Edward Jamison v. Hugh Hedley and Cyber Holdings, Inc.
Claim Number: FA0508000540031
Complainant 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
The domain name at issue is <creditsavvy.com>, registered with Dotster.
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.
Jeffrey N. Mausner as Panelist and Chairman.
Anne M. Wallace, Q.C. as Panelist.
Judge Ralph Yachnin (Ret.) as Panelist.
Complainant 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.
On 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 “Policy”).
On 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.
A 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 Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant Edward Jamison makes the following claims:
He 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.
Respondent Cyber Holdings, Inc. responds as follows:
Respondent 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.
Complainant 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.”
Respondent 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.
Respondent 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 confusion.
Complainant 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.
Respondent requests that the Panel find that Complainant is guilty of Reverse Domain Hijacking.
C. Additional Submissions
Complainant submitted an Additional Submission on September 16, 2005. Respondent submitted an Additional Submission on September 20, 2005.
Complainant 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 is frivolous.
Correct Party in Interest
Although Complainant 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 Resolution Policy
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 applicable.”
Paragraph 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).
However, 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.
Judge 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.
Mr. 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. 14, 2000).
It 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
Because all three elements required under the ICANN Policy have not been established, the Panel concludes that relief shall be DENIED.
Panelists 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.
Panelist 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:
Dismissal 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.
The 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.
Relief 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 public.
Jeffrey N. Mausner, Chairman.
Anne M. Wallace, Q.C., Panelist.
Judge Ralph Yachnin (Ret.), Panelist.
Dated: October 25, 2005
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