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Generic Top Level Domain Name (gTLD) Decisions |
Kaleidoscope Imaging, Inc. v. V
Entertainment a/k/a Slavik Viner
Claim Number: FA0310000203207
PARTIES
Complainant
is Kaleidoscope Imaging, Inc.,
Chicago, IL (“Complainant”) represented by David
J. Marr, of Trexler, Bushnell, Giagiorgi, Blackstone,
& Marr, Ltd., 105 W. Adams,
Suite 3600, Chicago, IL 60603.
Respondent is V Entertainment a/k/a Slavik Viner, San Francisco, CA (“Respondent”) represented by Paul Raynor Keating, of Carroll, Burdick & McDonough, LLP, 44 Montgomery Street, Suite 400, San Francisco, CA 94104.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <kaleidoscope.com>,
registered with Register.Com.
PANEL
The
undersigned certifies that each has acted independently and impartially and to
the best of his or her knowledge has no known conflict
in serving as a Panelist
in this proceeding.
Anne
M, Wallace, Q.C., G. Gervaise Davis, III, and Timothy D. O’Leary as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on October 16, 2003; the Forum received
a hard copy of the
Complaint on October 20, 2003.
On October 21,
2003, Register.Com confirmed by e-mail to the Forum that the domain name <kaleidoscope.com> is registered
with Register.Com and that the Respondent is the current registrant of the
name. Register.Com has verified that
Respondent is bound by the Register.Com registration agreement and has thereby
agreed to resolve domain-name
disputes brought by third parties in accordance
with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 27,
2003, a Notification of Complaint and Commencement of Administrative Proceeding
(the “Commencement Notification”),
setting a deadline of November 17, 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@kaleidoscope.com by e-mail.
A timely Response
was received and determined to be complete on December 2, 2003.
On December 15, 2003, pursuant to Complainant’s request to have the
dispute decided by a three-member
Panel, the Forum appointed Anne M,
Wallace, Q.C., G. Gervaise Davis, III, and Timothy D. O’Leary as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant,
Kaleidoscope Imaging, Inc., owns United States Service Mark Registration No.
2,218,746 for the Service Mark KALEIDOSCOPE.
The Service Mark was registered on
January 19, 1999 and was first used by Complainant on December 1, 1994. The
services associated
with the mark include graphic art and illustration design
services for others in International Class 42.
Complainant asserts that with the
exception of the .com extension, the Disputed Domain Name <kaleidoscope.com>
is identical to Complainant’s service mark.
The Disputed Domain Name is likely the first domain name entered when a
consumer is searching the Internet for Complainant. The association between the domain name and Complainant’s service
mark rights is important to its use in e-commerce and the integrity
of its
service mark rights. Use of the
Disputed Domain Name by Respondent will create confusion on the Internet.
Complainant alleges that Respondent has
no rights or legitimate interest in <kaleidoscope.com>. Complainant’s representative searched the
United States Patent and Trademark Office’s website for trademarks or service
marks which
would signify rights or legitimate interest by Respondent in <kaleidoscope.com>,
and found none. Complainant’s representative has searched the Internet for
goods and services provided in connection with <kaleidoscope.com>. With the exception of the shopping page used
to “park” the domain name, no use of the domain name in connection with an
offering of
goods or services by Respondent was found. Complainant found no
evidence that Respondent is commonly known by the domain name <kaleidoscope.com>. Other than Respondent’s “parking” of the
domain name, Complainant found no evidence of use or preparation to use the
domain name or
a name corresponding to the domain name, prior to the notice of
this dispute. Thus, Complainant asserts
that prior to notice of this dispute, there had been no use or preparation to
use the domain name or a name
corresponding to the domain name in connection
with a bona fide offering of goods or services by Respondent.
Although a web page has been associated
with <kaleidoscope.com>, the web page does not provide a
bona fide offering of goods and services.
