Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Andrew Clements, Westborough, MA, USA ("Complainant"). The Respondent is Hugh Smikle, Houston, TX, USA ("Respondent").

The domain name at issue is "FRINDLE.COM", registered with 7ways.com.

The Panelist certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

R. Glen Ayers has been selected as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 07/18/2000; The Forum received a hard copy of the Complaint on 07/17/2000.

On 07/27/2000, 7ways.com confirmed by e-mail to The Forum that the domain name "FRINDLE.COM" is registered with 7ways.com and that the Respondent is the current registrant of the name.

On 07/31/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/21/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondentís registration as technical, administrative and billing contacts by e-mail.

On August 11, 2000, The Forum received a timely filed response from Respondent. On August 21, 2000, pursuant to Complainantís request to have the dispute decided by a Single Member panel, The Forum appointed R. Glen Ayers, as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

Complainant, Andrew Clements, published a childrenís novel entitled Frindle in 1996. He represents that "Frindle" is a word coined by one of his characters to replace the word "pen." Pens stamped with the word have been used to promote the novel since the time of publication Respondent has given express permission for this use. The book has be very successful and has sold over 700,000 copies and continues to sell at over 135,000 copies per year. The book has won national and state awards and has been nominated for even more awards in both the United States and Europe.

(Interestingly, the book allegedly contains a sub-plot concerning the use of the word by a businessman to market pens, shirts and caps.)

On April 12, 2000, Complainant was notified by the Authorsí Guild of a "land grab" of domain names in the "author community". The Guild recommended that authorsí protect their own names and other names in which members had an interest and made available a service allowing members to reserve domain name.

Complainant soon discovered that Respondent had registered "FRINDLE.COM."

Complainant then initiated telephone conversations and e-mail and other correspondence with Respondent concerning "FRINDLE.COM."

The Complainant says that the Respondent told him that he, the Respondent, "was interested in prospecting for internet names, and had reserved quite a few in hopes they someday would prove valuable." Respondent also admitted, says Complainant, that "FRINDLE.COM" was registered because his son, who had read the book, suggested registration of the name.

Respondent went on to say, according to Complainant, that he hoped "ë weíd make out like banditsí". Respondent then said that all of this "was just speculation, just business, and that unless [Complainant] had a copy-right claim or trademark . . ., he was within his legal rights."

Complainant then mentioned that the Authorsí Guild had publicized a story about someone who had offered to sell a book or author-related domain name back to the author for a percentage of royalties: "He said he hadnít thought of that, but heíd be happy to entertain . . . [an] offer . . . ."

E-mail correspondence reflecting this sort of discussion continued. In the meantime, Complainant took steps to file for a trademark with the United States Patent and Trademark Office.

As the correspondence continued, Complainant offered to purchase the domain name for the costs of registration and "the time you and your son have spent messing about with it . . . ."

In response, Respondent denied that he had ever thought to sell the name domain name to Complainant but did admit that he was "speculating on" names.

Of course, negotiations were ultimately unsuccessful.

B. Respondent

Respondent first asserts that there were no trademarks of record using "Frindle" at the time he filed to register the domain name. He says he carefully investigated the issue before registering the name.

Respondent also asserts that "Frindle" was not created by Complainant. Respondent has determined that the word is also a surname.

Respondent has asserted that he has a legitimate use for the name "Frindle" as a joint Internet project with his son.

Respondent also asserts he never offered to sell the domain name. Quoting the Response here is helpful:

Finally, Respondent denies any "bad faith" on his part. He has emphatically denied that he intended to sell the domain name to Complainant. He also says he has and has always had a clear intent to use the domain name. He asserts that Complainant contacted him, and he, essentially, just listened.

The Complainantís story is credible. Respondentís story is not.

However, the first issue must be whether Complainant had a trademark prior to his recent registration. If he has no trademark at the time Respondent registered the domain name, the case becomes more difficult. If Complainant held a common law trademark, however, there can be a finding that the domain was "identical" or "confusingly similar" at the time the domain name was registered. Policy 4(a)(i).

Certainly, Complainant held a common law trademark in the word "Frindle" even without registration at the United States Patent Trademark Office. See, e.g., Tally-Ho, Inc. v. Coast Community College Dist., 889 F.2nd 1018 (11th Cir. 1989) and Association of Co-Op Members v. Farmland Indus., Inc., 684 F2nd 1134 (5^th Cir. 1982).

Complainantís allegations clearly set out the existence of and his use and promotion of a common law trademark by actual, prior and continuous use in commerce.

Having established that there is a trademark at common law, the identity of the domain and trademark is also established.

As to Policy 4(a)(ii), there is also no evidence that Respondent has rights or legitimate interests in the domain name. He has never used or has made only very limited use of the domain name. His surname name is not "Frindle." His use of the name as an Internet project with his son is certainly not enough.

The only real issue presented is the question of "bad faith."

Complainant has met his burden of showing bad faith under the Policy.

Respondent has clearly engaged in a practice of registering domain names in order to "land grab." Respondent does not deny this assertation.

Respondent also clearly hoped to sell the name to Complainant. While, the Complainant contacted the Respondent first, that is not relevant. Respondent very obviously registered this particular name in the hopes of "speculating."

To now assert that he had no such intent, given the correspondence, is not credible. The rhetorical question begs to be asked: "If Respondent did not intend to try to speculate in the name, why did he register a domain identical to an enormously popular childrenís novel only after researching whether the name was a registered trademark?"

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.

The panelist finds that the domain name and common law trademark are identical or confusingly similar

Respondent has no rights or legitimate interests in the domain name.

The domain name has been registered in "bad faith", as that term is defined at Paragraph 4(b) of the Policy.

The domain name should be transferred to Complainant.