Macerich Partnership, L.P. v. C M Alvarez / Efusion Media Group
Claim Number: FA1907001850943
Complainant is Macerich Partnership, L.P. (“Complainant”), represented by Rod S. Berman of Jeffer Mangels Butler & Mitchell LLP, California, USA. Respondent is C M Alvarez / Efusion Media Group (“Respondent”), represented by Carla Alvarez, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <schoolcents.com> registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 3, 2019; the Forum received payment on July 5, 2019.
On July 4, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <schoolcents.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 July 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 2019 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@schoolcents.com. Also on July 9, 2019, 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 July 15, 2019.
On July 18, 2019, the Forum received an Additional Submission from Complainant, which was filed in a timely manner according to Supplemental Rule 7.
On July 23, 2019, the Forum received an Additional Submission from Respondent, which was filed in a timely manner according to Supplemental Rule 7.
On July 23, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Michael A. Albert as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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
Complainant leases and develops shopping malls and community centers across the U.S. Complainant has rights in the SCHOOL CENTS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,466,386, registered July 3, 2001). See Compl. Ex. C. Complainant also has common law rights acquired by virtue of continuous use in commerce in connection with charitable fundraising services for over two decades. Respondent’s <schoolcents.com> domain name is confusingly similar to Complainant’s SCHOOL CENTS mark as Respondent fully incorporates the mark and in no way attempts to distinguish the mark.
Respondent has no rights or legitimate interests in the <schoolcents.com> domain name. Respondent is not licensed or otherwise authorized to use Complainant’s SCHOOL CENTS mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the <schoolcents.com> domain name to redirect users to a website which makes liberal use of Complainant’s marks without a disclaimer. See Compl. Ex. F. After this redirection, Respondent uses the domain name to divert website traffic and funds away from Complainant’s school fundraising program in an effort to promote its own scholarships. Id. Respondent makes no legitimate noncommercial or fair use of the disputed domain name.
Respondent registered and uses the <schoolcents.com> domain name in bad faith. Respondent is attempting to attract, for commercial gain, Internet users by advertising similar school-related funding services to those offered by Complainant. See Compl. Ex. F.
B. Respondent
Respondent publishes informational websites and registered the <schoolcents.com> domain name to publish articles about saving for college. Complainant does not currently have rights in its SCHOOL CENTS mark, as the trademark registration furnished by Complainant was cancelled on February 10, 2012. See Resp. Appendix B. Additionally, Complainant has no rights in the SCHOOL CENTS mark as it is made up of entirely generic words.
Respondent has rights or legitimate interests in the <schoolcents.com> domain name. Respondent is known by the disputed domain name and has been using and improving it since July 2009. Respondent has Facebook and Twitter accounts that correspond with the disputed domain name. Respondent’s use in publishing articles about funding a college education is a bona fide offering of goods or services and a legitimate noncommercial or fair use not related to Complainant’s shopping rewards program. Additionally, the domain name is merely two generic words not uniquely associated with Complainant or its services.
Respondent did not register or use the <schoolcents.com> domain name in bad faith. Respondent registered the disputed domain name for publishing articles about funding a college education, which is unrelated to Complainant’s shopping rewards program. Respondent has engaged in legitimate noncommercial or fair use of the disputed domain as Respondent does not have its own scholarships, others’ college scholarships are shared for informational purposes only, and Complainant has no website traffic to divert.
Respondent also describes Complainant’s actions as a reverse domain name hijacking attempt.
C. Additional Submissions
Complainant’s Additional Submission
Complainant has trademark rights in the SCHOOL CENTS mark by virtue of its continuous use for nearly twenty years. A domain name that wholly incorporates a trademark, such as Respondent’s, is sufficient to establish confusing similarity.
Respondent was not using the domain name at the time the Complaint was filed, and “miraculously overhauled the website and published actual content” after the filing of the Complaint. Respondent is not known by the domain name, and Respondent’s website does not appear in a Google search provided by Complainant. Respondent makes no legitimate noncommercial or fair use of the domain name as domain names identical to trademarks carry a high risk of implied affiliation, and Respondent has not attempted to distinguish the two.
Respondent has intentionally registered and used the name in bad faith as the website was passively held at the time of the Complaint and attempted to seek financial payment for the domain name from Complainant.
Respondent’s Additional Submission
The mark SCHOOL CENTS is descriptive of Complainant’s shopping rewards program, and is used by other organizations.
Respondent has a legitimate interest in publishing educational and informational articles. Respondent provides Internet Archive Wayback Machine captures of the <schoolcents.com> page showing such articles. Complainant is taking inconsistent positions by contending both that Respondent is diverting traffic from Complainant’s services but also that Respondent is not using the domain name for a website at all. The change to Respondent’s home page was merely a reformatting following a PHP upgrade.
Respondent’s website has been a publishing entity for ten years and is known by the disputed domain name both on the website and on social media. The Google search results in Complainants’ Reply is personalized based on the searcher. Respondent provides different and more comprehensive search results from an incognito window.
