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Generic Top Level Domain Name (gTLD) Decisions |
MPC Trust v. Nat Collicott c/o Solid
Domains.com Inc.
Claim Number: FA0310000198948
PARTIES
Complainant
is MPC Trust (“Complainant”),
represented by Jennifer Monroe at
1133 Broadway, Suite 706, New York, NY 10010. Respondent is Nat Collicott c/o Solid Domains.com Inc. (“Respondent”) represented by Nat Collicott, PO Box 2202, Fort Bragg,
CA 95437.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <quakeaid.com>, registered with Register.com.
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.
Hugues
G. Richard as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on October 2, 2003; the Forum received
a hard copy of the
Complaint on October 10, 2003.
On
October 6, 2003, Register.com confirmed by e-mail to the Forum that the domain
name <quakeaid.com> is
registered with Register.com and that the Respondent is the current registrant
of the name. Register.com has verified that Respondent
is bound by the Register.com
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
October 22, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of November 11, 2003 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@quakeaid.com by e-mail.
A
timely Response was received and determined to be complete on November 10, 2003.
Complainant
filed a timely Additional Submission that was compliant with Forum Supplemental
Rule #7 on November 13, 2003.
On November 25, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Hugues G.
Richard as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1.
The domain
name registered by Respondent, <quakeaid.com>,
is identical to a trade-mark in which Complainant has rights.
On
June 30, 2003, Complainant acquired the intellectual property rights of
QuakeAID Limited (hereinafter “QuakeAID”), a UK corporation,
through
assignation. These "rights" included, but were not limited, to both
registered and applied for trademarks in the
UK and USA, various domain names,
and the goodwill associated with the trademark QUAKEAID; the know-how to the
services and the operations
of QuakeAID, including software and forms and other
assets which make up the "business" operations of QuakeAID, which
exists
as an earthquake resource center providing information, education and
assistance. Through its QuakeAID unit,
Complainant has identified specific purposes which include: (1) Research (cause, prevention, early detection, construction
issues); (2) Humanitarian (financial relief, housing, food and water,
clothing,
other support); (3) Education (global awareness, preventative measures, safety
issues); and (4) Resource (conduit for information)
on a global basis.
Specifically, Complainant acquired the
following registered and applied for trade-marks:
1.
UK
registered trademark, No. 2305914 (image incorporating QUAKEAID and logo);
Registration date: June 20, 2003
Filing date: July 22, 2002
2.
UK
trademark application, No. 2297394 (word only QUAKEAID, which is still
pending);
Filing date: April 9, 2002;
3.
U.S.
trademark application, Serial No. 78/120371, which was subsequently registered
on July 29, 2003, registration No.
2741859 (word only QUAKEAID);
Filing date: April 9, 2002
Registration date: July 29, 2003
The primary domain name used by
Complainant for purposes of QuakeAID services is <quakeaid.org>. In addition to the primary domain name,
Complainant uses 31 other domain names incorporating the QUAKEAID mark,
including but not
limited to <quakeaid.us>, <quakeaid.net>,
<quakeaid.co.uk>, <quakeaid.org.uk>, <quakeaid.info>,
<quakeaid.eu.com>
and several others.
Therefore Complainant alleges that the
domain name, which forms the basis of this Complaint, is identical to
trademarks in which the
Complainant has very clearly established intellectual
rights in the USA and UK.
2.
Respondent
has no rights or legitimate interests in respect of the <quakeaid.com> domain name.
Complainant
alleges that Respondent was able to register the domain name on January 27,
2001, through Register.com, because of an
error perpetrated by Network
Solutions, Inc., and during the period in which QuakeAID would have been
legally entitled to the use
of the domain name; that company having paid for
one years registration on July 9, 2000. In fact, Complainant alleges that QuakeAID was entitled to at
least six months use of the domain name at the time when the Respondent
was
wrongfully permitted to register the domain name through Register.com because
of Network Solution's error.
Complainant
alleges that Respondent does not use the domain name, except to point the
domain name at <amazon.com> (previously
confirmed by the WIPO Panelist),
and that Respondent has no rights or legitimate interests in respect of the
domain name.
