Generic Top Level Domain Name (gTLD) Decisions

Complainant contends that it holds a service mark, "Lucky Money", which is identical to the Respondent’s domain name, "luckymoney.com." Complainant asserts that its mark is well established in the United States and is used internationally and has been used in commerce since August of 1992. Complainant asserts that it has 42 branch offices in the United States whose principal business is the "fast and dependable money remittance to the Philippines." Complainant has enclosed exhibits reflecting its various licenses to do business in various states and examples of advertising. The advertising, of course, uses the name "Lucky Money."

Complainant also asserts that it registered certain domain names incorporating its mark, including "luckymoneyusa.com" and "luckymoneyremittance.com".

However, Lucky Money did not attempt to register the service mark with U.S. Patent and Trademark Office until December 29, 2000. It has not attempted to register the mark in any other country.

Complainant goes on to assert that it made every attempt, beginning in 1997, to acquire the domain name "luckymoney.com". That domain name was originally registered to a David Green who apparently let the registration lapse. David Green has no relationship to any party to this proceeding. Complainant apparently made every attempt to procure the domain name beginning in July of 2000 and continuing to November 2000 when it learned that Domain Bigsale had registered the name. Apparently, the registration by Domain Bigsale was a result of the "first come, first serve" procedures used for domain registration.

Thereafter, Complainant asserts, and the evidence reflects, that Domain Bigsale posted the name "luckymoney.com" for sale.

When Complainant learned that the domain had been registered by another party, Lucky Money began to send cease and desist letters. In response, the Complainant received an e-mail from "steeve" asserting ownership of the domain and stating that he would no longer market the name. Complainant contends, of course, that it holds a mark that is identical to the Respondent’s domain name. It also contends that the Respondent has no rights or legitimate interest in the name or mark and that the mark has been acquired by the current holder for purposes of resale. The only evidence of bad faith is, of course, is the repeated offer to sell the domain name made to the general Internet public.

Respondent’s original filing asserted that the Complainant had no mark and that "Lucky Money" is such a common expression that anyone could have picked it as a domain name. The response denied any bad faith and denied any knowledge of the ownership of a mark, "Lucky Money", by anyone.

Once the Response was entered, Complainant filed its "Additional Response", in which it asserted the common law trade or service mark rights acquired through use of its name, "Lucky Money". Further, Complainant offered additional information concerning the nature of Respondent’s business. Respondent’s business appears to be the registration and sale of domain names. Complainant also asserted that the domain name had undergone repeated transfers in an apparent attempt to conceal the true identity of the owner. Complainant attached evidence of each of these allegations.

After Complainant’s "Additional Response", Respondent filed its own untimely "Additional Response" attempting to cure all of the deficiencies of its original Response.

In its "Additional Response", the Respondent again asserted that Complainant had no common law trademark right or service mark right, because "Lucky Money" is such a generic name.

The panelists have determined that there is insufficient evidence to support the existence of a common law trademark in the term "Lucky Money." The phrase is too generic to have acquired a secondary meaning. An expression comprised of generic terms, as to which Complainant cannot have exclusive rights, does not constitute a mark at common law. See SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Nat. Arb. Forum May 25, 2000) (finding that the Complainant failed to show that it should be granted exclusive use of the domain name "SOCCERZONE.COM", as it contains two generic terms and is not exclusively associated with its business).

Complainant also does not own a valid trademark registration for its supposed mark. See Interactive Television Corporation v. Noname.com, D2000-0358 (WIPO June 26, 2000) ( "[S]erious questions as to whether Complainant has any proprietary rights require us to reject Complainant’s claim. The ultimate decision as to whether Complainant does or does not have proprietary rights is better left to a court or trademark office tribunal.").

Because the first element of Rule 4 has not been shown, there is no reason to consider the other elements.

No findings are necessary. Respondent did allege that it acquired the domain name at issue to use in connection with its "money affiliate site" to be launched in Korea. See Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO Oct. 18, 2000) (finding rights and legitimate interests in the domain name where the Respondent sought to develop a bona fide business use for the domain).

Respondent’s mere allegations are not sufficient, for it has submitted no real evidence of attempts of use or develop uses for the name.

No findings are necessary. However, Respondent asserts that it was not aware of Complainant’s mark prior to registering the domain name at issue. See Goldmasters Precious Metals v. Gold Masters srl, FA 95246 (Nat. Arb. Forum Aug 21, 2000) (finding no bad faith even though Respondent’s ownership and purported use of the domain name frustrates Complainant’s efforts where the record does not indicate any purpose or intent on the part of the Respondent to prevent Complainant from reflecting its mark in a corresponding domain name, to disrupt the business of a competitor, or to intentionally attract the customers of Complainant to Respondent’s site by creating a likelihood of confusion).

Also, Respondent’s assertion that the domain name is a common expression comprised of generic terms is a defense to an allegation of bad faith. See Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no bad faith where the domain name involves a generic term, and there is no direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interest).

Finally, even though the Respondent appears to be in the business of acquiring domain names for resale, he is not automatically acting in bad faith nor is he or she automatically a bad person.