Respondent does not imply or suggest any affiliation with the mark Complainant applied for. Respondent was unaware of Complainant until being contacted by it in April. Complainant’s mark is not well known and is not the target of frequent searches as evidenced by key word estimates from Google Ad Planner and UberSuggest.io. The Internet is minimally involved in Complainant’s rewards promotion.
The domain was not registered in bad faith and the publishing on Respondent’s corresponding website for the past decade was not done in bad faith. The website still had, at the very least, one article up when Complainant created its Exhibit F. Respondent’s response to Complainant’s correspondence merely stated that Complainant has no rights in the website and could make an offer if it wanted to acquire the domain. Complainant’s email was a fraudulent claim of infringement and an attempt at intimidation.
Respondent requests that Complainant’s request be found to constitute Reverse Domain Name Hijacking, because the Complaint is abusive harassment, has misrepresented information, and Complainant’s claims are egregious and borderline libelous.
Complainant does not have trademark rights by virtue of Complainant’s previous federal registration of the SCHOOL CENTS mark that has since been cancelled. Complainant holds common law trademark rights for the SCHOOL CENTS mark. Respondent’s domain name is confusingly similar to Complainant’s SCHOOL CENTS mark.
Complainant has not satisfied its burden of proving Respondent has no rights or legitimate interests with respect to the <schoolcents.com> domain name.
Complainant has not satisfied its burden of proving Respondent registered and used the <schoolcents.com> domain name 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 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.
Under Paragraph 4(a)(i) of the Policy, Complainant must prove that the <schoolcents.com> domain name is identical or confusingly similar to a mark in which Complainant has rights. The panel notes that the domain name <schoolcents.com> merely adds a generic Top-Level Domain (“gTLD”) to the SCHOOL CENTS mark. The addition of a gTLD to the mark fails to sufficiently mitigate any confusing similarity between the disputed domain name and the mark under Policy paragraph 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy Paragraph 4(a)(i)). The Panel therefore finds that the disputed domain names are confusingly similar to the SCHOOL CENTS mark under Policy Paragraph 4(a)(i). Therefore, the only issue is whether Complainant has rights in the SCHOOL CENTS mark.
Complainant claims rights in the SCHOOL CENTS mark through its registration of the mark with the USPTO (Reg. No. 2,466,386, registered July 3, 2001), which was active at the time Respondent registered the domain <schoolcents.com>. See Compl. Ex. C. National registration of a mark by a complainant typically prima facie satisfies the requirement that complainant have trademark or service mark rights in the mark. See WIPO Jurisprudential Overview 3.0, paragraph 1.2; Beyoncé Knowles v. Sonny Ahuja, WIPO Case No. D2010-1431. However, Respondent provides evidence that the USPTO status of the mark is “DEAD.” See Resp. Appendix B. Paragraph (4)(a) of the Policy requires the complainant “‘has’ trademark rights, i.e. ‘has’ them at the time the decision is being made.” Esquire Innovations, Inc. v. Iscrub.com c/o Whois Identity Shield; and Vertical Axis, Inc., Domain Administrator, WIPO Case No. D2007-0856. Therefore, Complainant’s registration alone does not satisfy Paragraph 4(a)(i) of the policy.
The Panel finds that Complainant has common law rights in the SCHOOL CENTS mark as it has been used in commerce and is merely suggestive of Complainant’s program. Respondent argues that the mark is descriptive rather than suggestive as it uses only generic words to describe a program where consumers earn pennies for their school each time they shop. This description, however, incompletely characterizes Complainant’s program, in which schools that accrue more total points than others receive higher tiers of prizes according to a schedule. Compl. Exhibit D. In at least one year, every school was guaranteed to receive at least $250 for participating in the program. See id. The mark as a whole is not a generic term, as the word “cents” in the mark SCHOOL CENTS does not directly describe Complainant’s rewards program. See Action Adventure Travel, Inc. v. Island Adventure Tours, WIPO Case No. D2004-0440 (Finding the mark ACTION ADVENTURE TOURS suggestive for kayaking services where “the terms ‘Adventure’ and ‘Tours’ arguably both describe the parties’ services, the word “Action” does not directly convey information regarding the nature, function, purpose or use of the services.”). The Panel therefore finds that Complainant has established rights in the mark SCHOOL CENTS in connection with its school fundraising program.
Even if the SCHOOL CENTS mark were descriptive rather than suggestive, Complainant has demonstrated that the mark has acquired secondary meaning. The secondary meaning of a descriptive mark is consumers’ association of the mark with a particular source of goods or services. Overview of WIPO Panel Views on Selected UDRP Questions, WIPO (2011), http://www.wipo.int/amc/en/domains/search/overview2.0/ (question 1.7). The mark was first used in commerce on February 24, 1999 and has been used continuously since then in connection with Complainant’s charitable fundraising services. Complainant has also proffered evidence of use, including advertising, sales reports through the program, and award events hosted using the mark. See Compl. Exhibit D. Complainant further states that it has raised over $5.75 million in funding to schools through this program. Compl. Exhibit B.
