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Generic Top Level Domain Name (gTLD) Decisions |
Oakwood Asset Management, Inc. v.
GradeSaver c/o Olivia Verma a/k/a GradeSaver.Com
Claim Number: FA0406000286014
PARTIES
Complainant
is Oakwood Asset Management, Inc. (“Complainant”),
represented by Howard C. Miskin of Stoll, Miskin & Badie,
350 Fifth Avenue, Suite 4710, New York, NY 10118. Respondent is GradeSaver c/o Olivia Verma a/k/a GradeSaver.Com (“Respondent”),
represented by Abhihit Das of Tremont Law Group LLP, One Beacon Street, Boston, MA 02108.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <novelguides.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.
David
P. Miranda, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 11, 2004; the Forum received
a hard copy of the
Complaint on June 14, 2004.
On
June 15, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that
the <novelguides.com> domain
name is registered with Network Solutions, Inc. and that 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
June 17, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of July 7,
2004 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@novelguides.com by e-mail.
A
timely Response was received and determined to be complete on July 14, 2004.
On
July 19, 2004, a timely Additional Submission was received from Complainant.
On
July 27, 2004 an Additional Submission was received from Respondent.
On July 22, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed David P.
Miranda, Esq. as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name <novelguides.com> be transferred
from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant,
Oakwood Asset Management, Inc. (“Complainant”), is the owner of a website
titled <novelguide.com> that provides
an education supplement for better
understanding of classic and contemporary literature, consisting of literary
analysis and synopses
of popular books.
Complainant also owns <novelguide.net> and
<novelguide.org>. Complainant
contends that its predecessor in interest began using the NOVELGUIDE mark on or
about June 8, 1998 in connection with
its goods and services. On February 2, 2004, Complainant filed a
trademark application with the United States Patent and Trademark Office for
the mark NOVELGUIDE
for online and printed publications that summarize chapters
of popular books, in International Class No. 16. In the application Complainant contends that its date of first
use in commerce is June 8, 1998.
Complainant
contends that Respondent’s <novelguides.com> domain name is
confusingly similar to Complainant’s trademark and that Respondent did not
register its <novelguides.com> domain name until January 31,
2000. Complainant contends that because
the mark associated with both Complainant and Respondent’s primary website is
for providing similar
services, that there is likelihood of confusion between
Respondent’s use of the domain name and Complainant’s mark. Complainant contends that Respondent’s <novelguides.com>
domain name is intended to direct customers and readers wishing to utilize
Complainant’s services directly to Respondent’s website
at
<gradesaver.com>, and that Respondent has intentionally attempted to
attract for commercial gain Internet users to Respondent’s
website by creating
a likelihood of confusion with Complainant’s mark as to the source,
sponsorship, affiliation or endorsement of
Respondent’s website, products and
services.
B.
Respondent
Respondent,
GradeSaver, LLC (“Respondent”), contends that Complainant does not have
federally registered or common law trademark rights
to NOVELGUIDE. Respondent further contends that
Complainant’s conclusion that it has “built up a reputation for providing
quality literary analysis
and synopsis of books to its readers” is not
sufficient to establish secondary meaning or common law trademark rights. Respondent further contends that the
proposed mark NOVELGUIDE is merely descriptive because it is a product that is
a guidebook, explanatory
tool or summary of a book or novel.
Respondent
contends that Complainant has not and cannot offer proof that NOVELGUIDE has
sufficient secondary meaning, such that consumers
identify summaries of novels
with its goods and services. Respondent
further contends that it has legitimate rights and interests in the <novelguides.com>
domain name because it is used on the Internet to link users directly to its
website, which provides free novel guides with full
summaries and
analysis. Respondent contends that it
has offered services via the Internet using the <novelguides.com>
domain name since January 31, 2000, and was not informed of the potential
domain name dispute until March 26, 2004.
C.
Additional Submissions
Both
Complainant and Respondent made additional submissions that were considered by
the Panel. Complainant contends that it
has common law rights to the NOVELGUIDE service mark because every one of its
1500 plus website pages
has a reference to the NOVELGUIDE mark. Every visitor to the website has seen the
mark and any advertisements used to promote the website contain the mark. Complainant contends that the term
NOVELGUIDE is not merely descriptive, or an industry standard because there are
several businesses
that perform the same services that do not use that
term. Complainant contends that
Respondent registered the domain name in bad faith because Respondent’s website
diverts Internet users seeking
Complainant’s goods and services to Respondent’s
website through the use of a domain name that is identical to Complainant’s
name
and mark. Complainant further
contends that Respondent never used the term “novelguides” to describe its
services until March 26, 2004, after
Complainant had sent a cease and desist
letter to Respondent.
Respondent
contends that Complainant has failed to establish any attachment of secondary
meaning such that consumers would identify
NOVELGUIDE as a distinctive source
of in depth analysis of novels, thus Complainant cannot establish common law
trademark rights. Respondent further
contends that Complainant has failed to submit any proof of consumer confusion.
FINDINGS
The panel finds that the <novelguides.com>
domain name is confusingly similar to NOVELGUIDE, but that Complainant has not
established trademark rights to the mark.
Complainant has failed to establish all of the required elements of its
claim and its request for transfer is denied.
