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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Michael Leslie Jones a/k/a Mick Jones v.
Stephen Gregory
Claim Number: FA0209000125747
PARTIES
Complainant
is Michael Leslie Jones a/k/a Mick Jones, New York, NY, USA (“Complainant”) represented by Richard Pawelczyk,
of Shukat Arrow Hafer & Weber,
LLP. Respondent is Stephen Gregory, Angeles City
(“Respondent”) represented by David J.
Loundy, of Law Offices of David J.
Loundy.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <foreigner.com>,
registered with DotRegistrar.com, Inc.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict
in serving as Panelists in
this proceeding.
Anne
M. Wallace, Q.C., David H. Bernstein and Diane Cabell as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 20, 2002; the Forum
received a hard copy of the
Complaint on October 3, 2002. .
On
September 23, 2002, DotRegistrar.com, Inc. confirmed by e-mail to the Forum
that the domain name <foreigner.com>
is registered with DotRegistrar.com, Inc. and that the Respondent is the
current registrant of the name. DotRegistrar.com,
Inc. has verified that Respondent is bound by the DotRegistrar.com, 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
October 3, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of October 23,
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@foreigner.com by e-mail.
A
timely Response was received and determined to be complete on October 23, 2002.
On November 19, 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 Diane Cabell as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
is the founding member, guitarist and primary songwriter of the musical group
Foreigner. Complainant has three U.S. trademark
registrations for the FOREIGNER
mark, as well as one European CTM trademark registration. The group, Foreigner,
has been performing
live concerts and producing records on an international
scale for twenty-five years. Foreigner has sold over sixty million records
worldwide. The group’s official website receives over a million hits a month.
The total venue capacity for the group’s most recent
tour is over half a
million.
No
other use of the term FOREIGNER has attained anywhere near the level of fame or
recognition as the mark owned by Complainant. For
that matter, no other
business has attained any level of recognition that would act as a source
identifier for the term FOREIGNER,
other than the mark as used by Complainant.
There are no other valid registrations for the mark FOREIGNER in any trademark
classes.
Respondent’s
registration is identical to Complainant’s registered trademarks.
Respondent
has no legitimate interest or rights in the domain name by virtue of its lack
of use of the domain name. Respondent’s sole
use is to offer the registration
for sale. Respondent registered hundreds of names solely for the purposes of
reselling the registrations.
Complainant has the only trademark registrations
and past bona fide use of the mark FOREIGNER. Respondent is not the owner of
any
trade name or service mark, nor does it have legitimate rights in the
domain name.
Not
only has Respondent not made any legitimate use of the domain name, Respondent
has linked the domain name to a site containing
explicitly pornographic
material and has posted a $10,000 demand for buy-out of the domain name
registration. This amount far exceeds
the fees that Respondent has incurred to
register and maintain the domain name. The web page demanding payment to
Respondent indicates
that there are hundreds of other domain name registrations
that are for sale at non-negotiable amounts of up to $500,000.
Complainant
further asserts that the name has been registered in bad faith as indicated by
Respondent’s lack of use of the domain
name and the fact that FOREIGNER is a
famous mark as indicated by Complainant’s evidence. Respondent has linked the
domain name to
a pornographic site and has posted a $10,000 demand for a
buy-out of the domain name registration. This link to a non-commercial
site and
demand for payment is evidence of bad faith.
B.
Respondent
The
domain name is a common word in the English language. Respondent did not
register the name with the intent to sell the domain
name registration to
Complainant. Respondent’s actions have been challenged three times in the past
and each time the panel found
that he had not acted in bad faith by engaging
the exact same actions complained of in this case. See Allocation
Network GmbH v. Steve Gregory, D2000-0016 (WIPO March 24, 2000), Capt’n
Snooze Mgmt. Pty Ltd. v. Domains 4 Sale, D2000-0488 (WIPO July 10, 2000), John
Rush & Annette Witzel v. Oregon CityLink, FA 95318 (Nat. Arb. Forum
September 7, 2000).
