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Generic Top Level Domain Name (gTLD) Decisions |
Gusztav Ujfalusi Fogarassy v. Domain
Deluxe
Claim Number: FA0407000296270
PARTIES
Complainant
is Gusztav Ujfalusi Fogarassy,
(“Complainant”), Pro Se Attorney International, P.O. Box 708, Marshall, MN
56258. Respondent is Domain Deluxe (“Respondent”),
represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <dancefusion.com>,
registered with The Registry At Info
Avenue d/b/a IA Registry.
PANEL
The
undersigned certify that he or she have acted independently and impartially and
to the best of his or her knowledge have no known
conflict in serving as
Panelists in this proceeding.
Richard
Hill (presiding Panelist), Steven L. Schwartz, David P. Miranda as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 13, 2004; the Forum received
a hard copy of the
Complaint on July 14, 2004.
On
July 15, 2004, The Registry At Info Avenue d/b/a IA Registry confirmed by
e-mail to the Forum that the domain name <dancefusion.com>
is registered with The Registry At Info Avenue d/b/a IA Registry and that
Respondent is the current registrant of the name. The Registry At Info Avenue d/b/a IA Registry has verified that
Respondent is bound by the The Registry At Info Avenue d/b/a IA Registry
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
July 19, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of August 9,
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@dancefusion.com by e-mail.
A
timely Response was received and determined to be complete on August 9, 2004.
Complainant
submitted nine additional submissions, all of which were tardy in terms of
Supplemental Rule 7. Respondent
submitted an additional submission after reception of Complainant’s ninth submission.
All
of the additional submissions were found to be procedurally deficient by the
Forum.
On August 25, 2004, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the Forum appointed Richard Hill as
Presiding Panelist and Steven L.
Schwartz, and David P. Miranda as Panelists.
On
August 26, 2004, after the Panel had been appointed, Complainant asked for a
delay until August 31, 2004 for one more additional
submission. This submission was received on September 2,
2004, after the Complainant’s self-imposed deadline. It was found to be procedurally deficient by the Forum.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
alleges that he holds registered trademarks in several countries for the
DANCEFUSION mark. He alleges that the
Respondent offered the disputed domain name for sale and uses the disputed
domain name to offer commercial services,
thereby violating Complainant’s
trademark rights. According to
Complainant, Respondent’s actions are not a bona fide offering of goods or
services.
In
addition, Complainant alleges that there was no bona fide offering of goods or
services in connection with the Respondent’s use
of the disputed domain name
before any notice to Respondent of the dispute.
Furthermore,
states the Complainant, the Respondent’s actions violate the provisions of the
domain name registration agreement.
Complainant states:
For
example, [Respondent violates agreements] pertaining to (a) “…the sale of
illegal or illegally obtained items;” (b) “must not
infringe any third party’s
rights, including but not limited to… trademark;” also Section 13.1 Applicable
Laws. “Registrant [the
Respondent] agrees to comply with all applicable local,
state, federal, and international laws, statutes, rules and regulations…”
or in
other words, the Agreement makes it the Respondent’s responsibility “to
determine whether your domain name registration infringes
or violates someone
else’s rights” (ICANN Policy Section
2(d). In practical terms this means the Respondent should have made sure not to
buy from The Registry a USPTO-registered service
mark or keep offering it for
exorbitant resale even after being warned by the Complainant in 2002. By
contractual agreement the Respondent
should have researched, if it was not
obvious, that the particular domain name to be resold at such a high price was
a protected
service mark or not.
Complainant
alleges that the registration was made in bad faith, because:
Such
words as “my client [Respondent] registered this … domain name without
knowledge of any trademark owned by your client” are no valid defense
for bad
faith intent registration and use of Complainant’s service mark. The deed
of bad faith intent can be demonstrated and proven on at least two counts: 1.
having checked, prior to registration, and found that
the name was a service
mark yet still registering it as a domain name for resale to its rightful
owner, his competitors, or whoever
the highest bidder would be; 2. not having
checked whether registering the domain name for trafficking and profiteering in
that name
would be a violation of The Registry-Respondent (registrant)
contractual Terms of Agreement, yet still going ahead with it. On either
count
the Respondent could make a lawful or an unlawful choice--and apparently
made the latter. The proof of intent is in the resultant deed, for
otherwise trying to prove intentional, willful state of mind would be mere
conjecture.
B.
