craigslist, Inc. v. Craig Solomon Online Services
Claim Number: FA1205001445057
Complainant is craigslist, Inc. (“Complainant”), represented by Brian P. Hennessy of Perkins Coie LLP, California, USA. Respondent is Craig Solomon Online Services (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <craigslists.com>, registered with Vivid Domains, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Hon. James A. Carmody (Ret.), G. Gervaise Davis III, and the Hon. Bruce E. Meyerson (Ret.) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 21, 2012; the National Arbitration Forum received payment on June 4, 2012.
On May 29, 2012, Vivid Domains, Inc confirmed by e-mail to the National Arbitration Forum that the <craigslists.com> domain name is registered with Vivid Domains, Inc and that Respondent is the current registrant of the name. Vivid Domains, Inc has verified that Respondent is bound by the Vivid Domains, 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 June 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 2012 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@craigslists.com. Also on June 4, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 26, 2012.
On July 3, 2012, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed the Hon. James A. Carmody (Ret.), G. Gervaise Davis III, and the Hon. Bruce E. Meyerson (Ret.) as Panelists.
On July 9, 2012, the Panel requested that the parties submit an Additional Submission on the issue of laches. Submissions from the parties were received by the Forum on July 30, 2012.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant owns trademark rights in the CRAIGSLIST mark through its many trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,395,628 registered Oct. 17, 2000). Complainant also has trademark registrations for its CRAIGSLIST mark with the European Community Trademark Registry (Reg. No. 003504032 registered April 25, 2006).
2. Complainant operates a website at the <craigslist.com> domain name, which provides free online ad placement for local communities and serves users in cities throughout the world. Complainant has achieved name recognition globally related to the mark and has significant goodwill associated with the mark.
3. Respondent registered the <craigslists.com> domain name, which is confusingly similar to Complainant’s CRAIGSLIST mark. Respondent’s disputed domain name resolves to a website that markets classifieds services similar to those offered on Complainant’s website.
4. Respondent may be commonly known as “Craig Solomon” but does not have rights or legitimate interests to use the disputed domain name in order to take advantage of the goodwill of Complainant’s mark.
5. Respondent has not been authorized to use the mark in any way by Complainant. Respondent uses the <craigslists.com> domain name in a manner that competes with Complainant’s services. Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
6. Respondent demonstrates bad faith registration and use by registering a “typo-squatted” domain name, using the domain name to disrupt Complainant’s business, and attracting Internet consumers in order to make a profit.
B. Respondent
1. Respondent is Craig Solomon and he owns Craig Solomon Online Services. Respondent’s <craigslists.com> domain name is not confusingly similar to Complainant’s mark.
2. Respondent operates the website associated with the <craigslists.com> domain name, providing website visitors “lists of resources from companies that do business” with residents of the Cayman Islands and elsewhere. Respondent’s website offers visitors lists of options and keeps track of their requests, then displays a list of businesses that offer the items or services for which visitors are looking. The website redirects users to the company whose hyperlinks are matched to the requests of the visitors. Respondent collects a fee for each connection made to third parties’ websites.
3. Respondent does not intend to confuse any users by his domain name and did not register the domain name in bad faith. Respondent’s resolving website does not have competing content and does not cause confusion between Respondent and Complainant.
4. Respondent did not register the <craigslists.com> domain name in order to sell it or to prevent Complainant from reflecting its CRAIGSLIST mark in the domain name.
5. Respondent did not intend to disrupt Complainant’s business by registering the disputed domain name and did not intend to attract Internet users to his website in order to make a profit.
6. Respondent further argues that Complainant’s website is not a business at all and does not have commercial activity which Complainant claims is disrupted. Complainant does not operate a commercial website. Complainant does not have any relation with the Cayman Islands and does not offer residents on the Cayman Islands access to its website to place or respond to ads.
7. Complainant does not have a monopoly on the name “craig” or the word “lists.”
8. The Complainant waited too long to bring the Complaint. The domain name was registered on June 19, 2003. Complainant waited nine years to initiate this proceeding.
C. Complainant’s Additional Submissions
1. The Respondent is not permitted to engage in typosquatting simply because his first name is Craig.
2. Respondent provides job listings, apartment listings and other classified ad services, which are not restricted to the Cayman Islands. These services compete with those provided by Complainant.
