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Generic Top Level Domain Name (gTLD) Decisions |
Savin Corporation v. savinsucks.com
Claim Number: FA0201000103982
PARTIES
Complainant is Savin Corporation, Stamford, CT
(“Complainant”) represented by David A.
Einhorn, of Anderson, Kill &
Olick, P.C. Respondent is savinsucks.com, Milford, CT
(“Respondent”) represented by Peter Sachs.
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name
at issue is <savinsucks.com>,
registered with Network Solutions, Inc.
PANEL
The undersigned
certifies that each of them has acted independently and impartially and to the
best of their knowledge, has no known
conflict in serving as Panelist in this
proceeding.
Anne M. Wallace, Q.C., David H. Bernstein
and David E. Sorkin as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on January 22, 2002; the Forum received
a hard copy of the
Complaint on January 22, 2002.
On January 23,
2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain
name <savinsucks.com> is
registered with Network Solutions, Inc. and that the Respondent is the current
registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the 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 January 24,
2002, a Notification of Complaint and Commencement of Administrative Proceeding
(the “Commencement Notification”),
setting a deadline of February 13, 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@savinsucks.com by e-mail.
A timely Response
was received and determined to be complete on February 12, 2002.
On February 21, 2002, pursuant to Complainant’s request to have the
dispute decided by a three-member
Panel, the Forum appointed Anne M.
Wallace, Q.C., David H. Bernstein and David E. Sorkin as Panelists.
Complainant filed
a Reply on February 19, 2002, and Respondent Filed a Sur-response on February
28, 2002. The Panel has disregarded
both of these submissions. Although Article
7 of The Forum’s Supplemental Rules purports to permit such supplemental
filings, the
Rule does not require a Panel to accept those materials. In fact,
the Supplemental Rule could not require Panels to accept these
supplemental
filings because that would violate Uniform Rule 12 of the ICANN Policy, which
vests the discretion to request and accept
supplemental materials solely with
the Panel. No provider’s Supplemental Rules can override the Policy or Uniform
Rules and the discretion
they vest in the Panels appointed thereunder. Because
no new information or arguments were supplied within the supplemental filings,
and because the Panel had no questions for the parties to address in
supplemental materials, the Panel will
not consider either Complainant’s reply nor Respondent’s Sur-response.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The
domain name <savinsucks.com> is confusingly similar to Complainant’s
registered trademark. Savin holds four valid and subsisting federal trademark
registrations
for the mark SAVIN (Reg. Nos. 2,230,303; 1,174,900; 1,500,782 and
836,540) (the "Savin Marks") in the United States alone. Savin first registered its SAVIN mark in
1968. All of these trademarks are used
in connection with, among other things, business machinery and parts and
services used in connection
therewith, including photocopier, printer and
facsimile machines and parts therefor.
Savin also has registered its mark SAVIN as a domain name
(<savin.com>) with Network Solutions, Inc. and is using that domain
in
connection with a Web site. Moreover,
Savin has spent considerable time and money in advertising and marketing its
products bearing its well-known marks.
Two marks need
not be identical to be likely to be confusing.
See General Electric Co. v.
Pars Int'l Computer, Inc., D2000-0368 (WIPO July 25, 2000) (finding
<1-800-ge.com> to be confusingly similar to GE). There is a likelihood of confusion where a
complainant’s mark is contained in a respondent’s domain name because only
"essential"
or "virtual" identity is needed to establish
confusing similarity under the Policy. See Cellular One Group v. the Design Factory,
D2000-1670 (WIPO Jan. 29, 2001) (holding <cellularoneltd.com> confusingly
similar to CELLULARONE and CELLONE); see
also Heineken Brouwerijen B.V. v. Lott, D2000-1487 (WIPO Jan. 30, 2001)
(holding <planetheineken.com> confusingly similar to HEINEKEN).
In
general, the use of a complainant’s trademark in connection with a generic term
does not avoid the confusing similarity created
by the use of complainant’s
trademark. See Trump, et al. v. Rafeli, FA 100238 (Nat. Arb
Forum Nov. 6, 2001) (finding a likelihood of confusion between TRUMP and
<trumpinternational.net>, <trumphouse.net>,
<trumpland.net>,
<trumpskys.com>, <trumppalace.com>, <trumpair.com> and
<trumptown.com>); Trump
v. Graham,
FA 100177 (Nat. Arb. Forum Nov. 2, 2001) (finding a likelihood of confusion
between TRUMP and <trumptrade.com> and <trumpbarter.com>);
Marriott Int’l, Inc. v. Nicewarner, FA 99692 (Nat. Arb.
Forum Nov. 1, 2001) (finding likelihood of confusion between MARRIOTT and
<marriottcorp.com> and <marriottcorps.com>);
State Farm Mut. Auto. Ins. Co. v. All
Phase Builders, FA 99608 (Nat. Arb. Forum Oct. 11, 2001) (finding likelihood of
confusion between STATE FARM and <statefarm-claims.com>);
Park ‘N Fly Services Corp. v. Level
Propane,
Claim No. FA 99656 (Nat. Arb. Forum Oct. 29, 2001) (finding likelihood of
confusion between PARK ‘N FLY and <parknflyfree.com>
and
<parkandflyfree.com>).
Specifically,
other UDRP panels have found that domain names that simply combine a trademark
and the word “sucks”, are not immune
from scrutiny for likelihood of confusion.