Respondent
Respondent
alleges that Respondent registered the disputed domain name because it
incorporates the common descriptive term “dance
fusion,” which is subject to
substantial and non-infringing use by parties unassociated with Complainant. Respondent alleges that it did not register
the disputed domain name with Complainant in mind.
Furthermore,
Respondent claims that it has rights and legitimate interests in the disputed
domain name, because it was using this
name prior to notification of the dispute
and because it incorporates common terms for which the Complainant cannot have
exclusive
rights.
Respondent
concedes that it offered to sell the disputed domain name, but contends that
this action, by itself, does not constitute
bad faith under the Policy.
C.
Additional Submissions
Complainant
submitted nine additional submissions, none of which were timely, since they
were sent after the deadline provided for
in ICANN Rule 7. Complainant’s first additional submission
did not contain any new material facts, and simply re-iterated Complainant’s
rights in its
DANCEFUSION mark as evidenced by registration with the
USPTO. Complainant also addressed a few
of Respondent’s claims in its Response.
In addition, Complainant expressed frustration with delivering all
necessary documents pertaining to this claim to Respondent, due
to Respondent’s
incorrect contact information.
Complainant’s
second additional submission included corrections to a typographical error made
on Complainant’s Annotated Index and
Schedule of Alphabetical exhibits. Complainant’s third additional submission
consisted of a procedural complaint directed towards the National Arbitration
Forum in regards
to the 5 day limit for Complainant to file an additional
written statement in response to Respondent’s answer, and a complaint
pertaining
to Complainant’s frustrated efforts in obtaining Respondent’s
correct contact information.
Complainant’s
fourth additional submission included a request to strike Ms. Linda Byrne from
the pool of Panelists for the addition
of the Honorable Gerald Mager. However, neither Complainant nor Respondent
requested Ms. Byrne as a Panelist during the selection process. Therefore, Ms. Byrne was not named as a
Panelist, and cannot be replaced.
Further, due to Complainant’s failure to submit the Honorable Gerald
Mager’s name to the Forum during the selection process, Complainant’s
untimely
request for the Honorable Gerald Mager will not be considered for purposes of
procedural efficiency. Complainant also
requested the Forum to discard all of Complainant’s additional submissions
submitted prior to the fourth additional
submission, in addition to a demand
for Respondent to provide an explanation with evidence as to why the contact
information Complainant
obtained from the WHOIS database was not a valid
address. Additionally, Complainant
included identical copies of Complainant’s first, second and third additional
submissions.
Complainant’s
fifth, sixth, seventh, eighth and ninth additional submissions consist of nothing
more but numerous duplicate copies
of Complainant’s first, second, third and
fourth additional submissions without the addition of any new, relevant or
material facts
or issues presented.
Respondent’s
additional submission was submitted after Complainant’s ninth additional
submission, and did not include any additional
material facts. Respondent’s additional submission simply
addressed Complainant’s concerns in Complainant’s numerous and excessive
additional submissions. Specifically,
Respondent denied providing incorrect contact information in the WHOIS
database, apologized for Respondent’s error in
stating the date of
Complainant’s earliest registered mark was later than the Registered date of
the disputed domain, and conceded
that Complainant’s mark is a valid registered
trademark that is identical or confusingly similar to the disputed domain
name.
On
August 26, 2004, after the appointment of the Panel, the Claimant submitted the
following message, by E-Mail:
The
August 25, 2004 email by Ms. Johnson, Case Coordinator, about the appointment
of the Panel and related matters, also stated that
basically, correspondence
and contact with the Panel are to be made through the National Arbitration
Forum with copies of written
documents and correspondence also sent to the
other party. This is significant because the Complainant has been unfairly
deprived
of time to submit a complete Additional Written Statement to the
Response on account of irregularities with Respondent's Whois mailing
address
identity that had to be researched time consumedly within the five days
allotted to the Statement to establish the legality
of Respondent's
participation as legal entity in this proceeding. It is grossly unfair
that this vital information gathering left
no time for a complete, proof-read
and corrected Statement with sub-statements made out on all the pertinent
issues as intended.
