Generic Top Level Domain Name (gTLD) Decisions

3Z PRODUCTIONS, LLC
COMPLAINANT,

vs.

GLOBALDOMAIN
RESPONDENT.

DECISION
Forum File No.: FA94659

BEFORE:       Howard C. Buschman III, Arbitrator

            Complainant seeks transfer of the domain name “eshow.com” pursuant to the Rules for Uniform Domain Name Dispute Resolution Policy and Uniform Domain Name Dispute Resolution Policy as adopted and approved by the Internet Corporation for Assigned Names and Numbers (“ICANN”) as supplemented by the National Arbitration Forum’s Supplemental Rules to ICANN’s Uniform Domain Resolution Policy. “eshow.com” is registered with Bay Area Internet Solutions.  Respondent agreed to resolve any dispute regarding its domain name through ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy.

            Before the panel are the Complaint and Complainant’s Supplemental Response filed by Complainant and a Response to Domain Complaint filed by Respondent. Neither party requested an oral hearing.

FACTS

            The generic domain name “eshow.com” was registered by Respondent GlobalDomain on April 16, 1996. Although GlobalDomain has registered many service domain names, it has promoted the domain name “eshow” using it to demark a website through which websites designed by GlobalDomain for customers can be accessed. Customers have used that service. Currently, the website is under construction or reconstruction.

            Complainant filed an application for registration of the mark “eshow” in August 1999. There, it stated that the mark was first commercially used August 1, 1999. It sought to register the mark for use in expositions. Respondent alleges that Complainant was not in existence prior to 1999, which Complainant does not dispute. In January 2000, an examining attorney at the Patent and Trademark Office entered a determination refusing registration of the mark on the ground that the mark is merely descriptive. Complainant has filed a response to that determination.

            Eshow is a generic term combining the prefix “e” to denote an electronic medium with “show” which is either a verb or a noun. GlobalDomain uses the word as a verb such as to display its customers’ web pages, whereas Complainant uses the term as a noun to refer to expositions.

            In January 2000, Complainant inquired of GlobalDomain whether it would sell the domain name. GlobalDomain replied that the last bid it had received was in excess of $1 million. Complainant attaches a printout from E-bay, stating that Global has sought to sell the name for $3 million. But the E-bay printout reports prior completed sales and states that a $3 million sale price in May 1999 is unverified.

DISCUSSION

            Section 4(a) of the ICANN Uniform Domain Name Dispute Policy (the “Rules”) requires the Complainant to prove each of the following three elements in order to sustain a claim that a domain name should be cancelled or transferred:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the registrant has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Section 4(b) provides:

            Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [the Respondent has] registered or [the Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the Respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or

(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.

The Complainant bears the burden of proof on these issues.

Similarity Of Domain Name With Marks In Which Complainant Has Rights

            Although a mark need not be registered to be valid at common law, an alleged mark that is merely descriptive or generic is not protected at common law. It thus appears that the domain name is not similar to a mark in which Complainant has rights.

            Accordingly, the first element of Section 4(a) has not been satisfied.

Respondent’s Rights or Legitimate Interests in the Domain Name

            As to the second element of Section 4(a), Respondent’s registration of the domain name could be said to afford it rights in the name. But it appears that the second element requires more than just registration. If the second element were to be deemed satisfied by mere registration, a complainant could never show that a respondent had no rights or legitimate interests in the domain name for all are registered. More, therefore, must be required. A “right” bespeaks of a legal entitlement such as a mark. For example, the term “united” might be embraced in several marks with another term such as “movers”, “airlines” or “technologies”, held by different owners. An “interest” is something less. It could be found in use of a generic term as a link to another web site, significant promotional expenses with respect to a generic name or an established use of the term prior to registration.

            Here, the evidence is not merely of registration but also of actual promotion and use. The evidence of linkage to another web site and promotional development shows that Respondent has a legitimate interest in the domain name. Thus, the second element has not been satisfied. Further, Complainant’s allegation that the domain name should be reflected in Respondent’s name is absurd.

Bad Faith

            Although examination of the third element of Section 4(a), bad faith registration and use is not necessary, I address it because the allegation of bad faith registration and use is completely frivolous.

            Here, there is no evidence that the Complainant and Respondent are competitors, there is no evidence of any attempt by Respondent to attract Internet users to a web site through confusion, and there is no evidence of a pattern of registering domain names in order to prevent  an owner of a mark from reflecting the mark in a domain name. Thus, Sections 4(b)(ii), (iii) and (iv) of the Rules are inapplicable.

            Section 4(b)(i) of the Rules addresses the so-called “classic cybersquatter” case where one registers a domain name with the intention to arbitrage it. See, Avery Dennison Corp. v. Sumpton, [1999] USCA9 436; 189 F.3d 868, 880 (9^th Cir. 1999). Proof of intention is almost always based on circumstantial evidence. Here, there is no such evidence. Registration in 1996 and promotional development of the domain name show no such intent. That GlobalDomain might be willing to sell the domain name over three years later after having developed it is nothing more than a willingness to sell a business after having built it up.

            Accordingly, the Complaint be and the same hereby is dismissed.

Dated: June 9, 2000                          Honorable Howard C. Bushman, Arbitrator