Respondent
has registered numerous domain names consisting entirely of common words chosen
many years ago while perusing a dictionary,
short phrases, and geographical
locations. He offers these domain registrations for sale at
<rockbottomdomains.com>. Respondent
asserts that he has never
intentionally registered a domain name that matches another’s trademark, and
has never intended or attempted
to register a domain name to sell to a
trademark holder with a matching mark. Respondent has merely registered common
words and phrases
that he believes may have value in an attempt to maximize
that value. There is nothing improper or unlawful in doing so. Respondent
is
not a pirate intent on holding corporate trademarks for ransom, but rather an
entrepreneur speculating as to a domain name’s value
to unknown parties.
Respondent
does not contest that the domain name is identical to Complainant’s mark;
however Respondent says that the UDRP is not
intended to give any party a
worldwide monopoly in domain space of a common word in the English language.
Complainant
seeks to use limited trademark registrations and discussions of how successful
the band Foreigner has been, to take away
a domain name that matches a common
word in the English language from a resident of the Philippines. The word
FOREIGNER was a commonly
used term in the English language before Complainant
was born, and before he emigrated to the U.S. from England, and as a foreigner,
started his band. The Foreigner website at <foreignerfiles.com> claims
that the name Foreigner was thought of by Complainant
basing it on the fact
that half of the band was American and the other half English. Thus, the mark
was chosen for its independent
meaning in the English language, and not as a
coined term with unique trademark significance. Use of the word FOREIGNER to
mean “one
who is from a foreign country or place” is a use of the term that has
a greater level of fame and recognition than the mark owned
by Complainant.
Just as Complainant found a common word to be salable as a band name, so
Respondent independently found the same
common word attractive as a salable
domain name.
Respondent’s
registration of the disputed domain name predates the registration of
Complainant’s Community trademark and two of the
three U.S. registrations, and
is under two months shy of predating the registration of all of Complainant’s
trademark registrations.
Respondent has owned the domain name registration for
more than half a decade. This is evidence that the name was not registered
with
the intent to sell the domain name registration specifically to Complainant,
which is what the UDRP prohibits.
Complainant
alleges lack of use by Respondent as evidence of bad faith and then contradicts
that allegation by alleging Respondent
is using the domain name to connect to a
pornographic site and has posted a $10,000 demand for buy-out of its rights in
the name.
Respondent points to other cases where panels have concluded that
registration and sale of domain name registrations as a form of
speculation is
not a demonstration of bad faith giving rise to a cognizable dispute under the
UDRP. In particular he refers to the
Allocation Network case, supra,
where the panel says:
Respondent
has registered over 400 domain names, all of which contain or are composed of
common words or short phrases from the English
language or misspellings of such
words. In trademark terms, many of these domain names would be considered
descriptive of certain
goods or services, or generic. Registration of
descriptive or generic terms as a domain name is possible under the ,com TLD.
As the
commercial value of such domain names has increased, brokers like
Respondent have seized the opportunity to sell such domain names
to the highest
bidder. In principle, such a practice may constitute use of the domain name in
connection with a bona fide offering
of goods or services (i.e. the sale of the
domain name itself). The difficulty lies in the fact that the domain name
allocation.com,
although descriptive or generic in relation to certain services
or goods, may be a valid trademark for others… Therefore, although
the
registration and offering for sale of allocation.com as a domain name may
constitute a legitimate interest of Respondent in the
domain name, this is
different if it were shown that allocation.com has been chosen with the intent
to profit from or otherwise abuse
Complainant’s trademark rights. Respondent’s
explanation that he selected many of the domain names offered for sale at
random from
a dictionary appears prima facie acceptable. Complainant has not
disputed the fact that (many of) Respondent’s domain names – including
allocation.com – represent words or short phrases found in an English language
dictionary.