Rather, Respondent has merely “parked” the domain name. When the domain name is entered into an Internet
browser, a “shopping page” unrelated to the domain name is displayed. The page
provides
links to various web sites. When the user types in <kaleidoscope.com>,
the user is directed to a web page with the URL “http://apps5.oingo.com/apps/domainpark/
domainpark.cgi?s=kaleidoscope&cid= . . .”
The domain name oingo.com is associated with a web page for Applied
Semantics. As described on the Applied Semantics web page, one
of the services
provided by Applied Semantics is domain name “parking”. As defined by domain name service providers,
the term “parking” refers to the reservation of a domain name until the owner
develops
a site which has content associated with the domain name or until the
domain name is sold to a third party. Therefore, Respondent
is not using <kaleidoscope.com> in connection
with a bona fide offering of goods and services but rather has simply reserved
or “parked” the domain name. Because
Respondent is not using the domain name in
connection with a bona fide offering of goods or services, Complainant alleges
that Respondent
has no rights or legitimate interest in the domain name.
Complainant submits that bad faith has
been demonstrated by Respondent in two ways.
First, Respondent has engaged in a pattern of conduct of preventing
owners of trademarks and service marks from reflecting their marks
in a
corresponding domain name. Second,
Respondent has acquired <kaleidoscope.com>
primarily for the purpose of selling, renting or otherwise transferring the
domain name registration to Complainant, who is the owner
of United States
Service Mark Registration No. 2,218,746 for the mark KALEIDOSCOPE.
With respect to the allegation of a
pattern of conduct, Complainant asserts that the WhoIs database lists the name
Slavik Viner, along
with V Entertainment, as the administrative contact,
suggesting that Slavik Viner is a representative of the entity which uses the
name V Entertainment. Kaleidoscope
alleges that V Entertainment, Viper Holdings and Viper are alter egos of Slavik
Viner.
On April 26, 2001, Panelist William L.
Mathis for the World Intellectual Property Organization, rendered a decision in
the matter
of Viacom International, Inc. v. MTVMP3.COM, case number
D2001-0275. The Respondent, MTVMP3.com listed its administrative contact
address as 740 La Playa #414, San Francisco,
California, the same address which
is listed for the Respondent, V Entertainment aka Slavik Viner in the instant
case. Panelist Mathis found that this
address was also provided for an entity titled Viper Holdings. The complainant in the MTVMP3.com dispute
alleged that V Entertainment and Viper Holdings are alter egos of the
Respondent MTVMP3.COM. As Respondent
did not challenge Complainant’s allegations, Panelist Mathis found
complainant’s allegations to be true.
On September 18, 2002, Panelist Hon.
Ralph Yachnin of the National Arbitration Forum, rendered a decision in the
matter of Travelzoo Inc. v. Viper a/k/a/ Slavik Viner, Claim No.
FA0208000117866. In this case, Hon. Yachnin found that Slavik Viner of San
Francisco, the Respondent, represents himself
as Viper.
Complainant’s representative conducted an
Internet search to obtain a current address for V Entertainment. Although no listing was found for V
Entertainment, Complainant’s representative
found a listing for Slavik Viner at 8028 Geary Blvd., San Francisco,
California. Kaleidoscope’s
representative also found a listing for Viper Holdings, Inc. which uses the
same address. This is further evidence
of the relationship between Slavik Viner and Viper Holdings.
Complainant alleges, therefore, that V
Entertainment, Viper Holdings and Viper are alter egos of Slavik Viner. Thus, a
pattern of
conduct by Respondent can be established through conduct
attributable to V Entertainment, Viper Holdings, Viper or Slavik Viner.
In the Viacom
International Inc. V. MTVMP3.com case, Panelist Mathis found that
Respondent had no legitimate interest in the domain name <mtvmp3.com>. Panelist Mathis found that the domain name incorporated
Complainant’s mark and was chosen by Respondent as an effort to create
confusion
detrimental to Complainant.
In the Travelzoo Inc. v. Viper a/k/a Slavik Viner decision,
Panelist Yachnin found no connection between the Respondent and the domain name
travelzo.com and found no evidence which
would signify rights or legitimate
interest in the domain name travelzo.com.
