EBSCO Industries, Inc. v. WebMagic Staff / WebMagic Ventures, LLC
Claim Number: FA1703001722095
Complainant is EBSCO Industries, Inc. (“Complainant”), represented by Wanda Dimon, Alabama, United States of America. Respondent is WebMagic Staff / WebMagic Ventures, LLC (“Respondent”), represented by John Berryhill, Pennsylvania, United States of America.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <novelist.com> (the “Domain Name”), registered with TierraNet Inc. d/b/a DomainDiscover.
The undersigned certifies 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.
Clive L. Elliott QC, Honorable Daniel B. Banks Jr, (Ret.) and Sir Ian Barker as Panelists.
Complainant submitted a Complaint to the Forum electronically on March 16, 2017; the Forum received payment on March 16, 2017.
On March 20, 2017, TierraNet Inc. d/b/a DomainDiscover confirmed by e-mail to the Forum that the Domain Name is registered with TierraNet Inc. d/b/a DomainDiscover and that Respondent is the current registrant of the name. TierraNet Inc. d/b/a DomainDiscover has verified that Respondent is bound by the TierraNet Inc. d/b/a DomainDiscover 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 March 27, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 2017 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 March 27, 2017, 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 April 21, 2017.
On March 8, 2017, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Clive L Elliott QC as Chair and the Honorable Daniel B. Banks Jr., (Ret.) and Sir Ian Barker as Panelists.
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.
Complainant states that it is the registered owner of its trademark NOVELIST (“Complainant’s Mark”), which it alleges was first used in commerce in 2007. Complainant uses Complainant’s Mark to provide an online searchable database in the field of literature featuring abstracts, full text reviews from library periodicals and subject headings of the literary works of others accessible via the Internet.
Complainant asserts that the Domain Name is identical to its product NoveList which is provided on Complainant’s website at www.ebscohost.corn/novelist.
Complainant submits that Respondent has no rights or legitimate interests in the Domain Name and contends that Respondent has registered the Domain Name in bad faith.
Complainant states that Respondent is not a licensee of Complainant and contends that Respondent is not commonly known by the Domain Name, and that the Domain Name is not being used with any bona fide offering of goods or services. It notes that the Domain Name redirects to the website www.ace.com.
Complainant asserts that when Complainant contacted Respondent about selling the Domain Name, Respondent responded with a proposal to lease with annual auto-renewals, with a first-year payment of $40,000 and subsequent years at $25,000 plus 3% inflation.
In its Response, Respondent states it registered the Domain Name in 1997. It further states that the Domain Name consists of a common dictionary word and has been used by for nearly two decades, for lists of novelty auctions.
Respondent observes that Complainant has presented no evidence of trade or service mark rights, or evidence of what Complainant’s goods or services consist of and submits that its claim rests solely on its registration of Complainant’s Mark.
Respondent asserts that in 2009 it was contacted by Mr Roger Rohweder of Complainant; although at the time of contact Mr Rohweder did not identify himself as such. Respondent further asserts that Mr Rohweder contacted Respondent several times over a period of years from 2009, looking to purchase the Domain Name, but made no claim of trade or service mark rights at any stage. Respondent states he was again contacted by Mr Rohweder in 2016, who offered $25,000 or more for the Domain Name.
Respondent acknowledges that dictionary word domain names can command premium prices in the secondary market and points out that the Domain Name is only valuable because it is a common word relating to a cornerstone market - i.e. books. However, Respondent submits that Complainant does not have a monopoly in this common phrase, even with its registration of Complainant’s Mark.
Respondent acknowledges that it uses the Domain Name to provide affiliate links to continuously updated auction listings of novelty and collectible items (which are literally “novel” listings), and which are selected by the Respondent's proprietary algorithm, and consistent with Respondent's well-documented use of other dictionary word domain names.
Respondent contends that this is a situation of reverse high-jacking by Complainant.
For the reasons set out below the Panel finds that Complainant has failed to make out its complaint and that relief should be denied.
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’s Mark has been used to provide an online searchable database accessible via the internet. Complainant claims it registered the NOVELIST mark with the USPTO (e.g., Reg. No. 3,318,187, registered October 23, 2007). Registration of a mark with the USPTO sufficiently recognizes a registrant’s rights in a mark.
The Panel accepts that Complainant has established, for the relatively limited purposes of this element of the Policy, rights in the NOVELIST mark for the purposes of Policy ¶ 4(a)(i).
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, as Respondent is not commonly known by Complainant’s Mark and is not licensed by Complainant to use Complainant’s Mark.
Respondent in turn argues that the term “NOVELIST” in the Domain Name is common and generic, and therefore Complainant does not have an exclusive monopoly in the term on the Internet. The Panel accepts that Respondent can establish rights or legitimate interests in the Domain Name on the basis that a respondent may have a legitimate interest in a domain name. That is, if the domain name is used to profit from the generic value of the word, without intending to take advantage of complainant’s rights in that word. Respondent asserts that it uses the Domain Name with its online shopping by listing hyperlinks to constantly selected novel items, hence a play on the words “novel” and “list.” In the Panel’s view this argument is plausible and is sufficient to shift any burden of proof. Accordingly, the Panel concludes that Respondent has shown that, in the present circumstances, it has sufficient rights or legitimate interests in the Domain Name.
Respondent first argues that it could not have registered the Domain Name in bad faith because it registered the Domain Name ten years prior to the registration of Complainant’s Mark. It is well established that a domain name predating a complainant’s registration and first use of a trademark can be used to evince a good faith registration. See TB Proprietary Corp. v. Village at La Quinta Realtors, FA 416462 (Forum Mar. 28, 2005) (concluding that because the respondent’s domain name registration predated the complainant’s trademark filing date and alleged date of first use, the panel found that “there was no bad faith on the part of Respondent when registering the subject domain name”).
Respondent similarly contends that it could not have had any knowledge of Complainant’s Mark because it simply didn’t exist at the relevant time. In the Panel’s view the fact that the Domain Name is identical is irrelevant - the fact is that the Domain Name was registered 20 years ago and 10 years before Complainant’s Mark came into existence. That, in and of itself, is sufficient to deny any possible suggestion of bad faith on Respondent’s part.
Accordingly, the ground of bad faith is plainly not made out.
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the Domain Name, of its rights. Respondent cites Complainant’s multiple previous offers to purchase the Domain Name and argues that Complainant is using the proceeding as a “Plan B” to obtain the Domain Name.
The Panel infers that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and is using the Domain Name in bad faith. The Panel finds there is sufficient evidence to this effect, and therefore concludes that reverse domain name hijacking has occurred. See Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).
Having not established all three elements required under the ICANN Policy, the Panel concludes:
(1) That relief shall be DENIED; and
(2) That Complainant has engaged in reverse domain name hijacking.
Accordingly, it is Ordered that the <novelist.com> domain name REMAIN WITH Respondent.
Clive L. Elliott Q.C., Chairman
Hon. Daniel B.Banks Jr., (ret.), Panelist
Sir Ian Barker, Panelist
Dated: May 25, 2017
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