His choice, as first time NAF/ICANN dispute procedure user
was: take much of the five day available time trying to resolve Respondent's
identity and not include enough of other vital issues for a complete
satatement, or include them and not provide time consumedly
researched, documented evidence of Respondent's postal mail address identity
being possibly false, and be at least partly responsible
for
the consequences of the procedure going on under the Respondent's
possibly fictitious legal identity. This is irrespective of
whether that
identity proves to be correct or not later in the proceeding. The Complainant
should not have been held up by a situation
like this in mid-course and
prevented by it from completing his Additional Written Statement fully. Therefore,
the Complainant will write a letter by Tuesday midnight, August 31,
2004 by email or postal mail or both, to the National
Arbitration
Forum intended for the appointed Panelists with copies to Respondent, and
in that letter include, among related matter,
the evidence-based
arguments addressing issues raised by the Respondent the Complainant
had no time to include in his original Additional
Submission owing to
the exacerbating circumstances described. And the Complainant is hereby
asking the NAF and the Honorable Panelists
that they accept this written
communication as part of the complete record to be considered by the
Panel under NAF Rule 11. c. "Communications Between Parties and Panel.
On
September 2, 2004, the Complainant submitted an additional brief. In this submission, Complainant reiterates
his allegation that the Respondent’s mailing address was not correct, and that
he has rights
to the DANCEFUSION mark which, he claims, is not descriptive,
generic, subject to substantial third party use, or common (contrary,
says the
Complainant, to what the Respondent alleges).
Indeed, states the Complainant, it was he who coined the term
“dancefusion” in 1980. Complainant
states:
The
Complainant hereby requests that professional dance experts of the calibre of
the Complainant of both Complainant’s and Respondent’s
choice on an equal
basis, or the Panel’s choice as approved by both, be brought in to testify
before the Panel at the Complainant’s
and Respondent’s expense, to provide an
acceptable legal basis for the Panel’s decision.
Complainant
further argues that Respondent’s production of many web sites that use the
terms “dance” and “fusion” does not prove that
these are common terms, but
prove, at most, that there are many infringements of Complainant’s mark. Further, argues Complainant, his business
will not be viable if Respondent is allowed to retain the disputed domain name.
Finally,
Complainant alleges that Respondent must have registered the disputed domain
name primarily for the purpose of selling it
to the Complainant, since nobody
else would be willing to pay much money for it.
In
this last submission, Complainant further repeats allegations and arguments
made in his previous submissions.
FINDINGS
Complainant has registered and common law
rights in the DANCEFUSION mark since 1980.
The marks were registered in 1992.
These rights predate the registration of the disputed domain name.
Respondent offers links to dance-related
web sites at the disputed domain name.
These activities predate the dispute regarding the domain name. Respondent registered the disputed domain
name in January 2001; there was correspondence regarding the possible sale of
the disputed
domain name in April 2002; the complaint was filed in July 2004.
Respondent made a generic public offer to
sell the disputed domain name.
DISCUSSION
The first issues to be decided by this Panel are procedural
issues.
Complainant
failed to submit any of its nine additional submissions in a timely
fashion. Furthermore, none of the nine
additional submissions contained any new material facts: they simply reiterated
Complainant’s rights
in its DANCEFUSION mark as evidenced by registration with
the USPTO; addressed a few of Respondent’s claims; expressed frustration
with
delivering all necessary documents pertaining to this claim to Respondent, due
to Respondent’s incorrect contact information;
included corrections to
typographical errors; and discussed non pertinent matters.
Respondent’s
additional submission was submitted after Complainant’s ninth additional
submission, and did not include any additional
material facts but did address
Complainant’s concerns.
Complaint’s
final submission repeats earlier arguments and does not include any additional
material facts.
The
Panel could have chosen to decline Complainant’s and Respondent’s deficient
additional submissions in deciding this case, as these
additional submissions
were not submitted in a timely fashion, and did not include any new material
facts or claims pertinent to
the matter at hand. This is in particular the case for the Complainant’s last
submission, which was received after the Complainant’s self-imposed deadline
for this submission. See Lawrence
Bridges c/o Red Car, Inc. v. Gilbert Kuang a/k/a Sonnet Digital Media Corp.,
FA 137040 (Nat. Arb. Forum Jan. 29, 2003) (refusing to consider Respondent’s
untimely second additional submission); see also Marco Publ’g Corp. v.
Blacker Media, FA 113977 (Nat. Arb. Forum Aug. 6, 2002) (refusing to
consider Respondent’s second additional submission as it was untimely and
contained
no new material facts); see also Glenwood Springs Chamber Resort
Ass’n. v. College Transp. Inc. d/b/a Website For Sale, FA 98825 (Nat. Arb.