Panelist Yachnin further found that Viper was “typosquatting” as users
incorrectly typing the domain name travelzoo.com were directed to
Viper’s website at travelzo.com.
Thus, Panelist Yachin concluded that Viper had no legitimate interest in
the domain name.
Two additional decisions involving
Respondent include H-D Michigan, Inc. v. Viper Holdings, Claim Number FA
0210000128680, and L.F.P., Inc. v. Viper Holdings, Claim Number FA
0208000117869. In each of these cases,
Respondent was found to have no legitimate rights in the respective domain
names and transfer of the domain
names was ordered. Kaleidoscope’s representative has attempted to obtain listings of
domain names held under the names V Entertainment, Viper Holdings,
Viper and
Slavik Viner to further establish a pattern of conduct by Respondent, but was
unable to obtain such listings using the
WhoIs database. Panelist Mathis in the <MTVMP3.COM>
case, however, found that “numerous” domain names were registered under the names
V Entertainment and Viper Holdings.
Thus, although no listing of domain names registered by V Entertainment,
Viper Holding, Viper and Slavik Viner was obtained, the previous
decisions
rendered under the Uniform Dispute Resolution Policy provide evidence that
Respondent has conducted a pattern of
registering domain names not because it has a legitimate interest in the domain
names, but rather to prevent
the owners of trademarks and service marks from
reflecting their marks in a corresponding domain name. Complainant asserts that such a pattern of
conduct is evidence that the Respondent has acted in bad faith with respect to
registration
of <kaleidoscope.com>.
In addition, as found by Panelist Mathis,
many of the domain names which Respondent has registered are “pornographic in
nature”. Panelist Mathis also found
that many of the domain names registered by Respondent were directed to a
website www.orgie.com. In the H-D Michigan decision, the
panelist found that Respondent Viper Holdings, posted pornography on the
website related to the disputed domain name
and ordered the domain name
transferred. Complainant asserts that Respondent could at any time cause
consumer traffic directed to
<kaleidoscope.com> to
be diverted to a pornographic website.
As the domain name is identical to Kaleidoscope’s service mark,
Complainant’s reputation is at risk, in that consumers might in some
way tend
to associate Complainant with pornography.
Such an association would severely diminish Complainant’s reputation.
Complainant alleges that Respondent has
registered or has acquired <kaleidoscope.com>,
primarily for the purpose of selling, renting, or otherwise transferring the
domain name to the Complainant, who is the owner of
the service mark, for
valuable consideration in excess of Respondent’s documented out-of-pocket costs
directly related to the domain
name. The WhoIs database indicates that
Respondent registered the domain name September 9, 1999 and that the
registration does not
expire until September 9, 2006. Thus, under Register.com’s current pricing scheme, Respondent’s
cost to register the domain name for seven years is approximately
$175.00.
Complainant’s representative contacted Respondent regarding purchase of <kaleidoscope.com>
for $2,500.00. Respondent responded by
stating that he would consider selling the Disputed Domain Name to Complainant
for “a much higher offer” than
$2,500.00.
Complainant alleges that holding and parking of the Disputed Domain Name
for nearly four years by Respondent in addition to Respondent’s
request of
payment of “much higher” amount than $2,500, is evidence that Respondent’s
primary purpose in registering the Disputed
Domain Name was to sell, rent or
otherwise transfer the domain name to Complainant, for valuable consideration in
excess of Respondent’s
documented out-of-pocket costs. Thus, Complainant submits that Respondent
has acted in bad faith.
B. Respondent
Respondent
asserts that it validly registered <kaleidoscope.com> in September 1999 and has been consistently
and opening using the URL for valid business purposes since 1999 in connection
with a
search function for people interested in kaleidoscopes. Since 1999, Respondent has generated
revenue pursuant to written contracts with various search engines starting with
<MOverture/goto.com>.
In 2001, Respondent began operating under a written
agreement with Applied Semantics to deliver search results using the URL.