3.
Respondent
registered and is using the <quakeaid.com>
domain name in bad faith.
Since 1998 until June 2003, QuakeAID was operated and
managed by its founder Greg Lloyd Smith. Mr. Lloyd Smith is no longer
associated
with QuakeAID.
Complainant
alleges that Respondent registered the domain name and then re-directed it to
<amazon.com> as a "pay-back"
or retribution of sorts, aimed at
Mr. Lloyd Smith. Respondent[1]
has steadfastly refused to sell or transfer the domain name to Mr. Lloyd Smith
and or QuakeAID under any circumstances (as noted
in the aforementioned
Complaint originally pursued by QuakeAID).
According
to Complainant, such behavior reflects on Respondent's intent at the time of
registration, and since that date the use of
the domain name clearly
demonstrates a desire to disrupt the activities of QuakeAID, which Complainant
now owns.
Therefore,
Complainant alleges that the domain name <quakeaid.com> was
registered and is being used in bad faith by the Respondent.
4. Other Legal Proceedings
The
domain name <quakeaid.com> was the subject of a previous WIPO
proceeding, D2002-0815, initiated by Complainant’s predecessor in title,
QuakeAID Limited, a UK
corporation. A
decision was rendered on or about November 25, 2002, in favor of Respondent.
Complainant submits that those
proceedings have no relevance in its Complaint. Greg Lloyd Smith and QuakeAID, the UK corporation, are no longer
associated with the operation of QuakeAID, which is now owned by
Complainant. Furthermore, Mr. Lloyd
Smith is not associated with Complainant.
B. Respondent
1. Respondent admits that the domain name
registered by Respondent, <quakeaid.com>,
is identical to a trademark in which Complainant has rights.
2. Respondent has rights and legitimate
interests in respect of the <quakeaid.com>
domain name.
Respondent admits that its
domain name, <quakeaid.com>, is identical to the trademarked name
currently held by Complainant. However, Respondent alleges that the domain name
registration
on January 27, 2001 and Respondent’s use of the domain name, <quakeaid.com>,
pre-dates the U.S. registered trademark of
July 29, 2003, by over two years and six months.
Respondent alleges that, on January 26,
2001, a check of the Whois showed the domain name was available, in the dot-com
top-level
domain, and it was subsequently registered on January 27, 2001, by
Respondent, at NameBargain.com. Respondent alleges that there
is an intent to
market a product, exclusively through <amazon.com>. Until such time as
work is completed and patents are received
regarding the said product, it
requested the domain name be pointed to <amazon.com>, as part of an ongoing,
online marketing
strategy.
Respondent alleges that the domain name <quakeaid.com>
is a generic term, show by the Whois as having been available in the dot-com
top-level domain and legitimately/legally registered
by Respondent, on January
27, 2001. Respondent alleges that this registration pre-dates any applications
for U.S. trademark or service
mark and any granted U.S. trademarks or service
marks.
3.
Respondent’s
registration and use of the <quakeaid.com>
domain name was and is not in bad faith.
Respondent
alleges that it has had no previous knowledge of the QUAKEAID trademark
applicants/holders, other than those contacts made
through the previous two
WIPO Complaints and the current Complaint with the Forum.
Respondent
alleges that it has a stellar personal/company record with no Complaints or
decisions against it for improper or unfair
domain name use, other than the
quakeaid.com Complaints and subsequent Complaint termination and ruling in
favor of Respondent by
the WIPO.
In
addition, Respondent states that the said domain name has never been offered
for sale and any unsolicited offers to buy the said
domain name have been
rejected. According to Respondent, this clearly shows no pattern of improper
domain name use or bad faith patterns.
The <quakeaid.com> domain
name is simply a generic domain name, properly registered by Respondent.
4. Other Legal Proceedings
A previous Complaint was
filed with WIPO (D2002-0815) on August 30, 2002, for the domain name <quakeaid.com>.
The decision was found in favor of Respondent on November 25, 2002.
