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Generic Top Level Domain Name (gTLD) Decisions |
Freebies Publishing v. Retail Services,
Inc.
Claim Number: FA0204000112565
PARTIES
Complainant
is Freebies Publishing, Carpinteria,
CA (“Complainant”) represented by Gary
J. Nelson, of Christie, Parker &
Hale LLP. Respondent is Retail Services, Inc., Plano, TX
(“Respondent”) represented by Charles M.
Hosch, of Strasburger & Price,
LLP.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <freebie.com>,
registered with Verisign - Network
Solutions, Inc.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known
conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on April 29, 2002; the Forum received
a hard copy of the
Complaint on April 30, 2002.
On
May 1, 2002, Verisign - Network Solutions, Inc. confirmed by e-mail to the
Forum that the domain name <freebie.com>
is registered with Verisign - Network Solutions, Inc. and that Respondent is
the current registrant of the name. Verisign
- Network Solutions, Inc. has verified that Respondent is bound by the Verisign
- Network Solutions, Inc. 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
May 1, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 21,
2002 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@freebie.com by e-mail.
Respondent
filed a timely Response, which the Forum received and determined to be complete
on May 21, 2002. Both Complainant and Respondent
then filed additional
responses. Complainant’s Additional Response was received timely on May 24,
2002. Respondent’s Additional Response
was received after the deadline for
submissions had passed. In the interest
of fairness and in order to determine the dispute on the merits, the Panel
reviewed and considered all submissions.
On June 24, 2002, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant asserts that it owns the
FREEBIES trademark and that the domain name registered by Respondent is
identical to its mark. Complainant
urges that the Respondent registered the domain name, <freebie.com>, without rights to or legitimate interests in
Complainant’s mark, which is contained in its entirety in the domain name at
issue. Complainant contends that
Respondent acted in bad faith by registering a domain name containing
Complainant’s mark and then by disrupting
the commerce of Complainant by using
the domain name to sell goods in competition with Complainant.
B. Respondent maintains that the domain name
is not identical to or confusingly similar to Complainant’s mark because
Respondent did
not underline FREEBIE in the domain name. Further, Respondent
urges that the business it does, responding “in real time to several
hundred
transactions per second, hundreds or millions of transactions per year” is
“sharply different” from Complainant’s business;
that the words “freebie” and
“freebies” are now generic and that Respondent engaged in bona fide sales prior
to this proceeding. Further, Respondent
urges that its Retail Services, Inc. and Freebie, Inc. are “thriving
businesses, wholly independent of the Complainant’s
printed magazine
enterprise.”
C. Complainant’s Additional Response adds
the claim that Respondent’s domain name is “confusingly similar” to
Complainant’s mark; that
Respondent is not known by “freebie” or “freebie.com;”
and that while Respondent claims that Respondent holds registered rights to
“freebie,” Respondent has not shown that it holds such rights and has not shown
that it has applied for protection of a “freebie”
mark.
D. Respondent’s Additional Response sets out
that the mark owned by Complainant is “FAMILY FREEBIES,” although that is
contradicted by
the attachments to Respondent’s papers; that Retail Services,
Inc. owns more than fifty percent of Freebie, Inc.; and that when it
registered
the domain name, Respondent had not heard of Complainant’s FREEBIES mark.
FINDINGS
Complainant holds United States Patent and Trademark Office Registration
Number 1,807,431, filed in 1992, for the FREEBIES mark, authorizing Complainant
to produce and distribute under that mark periodicals containing information
about mail order offerings. Complainant’s first use
in commerce of the FREEBIES
mark was recognized by the U.S.P.T.O. to have been in 1977.
Complainant
and various distributors have sold approximately six million subscriptions of
Complainant’s Freebies magazine and more than forty million magazines
have been distributed over the past twenty years.
Complainant
also contends that it has been the exclusive user of the FREEBIES mark in the United
States since as early as 1977, and
that it has used the mark continuously since
that time although the record shows that others use some form of freebie with
other
terms. Nothing in the record
shows that those other entities have legal rights to the FREEBIES mark.