In fact, the majority of panel decisions addressing the issue of whether a
domain name
containing complainant’s trademark next to “sucks.com” have found
the subject domain name confusingly similar to the complainant’s
trademark. See
e.g. Cabela’s Inc. v. Cupcake Patrol,
FA 95080 (Nat. Arb. Forum Aug. 29, 2000) (“Respondent’s domain name is
sufficiently similar to Complainant’s marks that the search
engine results will
confusingly list the Respondent’s domain name when searching for Complainant’s
mark”); Wal-Mart Stores Inc. v. McLeod,
D2000-0662, (WIPO Sept 19, 2000) (“the Panel concludes that a domain name is
‘identical or confusingly similar’ to a trademark for
purposes of the Policy
when the domain name includes the trademark, or a confusingly similar
approximation, regardless of the other
terms in the domain name”); Diageo
PLC v. Zuccarini, D2000-0996, (WIPO Oct. 22, 2000) (“Internet users with
search engine results listing Respondent’s domains are likely to be puzzled
or
surprised by the coupling of Complainant’s mark with the pejorative verb
‘sucks’”); Direct Line Group Ltd. V.
Purge I.T., D2000-0583. (WIPO Aug. 13, 2000) (stating that as to the
similarity between DIRECT LINE and <directlinesucks.com>, “[s]ome
will
treat the additional ‘sucks’ as a pejorative exclamation and therefore
dissociate it after all from the Complainants; but equally
others may be unable
to give it any very definite meaning and will be confused about the potential
association with the Complainants”).
However, Respondent need not
completely confuse Web users in order to damage Complainant. The damage to
Complainant occurs by causing
Web users to go to Respondent’s Web site. See
Diageo PLC v. Zuccarini, D2000-0996
(WIPO Oct. 22, 2000) Diageo PLC v.
Zuccarini, D2000-0996 (WIPO Oct. 22, 2000) (“Such users, including
potential customers of Complainant, are not likely to conclude that Complainant
is the sponsor of the identified websites…it is likely (given the relative ease
by which websites can be entered) that such users
will choose to visit the
sites, if only to satisfy their curiosity. Respondent will have accomplished
his objective of diverting
potential customers of Complainant to his websites
by the use of domain names that are similar to Complainant’s trademark”). Even
those users who would understand that there is no association, might choose to
visit the site, if only to satisfy their curiosity.
This effect would damage
Complainant, to the extent Respondent would intentionally disrupt Complainant’s
business.
Courts and other
UDRP Panels have recognized that the intentional registration of a domain name
in which the second-level domain contains
another’s valuable trademark weighs
in favor of a likelihood of confusion. See Minnesota Min. and Mfg. Co. v. Taylor, 21 F.Supp.2d 1003, 1005
(D.Minn. 1998); Intermatic Inc. v.
Toeppen, 947 F.Supp. 1227, 1235-1236 (N.D.Ill. 1996); Cabela’s Inc. v. Cupcake Patrol, FA 95080 (Nat. Arb. Forum Aug. 29,
2000).
Respondent has
stated that consumers cannot be confused between <savin.com> and <savinsucks.com>,
since consumers looking for SAVIN will not type <savinsucks.com>
in their Web server. Based on the above decisions, Respondent’s argument must
be disregarded.
Respondent’s
domain name contains Complainant’s exact mark SAVIN. Respondent uses Complainant’s SAVIN mark with a generic term,
sucks, which does not indicate the use to which Complainant’s domain
name has
been, is or will be put. The registration and use of <savinsucks.com>
is likely to cause confusion among consumers familiar with the Savin Marks.
At this time, Respondent only “uses”
the domain name <savinsucks.com> passively. Other than passive
use, the only use Respondent could make of the domain name would be as a host
name. Complainant
intended to avoid any dispute if Respondent agreed not to use
the domain name as a host name for a Web site at any time in the future.
Respondent refused to do so. Any such use of <savinsucks.com>
would likely cause confusion among the Web users. Web users would be drawn to
the Web site, which would appear whenever a consumer
typed in the search name
Savin while looking for Complainant’s products on the Internet. Those consumers
would be puzzled by the
association of Complainant with the site.
Respondent does not conceal the fact
that he has specifically appropriated Complainant’s mark for his domain name
registration <savinsucks.com>. Therefore, based on Respondent’s
own admissions and statements the domain name does create, as it is intended
to, confusion
with Complainant’s SAVIN marks.
Registering a
domain name with knowledge that it contains or is confusingly similar to
another’s trademark is a factor evidencing
lack of a bona fide use. See
McNeil Consumer Brands, Inc. v. Meriweb Solutions, D2000-0612
(WIPO Aug. 3, 2000) (listing factors to be evaluated in determining bad faith
and stating that registrant’s knowing use
of a domain name similar to
complainant’s trademark evidences bad faith rather than bona fide use).
Merely using a domain name
containing Complainant’s mark in competition with Complainant does not establish
a bona fide commercial
use. See Backstage Fashion, Inc. v.
Back Stage, Inc., FA 100135 (Nat. Arb. Forum Nov. 5, 2001) (“[u]sing a
domain name identical to Complainant’s service mark with the result of
diverting
potential customers from Complainant to Respondent is not a bona fide
offering of goods”); Park ‘N Fly Services
Corp. v. Level Propane, FA 99656 (Nat. Arb. Forum Oct. 29, 2001) (holding
that use of domain names confusingly similar to complainant’s mark to attract
users to respondent’s Web site is not a bona fide use).
