AgStar Financial Services, ACA v. Ashantiplc Ltd
Claim Number: FA1405001557154
Complainant is AgStar Financial Services, ACA (“Complainant”), represented by Robert J Kimmer of Rader, Fishman & Grauer, PLLC, USA. Respondent is Ashantiplc Ltd (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ruralliving.com>, registered with Backslap Domains, Inc.
The undersigned certifies they have acted independently and impartially and to the best of their knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator and Chair, Paul M. DeCicco and Honorable James A. Carmody as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 1, 2014; the National Arbitration Forum received payment on May 1, 2014.
On May 1, 2014, Backslap Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <ruralliving.com> domain name is registered with Backslap Domains, Inc. and that Respondent is the current registrant of the name. Backslap Domains, Inc. has verified that Respondent is bound by the Backslap 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 May 7, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 2014 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@ruralliving.com. Also on May 7, 2014, 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 May 27, 2014.
On June 4, 2014, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator and Chair, Paul M. DeCicco and Honorable James A. Carmody as Panelist.
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
FACTUAL AND LEGAL GROUNDS
This Complaint concerns the acquisition and use of the domain name RURALLIVING.COM (the “Infringing Domain Name”), by Domain Name Privacy LLC Customer_ID:2941398 (“Respondent”) which is nearly identical and confusingly similar to the registered service mark in which AgStar Financial Services, ACA (“Complainant”) holds exclusive rights. As Complainant will demonstrate, Respondent is in violation of various ICANN Policies and Rules and therefore the Infringing Domain Name must be transferred to Complainant.
Complainant’s Rights in and to the Mark RURALIVING®
By way of background, Complainant is one of the largest farm credit associations in the nation with assets in excess of $7 Billion USD. Complainant provides a full range of financial services including mortgage lending, leasing, consulting, and related services focused at farmers and others in the agricultural and related industries. Complainant is also the premier provider of custom financing solutions for agribusinesses including, among others, equipment manufacturers, distributors, agricultural wholesalers and retailers, farm commodities merchandisers and processors, and agricultural finance companies that provide services to suppliers, distributors and manufactures. In addition to assisting the agricultural business sector, Complainant also provides financing services to consumers living in farm communities and who are interested in obtaining financing for residences, personal projects and hobbies. Complainant is well-known among the farm communities, especially those located throughout the Midwest.
The RURALIVING® service mark has been used and controlled exclusively for banking, mortgage, and financial services since 2004. Complainant’s predecessor in trademark title advertised its RURALIVING home mortgage solutions on its website since that time. The RURALIVING® mark was registered on January 17, 2006 and has become incontestable on the U.S. Principal Federal Register. Complainant acquired the RURALIVING® mark and registration and has been continuously advertising and selling online home mortgaging solutions under the RURALIVING® brand. Under U.S. trademark laws, Complainant steps into the shoes of the original mark registrant, adopting all rights and privileges that extended to the original mark registrant and the trademark.
Use of RURALIVING® on the Internet
Complainant has been continuously advertising the RURALIVING service mark on its website, www.agri-access.com. As stated above, Complainant has been in the process of utilizing this mark and increasing the ease of access to more information about the RURALIVING® services via the Internet. Complainant also owns and operates the domain name, www.ruraliving.com to provide more streamlined access to RURALIVING® services and provide information to its consumers. Prior to Complainant’s acquisition of the RURALIVING® service mark registration, Complainant’s predecessor-in-title has, as early as 2004, advertised a RURALIVING® branded home mortgage services on their website. Again, under U.S. trademark laws, Complainant steps into its predecessor’s shoes in terms of trademark and service mark rights.
Conduct on the Part of the Respondent
It is well established that pursuant to ICANN Policy 4(a), a complainant is entitled to a forced transfer of the domain name(s) in dispute where it is proven that:
(i) respondent registered a domain name that is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests with respect to the domain name(s) at issue; and
(iii) respondent registered and has used the domain name in bad faith.
In this case, Complainant has satisfied all three prongs of this test, and is therefore entitled to transfer of the Infringing Domain Name.
[a.] The domain name is substantially identical and confusingly similar to the registered service mark in which the Complainant has established rights. UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
The Infringing Domain Name, RURALLIVING.COM, owned by the Respondent, is substantially identical and confusingly similar to Complainant’s federally registered and incontestable service mark, RURALIVING®. The Infringing Domain Name, RURALLIVING.COM differs from the Complainant’s registered service mark by only one letter, an additional ‘L.’ The Infringing Domain Name is also the phonetic and commercial equivalent of the Complainant’s registered service mark, and consumers are likely to confuse the spelling of the Complainant’s service mark, RURALIVING, with that of the Respondent’s domain name, RURALLIVING.COM, when seeking out reliable information concerning Complainant’s banking and financing services.
Therefore, Complainant has met its burden of proof under ICANN Policy 4(a)(i) in establishing that the Infringing Domain Name, RURALLIVING.COM domain name is confusingly similar and practically identical to the Complainant’s registered RURALIVING® mark.
[b.] The Respondent has no rights or legitimate interests in respect of the Infringing Domain Name that is the subject of this complaint. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).
The totality of the circumstances surrounding Respondent’s registration and use of the Infringing Domain Name demonstrates that Respondent has no legitimate rights or interests in the RURALLIVING.COM domain name.
Paragraph 4(c) of the ICANN Policy provides the following three specific circumstances that constitute evidence of a domain name registrant’s rights or legitimate interests to a domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Upon information and belief, Respondent has acquired the Infringing Domain Name after the Complainant’s RURALIVING® mark registered on the federal register sometime near the end of 2006. Since that time, the Respondent has featured content on the Infringing Domain Name including various pay-per-click advertising webpages, some of which featured sponsored links to direct competitors of Complainant. Very recently, the Respondent has removed the Infringing Domain Name from being hosted or used for pay-per-click advertising and has listed it for sale though the domain auction service, SnapNames.
Based upon the totality of circumstances surrounding the acquisition and subsequent use of the Infringing Domain Name, it is apparent that, under the ICANN Policy, the Respondent has never used or prepared to use the Infringing Domain Name in the offering of any bona fide goods and services.
Additionally, to the best of Complainant’s knowledge and belief, Respondent is not and has never been commonly known by the name RURALLIVING in accordance with ICANN Policy ¶ 4(c)(ii). Respondent is not sponsored by or legitimately affiliated with Complainant in any way and Complainant has not given Respondent permission to use Complainant’s Mark in a domain name or in any other manner. Additionally, the Respondent acquired the domain name with the use of a privacy service, which further demonstrates that the Respondent does not wish to associate its true identity with the Infringing Domain Name.
Finally, under paragraph 4(c)(iii) of the ICANN Policy, Respondent’s conduct cannot constitute “noncommercial or fair use without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.” Complainant believes in good faith that Respondent received monetary compensation, potentially significant compensation, from the sponsors of advertisements offered through the pay-per-click advertising displayed on the Infringing Domain Name. Further, at least some of this advertising was in direct competition to Complainant and likely caused Complainant commercial harm or disruption to its legitimate commercial activities and rights to the RURALINVING® service mark. Additionally, listing the Infringing Domain Name for sale through a domain auction service cannot qualify as noncommercial fair use.
Respondent cannot meet any of the criteria under ICANN Policy 4(c) to justify its registration or use of the Infringing Domain Name. As a result, Complainant has satisfied its burden to establish a prima facie case that the Respondent has no rights or legitimate interests in the Infringing Domain Name under ICANN Policy ¶ 4(a)(ii).
Complainant also wishes to note that if the owner of the Infringing Domain Name fails to respond to this Complaint, it is presumed that the owner has no rights or legitimate interests in the Infringing Domain Names.