Respondent registered the disputed domain name
November 8, 1994, and incorporated the Freebie, Inc. corporate form as a
Delaware Corporation
on November 22, 1999.
Respondent
asserts that its domain name is not identical to or confusingly similar to
Complainant’s mark and that Complainant’s registered
FREEBIES mark is limited
to goods and services addressed in the registration, namely, periodicals,
including magazines and newspapers
with information about mail order offerings.
Respondent
contends that Complainant’s registration of the FREEBIES mark does not extend
to the use Respondent is making of its domain
name registration. Respondent
maintains that its business is different from Complainant and that Respondent
“responds in real time
to several hundred transactions per second, hundreds of
millions of transactions per year.”
Respondent further urges that “freebie” and “freebies” are generic terms and
that Complainant’s mark is a design mark, including
a fanciful design element
and that Complainant may only exclude others from using its design mark.
Respondent then urges, notwithstanding,
that by altering Complainant’s mark
through the deletion of the letter “s,” Respondent has created a distinct mark.
Respondent
further argues that it has engaged in a bona fide offering of goods and
services using the mark prior to the Complaint.
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 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 Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has
rights;
(2) 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.
Complainant
owns a United States Patent and Trademark Office registration for the FREEBIES
mark (Reg. No. 1,807,431, filed in 1992),
which is specified for periodicals
containing information about mail order offerings. It has common law rights
dating back to 1977. Because various
distributors have sold approximately six million subscriptions of Complainant’s
Freebies magazine and more than forty million magazines have been
distributed over the past twenty years, one may presume that Complainant
has
expended resouces in developing good will for the FREEBIES mark.
Complainant
asserts that it has been the exclusive user of the FREEBIES mark in the United
States since as early as 1977, and that
it has been using the mark continuously
over the years. Respondent urges that deletion of the “s” to Complainant’s mark
created a
distinctive mark. Authorities support the positions of both of these
parties relative to their respective contentions.
Complainant
argues, with support, that Respondent’s <freebie.com> domain name
is virtually identical to its FREEBIES mark and that it is confusingly similar.
The subtraction of the letter “s” is inconsequential
when conducting a
confusingly similar analysis. The dominant focus of the domain name still
reflects Complainant’s mark in its entirety
and confusion will result. See
Universal City Studios, Inc. v.
HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the
letter “s” from the Complainant’s UNIVERSAL STUDIOS STORE mark did not
change
the overall impression of the mark and thus made the disputed domain name
confusingly similar to it); see also Victoria’s
Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding
that, by misspelling words and adding letters to words, a Respondent does not
create a distinct mark but nevertheless renders the domain name confusingly
similar to Complainant’s marks); see also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb.
Forum Dec. 18, 2000) (finding that confusion would result when Internet users,
intending to access Complainant’s
website, think that an affiliation of some
sort exists between Complainant and Respondent, when in fact, no such
relationship would
exist).
Similarly,
some authority exists for Respondent’s proposition that deletion of the “’s”
creates a mark that is distinct. See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135,
1147 (9th
Cir. Feb. 11, 2002) ("Similarity of marks or lack thereof are
context-specific concepts. In the Internet context, consumers
are aware that
domain names for different websites are quite often similar, because of the
need for language economy, and that very
small differences matter"); see
also Bank
of Am. Corp. v. Fluxxx, Inc., FA 103809 (Nat. Arb. Forum Feb. 18, 2002)
(finding that Complainant failed to prove “confusing similarity” under Policy ¶
4(a)(i)
because it did not demonstrate that the public would be confused
between its NATIONSBANK mark and the disputed domain name
<nationsbanking.com>).
Respondent
argues that Complainant’s registered FREEBIES mark is limited to the goods and
services addressed in the registration,
namely, periodicals, including
magazines and newspapers with information about mail order offerings; and that
Complainant’s protected
mark is a design mark.
Respondent contends that Complainant’s registration protects Complainant
against others copying Complainant’s design mark but does
not extend to
Respondent’s use in the domain name that Respondent registered using the same
name contained in Complainant’s mark.