Respondent
also refers to Scorpions v. Alberta Hot Rods, D2001-0787 (WIPO
Nov. 7, 2001); John Fairfax Publ’ns Pty. Ltd. v. Domain Names 4U and Fred
Gray, D2000-1403 (WIPO Dec. 13, 2000); and Cream Holdings Ltd. v. Nat’l
Internet Source, Inc., D2001-0964 (WIPO Sept. 28, 2001), in which latter
case the following appears:
‘Cream’
is merely a common generic word in which the Complainant cannot have exclusive
rights. Thus the Respondent has rights and
a legitimate interest in the
disputed domain name by virtue of having been the first to register it. “Where
the domain name and trademark
in question are generic – and in particular where
they comprise no more than a single, short, common term – the rights/interests
inquiry is more likely to favor the domain name owner”. Recognizing that anyone
has a right to register common words in the language,
a legitimate interest is
even established where a Respondent’s only purpose in register[ing] a common word
domain name is for resale.
Respondent
further argues that one common feature of all the indicia of bad faith
listed in the Policy is that at the time of registration of the domain name
Respondent had Complainant in mind, either
intending to extort money from
Complainant, to block Complainant, to disrupt Complainant’s business or to
mislead Internet users
into believing Respondent is somehow associated with
Complainant. Respondent argues that there is no evidence in this case to show
that Respondent had Complainant in mind when he registered the domain name.
Respondent
submits that he has no obligation to respond to Complainant’s demand letters
to
surrender his domain name.
Complainant
has failed to raise a cognizable dispute under the UDRP as ¶¶ 4(a)(ii) and
4(a)(iii) are both unsatisfied. Failure to
satisfy either one of them is
sufficient to support dismissal of the Complaint in this matter. Respondent has
a legitimate claim
to the domain name as a long-time registrant of the domain
name. The name was not registered and is not being used in bad faith.
The
domain name was not registered with the intent to sell the registration to
Complainant, and Respondent has never contacted Complainant
other than through
the response to this proceeding conducted through counsel. Respondent has not
registered the domain name to prevent
the owner of the trademark from
reflecting the mark in a corresponding domain name. Complainant individually
and as a band has established
websites, and is well represented on the various
fan websites all incorporating the FOREIGNER term and all linking to
Complainant’s
websites. Complainant and Respondent are not competitors and have
coexisted on the Internet for some time with no cited incidents
of confusion or
interference. Finally, Respondent has no intention to attract or confuse those
looking for Complainant, nor is Respondent
attempting to imply that it is
affiliated or endorsed by Complainant, and no evidence has been presented to
the contrary. Complainant
may not like Respondent’s business of domain name
speculation, but that does not mean that it is an improper activity under the
UDRP.
Respondent is an entrepreneur, not a squatter. Respondent agrees that as
a matter of public policy, squatters should not be allowed
to register famous
marks as domain names to ransom trademark owners. This is not the conduct in
which Respondent has engaged. For
these reasons, Respondent asks that the
Complaint be dismissed.
C.
Additional Submissions
When
the Panel reviewed the evidence and submissions of the parties in this case, it
concluded that more information was required
before it would make a decision.
On December 10, 2002, the Panel issued the following Order for Additional
Submissions and Extending
Time for Rendering a Decision:
The
Panel has reviewed all the evidence submitted by Complainant and Respondent to
date. In his submissions with respect to rights
and legitimate interests and
with respect to bad faith, Complainant submitted evidence that Respondent uses
the domain name <foreigner.com> to link to a website containing
one link to a list of domain name registrations for sale and eight links to
sites offering "adult
services”. In defense to Complainant's claim of lack
of use, Respondent makes reference to his use of the domain name to link to
these "adult services.
This
allegation makes this case different from the typical domain name speculator
cases cited in Respondent's Response.
The parties have not, however, addressed how, if at all, these offered
links to adult entertainment services affect the cybersquatting
analysis. Accordingly, before this Panel makes a
decision with respect to this case, we request, pursuant to UDRP Rule 12, that
the parties
address this issue in more detail.
