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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Joan Perry v. Howard Ely
Claim Number: FA0005000094863
PARTIES
The Complainant is Joan Perry, Los Gatos, CA, USA ("Complainant"). The Respondent is Howard Eley, Los Angles, CA, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is "AGIRLNEEDSCASH.COM", registered with Network Solutions Inc. ("NSI").
PANELIST(s)
The Arbitrator, Daniel B. Banks, Jr., certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 05/19/2000; The Forum received a hard copy of the Complaint on 05/19/2000.
On 05/26/2000, NSI confirmed by e-mail to The Forum that the domain name "AGIRLNEEDSCASH.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.
On 08/17/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 09/06/2000 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 postmaster@agirlneedscash.com by e-mail.
On September 6, 2000, The Forum received Respondent's response to the Complaint. Also, both Complainant and Respondent filed additional submissions, which were received without payment and no documentation. The undersigned Arbitrator has reviewed and considered these late submissions
On September 12, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Daniel B. Banks, Jr. as Arbitrator.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
1 - That she has a nationally registered trademark for "A Girl Needs Cash" for promotion, advertising, and educational materials.
2 - That she established a copyright for her book entitled "A Girl Needs Cash" which was published by Random House on February 1, 1999.
3 - That in February 2000, the Respondent registered and is using the domain name "agirlneedscash.com" and an e-mail address agirlneedscash@aol.com.
4 - That the domain name is identical to Complainant's trademark and copyright.
5 - That Respondent is purposely confusing, misleading and misrepresenting the mark that Complainant established by intervening in the public eye with identically the same name but substantially different content and public image.
6 - That Respondent has no legitimate interest in the domain name.
7 - That Respondent is attempting to personally benefit from national marketing that Complainant is doing under her trademark and copyright designation.
8 - That Complainant is to be the Keynote speaker at a national convention in Boston
September before an audience of 5000 women and she will feature her book
"A Girl Needs Cash".
9 - Complainant also plans to develop a television series called "A Girl Needs Cash" which will be a program about women and money.
10 - That Complainant plans to act maliciously in positioning himself in the middle for his own personal gain and economic benefit from Complainant's work and exposure.
11 - That Respondent is giving out misleading, confusing and deliberately wrong information about the nature and content of Complainant's presentation under the name "A Girl Needs Cash".
12 - That Respondent is devious about diverting national marketing under Complainant's trademark to drive "eyeballs" to his site and misinform and mislead the consumer that reaches him without intending to do so on the web.
13 - That Respondent registered the domain name in question in bad faith to drive "eyeballs" to his site and maliciously intervene with the consumer for his own economic benefit.
1 - That the phrase "a girl needs cash" is in the public domain and not the exclusive right of the Complainant.
2 - That Complainant attributes the phrase "…a girl needs cash" to Sophie Tucker in her published work "A Girl Needs Cash".
3 - That the complainant has a web site at www.TAKECHRGEFIN.com, which is
advertised in her book under "How to contact the Author".
4 - That Complainant's claim that Respondent seeks to capitalize on her marketing as the result of her speaking engagement in Boston uses some unfamiliar logic since he has no knowledge of her engagements.
5 - That other web sites using the phrase "a girl needs cash" are available to Complainant yet she has not availed herself of those options.
6 - That Respondent's registration of the domain name in question was February 4, 2000 and that Complainant's trademark notice of publication is dated May 30, 2000.
FINDINGS
After consideration of the foregoing, the Arbitrator finds as follows:
1 - That the domain name in question is identical to Complainant's copyright and pending trademark application.
2 - That the evidence does not support a finding that Respondent has no rights or legitimate interest in respect of the domain name.
3 - That the evidence does not support a finding that the Respondent has registered and is using the domain name in bad faith.
DISCUSSION
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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.
Identical and/or Confusingly Similar
The domain name is identical to Complainant's copyright and pending trademark application. See Microsoft Corp. v. Amit Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the Complainant’s mark).
Rights or Legitimate Interests
The evidence does not support a finding that the Respondent has no right or legitimate interest in the domain name for the following reasons:
1 - The phrase "…a girl needs cash" was used by Sophie Tucker long before this dispute arose.
2 - The contention of the Complainant that Respondent has no right or legitimate interest is a conclusion and not supported by any evidence.
3 - Respondent asserts that he has a legitimate interest in the use of the domain name in connection with his ministry, which is chartered for the express purpose of teaching spiritual growth and financial abundance in a secular world. (Emphasis supplied)
The UDRP is of limited application and Complainant may be entitled to relief in various trademark actions. See Commercial Publishing Co. v. EarthComm, Inc., FA 95013 (Nat. Arb. Forum July 20, 2000) (stating that the Policy is intended to resolve only a narrow class of cases).
Registration and Use in Bad Faith
Section 4(b) of the ICANN Uniform Domain Name Dispute Policy provides that evidence of bad faith registration and use can consist of the following circumstances:
The evidence does not support a finding that the Respondent registered and is using the domain name in bad faith for the following reasons:
1 - The registration of a domain name replicating an existing copyright or trademark, standing alone, is not conclusive evidence of bad faith.
2 - There is no evidence that Respondent registered the name for the purpose of selling it to Complainant or a competitor.
3 - There is no evidence that respondent registered the domain name in order to prevent complainant from using the trademark or copyright in a corresponding domain name and engaged in a pattern of such conduct. See Policy ¶ 4(b)(ii).
4 - There is no evidence that the Respondent is attempting to attract for commercial gain, Internet users to respondent's web site by creating confusion with Complainant's mark.
5 - There is no evidence that Complainant and Respondent are competitors; there is no evidence of any attempt by Respondent to attract Internet users to a web site through confusion with the Complainant's Marks; and, there is no evidence of a pattern of registering domain names in order to prevent an owner of mark from reflecting the mark in a domain name.
6 - The only matter supporting the allegations regarding bad faith registration and use are Complainant's bare contentions, which if proved, may set forth grounds for legal relief but do not meet the standards of the UDRP. See Commercial Publishing Co. v. EarthComm, Inc., FA 95013 (Nat. Arb. Forum July 20, 2000).
DECISION
Based upon the above findings and conclusions, and pursuant to Rule 4(I), it is decided as follows:
The undersigned finds the issues in favor of the Respondent and denies Complainant's request that the domain name "agirlneedscash.com" be transferred to Complainant.
Honorable Daniel Banks
Dated: September 19, 2000
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URL: http://www.worldlii.org/int/other/GENDND/2000/1109.html