While Complainant’s registration is for printed goods, Respondent
maintains that its business is different. Respondent alleges it
“responds in
real time to several hundred transactions per second, hundreds of millions of
transactions per year.”
Some
authority holds that if the term is generic, then neither would have exclusive
rights to use the term. See Energy
Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001)
(finding that Respondent has rights and legitimate interests in the domain name
where “Respondent
has persuasively shown that the domain name is comprised of
generic and/or descriptive terms, and, in any event, is not exclusively
associated with Complainant’s business”). While Respondent asserts that
Complainant failed to investigate the “two hundred thirty-odd
other websites”
that appear to include the term “freebie” in the domain name, Respondent does
not provide that type of proof that
the words “freebie” and “freebies” are
generic and cannot be protected by trademarks. See Rollerblade, Inc. v. CBNO and Redican, D2000-0427 (WIPO Aug. 24,
2000) (finding that “genericness, if established, will defeat a claim of
trademark rights, even in a mark
which is the subject of an incontestable
registration”); see also Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (stating that
"[c]ommon words and descriptive terms are legitimately subject to
registration
as domain names on a 'first-come, first-served' basis"); see also Gen. Mach. Prod. Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum
Mar. 16, 2000) (finding that the term "craftwork" is in widespread
use in a descriptive sense
and therefore Respondent has successfully rebutted
Complainant’s arguments and has proven that it is in the business of selling
generic
and descriptive domain names such as <craftwork.com>); see
also Lucky Money, Inc. v.
ilovesschool.com, FA 96383 (Nat. Arb. Forum Mar. 9, 2001) (finding
Complainant cannot claim exclusive common law rights to an expression - Lucky Money – comprised of generic terms).
Respondent
made a showing that the word “freebie,” is defined by Merriam-Webster’s
Collegiate Dictionary, 10th Edition, as: “something (as a theater
ticket) given without charge.”
Respondent’s Google Search showed ten (10) uses of the word in its
generic sense, i.e. “something given without charge.” Respondent
submitted other
Internet listings along with papers showing that Freebie, Inc. was organized
pursuant to Delaware law, November 22,
1999, and that its Registered Office or
Registered Agent was located in the State of Texas as of November 9, 2001.
In
fact, Complainant has obtained trademark protection for its “FREEBIES” mark and
Respondent has not shown that it has such protection
for any “freebie”
mark. Further, Respondent’s corporate
registration of Freebie, Inc., followed by nearly twenty-two years Complainant’s
registration of its
FREEBIES mark. The deletion of the letter “s” did not
create a distinctive mark such as would defeat a claim of confusing similarity.
Respondent
also argues that Respondent may put the “s” back on to the mark when it places
meta-tags[i]
at its domain name site to aid Internet users in accessing information. This disingenuous argument tends to defeat
what might have been viewed as Respondent’s otherwise acceptable use of freebie
in a domain
name. Respondent knowingly uses Complainant’s mark, in its entirety
in meta-tags, all the while claiming that the actual domain name
is distinct
and different from Complainant’s mark. Respondent cannot have its cake and eat
it too; Respondent’s use of FREEBIES in
meta-tags provides some persuasion that
Respondent intends to confuse Internet users as to the source and sponsorship
of its domain
name and that constitutes a confusingly similar domain name in
name and in context in order to capitalize on Complainant’s twenty-two
years of
experience in this area of commerce.
Such conduct may be held to be calculated to confuse Internet users
because both Complainant and Respondent are in for-profit markets
of directing
customers to free goods. See Entrepreneur Media, Inc. v. Smith[2002] USCA9 115; , 279 F.3d 1135,
1147 (9th
Cir. Feb. 11, 2002) ("Similarity of marks or lack thereof are
context-specific concepts. In the Internet context, consumers
are aware that
domain names for different websites are quite often similar, because of the
need for language economy, and that very
small differences matter"); see
also Bank
of Am. Corp. v. Fluxxx, Inc., FA 103809 (Nat. Arb. Forum Feb. 18, 2002)
(finding that Complainant failed to prove “confusing similarity” under Policy ¶
4(a)(i)
because it did not demonstrate that the public would be confused
between its NATIONSBANK mark and the disputed domain name
<nationsbanking.com>).