Respondent does not challenge the validity of Complainant’s evidence, instead asserting that the SCHOOL CENTS mark is made of generic words and that other programs using the mark exist in other stores and shopping centers. Under Paragraph 4(a)(i) of the Policy, “the fact that secondary meaning may only exist in a particular geographical area or market niche does not preclude the complainant from establishing trademark rights.” WIPO Jurisprudential Overview 3.0, paragraph 1.3. The Panel therefore finds that Complainant has established rights in the SCHOOL CENTS mark and that the <schoolcents.com> domain name is confusingly similar to this mark under Policy Paragraph 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy Paragraph 4(a)(ii). The burden then shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Respondent has successfully rebutted Complainant’s assertions that Respondent’s use of the <schoolcents.com> domain is not in connection with a bona fide offering of goods or services. Respondent’s use of the disputed domain name is for a service that publishes informational articles regarding funding and saving for a college education online. Respondent distinguishes the facts here from the case cited by Complainant, as well as disproves Complainant’s argument that Respondent is offering its own scholarships.
Complainant further argues in its reply that it has shown that there is virtually no content on Respondent’s website. Complainant properly states that legitimate interests under Paragraph 4(c) are determined at the time of filing the complaint. WIPO Jurisprudential Overview 3.0, paragraph 2.11. However, Complainant’s evidence of non-use only proves that, on a single date over three weeks prior to filing the complaint, Respondent’s home page was mostly blank. Compl. Exhibits E, F. Respondent’s response successfully rebuts Complainant’s argument, demonstrating numerous articles previously found on the website using <archive.org>, arguing that the home page was temporarily down for restructuring after a PHP upgrade on the server, and that all articles were still accessible during the upgrade. Complainant’s additional submission does not provide any evidence that Respondent’s website was still down at the time the Complaint was filed, that it was down for any significant length of time, or that any articles were unavailable. The Panel therefore finds that Complainant has not satisfied its burden of proving that Respondent has no rights or legitimate interests with respect to the domain name under Paragraph 4(a)(ii) of the Policy.
Complainant claims Respondent intentionally registered and intentionally uses the <schoolcents.com> domain name in bad faith. Complainant argues that Respondent is attempting to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain by creating a likelihood of confusion with Complainant’s SCHOOL CENTS mark. Specifically, Complainant argues that both its fundraising program and Respondent’s website are related to “school-related funding,” thus demonstrating an intent to confuse consumers. As Respondent points out, there is in the present context a material difference between a rewards program that raises funds for K-12 schools and a site that provides information regarding how to seek scholarships for college. The fact that both involve money and education alone does not show intent to register or use the name in bad faith under Paragraph 4(a)(iii) of the Policy.
Complainant’s Reply raises two additional arguments regarding Respondent’s bad faith. First, Complainant argues that Respondent was passively holding the website, as demonstrated by the screen capture of a nearly empty <schoolcents.com> home page. As described above, Respondent successfully rebutted these assertions, and Complainant fails to provide evidence beyond that the website was nearly blank at the filing of the Complaint. Second, Complainant points to correspondence where Respondent sought financial payment from Complainant for the <schoolcents.com> domain. Complainant claims Respondent responded to Complainant’s correspondence in the exact same manner as in Intesa Sanpaolo S.p.A. v. Domains Admin, New Media Nexus, WIPO Case No. D2015-1606 (finding bad faith where Respondent stated that no offers below $1,000 USD would be considered, in excess of its out-of-pocket expenses related to the disputed domain name). Here, Respondent did not make a demand for a specific amount, instead stating “[i]f you would like to make an offer to purchase the domain, please let me know.” This statement also does not rise to the level of bad faith contemplated by the Policy.
In light of the foregoing, the Panel concludes that Complainant has not satisfied its burden of proving Respondent registered and used the <schoolcents.com> domain name in bad faith under Paragraph 4(a)(iii) of the Policy.
Respondent requests that this Panel declare that Complainant filed the Complaint in bad faith in an attempt at Reverse Domain Name Hijacking. Paragraph 15(e) of the Rules provides the following:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Respondent argues that Complainant knew or should have known that the facts of this case render the Complaint obviously insufficient.
Respondent only seeks a finding of Reverse Domain Name Hijacking in Respondent’s Reply. Lack of success by Complainant is not enough to establish bad faith or Reverse Domain Name Hijacking. See WIPO Jurisprudential Overview 3.0, paragraph 4.16. Respondent’s arguments that the Complaint is abusive harassment and misrepresents information to an egregious and borderline libelous extent are unpersuasive. While Complainant has not satisfied its burden under Paragraphs 4(a)(ii) and (iii) of the Policy, Complainant has alleged and proven facts sufficient to prevent a finding of bad faith. Therefore, this Panel declines Respondent’s request to declare that Complainant filed the Complaint in bad faith in an attempt at Reverse Domain Name Hijacking.
Complainant not having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <schoolcents.com> domain name REMAIN WITH Respondent.
Michael A. Albert, Panelist
Dated: August 2, 2019
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