3. The laches defense is not applicable to administrative proceedings under the Policy. The Policy does not provide a statute of limitations period.
4. Complainant did not delay in initiating this proceeding. The Complainant was filed promptly after Complainant’s counsel became aware of the domain name.
5. Typosquatting is per se evidence of bad faith.
D. Respondent’s Additional Submission
1. Respondent’s domain name is descriptive combining his first name, “Craig,” and the common dictionary word, “lists”. Complainant does not have a monopoly on common, descriptive words or generic terms used on the Internet.
2. Respondent did not know of Complainant when the domain name was registered.
3. None of the category names used on Respondent’s resolving website are the same as the category names used by Complainant.
4. The Complainant has not objected to other third-party domains that match or incorporate Complainant’s mark.
5. Respondent has invested substantial time, money and resources to build and operate his website business.
6. Panels have considered a complaining party’s delay in bringing a complainant as relevant to the issue of whether the Respondent has rights and legitimate interests in the domain name, and the issue of bad faith.
7. Laches has been recognized as a defense in UDRP proceedings.
Respondent did not engage in bad faith registration and use of the domain name. Complainant has failed to provide a satisfactory explanation of the nine-year delay in bringing this proceeding. That delay caused prejudice to Respondent.
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.
Registration and Use in Bad Faith
The Panel finds that Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech. Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Respondent argues that it did not register, and has not used, the domain name to disrupt the business of a competitor under Policy ¶ 4(b)(iii) because it and Complainant are engaged in distinctly different businesses. The Panel agrees. In its Complaint, Complainant describes its business as one providing “free online localized classified ad placement and related online services.” These classified ad categories include categories such as personals, services, community, housing and jobs. An internet user may access these classified ads for dozens of locations throughout the United States and worldwide.
Respondent’s resolving website, on the other hand, is completely dissimilar. Respondent’s site does not provide any type of classified ad services or other services offered by individual persons. It does not permit visitors to post classified ads, which is the primary function of Complainant’s website. Indeed, Respondent’s site does not permit any visitor to post anything at all. Respondent’s site provides lists of businesses that provide services described in the titles of the lists which are entirely different categories of services than contained on Complainant’s site.
Because respondent’s business is neither competing with that of Complaint nor is there evidence that Respondent is disrupting the business of Complainant, the Panel concludes that Respondent has not engaged in bad faith use of the disputed domain name. See, e.g., School Specialty, Inc. v. West Coast School Specialties, FA 1367598 (Nat. Arb. Forum Mar. 1, 2011) (respondent’s business of selling, repairing, and installing cafeteria tables, benches, and marker boards in schools did not compete with complainant’s mail order services in the field of school and office supplies, office and school furniture, and audio-visual equipment); Morris Publishing Group, LLC v. SK*RT & Gabby Blair, FA 1110912 (Nat. Arb. Forum Feb. 7, 2008) (no bad faith existed where respondent was not a competitior of complainant)
Because the Panel finds that Respondent is not engaging in competition with Complainant and there is no evidence that Respondent’s resolving website has disrupted Complainant’s business, the Panel concludes that Complainant’s cases addressing typoquatting are not persuasive. These cases principally involve situations where the respondents were found to have engaged in conduct in competition with the respective complaining parties. See, e.g., Overstock.com, Inc v. Kiansu, FA 1142092 (Nat. Arb. Forum Mar. 12, 2008) (“Respondent’s domain names resolves to websites featuring links to third-party websites, some of which directly compete with Complainant’s business”); W.W. Grainger, Inc. v. COMDOT INTERNET SERVS. PRIVATE LTD., FA 1089065 (Nat. Arb. Forum Dec. 12, 2007) (“the services being offered through third party hyperlinks come within the description of services and goods in Complainant’s trademark registrations”).
Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(iii), the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
LACHES
The domain name was registered in June 2003. This proceeding was initiated by Complainant in May 2012. Because the Respondent raised the issue of delay in its Response, and because the issue was not fully developed in the initial filings by the parties, the Panel requested, and received, supplement submissions on the issue of laches.