Forum Oct. 31, 2001) (declining to
consider Complainant’s Second additional submission because it was untimely and
submitted without the required fee).
But, in accordance with Rules 10(b) and 10(c), the
Panel admits the additional submissions.
A precedent can be found in Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000); see
also American Airlines Inc. v. WebWide Internet Communication GmbH, FA
112518 (Nat. Arb. Forum June 13, 2002) (deciding to accept both Complainant and
Respondent’s second additional submissions, despite
the fact that they did not
comply with Forum Supplemental Rule 7).
Complainant
requests that the Panel call expert witnesses to determine whether or not the
Complainant’s mark is descriptive, generic,
a common term, or subject to
substantial third party use.
Considering Rules 10(a), 10(c) (first sentence), 10(d) and 13, the Panel
declines to call such expert witnesses.
Indeed, proceedings in front of a national court are a more appropriate
venue for such testimony than this Panel would be.
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 has established rights in the
DANCEFUSION mark through registration of the mark with several trademark
authorities across
the world, including the United States Patent and Trademark
Office (Reg. No. 1,724,364, issued October 13, 1992, Reg. No. 2,768,579,
issued
September 30, 2003), Republic of Hungary, World Intellectual Property Organization
in Geneva, Switzerland, and Hungary-Paris
Convention in the United
Kingdom. Once a mark has abeen
registered, the date in which the registration’s rights in the mark are
effective reverts back to the date the
application was filed with the United
States Patent and Trademark Office. See Men’s
Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law,
registered marks hold a presumption that they are inherently
distinctive and
have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption); see also FDNY Fire Safety Educ. Fund, Inc. v. Miller,
FA 145235 (Nat. Arb. Forum Mar. 26, 2003) (finding that Complainant’s rights in
the FDNY mark relate back to the date that its successful
trademark
registration was filed with the U.S. Patent and Trademark Office); see also
J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435
(C.C.P.A. 1965) (registration on the principal register is prima facie proof of
continual use of the mark, dating back to the filing
date of the application
for registration).
Moreover,
Complainant has used the mark in commerce since 1980 and has thus established
common law rights in the mark through its
use in commerce. See Tuxedos By Rose v. Nunez, FA
95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark
where its use was continuous and ongoing, and secondary
meaning was
established); see also Fistech v. Rossiter, FA 92976 (Nat. Arb. Forum
Mar. 10, 2000) (finding that Complainant has common law rights in the mark
FISHTECH, which it has used
since 1982).
Furthermore, the addition of the generic
top-level domain “.com” in the domain name is irrelevant in determining whether
the domain
names are confusingly similar to Complainant’s mark. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding that “[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’
detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i)
is satisfied); see also Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain
(gTLD) “.com” after the name
POMELLATO is not relevant).
Therefore, the Panel unanimously finds
that the disputed domain name is identical or confusingly similar to the
disputed domain name.
Complainant
argues that Respondent cannot have rights or legitimates interests in the
contested domain names because they include
the Complainant’s trademark,
Respondent is not authorized to use the trademark, and unauthorized use cannot
constitute a bona fide
offering of goods or services.
A
majority of this Panel cannot accept this argument to the extent that the
Respondent is using the contested domain names to point
to web sites that
offers links to legitimate dance-related activities. As the panel stated in Bayerische Motoren Werke AG v. Bavarian
AG, FA0204000110830 (NAF 17 June 2002):
Complainant asserts that Respondent has
not met the requirements of paragraphs 4(c)(i) and (iii) of the Policy because
Respondent
uses Complainant’s BMW mark, without a license or authorization, to
route Internet users to its web site <www.bavarianag.com>
for commercial
benefit. The Respondent offers used BMW
automobiles for sale at that site.
Complainant argues that Respondent is not
using the domain names "in connection with a bona fide offering of goods
or services"
because the Respondent is not a licensed BMW dealer. Therefore, according to the Respondent, the
Complainant's use of the trademark BMW cannot be legitimate.
While it may be the case that the
Respondent's use of the disputed trademark might violate US (or other)
trademark law, the Complainant
has not presented either evidence or arguments
to this effect. It arguments are
limited to the statement made above.
It is not obvious to this Panel that the use of the
trademark BMW combined with a geographical term to route Internet users to a
web
site that very clearly indicates that
·
it offers
used BMW automobiles for sale and
·
it is not
an official BMW dealership,
is in any way illegitimate.
