360training.com v. DNS ADMIN / BEST WEB LIMITED - www.Bestweb.com
Claim Number: FA2110001968877
Complainant is 360training.com (“Complainant”), represented by Dwayne K. Goetzel, Texas, USA. Respondent is DNS ADMIN / BEST WEB LIMITED - www.Bestweb.com (“Respondent”), represented by Zak Muscovitch of Muscovitch Law P.C., Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tips.com>, registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Complainant submitted a Complaint to the Forum electronically on October 13, 2021. The Forum received payment on October 13, 2021.
On October 14, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tips.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 October 18, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 2021 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 email@example.com. Also on October 18, 2021, 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 November 11, 2021.
On November 16, 2021, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Ms. Dawn Osborne, The Hon Neil Brown Q.C. and Alan L. Limbury as Panelists.
On November 16, 2021, Complainant submitted an unsolicited Additional Submission. Next day, Respondent submitted an unsolicited Additional Submission in reply.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant, 360training.com, has rights in the TIPS mark based on use since 1983 and registration in 1989 with the United States Patent and Trademark Office (“USPTO”). Respondent’s <tips.com> domain name is identical to Complainant’s TIPS mark.
Respondent lacks rights and legitimate interests in the <tips.com> domain name. Respondent is not commonly known by the domain name nor has Complainant authorized Respondent to use the TIPS mark. Respondent does not use the domain name for any bona fide offering of goods or services nor for any legitimate noncommercial or fair use because Respondent hosts a click-through site and obtains revenue by virtue of third parties clicking on links posted on the website. The first of Respondent’s five posted links pertains to “alcohol training”. Clicking on that link leads to other entities that provide alcohol service training and education in competition with Complainant.
Respondent registered and uses the <tips.com> domain name in bad faith because Respondent attracts Internet users for commercial gain by displaying third-party sponsored links to competing services. Respondent had constructive and/or actual knowledge of Complainant’s rights in the TIPS mark based on registration of the mark about two years prior to Respondent’s acquisition of the domain name and based on use of the mark by Complainant and its predecessor in interest for years prior to Respondent’s acquisition of the domain name. The TIPS mark has been used to train millions of users in the United States and over 50 countries worldwide.
Respondent therefore knew or should have known that it was not authorized to register or utilize the domain name.
The registrant of the TIPS trademark is shown in the certificate attached to the Complaint as “Health Education Foundation, Inc. Complainant may have inadvertently neglected to provide evidence of any assignment of this trademark to Complainant. Further, the Complaint specifies “360Training.com” as Complainant, however this is apparently not a legal entity.
The <tips.com> domain name was registered on September 25, 1991, according to WHOIS. Respondent became the owner of the domain name on March 2, 2006, having acquired it from a previous owner.
“Tips” is a commonly used English dictionary word. Respondent has rights and legitimate interests in the <tips.com> domain name since Respondent uses it in connection with its business of investing in generic domain names. The domain name is one of many such domain names acquired by Respondent around the same time and listed for sale on Respondent’s website “www.bestweb.com”, as Complainant well knew since it made an offer to buy the domain name through that website.
The presence on the website to which the domain name resolves of a hyperlink related to Complainant’s services does not eradicate Respondent’s legitimate interest in the domain name. The problematic link is only one of five links displayed on the website under <tips.com>.
The Policy requires Complainant to prove both bad faith use and bad faith registration. Complainant alleges only bad faith use and its evidence is insufficient to show that Respondent registered the domain name specifically to target Complainant’s TIPS mark, since Respondent was not aware nor ought to have been aware of Complainant at the time of registration. Complainant provides no evidence to demonstrate that the TIPS mark is well-known. Instead, Complainant relies on the concept of “constructive notice.” As a generic domain names seller Respondent has no bad faith intent to sell under Policy ¶ 4(b)(i).
C. Additional Submissions
The Forum’s Supplemental Rule 7 provides that it is within the discretion of the Panel to accept or consider additional unsolicited submissions. The Panel will consider the parties’ additional unsolicited submissions, which are summarized below.