Under Rule 12, the Panel may, "request, in its sole discretion,
further statements or documents from either of the Parties." See, e.g., Tribeca Film Center, Inc. v.
Brusasco-Mackenzie, D2000-1772 (WIPO April 10, 2001). Although this is intended to be a summary
procedure, the parties have raised an important question in this case with
respect to the
use of this domain name, and the Panel believes it in the best
interests of the parties and the Policy that the parties address this
question
in more detail.
We would therefore ask that, within ten
days from its receipt of this request (by December 20, 2002), Respondent
submit an additional submission, by email to the Forum (with a copy to
Complainant), that addresses
the following questions and any related topics
raised by the Panel's inquiries:
1.
If available, Respondent should provide a detailed explanation,
in an affidavit with supporting documentary evidence, discussing all
revenue it
has derived from Internet traffic coming through the <foreigner.com>
domain name (or through "foreigner" searches on any of
Respondent's websites) and any bids it
has received to purchase, lease, or otherwise use, or any other emails or other
communications concerning
the <foreigner.com> domain name.
2.
More generally, Respondent should provide a detailed
explanation, in an affidavit with supporting documentary evidence, on its
business
model, including details on its revenue and profits from the purchase
and sale of domain names and its revenue and profits from the
sale of, or
provision of links to, adult entertainment or other services or websites.
3.
If available, Respondent should provide his referrer logs for <foreigner.com>
for the last six months, including the keyboard search terms as indicated by
major search engines.
4.
The parties are invited to discuss the legal significance of
this evidence, and how it bears on the allegations of cybersquatting,
with
specific reference to the provisions of the Policy.
5.
The parties are invited to address whether the provision of
links to adult entertainment services is a fair use of the <foreigner.com>
domain name. Cf. Etam, plc v.
Alberta Hot Rods, D2000-1654 (WIPO Jan. 31, 2001).
Respondent’s submission should be certified
as provided by UDRP Rule 5(b)(viii).
All documentary evidence should be scanned and submitted in electronic
form, by email.
Upon receipt of Respondent's evidence and
argument with respect to these questions, Complainant will have an
additional seven days in which to respond by email with evidence and
argument (certified pursuant to UDRP Rule 3(b)(xiv)), following which
Respondent will have three days
to file by email any certified rebuttal
submissions. The Panel thereafter
expects to issue its ruling within fourteen days from its receipt of
Respondent's final submission (UDRP Rule
10(c)).”
Respondent’s
Submission
With
respect to the Panel’s requests, Respondent made the following responses:
1. This information is not available to Mr.
Gregory to provide in response to the Panel’s order. All of Respondent’s domain names point to the same “Fast Start
Index” page. Logs are not kept for this
page, as they have never been relevant to the Respondent. It is impossible to separate out any revenue
that may have been generated as a result of linking through the <foreigner.com>
domain. His revenue from affiliate programs has always been substantially less
than his domain name registration/renewal costs.
Respondent
has received one inquiry about the <foreigner.com> domain name
from someone supposedly interested in setting up a fan page featuring
Complainant (this person would arguably also have
superior rights to the domain
name over Complainant, if he had acquired the name first). See Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club,
D2000-1532 (WIPO Jan. 25, 2001). Because this offer did not comply with the
stated purchase requirements, and was for a domain name
registration no longer
listed as for sale, Respondent refused to sell its rights to the domain name to
the inquiring party.
2. Respondent’s business model is to
register domain names and sell the registrations. He has never knowingly
registered a domain name
that matches a famous trademark. He has never
registered a domain name because he knew that any party had trademark rights in
the
name. All of the domain names he has registered are common dictionary
words, place names, or short phrases and misspellings of the
above. He does not
negotiate domain name prices. He has
never refused to sell a domain name registration for its listed price. Most domain names he has carried in his
inventory for half a decade or so, paying renewal fees and for hosting until
his price is
met by any interested party.