[c.] Under ICANN Policy 4(a)(iii), Respondent Registered and is using the Infringing Domain Name in Bad Faith. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii).
Respondent’s acquisition of the Infringing Domain Name and subsequent use are in bad faith. Under ICANN Policy ¶ 4(b)(i), the registration or acquisition of a domain name can be in bad faith, even if the Respondent is not the original registrant of the Infringing Domain Name.
Respondent, upon acquiring the Infringing Domain Name, had at least constructive knowledge of the existence of the RURALIVING® service mark. Complainant’s predecessor-in-title to the RURALIVING® U.S., federal, incontestable trademark registration had been exclusively controlling the service mark by advertising online through its website, its banking and mortgage products under the RURALIVING® brand. Complainant’s predecessor-in-title applied for the federal service mark RURALIVING in 2004, which was subsequently registered on the federal register in January of 2006. Upon information and belief, the Respondent acquired the Infringing Domain Name near or around September 2006. In addition to the constructive notice through the trademark application on file with the USPTO, a simple Internet search would reveal the existence of the RURALIVING® banking and financing services, which have been advertised on the Internet since as early as 2004.
It can be inferred from the circumstances, that Respondent acquired the Infringing Domain Name with knowledge that consumers would seek out mortgage and financing services and subsequently divert Complainant’s customers by acquiring a confusingly similar domain name. It can also be inferred from these circumstances that the Respondent acquired the Infringing Domain Name with the intent of eventually offering it for sale to the Complainant’s predecessor-in-title and later the Complainant. Currently the Infringing Domain Name is offered for sale through the domain name auction website, SnapNames, with a minimum bid of $10,000.
Respondent acquired the Infringing Domain Name with at least constructive knowledge of the existence of the RURALIVING® service mark U.S. federal registration. Based upon these circumstances, Respondent would have had actual or at least constructive knowledge, since at least 2004, that acquiring this domain name would infringe upon and violate the rights of a third party, contrary to ICANN Policy §2. The panel has also held that under Section 22 of the Trademark Act, “[r]egistration of a mark on the principal register… shall be constructive notice of the registrant’s claim of ownership thereof.” Therefore, the acquisition of the Infringing Domain Name can be considered in bad faith according to ICANN Policy ¶ 4(b)(i).
Respondent acquired the Infringing Domain Name in bad faith, and they are also using it in bad faith. Under ICANN Policy ¶ 4(b)(iv), it is apparent that the Respondent has attempted to attract, for commercial gain, Internet users through the likelihood of confusion between the Infringing Domain Name and Complainant’s incontestable RURALIVING® U.S. federally registered service mark. Respondent has used the Infringing Domain Name as a pay-per-click advertising page, featuring links to Complainants’ direct competitors offering mortgage and financing services. This directly-competitive economic activity on the website is considered to be acting in bad faith and preying on the goodwill of Complainant’s trademark in violation of ICANN Policy ¶ 4(b)(iv). While there are some circumstances in which pay-per-click advertising is allowed, past arbitration panels have even found bad faith under ICANN Policy ¶ 4(b)(iv) when the pay-per-click links are wholly unrelated to the Infringing Domain Name. In the instant case, it is clear that at least a portion of the pay-per-click advertisements presented on the Infringing Domain’s website were directly competitive to Complainant and caused economic disruption or harm to Complainant’s business and well-established trademark rights.
The Respondent has also utilized a privacy service to shield its identity from the general public. Even when making an offer for sale through the pay-per-click advertising for the Infringing Domain Name stating, “this domain is not for sale, unless you know us”. Under certain circumstances, especially in a commercial context, this raises a rebuttable presumption of bad faith. See Orbitz Worldwide, LLC v. Kim Bum / No Company, FA 538678 (Nat. Arb. Forum January 10, 2014) (holding that using a privacy service in a commercial context raises a rebuttable presumption of bad faith registration and use.)
The evidence supports a finding that the Respondent has acted in bad faith through its conduct outlined above, contrary to ICANN Policy ¶ 4(b).
In summary, Respondent is a cybersquatter and has violated various ICANN Policy Rules. Complainant has met the requirements of ICANN Policy ¶ 4(a) and therefore the Infringing Domain Name must be transferred to the Complainant, in accordance with UDRP Rules.
B. Respondent
I. Introduction
This Proceeding concerns a domain name consisting of a non-exclusive combination of two words, constituting the common phrase "rural living" registered and used by the Respondent for nine years for purposes unrelated to "banking services" for which the Complainant claims rights in a telescoped form of the phrase. This combination of two words per se is neither exclusive nor distinctive to the Complainant, and is immediately descriptive of a variety of purposes for which the domain name has secondary market value for purposes having nothing to do with the Complainant's claim for "banking services". Hence, the Respondent's willingness to sell the domain name does not by itself evince any purpose which would infringe the Complainant's limited rights.
II. Identity or Confusing Similarity
A. The Complainant's Valid and Distinctive Mark For Contact Lens Solution
The first criterion required to be proven by the Complainant is that the domain name is identical or confusingly similar to a trade or service mark in which the Complainant has rights. To this end, the Complainant has presented US TM Reg. No. 2,738,908 for “CLEAR CARE” for “Banking services” issued in January 2006. As will be discussed below, the Respondent acquired the domain name shortly after its expiration in August 2005 and thus the Respondent's registration and use of the domain name is senior to the effective date of the US trademark registration proffered by the Complainant.
Alleged dates of first use in US trademark are mere unexamined allegations without probative value in inter partes proceedings, as noted in the relevant portions of the USPTO Trademark Manual of Examining Procedure:
901.04 Inquiry Regarding Use in Commerce
It is the responsibility of the applicant and the applicant's attorney to determine whether an assertion of use in commerce is supported by the relevant factual situation. The validity of an applicant's assertion of use in commerce generally does not arise in ex parte examination. The examining attorney will normally accept the applicant's verified claim of use in commerce without investigation into whether the use referred to constitutes "use in commerce."
903.07 Indefinite Dates of Use
[…]
In an inter partes proceeding, a date of use must be established by appropriate evidence unless the party to the proceeding is entitled to rely on a date by virtue of ownership of a registration or filing of an application. 37 C.F.R. §2.122(b)(2); Trademark Trial and Appeal Board Manual of Procedure ("TBMP") §704.04.
B. Common Law Allegations
The Complainant includes several printouts of a website at Agstar.com, which does neither reference nor use the term "RURALIVING". There is a recent print-out of a website located at ruraliving.com at which the term "RURALIVING" is apparently used in connection with mortgages. None of this evidence establishes any sort of common law claim pre-dating the Respondent's registration and use of the domain name.
C. Degree Of Inherent Distinctiveness Of Complainant's Mark
As the remaining two elements of the Policy deal with the Respondent's use and registration of the domain name, and hence before delving into the Respondent's activities, it is useful to consider the extent, if any, to which the asserted mark may be considered “famous” or accorded a scope beyond the goods and/or services on which the Complainant uses it, and for which the Complainant may legitimately claim rights. The UDRP first element refers to a mark in which the Complainant “has rights”, so it is worth a moment, under the first element, to consider just what rights the Complainant has.