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 asserts that it has established rights
in the NOVELGUIDE mark by filing an application for the mark with the United
States
Patent and Trademark Office (Serial No. 76/573,357 filed February 2,
2004). Complainant also argues that, even if the Panel finds its
pending trademark application for the NOVELGUIDE mark insufficient to prove
rights in the mark, Complainant may establish common law rights through
secondary meaning. Complainant contends
that its products and services have built up a reputation for quality in
literary analysis.
The
<novelguides.com> domain name registered by Respondent is
confusingly similar to Complainant’s NOVELGUIDE mark, because it merely adds
the letter “s”
to Complainant’s mark and adds a generic top-level domain
(gTLD). Addition of the letter “s” to
Complainant’s mark along with the addition of a gTLD is inadequate to negate
the confusing similarity
between a mark and domain name. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13,
2000) (finding that a domain name which differs by only one letter from a
trademark has a greater tendency
to be confusingly similar to the trademark
where the trademark is highly distinctive); see also Blue Cross & Blue Shield Ass’n v.
InterActive Communications, Inc., D2000-0788 (WIPO Aug. 28, 2000) (finding
that a domain name which merely adds the letter ‘s’ to Complainant’s mark is
sufficiently
similar to the mark to cause a likelihood of confusion among the
users of Complainant’s services and those who were to view a website
provided
by Respondent accessed through the contested domain name); see also Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain
name for the purpose of determining
whether it is identical or confusingly similar).
Complainant
does not have a federally registered trademark, and has not proven sufficient
common law rights in the NOVELGUIDE mark,
because Complainant failed to provide
evidence that would establish any secondary meaning associated with its goods
or services. Complainant’s assertions
that its products and mark have acquired a reputation among consumers is
insufficient without supporting
evidence to show secondary meaning. See Weatherford Int’l, Inc. v. Wells, FA 153626
(Nat. Arb. Forum May 19, 2003) (“Although
Complainant asserts common law rights in the WELLSERV mark, it failed to submit
any evidence indicating extensive use or that
its claimed mark has achieved
secondary source identity . . . [a]lthough Complainant’s WELLSERV product and
related services may
be well-known among relevant consumers, that is a finding
that must be supported by evidence and not self-serving assertions.”);
see
also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA
156715 (Nat. Arb. Forum June 24, 2003) (approving of and applying the
principles outlined in prior decisions that recognized
“common law” trademark
rights as appropriate for protection under the Policy “if the complainant can
establish that it has done business
using the name in question in a sufficient
manner to cause a secondary meaning identifiable to Complainant's goods or
services”).
Complainant’s
pending trademark application, without more, does not establish rights in the
NOVELGUIDE mark. See Razorbox, Inc. v.
Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003) (finding that Complainant did not
establish the requisite trademark or common law rights
to grant Complainant the
necessary standing for the Panel to find in its favor as Complainant’s pending
trademark application did
not, in and of itself, demonstrate trademark rights
in the mark applied for); see also Amsec Ent. v. McCall, D2001-0083 (WIPO Apr. 3, 2001) (finding
that Complainant’s pending trademark applications do not establish any
enforceable rights
to the mark until a trademark registration is issued).
Complainant’s
contention that it received rights to the mark NOVELGUIDE from its predecessor
in interest is not supported by the record.
Since Complainant has not sufficiently established rights in the
NOVELGUIDE mark through either common law rights or its pending trademark
application, Respondent’s registration of the <novelguides.com> domain name predates Complainant’s alleged rights in the mark. See Phoenix Mortgage Corp. v. Toggas,
D2001-0101 (WIPO Mar. 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily
implies that Complainant’s rights predate Respondent’s
registration . . . of
the domain name”); see also Intermark Media, Inc. v. Wang Logic Corp.,
FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding that any enforceable
interest that Complainant may have in its common law mark
did not predate
Respondent’s domain name registration, therefore finding that Policy ¶ 4(a)(i)
had not been satisfied).
Respondent has used
the disputed domain name to access its services since January 31, 2000, while
Complainant first informed Respondent
of its potential rights on March 26,
2004. Respondent’s use of the disputed
domain name to describe the content of the website that provides literary
summaries is a bona fide
offering of goods or services pursuant to Policy ¶
4(c)(i). See Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13,
2001) (“Respondent is using the domain <groceryoutlet.com> for a website
that links to
online resources for groceries and similar goods. The domain is
therefore being used to describe the content of the site,” as evidence
that
Respondent was making a bona fide offering of goods or services with the
disputed domain name); see also Tough
Traveler, Ltd. v. Kelty Pack, Inc, D2000-0783 (WIPO Sept. 28, 2000)
(finding that Respondent had a legitimate interest in the domain name,
<kidcarrier.com>,
as a generic term for a class of products that
Respondent sells).
Since
the Panel finds that Complainant failed to establish rights in the NOVELGUIDE
mark prior to Respondent’s registration of the
<novelguides.com>
domain name, there is no evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc.,
D2000-0174 (WIPO May 26, 2000) (finding no bad faith where Respondent
registered the domain prior to Complainant’s use of the mark);
see also Ode v. Intership Ltd., D2001-0074 (WIPO
May 1, 2001) (“We are of the unanimous view
that the trademark must predate the domain name.”).
DECISION
Complainant
failed to establish all three elements required under the ICANN Policy, the
Panel concludes that relief requested shall
be DENIED.
David P. Miranda, Esq., Panelist
Dated: August 5, 2004
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URL: http://www.worldlii.org/int/other/GENDND/2004/1004.html