Outside of
Respondent’s registration of the domain name <savinsucks.com>,
Respondent has never used the term or mark SAVIN or SAVINSUCKS. Respondent holds no trademark registration
and has claimed no common law trademark rights to the term SAVINSUCKS or the
terms SAVIN
SUCKS. Other than its registration of the
domain name <savinsucks.com>, Respondent has never used nor made
any claim to the term SAVINSUCKS or the terms SAVIN SUCKS as a mark or
indicator of Respondent’s
business. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶
4(a)(ii).
Respondent has not used the domain name in
connection with a business. Respondent refuses to withdraw the domain name,
despite the
fact that the domain name contains Complainant’s registered
trademark. Respondent’s refusal to
“enter into any agreement regarding any possible use of the domain name”,
strongly suggests that Respondent
will be using the domain name <savinsucks.com> as a host name, and such usage would in fact harm
Complainant.
“Free speech”, does
not grant a registrant the right to use a domain name that is confusingly
similar to complainant’s trademark.
Specifically, in cases where a Web site was
operated under the domain name, panels distinguished “between the domain name
itself
and the contents of the site which is reached through the domain name”. See
Estee Lauder Inc. v.
estelauder.com, estelauder.net and Jeff Hanna, D2000-0869 (WIPO Sept. 25, 2000). Although
a right to free speech was found “to provide a platform to criticize Complainant,”
see id., and “the contents of
Respondent’s websites may also be a perfectly legitimate use of those rights”,
the Panel found that “Respondent
could well have chosen to use a domain name
that was not confusingly similar to Complainant’s and/or in which Complainant
had no
rights.” “Respondent’s free expression rights do not here give it a
right or legitimate interest in the domain name at issue.” See id. Respondent never claimed any bona fide use in the domain
name. Respondent only has made a nonspecific assertion of First Amendment
Right, and a general “right to opine”.
Using a domain name
containing Complainant’s mark to divert customers away from Complainant does
not establish a bona fide fair use. See
Backstage Fashion, Inc. v.
Back Stage, Inc., FA 100135 (Nat. Arb. Forum Nov. 5, 2001) (finding no fair use where
respondent’s site used complainant’s mark to attract customers
and, thus,
divert them away from complainant). As stated above, Respondent has stated his
intention to attract Web users’ attention
to his domain name via the consumer
recognition of the SAVIN mark.
The circumstances listed under § 4(b) are
a non-exclusive list of examples of circumstances evidencing bad faith. See
Fabricas Agrupadas de
Munecas de Onil S.A.(FAMOSA) v. Gord Palameta,
D2000-1689 (WIPO Mar. 14, 2001)(“The examples of bad faith set forth in
[section 4(b) of] the Policy have at least one element in
common: All of them
effectively require that the respondent, at the time the domain name was
registered, harbored an intent that
related in some manner to the complainant
or its trademark. This intent may, of course, be inferred from the respondent's
subsequent
conduct or other surrounding circumstances, but it must have existed
when the domain name was registered in order for that registration
to have
occurred in bad faith”); Koninklijke
Phillips Electronics v. Kurapa C. Kang, D2000-0163 (WIPO Mar. 27, 2001) (stating that
“circumstances of bad faith are not limited to those listed under paragraph
4(b) of
the policy”).
Failure to make any bona fide use of a registered domain
name, that contains another’s trademark, is evidence of bad faith registration
and use of that domain name. See
McNeil Consumer Brands, D2000-0612 (WIPO Aug.
3, 2000) (listing failure to use domain name as factor evidencing bad
faith).
Passive holding
of a domain name has been held to be evidence of bad faith registration and bad
faith use of that domain name. See
Telstra Corporation Ltd. v. Nuclear
Marshmallows, D2000-0265 (WIPO Feb. 18, 2000) (stating the concept of a
domain name “being used in bad faith” is not limited to positive action;
inaction is within the concept and holding that bad faith was shown by passive
holding of a domain name); see also Trump v. Rafaeli, FA 100238 (Nat. Arb. Forum Nov. 6, 2001)(stating
that registration and passive holding support finding of bad faith); Mariott Int’l, Inc. v. Nicewarner, FA
99692 (Nat. Arb. Forum Nov. 1, 2001) (holding that failure to use a domain name
with “a Website or in any other way” is bad faith
use); Cabela's Inc. v. Cupcake Patrol, FA 99508 (Nat. Arb. Forum Aug. 29,
2000) (finding passive holding of <cabelassucks.com> to constitute bad
faith); Solomon R. Guggenheim Found. v.
Zuzazu, FA 95319 (Nat. Arb. Forum Oct. 5, 2000); Marubeni Corp. v. Eagle Data Ltd., FA 95418 (Nat. Arb. Forum Oct.
2, 2000).
Respondent currently is making no
Web or Internet based use of the domain name <savinsucks.com> and
has stated that he intends to use it to harass Complainant. Such passive use of
the domain name is evidence of Respondent’s
bad faith.
Other than passive use, the only use Respondent could make
of the domain name would be as a host name. When Complainant attempted
to
negotiate a settlement of the matter, Respondent refused to “enter into any
agreement regarding any possible use of the domain
name”. Complainant is left
to assume that Respondent intends to use his domain name as a host name.
Respondent is perfectly aware of the fact
that using the domain name as a host name would divert consumers from Complainant,
to Respondent’s
Web site. As stated above, the majority of panel decisions
addressing the issue of whether a domain name containing complainant’s
trademark next to “sucks.com,” have found, against Respondent’s opinion, that
the subject domain name was confusingly similar to
the complainant’s trademark.