The Respondent does not hesitate to agree the Complainant has a valid US registered mark for banking services. Just as obviously, the two words in combination here “rural living” are not at all unique, exclusive to, nor distinctive apart from their use by the Complainant as a mark for banking services. Many third parties, of which the Respondent happens to be one, use the term for other purposes – some unregistered like the Respondent, and some which have also obtained registration of marks comprising or consisting of “RURAL LIVING” for goods and services other than banking services, or indeed simply as a denominative phrase referring to rural living. The lack of a monopoly in these two words for purposes other than contact lens solutions is readily demonstrated. Google returns some 1.43 million results for the phrase "rural living" which variously relate in some manner or another to the concept of rural living, and among which the Complainant is not to be found. Likewise, the Complainant's registration of "RURALIVING" in connection with "banking services" was not considered by the United States Patent and Trademark Office to be a barrier to US TM Reg. No. 3,997,950 for "RURAL LIVING ROCKS" which issued in 2011 in connection with advertising services.
The phrase "rural living" is also commonly used in domain names relating to rural living, and noted in the following Google results:
- The blog "Rural Living Today" at RuralLivingToday.com
- The blog "Nebraska Rural Living" at NebraskaRuralLiving.com
- "Rural Living. A simpler way of life....." at Rural-Living.com
- "Rural Living MN" at RuralLivingMN.com
and of course many more are readily found, as rural living is a significant area of interest to people who live in rural areas or aspire to do so.
D. Conclusion
The Complainant has demonstrated it has acquired a junior US trademark registration from a predecessor in interest, which consists of a distinctive "telescoped" version of the phrase "rural living". The Complainant has not established any common law claim of rights pre-dating the US trademark registration, and the Complainant has not demonstrated broad distinctiveness in what is, apart from "banking services" a common descriptive if not generic term.
III. Legitimate Rights Or Interests
The second criterion required to be proven by the Complainant is that the Respondent lacks legitimate rights or interests in the domain name. This criterion is not limited to trade or service mark rights, but includes equitable interests such as expectation and reliance interests implicated by the use of the domain name prior to notice of a dispute in connection with a bona fide offering of goods and services. The Policy expressly states that bona fide use of the domain name prior to notification of a dispute constitutes a legitimate interest.
The domain name was originally registered in 1998. As of early 2005, the domain name was registered to an "Arrow Realty" of Hayfork, California, with an expiration date of August 2005 as noted in the WHOIS. The domain name did indeed expire after August 2005, and was registered by the Respondent, moved to Moniker Online Services under a privacy registration, and associated with the nameservers of the HitFarm.com monetization service.
The Complainant correctly alleges that the Respondent has used the domain name in association with topics relating to rural living, but provides an oddly abbreviated version of the history of the associated web page. A more complete set of entries from the Internet Archive shows:
Prior to 2005 - The domain name is the home page of "Arrow Realty"
October 2005 - The domain name has changed to a parking lander PHP script designated as "landing.php" The output of that PHP script is not captured by Archive.org, but many subsequent ones are.
June 2006 - The domain name is parked with a HitFarm.com monetization lander and shows such search topics as "Rural living", "Simple life", "Living in Mexico" and various other topics, none of which have to do with banking services.
June 2007 - The domain name is still parked with a Hitfarm.com lander, and has a variety of topics relating to rural living, retirement communities and the cost of living in various far flung places as Mexico, Costa Rica and the Philippines.
February 2009 - The Archive record for this date does not appear to render properly. Notably among general interest links apart from "Apartment Rental", "Roommate Search", Condos for Sale" and so forth, there appears near the end of a list of "Related Searches" a single link designated "mortgage".
February 2011 - The domain name is again parked with a HitFarm.com lander advertising such topics as "Country Living", "Living in a Rural Area" and so forth, with no mention of any "banking services" whatsoever.
As can be determined by the complete historical record, the domain name has been targeted to topics directly related to the concept of "rural living" in one way or another. It is absolutely true that in a brief period of time some five years ago, there was a single link stating "mortgage", which appears to be the consequence of a misconfiguration of the consistent presentation of the page, and which has not been seen since. The fact that a single link may have been present five years ago for a brief period, among an overwhelming record showing use of the domain name for the general topic of rural living, does not warrant the sole remedy under the Policy, as it appears to have been remediated a number of years ago (if in fact it was not a temporary malfunction of some kind). As noted in connection with the transient appearance of a "clothing" link on a domain name more directly associated with a well-known opera:
Boutique Tristan & Iseut Inc. v. B & B
WIPO Case No. D2007-1816 <tristan.com>
http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-1816.html
The Respondent has been using the Domain Name to link it to various parking pages featuring sponsored links through which the Respondent derives pay-per-click or referral income. If the sponsored links have a preponderance in any direction, it appears to be in the direction of the operas of Wagner and primarily, Tristan und Isolde. However, the spread of links is a wide one and not obviously fashion orientated, although for a time one of the many categories of links featured was a ‘clothing’ category.
(Emphasis Added)
Likewise it was found in
Experimental Aircraft Association (EAA) v. EAA.COM
NAF Claim Number: FA0310000206309
http://domains.adrforum.com/domains/decisions/206309.htm
Complainant has not satisfied its burden of proof that Respondent has intentionally attempted to attract users by creating a likelihood of confusion. It is the finding of this Panel that the brief appearance of aviation links on Respondent’s Web sites was automatically provided by a pay-per-click search engine provider and was not intended by Respondent. Further, since there is no evidence that Respondent’s business is in connection with aviation, we do not find that the Respondent had a duty to be aware of Complainant’s mark.
While the Respondent fully understands that it is responsible for the links shown on the page, Respondent has been targeting the domain name to show subject matter relating to the general concept of "rural living" for many years. The Complainant's repeated claim that the links are to "direct competitors" is unsupported, identifies no such competitor, and it is clear that the single link to "mortgage" which appeared for a brief period in 2009 has not been there for five years. Clearly, that one link, out of the many archived pages showing nothing whatsoever relating to the Complainant's claimed mortgage business, is inconsistent with the Respondent's manifest aim in targeting the name to general "rural living" categories. Indeed, given the range and value of subjects which may be associated with the phrase "rural living", it would be foolish to use such a valuable domain name in association with one small mortgage company of which few people have ever heard or would associate with the term "rural living".
As correctly noted in the Complaint, the domain name has not been used for paid search advertising for some time, and now resolves directly to a page operated by SnapNames through which the domain name is listed for sale. The mere fact that a domain name embodying the phrase "rural living" has value, is not a function of the Complainant's obscure misspelling of that term for banking services. The domain name may be of interest to any number of prospective purchasers having an interest in using the domain name in association with one or another aspect of the phrase "rural living", and the Respondent has a perfect right to sell this legitimately acquired and used asset to any prospective purchaser for use having nothing to do with the Complainant. The Complainant simply does not have a monopoly in this common phrase such that any transaction between the Respondent and a willing purchaser would implicate the Complainant's narrow claim in the banking business. As noted in connection with the domain name <shoppers.com>:
SUPERVALU INC. v. Xedoc Holding SA
Claim Number: FA0802001142605 <shoppers.com>
http://domains.adrforum.com/domains/decisions/1142605.htm
Involved here is a common, descriptive word. It is not, in fact, associated by most people in the English-speaking world with the trademark of a regional US grocery chain. This domain name is worth $166,000 at auction precisely because it is a popular generic term with commercial connotations.
Accordingly, the Complainant has failed to show that the Respondent's use of the domain name over the course of some nine years has been illegitimate, or that the Respondent's current willingness to sell the domain name at market value according to the primary meaning of the phrase "rural living" is in any way violative of the Complainant's limited rights in connection with "banking services".
Finally, the Respondent's registration of the domain name is senior to the Complainant's US federal trademark registration. While the Complainant claims on "information and belief" for which the Complainant provides no information at all, that the domain name was registered in 2006. It can plainly be seen from the WHOIS history that the domain name was scheduled to expire in August 2005, and that the Archive.org records show the domain name was pointed to a monetization lander identified as "http://www.ruralliving.com/landing.php" in contrast to its prior use by a real estate company in California.
