Central Florida Educational Foundation, Inc. v. Domain Administrator / NameFind LLC et al.
Claim Number: FA2003001887839
Complainant: Central Florida Educational Foundation, Inc. of Altamonte Springs, Florida, United States of America.
Respondent: Domain Administrator / NameFind LLC of Cambridge, Massachusetts, US.
Respondent’s Representative: Gerald M. Levine of New York, New York, United States of America.
Registries: Public Interest Registry
Registrars: GoDaddy.com, LLC
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
David J. Steele, as Examiner.
Complainant submitted: March 11, 2020
Commencement: March 13, 2020
Response Date: March 23, 2020
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4, and Rule 4 of the Rules for the Uniform Rapid Suspension System (the “Rules”).
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Complainant asserts that it owns two trademarks: First, Complainant lists United States trademark and service mark registration for the mark THE Z (U.S. Reg. No. 5,863,755). The registration for THE Z was filed on Feb. 6, 2018, and registered Sep. 17, 2019. The registration certificate lists a first use and first use in commerce of Aug. 6, 1993 for the services recited in class 038; and
Second, Complainant lists Florida state service mark registration for the mark LA ZETA (FL. Reg. No. T18000001026). The registration for LA ZETA was filed and registered on Oct. 1, 2018. The registration certificate lists a first use in Florida of Dec. 1, 1996.
Complainant asserts that Respondent registered the subject domain name, laz.org, in bad faith because it was Respondent’s “intention to transfer ownership to Complainant for an unreasonable price. The domain is currently listed on GoDaddy Auctions for $24,999 USD.” Complainant further states that, “the domain name was purchased by the Registrant in an anticipatory nature, with the understanding that the domain had a minimal present value at the time of purchase, but would have increased future value. This is demonstrated by the fact that a legitimate website is non-existent at the domain URI, but instead is showing an advertising website for purchasing the domain.”
Lastly, Complainant cites, in part, the Uniform Dispute Resolution Policy (“UDRP”) policy pertaining to the elements and proof of “bad faith.”
Respondent states that it is one of the premier resellers of domain names. Respondent notes that the URS is limited in scope to “the most clear-cut cases of infringement. … This is not such a case.”
Respondent also claims that, “[t]here is no assertion or evidence of common law rights.”
Respondent claims that Complainant offers no evidence whatsoever on the issue of bad faith registration.
Additionally, Respondent claims that it registered the subject domain name on Dec. 23, 2017, and further notes that it acquired the domain name before Complainant’s trademark registrations were filed or issued.
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
[URS 126.96.36.199] The registered domain name(s) is/are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
Complainant provided no argument supporting why the subject domain name is identical or confusingly similar under the Policy.
The subject domain name, laz.org, is not identical to any of Complainant’s marks.
The subject domain name, laz.org, is not confusingly similar to Complainant’s LA ZETA mark. The mark includes the dominant element ZETA, which differs sufficiently from the letter “z” in the domain name. This difference distinguishes the domain name from Complainant’s mark. The Examiner is aware that the word zeta is the Greek word for the letter “z,” however, this fact does not tip the scale enough towards finding that the domain name is confusingly similar to Complainant’s LA ZETA mark. Moreover, it would be disjointed to combine “la” (the Spanish word for “the”) with zeta (the Greek word for the letter “z”).
The subject domain name, laz.org, is not confusingly similar to Complainant’s THE Z mark. The mark includes the English word “the” combined with the letter “z.” While the domain name contains the letters “la” (the Spanish word for “the”) this similarity alone fails to clear the higher burden of proof the USR requires. Complainant has presented no evidence or argument why such a foreign language equivalency is appropriate in this context.
Determined: Finding for Respondent.
[URS 188.8.131.52] Registrant has no legitimate right or interest to the domain name.
Complainant provided no argument specifically supporting this element of the Policy. The Examiner infers that Complainant’s statement (below) is offered in support of this element of the Policy:
“It is the Complainant’s belief that the domain name was purchased by the Registrant in an anticipatory nature, with the understanding that the domain had a minimal present value at the time of purchase, but would have increased future value. This is demonstrated by the fact that a legitimate website is non-existent at the domain URI, but instead is showing an advertising website for purchasing the domain.”
Respondent has presented argument that it invests in domain names and is a reseller of domain names. Respondent further argues that, “[it]t acquired laz.org prior to Complainant’s trademark and service mark for the entirely plausible reason that it is both a common even generic word descriptive of the Laz people and their south Caucasic language; and at the same time a random 3 letter string. It acquired the domain name for its portfolio of domain names without knowledge of a company doing business in Florida.”