Respondent has stated his intent to
express his negative opinion about Complainant “whether it be through verbal,
written or electronic
means.” Respondent’s purpose in using the domain name,
passively or otherwise, is to attract would be Savin consumers. By attracting
consumers away from Complainant, Respondent intentionally damages Complainant’s
business. Such use by Respondent does not constitute
a legitimate or bona fide
use of the domain name. Respondent has no right to use Complainant’s mark in
order to attract Web users
even if his intentions are to criticize. By
diverting consumers away from Complainant into Respondent’s Web site,
Complainant would,
through Respondent’s bad faith use of the domain name, be
damaged.
On December 21, 1999, March 23, 2000 and
April 27, 2000 respectively, in an attempt to settle this dispute and to
alleviate the confusion
caused by Respondent’s registration of the domain name
<savinsucks.com>, Complainant wrote letters to Respondent.
Complainant intended to avoid any dispute if Respondent simply withdrew the
domain
name <savinsucks.com>, or if Respondent agreed not to use
the domain name as a host name for a Web site at any time in the future.
Respondent has refused to withdraw the domain name.
Respondent believes he can use the domain name registration system as a tool
for
harassing Complainant, by manipulating Complainant’s own trademark. His
continued holding of the domain name is his way of harming
Complainant, as
stated by him.
Respondent has not used the domain
name <savinsucks.com> for any legitimate business purpose and has
never made a legitimate non-commercial use of that domain name. It appears,
based
on Respondent’s actions, that Respondent is now merely using the domain
name <savinsucks.com> in order to harass Complainant, tarnish the
Savin Marks and harm Complainant’s business.
Thus, it is clear that Respondent’s actions constitute bad faith use of
that domain name under the UDRP § 4(b).
Respondent’s only
purpose in registering the domain name <savinsucks.com> was to harass Complainant and to harm Complainant’s
business. Other than his passive use, the only use Respondent could make of the
domain name would be to use it as a host name. Respondent refused to agree not
to use the domain name <savinsucks.com> as a host name in the
future. Usage of the domain name as a host name would cause consumers to be
drawn away from Complainant’s Web
site to another Web site, which would damage
Complainant.
First, such
use by Respondent would cause Complainant money damages. Complainant’s Web site
contains information about all of Complainant’s
goods and services, and
includes also a list of all of Complainant’s dealers to make it easy for the
consumers to find a dealer near
them to purchase Complainant’s goods. Also,
since Complainant’s Web site contains substantial promotion and advertisement
material,
it is apparent that Complainant’s Web site, at <savin.com>, is
an essential tool for Complainant’s trade. Any active use by
Respondent would
cost Complainant sales and the real dollar value of those sales and created a
likelihood of confusion with Complainant’s
SAVIN MARKS. Each diversion of
consumers by Respondent, and a loss of clientele due to such diversion, would
cause Complainant substantial
damages.
Second, Respondent’s use of the domain
name is disrupting to Complainant in that Complainant, having a duty to protect
its trademarks
under U.S. Trademark Law, see Electro-Coatings, Inc. v. Precision
Nat’l Corp., 204 U.S.P.Q. 410, 421 (TTAB 1979), has been forced to
bring this proceeding against Respondent in order to enforce its trademark
right in the Savin Marks and protect
itself from infringement and consumers
from confusion.
Registering and using a domain name that is known
to contain another’s trademark evidences bad faith registration of that mark. See
Umbers
& Toltec Scenic R.R. Comm’n v. Ravin, FA 99599 (Nat. Arb. Forum Oct. 30,
2001) (holding respondents’ knowledge of complainant’s mark to evidence
registrants’ bad faith
use of the mark for a domain name offering railroad
services); see also Trump v. Graham, FA 100177 (Nat. Arb. Forum Nov. 2,
2001) (holding respondent’s likely knowledge of the TRUMP mark to be evidence
bad faith). Respondent,
is undoubtedly aware of the goodwill and reputation of the SAVIN MARKS.
Respondent nonetheless registered the domain name
<savinsucks.com>,
incorporating Complainant’s registered and well-known trademark. Any possible
use by Respondent will harass Complainant and harm
Complainant’s business,
using its own marks for that purpose.
Respondent
has intentionally caused confusion with the SAVIN MARKS and continues to
intentionally use the domain name in bad faith.
Respondent, with the
intent to harass Complainant and harm Complainant’s business, registered a
domain name that incorporates the
Savin Marks next to a generic term, “sucks.”
In his reply to the cease and desist letters sent to
Respondent on December 21, 1999 and March 23, 2000, Respondent has expressed
his general intent to harass Complainant and to tarnish Complainant’s trademark
(“..does Savin suck? … That is my opinion and I may
express it in any legal way
I see fit, whether it be through verbal, written or electronic means”).
Further evidencing
Respondent’s bad faith, he has registered the domain name
<andersonkillsucks.com> after corresponding with
Complainant’s counsel
regarding <savinsucks.com>. Anderson Kill & Olick is the firm
serving as Complainant’s counsel and <andersonkill.com> is the domain
name used by the
firm. By that, Respondent has clearly show his intent to
harass Complainant, and registration of <andersonkillsucks.com> was
made
to “prove” to Complainant that Respondent does not believe he can be stopped
from manipulating business names with the sole
purpose of harassment. (“I have
just registered the domain name andersonkillsucks.com”).
Respondent is aware of
the fact that Anderson Kill & Olick is a famous mark. Respondent is a
former attorney with Anderson Kill
& Olick and is therefore aware of the
long use that the firm has made of this name to identify its legal services.