The Respondent submits the Complainant has failed to carry its burden by competent evidence. The brief appearance of a single "mortgage" link five years ago is hardly a present concern, nor is it probative of the Respondent's overwhelming use of the name in connection with subject matter relating to the general phrase "rural living". The Complainant's claims that the domain name was linked to "direct competitors", and the Complainant's claim that the domain name was registered in late 2006 are both unsupported by any evidence whatsoever, and contradicted by objective third party evidence here provided by DomainTools and the Internet Archive.
IV. Bad Faith
The final criteria required to be proven by the Complainant is that the domain name was (a) registered in bad faith, and (b) used in bad faith by the Respondent. The “bad faith” criterion is an element of specific intent directed toward the Complainant, and arising from rights known by Respondent to belong to the Complainant, as shown in the Policy examples all of which relate, at their basis, registration of a domain name to engage in conscious and willful exploitation of rights known to belong to the Complainant. The present dispute is not one in which the claimed mark at issue is solely, exclusively, or famously associated with one party, and in such circumstances bad faith may be inferred simply by registration of the domain name. Because “RURAL LIVING” per se is neither unique nor exclusive to the Complainant, the third criterion of the Policy requires the Complainant to prove that the domain name was registered with a specific intent relating to the Complainant.
Here, the Complainant dusts off a "constructive notice" theory, which apart from circumstances of reckless disregard is generally not favored under the UDRP, as noted in:
Makri S.A. v. Ashantiplc Ltd
Claim Number: FA1210001468099
http://domains.adrforum.com/domains/decisions/1468099.htm
Even assuming arguendo that Complainant had common law rights in the MAKRI mark at the time of Respondent’s registration in 2002, Complainant has not provided evidence that Respondent had knowledge of Complainant’s purported rights at the time of registration. Complainant’s assertion that Respondent had a duty to know of Complainant’s rights (by virtue of being a “sophisticated domainer”) is unpersuasive. Panels have consistently held that constructive notice without any indication of actual knowledge is insufficient for a finding of bad faith. See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration.").
Here, of course, a theory of constructive notice would require the Respondent to have notice of something which did not exist at the time the domain name was registered. First, the Complainant had no US trademark registration of which notice could be taken when the domain name was registered soon after its expiration in August 2005. Second, there is no duty of notice, even if the Respondent were a US company, of pending registration applications. Third, even if the Respondent had been aware of rights in "RURALIVING" for banking services, the Respondent would have proceeded to register the domain name and to use it, as the Respondent did, in association with subject matter having to do with "rural living". One feature of rural living worth noting in particular is a reduced availability of banking services relative to urban areas. However, not even the USPTO believes the Complainant has a monopoly right in this common term per se.
Stretching a bit further, the Complainant suggests the Respondent should have known, from a Google search in 2005, of its predecessor's claimed rights in the term. The Complainant, as with all of the other undocumented assertions in the Complaint, does not show what such a search would have revealed, but it should be plainly obvious even from the current Google results for the search phrase "rural living", that the Complainant is virtually nowhere to be found, and that such search results overwhelmingly demonstrate the term "rural living" to be a deathly mundane and common reference to various aspects of rural living. There is nothing in a Google search which would in any way suggest some sort of distinctive relationship between that phrase and the Complainant, and the Respondent sincerely doubts the situation in 2005 was any different in that regard. As noted in connection with a similar narrow claim in the word "arcade":
CNR Music B.V. v. High Performance Networks, Inc.
WIPO Case No. D2005-1116 <arcade.com>
http://www.wipo.int/amc/en/domains/decisions/html/2005/d2005-1116.html
The fundamental obstacle for the Complainant is that the term “arcade” has a broad variety of meanings in English, ranging from an architectural term, to a term used in connection with amusement centers and video games. The Panel accepts the Complainant’s evidence that, in a specific area, music, “arcade” is well-known and associated with the Complainant’s group and trademark. However, the basic issue in most cases under the Policy is whether the respondent has sought to take advantage of the complainant’s reputation as embodied in the trademark for the respondent’s commercial benefit.
In this case, the Panel finds that the Complainant has been unable to establish that this is the case. The registration of the domain name appears to have been aimed at exploiting the ability of the word itself to attract Internet users, and not aimed at taking advantage of the Complainant’s reputation or trademark. The Panel accepts that the name “arcade” probably does attract Internet users interested in a broad range of products that have nothing to do with the Complainant or the Complainant’s business. In fact, the Respondent may well have an interest in using the domain name with respect to various areas other than music, such as computer games.
Distilled to its essence, the Complaint asserts that the Respondent had a duty of notice of a trademark registration which was not in existence at the time the domain name was registered, and that the Respondent should have known that some party would claim a broad right in gross to the common phrase "rural living". The fact that one link to the word "mortgage" appeared five years ago for a brief time, hardly weighs against the manifest use of the domain name for nine years in association with "rural living" subject matter having nothing whatsoever to do with the Complainant. Likewise, the Respondent's willingness to negotiate the sale of the domain name at market value is premised on the value of the term "rural living" which is representative of vast fields of commerce having nothing to do with the Complainant's claim, and the Respondent is perfectly entitled to negotiate and sell the domain name at a market value determined by its primary meaning, to a purchaser interested in using the domain name for some subject, product or services other than banking services, for which the term "rural living" is not itself directly descriptive nor particularly valuable.
The Respondent submits that its intent in having registered and used the domain name since 2005 is manifestly clear on the evidence of record and the explanation and additional facts provided above. The Complainant has failed to plausibly demonstrate that the domain name was registered and used in bad faith by the Respondent since its acquisition of the domain name over ten years ago.
C. Additional Submissions
Complainant made the following timely additional submission:
[1.] In accordance with the deadline of June 1, 2014, this additional submission is being transmitted and served upon respondent and respondent’s counsel, John Berryhill, Ph.d. Esq., per The National Arbitration Forum’s UDRP Supplemental Rules.
[2.] INTRODUCTION
While Respondent fails
to address the point, the domain name ruralliving.com is phonetically
identical and therefore confusingly similar to Complainant' s Federal trademark
registration for "RURALIVING" for banking (and related)
services.
Despite Respondent’s argument to the contrary, the record clearly supports
Complainant's priority of use (and senior user status) of the
RURALIVING mark, based both upon actual use in 2004 and upon constructive
nationwide use accorded to Complainant’s RURALIVING U.S. trademark application
filing date of July 2, 2004. This July 2, 2004 filing date is accorded priority
under Lanham Act, § 1057(c) relative to Respondent’s purchase of the ruralliving.com domain name purchased in December 2005
(over one year after Complainants July 2004 filing date).
Respondent has no legitimate interest in the ruralliving.com domain name (and
bad faith is established), because the ruralliving.com domain name was used in
a pay-per-click context for links that were directly competitive with or
related to banking services, including mortgage, retirement and relocations
services. Bad faith is also established since Respondent first used the
ruralliving.com domain name after Complainant established actual and
constructive priority rights in July of 2004, based on its now incontestable
U.S. trademark registration for RURALIVING.
Further, a bad faith purchase can be presumed because Respondent had a duty
Under UDRP Policy §2 to represent that the ruralliving.com domain name will not
infringe the rights of any third party. Even a cursory search would have
revealed Complainant’s July 2004 filing and use of the RURALIVING mark. This
Forum has held in the past that this is particularly the case where Respondent
is an experienced domainer or domain broker (which Respondent has admitted in
its Response), and therefore Respondent, when purchasing domain names, cannot
be willfully blind as to whether a particular domain name may violate a third
party’s trademark rights.
