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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Corbis Corporation v. Zest
Claim Number: FA0107000098441
PARTIES
Complainant is Corbis
Corporation, Bellevue, WA (“Complainant”) represented by Robert J.
Glance, of Merchant & Gould P.C. Respondent is Zest, Taegu, KOREA (“Respondent”) Ari Goldberger,
of ESQwire.com Law Firm.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <digitalstock.com>,
registered with Melbourne IT.
PANEL
The undersigned certifies 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.
R. Glen Ayers, Chair, Patrick J. Hines, and David
Sorkin were selected as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National
Arbitration Forum (“the Forum”) electronically on July 31, 2001; the Forum
received
a hard copy of the Complaint on July 31, 2001.
On July 31, 2001, Melbourne IT confirmed by e-mail to
the Forum that the domain name <digitalstock.com> is registered
with Melbourne IT and that the Respondent is the current registrant of the
name. Melbourne IT has verified that
Respondent is bound by the Melbourne IT 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 1, 2001, a Notification of Complaint and
Commencement of Administrative Proceeding (the “Commencement Notification”),
setting
a deadline of August 21, 2001 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@digitalstock.com by
e-mail.
A timely response was received and determined to be
complete on August 21, 2001.
Complainant timely filed an Additional Submission,
“Complainant’s Additional Response.”
On August 30, 2001, pursuant to Respondent’s request
to have the dispute decided by a three-member Panel, the Forum appointed R.
Glen
Ayers, Chair, Patrick J. Hines, and David Sorkin as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
1.
Complainant
Complainant has provided evidence that it (or its
predecessor in interest) has used the trademark “Digital Stock” since 1993 and
that
the mark was registered in 1998 with the U. S. Patent and Trademark
Office. That mark is obviously
identical to the domain name.
Complainant states that the Respondent has no rights
in the name for it “has no association, presence, brand awareness, right or
legitimate
interest” in the name.
Complainant also says that Respondent has made no use of the name “in
connection with a bona fide offering of goods or services.”
The Complainant alleges that the domain name has been
registered and used in bad faith and has disrupted the Complainant’s business
by misdirecting customers, even though Respondent is not a competitor. Evidence
of misdirection has been provided.
Complainant provides correspondence to show that it
gave notice of the problem to Respondent and that Respondent offered to sell
the
domain name for $30,000, even though Respondent had stated that it only had
$20,000 invested. Complainant disputes
this last sum: “Notably, neither Respondent’s website prior to the dispute or
after the dispute indicate than
any amount close to $20,000 was spent ....”
2.
Respondent
Respondent replies that the mark contains two generic
terms which provide no “enforceable rights under the UDRP.” It also alleges that it has a legitimate
interest; that it planned to use the site for offering online securities
information and
has launched such a site.
Respondent denies any bad faith, alleging that the
mark is but two descriptive words and that there is no evidence that the domain
name was acquired for resale to the Complainant or to prevent Complainant’s use
or to disrupt Complainant’s business.
Complainant is accused of “cyberbullying.”
Respondent notes that the mark is not registered in
Korea, where Respondent is located.
Respondent, by affidavit, denies it had any knowledge of the mark prior
to registration of the domain name.
Respondent also notes that Complainant approached it about buying the
name; clearly, Respondent did not initially solicit Complainant.
Much of Respondent’s argument focuses on the weakness
of the mark. Respondent cites a number
of relevant ICANN decisions on this point.
Respondent points out that Complainant had registered
this particular domain name but had let the registration lapse.
Respondent goes on to assert that it has a legitimate
interest in the domain name, for it had intended, at the time of registration,
to go on to establish a web site related to the financial (stock) markets.
Respondent elaborates on the “bad faith” issues,
pointing out that it had no knowledge of Complainant prior to registration and
that
none of the “bad faith” factors are relevant. As to offering the domain
for sale, Respondent asserts that the Complainant approached
the Respondent,
citing decisions that decline to find “bad faith” in cases where Respondent did
not initiate a proposed sale.
3.
Additional Submissions
In “Complainant’s Additional Response” (which was
timely filed), the Complaint focuses first on whether Respondent’s affidavits
were
competent, not having been filed under penalty of perjury. Complainant next attempts to rebut
Respondent’s arguments about the generic nature of the words making up the mark
and the “weakness”
of the registration of the mark.
Complainant points out that the Respondent had made no
use of the domain name prior to the dispute.