Before registering
<andersonkillsucks.com>, Respondent undoubtedly
visited <andersonkill.com>, which Anderson Kill & Olick is using
as
its host name for a Web site that promotes its legal services. As is evidenced
in the Web site, Anderson Kill & Olick is a
very established firm, with
branches in many locations in the U.S., and enjoys a good reputation. Further, at the time Respondent was an attorney employed by
Anderson Kill & Olick, Complainant was a client of the firm. Thus,
Respondent’s malicious intent in registering both <savinsucks.com>
and <andersonkillsucks.com> is clear.
Such pattern of conduct has been viewed by other UDRP panels
as an additional evidence of bad faith. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec.
9, 2000) (viewing the registration of other domain names incorporating well
known marks as a pattern of conduct
indicating bad faith); Koninklijke Phillips Electronics v.
Kurapa C. Kang, D2000-0163 (WIPO Mar. 27, 2001).
a. The Respondent’s domain name,
<savinsucks.com> is neither identical, nor confusingly similar to
Complainant’s trademark.
Complainant has
not alleged that Respondent’s domain name is “identical” to Complainant’s trademark. Rather, Complainant has alleged that
Respondent’s domain name is “confusingly similar” to Complainant’s
trademark. Complainant first claims <savinsucks.com>
is “confusingly
similar” because it contains Complainant’s trademark “SAVIN.” The decisions Complainant has cited in
support of this proposition are distinguishable from this proceeding. Most of the domain names at issue in the
cited decisions had been registered by “cybersquatters,” with the intent to
profit from a
subsequent sale of the name.
Complainant has not alleged, nor could it truthfully allege that
Respondent is a “cybersquatter.”
Therefore, any decision in which “cyber squatting” was found is distinguishable
from this proceeding. Furthermore, the
domain names at issue in the cited decisions did not criticize the
complainants’ trademarks. The
Respondent’s domain name does clearly criticize Complainant’s trademark. The Policy was not intended to provide a
quick and easy means of quashing criticism.
Complainant next alleges that Respondent’s
domain name is “confusingly similar” because it contains Complainant’s
trademark “SAVIN,”
plus the word “SUCKS.”
The decisions Complainant cites in support of this proposition are
again, distinguishable, because they also involved domains names
that had been
registered by “cybersquatters.”
Moreover, courts and panels have found that such use of the word “SUCKS”
causes no confusion.
In Lucent Technologies, Inc. v.
Lucentsucks.com, 95 F.Supp.2d 528 (E.D. Va. 2000), the court noted that “the
average consumer would not confuse <lucentsucks.com> with a website
sponsored by
plaintiff." In Bally
Total Fitness v. Faber, 29 F.Supp.2d 1161 (C.D. Cal. 1998), where the
defendant had created a “Bally Sucks” website, the court held that the parties’
marks were not similar,
because the defendant’s addition of the word
"sucks" [to the plaintiff’s trademark] was a major, rather than a
"minor
change."
In Lockheed Martin Corporation v. Dan Parisi,
D2000-1015 (WIPO Jan. 26, 2001) (domain names at issue: <lockheedsucks.com>
and <lockheedmartinsucks.com>.), the panel
held that “[b]oth common sense
and a reading of the plain language of the Policy support the view that a domain
name combining a
trademark with the word "sucks" or other language
clearly indicating that the domain name is not affiliated with the trademark
owner cannot be considered confusingly similar to the trademark.” In Wal-Mart Stores, Inc. v.
wallmartcanadasucks.com, D2000-1104 (WIPO Nov. 23, 2000) the panel held “a
reasonably prudent user would not mistake the wallmartcanadasucks.com site for
any of Wal-Mart's official sites.” The Wal-Mart
panel also expressed doubt as to whether “a domain name including
"sucks" ever can be confusingly similar to a trademark
to which
"sucks" is appended.”
Complainant next alleges that
Respondent’s domain name is “confusingly similar” because web users may be
confused when they visit
Respondent’s website, if only to satisfy their
curiosity. Complainant has admitted
Respondent has no website, so no such “visits” could occur. For a web user’s curiosity to be piqued at
all, there would have to be an occurrence of <savinsucks.com>
on the World Wide Web for him to investigate. At this writing, the string <savinsucks.com>
does not appear in any Internet search engine despite the
fact that it has been registered for over two years.
Indeed, the only way web users could even
attempt to “visit” <savinsucks.com> would
be if they intentionally typed <savinsucks.com>
into their web browser.
In that case, they would not be looking for “SAVIN,” they would be
looking for <savinsucks.com>. Complainant has not offered any evidence
that web users looking for the “SAVIN” website instinctively type <savinsucks.com>
into their browsers.
Complainant next alleges Respondent’s
intentional registration of a domain name that contains another’s valuable
trademark weighs
in favor of finding a “likelihood of confusion.” Again, the cited decisions are
distinguishable because they involved domains names registered by “cybersquatters.”
Complainant next alleges, “[t]he registration
and use of <savinsucks.com> is likely to cause
confusion among consumers familiar with the Savin Marks.” First, Complainant has cited no source for
the proposition that registration in and of itself can cause confusion. Second, Complainant has stated “Respondent
does not actively use the domain name” but “[a]ny such [future] use would
likely cause
confusion among the Web users.”
Thus, Complainant admits that the Respondent’s non-active “use” of the
domain name causes no confusion with respect to Complainant’s
trademark.