Laches is an equitable defense that has been held to apply in actions to enforce trademark rights. Hubbard Feeds, Inc. v. Animal Feed Supplement, Inc., 182 F.3d 598, 601 (8th Cir.1999). Laches applies when a claimant inexcusably delays in asserting its claim and thereby unduly prejudices the party against whom the claim ultimately is asserted. Ray Commc’ns, Inc. v. Clear Channel Commc’ns, Inc., 673 F.3d 294, 300 (4th Cir. 2012). To successfully defend on the basis of laches a defendant must demonstrate the presence of three elements: (1) a delay in asserting a right or a claim; (2) that the delay was not excusable; and (3) that there was undue prejudice to the party against whom the claim is asserted.” Kason Indus., Inc. v. Component Hardware Group, Inc., 120 F.3d 1199, 1203 (11th Cir.1997).
The
Panel concurs with the decision in N.Y Times Co. v. Name Admin. Inc. (BVI),
FA 1349045 (Nat. Arb. Forum Nov. 17, 2010) where the panel ruled that that laches
is "a valid defense in any domain dispute where the facts so
warrant." Although laches has not always been viewed as a defense
in a UDRP proceeding, it is now recognized that laches may be found in
the appropriate case:
Panels have also noted that a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements requiring the complainant to establish that the respondent lacks rights and legitimate interests and that the respondent registered and used the domain name in bad faith. A small number of panels have also begun to acknowledge the possible applicability, in appropriate and limited circumstances, of a defense of laches under the UDRP where the facts so warrant.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.10 (2d ed.) The recognition of laches as a defense in UDRP proceedings was discussed fully in Professional Rodeo Cowboys Ass’n, Inc. v. Alternative Advertising Concepts, Inc. / Kenneth Forman, FA 1440736 (Nat. Arb. Forum June 26, 2012). The panel found that because the complainant waited six years to file a complaint after the domain name in dispute was registered, the complaining party failed to establish that the respondent lacked rights or legitimate interests in the domain name. The panel explained why laches may be considered as follows:
While the doctrine is not expressly recognized as a defense in UDRP proceedings the principle has long been applied in many cases even when the language has not. See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”); see also Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defence in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”).
The arguments against the application of laches in UDRP proceedings has (sic) frequently been based on formality more than reality as it is oft repeated that equitable relief is not part of an administrative proceeding. However the reality is that the UDRP only offers what amounts to equitable relief and there has been a growing recognition and willingness to expressly consider laches as an equitable defense in a proceeding where equitable relief is the only possible remedy. Furthermore laches is a well-recognized defense in trademark law in the United States where both parties reside. In N.Y. Times Co. v. Name Admin. Inc. (BVI), (Nat. Arb. Forum Nov. 17, 2010), the panel expressly recognized laches as a valid defense where the Complainant was a sophisticated entity that had been in business for a substantial period of time and had registered several trademarks and domain names, and the Complainant stood by without explanation and watched the Respondent actively build a business using the disputed domains that allegedly included its protected marks for more than six years.
E.g., Novak v. Marchex Sales, Inc / Hight, FA 1418478 (Nat. Arb. Forum Mar. 1, 2012) (while not finding laches nine year delay in bringing complaint held not to establish bad faith).
The Panel finds the facts in this case to be appropriate in which to apply the defense of laches. First, there has been a significant delay by Complainant in pursuing this Complaint—nine years. Second, Complainant has not offered a reason to explain the delay. Complainant states that it filed this Complaint seven days after its counsel first became aware that Respondent’s domain name existed. But a company seeking protection of a trademark must be diligent in policing potential infringements of its mark. See Grupo Gigante SA De CV v. Dallo & Co., Inc., 391 F.3d 1088 (9th Cir. 2004). Complainant offers no explanation what efforts, if any, it made from 2003 through 2012, to investigate whether its mark was being misused by other domain name holders. We find that Complainant’s delay in bringing this proceeding is not excusable. Finally, that evidence indicates that Respondent has been engaged in his business for nine years, has developed relationships with the service providers listed on his website, and has devoted time and money to establishing his business. Respondent would suffer prejudice if the domain name were transferred.
Having failed to establish all three elements required under the ICANN Policy, and because the delay in filing the Complaint is not excusable and would result in prejudice to the Respondent, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <craigslists.com> domain name REMAIN WITH Respondent.
James A. Carmody (Ret.), G. Gervaise Davis III, and the
Hon. Bruce E. Meyerson (Ret.), Panelists
Dated: August 10, 2012
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