[3.] IDENTICAL OR CONFUSING SIMILARITY
Priority Issue
As an initial point, Respondent incorrectly alleges that the registration date of the ruralliving.com domain name is prior to Complainant’s “alleged” first use date. Respondent has failed to properly consider featuring Complainant’s predecessor in title’s archived screen print demonstrating use of the mark, RURALIVING, since as early as December 6, 2004. The RURALIVING U.S. Trademark Application was filed on July 2, 2004. As such, under U.S. Trademark Law and U.S. common law, Complainant’s legitimate commercial use of the term RURALIVING on the Internet pre-dates Respondent’s registration and use of the ruralliving.com domain name by nearly a year, based upon Respondent’s own admission of acquiring the domain name on December 27, 2005. As a reminder to the Panel, Complainant steps into the shoes of its predecessor on account of the acquisition and assignment of the trademark rights at issue in this case. Complainant is afforded the same rights of enforcement that its predecessor had.
Degree Of Inherent Distinctiveness Of Complainant’s Mark
Respondent argues that the mark RURAL LIVING is not inherently distinctive and is merely a descriptive term (if not generic). Respondent presents evidence from a Google search and the existence of two active U.S. trademarks on the Federal Register (one of which is Complainant’s RURALIVING Registration).
Complainant maintains that the term “RURALLIVING” is not generic. “rural living” is not a term that appears in the English (or any other) dictionary. Additionally, the U.S. Patent and Trademark Office has found Complainant’s RURALIVING mark to be distinctive for banking services (and naturally related services) and subsequently this registration has become INCONTESTABLE. This registration and incontestable status provides conclusive evidence of the ownership and validity of the mark RURALIVING as a distinctive indicator of origin and provides immunity from certain legal challenges (such has being deemed descriptive). Additionally, the marks “RURALLIVING” and “RURALIVING” are phonetic equivalents, which under U.S. Trademark law, means the marks are considered and treated as identical and therefore are confusingly similar (i.e. would create a likelihood of consumer confusion). Therefore, the mark “RURALLIVING” (one word) can be considered and treated as an identical distinctive mark, one that infringes on Complainant’s Incontestable trademark registration.
Because of the trademark equivalency of RURALIVING and RURALLIVING, the risk is high for consumers to confuse and associate the offerings for the related retirement planning and real estate (and mortgage) services that were prevalent on Respondent’s ruralliving.com pay-per-click landing pages for nearly 7 years as being sponsored or approved by Complainant.
In general, consumers seeking retirement planning, real estate, and relocation services are also simultaneously interested in mortgages and various “banking services” (and related services) to help complete these transactions. The Respondent has argued that the pay-per-click links are mainly consisted of general interest links relating to a “rural living” lifestyle (two words). In reality, the pay-per-click links mostly pertained to retirement planning and real estate offerings (especially in destinations such as Mexico and Costa Rica and San Antonio neighborhoods). These advertising links and wording do not immediately come to mind when thinking of relocating to a rural community or inquiring about a “rural living” lifestyle. In fact a “neighborhood” by definition is the opposite of “rural”.
As much as Respondent would like to argue to the contrary, “banking services” (including mortgage and financial planning services) are closely related to retirement planning and real estate services and those consumers who are seeking retirement planning and real estate services are also commonly seeking banking and mortgage services at the same time. Under U.S. trademark law, these would be considered related services for the purposes of determining likelihood of confusion and consumer confusion. Complainant asserts that Respondent’s actions likely resulted in consumers falsely associating the ruralliving.com domain name with Complainant’s banking services, especially when the risk of consumers confusing the spelling of RURALIVING and RURALLIVING is extremely high. Additionally, Respondent operates its domain name business from Hong Kong, as is evidenced in the disclosed registrant details for the ruralliving.com domain name. Respondent may fail to recognize that those consumers living in rural farming communities in the United States are quite familiar with the Complainant and its well-known mark within the industry. Given that Complainant is one of the largest agri-banks in the U.S., Consumers recognize the banking services they offer, the trademarks used for these services, and the goodwill associated with Complainant and its trademarks.
[4.] LEGITIMATE RIGHTS OR INTERESTS
Respondent claims that the pay-per-click links that were featured on the ruralliving.com domain name over the 9 years that they have owned and operated the domain name were “overwhelmingly” related to the general topic of “rural living,” thus making a bona fide offering of a Service under the Policy. This simply is not the case. Most of the pay-per-click advertisements displayed by Respondent on its website were for services directly or indirectly related to banking services.
Unfortunately, Complainant was only able to provide an “oddly abbreviated” history of ownership of the ruralliving.com domain name due to Respondent’s repeated use of multiple privacy services. Complainant still maintains that Respondent’s acquisition of the Infringing Domain Name was a year after Complainant first began advertising its RURALIVING banking services on the Internet. In light of the evidence provided by Respondent, we have reviewed the archived copies of the screen shots included in the Response. We have a few additions, corrections and general observations regarding Respondent’s discussion regarding the “use” of the ruralliving.com domain name over time:
July 2004 - Complainant’s predecessor in trademark title begins offering banking (and related) services under the brand RURALIVING and applies for an intent-to-use U.S. federal trademark for RURALIVING. The U.S. trademark application, under Section 22 of the Lanham Act, provides constructive notice of the registrant’s claim of ownership and nationwide notice of use.
June 2005 - Complainant’s RURALIVING application is published for opposition.
November 28, 2005 - Complainant’s statement of use is accepted by the U.S. Patent and Trademark Office. A specimen of how this mark is used (which consists of a screen print of the RURALIVING mark on the Applicant’s webpage) is part of the PUBLIC record and would be easily found in the U.S. Patent and Trademark Office (especially by a sophisticated domainer or domain broker) using the free search utility when searching either for “RURAL LIVING”, “RURALLIVING” or “RURALIVING”. (Note that Complainant’s trademark registration is assigned the pseudo mark of “RURAL LIVING” by the U.S. Patent and Trademark Office for search and equivalency purposes).
December 2005 - According to the assertions made in the Response, Respondent acquired the ruralliving.com domain name on December 27, 2005.
January 27, 2006 - Complainant’s RURALIVING mark registers on the U.S. Federal Register.
June 2006 - Respondent begins using the ruralliving.com domain name as a pay-per-click landing page that include advertisement links for mortgages and services related to the banking industry.
February 25, 2013 - [Recorded 3/18/13] Complainant acquires all trademark rights and title in the RURALIVING registration, including the priority date of first use and the goodwill associated with the service mark for banking and related services.
November 2013 - Respondent removes the ruralliving.com domain name from pay-per-click access and offers the ruralliving.com domain name for sale through the domain auction site, SNAP NAMES.
Respondent alleges that the pay-per-click links that were featured on the ruralliving.com domain name over the years were “overwhelmingly” related to the general topic of “rural living, thus making a bona fide offering of a service under the Policy”. We have reviewed those screen shots of the Infringing Domain Name that remain available through archive.org and the screen shots that Respondent has submitted the Response to verify the exact nature of these pay-per-click links and to analyze if they “overwhelmingly” relate to the general topic of “rural living.”
Respondent also alleges that the screen shot of the Infringing Domain taken in 2009 that features links to real estate related services, including “mortgages” was in error and due to some sort of “misconfiguration.” However, Respondent failed to back this claim up with any evidence. Either Respondent was in control of these real estate and mortgage pay-per-click links or is held responsible for the content appearing on its website if this content is chosen by a third party advertiser. Calling it a “misconfiguration” is not an excuse or a defense for the infringing activity that is against the Policy. Complainant notes that the pay-per-click links shown on the ruralliving.com domain name over the previous 4 years also include references to retirement planning, relocation, and real estate services, as will be demonstrated below.