Complainant has shown that it is a corporate entity named 360training.com, Inc. and that the TIPS mark was assigned to Complainant by its initial registrant on September 28, 2021.
Respondent’s claim that its business is purchasing “generic” terms does not alter the fact that TIPS is a registered trademark that predates by two years the creation date of the <tips.com> domain name.
Because Complainant has a prior trademark registration, Respondent’s allegations do not alter the fact that Respondent had actual or constructive knowledge of such trademark rights prior to acquisition of the domain name (see Orange Glo Int’l v. Blume, FA 118313 (Forum Oct. 4, 2002).
Respondent claims that its domain name investment business is legitimate, but there is no question that the domain name itself is not used in association with a bona fide offering of goods or services. Even if domain investment is a legitimate form of business (which Complainant does not admit), the specific use of the domain must still be a bona fide use, and here it is not.
In sum, the domain name <tips.com> is identical to the trademark in which Complainant has prior rights; the domain name itself is not used in connection with any bona fide offering of goods or services; the Respondent is not known by the domain name; the click-through revenue page that featured links to alcohol education and training services competitive with those offered by Complainant is not a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers of the mark at issue; and using the domain name to display links to competing third party services demonstrates bad faith registration and use under Policy ¶ 4(b)(iv).
Merely having a trademark which predates the domain name registration and which corresponds to a very common descriptive word is clearly insufficient under the Policy.
Constructive notice has been generally rejected by Panels. The case for constructive notice on which Complainant relies, Orange Glo International, Inc. v. Jeff Blume, Forum Claim Number: FA0208000118313, was a default case from 20 years ago, in which the Panel did not rely exclusively on constructive notice, finding that the “circumstances indicate that the Respondent was aware of the Complainant’s rights in the OXICLEAN mark prior to seeking registration of that mark in a domain name”, specifically because the respondent in that case employed the complainant’s highly distinctive mark within “hidden text” in the associated website and used the disputed domain name to promote the respondent’s competing cleaning product. This is a far cry from the circumstances of the present case.
Panels have routinely found that trading in domain names can constitute use of the domain name in connection with a bona fide offering of goods and or services, i.e. the sale of the domain name itself.
Complainant relies upon the single, recent, inadvertent and un-obvious link that turns out to be related to Complainant’s services and claims that it “completely undercuts Respondent’s argument that it purchased a generic domain name without any knowledge of Complainant”. Far from it. This is not probative of Respondent’s intentions at the time of registration 16 years prior, particularly in light of the ample exculpatory evidence, including the contemporaneous comparable generic domain name registrations; the contemporaneous negotiations for <recipe.com>; the fact that only a single link out of five related to Complainant’s services; the fact that one of the links expressly related to “online marketing tips” (thereby demonstrating the algorithm’s selection of this link as contextually related to the subject matter of the domain name); the fact that the single link did not even reference Complainant’s trademark; and ultimately, the total absence of any evidence demonstrating that Respondent had any reason to have been aware of Complainant’s brand or that it was the (unlikely) target of the registration out of all the thousands of other users of the term.
In similar circumstances where a single, recent, and inadvertent link was presented by a Complainant, Panels have found that it was “di minimus”. For example, in Aqua Engineering & Equipment, Inc. v. DOMAIN ADMINISTRATOR / PORTMEDIA HOLDINGS LTD, Forum Claim Number: FA1805001785667 (June 25, 2018), the Panel unanimously stated:
“The Panel accepts Respondent’s evidence that there was no targeting of Complainant’s mark. Moreover, it appears to this Panel that any links to Complainant’s competitors on Respondent’s website were de minimus and that the content posted on Respondent’s website was overwhelmingly generic in nature.”
Also, as per The Eye Academy of America Ltd. and Total Vision Eye Care Group, P.C. v. Ashantiplc Limited, Forum Claim Number: FA0602000644205, the unanimous Panel held that despite very recent, inadvertent, and limited instances of use of a dictionary term for PPC advertising which related to the complainant’s trademark while the bulk of same was non-related, it could not be denied that common words and phrases are open for registration and thus, Respondent had rights and legitimate interests.