The Panel finds
that ICANN Policy ¶ 4(a)(i) relative to “confusing similarity” has been
satisfied; the domain name <freebie.com>, especially with the
FREEBIES meta-tags used to promote it, is confusingly similar to Complainant’s
registered mark FREEBIES.
Complainant argues that, under the UDRP,
Respondent bears the burden of proving it has rights or a legitimate interest
in the contested
domain name. See
Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that
absent evidence of preparation to use the domain name for a legitimate purpose,
the
burden of proof lies with Respondent to demonstrate that it has rights or
legitimate interests). Complainant believes Respondent
fails to overcome this
burden for numerous reasons: (1) Respondent is not commonly known as “Freebie”
or <freebie.com> pursuant to Policy ¶ 4(c)(ii), and (2) Respondent
is opportunistically trading on the
fame of Complainant’s mark in violation of Policy ¶¶ 4(c)(i) and (iii). Complainant further asserts that Respondent
has no rights or legitimate interests in respect of the disputed domain name
because Respondent
is not named “Freebie” and does operate under any fictitious
business names comprised of the term “Freebie.” Complainant alleges,
and
Respondent does not dispute, that Respondent is not licensed or authorized to
use Complainant’s marks. See Gallup
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that Respondent does not have rights in a domain name when Respondent
is not known
by the mark); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest where Respondent was not commonly known
by the mark and
never applied for a license or permission from Complainant to
use the trademarked name).
Complainant also contends that
Respondent’s use of the disputed domain name does not constitute a bona fide
offering of goods or services
under Policy ¶ 4(c)(i) and that it does not
represent a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)
because Respondent
is intentionally trading on the fame of Complainant’s
FREEBIES mark by diverting unsuspecting Internet users.
Complainant further alleges that
Respondent not only is using a confusingly similar domain name but is using
Complainant’s exact trademark,
FREEBIES, in its meta-tags; thus, Respondent’s
actions evidence prior knowledge of Complainant’s mark and intent to trade on
the
mark. See Vapor Blast Mfg. Co.
v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding
that Respondent’s commercial use of the domain name to confuse and divert
Internet
traffic is not a legitimate use of the domain name); see also N. Coast Med., Inc. v. Allegro Med., FA
95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent
used the domain name to divert Internet users
to its competing website); see
also Kosmea Pty Ltd. v. Krpan,
D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where
Respondent has an intention to divert consumers of Complainant’s
products to
Respondent’s site by using Complainant’s mark).
Respondent asserts that it is commonly
known by the domain name because it owns stock in a company named “Freebie,
Inc.” However,
Complainant argues that owning stock in a company clearly does
not give Respondent rights under the Policy ¶ 4(c)(ii). Complainant
makes a
similar argument in response to Respondent’s allegations that one of its employees
is also an employee of “Freebie, Inc.”
In fact, the papers in this proceeding show that Retail Services, Inc.,
registered the domain name and that on the face of the documents,
Retail
Services, Inc., is not “freebie.com” or “Freebie, Inc.” Respondent is Retail
Services, Inc. and Respondent has offered no
proof to show that that Retail
Services, Inc. is known as “freebie.com” or “Freebie, Inc.”
Respondent claims that its president is also the
acting president of Respondent’s subsidiary, Freebie, Inc., and further alleges
that
Freebie, Inc. is a recognized Delaware Corporation authorized to do
business in Texas. Respondent
asserts that it is the primary owner of the stock of Freebie, Inc. and that it
has been known by that name since well before
the domain name dispute arose;
however, Respondent offered no proof to that effect other than subjective
manifestations. Respondent asserts that
it has demonstrated rights to and legitimate interests in the contested domain
name pursuant to Policy ¶ 4(c)(ii). See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000)
(finding that Respondent has rights and a legitimate interest in the domain
name since the domain
name reflects Respondent’s company name).