He has never actively solicited a buyer for any domain name in his
inventory, including a trademark holder, which is the only type
of sale
explicitly prohibited by the UDRP. See
Policy ¶ 4(b)(i).
Mr.
Gregory does not wish to make public details of his domain name sales
activities, as this is confidential information that could
prove damaging to
his business and legal interests, and, as discussed below, should not be
relevant to this dispute. Mr. Gregory
is willing to assemble and provide this
information to the Panel, as it has requested, for in camera review with assurances from the Panel and from the
National Arbitration Forum of confidentiality of this information as a trade
secret
provided under seal.
3. As is the case with question #1, this
information is not available to Mr. Gregory to provide in response to the
Panel’s order. Such
logs are not kept, as they have never been relevant to
Respondent.
4. The requested evidence should not be at
all relevant to the Panel’s inquiry in this matter. The UDRP applies as a limited contract remedy to a small set of
defined disputes. Strictly speaking, it
does not address traditional U.S. or Philippino common law or statutory
concepts of confusion, dilution, trademark
law in general, or equity. This matter is not a cognizable dispute
under the provisions of the UDRP, and thus the Panel should never get to a
point in its analysis
where this information is relevant. Paragraph 4(a)(iii) of the UDRP requires
that the domain name both be registered and used in bad faith for the dispute
to be a dispute
for which the UDRP is applicable. As discussed in the Response to the Complaint, the definitions of
bad faith in Policy paragraph 4(b) are not met in the present case,
and three
previous Panels have found that Mr. Gregory’s actions do not amount to bad
faith. Furthermore, as the domain name
is a common term (and one that applies to Mr. Gregory in his present
circumstances, according to the
dictionary definition of that word), and as he
is the first-in-time registrant, Mr. Gregory has a legitimate interest in the
domain
name under Policy paragraph 4(a)(ii).
For these reasons, the Panel should dismiss the Complaint and not have
to make any inquiry into the effectiveness of Mr. Gregory’s
domain name sales
and linking efforts.
Even
if the Panel looks to Policy ¶ 4(b)(i), as discussed in the Response to the
Complaint, there was still no intent to sell the
domain name registration to the Complainant at the time the
domain name was registered. Therefore,
whether or not Mr. Gregory is attempting to sell its rights in the domain name
at issue for more than documented out of
pocket costs is also irrelevant. Furthermore,
the UDRP does not specifically look to a pattern or practice of domain name
sales.
To the extent that it is of any relevance, his attempted actions are publicly displayed. His success, or lack thereof, at selling
domain name registrations not at issue in this dispute (also common names) is
not relevant, and three
other panels did not find his line of business a factor
indicating he should lose the disputes to which he has been a party.
Because
server logs do not exist, it is a moot issue as to whether or not they are probative
of anything of value in resolving this
case.
However, as pointed out in the Response to the Complaint, a Google
search turns up Complainant’s website as the very first hit. Complainant is also the first listed result
with Altavista, and third with HotBot, though the first two hits are fan sites
related
to Complainant. To the extent
that the Panel is worried about Respondent diverting traffic intended for
Complainant as a result of search engine searches,
there does not appear to be
a concern of Respondent’s making.
Given
Respondent’s arguments that this is not a cognizable dispute under the UDRP, as
there was no bad faith in the registration of
the domain name, and that he has
a legitimate interest in the domain name, arguably even a later use of the
domain name intended
to damage the trademark of Complainant would not turn this
into an applicable dispute under the UDRP.
However, Mr. Gregory is not using the domain name to damage
Complainant’s mark. Providing a link
from which Internet users have the option to connect to an adult entertainment
site does not make Complainant’s trademark
a stronger mark, and it does not
affect the legitimacy of Mr. Gregory’s registration of the domain name or his
rights in that name.