Since all of
the decisions cited by Complainant are distinguishable from the present
proceeding; since Complainant has not provided
any evidence of actual
confusion; and since Complainant’s own admissions and statements show that
there is no confusion, Complainant
has failed to prove that <savinsucks.com>
is identical, or confusingly similar to Complainant’s trademark.
b.
Respondent
has rights or legitimate interests in respect to the domain name, <savinsucks.com>”
Respondent
has neither claimed any use of <savinsucks.com>
in connection with a bona fide offering of goods or
services, nor has it claimed to be known by the domain name <savinsucks.com>.
Complainant
first claims that Respondent’s refusal to “enter into any agreement regarding
any possible use of the domain name strongly
suggests that Respondent will be
using the domain name <savinsucks.com>
as a host name.”
Respondent has no obligation to accept any settlement offer. His refusal to accept any such offer does
not “strongly suggest” anything, nor does it have any bearing on whether he has
rights or
legitimate interests in respect to the domain name.
Complainant
next cites Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff
Hanna, D2000-0869 (WIPO Sept. 25, 2000) in support of the proposition that
“free speech does not grant a registrant the right to use a
domain name that is
“confusingly similar” to complainant’s trademark.” The respondent’s domain name in Estée Lauder was nearly
identical to complainant’s trademark.
The Respondent’s domain name here is not even “confusingly
similar.” The complainant in Estée
Lauder “had also submitted considerable and largely unrefuted evidence of
actual confusion.” Id.
Complainant here has provided none.
The Estée Lauder Panel also found that Respondent had made a
“deliberate attempt to attract or divert Internet users who make a common error
or spelling
mistake in their Internet search.” Respondent in this proceeding
has made no use of his domain name and it appears in no search engine.
Complainant
next cites Backstage Fashion, Inc. v. Back Stage, Inc., FA 100135 (Nat.
Arb. Forum Nov. 5, 2001) in support of the proposition that “using a domain
name containing Complainant’s mark
to divert customers away from Complainant
does not establish a bona fide fair use.”
Again, Complainant admits that Respondent has no website associated with
<savinsucks.com>,
so he cannot have ever used his domain name to divert customers away from Complainant’s.
Complainant
next claims, “Respondent has stated his intention to attract Web users’
attention to his domain name via the consumer
recognition of the SAVIN
mark.” Respondent has neither stated
nor implied any such intention. By
claiming he has, Complainant is intentionally misleading this Panel. Since the Exhibits cited contain no such
statements or implications, Complainant’s allegation must be disregarded.
Paragraph
4(c) of the Policy reads “[a]ny of the following circumstances, in particular
but without limitation . . . shall demonstrate your rights or legitimate
interests to the domain name for purposes of Paragraph 4(a)(ii). (Emphasis added). Paragraph 15(a) of the Rules provide that “The Panel must
“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.” Since
both Complainant and Respondent here are U.S. entities, and since both parties
have cited U.S. law in their submissions, the
Panel must deem applicable “the
principles of law” found in the United States Constitution. See Bridgestone Firestone, Inc. v. Myers,
D2000-0190 (WIPO July 6, 2000)
Complainant
claims, “[the] Respondent has no right to use Complainant’s mark in
order to attract Web users even if his intentions are to criticize.” (Emphasis added.) Although Complainant’s trademark rights are valid, they are
nonetheless limited by the Respondent’s First Amendment rights. See L.L.
Bean, Inc. v. Drake Publishers, Inc., [1987] USCA1 49; 811 F.2d 26 (1st Cir.), cert. denied,
483 U.S. 1013, 107 S.Ct. 3254, 97 L.Ed.2d 753 (1987). Under the First Amendment of the United States Constitution,
Respondent has an unfettered right to hold or express his opinion that “Savin
Sucks”-- through oral, written or electronic means via the registration of a
domain name.
Complainant
fails to acknowledge Bally Total Fitness Holding Corp. v. Faber, 29
F.Supp.2d 1161 (C.D. Cal. 1998), where the court held that defendant was
exercising his right to publish critical commentary about Bally when he
operated a “Bally Sucks” website. The Bally
court found the defendant could not have expressed his opinion about Bally
without making reference to the trademark “Bally.” Similarly, Respondent cannot express his opinion about “SAVIN” in
his domain name without making reference to “SAVIN.”
Complainant
also fails to acknowledge several UDRP decisions that concur with Bally. See Bloomberg L. P. v. Secaucus Group,
FA 97077 (Nat. Arb. Forum June 7, 2001); (The exercise of free speech for
criticism and commentary also demonstrates a right or
legitimate interest in
the domain name.); Bosley Medical Group v. Kremer, D2000-1647 (WIPO Feb.
28, 2001) (Respondent’s use of domain name <bosleymedical.com> as a
consumer commentary site was clearly
fair use.); Wal-Mart Stores, Inc. v.
wallmartcanadasucks.com, D2000-1104 (WIPO Nov. 23, 2000) (Respondent has
rights and legitimate interests to use the domain name <wallmartcanadasucks.com>
as a forum for criticism of the complainant); Compusa Mgmt. Co. v.
Customized Computer Training, Claim Number: FA 95082 (Nat. Arb. Forum Aug. 17, 2000) (Respondent’s First Amendment right to
offer criticism of the goods and services provided by Complainant via the
domain names <stopcompusa.com>
and <bancompusa.com> are as
legitimate as any commercial activity.); Bridgestone Firestone, Inc. v.