Respondent also maintains that it has
been engaged in the business of providing promotional services since prior to
the initiation
of Complainant’s claim. Respondent offers registered users the
opportunity to obtain points or rewards to be used in conjunction
with
participating merchants in order to obtain free or discounted merchandise;
thus, Respondent believes it has used the contested
domain name in connection
with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See
Sweeps Vacuum & Repair Ctr., Inc. v.
Nett Corp., D2001-0031 (WIPO Apr. 13, 2001) (finding bona fide use of a
generic domain name, <sweeps.com>, where Respondent used a legitimate
locator service (goto.com) in connection with the domain name); see also Smart Design LLC v. Hughes, D2000-0993
(WIPO Oct. 18, 2000) (finding rights and legitimate interests in the domain
name where Respondent sought to develop a
bona fide business use for the domain
name); see also IG Index PLC v.
Index Trade, D2000-1124 (WIPO Oct. 16, 2000) (finding that Respondent has
rights in the domain name because Respondent’s claimed use of the domain
name
is a “plausible explanation” to which the Panel must give weight).
The Panel finds
that Complainant has established that it has exclusive rights to and legitimate
interests in the FREEBIES mark for
“periodicals,
including magazines and newspapers with information about mail order offerings” and that Respondent has not shown a right to use
meta-tags containing Complainant’s FREEBIES mark at a confusingly similar <freebie.com>
domain name site. Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant
asserts that Respondent is intentionally using the contested domain name to
attract Internet users to its website by deliberately
creating a likelihood of
confusion between the domain name and Complainant’s registered mark;
Respondent’s domain name emulates Complainant’s
FREEBIES mark in meta-tags.
Complainant argues that Respondent’s actions represent a deliberate attempt to
opportunistically trade
on Complainant’s established mark and the attached
goodwill; thus, representing bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent
registered and used an infringing domain name to attract
users to a website
sponsored by Complainant and Complainant alleged that Respondent registered the
domain name primarily for the
purpose of disrupting the business of a
competitor, pursuant to Policy ¶ 4(b)(iii)). Complainant claims that Respondent
uses the
domain name, which is substantially identical to Complainant’s mark,
to connect to a website offering competing goods and services.
See Mission Kwa Sizabantu v. Rost,
D2000-0279 (WIPO June 7,2000) (defining “competitor” as "…one who acts in
opposition to another and the context does not imply
or demand any restricted
meaning such as commercial or business competitor”); see also Surface Protection Indus., Inc. v.
Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the
competitive relationship between Complainant and Respondent, Respondent
likely
registered the contested domain name with the intent to disrupt Complainant's
business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by
attracting Internet users to a website that
competes with Complainant’s
business). See also AltaVista v.
Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶
4(b)(iv) where the Respondent linked the domain name to a website
that offers a
number of web services); see also See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that the “domain names are so obviously connected with
the Complainants that the use or
registration by anyone other than Complainants
suggests ‘opportunistic bad faith’”).
Respondent
maintains that it and its subsidiary, Freebie, Inc., are serious, thriving
businesses, wholly independent of Complainant’s
printed magazine enterprise and
that Respondent’s registration of its domain name was a deliberate selection
that corresponds to
its legitimate business objectives. See Lowestfare.com LLC v. US Tours & Travel,
Inc., AF-0284 (eResolution Sept. 9, 2000) (finding no bad faith where
Respondent was using the descriptive domain name <thelowestfare.com>
to
lead consumers to a source of lowest fares in good faith); see also
Pensacola Christian Coll.
v. Gage, FA
101314 (Nat. Arb. Forum Dec. 12, 2001) (finding that after Respondent is
determined to have rights and legitimate interests in
the disputed domain name,
there is no need to decide the issue of bad faith).
Respondent
also asserts that it is not disrupting Complainant’s business, primarily
because it is not a competitor, as Respondent
is not in the printed-goods business.
See Gorstew Ltd. v. Twinsburg Travel, FA 94944 (Nat. Arb. Forum July 7, 2000) (finding no bad faith under
Policy ¶ 4(b)(iii) because Respondent and Complainant are not
truly
competitors).