5. Because Complainant has not met its
burden of proof and shown bad faith in the registration of the domain name, and
because Mr. Gregory’s
legitimate interest in the domain name has not been
refuted, there is no cognizable complaint under the UDRP. As a result, his use of the domain name to
link to adult entertainment sites is an acceptable and fair use for the
purposes of the
UDRP. Because
Complainant’s mark is not a “famous” mark in the trademark sense, is
geographically limited in its scope, and is used for
goods and services substantially
distinct from domain name speculation and linking to pornography (whether
featuring local models
or foreigners…), even in the trademark sense,
Respondent’s use of the domain name is a fair one.
Linking
from the domain name to adult entertainment sites, which Mr. Gregory’s
affidavit states has not been done for over a year,
is simply a means of trying
to generate some revenue to offset the carrying costs of what the Etam case refers to as Respondent’s
“legitimate interest in using the domain name for goods or services, the domain
name is a business
asset.” As cited by
the winning party in Scorpions
Musikproductions und Verlagsgesellschaft MBH .v. Alberta Hot Rods,
D2001-0787 (WIPO Nov. 7, 2001) (“[t]he mere fact that Respondent gains income
from the domain name is not, in itself, bad faith”). If Mr. Gregory’s ownership of the domain name does not offend the
UDRP, there is nothing in the UDRP that makes his use of the domain
name to
link it to adult entertainment sites unfair.
Finally,
although the Panel’s order states that “[t]his allegation [involving links to
adult entertainment sites] makes this case
different from the typical domain
name speculator cases cited in Respondent's Response,” it is in fact the exact
same circumstances
in the three preceding cases successfully defended by Mr.
Gregory in which he listed domain names for sale on the same page as <foreigner.com>, each of which were linked to exactly the
same page contained in Complainant’s Exhibit O to its Complaint.
Complainant’s
Submission
Respondent has failed to provide the
requested information; therefore, Complainant is incapable of submitting
meaningful, responsive
commentary. Respondent states that “the requested
evidence should not at all be relevant to the panel’s inquiry in this matter.”
Notwithstanding Respondent’s disregard for the Panel’s inquiry, this
information is indeed significant, which is presumably why Respondent
did not
provide said information.
Throughout his supplemental response,
Respondent intimates that it is too burdensome to secure the information
requested by the Panel. It is difficult
to believe that Respondent has actual knowledge of figures such as the amount
of money expended on his business endeavors,
but he lacks knowledge about
income generated. In addition, Respondent states that he “has never asked [his]
web hosting service
to provide [him] with logs of any kind.” Thus, Respondent
indicates that he made no effort to secure this information. The Panel
should
not allow Respondent to hide information, or hide behind said information,
which is completely out of the reach of Complainant.
The Panel should consider
these tactics as further admissions of bad faith.
Respondent’s lack of cooperation serves to
reinforce the allegations set forth in the Complaint – that Respondent engaged
in bad faith
registration of the domain name. Respondent’s unpersuasive apology
for utilizing the domain name for pornographic purposes (i.e.,
that he needed
the money) does not excuse the fact that he took a famous, registered trademark
and linked it to material that has
nothing to do with his alleged status as
foreigner. See Valspar
Sourcing Inc. v. TIGRE,
FA 112596 (Nat. Arb. Forum June 4, 2002) (holding that <paint.biz> is
protectable by complainant based on common law use of
trade names and slogans
by complainant).
Respondent’s fair-use analysis is
suspiciously devoid of any UDRP analysis of whether adult entertainment
services constitute fair
use of a domain name. Respondent’s analysis is
inapposite with the decision cited by this panel, Etam, plc v. Alberta Hot
Rocks, D2000-1654 (WIPO Jan. 31, 2001). That panel held that Etam provided no evidence of the
strength of its “Tammy” mark. By comparison, the Complaint at hand includes
numerous examples of the strength of Complainant’s mark (e.g., the sale of
sixty million albums worldwide, which does not even include
even more
substantial sales of merchandise and concert tickets). That panel also drew a correlation between a
woman’s name, Tammy, and pornographic site featuring women. Respondent
at hand does not even attempt to explain the correlation between the
pornographic content on his website and his self-proclaimed
“experiences as a
foreigner living in a third world country.”