A Complaint was also filed with WIPO
(D2003-0766) on or about October 15, 2003, for the domain name <quakeaid.com>,
by Complainant, and subsequently terminated by WIPO. This decision was based on
Complainant being found by WIPO to be a connected
company to the original WIPO
(D2003-0766) Complainant.
C. Complainant’s Additional Submissions
1. Respondent falsely alleges that its
registration and use of the domain name pre-dated the recorded intellectual
property rights owned
by Complainant.
According
to Complainant, QuakeAID (the U.K. corporation) was the first registrant of the
disputed <quakeaid.com>
domain name. The domain name was registered on July 9, 2000. The domain
name, <quakeaid.com>, was
pointed at QuakeAID’s primary website <quakeaid.org> which had previously
been registered on October 12, 1999, approximately
15 months prior to the
Respondent’s use.
According
to the application for a registered trademark filed with the United States
Patent and Trademark Office on April 9, 2002,
the mark QUAKEAID was first used
in commerce on November 11, 1999, approximately 1 month after the registration
of the primary domain
name. Thus, one month after registration, QuakeAID
launched its website.
Complainant alleges that
registration of a trademark does not grant intellectual property rights. The
act of registration merely records
those rights already present. In this case,
QUAKEAID was registered as a U.S. trade-mark on July 29, 2003, No. 2741859.
According
to Complainant, the Registry of Trademarks is merely one source where
anyone interested in using a name should search in order to
ensure that there
has been no prior use. Complainant is owner of the U.S. and U.K. marks by
virtue of Assignation duly recorded;
said Assignation included all legal rights
whether registered or applied for and specifically included all goodwill
accrued in the
name QUAKEAID.
2.
No application for patent at any stage of completion
Respondent
alleges work on a patent and alleged product. Complainant alleges it has
searched the records of pending applications and
can find no references that
would apply, either with references to QUAKEAID, Quake, Quake Aid or the
inventors’ name. Complainant
contends that there is no application for a patent
at any stage of completion, and that this disclosure is merely a non-true
statement
by Respondent. Complainant reminds that documents to support such
alleged patent work or details of the products could have been
provided, but
Respondent has failed to provide any documentation regarding the alleged
product.
According to Complainant, if
Respondent actually intended to market any product on <amazon.com> as
alleged, and if it is true
that Respondent is currently working on patent
materials, Respondent or its Patent Agent would already have advised it of the
prior
rights owned by Complainant and would have advised Respondent of the
likelihood of legal action, should such a product attempt to
be marketed
through any means. Even a cursory inspection of the Internet will have revealed
Complainant’s primary website and no
fewer than 2,900 references to
Complainant’s work.
3. QuakeAID is not a generic term
Respondent
continually refers to QUAKEAID and the domain name <quakeaid.com> as a
generic term. Complainant alleges that this is an incorrect statement and the
inference is that Complainant has not acquired
intellectual property rights
through the use of the unique name “QuakeAID”. Irrespective of that untrue
statement, Complainant states
that QUAKEAID is a registered trademark in the U.S.
and in the United Kingdom. QUAKEAID is the trading name, used by the operators
of QuakeAID since November 8, 1999 and QUAKEAID has been in continuous use on a
global basis since that date.
4. Respondent is in bad faith
In conclusion, Complainant alleges
that Respondent attempts to paint itself as an honest Internet operator, but
the fact remains that
it failed to offer important evidence of it’s alleged
patent work when faced with a WIPO claim by the previous owner of QUAKEAID.
Furthermore, Complainant states that Respondent failed to reply to those
proceedings in any way. Complainant therefore submits that
Respondent’s defence
of its alleged product in alleged patent work is a false statement, offered by
Respondent as a last-ditch effort
to prevent Complainant,the trademark owner,
from regaining use of a domain name which it would now rightfully have if it
were not
for the negligence of Network Solutions, Inc., who returned the domain
name to “The Pool” during the paid for registration period
of the original
registrant. According to Complainant, this is in itself an act of bad faith.
DISCUSSION AND FINDINGS
In order for the Panel to
determine if it is open to it to examine the merits of this case, it is
important to examine the two prior
decision rulings.