Complainant had a second opportunity, with its additional submission, to provide actual evidence corroborating its claim of ‘training millions of users in 50 countries worldwide’ and to provide the material facts regarding this claim, e.g. when, in which countries, etc., and yet again failed to do so.
Complainant relies solely on a single errant link 16 years after registration as a purported means of forcing the transfer of the valuable dictionary-word domain name - immediately after it tried to purchase it. Complainant has again failed to address its ‘30 year’ delay; its previous attempt to purchase the domain name; the ubiquity of the dictionary term; the absence of any evidence of notoriety or reputation; and the absence of any evidence of targeting Complainant at the time of registration.
Complainant has failed to establish all the elements entitling it to relief.
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.
Complainant has shown that it has rights in the TIPS mark based on registration of the mark with the USPTO, Reg. No. 1,551,735, registered on August 15, 1989 in the name of Health Education Foundation, Inc. for inter alia “health education training of servers of alcohol for prevention of alcohol abuse”. On September 28, 2021, the TIPS mark was assigned to Complainant under its corporate name, 360training.com, Inc.
The Panel finds Respondent’s <tips.com> domain name to be identical to Complainant’s TIPS mark, since the inconsequential “.com” gTLD may be ignored.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <tips.com> domain name was initially registered by a third party on September 25, 1991 and was acquired by Respondent on March 2, 2006. At the time of the filing of the Complaint, the domain name resolved to a website displaying pay-per-click links to third party websites, the first of which, entitled “Alcohol Training” led to competitors of Complainant.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <tips.com> domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014).[i]
Respondent has provided a declaration by its sole shareholder and director, Murat Yikilmaz, based in Turkey, that he acquired the <tips.com> domain name on or about March 2, 2006 for $100,000 for the sole reason that he is in the business of investing in generic dictionary-word and acronym domain names. He lists many such domain names bought around the same time. He says he first became aware of Complainant, its TIPS mark and the advertising link of which Complainant complains, upon receipt of the present Complaint, whereupon he immediately took steps to have the link removed.
Respondent’s website at “www.bestweb.com” displays a large number of “Premium Domain Names For Sale”, including <tips.com>. The Panel accepts that investment in generic dictionary-word and acronym domain names for sale to the highest bidder, without intent to trade off the reputation of the owner of a corresponding trademark, may constitute use of the domain names in connection with a bona fide offering of goods or services (i.e. the sale of the domain names themselves). See Audiopoint, Inc. v. eCorp a/k/a Chad Folkening, WIPO Case No. D2001-0509.
However, the Policy requires rights to or legitimate interests in a disputed domain name to be demonstrated at the time when the Complaint was filed. In the present case, at the time when the Complaint was filed, the domain name resolved to a website displaying a pay-per-click link entitled “Alcohol Training” which led to competitors of Complainant. Respondent says this was inadvertent and was immediately removed once Respondent became aware of it.
In light of the Panel’s conclusion in relation to the next element, it is unnecessary to determine whether Respondent has shown that it has rights to or legitimate interests in the <tips.com> domain name.
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
Constructive notice has been generally rejected by Panels. As stated in Beautiful People Magazine, Inc. v. Domain Manager / PeopleNetwork ApS / Kofod Nicolai / People Network Aps / Nicolai Kofod / People Network, Forum Claim Number: FA1502001606976:
“There is no place under the Policy for the concept of constructive knowledge because the essence of the Complaint is an allegation of bad faith targeted at the Complainant. This requires the cybersquatter to have actual knowledge of the trade mark owner or of the trademark.”
The Complaint annexes a screenshot of the website to which the <tips.com> domain name resolved on October 12, 2021, which displayed five pay-per-click links, the first of which was “Alcohol Training”, contending that such use demonstrates bad faith registration and use under Policy ¶ 4(b)(iv).
