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Generic Top Level Domain Name (gTLD) Decisions |
Commerce LLC v. Charles M. Hatcher
Claim Number: FA0203000105749
PARTIES
The
Complainant is Commerce LLC,
Baltimore, MD (“Complainant”) represented by Sherry H. Flax. The
Respondent is Charles M. Hatcher,
Raceland, KY (“Respondent”), proceeding pro
se.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <goodtidings.com>
(“the Domain Name”),
registered with Tucows.
PANEL
The
undersigned certifies that he has acted independently and impartially and, to
the best of his knowledge, has no known conflict
in serving as Panelist in this
proceeding.
David
H. Bernstein as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 5, 2002; the Forum received
a hard copy of the
Complaint on March 13, 2002.
On
March 5, 2002, Tucows confirmed by e-mail to the Forum that the domain name <goodtidings.com> is registered
with Tucows and that the Respondent is the current registrant of the name. Tucows has verified that Respondent is bound
by the Tucows 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
March 18, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 8,
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@goodtidings.com by e-mail.
A
timely Response was received and determined to be complete on March 21, 2002.
On March 27, 2002, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed David H.
Bernstein as Panelist.
RELIEF SOUGHT
The
Complainant requests that the Domain Name be transferred from Respondent to
Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
alleges that the Domain Name is identical to its mark, GOOD TIDINGS, a version
of which (with design elements) is registered
with the U.S. Patent and
Trademark Office for use in connection with Christmas ornaments and decorations
(Reg. No. 1,240,014, registered
May 31, 1983).
Complainant
contends that Respondent has no rights or legitimate interests with respect to
the Domain Name because it has made no
use of, or demonstrable preparation to
use, the Domain Name in connection with the bona fide offering of goods or
services. Moreover,
Complainant states that, to the best of its knowledge,
Respondent has never been known by the Domain Name and has never sought to
obtain trademark rights in the Domain Name.
Finally, Complainant denies that Respondent is making a legitimate
noncommercial or fair use of the Domain Name.
The
Complainant’s allegations of bad faith, in their entirety, are as follows: “The domain name should be considered as
having been registered in bad faith because Complainant is the rightful owner
of the service
mark, having made continuous use of the GOOD TIDINGS mark since
1979. Respondent has made no use
whatsoever of the goodtidings.com domain name.
Respondent has failed and refused to transfer the domain name to
Complainant.”
B.
Respondent
Although
Respondent admits that the Domain Name is identical to the word mark portion of
the trademark referred to by Complainant,
it asserts that Complainant has not
proven its ownership of the GOOD TIDINGS mark.
Respondent
asserts it has a right to use the phrase “good tidings” in its generic sense as
a domain name in connection with delivering
news and announcements of a
religious nature. As to Complainant’s
claim that Respondent is not currently using the Domain Name, Respondent
argues, first, that it uses the Domain
Name for legitimate e-mail purposes,
and, second, that it ceased the development of a web site after receiving
notice of the current
dispute.
Respondent
alleges that it did not register or use the Domain Name in bad faith. It argues it had a good faith basis for
believing it was entitled to register and use the Domain Name because the
phrase “good tidings”
is used extensively by third parties. Respondent also notes that its use of this
generic phrase cannot constitute bad faith because Complainant’s registration
is a design
mark and Complainant’s mark is neither famous nor distinctive. In addition, Respondent denies registering
the Domain Name in order to sell it to Complainant or Complainant’s
competitors, to prevent
Complainant from reflecting its mark in a domain name,
to disrupt Complainant’s business, or to attract Internet users to its web
site
by creating a likelihood of confusion.
Finally,
Respondent requests that the Panel make a finding of Reverse Domain Name
Hijacking against Complainant, as provided for by
Paragraph 15(e) of the Rules
for the Uniform Domain Name Dispute Resolution Policy (the “Rules”).
FINDINGS
Complainant has submitted a printout from
the U.S. Trademark Electronic Search System indicating that “Commerce
Distributors, Inc.”
is the current owner of a United States Trademark
Registration for the design mark GOOD TIDINGS (and design) for flasher control
units and for Christmas ornaments and decorations (Reg. No. 1,240,014,
registered May 31, 1983).
Respondent registered the Domain Name
with Tucows Inc. on February 5, 2001.
DISCUSSION
Paragraph 15(a) of 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 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 with respect to the domain
name; and
(3)
the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The record is unclear on the relationship
between Complainant (Commerce LLC) and Commerce Distributors, Inc., the entity
listed as
the owner of the GOOD TIDINGS (and design) trademark
registration. Complainant has not
submitted evidence that the registration was assigned to it, or that the
registrant changed its name. Because
the resolution of that question is irrelevant to the ultimate decision, the
Panel assumes for purposes of this decision that
Complainant has rights in the
GOOD TIDINGS mark. Although Respondent
alleges that Complainant’s mark is generic, ownership of a federal trademark
registration is prima facie evidence of ownership of a valid
trademark. See EAuto, LLC v.
Available-Domain-Names.com, D2000-0120 (WIPO Apr. 13, 2000).
