Edward Jamison v. Hugh Hedley and Cyber
Claim Number: FA0508000540031
is Edward Jamison (“Complainant”),
11310 W. Olympic Blvd., Ste. 540., Los Angeles, CA 90065. Respondent is Hugh Hedley and Cyber Holdings, Inc. (“Respondent”),
represented by Howard M. Neu of Law Office of Howard M. Neu, P.A., 1152 North University
Drive, Pembroke Pines, FL, 33024.
REGISTRAR AND DISPUTED DOMAIN NAME
domain name at issue is <creditsavvy.com>,
registered with Dotster.
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
N. Mausner as Panelist and Chairman.
M. Wallace, Q.C. as Panelist.
Ralph Yachnin (Ret.) as Panelist.
submitted a Complaint to the National Arbitration Forum electronically on August
12, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 15, 2005.
August 12, 2005, Dotster confirmed by e-mail to the National Arbitration Forum
that the <creditsavvy.com>
domain name is registered with Dotster and that the Respondent is the current
registrant of the name. Dotster has
verified that Respondent is bound by the Dotster registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
August 22, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
12, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to email@example.com by e-mail.
Response was received and determined to be complete on September 10, 2005.
On September 27, 2005, pursuant to Respondent’s request
to have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Jeffrey N. Mausner, Anne M. Wallace, and Judge Ralph Yachnin (Ret.) as
requests that the domain name be transferred from Respondent to Complainant.
Edward Jamison makes the following claims:
is the president and 100% owner of Jamison Law Group, PC., which is the corporation
that holds the trademark for CREDIT SAVVY.
He is also the president and 100% owner of Credit Savvy Inc. Complainant has an infomercial product
called “Credit Savvy” that he recently brought to the market. He just purchased $30,000 in commercial
airtime and spent over $100,000 bringing the product to market. Complainant owns all of the domain names
ending in .biz, .info, .net, and .org for Credit Savvy, but does not have the
most important one, <creditsavvy.com>. Complainant originally tried to get this domain name with a
domain monitoring service, but Respondent Cyber Holdings had a better service
than Complainant, because Respondent was successful in capturing the
domain. Respondent is using <creditsavvy.com>
as a lead generator only and has no claims to the domain name. Complainant’s inability to use this domain
name is costing him thousands of dollars and raises the risk that consumers are
being misled due to confusion.
Cyber Holdings, Inc. responds as follows:
registered the <creditsavvy.com> domain name on May 13, 2005 and
has been using it as a web site containing only links to United States
Government web sites, in the belief that it is for the public welfare to
provide a portal for those seeking reliable government information on improving
their credit score ratings and reducing their debt. The site links to <mymoney.gov>, <consumer.gov>, and
<firstgov.gov>, the nation’s official portal. There is no advertising on
the web site.
fails to allege that Respondent registered the domain name in bad faith or is
using it in bad faith. There is no allegation that at the time the domain was
registered by Respondent, Complainant was the holder of a trademark on the
words “Credit Savvy,” that Respondent knew that Complainant held a trademark on
those words, or that Respondent has used the web site to compete with
Complainant. As of the date of the
Response, there is no registered trademark for the words “Credit Savvy.” Jamison Law Group applied for a trademark
with the U.S. Patent and Trademark Office in December 2004 and that trademark
application was amended on August 11, 2005 to disclaim the word “credit.”
denies that it is using the domain as a lead generator only. Respondent denies that it has no claims to
the domain name. There are no leads
being generated and the website is being used strictly as a public
service. Furthermore, Complainant has
not demonstrated that he has any rights in the mark.
did not register the domain name in question for the purpose of selling,
renting or otherwise transferring the domain name to Complainant or a
competitor of Complainant. Respondent
did not register the domain name in order to prevent the owner of the subject
trademark from reflecting the mark in a corresponding domain name. Respondent did not register the domain name
for the purpose of disrupting the business of a competitor, nor is it a
competitor of Complainant. Respondent
does not use the domain name to intentionally attempt to attract, for
commercial gain, Internet users to Respondent’s web site, by creating
is unable to exhibit evidence of “bad faith” registration and use of the
domain. There is no evidence in the
Complaint or in the attachments thereto that Respondent engages in a pattern of
registering the trademarks of others as domain names.
requests that the Panel find that Complainant is guilty of Reverse Domain
submitted an Additional Submission on September 16, 2005. Respondent submitted an Additional
Submission on September 20, 2005.
has not established that Respondent registered the domain name in bad
faith. Respondent has not established that
Complainant is guilty of Reverse Domain Hijacking, and that claim by Respondent
Party in Interest
Edward Jamison is not the owner of the trademark application and use of the
mark, if it has been used, is by a corporation, Mr. Jamison may bring this
action. He is the sole owner of both
the law firm which owns the trademark application and the corporation which
uses the mark.
Domain Name Dispute
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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
4(a) of the Policy requires that the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights;
(2) the 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.
The domain name registered by the
Respondent is identical or confusingly similar to the mark in which Complainant
claims rights. Respondent’s <creditsavvy.com> domain name is identical to Complainant’s CREDIT
SAVVY mark because neither the deletion of a space nor the addition of the
generic top-level domain “.com” are sufficient to distinguish the disputed
domain name from Complainant’s claimed mark.