Finally, Complainant offers evidence of
distinctiveness and secondary meaning, as well as evidence that the mark has
been circulated
in publications around the world.
FINDINGS
THE PANEL HAS DECIDED THAT THIS CASE RAISES TWO
PARTICULARLY IMPORTANT AND TROUBLING ISSUES AND HAS ATTEMPTED TO RESOLVE THOSE
ISSUES
IN THIS OPINION:
(1)
May a weak trademark be
the basis for a claim under the UDRP?
(2)
What results should flow
from registration (by a different party) of a lapsed domain name?
First, the Respondent has asserted, with citations to
opinions, that this Panel may find that the Complainant’s mark consists of
generic
terms and that the mark is weak.
Therefore, Respondent would have the panel find that Complainant holds
no rights in the mark and has not met its burden of showing
that it holds a
mark that is “identical to” the domain name.
Second, the Respondent has shown that the Complainant
had originally registered the domain name and had allowed the registration to
lapse.
Both issues are being raised with some frequency in
ICANN adjudications. The Panel believes
that both issues should be addressed and resolved as much as is possible in the
context of a multi-Panelist arbitration.
VALIDITY OF MARKS:
“Identical To Or Confusingly Similar”
There is no doubt that the mark and domain name are
identical. Respondent argues, with
ample support in the arbitration decision cases, that this Panel has the power
to find that an allegedly weak
mark may be ignored.
This Panel does not agree. These
proceedings are not held before a tribunal competent to challenge the validity
of a properly registered mark. In the
parlance of legal circles in the United States of America, “this is not a
United States District Court.”
Therefore, the Panel declines to examine the underlying validity of a
mark properly registered in the United States of America or,
for that matter,
in any other country. In our opinion, a
registered mark is a registered mark for purposes of establishing the first of
the three tests used to determine
domain name disputes. Respectfully, but forcefully, we disagree
with and decline to follow those cases cited by Respondent. While the use of a domain name which is
identical to a registered mark may not be actionable under the Policies and
Rules, it is inappropriate
to ignore the registration even when the mark is
allegedly weak or has allegedly been improvidently granted.
Where a Complainant, as here, demonstrates that it
holds a registered mark that is identical to the domain name, it has met its
burden
under the first of the three tests used by this Panel under the ICANN
Rules and Policies.
A Respondent can certainly attack the strength of the
mark in cases where the domain name is not identical but is merely similar,
because the strength of the mark may be relevant to the likelihood of
confusion.
The Panel also holds that Respondent may certainly
assert the nature and relative strength of the mark in the context of
"rights
in the domain name" and "bad faith." the Panel, as
a whole, however, holds that prior registration does not help the
Complainant,
although it may be able to otherwise show that Respondent has no rights in the
domain name and/or acted in bad faith.
WHERE THE DOMAIN NAME REGISTRATION HAS LAPSED:
“Rights” and “Bad Faith”
The Panel also holds that Respondent may certainly
assert the nature and relative strength of the mark in the context of
"rights
in the domain name" and "bad faith." and The Panel,
as a whole, however, holds that prior registration does not help
the
Complainant, although it may be able to otherwise show that Respondent has no
rights in the domain name and/or acted in bad faith.
Here, Complainant does not dispute that it was the first to register the domain name and that it allowed the registration to lapse. It has not alleged that Respondent was in any way responsible for that lapse.
One of the Panelists, the Chair, would hold that a party
that has lost an Internet domain name due to renewal lapse should ordinarily
have no recourse under the UDRP and
would choose to follow cases which have previously held as much. National Kidney Foundation v. Los Girasoles/Jorge
Clapes, AF-0293 (eResolution Aug. 31, 2000) (“Once the complainant's
registration had lapsed, the contested domain name became available
....”); Fiske
Industries v. Supreme Interactive, AF-0257 (eResolution Aug. 7, 2000) (decision for Respondent where
Complainant “had previously registered the Domain Name at issue,
but failed to
timely renew that registration through an administrative error”).
The Panel, as a whole, however, holds that prior
registration does not help the Complainant, although it may be able to
otherwise
show that Respondent has no rights in the name and bad faith. We do reject the reasoning of cases holding
that we may find “bad faith” simply because Respondent took advantage of the
lapse in
registration. See In Test
Corp. v. Service point, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding
that where the domain name has been previously used by the Complainant,
subsequent
registration of the domain name by anyone else indicates bad faith,
absent evidence to the contrary); see also BAA PLC v. Spektrum Media Inc.,
D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where Respondent took
advantage of the Complainant’s failure to renew a domain
name).