The Panel also finds that the Domain Name
is identical to Complainant’s mark. The
only difference between the word portion of Complainant’s mark and the Domain
Name is the absence of spaces and the addition of
the “.com” gTLD – differences
that are irrelevant when considering the similarity of a domain name (which
cannot have spaces and
must have a gTLD) to a trademark. See Universal City Studios, Inc. v.
G.A.B. Enterprises, D2000-0416 (WIPO June 29, 2000). Moreover, the design elements of
Complainant’s mark cannot be captured in a domain name and thus are considered
irrelevant for purposes
of this analysis.
See General Mach. Prod. Co. v. Prime Domains, FA 92531
(Nat. Arb. Forum Mar. 17, 2000); Playboy Enter. Int’l, Inc. v. Rodriguez,
D2000-1016 (WIPO Nov. 7, 2000).
Rights or Legitimate Interests
Complainant has made a prima facie showing
that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low since it is
difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent
has never been known by the Domain Name and has not used the Domain Name for
any purpose. These unsupported
assertions leave much to be desired, particularly in light of the fact that
Complainant cannot claim an exclusive
and presumptive right to a generic phrase
like “good tidings.” However, the Panel
finds that Complainant’s allegations, though sparse, are sufficient to make a prima
facie showing in regard to the legitimacy element.
Once a Complainant makes a prima facie
showing that a Respondent lacks rights to the domain name at issue, the burden
of production shifts to the Respondent to come forward
with proof of its rights
to or legitimate interests in the domain name.
As explained in Document Technologies, Inc. v. International Elec.
Communications Inc., D2000-0270 (WIPO June 6, 2000):
This “burden
shifting” is appropriate given that Paragraph 4(c) of the Policy, which is
entitled “How to Demonstrate Your Rights to
and Legitimate Interests in the
Domain Name in Responding to a Complaint,” discusses the kind of evidence a Respondent
should provide to show that it has rights to or legitimate interests in the
domain name. The burden of proof, however, does not shift
as the Policy makes
clear that “the complainant must prove that each of these three elements are
[sic] present.” Policy, ¶ 4(a).
According to Paragraph 4(c) of the
Policy, Respondent may demonstrate its rights to or legitimate interests in the
Domain Name by
proving any of the following circumstances:
(i) before any notice to it of the
dispute, its use of, or demonstrable preparations to use, the domain name or a
name corresponding
to the domain name in connection with a bona fide offering
of goods or services; or
(ii) it (as an individual, business, or
other organization) has been commonly known by the domain name, even if it has
acquired no
trademark or service mark rights; or
(iii) it is making a legitimate
noncommercial or fair use of the domain name, without intent for commercial
gain to misleadingly divert
consumers or to tarnish the trademark or service
mark at issue.
To qualify under paragraph 4(c)(i),
Respondent must show “use of, or demonstrable preparations to use” the Domain
Name. Respondent asserts that it is
using the Domain Name as the host name of its e-mail address. It is true that pointing to a web site is
only one possible use of a domain name and that using a domain name in
connection with an
e-mail address may constitute a legitimate use. See, e.g., Pueblo Int’l, Inc. v.
Pueblo Tech. Publ’g, FA 95252 (Nat. Arb. Forum Aug. 7, 2000) (finding that
“Respondent’s utilization of the domain name as an e-mail address, although
not
as a website,” is sufficient to show rights and legitimate interests in the
domain name). In this case, though,
Respondent has not provided any proof that it uses the e-mail address, other
than the bald assertion that it
does.
Respondent’s defense on this point is thus as stark as Complainant’s
allegations.
Likewise, Respondent has not shown any demonstrable preparations to use the
Domain Name. Respondent claims its
preparations to publish a website were halted at the time it received
Complainant’s demand letter. While the
failure to publish a web site for seven months between domain name registration
and receipt of a demand letter might be
excusable, see Meredith Corp. v.
City Home, Inc., D2000-0223 (WIPO May 18, 2000) (non-use of domain name for
eight months is reasonable time to engage in research and development),
the
Panel cannot accept Respondent’s claims of preparation unsupported by any
evidence. See World Wrestling Fed’n
Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001)
(“Mere assertions of preparations to make a legitimate use are not enough.”); Document
Technologies, Inc., supra. (holding that “the mere assertion of such
an intention [to use a web site] is insufficient”).
Nor can the Panel presume a legitimate
interest based on the Domain Name’s allegedly generic nature. In some cases, such a finding is
appropriate, such as when the Domain Name incorporates a bona fide personal
name used for e-mail
purposes, see Buhl Optical Co. v. Mailbank.com, Inc.,
D2000-1277 (WIPO Mar. 1, 2001), or when the Respondent proves that it engages
in offline activities that give meaning to the choice
of a domain name. Here, Respondent only makes a vague and
unsupported claim that it is involved with the delivery of religious news and
announcements. It does not provide a
business plan or any evidence regarding the extent of its activities. In the absence of such evidence, and without
a published web site, the Panel cannot presume a legitimate interest in the
Domain Name. See World Wrestling
Fed’n Entm’t, Inc., supra.; Van Halen v. Morgan, D2000-1313
(WIPO Dec. 20, 2000).