Bad faith use of the kind identified in Policy ¶ 4(b)(iv) is evidence of both bad faith registration and bad faith use but such evidence is not necessarily conclusive, since it may be weighed against any evidence of good faith registration. See Passion Group Inc. v. Usearch, Inc. (eResolution case AF-0250) [jobpostings.com], followed in Viz Communications, Inc., v. Redsun dba www.animerica.com and David Penava (WIPO case D2000-0905) [animerica.com]:
“The panel is assisted in forming a view as to how to interpret paragraphs 4(a)(iii) and 4(b)(iv) by the contrast between the introductory words of paragraph 4(c): “any of the following circumstances …shall demonstrate your rights or legitimate interests” and the introductory words of paragraph 4(b): “the following circumstances…shall be evidence of the registration and use of a domain name in bad faith”.
This contrasting language indicates that use of the kind described in 4(b)(iv) is to be taken as evidence of bad faith registration as well as evidence of bad faith use. But this evidence is not necessarily conclusive. Furthermore, the panel is not required to assign substantial weight to evidence of constructive bad faith registration furnished by paragraph 4(b)(iv), and the panel may have regard to other evidence in determining whether the requirements of 4(a)(iii) have been proved.
This approach accords with the Policy by enabling a finding of bad faith registration to be made where bad faith use within 4(b)(iv) is the only evidence tending to show the purpose for which the domain name was registered. Where, however, there is other relevant evidence, such as evidence that the domain name was registered for a permissible purpose, it must be weighed against any evidence of bad faith registration constituted by evidence of bad faith use within 4(b)(iv). It is difficult to imagine circumstances in which, under this approach, subsequent bad faith use within 4(b)(iv) would suffice to prove that a domain name was originally registered in bad faith”.
See also Yoomedia Dating Limited v. Cynthia Newcomer / Dateline BBS, WIPO Case No. D2004-1085.
The Panel accepts Respondent’s evidence that it registered the <tips.com> domain name in 2006, together with many other dictionary-words, as part of its legitimate business of investing in generic dictionary-word and acronym domain names and that, at the time of registration and prior to the filing of the Complaint, Respondent was unaware of Complainant and its TIPS mark. Even assuming that Respondent’s use of the domain name in 2021 is bad faith use and constitutes some evidence of bad faith registration in 2006, the Panel finds that evidence outweighed by Respondent’s evidence constituted by the declaration of Mr. Yikilmaz. Accordingly, the Panel finds that Complainant has failed to establish that the domain name was registered in bad faith.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <tips.com> domain name REMAIN WITH Respondent.
Ms. Dawn Osborne, The Hon Neil Brown Q.C. and Alan L. Limbury, Panelists.
Dated: November 24, 2021
[i] Panelist Brown doubts that a prima facie case has really been made out. It is true that one -but only one- of the links on Respondent’s website is to services that might be seen to be in competition with Complainant. But that is essentially de minimis and of little significance when all of the other links on the site are to services that are not in the Complainant’s field of interest at all. If the Respondent’s intention had been to undermine the Complainant, one might ask why it did not do so unequivocally and with some enthusiasm by putting a range of links on its site that left no doubt but that it was seriously trying to direct Internet traffic to the Complainant’s rivals, which it plainly did not do. In any event, the basic reason why there is a link to alleged competitors is not because the Respondent intended it, but because it has been picked up by the mysteries of a Google algorithm that was searching for material related to any one of the several meanings of the word “tips”. This in turn came from the fact that the Complainant chose as its trademark a common dictionary word which is capable of so many different meanings. The problem which has thus emerged is therefore not due to a deliberate act of the Respondent but is the consequence, as Mr Justice Stephen pointed out in an analogous case, Hornsby Building Information Centre Limited v. Sydney Building Information Centre Limited (1978)140 C LR 216, that where a trademark owner itself chooses a word for its trademark that is in common use and open to wide meaning and use, it must accept that there will be some overlap between the various uses that can be made of the word. It would therefore be wrong to attribute any blame to the Respondent for the overlap in the present case. It follows, in Panelist Brown’s opinion, that the Respondent has a right or legitimate interest in the domain name and that there has been no bad faith shown in the registration or use of the domain name.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page