Myers, D2000-0190 (WIPO July 6, 2000) (Respondent has free speech rights
and legitimate First Amendment interests in the domain name
<bridgestone-firestone.net>.);
Respondent
also has a legitimate interest in preserving the freedom of expression for
others. Respondent is an attorney and
advocate for Constitutional rights with respect to the Internet. He has testified at the request of the ACLU
before a Congressional Panel on "4th Amendment Issues Raised by the FBI’s
‘Carnivore’
Program." See
http://www.house.gov/judiciary/sach0724.htm.
Respondent consults to other attorneys and provides commentary to the
media on Constitutional issues with respect to the Internet. Respondent has appeared in national
newspaper and magazine articles, as well as in radio and television newscasts.
For the aforementioned
reasons, Respondent is making a legitimate noncommercial and fair use of the
domain name, without intent of
commercial gain to misleadingly divert
consumers, or to tarnish the trademark or service mark at issue. Therefore, Respondent does have rights or
legitimate interests in respect of the domain name <savinsucks.com>.
c.
<savinsucks.com>
was not registered in
bad faith and is not being used in bad faith.
Complainant
has failed to prove that the Respondent’s domain name has been registered and
is being used in bad faith. Complainant
has made no allegations nor offered any evidence pursuant to any of the four
examples in Paragraph 4(b) as evidence of
registration and use in bad
faith. Instead, Complainant alleges
other “evidence” of bad faith as it is entitled to do “without limitation” in
accordance with Paragraph
4(b).
“The
general principle taught by precedents seems to be that, when a –SUCKS domain
name has been registered for the main purpose of
making money, it has been
registered in bad faith, while when the purpose was really to provide criticism,
political or otherwise,
a finding of bad faith would not be appropriate.” Caixa d’Estalvis y Pensions de Barcelona
("La Caixa") v. Namezero.com, D2001-0360 (WIPO May 3,
2001). Complainant has not alleged, nor
could it truthfully allege that Respondent is a “cybersquatter.”
Complainant
first offers the Respondent’s failure to use the domain name in a bona fide
manner as evidence of bad faith. There
is no requirement, contractual or otherwise that a domain name be “used” in
association with any particular type of “server.” Thousands, if not millions of domain names are not “used” in
association with any servers. Indeed,
Complainant itself holds several domain names passively.
Complainant
cites McNeil, for the proposition that “failure to make any bona fide
use of a registered domain name, that contains another’s trademark, is evidence
of bad faith registration and use of that domain name.” In McNeil, the respondent registered
the domain name <Tylenol.org>, but never used it. The Panel held that by holding the domain
name passively, the respondent prevented the complainant from registering and
using the
name itself. McNeil Consumer Brands, D2000-0612 (WIPO Aug. 3,
2000). That decision is distinguishable
from this matter. The respondent in McNeil
had registered Complainant’s exact trademark “TYLENOL,” and no more. Thus, complainant could not register its
exact trademark. Respondent here has
not registered Complainant’s exact trademark “SAVIN,” alone. Therefore, Complainant is not preventing
Complainant from registering its exact trademark. In fact, Complainant already owns the “.COM” version of the domain
name, which contains no more than its exact trademark.
Complainant
next offers Respondent’s “passive use” as evidence of bad faith, citing Telstra
Corp. Ltd. v. Nuclear Marshmallows, D2000-0265 (WIPO Feb. 18, 2000). Respondent believes the concept of “passive
use” in Telstra is ill-conceived.
It should also be noted that the respondent in Telstra never
filed a Response. Under Telstra,
“passive use” of a domain name means not using it in connection with any Internet
services, such as the web. If one
registers a domain name and associates his domain name with an Internet
service he uses it “actively.” If one
registers a domain name and does no more, he uses it “passively.” Thus, the phrase “passive use” becomes synonymous
with the word “registration,” and not synonymous with the word “use.”
Therefore,
in accordance with the standard rules of statutory construction, the
phrase “registration and use” in Paragraph 4(b) of the Policy
cannot logically
be interpreted as meaning “registration and passive use.”
Although
Respondent believes the concept of “passive use” is flawed, his domain name
falls within the exception of its Telstra test nonetheless. The Telstra panel held that
"passive holding" amounts to "use in bad faith" when
"it is not possible to conceive of
any plausible actual or contemplated
active use of the domain name by Respondent that would not be
illegitimate." It is very possible
to conceive of several “plausible and legitimate” active uses for <savinsucks.com>,
including consumer commentary, which is “speech protected by
the First Amendment.” Bally,
supra at 1167. Thus, the Respondent’s
“passive holding” of <savinsucks.com>
fits well within Telstra’s exception for domain names
that do have possible “plausible and legitimate” active uses. See
also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260
(WIPO Nov. 23, 2000)
The Telstra
Panel also held that the complainant must prove that the respondent both
registered the domain name in bad faith and used the domain
name in bad
faith. Thus, for bad faith to exist
here, Respondent (1) must be using the domain name in bad faith; and (2)
Respondent must have had the intent to use the domain name in bad faith at the
time he registered it. Complainant
admits that Respondent is not “actively using” the domain name, and the
Respondents “passive use” falls within the “plausible
and legitimate” exception
of Telstra. Complainant offers
the following “evidence” of malicious intent:
“. . . at the time Respondent was an attorney employed by
Anderson Kill & Olick, Complainant was a client of the firm. Thus,
Respondent’s
malicious intent in registering both savinsucks.com and
andersonkillsucks.com is clear.”
Clear? The fact that Respondent was, seven years
ago one of several hundred attorneys employed by Complainant’s counsel’s
firm is entirely irrelevant as to the question of whether Respondent
registered
<savinsucks.com>
in bad faith two years ago (5 years after resigning from
the firm) and has used it in bad faith at some point during the past two
years. Since Complainant offers no
relevant evidence that Respondent had any bad faith intent at the time he
registered <savinsucks.com>, the
Telstra test has not been met and bad faith cannot be found.