In fact, a previous Complaint
was filed with WIPO (D2002-0815) on August 30, 2002, for the domain name <quakeaid.com> (QuakeAID
I). The decision was found in favor of Respondent on November 25, 2002.
Complainant, in that instance, was not the current Complainant,
but rather its
predecessor in title, QuakeAID Limited, a UK corporation.
After
assignation by QuakeAID Limited, in favor of the current Complainant for
QuakeAID Limited’s intellectual property, the current
Complainant filed a
Complaint with WIPO (D2003-0766) on or about October 15, 2003, for the domain
name <quakeaid.com> (QuakeAID II).
That Complaint was subsequently terminated by the WIPO. This decision was based
on Complainant being found by WIPO to be a connected
company to the original
WIPO (D2003-0766) Complainant.
The
Panel must now determine if it is open to it to examine the merits of this
case, even though this issue has not been directly
raised by the Parties.
This
being said, the question that must be answered is the following: can this Panel
accept to decide a case which has already been
decided by another arbitration
center, i.e. WIPO, between the same parties and for the same issue (QuakeAID II)?
Neither the UDRP Policy, Rules, or the Forum’s
Supplemental Rules address the issue of whether a Complainant is able to
re-file a
previous Complaint. The authority for determining this issue rests in
Rule 15(a), which states that a Panel is required to “decide
a Complaint on the
basis of the statements and documents submitted and in accordance with the
Policy, these Rules, and any rules
and principles of law that it deems
applicable.”
The issue of whether the same Complainant
may re-file a Complaint against the same Respondent for the same domain name
has been addressed
several times by previous administrative Panels. It has been
held that the burden of establishing that a re-filed Complaint should
be
accepted by a Panel rests on Complainant, and previous Panels have held that
burden to be “high.” See, e.g., Creo Prods. Inc. v. Web site in Dev.,
D2000-1490 (WIPO Jan. 19, 2001) wherein the burden of establishing that a
second Complainant should be entertained is “high”; see also TABCORP
Holdings Ltd. v. Hertzberg, D2001-1052 (WIPO Dec. 3, 2001) wherein the
re-filing was not permitted, as Complainant failed to meet its “high burden”
and therefore
could not “re-do [its] failure in the original proceeding to
carry its burden of proving bad faith registration”.
Just how to meet that burden was comprehensively
discussed in Grove Broad. Co. Ltd. v. Telesystems Communications Ltd.,
D2000-0703 (WIPO Nov. 10, 2000). In Grove Broadcasting, the Panel noted
that the only option available to a Complainant wishing to re-litigate the
Complaint under the Rules was the filing
of an action in a competent Court
pursuant to Rule 4(k). The Panel went on to analyze the issue of re-filing
along common-law lines,
pursuant to Rule 15(a), and established four grounds
for the rehearing or reconsideration of a previous Panel’s decision. The Panel
enumerated these common law grounds as:
(1)
serious misconduct on the part of a judge, juror, witness or lawyer;
(2)
perjured evidence having been offered to the court;
(3)
the discovery of credible and material evidence which could not have been
reasonably foreseen or known at trial;
(4)
a breach of natural justice.
Most situations where a Panel was asked
to reconsider a previously filed Complaint have fallen into one of two
categories. In some
instances, the previous decision which found against
Complainant contained a reservation that the dismissal was “without prejudice,”
contemplating a subsequent re-filing by Complainant. See Cluett, Peabody
& Co., Inc. v. Sanford Bus Writing Serv., FA 95842 (Nat. Arb. Forum
Dec. 12, 2000) wherein re-filing was allowed because the previous Panelist had
“expressly reserved the
right of Complainant to recharge bad faith registration
and use of the domain name at issue”; see also Jones Apparel Group Inc. v.
Jones Apparel Group.com, D2001-1041 (WIPO Oct. 16, 2001) wherein re-filing
was allowed as the previous Panelist gave the “green light in the clearest
possible
way to re-filing the Complaint [emphasis in original]”.
