005.  In both cases, the registrations give rise to a presumption of the validity of the respective marks (which, for all intents and purposes, are identical since the space is immaterial).  There is no dispute that the Domain Name is identical to that mark. 


The Panel thus finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. 


Rights or Legitimate Interests


Respondent claims rights or legitimate interests in the Domain Name under paragraph 4(c)(i) of the Policy, which provides that a respondent can demonstrate rights or a legitimate interest in a domain name if it can show that, “before any notice to [respondent] of the dispute, [respondent made] use of, or demonstrable preparations for the use of, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.” 


In this case, the Respondent states that it is using the disputed Domain Name for a landing page to generate PPC click-through advertising revenue.  Respondent asserts that the “sponsored links” (e.g., PPC advertising) displayed on the site are derived from the generic meaning of the term “walkaway” when used in connection with the ability to obtain debt relief from home mortgages, rather than from any trademark, source-identifying aspect of that term. 


Although other panels have noted the lack of societal benefit offered by PPC landing pages of the type offered by the Respondent,  see, e.g., mVisible Techs., Inc. v. Navigation Catalyst Sys., Inc., D2007-1141 (WIPO Nov. 30, 2007), those panels also have recognized that domain names that are descriptive and used for PPC advertising keyed only to the descriptive meaning of the domain name can constitute a legitimate interest for the purposes of the policy.  Cf. Ustream.TV, Inc. v. Vertical Axis, Inc., D2008-0598 (WIPO July 29, 2008).  For example, in Modern Beauty Supplies Inc. v. MDNH, Inc., FA975334 (Nat. Arb. Forum June. 25, 2007), the panel ruled that the respondent had a legitimate interest in the domain name <> where it ran a PPC site which offered sponsored links that were directly relevant to the descriptive meaning of the term “modern beauty.”  Similarly, in Advanced Drivers Education Products & Training, Inc. v. MDNH, Inc., FA 567039 (Nat. Arb. Forum Nov. 10, 2005), the panel found that the disputed domain name <> was not used in the trademark sense, but was a “descriptor of the site’s intended content or theme.”  Therefore, the panel held, the complainant failed to prove that respondent lacked any rights or legitimate interests in the disputed domain name.


In the present case, Respondent has presented sufficient evidence to show that, within the relevant market, the terms “walkaway” or “walk away,” are descriptive for abandoning a mortgage or payment obligation,[1] and more generally, a debt obligation.  The most powerful evidence of that accepted descriptive meaning in the industry comes from the Complainant’s own exhibits, which show that Complainant has repeatedly used the terms “walk away” and “walkaway” on its own website in a descriptive fashion.  For example, exhibit C of the Amended Complaint is a printout of Complainant’s website, which contains the statement, “If life doesn’t unfold as planned, WALKAWAY lets you seek relief from your payments temporarily, or return your vehicle and walk away from the financial obligation for good.” (emphasis added).  Similarly, exhibit D of the Amended Complaint is a printout of Complainant’s website as it was displayed on April 6, 2001, which contained the statement, “WALKAWAY PROTECTION™ – the first insurance product ever that protects you from losing money when you walkaway from your vehicle and the related financial obligations.” (emphasis added).  Similar statements appear throughout Complainant’s website even today, including at the following links (all last visited on July 15, 2011, and in all cases, emphasis added): (“WALKAWAY lets you return your vehicle under several life changing circumstances . . . and allows you to walk away from up to $15,000 in vehicle-related debt depending on coverage selected.”); (“When you find yourself facing any one of several covered circumstances – from unemployment to loss of driver’s license, our program allows you to hand back your keys and simply walk away from negative equity, with little or no financial penalty.”); id.  (“As a motorcycle dealer, allowing your bikers to 'walk away' from their loan obligations with no impact to their credit rating means freedom from financial obligations when needed most.”) ; (“WALKAWAY is the first and only vehicle protection program in the US that allows consumers to walk away from negative equity when life changing events occur, including, involuntary unemployment, physical disability and critical illness.”); (“Q:  Can I walk away under the “involuntary unemployment” benefit, if I quit or resign from my job? A:  NO. WALKAWAY only covers events that are beyond your control. Your employer must terminate you from your position in order for you to qualify for benefits.”). 


Given that the PPC ads on Respondent’s website are related to this descriptive meaning of “walk away,” Respondent has a legitimate interest (for purposes of the Policy) in using the Domain Name for such ads. 


Complainant nevertheless argues that, despite its trademark registration for “insurance services” generally, it specifically is in the business of insurance services for debt relief, and that Respondent’s use of the Domain Name to link to sites related to debt relief is therefore not a legitimate use.  Even if it is true that the ads in Respondent’s website are related to Complainant’s services, that is a problem of Complainant’s making.  Having selected a descriptive term as its mark, Complainant must suffer the consequences, including the fair descriptive use of its mark by other parties.  Cf. 15 U.S.C. § 1115(b)(4).


Registration and Use in Bad Faith


Because Complainant has not satisfied Policy ¶4(a)(ii), a further analysis of this element of the Policy is not required.  See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (because complainant must prove all three elements under the Policy, complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary); Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name). 



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 <> domain name REMAIN WITH Respondent.



David H. Bernstein, Diane Cabell, Ian Barker


Dated:  June 19, 2011


[1]           The term “walkaway” does not appear to be a generic term for debt relief.  The dictionary defines walkaway as an "easy victory or conquest" or "a patient or inmate who escapes from an institution by walking away when not being supervised or guarded." (last visited Jun. 16, 2011).



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