For instance, in the screen shot dated June 5, 2006 of ruralliving.com,, out of the 30 links available on the page only 6 of them are related to the general topic of the “rural living” lifestyle. The remaining 24 pay-per-click advertising links are more closely related to the general topics of “retirement”, “relocation”, “real estate” and “neighborhood”. Complainant has conducted a Google search into topics that feature prominently when discussing the “rural living” lifestyle and it does not appear that a majority of Internet users generally associate “rural living” with the keywords “retirement”, “relocation”, and “real estate”. In light of this search it is quite difficult to accept that Respondent’s true intent here was to include only general keywords relating to the “rural living” lifestyle.
Respondent has, over the years, featured links and advertising keywords that are more commonly associated with Complainant’s banking services than with the general topic of a “rural living” lifestyle. Combined with the fact that Complainant’s banking services and registered trademark use are offered specifically to those in agricultural communities which makes the choice of links by the Respondent even more suspect. It is generally accepted that “banking services” are closely related to those of ”relocation”, “condominiums”, “apartments” and “early retirement”.
In conclusion, Complainant maintains that Respondent’s use of the ruralliving.com domain name was used in connection with a pay-per-click site that targeted Complainant’s registered trademark. This use of the ruralliving.com domain name does not in any way qualify as a bona fide offering of services and therefore Respondent has not met its burden of demonstrating a legitimate interest in the ruralliving.com domain name.
[5.] BAD FAITH
Complainant maintains that the totality of circumstances surrounding the acquisition and use of the ruralliving.com domain name demonstrate bad faith on the part of the Respondent. Respondent used the ruralliving.com domain name in a manner to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s registered trademark as to source, sponsorship, affiliation, or endorsement. Complainant and this Forum are aware that Respondent’s business revolves around the purchase and sale of domain names. Respondent has been involved in the domain name brokering business for at least the past 10 years, if not longer. Respondent is what previous decisions have called a “sophisticated domainer.” In this regard, there are circumstances (such as this case before you) in which constructive notice can be used in a finding of bad faith, especially when there is a situation involving the reckless disregard for the rights of third parties.
According to UDRP Policy §2, Respondent falsely made the representation to the Registrar, Moniker, that the registration of the ruralliving.com domain name will not infringe upon or otherwise violate the rights of any third party. In light of this representation, this Forum has found on multiple occasions that a Respondent’s “willful blindness” in acquiring a domain name can amount to a finding of bad faith. In fact, in the SENNA.COM case (citing mVisible Techs., Inc. v. Navigation Catalyst Sys., Inc.) the panel agreed that, “Although there may be no obligation that a domain name registrant conduct trademark or search engine searches to determine whether a domain name may infringe trademark rights, a sophisticated domainer who regularly registers domain names for use as PPC landing pages cannot be willfully blind to whether a particular domain name may violate trademark rights. In this context, a failure to conduct adequate searching may give rise to an inference of knowledge”. This principal has also been upheld in Oregon Freeze Dry, Inc. v. Vertical Axis Inc. and Vaga-lume Midia Ltda. v. Kevo Ouz d/b/a Online Marketing Realty, in addition to other related cases.
This Forum has even held that a Respondent who was operating a sophisticated domain name business was willfully blind, and therefore inferred knowledge of the Complainant’s rights in a case involving the Portuguese word for “firefly”, “vaga-lume”, (a common dictionary term). In this case, as the Respondent knew that the term meant firefly in Portuguese, he was under the obligation to conduct a cursory search for the term on the Brazilian and Portuguese trademark databases, knowing that an identical mark was unlikely to be found in the U.S. Patent and Trademark Office database. The same can be said for a Respondent who is located in Hong Kong, yet acquiring a domain name composed of English words and the “.com” suffix would impart a similar obligation to conduct a cursory search for the term in the U.S. Patent and Trademark Office database.
If Respondent would have conducted a search of the U.S. Patent and Trademark Office federal register for “RURALIVING”, “RURAL LIVING” or “RURALLIVING” at the time that it purchased the ruralliving.com domain name, Complainant’s trademark would have been one of ONLY two U.S. trademark applications on the U.S. federal register, and the only one for banking services (or related services). Respondent would have been able to see the specimen of use along with the applicable dates of priority based upon the public nature of Complainant’s trademark filing. All of this information was readily available to Respondent, the sophisticated domainer, at the time it acquired the ruralliving.com domain name.
Therefore, because Respondent is considered a sophisticated domainer under this Forum’s standards, Respondent use as a defense that it did not have knowledge of the Complainant because it did not conduct a trademark search (specifically a U.S. trademark search). UDRP Policy §2 and this Forum hold such Respondents responsible to conduct at least a cursory search before purchasing a domain name to determine whether or not a third party owns any rights in the component elements of the domain name. As Respondent has not provided any evidence that this cursory search was done, and has subsequently “turned a blind eye,” this is enough of an admission for this Forum to impart an inference of knowledge upon the Respondent for a finding of bad faith.
Respondent also used the domain name ruralliving.com in bad faith. Instead of wholly adhering to keywords for the types of goods and services normally associated with descriptive aspects of a “rural living” lifestyle, Respondent instead included keywords and links to those services that are more closely associated to Complainant’s banking services for which RURALIVING is a distinctive, and incontestable mark for these banking and related services. The result of this creates a likelihood of confusion between Respondent’s phonetically identical, and therefore confusingly similar, RURALLIVING, and Complainant’s well-known RURALIVING services. Based upon the prior use of keyword advertising, consumers seeking out Complainant’s banking and related services would be redirected to Respondent’s links for services (such as, mortgages, real estate, and retirement planning services) and could easily assume that these links were approved by, endorsed, or somehow associated with Complainant’s banking and related services.
Therefore, Complainant maintains that the totality of the circumstances surrounding the acquisition and use of the ruralliving.com domain name give rise to a finding of bad faith. The failure to conduct a cursory search for any third party rights gives rise to an inference of knowledge of the Complainant’s mark. The subsequent inclusion of keywords in the PPC links that are more closely related to the Complainant’s use of RURALIVING for banking (and related) services, thus creating a likelihood of confusion and diverting consumers who are seeking out Complainant’s related banking services. The subsequent offering of the ruralliving.com domain name for sale shortly after the Complainant (one of the largest Agri-Banks in the United States) acquired rights in the mark also indicates bad faith on the part of the Respondent. Therefore, Respondent has acquired and used the ruralliving.com domain name in bad faith contrary to UDRP Policy.
Conclusion
Complainant maintains that it has demonstrated the requirements under the UDRP Policy and that the ruralliving.com domain name should be transferred accordingly to the Complainant.
Respondent made the following timely additional submission:
I. Complainant's Rights
At various points, the Complainant essentially contends that trade or service mark rights of some kind are established by filing a registration application, and that somehow actually obtaining registration of a mark is superfluous. Additionally, while the relevant US law imposes a duty of constructive notice for the purpose of infringement proceedings, there is no duty under US law, or under the UDRP, of notice of pending applications.
The Complainant also manages to mis-apply the principle that if the Respondent were seeking to claim a trade or service mark right in the term at issue for banking services, then the Complainant's filing date would be relevant to a priority contest. However, what is at issue is the Respondent's registration and use of a term in which the Respondent does not claim a trademark right. There is no trade or service mark right which attaches to the use of a descriptive phrase in association of subject matter it describes. The relevant point is that the Complainant's US trademark registration does not itself evince an enforceable right as of the time the Respondent registered the domain name for use as a descriptive paid search keyword phrase.