Putting aside Respondent’s broad, unfounded
claim of fair use, the panel
in Matchnet PLC v. MAC Trading, D2000-0205 (WIPO May 11, 2000)
(determining that it is not a bona fide offer of goods and services to
use <americansingle.com> for commercial gain by attracting Internet users
to third-party
sites offering sexually explicit and pornographic material, and
that such use is calculated to mislead consumers and tarnish Complainant’s
mark). Arguably, “American Single” has even a stronger conceptual link to
pornographic material than “Tammy.” On the other hand,
“Foreigner” has nothing
to do with pornography and is an internationally recognized trademark.
Respondent
admits to registering numerous domain names. He would have us believe that he
thumbed through the dictionary looking for
common names, as indicated in his
Affidavit. However, he admits to intentionally registering misspelled names.
This is yet another
example of Respondent’s efforts to surreptitiously divert
traffic to his websites. Very similar circumstances existed in Traditions
Ltd. v. noname.com, FA 94388 (Nat. Arb. Forum May 8, 2000) (finding bad
faith when the following circumstances are present: registration of numerous
domain names, having no business plan, engaging in no business activity in
connection with domain name, as well as submitting no
reliable evidence of any
legitimate use of domain name).
Respondent’s
contention that he has “never refused to sell a domain name for its listed
price” is Respondent’s way of avoiding the
real issue of whether said price is
solely based upon Respondent’s actual registration and transfer costs.
Conspicuously absent from
the Attachment to Respondent’s Affidavit are
Respondent’s portion of the e-mail dialogues. The information withheld by
Respondent
also makes it impossible for Respondent to prove its contention that
“it has never actively solicited a buyer for any domain name
in his inventory…”
See Hearst Communications, Inc. and Hearst Magazines Prop., Inc. v. David
Spencer d/b/a Spencer Assocs., and Mail.com, Inc., FA 93763 (Nat. Arb.
Forum April 13, 2000) (Respondent had registered a number of generic names as
well as many others that were
held to be identical or confusingly similar to
registered trademarks of other entities.
Respondent listed domain name registrations for sales at prices considerably
above cost of acquiring them, including <esquire.com>,
which was held to
constitute bad faith); see also X/Open Co., Ltd. v. Marshall Sorensen,
D2002-0297 (WIPO June 24, 2002) (finding that a link to a commercial site can
constitute bad faith use).
Respondent
would have this Panel be persuaded by decisions of previous panels for
unrelated domain names registered by him. Cf. Univ. of Iowa v. Juraj
Vyletelka, D2002-0349 (WIPO May 31, 2002) (finding that Respondent’s two
other domain name registrations did not in and of itself disprove
bad faith registration and use).
As
for Respondent’s observation about Complainant’s Exhibit O as attached to the
Complaint, as can be seen by the bottom margins in
that Exhibit, the data
printed via that particular web browser clearly bled from one printed page to
another, thus the date needed
to be provided separately. Unless Respondent is
admitting his took down his pornographic content and/or ludicrous price demand
on
a certain date in fear of reprisal, Respondent’s concern is misplaced.
The
Panel finds that:
1.
With the
exception of the “.com” extension, the disputed domain name is identical to the
FOREIGNER trademark owned by Complainant;
2.
Respondent,
however, has rights or legitimate interests in the domain name.
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.
Complainant
holds rights in the trademark FOREIGNER. The domain name in question is <foreigner.com>.
With the exception of the extension “.com,” the domain name is identical to Complainant’s
mark.