Furthermore,
Respondent registered the contested domain name <freebie.com> on
November 8, 1995, almost seven years ago, and more than two years before
Complainant registered its own domain name. See DJF Assocs., Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum
Nov. 1, 2000) (finding Respondent has shown that it has a legitimate interest
in the domain name because
Respondent selected the name in good faith for its
website, and was offering services under the domain name prior to the
initiation
of dispute). Furthermore, Respondent argues that Complainant allowed
a significant amount of time to elapse before it felt compelled
to initiate
this Complaint; thus, Complainant’s sincerity in its assertions should be
questioned. See New Piper
Aircraft, Inc. v. Piper.com, FA 94367 (Nat. Arb. Forum May 2, 2000)
(stating that Complainant’s failure to initiate a suit in over two years
indicated that Complainant
did not believe that Respondent intended to attract
customers through confusion); see also Bosco Prod., Inc. v. Bosco email Serv., FA 94828 (Nat. Arb. Forum
June 29, 2000) (“Without determining if the passage of considerable time would
alone bar Complainant from
relief in this proceeding, the Panel notes that
Complainant does not explain why it has waited nearly four years to try and
resolve
[the domain name dispute]”).
Additionally,
Respondent argues that it has included the meta-tags of Complainant’s mark,
FREEBIES, on its website because Complainant’s
design mark is substantially
similar to Respondent’s domain name. Respondent claims it has placed a
pluralization of its <freebie.com> domain name in its meta-tags in
order to aid Internet users with any misspellings, and not as an element of bad
faith. Further, Respondent
alleges that Complainant has, on the alternative,
used ‘freebie’ in its own meta-tag code on its website.
Lastly,
Respondent argues that at no point has it ever offered to sell its domain
registrations; that it did not register its domain
name in order to prevent a
mark owner from reflecting a mark in a corresponding domain name and that it
did not engage in a pattern
of such conduct. Respondent also asserts that it
has never attempted to create a likelihood of confusion to another’s mark as
such
is forbidden by Policy ¶ 4(a)(i). See Societe des Produits Nestle S.A.
v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO October 12, 2001) (finding
that where Respondent has not attempted to sell domain name for profit, has not
engaged
in a pattern of conduct depriving others of the ability to obtain
domain names corresponding to their trademarks, is not a competitor
of
Complaint seeking to disrupt Complainant's business, and is not using the
domain name to divert Internet users for commercial
gain, lack of bona fide use
on its own is insufficient to establish bad faith).
In determining bad
faith, the Panel looks at the entire circumstances and while the Panel views
the Complainant’s wait before complaining
of the disputed domain name to be
extended, Complainant obtained legal trademark status of FREEBIES in 1992 and
had enjoyed common
law rights beginning in 1977 to the FREEBIES mark. Respondent created its corporation in
Delaware on November 22, 1999, registering its office in Texas November 9,
1999. Respondent’s corporation was
created some twenty-two years after Complainant began its operations. Respondent admits that, in providing
information at its domain name site, Respondent used Complainant’s FREEBIES
mark in its entirety
in meta-tags to attract Internet users to the site.
Respondent’s subjective manifestation that it had no bad faith in using the
FREEBIES
mark as meta-tags must be balanced with Respondent’s objective
manifestations and the general unlikelihood that Respondent would
not have been
aware of Complainant’s prior interest in the FREEBIES mark after Complainant’s
twenty-two years of providing in print
form what Respondent sought to provide
over the Internet. These circumstances suggest opportunistic bad faith,
although the Panel
believes that the result might well have been different had
Respondent not taken the extra step of adding FREEBIES as meta-tags to
its
domain name website.
The Panel finds
that the requirements of Policy ¶ 4(a)(iii) relative to a showing of “bad
faith” have been satisfied.
Having determined that all three of the required
showings have been satisfied, the Panel concludes that the requested relief
should
be granted.
It is accordingly ORDERED that the domain name <freebie.com> should be and
is hereby transferred from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: July 15, 2002.
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