Complainant
next offers the Respondent’s refusal to agree to a settlement offer as evidence
of bad faith. Since Respondent had no
obligation to accept any settlement offer, his refusal to settle has no bearing
on whether the Respondent’s
domain name was registered and is being used in bad
faith.
Complainant
next offers several unsubstantiated allegations of “harassment” on the part of
Respondent as evidence of bad faith.
Purchasing a domain name that may be used, if used at all, for “consumer
commentary” is not “harassment.”
Refusing to comply with a “cease and desist” letter is not
“harassment.” Using citations of legal
precedent in response to “cease and desist” letters is not “harassment.” Respondent legally purchased a domain name
and has abided by all of the terms and conditions of the Registrar’s
Registration Agreement. Respondent has
done nothing to harass Complainant.
Complainant
next offers the Respondent’s registration of a domain name that contains its
trademark as evidence of bad faith.
Again, the decisions cited by Complainant involved domain names registered
by “cybersquatters.” See Umbers
& Toltec Scenic R.R. Comm’n v. Ravin, FA 99599 (Nat. Arb. Forum Oct.
30, 2001); Trump v. Graham, FA 100177 (Nat. Arb. Forum Nov. 2,
2001). Since Complainant has not
alleged that Respondent is a “cybersquatter,” the decisions cited are
distinguishable. Moreover, “An
individual who wishes to engage in consumer commentary must have the full range
of marks that the trademark owner has
to identify the trademark owner as the
object of the criticism." See Bally,
supra at 1165.
Complainant last offers Respondent’s registration of
<andersonkillsucks.com>, which contains Complainant’s counsel’s firm
name,
plus the word “sucks,” as evidence of bad faith. Respondent registered
<andersonkillsucks.com>, in accordance with the same rights and legitimate
interests he has to register
<savinsucks.com>. Respondent
has a First Amendment right to register and use <andersonkillsucks.com>
for, if no other reason, consumer commentary.
See Bally, supra.
Furthermore,
the “pattern of conduct” component of Paragraph 4 (b) (ii) of the Policy refers
to domains that are registered “in order
to prevent the owner of the trademark
or service mark from reflecting the mark in a corresponding domain name.” Complainant has not alleged that Respondent
registered <savinsucks.com>to prevent Complainant
from registering it.
Lastly,
Respondent could not have possibly “used” his domain name actively or
“passively” at the time Complainant initiated this proceeding
on January 22,
2002, because the domain name had been deactivated three months prior on
October 22, 2001. See Complainant’s Exhibit 3. When a domain is in a
“deactivated” state, the domain name holder cannot use in any way, shape or
form.
“When a domain name is deactivated, the Domain Name System (DNS)
will no longer have the information needed to resolve the domain name
to its
corresponding Internet Protocol (IP) number(s), effectively disabling the
domain name as a tool for locating the related computers
or organizations.” See
http://www.netsol.com/cgi-bin/glossary/lookup?term=Deactivation
4. OTHER
LEGAL PROCEEDINGS
Respondent
is not aware of any other proceedings commenced in connection with the domain
name <savinsucks.com>. ICANN
Rule 3(b)(xi).
Additional
submissions were not considered by the Panel.
FINDINGS
This
Panel finds that Complainant has not established bad faith on the part of Respondent.
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.
Identical
and/or Confusingly Similar
In
light of or finding with respect to the third element, the Panel has not
considered this element.
Rights
or Legitimate Interests
In
light of or finding with respect to the third element, the Panel has not
considered this element.
Registration
and Use in Bad Faith
With
respect to this element, the paragraph 4(b) of the Policy reads:
“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 you have
registered or you have 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 your
documented out-of-pocket costs directly related to
the domain name; or
(ii) you have 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 you have engaged in a pattern of
such conduct; or
(iii) you have registered the domain name primarily
for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have
intentionally attempted to attract, for commercial gain, Internet users to your
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 your web site or location or of a product or service on your web
site or location
On
a review of the evidence, none of the four enumerated circumstances exist in
this case, for the following reasons:
1. There is no evidence that the name was
acquired primarily for the purpose of sale.
2. There
is no evidence of intent to prevent the owner from reflecting the mark, and in
any event there is no pattern.
3. There
is no evidence that the primary purpose of the registration was to disrupt the
business of the Complainant nor is the Complainant
a "competitor" of
the Respondent within the meaning of the policy.
4. There
is no site operating at this time, nor is there any evidence that Respondent
intends for commercial gain, to attract Internet
users to a site.
Given that none of the four enumerated policy criteria with
respect to bad faith have been met, that leaves the Panel with the question
of
whether there is bad faith for some other reason. On our reading of the Policy,
each Panel is responsible to determine whether
there has been bad faith. The
four cited examples are situations where, if the evidence exists, the Panel must
find bad faith. This
does not, however, preclude the Panel finding that other
circumstances amount to bad faith in a particular case. The paragraph says,
"in particular but without limitation".
The Panel has examined all the evidence and arguments carefully,
and cannot find any other circumstances in this case that amount
to bad faith.
DECISION
The Complaint of Savin
Corporation with respect to the domain name, <savinsucks.com>, is hereby dismissed.
Anne M. Wallace, Q.C.
David H. Bernstein
David E. Sorkin, Panelists
Dated: March 5,. 2002
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