See Hannover Ruckversicherungs-AG v. Ryu, FA 102724
(Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical
to HANNOVER RE, “as spaces are impermissible in domain names and a generic
top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see
also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to the complainant’s mark because the generic
top-level domain “.com” after the name POMELLATO is not relevant).
there is an issue as to whether Complainant has established either common law
or registered rights in the mark. The
mark has not yet been registered by the U.S. Patent and Trademark Office. A notice of publication was issued for the
mark on October 19, 2005. There are
decisions going both ways on the question of whether an applied-for mark is
sufficient under Policy ¶ 4(a)(i). Compare
Wave Indus., Inc. v. Angler Supply, FA 304784 (Nat. Arb. Forum Sept. 20,
2004) (the complainant’s pending trademark applications did not establish
rights because “an application for [a] mark is not per se sufficient to
establish rights [in] a trademark for the purposes of the [Policy]”); 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.”); Computer Nerds Int’l, Inc.
v. Ultimate Search, FA 155179 (Nat. Arb. Forum June 23, 2003)
(“Complainant's pending trademark applications do not establish its rights in
the mark pursuant to Policy 4(a)(i).”); with SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (the Rules do not require that the complainant's trademark or service
mark be registered by a government authority or agency for such rights to exist); Great
Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001)
(“The Policy does not require that a trademark be registered by a governmental
authority for such rights to exist.”).
The application is an intent-to-use application. It was not clear from Complainant’s
submissions whether, and when, he established common law rights in the
mark. However, in light of the other
factors discussed below, it is not necessary to determine this issue.
Yachnin and Ms. Wallace are of the view that Complainant has not even alleged
in his Complaint that Respondent has no rights or legitimate interest in the
domain name. They therefore have
determined that Complainant has not met his burden on this element.
Mausner is of the view that while Complainant did not specifically make this
allegation in his Complaint, the pleadings and supporting exhibits filed by the
parties sufficiently raised the allegation that Respondent has no rights or
legitimate interests in the domain name.
It appears from the pleadings that Respondent is in the business of
obtaining and holding domain names, most likely for sale. Once
there is a prima facie case in support of a showing of lack of
legitimate interests, the burden shifts to Respondent to show that it does have
rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See
Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has
asserted that the respondent has no rights or legitimate interests with respect
to the domain name, it is incumbent on the respondent to come forward with
concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(“Because Complainant’s Submission constitutes a prima facie case under
the Policy, the burden effectively shifts to Respondent.”). Mr. Mausner is not convinced that the
website that Respondent has set up, with links to government websites and no
advertising, is the ultimate purpose that Respondent has for the domain
name. It is Mr. Mausner’s view that
Complainant has therefore met his burden of establishing a prima facie
showing on this element, and Respondent has not met its burden of showing that
it does have rights or legitimate interests in the domain. See Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (the respondent does not have rights in a
domain name when the respondent is not known by the mark); Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
is here that all three panelists agree.
Complainant has not proven that Respondent registered the domain name in
bad faith. Complainant has the burden
of proof on this element. There is no
proof that at the time the domain name was registered by Respondent, Respondent
knew that Complainant had rights in the mark.
There is no proof that Respondent is using the mark in a manner that is
competitive with Complainant’s use, or in a manner that will be confusing to
the general public. See Starwood
Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat.
Arb. Forum Mar. 9, 2005) (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 Policy
¶ 4(a)(iii)); Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676
(Nat. Arb. Forum Jan. 16, 2003) (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).
BASIS FOR DECISION
all three elements required under the ICANN Policy have not been established,
the Panel concludes that relief shall be DENIED.
Mausner and Wallace are of the view that this denial shall be without prejudice
to Complainant bringing a new action if Complainant obtains a registered
trademark for CREDIT SAVVY and if Respondent or a transferee of
Respondent ever uses the domain name for a commercial website which competes
with Complainant’s products or services, as set forth in the trademark
registration, or causes confusion to the general public. Fairness, and the prevention of confusion to
the public, dictates this result.
Judge Yachnin is of the view that the denial should be with prejudice, and
dissents to the majority’s determination that the dismissal shall be without
prejudice. Judge Yachnin states the
following in dissent:
without prejudice sets a bad precedent, and there is no showing that
Complainant deserves such an outcome in this case. When a denial is made it must be final. To grant Complainant the right to bring on the same case
dependant on Respondent's action after the case is determined is not according
finality to the issue, which both parties are entitled to.
rules require certain allegations and proof.
The neglect of Complainant to allege these and then allow him to get
away with it makes the rules into a mockery.
To be sure, Complainant is entitled to his day in court, which he has
certainly obtained. However, he is
entitled to only one crack at the bat, not more, and that is exactly what he is
being allowed. If Complainant was a
layperson, and did not have counsel, then perhaps some leniency could be
extended. But even then, when the nonadherence to certain rules can be
ameliorated, certainly this is never permitted for the basic rules, the ones
that go to the very heart of the proceedings, and the violation in the Claim
before us is so basic that this Panel really has no jurisdiction to issue any
order alleviating Complainant of the consequences of his act. Complainant is not a layperson but a member
of the bar, and it is his responsibility to comply with rules. He is a licensed member of the bar, a person
trained in the law and how to comply with it, and must be subjected to a far
higher degree of compliance than the average man on the street.
is DENIED, without prejudice to Complainant bringing a new proceeding
but only if Complainant obtains a registered trademark for CREDIT SAVVY and
if Respondent or a transferee of Respondent ever uses the domain name for a
commercial website which competes with Complainant’s products or services, as
set forth in the trademark registration, or causes confusion to the general
Jeffrey N. Mausner, Chairman.
Anne M. Wallace, Q.C., Panelist.
Judge Ralph Yachnin (Ret.), Panelist.
Dated: October 25, 2005
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