Google
purchased Applied Semantics in April 2003, and since May, 2003, search
results have been generated using Google’s search engines,
again under a
written contract.
Respondent asserts that the Disputed Domain Name is a generic term. A
Kaleidoscope is: “[a] tube shaped optical instrument that is
rotated to produce
a succession of symmetrical designs by means of mirrors reflecting the
constantly changing patterns made by bits
of colored glass at one end of the
tube.” (American Heritage English Dictionary, 4th Ed. 2000). Typing <kaleidoscope.com> results in a
search results page that directs the user to a number of websites, all of which
sell kaleidoscopes and related toys and
objects of interest.
Respondent asserts that the fact Respondent has generated revenues from
this use of the Disputed Domain Name since 1999 fortifies
the legitimate nature
of its use. The use of key words, particularly generic terms, has long been
used in connection with Internet
search engines. Respondent’s use is merely a
top-level domain name rather than an embedded meta tag or web page text source.
As such
it is a more powerful search term for Internet users. The legitimate
nature of such uses is evidenced by activities of companies
such as Google, a
company whose entire business model is providing search results using traffic
generated directly from users or
indirectly from others such as Respondent.
Although Respondent has been openly and obviously using the Disputed
Domain Name since September 1999, Complainant made no attempt
to seek the URL
until 2003 when it sent an unsolicited request to Respondent asking if
Complainant could purchase the URL. Complainant
never identified itself as the
holder of a service mark, Respondent affirmed that it was not interested in
selling the URL, Complainant’s
offer of $2,500 was rejected outright and
Respondents never replied to Complainant’s invitation to state a sale price or
negotiate
further. Respondent made no demand for any sum, much less an
exorbitant sum. Complainant did not assert any rights in the URL or
disclose
that they held a service mark. There were no subsequent demands by Complainant
asserting any rights to the URL. The evidence
establishes that the URL was not
held for sale. Given the legitimate long-term revenue generating use of the URL
by Respondent, it
was completely with Respondent’s rights to reject an offer
that they considered inadequate and break off communications.
Respondent
asserts that the Disputed Domain Name is not identical or confusingly similar
to a service mark in which Complainant has
rights. Respondent asserts that
while Complainant is the holder of a registered service mark KALEIDOSCOPE, such
registration provides
Complainant with rights only in connection with the
specified goods and services. The touchstone liability for trademark
infringement
is whether the defendant’s use of the disputed mark is likely to
cause confusion among consumers regarding the original of the goods
offered by
the parties. Further, to infringe on the rights of a mark holder, the alleged
infringer must use the mark as a mark. Where
a domain name is used only to
indicate an address on the Internet and not to identify the source of specific
goods and services,
the name is not functioning as a trademark and there can be
no infringement. (Data Concepts, Inc. v.
Digital Consulting, Inc. (6th Cir. 1998) [1998] USCA6 240; 150 F3d 620).
Respondent is
using the Disputed Domain Name in its ordinary and dictionary sense. Respondent
is not using the URL in any manner that
links it to Complainant’s business
operations or to any goods or services related to “graphic art and illustration
design services
for others in Class 42.” Complainant has no property right in
the use of words commonly found in the English language.
In determining
the rights of a mark holder, the law first requires that the strength of the
mark be tested. In determining whether
confusion between related goods is
likely, the following factors are relevant: strength of the mark, proximity of
the goods, similarity
of the marks, evidence of actual confusion, type of goods
an degree of care likely to be exercised by the purchaser, defendant’s
intent
in selecting the mark, marketing channels used, and likelihood of expansion of
product lines. (AMF, Inc. v. Sleekcraft
Boats, (9th Cir. 1979) [1979] USCA9 691; 599 F.2d 341).
Respondent
asserts that here the mark is extremely weak and consists of a descriptive
term. No evidence of secondary meaning or fame
has been provided. A Google
search results in over 608,000 references to the term KALEIDOSCOPE. A search of
<Switchboard.com>
(yellow pages) lists 384 businesses in the United
States with the name KALEIDOSCOPE, 67 of which use only the word KALEIDOSCOPE.
