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Generic Top Level Domain Name (gTLD) Decisions |
Carl J. Reid d/b/a Pure Gold v. Peter
Chao
Claim Number: FA0304000154587
PARTIES
Complainant
is Carl J. Reid d/b/a Pure Gold, Pinehurst, NC (“Complainant”) represented by Edward H. Green, of Coats & Bennett
PLLC. Respondent is Peter Chao,
Santa Monica, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <puregold.com>,
registered with Network Solutions, Inc.
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.
Judge
Irving H. Perluss (Retired) is the Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 15, 2003; the Forum received
a hard copy of the
Complaint on April 17, 2003.
On
April 17, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <puregold.com>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network Solutions, Inc.
has verified that
Respondent is bound by the Network Solutions, Inc. registration agreement and
has thereby agreed to resolve domain-name
disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
April 21, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 12,
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@puregold.com by e-mail.
A
timely Response was received and determined to be complete on May 12, 2003.
An
Additional Submission by Complainant was received on May 19, 2003, and was
timely.
On May 19, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Judge Irving H.
Perluss (Retired) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1.
The
disputed domain name <puregold.com> is virtually identical and
confusingly similar to Complainant’s mark PURE GOLD®. The only difference is the absence of a space between the words
“pure” and “gold.”
2.
On
information and belief, Respondent has no rights or legitimate interests in
respect of the disputed domain name <puregold.com>. Respondent has not used the domain name in
connection with a bona fide offering of goods or services; is not commonly
known by the
domain name; and is not making a legitimate noncommercial or fair
use of the domain name. Respondent is
not making use of the domain name at all, other than as a commodity to sell to
legitimate trademark owners at an exorbitant
price. The domain name does not resolve to any functional website. On information and belief, Respondent has
maintained the <puregold.com> domain name for nearly five years,
yet has never published any website under the domain name.
3.
The
disputed domain name <puregold.com> was registered and/or is being
used in bad faith solely for the purpose of selling the domain name
registration to Complainant, who
is the owner of the registered trademark PURE
GOLD®, for valuable consideration for $30,000, which is far in excess of
Respondent’s
conceivable out-of-pocket costs directly related to the domain
name.
B.
Respondent
1.
Respondent
concedes that Complainant’s mark and the disputed domain name are substantially
similar, but contends that the words “pure”
and “gold” are generic. There is no clear association of the term
“puregold” to the Complainant’s business interest of Gentlemen’s Clubs that
creates a position
above any of the other registered trademark holders. There are numerous businesses throughout the
United States that operate under the name Pure Gold or Puregold that are not
affiliated
with the Complainant. A
search using <Google.com> (on 5/7/03) returned 1.4 million results for
“pure gold” and 2,400 results for “puregold.”
There are seventeen currently live registered trademark holders of “Pure
Gold” or Puregold.”
2.
Respondent
is the co-founder and co-owner of two businesses based in California. Both businesses are Electronics (industrial
and consumer) manufacturing and distribution related. Respondent’s original purchase of the disputed domain name was
intended for online distribution of consumer electronics products as
related to
one of the entities. The first company
was incorporated prior to 1991.
Operating under the name “Varad,” using <Varad.com> as its
website, there was discussion about rebranding the company as “PureGold.” Respondent has within the past 18 months
formed a new entity for which the disputed domain name may be well suited. Respondent is the owner of five domain names
at this time and has reserved domains that will suit future businesses. Respondent asserts that his history of
legitimate entrepreneurial activity and the absence of any effort to actively
market the domain
names he controls reflect a pattern of legitimate use of
domain names for commercial activity.
Respondent has not created a business vehicle that currently uses the disputed
domain name but he reserves the right to do so in the
future.
3.
Respondent
registered the disputed domain name prior to the Complainant’s trademark
filing. Respondent had never heard of
Complainant’s business, which is confined to the East Coast, until contacted by
the Complainant’s representative.
Respondent has never solicited Complainant nor has he solicited
Complainant’s competitors or any other entity for the sale of the
disputed
domain name. Respondent has no
intentions of using the disputed domain name in connection with Gentlemen’s
Clubs nor would he sell the domain name
to a competitor of Complainant or use
it in a manner harmful to Complainant.
Complainant has omitted in its claim of bad faith registration with
intent to sell the disputed domain name that Complainant has initiated
all
contacts between Respondent and Complainant.
4.
The
disputed domain name was not registered in bad faith for the purpose of selling
it to Complainant.
5.
Complainant
claims that the disputed domain name is being maintained solely for sale to
Complainant. It made an unsolicited
offer of $2,500 for the domain name.
Moreover, Complainant had responded to Respondent’s counteroffer of $30,000
with a second offer of $4,000. The
omission of this information in the filing of the Complaint constitutes the use
of the UDRP policy in bad faith.
6.
Complainant
claims that the disputed domain name is confusingly similar to its trademark
although Respondent provided Complainant
with information about the generic
nature of the term “Pure Gold” and a printout from USPTO identifying the
plethora of Pure Gold
trademarks indicating that many people would have a claim
on <puregold.com> if any trademarker of a generic term were
allowed to lay exclusive claim to the disputed domain name. Using the UDRP policy to secure through
arbitration what they failed to secure through attempted purchase and knowing
their claim
is impaired by the generic terms involved constitutes the use of
the UDRP to hijack the <puregold.com> domain.