Furthermore, on the basis of the evidence
presented, it is not obvious to this Panel that the Respondent violates
paragraph 4(c)(iii)
of the Policy, because Complainant has not presented any
evidence to the effect that the Respondent has an intent to "misleadingly
divert customers" or to "tarnish the trademark". Presumably the trademark is not tarnished by
the mere offer to sell used automobiles.
The Complainant has argued that customers
are mislead or confused when they are routed to the Respondent's site, because
the Respondent
is not an authorized BMW dealer. But the Respondent has not presented any evidence to the effect
that Internet users automatically associate a domain name that combines
the
mark BMW with a geographic term with an authorized BMW dealer. Furthermore, the Respondent's site is very
clear with respect to the nature of its business, so, prima facie, it
would appear to this Panel that confusion is unlikely.
The
majority of this Panel notes that under paragraph 4(a) of the Policy, the
burden of proof rests with Complainant.
Complainant has not proven that using the disputed domain names to point
to web sites which offers items related to dance does not
constitute a
legitimate use.
Furthermore,
the majority notes that the Respondent was using the disputed domain name well
before any notice of the dispute, namely
since January 2001. Although the complaint was filed in July
2004, Complainant might point to the exchange of E-Mails of April 2002
regarding possible
purchase of the disputed domain name as a “notice of the
dispute,” but that exchange of E-Mails took place after Respondent started
using the disputed domain name, therefore Respondent’s use of the disputed
domain name precedes any notice of the dispute.
According
to the majority, the fact that the disputed domain name is a combination of two
common words, namely DANCE and FUSION, furthermore
argues against the
Complainant’s implicit assertion that he has exclusive rights to the disputed
domain name. See Ming v. Evergreen
Sports, Inc., FA 154140 (Nat. Arb. Forum May 29, 2003) (stating that
“[b]ald assertions of consumer knowledge are not an adequate form of evidence
to establish secondary meaning in a name” in holding that Complainant had not
established common-law rights in the YAO MING mark);
see also Weatherford
Int’ll, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (stating
that “[a]lthough 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 Lowestfare.com LLA v. US Tours
& Travel, Inc., AF-0284 (eResolution Sept. 9, 2000) (finding that marks classified as
descriptive cannot be protected unless secondary meaning is proven and to
establish secondary meaning
Complainant must show that the public identifies
the source of the product rather than the product itself).
Complainant
asserts, but does not provide any evidence to prove, that his trademark is
famous. The majority cannot accept the
assertion. The majority notes that
Respondent has provided a signed declaration, declared to be true under penalty
of law, by its Director, stating
that the disputed domain name was registered
because it is descriptive and stating that Respondent had no prior knowledge of
Complainant’s
mark or activities.
Furthermore, notes
the majority, Respondent contends it has rights and legitimate interests in the
domain name because it has used
the domain name to make a bona fide offering of
services pursuant to Policy ¶ 4(c)(i). See Modern
Props, Inc. v. Wallis,
FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that Respondents operation of
a bona fide business of online prop rentals for
over two years was evidence
that Respondent had rights or legitimate interests in the disputed domain
name); see also Bankinter S.A. v.
BI Fin. Inc., D2000-0460 (WIPO Sept. 5, 2000) (stating that “[b]y September
1999, when first approached by the Complainant, the Respondent or
its
predecessors had used the <bankinternet.com> website for almost 4 years,
thus demonstrating "a bona fide offering of goods and
services").
Dissenting from the above, one member of the Panel
notes that Respondent is not commonly known by the <dancefusion.com>
domain name. There is nothing in the
Record that indicates that Respondent is commonly known by the disputed domain
name, pursuant to Policy ¶
4(c)(ii). See
Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known
by the mark); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant;
(2) Complainant’s prior rights in the domain name precede
Respondent’s registration; (3) Respondent is not commonly known by the
domain
name in question). The facts of this
case are distinguishable from those in the Bayerische case relied upon
by the majority of the Panel. In Bayerische
Respondent actually offered goods for sale at its website. In the case at bar, Respondent does not
offer any goods under the mark, nor is it or its business known by the domain
name at issue.
The minority
finds that Respondent’s use of a domain name that is identical to Complainant’s
DANCE FUSION marks to redirect Internet
users interested in Complainant’s
services to a website providing links to other websites offering similar
services, is not a use
in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial
or fair use of the domain name pursuant to Policy ¶ 4(c)(i). See Computerized Sec. Sys., Inc.
v. Hu, FA 157321 (Nat.
Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of
Complainant’s mark to market products that
compete with Complainant’s goods
does not constitute a bona fide offering of goods and services); see also
Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that Respondent’s use of the disputed domain name to redirect
Internet users
to a financial services website, which competed with
Complainant, was not a bona fide offering of goods or services); see also TM
Acquisition Corp. v. Sign Guards a/k/a William Moore, FA 132439 (Nat. Arb.
Forum Dec. 31, 2002) (finding that Respondent’s diversionary use of
Complainant’s marks to send Internet users
to a website which displayed a
series of links, some of which linked to competitors of Complainant, was not a
bona fide offering
of goods or services); see also WeddingChannel.com
Inc. v. Andrey Vasiliev a/k/a NA and Free Domains Parking, 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).
On the basis of the above, the majority
of this Panel finds that Complainant has failed to satisfy his burden of
proving that Respondent
has no legitimate rights in the contested domain name,
while one member of the Panel finds
that Complainant has satisfied his burden of proving this element of his claim.
Complainant
asserts the fact that Respondent offered the contested domain name for sale, is
evidence of bad faith registration and
use.
However, this is not the case.
As stated in Manchester
Airport PLC v. Club Club Limited D2000-0638 (WIPO, August 21, 2000):
Selling a domain name is not per se prohibited by the ICANN Policy
(nor is it illegal or even, in a capitalist system, ethically reprehensible).
Selling of domain names
is prohibited by the ICANN Policy only if the other elements of the ICANN Policy are
also violated, namely trademark infringement and lack of legitimate interest.
Clause 4(b)(I) of the ICANN Policy states
that the following shall be evidence of the registration and use of a domain
name in bad
faith:
circumstances indicating that you have
registered or you have 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 your
documented out-of-pocket costs
directly related to the domain name [emphasis
added]
Complainant argued that Respondent
registered the domain name specifically for the purpose of selling it to
Respondent, but has not
provided any evidence to prove this allegation (and it
must be stressed that the burden of proof is on the Complainant). On the contrary, the limited evidence
available to the Panel indicates that Respondent most likely registered the
disputed domain
name in order to use it to attract network traffic and to sell
it to whoever might wish to have it.
Since registering generic names, even with the intent to resell them, is
a legitimate business activity, the Panel holds that Respondent
did not act in
bad faith.
Complainant makes much of the fact that
Respondent could have easily discovered, prior to registering the contested
domain name, that
it is identical to Complainant’s registered trademark. But Respondent’s failure to verify the
existence of Complainant's trademark, is not, on its own, evidence of bad
faith. Indeed, it is clear from the travaux preparatoires of the Policy that
mere failure to conduct a trademark search does not constitute bad faith
behavior. The closest equivalent to a
legislative history for the Policy can be found in the 30 April 1999 Final
Report of the WIPO Internet
Domain Name Process, which formed the basis for the
ICANN Policy (available online at: http://wipo2.wipo.int/process1/report/doc/report.doc
). This report states at
paragraph 103:
… the performance of a prior search for potentially
conflicting trademarks should not be a condition for obtaining a domain name
registration.
… Particularly in an international context, the requirement of
searches prior to the registration of a domain name was generally
considered to
be unrealistic and conducive to unnecessary delays in the registration process.
And the report states at paragraph 105:
It is not recommended that domain name registrations be made
conditional upon a prior search of potentially conflicting trademarks
but it is
recommended that the domain name application contain appropriate language
encouraging the applicant to undertake voluntarily
such a search.
Finally, Complainant alleges that the
physical mailing addresses provided by Respondent was false. This allegation is disputed by
Respondent. The Panel is not the
appropriate forum in which to determine the facts concerning this situation. In any case, provision of an incorrect
mailing address, absent other circumstances, would not be sufficient to prove
bad faith behavior. See Microsoft
Corporation v. Goldman, D2003-004 (WIPO, April 15, 2003).
Complainant does not allege, much less provide evidence for,
any other type of bad faith behavior by the Respondent.
The panel unanimously finds that
Complainant has failed to satisfy his burden of proving bad faith registration
and use.
DECISION
For
the reasons mentioned above, the Panel concludes that relief shall be DENIED. The Complaint is DISMISSED.
Richard Hill (presiding Panelist)
Steven L. Schwartz, David P. Miranda
(Panelists)
Dated: 8 September 2004
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