There is no evidence of actual confusion. The goods and services are entirely
different. Complainant’s customers are sophisticated
– seeking product branding
services – and are unlikely to confuse a web search for toys with Complainant.
With respect to
rights or legitimate interests, Respondent repeats the arguments already made
and states that Respondent has been
using KALEIDOSCOPE as a search tool for
those interested in Kaleidoscopes since 1999. The term is descriptive in nature
and not subject
to registration as a trademark. The lack of trademark
registration by Respondent, therefore, does not render Respondent’s use
illegitimate.
ICANN
arbitrations have recognized that that the registration and holding of generic
top-level domain names, even in large quantities,
for the purpose of selling,
renting or leasing the use of those names to others, is a legitimate use. (Gen’l Machine Products Co. v. Prime Domains,
(2000) NAF 0001000092531; Cartoys v.
Informa Unlimited, Inc. (2001) NAF 0002000093682).
Respondent uses
the Disputed Domain Name in connection with Internet searches specifically
directed at people interested in Kaleidoscopes.
Such use has been consistent
over four years and is in accordance with the dictionary definition. Respondent
does not use the URL
for the purpose of competing with, or taking customer away
from, Complainant, and until receiving the e-mails from Complainant in
2003,
had no knowledge of Complainant or the nature of its business. Respondent
generates revenues from its use of the URL pursuant
to a written contract with
Google. The URL is not being “parked” so as to hold it for sale as suggested by
Complainant. Respondent
has not merely holding the URL so that it can either
preclude use by Complainant or sell it to Complainant or others for an
exorbitant
sum. Complainant has provided no evidence to support its allegations
in this regard.
With respect to
the allegations of bad faith, Respondent points out that Complainant must
establish both bad faith registration and
bad faith use of the Disputed Domain
name.
Respondent
asserts that it did not know of Complainant when the Disputed Domain Name was
registered. Although Respondent has been
openly and obviously using the
Disputed Domain Name since September 1999, Complainant made no attempt to seek
the URL until 2003
when it sent the unsolicited request to Respondent asking to
purchase the URL. Until this action, Complainant did not assert any
rights to
the Disputed Domain Name or object to the registration. Respondent did not
demand exorbitant sums. The URL was not for
sale and although Respondent
invited Complainant to make a “serious
offer”, that is not evidence of bad faith in light of the longevity of
Respondent’s bona fide use of the Disputed Domain Name.
With respect to
Complainant’s assertion that Respondent’s registration prevents Complainant
from using the Disputed Domain Name in
connection with its business, Respondent
asserts that Complainant has neither alleged nor proven that the registration
was undertaken
or maintained for such purpose.
With respect to
Complainant’s allegation that Respondent registered the Disputed Domain Name
primarily for the purpose of disrupting
a competitor, Respondent points out
that Complainant is in the business of helping clients develop strategies for
getting their brands
in front of the public, developing products and packaging
standards to align with the strategies. Respondent uses the Disputed Domain
Name to generate revenues from searches by people looking to purchase Kaleidoscopes.
The parties are not competitors. Respondent
did not register and does not use
the Disputed Domain Name to disrupt the business of Complainant, but rather to
engage in a separate
business.
With respect to
the allegation that Respondent is using the URL in an attempt to attract
Internet users to its site for commercial
gain by creating a likelihood of
confusion with Complainant’s mark, Respondent asserts that it use is completely
unrelated to Complainants
business. Respondent further asserts that given the
generic nature of the URL, its use, the large number of references to
KALEIDOSCOPE
on the Internet and the large number of trademark registrations
using the term, confusion is highly unlikely. Respondent has never
held
themselves out to be a product branding or public relations firm and has never
used the URL in a manner that would imply such
a use. Complainant has provided
no evidence of confusion.
With respect to
Complainant’s allegations in relation to previous UDRP cases involving
Respondent, Respondent points out that these
previous decisions are default
decisions. Respondent asserts that the use of prior default decisions to
establish a fact for the
purposes of a separate proceeding is improper and
contrary to long established principles of law.