In
most other disputes, the gravamen of the re-filed Complaint has been element (3)
of the Grove Broadcasting factors, the “discovery
of credible and material
evidence which could not have been reasonably foreseen or known at trial.”
Permitting Complainant to re-file
in these circumstances has revolved around
the nature of the “new” evidence submitted in the subsequent Complaint. See,
e.g., Grove Broad. Co. Ltd., D2000-0703 (WIPO Nov. 10, 2000) wherein it was
found that Complainant’s second Complaint was a mere attempt to “patch up” a
deficiency
in a previously presented case, and hence dismissed; see also
Koninklijke Philips Elecs. N.V. v. Relson Ltd., DWS2002-0001 (WIPO June 14,
2002) wherein it was held that “[b]ecause [the purported “new” evidence] could
have been obtained for
the first Complaint upon reasonable diligence by the Complainant,
the re-filed Complaint must be rejected; see also Furrytails Ltd. v. Andrew
Mitchell d/b/a Oxford Die-Cast, D2001-0857 (WIPO Sept. 6, 2001) wherein the
second Complaint was dismissed.
Complainant
does not allege that either of these circumstances are present. Rather, it
contends that QuakeAID I was between Respondent and a party that is not in
any way associated with the current Complainant. Thus, Complainant urges that
the
previous decision has no bearing on the current dispute. See generally High Speed Prods., Inc. v.
Thrasher Magazine, Ltd., FA 97008 (Nat. Arb. Forum June 20, 2001)
(concluding that “strict application of principles of claim and issue
preclusion could
work an injustice” in allowing re-filing).
The
Panel has been hard-pressed to find any pertinent precedent in this matter.
Even though the Parties have not put much emphasis
on this issue, the Panel
feels it must be addressed, in order for Justice to be well served.
In
QuakeAID I, a decision was rendered
in favor of Respondent. After having acquired QuakeAID’s intellectual property,
Complainant filed a Complaint
with the WIPO, which was terminated for reasons
already mentioned (QuakeAID II).
Complainant has essentially acquired QuakeAID’s rights and is trying to succeed
where QuakeAID has already failed, against the
same Respondent and based on the
same motives. It has already been decided, by WIPO, that such a Complaint must
be terminated, because
Complainant and the complainant in QuakeAID I
(QuakeAID Limited) were so connected so as to create a bar to the re-filing in QuakeAID II. The Panel is of the same
opinion. Complainant has not met its high burden of establishing that its
re-filed Complaint should be
accepted.
Thus,
the Panel finds that it is not open to it to examine the merits of this case.
However,
considering that this issue needs closure, the Panel will nonetheless examine
the merits of this case.
In
doing so, such review must be de novo.
See Creo Prods. Inc. v. Website in Dev.,
D2000-1490 (WIPO Jan. 19, 2001) (“In relation to a Re-filed Complaint that is
truly a new action under the Uniform Policy, the administrative
panel is
undertaking a consideration of the merits of the case de novo. It follows that, unless agreed otherwise by the parties,
the administrative panel considering the Re-filed Complaint cannot rely
on the
findings of fact, or on the conclusions on the application of the Uniform
Policy to the found facts, reached by the administrative
panel on the previous
Complaint).
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.
Respondent admits that the domain name
registered by Respondent, <quakeaid.com>,
is identical to a trade-mark in which Complainant has rights. Therefore, no
further analysis is required for this element of proof.
While
analyzing all the elements of proof, the Panel must consider Paragraph 4 (c) of
the Policy, which states that any of the following
circumstances, in particular
but without limitation, if found by the Panel to be proved based on its evaluation
of all evidence presented,
shall demonstrate Respondent’s rights or legitimate
interests to the domain name for purposes of Paragraph 4 (a)(ii):
(i)
before any notice to Respondent of the dispute, Respondent’s 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)
Respondent has been commonly known by the domain name, even if Respondent has
acquired no trademark or service mark rights; or
(iii)
Respondent 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.