Of course, if the Complainant's mark had been registered at the relevant time, and if the Respondent had obtained the domain name for the purpose of conducting banking services, then the Complainant might have a relevant argument. However, the mere fact that someone has filed a registration application for "RURALIVING" for banking services does not, under any cognizable principle of law, bar anyone, anywhere, from using the phrase "rural living" (or its registration as a domain name) for the purpose of exploiting a common descriptive phrase for rural living. The Complainant's argument that "rural living" is "not in any dictionary", and is thus somehow an impenetrably indecipherable pair of words is interesting. And yet, Google manages to detect some 1.4 million uses of this phrase despite its absence from the dictionary, as if evidence of such a common sense conclusion were needed. The phrase "intentionally obtuse" does not, to the Respondent's knowledge, appear in any dictionary either, but its meaning is clear enough and, as a mark for "banking services", would be likewise distinctive and non-descriptive should anyone adopt it as a mark.
The Complainant is indeed correct that "Respondent may fail to recognize that those consumers living in rural farming communities in the United States are quite familiar with the Complainant and its well-known mark within the industry" in that the Respondent had never heard of the Complainant at all until this Proceeding. Likewise Respondent, and the record here, remain thoroughly devoid of any information suggesting how well known the mark may be to anyone. The Complainant alleges it is a large bank, but at no point do the Complaint or the Supplement allege or show the scale, scope, or recognition of this particular mark. Whether the Complainant is well known is, of course, not relevant to whether this mark is well known. Furthermore, the Complainant suggests any use of the phrase "rural living" would necessarily be confused with whatever service is provided by the Complainant under "RURALIVING", stating "Complainant asserts that Respondent’s actions likely resulted in consumers falsely associating the ruralliving.com domain name with Complainant’s banking services..." (emphasis added), the Respondent submits that more than eight years is certainly long enough for the Complainant to demonstrate a single instance of such a thing occurring, and the Complainant does not point out what "actions" are supposed to have brought about such association.
The Complainant may assert it is "well-known" and may assert consumer confusion, but disputes under the Policy are not decided by some "weight of assertion" standard. It is the Complainant's burden to actually prove its assertions by competent evidence, particularly where we are dealing with what the Panel likely perceived as a descriptive phrase before burrowing into the parties' unnecessarily-extended contentions.
II. Respondent's Use Of The Domain Name
Under the apparent belief that the Panel cannot read the historical use of the domain name for itself, the Complainant quibbles over whether every link which has appeared over more than eight years is or is not directly within the descriptive scope of the words "rural" and/or "living". The Respondent believes it is evident without further elaboration that the historical record does not evince a predatory use of the domain name to divert consumers in search of banking services. The Respondent has already pointed out that some five years ago a single "mortgage" link appeared on the page, lest anyone overlook it. Amusingly, the Complainant claims the Respondent somehow immediately set to using it "as a pay-per-click landing page that include advertisement links for mortgages" as if the temporary appearance of a single link several years ago fit that description. In relation to the obvious disappearance of that one link for the last several years, the Complainant claims the "Respondent failed to back this claim up with any evidence." The Respondent believes it is clear that the "evidence" of its non-appearance for a number of years is... its non-appearance for a number of years.
III. Respondent's Registration Of The Domain Name
A quite breathtaking argument is advanced in the Complainant's supplement in relation to the effect of the filing date of its registration application under US law. The Complainant's supplement actually claims:
"The U.S. trademark application, under Section 22 of the Lanham Act, provides constructive notice of the registrant’s claim of ownership and nationwide notice of use." (Emphasis Added)
It is worth pointing out the statute in question says no such thing, even if it were applicable here. Section 22 of the Lanham Act is codified as 15 USC 1072, and states:
"Registration of a mark on the principal register provided by this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, shall be constructive notice of the registrant’s claim of ownership thereof." (Emphasis Added)
The Panel is entitled to know what the statute actually says, and it says nothing of the sort suggested by the Complainant, who certainly knows better - or perhaps not, as suggested by the Complainant's curious conflative reference to "Complainant’s application/registration". An application and a registration are two different things, as frequently pointed out under the UDRP. See, e.g. ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Complainant’s mere application to the USPTO to register the ECG mark is insufficient to establish rights to the mark.”).
Registration of the Complainant's mark on the principal register did not occur until after the Respondent registered an expiring domain name at the date controlled by the domain expiration process. The notion that a domain registrant has a duty to consult the file histories of unregistered applications is supported by no principle of US law or any decision under the UDRP. The bottom line remains: even if there were some operative principle of constructive notice at work, notice of the Complainant's claim in relation to "banking services" would not, and does not, preclude descriptive use of the phrase "rural living".
The Complainant's passing salute to UDRP Paragraph 2 is likewise somewhat circular. Indeed, registration of a domain name requires a statement that, to the best of the registrant's knowledge it will not be used for an infringing purpose. That required representation has at all times been satisfied, in that the Respondent has not been using "RURALIVING" or any variation thereof as a mark for banking services. The same argument fares no better under Paragraph 2, as a violation of that representation would still require some principle under which use of a descriptive term for its primary meaning were somehow rendered unlawful by a junior trademark registration for services of which the phrase is not descriptive. To the extent the Complainant asserts "banking services" encompasses a broad swath of things which are certainly not "banking services", one might just as well argue that anything requiring money is "related to banking services" since many people keep their money in banks. However, "banking services" does not ordinarily manage to swallow any and all commercial activities, and certainly does not usurp the ordinary meanings of words for purposes other than services offered by a bank.
The Respondent is certainly "sophisticated" enough to know what the words "rural" and "living" mean, but no principle of law requires the Respondent, even if operated in the US, to dive into the prosecution records of pending applications before the USPTO.
Complainant made following sur-reply, which is not allowed by the rules, but was nevertheless considered by the Panel:
Prompted by Respondent’s assertion that Complainant has provided no support for its position that there is priority accorded from the filing date of its Application (See Respondent’s Additional Submission pages 2-3), Complainant now wishes to clarify and complete the record (for Complainant’s Additional Submission page 4), as it was intended, by also adding reference and citation to Lanham Act Section 7(c).
Section 7(c) of the Lanham Act is codified as 15 U.S.C. §1057(c) Constructive Use:
Complainant inadvertently references only Section 22 of the Lanham Act in its Additional Submission and meant to also include a citation to Section 7(c) of the Lanham Act, in conjunction with Section 22, to support its position of priority accorded from the filing date of its Application. Section 7(c) of the Lanham Act reads as follows:
“(c) Application to register mark considered constructive use. Contingent on the registration of a mark on the principal register provided by this Act, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any other person except for a person whose mark has not been abandoned and who, prior to such filing--
(1) has used the mark;
(2) has filed an application to register the mark which is pending or has resulted in registration of the mark; or
(3) has filed a foreign application to register the mark on the basis of which he or she has acquired a right of priority, and timely files an application under section 44(d) [15 USC 1126(d)] to register the mark which is pending or has resulted in registration of the mark.”
Respondent made following sur-sur-reply, which is not allowed by the rules, but was nevertheless considered by the Panel:
While I realize the Panel may choose to accept or reject additional comments, the Complainant's point in relation to Section 22 was on the subject of "constructive notice" of a mark, not "constructive use" for the purpose of resolving priority contention between trademark claimants. The Respondent is not a trademark claimant in the term at issue - quite the opposite. Hence, "constructive use" and "priority" in the context of Section 22 would be relevant if there were competing trademark claims at issue in this dispute. There are not.
The Complainant's supplement directly misrepresented Section 7(c), even if intended, as indeed illustrated by Complainant's extended citation of 7(c).
The words "constructive notice" are in black and white at Page 4 of Complainant's supplement, in relation to the application filing date.
Those words appear nowhere in Section 7(c) in relation to filing an application.