FINDINGS
The panel finds as follows:
1. The Disputed Domain Name, <kaleidoscope.com> is confusingly
similar to the KALEIDOSCOPE service mark owned by Complainant.
2. Respondent has rights or legitimate
interests in the Disputed Domain Name.
3. Respondent has not registered and is not
using the Disputed Domain Name in bad faith.
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
has established that it has rights in KALEIDOSCOPE by virtue of its service
mark registration for that term. With the
exception of the .com extension, the
Disputed Domain Name is identical to Complainant’s mark. Complainant asserts,
and the Panel
agrees, that this is sufficient to establish the first element. See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001)
(finding that the domain name <termquote.com> is identical to
Complainant’s TERMQUOTE
mark); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31,
2001) (finding that the <bodybyvictoria.com> domain name is identical to
Complainant’s BODY
BY VICTORIA mark); see also Interstellar Starship Services Ltd. v. EPIX, Inc., 983 F.Supp.
1331, 1335 (D.Or. 1997) (<epix.com> "is the same mark" as
EPIX); see also Elder Mfg. Co.,
Inc. v. Recker, FA 98414 (Nat. Arb. Forum Sep. 10, 2001) (“In the matter at
bar it is beyond refute that Respondent’s domain names are virtually
identical,
and thus confusingly similar to Elder’s trademarks. Any superficial differences
between the domain names and the Elder
trademarks are de minimis and of no
legal consequence”).
While
we are mindful that there are cases which have found for Respondents on this
element where the mark involves a generic term,
it is this Panel’s view that
the question of the generic nature of the word KALEIDOSCOPE is more properly
addressed when dealing
with the issue of rights or legitimate interests.
Based
on the evidence before us, Complainant has failed to establish that Respondent
does not have rights or legitimate interests
in the Disputed Domain Name. The
word KALEIDOSCOPE is a generic English language word with the meaning
demonstrated by the dictionary
definition cited by Respondent in its
submissions. As such, the first to register the word in a domain name can
assert rights to
that domain. See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (stating,
"[c]ommon words and descriptive terms are legitimately subject to
registration as
domain names on a 'first-come, first-served' basis"); see
also CRS Tech. Corp. v. Condenet,
Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (finding that “concierge is
not so associated with just one source that only that source
could claim a
legitimate use of the mark in connection with a website”). See Also with respect to the generic nature of the
term: Car Toys, Inc. v. Informa
Unlimited, Inc., FA 93682 (Nat. Arb. Forum Mar. 20, 2000) (finding that
Respondent has rights and legitimate interests in the domain name where
Complainant
submitted insufficient evidence to establish either fame or strong
secondary meaning in the mark such that consumers are likely to
associate
<cartoys.net> with the CAR TOYS mark); see also Energy Source Inc. v. Your Energy Source,
FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that Respondent has rights
and legitimate interests in the domain name where “Respondent
has persuasively
shown that the domain name is comprised of generic and/or descriptive terms,
and, in any event, is not exclusively
associated with Complainant’s business”);
see also FilmNet Inc. v. Onetz,
FA 96196 (Nat. Arb. Forum Feb. 12, 2001)
(finding that Complainant failed to establish that Respondent did not have
rights or legitimate
interests in the <filmnet.com> domain name where the
disputed domain name was wholly comprised of generic words, even though
Complainant is the owner of the FILMNET mark); see also Sweeps Vacuum & Repair Ctr., Inc. v.
Nett Corp., D2001-0031 (WIPO Apr. 13, 2001) (finding bona fide use of a
generic domain name, <sweeps.com>, where Respondent used a legitimate
locator service (goto.com) in connection with the domain name).
Having registered a generic term,
Respondent also claims rights and legitimate interests in the Disputed Domain
Name because it has,
since 1999, used the name as a search tool for Internet
users interested in Kaleidoscopes. Based on the evidence before us, there
is
nothing to suggest that this use is anything but a bona fide offering of goods
or services within the meaning of the Policy, particularly
given the length of
time Respondent has been using the Disputed Domain Name in this fashion. See Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb.