Respondent
was illegally permitted to register the disputed domain name
In its Complaint, Complainant alleges
that Respondent was illegally permitted to register the disputed domain name
during the time
period that Complainant had actually paid to use the disputed
domain name. Thus, Complainant contends that Respondent’s wrongful
permission
to register the disputed domain name is evidence that Respondent has no rights
or legitimate interests in the disputed
domain name. See generally Am. Anti-Vivisection
Soc’y v. “Infa dot Net” Web Serv.,
FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that Complainant’s prior
registration of the same domain name is a factor in considering
Respondent’s
rights or legitimate interest in the domain name); see also Edmunds.com,
Inc. v. Ult. Search Inc., D2001-1319 (WIPO Feb. 1, 2002) (finding that
Respondent could not rely on equitable doctrines under the Policy to defend its
registration
of the disputed domain name after the registration was
inadvertently permitted to lapse by Complainant, noting that “Respondent was
aware of the Complainant’s well-known business and its mark and intended to
exploit the mark”).
Respondent’s
use of the disputed domain name to redirect Internet users to the
<amazon.com> domain name does not evidence any
rights or legitimate
interests in the disputed domain name.
Furthermore, Complainant maintains that
Respondent’s use of the disputed domain name to redirect Internet users to the
<amazon.com>
domain name does not evidence any rights or legitimate
interests in the disputed domain name. See
eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) ("[U]se of
complainant’s entire mark in infringing domain names makes it difficult to
infer
a legitimate use"); see also
WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12,
2003) (finding that Respondent’s use
of the disputed domain name to redirect Internet users to websites unrelated to
Complainant’s mark, websites where Respondent
presumably receives a referral
fee for each misdirected Internet user, was not a bona fide offering of goods
or services as contemplated
by the Policy). The Panel is of the same opinion.
Does Respondent’s registration of the disputed domain
name predate complainant’s rights in the QUAKEAID mark?
In response,
Respondent contends that its registration of the disputed domain name predates
Complainant’s rights in the QUAKEAID mark,
evidence that it has rights or
legitimate interests in the disputed domain name. See Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1,
2000) (finding that Respondent does have a legitimate interest in the domain
name where Complainant
applied for registration of the mark after Respondent
registered the domain name and Complainant has not proven any earlier use of
the mark); see also Warm Things, Inc.,
Inc. v. Weiss, D2002-0085 (WIPO April 18, 2002) (finding that Respondent
had rights or legitimate interests in a domain name when its registration
of
that domain name occurred before Complainant had established rights in its
alleged mark). However, in its additional submission,
Complainant contends that
such an assertion by Respondent is untrue. In fact, registration of a
trade-mark does not grant intellectual
property rights. The act of registration
merely records those rights already present. The Panel is of the opinion that
Respondent’s
allegation is incorrect.
Is QUAKEAID a generic term?
Respondent
maintains that the QUAKEAID mark is generic, evidence that it has rights or
legitimate interests in the disputed domain
name. See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12,
2000) (“Common words and descriptive terms are legitimately subject to
registration as domain names on
a 'first-come, first-served' basis"); see also Car Toys, Inc. v. Informa
Unlimited, Inc., FA
93682 (Nat. Arb. Forum Mar. 20, 2000) (finding that Respondent has rights and
legitimate interests in the domain name where Complainant
submitted
insufficient evidence to establish either fame or strong secondary meaning in
the mark such that consumers are likely to
associate <cartoys.net> with
the CAR TOYS mark). However, in its additional submission, Complainant contends
that this is an
incorrect statement. QuakeAID is a registered trade-mark
in the United States and in the United Kingdom. QuakeAID is the trading name,
used by the operators
of QuakeAID since November 8, 1999 and QuakeAID has been
in continuous use on a global basis since that date. In light of these facts,
the Panel is of the opinion that QUAKEAID is not a generic term.
Has Respondent shown demonstrable preparations to use
the disputed domain name for a patented product ?