This
has been a difficult case. The Panel has struggled with the fact that in
proceedings of this nature there is no opportunity to
test the veracity of the
parties’ submissions through cross-examination. However, under the UDRP the
Panel is required to make a
decision based on the wording of the Policy and
evidence before it. The Panel has reviewed all the evidence, the submissions of
the
parties and the authorities cited by the parties, and we have considered
this matter at length. The majority of the Panel has concluded
that, on the
evidence before us, Respondent has shown a legitimate interest in <foreigner.com>.
It
is clear from the evidence that Complainant does not hold exclusive rights in
FOREIGNER. He does have exclusive rights in relation
to the uses for which he
has registered trademarks, but the word FOREIGNER itself is a common English
language word.
Respondent
has presented evidence, which Complainant has been unable to refute, that he is
legitimately in the business of domain
name speculation. He registers domain
names comprised of generic words or geographic locations. Respondent contends
that this is
a legitimate business and that one does not seek out the value of
domain names based on trademarks, but rather the value is perceived
from the
common use of a term or phrase registered in the domain name. Respondent
therefore argues that this is a legitimate fair
use of a generic domain name
that confers rights or legitimate interests in the <foreigner.com>
domain name. See Fifty Plus Media Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000) (finding
that Complainant failed to prove that Respondent had no rights in the domain
name and had registered and used the domain name in bad faith where Respondent
is an Internet business which deals in selling or
leasing descriptive/generic
domain name registrations).
Based
on the authorities cited, we agree that registering common or generic words,
even with the intent to resell the registrations,
can be a legitimate business
activity. The evidence before us establishes that this is precisely the
business in which Respondent
is engaged. We do have some reservations about
Respondent’s refusal to provide us with any financial information on the extent
of
his domain name sales business, but the ultimate onus in these cases is on
Complainant who has been unable to refute Respondent’s
evidence that sale of
domain name registrations is his business.
The
Panel was of the opinion that unless there were something in the evidence to
distinguish this case from others where a legitimate
interest was found in
similar circumstances, we would be inclined to follow the line of cases that
finds a legitimate interest in
these circumstances. See, e.g., Allocation Network GmbH v. Steve Gregory,
D2000-0016 (WIPO March 24, 2000); see also Cream Holdings Ltd. v.
Nat’l Internet Source, Inc., D2001-0964 (WIPO Sept. 28, 2001).
There
is no evidence before us that Respondent registered this domain name with the
intent to sell the registration to Complainant
or to a competitor. The
unrefuted evidence is that he registered the domain name along with numerous
others with the intent to sell
those registrations to willing purchasers.
The
one area of possible distinction that gave the Panel some difficulty was the
fact Respondent linked the website in question to
a number of “adult
entertainment sites”. A review of the evidence established that the domain name
<foreigner.com> linked to a web page containing one link to a list
of domain name registrations for sale and eight links to sites offering “adult
services”. In his supplemental submissions, Respondent admitted that he did
derive some revenue by putting up links from his many
domain names to adult
entertainment sites as part of his business. While the Panel is of the view
that linking to pornography might,
in some cases, tarnish or dilute a famous
mark (such as <candyland.com> tarnished Hasbro’s Candyland game) (Hasbro,
Inc. v. Entm’t Group, Ltd. et al., 1996 WL 84853 (W.D. Wash. 1996)), the
majority of the Panel is of the view that the mark in question must be
distinctive. The word
“foreigner” simply is not distinctive but rather is a
common English word.
Having
found nothing to distinguish this case from other similar cases before it, the
majority of the Panel therefore holds that Respondent
has a legitimate interest
in the contested domain name.
In
light of the Panel’s findings with respect to rights or legitimate interests,
the Panel need not deal with the question of bad
faith.
The
Panel would remind the parties, however, that this case was decided on the
basis of the record before us which by virtue of the
very nature of the
proceeding is a truncated one without the benefit of discovery or the
opportunity to make credibility determinations,
and that this process does not
preclude judicial intervention.
DECISION
The
Complaint of Michael Leslie Jones is hereby DISMISSED.
Anne M. Wallace, Q.C., Panel Chair
Dated: January 14, 2003
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