We also strongly disagree that prior registration
should ordinarily be considered as a factor favorable to the Complainant. See American Anti-Vivisection Soc’y v.
“Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding
that Complainant’s prior registration of the same domain name is a factor in
considering
Respondent’s rights or legitimate interest in the domain
name). There may be some cases, for
example, where the registrant was aware of the prior use by the holder of a
mark and was aware of the
mark and might be found to be attempting to disrupt
or compete; in the alternative, there may be cases where the registrant was
somehow
involved in the failure to renew.
In ordinary cases, the existence of a prior
registration that has lapsed is entirely irrelevant to the questions of
legitimate interests
and bad faith. This is so even if the subsequent
registrant was aware that the domain name had previously been registered to
another
party, and even if the subsequent registration occurred very soon after
the domain name was returned to the pool of available names.
In lapsed registration cases, the “bad faith” issue
should be dispositive. It will usually
not be necessary to address the other issues.
Consider the facts in this case. The domain name and the mark are identical.
Respondent had no identifiable rights in the name when it registered the domain
name or
thereafter, or at least prior to dispute raised by the Complainant’s
correspondence.
But, we hold that it cannot ordinarily be “bad faith”
to register a lapsed name where the Respondent is not using the name to compete
with the Complainant, misdirect its customers, or disrupt its business.
Again, consider the facts of this case. First, the mark was not registered in
Korea. Respondent has made some
showing, even though the affidavit was not submitted under penalty of perjury,
that it had no knowledge of
the Complainant or its mark.
Second, the Complainant had let the name lapse; from
this we can infer that the prior holder of the name was abandoning any interest
in the domain name. So, even if
Respondent knew of the prior registration and the Complainant’s prior use,
there is no evidence of “bad faith.”
Finally, the Complainant contacted the Respondent,
which makes the Complainant’s burden somewhat higher where the allegation is
that
the Respondent registered the 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 ....” ICANN Policy ¶ 4.(b).(i).
Certainly, however, the Panel is aware of how the world works. Respondents are frequently sophisticated
enough to wait until the Complainant makes contact.
That said, the only evidence of bad faith here is that
Respondent demanded what seems to be a very large sum of money for surrender
of
the domain name. It has not attempted to compete with the Complainant nor has
it tried to disrupt its commerce.
However, the Policy and Rules require evidence of both
registration and use in “bad faith.”
Here, there is absolutely no evidence of bad faith registration.
The Panel also believes that the very fact that a
domain name has lapsed could allow a party to register the domain name without
a
trademark search, even in the hope that some person might wish to buy the
name.
The Panel holds that a domain registrant who knows a
domain name has been abandoned should be more confident, not less so, that
there
is no competing trademark claim relating to the domain name; a person in
the position of Respondent should be more confident than
a registrant who
selects a previously unregistered name.
There is an element of “finders keepers, losers
weepers” in this decision. We believe
that is as it should be.
In sum, where a party registers a lapsed domain name,
and it is not attempting to use the name to compete with the mark holder or
disrupt its business, we believe that ordinarily the trademark holder should be
denied relief, whether the mark is a common law or
registered mark, whether the
mark is “strong” or “weak.”
We certainly recognize that domain name pirates may be lurking like buzzards to pick off “good” names which lapse. But that is true in any area of intellectual property. Failure to renew or extend those property rights, failure to protect marks and copyrights, and the like allow third parties to take advantage of the owner’s lack of diligence.
One of the members of this Panel previously issued an
opinion, Garth Brooks v. Commbine.com, LLC, FA 96097 (Nat
Arb. Forum Jan. 3, 2001), in which an opposite result was reached. That opinion may be distinguished. The “Garth Brooks” mark, though a common law
mark, is strong and distinctive. Both
parties were in the United States of America, and the Respondent had a history
of buying and selling domain names.
However, the author of that opinion agrees, to the extent this opinion
disagrees with his prior opinion, that the Brooks case should be
considered superceded.
DISCUSSION
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 mark and domain name are identical.
Respondent has no rights or legitimate interests in
the name, for it never used the name prior to notice of the dispute and it is
not otherwise known by the name.
For the reasons stated above, Respondent did not act
in bad faith by the registration and use of the domain name.
DECISION
The domain name shall not be transferred.
R. Glen Ayers, Chair; David E. Sorkin; and Jay Hines,
Panelists
Dated: September 12, 2001
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