Respondent alleges
that it is making demonstrable preparations to use the disputed domain name for
a patented product, evidence that
it has rights or legitimate interests in the
disputed domain name pursuant to Policy 4(c)(i). See 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 SFX Entmt., Inc. v. Cushway,
D2000-0356 (WIPO July 10, 2000) (finding that Respondent had rights and
legitimate interests in the domain name where he began demonstrable
preparations to use the domain name in connection with a bona fide offering of
goods or services).
However, in its additional submission,
Complainant maintains that Respondent has submitted no evidence of any
demonstrable preparations
to use the disputed domain name, and that
Complainant’s investigation revealed no pending patent applications. Complainant
urges
that this is evidence that Respondent does not have rights or legitimate
interests in the disputed domain name pursuant to Policy
4(c)(i). See Household Int’l, Inc. v. Cyntom Enter.,
FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (holding that Respondent’s “vague and
unsupported assertion of ‘plans to sell household
goods, supplies and
appliances over the Internet’” was insufficient to be considered proof of a
legitimate business plan); see also Open
Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding
that Respondent did not establish rights and legitimate interests in the domain
name where
Respondent mentioned that it had a business plan for the website at
the time of registration but did not furnish any evidence in
support of this
claim). The Panel agrees with Complainant regarding this issue.
The Panel has carefully analyzed the
Parties’ arguments and is of the opinion that Respondent has no rights or
legitimate interests
with respect to the <quakeaid.com>
domain name.
The Panel has not been presented with
sufficient proof regarding the existence of the circumstances which are
mentioned in Paragraph
4 (c) of the Policy.
Furthermore, no sufficient proof has been
presented regarding any other circumstance which could demonstrate Respondent’s
rights or
legitimate interests to the domain name.
While analyzing all the proof regarding
this element, the Panel must consider Paragraph 4 (b) of the Policy, which
states that, 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 Respondent has registered or has 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 Respondent’s documented out-of-pocket costs
directly
related to the domain name; or
(ii)
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 Respondent has engaged in a pattern of such conduct; or
(iii)
Respondent has registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
(iv)
by using the domain name, 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 its web site or location or
of a product or service on its web site or location.
As already mentioned, these four
circumstances do not represent the only possible way that Complainant can prove
Respondent’s bad
faith.
Complainant alleges that the disputed
domain name was registered as “pay-back” or retribution against Mr. Lloyd
Smith, founder of
Complainant. However, this allegation has not been proven and
is mere speculation.
Complainant also contends that
Respondent’s registration of the disputed domain name was with full knowledge
of Complainant’s rights
in the QUAKEAID mark, and its subsequent refusal to
transfer the domain name registration to Complainant and failure to use the
domain
name for any purpose related to the QUAKEAID mark is evidence that the
domain name was registered and used in bad faith. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum
Apr. 17, 2000) (finding that evidence of bad faith includes actual or
constructive knowledge of a commonly
known mark at the time of registration); see also Reuters Ltd. v. Teletrust IPR Ltd.,
D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith
where Respondent was aware of Complainant’s famous
mark when registering the
domain name as well as aware of the deception and confusion that would
inevitably follow if he used the
domain names). However, Complainant has not
sufficiently proven this allegation. Furthermore, such a factor, alone, would
not be
enough to lead to the conclusion that the disputed domain name was registered
in bad faith.
Complainant also alleges that
Respondent’s behavior clearly demonstrates a desire to disrupt the activities
of QuakeAID. Again, the
Panel finds that there is insufficient proof to support
this allegation.
Complainant
has failed to prove any of the circumstances mentioned in Paragraph 4 (b) of
the Policy. Furthermore, Complainant has
failed to prove any other circumstance
which could be evidence of Respondent’s registration and use of the domain name
in bad faith.
The
Panel finds that it is not open for it to examine the merits of this case, due
to the fact that Complainant has not met its high
burden of establishing that
its re-filed Complaint should be accepted.
However,
in order for Justice to be well served and for Parties to have closure
regarding this matter, the Panel has decided to nonetheless
examine the merits
of this case.
Due
to the fact that Complainant has failed to establish that Respondent has
registered and is using the <quakeaid.com>
domain name in bad faith, as required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
Hugues G. Richard, Panelist
Dated: December 9, 2003
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