Again, "constructive use" is a construct used to resolve priority among trademark claimants. The fact that 7(c) establishes a filing date as a constructive use, imposes NO duty of "constructive notice" on anyone.
That was the point the Complainant was attempting to make by the reference it now claims to be incorrect - and is STILL misrepresented even if the relevant passage at Page 4 of the Complainant's supplement is read to be understood as "Section 22 and Section 7(c)" as the Complainant now claims. Neither section establishes a duty of "constructive notice" of an unregistered application at the USPTO - neither of them.
The Panel can surely read the Complainant's words at Page 4, read the statute, and see the direct misrepresentation, which remains a misrepresentation even as "corrected" by the Complainant.
(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 not been registered and is not being used in bad faith.
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 Complainant must prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 claims it is one of the largest farm credit associations in the nation that provides a full range of financial services including mortgage lending, leasing, consulting, and related services. Complainant has rights in the RURALIVING mark and provides evidence of its United States Patent & Trademark Office (“USPTO”) registration (Reg. No. 3,047,030 filed July 2, 2004, registered January 17, 2006). Complainant has continuously used the RURALIVING mark since 2004. A trademark registration with the USPTO normally adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i), Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007). Complainant’s RURALIVING mark was filed with the USPTO on July 2, 2004 by First Dakota Financial Corporation. The trademark was assigned to Complainant on February 13, 2013. The effective date of Complainant’s trademark rights date back to the application’s filing date, see Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002). In light of these facts, Complainant’s rights in the mark date back to July 2, 2004.
Respondent claims Complainant’s mark is generic. That is beyond the competence of this Panel. The USPTO has registered this mark and the Panel shall not determine the propriety of that registration, especially since this registration has become incontestable.
Complainant claims Respondent’s <ruralliving.com> domain name is confusingly similar to Complainant’s RURALIVING mark. Respondent merely adds an additional letter “L” to Complainant’s mark, making the disputed domain name phonetically identical to Complainant’s mark. Respondent also adds the generic top-level domain (“gTLD”) “.com” to Complainant’s registered mark (which domain name syntax requires). Previous panels have determined such alterations do not sufficiently differentiate the resulting domain name from the incorporated mark pursuant to Policy ¶4(a)(i). In Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), the panel concluded adding a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis. To hold otherwise would eviscerate the UDRP. In Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004), the panel held the addition of a single letter to the complainant’s mark does not adequately distinguish respondent’s domain names from complainant’s mark pursuant to Policy ¶4(a)(i). The addition of a single letter and “.com” do not prevent a finding of confusing similarity. Respondent’s <ruralliving.com> domain name is confusingly similar to Complainant’s RURALIVING mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent has no rights or legitimate interests in the <ruralliving.com> domain name. Respondent is not commonly known by the disputed domain name or Complainant’s mark. Originally, Respondent used a privacy service to hold bare title to the disputed domain name. Certainly, “Domain Name Privacy LLC Customer_ID:2941398” bears no relationship to the disputed domain name. Once this proceeding was commenced, Respondent’s name was revealed to be Ashantiplc Ltd. That still bears no relationship to the disputed domain name. Respondent is not sponsored by or affiliated with Complainant in any way and Complainant has not given Respondent permission to use Complainant’s mark. Based upon these facts, it is clear Respondent is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant claims Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent does not dispute receiving monetary compensation from the sponsored advertisements offered through the pay-per-click website displayed when entering the disputed domain name into a web browser (even if only in the form of free domain name parking). While Complainant claims some of the advertisements directly compete with Complainant and cause disruption to Complainant’s legitimate business, this does not appear to be substantially true even if has actually occurred over the past nine years (although certainly not recently).
Respondent has provided no evidence it made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services since registering it in August 2005, Policy ¶4(c)(i). The fact prior owners may have had rights in the disputed domain name before August 2005 does not automatically confer those rights on Respondent. Providing thinly veiled parking pages with links to third party web sites does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)).
Finally, Respondent registered the disputed domain name using a privacy service. This means the privacy service which holds title to the domain name has no control over the use of the disputed domain name. The real owner conceals its name from the public, meaning the disputed domain name cannot, by definition, acquire a secondary meaning regarding the undisclosed principal…the Respondent in this case.
Respondent has acquired no rights to the disputed domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
By a majority vote, the Panel determines Complainant 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).
First of all, Respondent registered the disputed domain name in August 3, 2005, which is substantially before Complainant’s trademark was issued by the USPTO on January 17, 2006. Therefore, Respondent could not have registered the disputed domain name with Complainant’s mark in mind. Respondent’s statement that it did not register the disputed domain name with Complainant’s rather generic mark in mind further corroborates this finding.
Respondent has not violated any of the factors listed in Policy ¶4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also 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 respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶4(a)(iii)).
Respondent is perfectly entitled to negotiate and sell the domain name at a market value determined by its primary meaning. See State Bar of Cal. v. eWebNation.com, Inc., FA 97137 (Nat. Arb. Forum June 14, 2001) (despite a finding of bad faith for other reasons, "to offer a web-site for sale to the public is not necessarily evidence of bad faith, where, as here, an active site exists"); see also Supervalu Inc. v. Xedoc Holding SA, FA 1142605 (Nat. Arb. Forum April 4, 2008) (finding that the <shoppers.com> domain name is worth $166,000 at auction precisely because it is a popular generic term with commercial connotations.). Respondent did not offer to sell the disputed domain name in bad faith because it is a popular generic term with commercial connotations.
The Panel finds Policy ¶4(a)(iii) not satisfied.
Having failed to establish all three elements required under the ICANN Policy by a majority vote, the Panel concludes relief shall be DENIED.
Accordingly, it is Ordered the <ruralliving.com> domain name REMAIN WITH Respondent.
Houston Putnam Lowry, Chartered Arbitrator and Chair,
Paul M. DeCicco and Honorable James A. Carmody, Panelist
Dated: Tuesday, July 1, 2014
Houston Putnam Lowry dissents:
I differ from my brother Panel on the bad faith element. Complainant claims Respondent registered and is currently using the <ruralliving.com> domain name in bad faith under Policy ¶ 4(b)(i). Respondent is offering the disputed domain name for sale through the SNAP names domain name auction site with a minimum bid of $10,000. Prior panels have routinely determined offering to sell a disputed domain name for an excessive price is an indication of bad faith under Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”). I would agree and would find Respondent registered and is using the disputed domain name in bad faith under Policy ¶4(b)(i).
Complainant claims Respondent’s previous use of the disputed domain name to resolve to a website displaying links that compete with Complainant indicates bad faith use and registration. Previous panels have found evidence of bad faith where a respondent provides links to competitors of the complainant through the confusingly similar domain name. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). In this case, Complainant had to look long and hard over a nine year history to find competing links and cannot find any competing links presently. I would decline to find bad faith registration and use of the <ruralliving.com> domain name under Policy ¶ 4(b)(iii) because de minimis non curat lex.
Complainant claims Respondent is attempting to attract Internet users to its resolving website for commercial gain by causing confusion between the disputed domain name and Complainant’s RURALIVING mark. Complainant claims Respondent’s bad faith is further demonstrated by Respondent’s prior use of the domain name in connection with generating revenue as a click-through website. Respondent does not dispute it gets an economic benefit of some kind from the “click through” links. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel wrote, “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).” The present case is analogous. I would find Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Finally, Respondent registered the disputed domain name using a privacy service. I would hold this gives rise to a rebuttable presumption of bad faith registration and use under the penumbra of Policy ¶ 4(b) in the commercial context. Respondent has done nothing to rebut that presumption by showing a bona fide reason to conceal its true identity from the marketplace.
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