C. Additional Submission by Complainant
1.
The
disputed domain name <puregold.com> is virtually identical to
Complainant’s mark. The existence of
other registrations of the mark, relating to different goods and services, is
irrelevant.
2.
Complainant’s
mark is not generic as a matter of law.
The mark would be generic only if it related to the sale of items made
entirely of the metal gold. A generic
term is one that refers to the genus of which the particular product is a
species. Exotic dancing is obviously
not one species in the genus of objects made from the element Au. Thus, the term “Pure Gold” as applied to
exotic dancing is arbitrary, and as such is inherently distinctive, and
afforded the strongest
protection under trademark law.
3.
Respondent
admits that in the many years since he registered the disputed domain name, he
has never operated any website using the
domain name in association with any
legitimate business. He sets forth an
unsubstantiated claim to a one-time intent to possibly use the domain name in
association with a re-branded business
– a use that never occurred. Respondent then alleges following many years
of no use, he has recently formed a business entity where the domain name “may
be well
suited.” However, in the year
and half that this new entity has allegedly existed, Respondent has failed to
utilize the domain name other than
to offer it for sale for $30,000.
4.
Respondent
admits making two statements that Complainant asserts prove bad faith
registration of the mark: (1) He
offered it for sale to Complainant for $30,000, and (2) He threatened to sell
the domain name to another trademark owner for
$1 if Complainant pursued his
legal rights in the mark. The price is
exorbitant by any reasonable standard.
Furthermore, despite Respondent’s attempt to couch it as a “defensive
response,” the statement that he would sell the domain name
to another
trademark owner for $1 in the face of legal action is difficult to characterize
as anything other than a threat calculated
to dissuade Complainant from pursuing
his legal rights.
5.
Even if
credence were given to Respondent’s unsubstantiated allegation that he
originally obtained the domain name for use in association
with a business,
many years of no such actual use, coupled with an offer to sell the domain name
for $30,000 (or $1 if legal action
is pursued) evidences bad faith in the
ongoing use of the domain name, regardless of Respondent’s motivation in
initially registering
it. Respondent’s
manifest primary interest in maintaining the domain name is to sell it to an
owner of a “Pure Gold” trademark for an
exorbitant sum, whether or not he knew
of Complainant’s particular business at the time he initially registered the
domain name. It is precisely this
speculation in domain names that are identical to registered trademarks that
ICANN Policy ¶ 4(b)(i) is designed
to thwart.
6.
Respondent’s
allegation of Reverse Domain Name Hijacking is without merit. The relative timing of Complainant’s
trademark registration filing and Respondent’s registration of the domain name
is irrelevant. Whether or not a
trademark filing predates a domain name registration is simply not an element
of a UDRP dispute. Complainant’s
initiation of negotiations to purchase the domain name at a reasonable price
evidences nothing more than a good faith
attempt at a mutually beneficial
business transaction for an unused domain name, avoiding the expense, delay,
and hostility of initiating
legal action.
FINDINGS AND DETERMINATIONS
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.
This matter calls for summary disposition.
Respondent registered the disputed domain name with a
Registrar, Network Solutions, Inc., on May 2, 1997. Complainant filed its application with the United States Patent
and Trademark Office for the mark “Pure Gold” on November 20, 1997,
and the
registration date for the mark is November 16, 1999. While the Trademark Electronics Search System indicates a first
use of the mark in commerce on November 11, 1993, there is no substantiation
of
this indication, nor is there any evidence presented to the Panel that would
establish that Complainant had common law rights
in its mark prior to the
registration of the disputed domain name by Respondent.
Thus, it may be assumed arguendo that Complainant’s mark and the
disputed domain name are identical and confusingly similar (which clearly they
are).[1]
Further, it may be assumed arguendo that Respondent does not have a
legitimate interest or rights in the disputed domain name by virtue of its
failure to use the name
over an extended period.[2]
Finally, it even may be assumed arguendo that Respondent is using the
disputed domain name in bad faith by holding it passively,[3]
and by offering the name for sale.[4]
Nevertheless, the essential prerequisite
which Complainant has not demonstrated is bad faith registration.
The disputed domain name was registered on May 2, 1997, while the
application for Complainant’s mark was filed on November 20, 1997,
and the
actual registration date of the mark with the United States Patent and
Trademark Office was November 16, 1999.
Respondent
asserts that it did not know of Complainant’s existence at the time it
registered the disputed domain name and, obviously,
it cannot be charged with
constructive knowledge of Complainant’s mark at the time of registration.
The Panel finds and determines,
accordingly, that Respondent’s registration of the disputed domain name prior
to Complainant’s application
for a mark renders Complainant’s reliance on its
mark irrelevant and that Complainant has not established bad faith registration
as required by Policy ¶ 4(a)(iii). See
Ode
v. Intership Ltd.,
D2001-0074 (WIPO May 1, 2001) (stating that “We are of the unanimous view that
the trademark must predate the domain name”).
The Panel declines to find that there was
reverse domain name hijacking because it believes that Complainant acted in
good faith,
albeit erroneously.
DECISION
The
Complainant having failed to establish all three elements required under ICANN
Policy, the Panel concludes that relief shall be
DENIED.
Judge Irving H.
Perluss (Retired), Panelist
Dated:
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URL: http://www.worldlii.org/int/other/GENDND/2003/547.html