Given the sparseness of both
Complainant’s allegations and Respondent’s defense, it is difficult to
determine how to rule on the second
factor.
The Complainant, which bears the burden of proof, has made only the
starkest of a showing, based solely on conclusory allegations;
in response, the
Respondent makes his own conclusory allegations but has not substantiated those
allegations with any assertions
of fact or documentary support. Given these battling conclusory allegations,
the Panel is inclined to find that Complainant has not satisfied its burden of
proof. See Tribeca Film Center, Inc.
v. Brusasco-Mackenzie, D2000-1772 (WIPO Apr. 10, 2001). Ultimately, though, it is not necessary to
resolve this issue in this case given the Panel’s decision on the third
factor.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy states that
any of the following circumstances, in particular but without limitation, shall
be considered
evidence of the registration or use of a domain name in bad
faith:
(i) circumstances indicating that the
Respondent has registered or 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 documented out-of-pocket costs directly
related to the domain name; or
(ii) the Respondent has 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 it has
engaged in a pattern of such conduct; or
(iii) the Respondent has registered the
domain name primarily for the purpose of disrupting the business of a
competitor; or
(iv) by using the domain name, the
Respondent has intentionally attempted to attract, for commercial gain,
Internet users to its 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 the Respondent’s web site or
location or of a product or service on its web site or location.
In this case, Complainant has not
produced any evidence whatsoever that Respondent acted in bad faith in
registering or using the
Domain Name.
Indeed, Complainant has not even made a cognizable claim of bad faith on
the part of Respondent.
Complainant alleges that Respondent acted
in bad faith because it (1) registered a domain name that was identical to the
word portion
of Complainant’s trademark, and (2) has not made use of the Domain
Name. However, these allegations merely
go to the identicality and illegitimate use elements of the Policy. The element of bad faith is separate and
distinct from these requirements. See
Van Halen, supra. The Policy
demands a showing of some improper motive on the part of the registrant; a
trademark owner may not force a registrant who
purchased and is using the
domain name in good faith to transfer the domain name free of charge.
Complainant also points to Respondent’s
refusal to transfer the Domain Name to Complainant as evidence of bad
faith. The failure to turn over a
domain name, without more, cannot constitute bad faith. See Estate of Tupac Shakur v. Barranco,
AF-0348 (eResolution October 23, 2000) (“The mere refusal of a person to comply
with a questionable demand does not constitute ‘bad
faith’. Otherwise, that term and the ICANN
provisions would lose all meaning and significance.”).
Finally, Complainant has failed to
produce any evidence (or, in fact, even to suggest) that Respondent registered
the Domain Name
in order to sell it to Complainant, to prevent Complainant from
reflecting its mark in a corresponding domain name, to disrupt Complainant’s
business, or to attract users to its web site by creating a likelihood of
confusion. By contrast, Respondent
specifically denies engaging in any of these activities.
For these reasons, the Panel finds that
Complainant fails to prove that Respondent acted in bad faith.
Attempted Reverse Domain Name Hijacking
Respondent has requested that the Panel
make a finding of Reverse Domain Name Hijacking against Complainant. The Panel agrees that Complainant brought
this action without a good faith basis and therefore grants Respondent’s
request.
According to Paragraph 15(e) of the
Rules, “If after considering the submissions the Panel finds that the complaint
was brought in
bad faith, for example in an attempt at Reverse Domain Name
Hijacking or was brought primarily to harass the domain-name holder,
the Panel
shall declare in its decision that the complaint was brought in bad faith and
constitutes an abuse of the administrative
proceeding.” Paragraph 1 of the Rules defines Reverse
Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a
registered
domain-name holder of a domain name.”
Paragraph 4(a) of the Policy requires
that the Complainant prove three factors in order to obtain an order that a
domain name should
be cancelled or transferred. To bring a complaint in good faith, the Complainant must produce
evidence on all three of these factors.
See Online Resources, Inc. v. On-Line Resources, D2001-0257 (WIPO
May 15, 2001). In this case,
Complainant’s evidence and allegations were incomplete on the first factor,
merely conclusory on the second, and nonexistent
on the third. Significantly, Complainant did not make a
single assertion of bad faith on the part of Respondent. It did not allege that any of the factors in
Paragraph 4(b) were met, nor did it claim the existence of any other
circumstances or
produce any evidence that would suggest Respondent’s bad
faith. A complaint that is devoid of any
evidence or allegations concerning one of the three elements under the Policy
is clearly deficient,
particularly when the Domain Name incorporates a phrase
as common as “good tidings.” The Panel
can only conclude that the Complaint was brought in bad faith.
DECISION
Based upon the above findings and
conclusions, it is the decision of the Panel that the domain name at issue, <goodtidings.com>,
not be transferred to Complainant. The
Panel also finds that Complainant is guilty of Reverse Domain Name Hijacking.
David H. Bernstein, Panelist
Dated: April 9, 2002
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