As Respondent further notes, “[d]omain names acquired for their semantic value and offered by resellers are not condemned in either URS or UDRP jurisprudence. … The URS does not condemn domain name reselling; it is a legitimate business model.”
Complainant has not met its burden to show, by clear and convincing evidence, that Respondent lacks legitimate right or interest to the domain name.
Determined: Finding for Respondent.
[URS 184.108.40.206] The domain name(s) was registered and is being used in bad faith.
a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
The language of the Policy requires that Complainant show, by clear and convincing evidence that the domain name was registered and is being used in bad faith. In many circumstances, a respondent’s non-use of a domain name would place the case outside the scope of the Policy. However, in other cases, the passive holding of a domain name can still constitute bad faith registration and use. Christian Dior Couture v. aris koulaidis, FA1546033 (Forum April 1, 2014) (passive holding adequate to establish bad faith under the URS “especially when combined with other factors such as the respondent preventing a trademark or service mark … [or] inconceivable good faith use, etc.”); The We Company v. Redacted for Privacy, FA882512 (Forum Mar. 13, 2020) (Respondent’s offer to sell the domain name to the trademark owner for “lower than the UDRP procedure cost” evidence of bad faith under the URS Policy).
Here, Complainant’s sole evidence of bad faith registration and use is the following statement:
It is the belief of the Complainant that the Registrant has registered the domain name, LAZ.ORG, in bad faith with the intention to transfer ownership to Complainant for an unreasonable price. The domain is currently listed on GoDaddy Auctions for $24,999 USD.
It is the Complainant’s belief that the domain name was purchased by the Registrant in an anticipatory nature, with the understanding that the domain had a minimal present value at the time of purchase, but would have increased future value. This is demonstrated by the fact that a legitimate website is non-existent at the domain URI, but instead is showing an advertising website for purchasing the domain.
This argument does not meet Complainant burden to show, by clear and convincing evidence, that the “Registrant has registered or acquired the domain name primarily for the purpose of selling … the domain name … to the complainant who is the owner of the trademark or service mark.” Policy, at 220.127.116.11(a) (emphasis added).
Even if the viewed in the light most favorable to Complainant—which is not the standard—the evidence and argument presented only supports that Respondent is willing to sell the domain name to anybody willing to pay $24,999 USD. There is nothing in the record that supports that Respondent registered the subject domain name primarily for the purpose of selling it to the complainant.
Determined: Finding for Respondent
After reviewing the parties’ submissions, the Examiner determines that the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be RETURNED to the control of Respondent.
FINDING OF ABUSE or MATERIAL FALSEHOOD
Respondent urges the Examiner to find that the Complaint was brought in an abuse of the URS process. Respondent specifically notes that “Complainant [has not made] any material falsehoods [in its Complaint].” However, Respondent asserts, generally, that by Complainant’s failing to understand the URS Policy (“[i]t is apparent that Complainant has no familiarity with URS standards, the fact that Complainant is appearing pro se is no excuse”) it has caused specific economic harm to Respondent by bringing a case that “should never have been launched.”
While the Examiner agrees that Complainant failed to introduce adequate evidence or convincingly advocate its positions in this case, the standard for finding a Complaint abusive requires more. Specifically, the policy states:
11.2 A Complaint may be deemed abusive if the Examiner determines:
11.2.1 it was presented solely for improper purpose such as to harass, cause unnecessary delay, or needlessly increase the cost of doing business; and
11.2.2 (i) the claims or other assertions were not warranted by any existing law or the URS standards; or (ii) the factual contentions lacked any evidentiary support.
The policy is clear that the Complaint must be presented solely for an improper purpose such as to needlessly increase the cost of doing business and that the factual contentions lacked any evidentiary support. See Policy 11.2 (emphasis added on the conjunctive between 11.2.1 and 11.2.2, requiring that both elements are established).
Respondent alludes to the first prong (11.2.1) of the test. Specifically, Respondent states, “[p]aragraph 11.2.1 addresses the specific economic harm to respondents and Paragraph 11.2.2 states that sanction is appropriate where “the claims or other assertions were not warranted by an existing law or URS standards.” This argument would read out of the Policy the required element of 11.2.1.
Respondent not introduced any evidence that Complainant actually presented the Complaint solely for the improper purpose of “causing economic harm to Respondent.”
This Examiner finds that the Complaint was NOT an abuse of the Policy or the URS process.
David J. Steele, Examiner
Dated: March 25, 2020
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