Forum Feb. 13, 2001) (finding Respondent’s use of the domain name,
<groceryoutlet.com>, for a website
that links to online resources for
groceries and similar goods evidences that Respondent was making a bona fide
offering of goods
or services); see also Bankinter S.A. v. BI Fin. Inc., D2000-0460 (WIPO Sept. 5, 2000)
(finding that Respondent’s use of <bankinternet.com> for a period of four
years was sufficient
to demonstrate a bona fide offering of goods and
services).
While
it is not necessary, given our findings with respect to rights and legitimate
interests, the Panel will address the issue of
bad faith.
With
respect to Complainant’s allegations pursuant to Policy 4(b)(i), Complainant
has failed to satisfactorily establish bad faith
registration of the disputed
domain name, because Respondent had no
knowledge of Complainant at the time of registration and never made a
deliberate attempt to capitalize from the
name. See Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat.
Arb. Forum Feb. 13, 2001) (holding that where the domain name is a generic
term, it is difficult to conclude that
there was a deliberate attempt to
confuse on behalf of Respondent, and stating that “[i]t is precisely because
generic words are
incapable of distinguishing one provider from another that
trademark protection is denied them”).
With
respect to the matter of the possible sale of the Disputed Domain Name to
Complainant, the evidence before us establishes that
it was Complainant who
made the contact with Respondent and that it was Complainant who raised the
matter of a possible sale. Furthermore,
the mere consideration of a domain
name’s sale, especially relating to a generic term, is not evidence of bad
faith. See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15,
2000) (finding that considering or offering to sell a domain name is
insufficient to amount to
bad faith under the Policy; the domain name must be
registered primarily for the purpose
of selling it to the owner of a trademark for an amount in excess of
out-of-pocket expenses); see also PRIMEDIA
Special Interest Publ’n Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000)
(finding that Respondent did not register the domain names in bad faith where
there is no evidence
that Respondent intended to sell the domain name or
disrupt Complainant’s business); see also John Fairfax Publ’n Pty Ltd v. Domain Names 4U & Fred Gray,
D2000-1403 (WIPO Dec. 13, 2000) (finding legitimate interests and no bad faith
registration where Respondent is a seller of generic
domain names); see also
Lumena s-ka zo.o. v.
Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no
bad faith where the domain name involves a generic term, and there is no direct
evidence that Respondent registered the domain name with the intent of
capitalizing on Complainant’s trademark interest).
See
Also Pocatello Idaho Auditorium Dist. v. CES Marketing Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21,
2002) ("when a Complainant indicates a willingness to engage in a market
transaction for
the name, it does not violate the policy for a [Respondent] to
offer to sell for a market price, rather than out-of-pocket expenses");
see
also Puky GmbH v. Agnello, D2001-1345 (WIPO Jan. 3, 2002) (finding
insufficient evidence to hold that the domain name was registered and used in
bad faith
pursuant to Policy ¶ 4(b)(i) where Complainant initiated contact with
Respondent and Respondent responded with an offer to sell its
domain name
registration for $50,000); see also Coca-Cola Co. v. Svensson, FA 103933
(Nat. Arb. Forum Feb. 27, 2002) (finding that Respondent was not acting in bad
faith when it engaged in discussions to
sell its domain name registration to
Complainant after Complainant initiated the discussion); see also Open Sys. Computing AS v. Alessandri, D2000-1393
(WIPO Dec. 11, 2000) (finding that Respondent was not acting in bad faith by
discussing a sale when Complainant initiated
an offer to purchase it from
Respondent); see also Sumner v.
Urvan, WIPO D2000-0596 (WIPO July 24, 2000) (finding no bad faith where
Respondent did not contact Complainant first, but rather, Complainant
first
contacted Respondent about purchasing the domain name); see also Aspen
Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 5, 2001) (finding no
bad faith where “Complainant offers the Respondent far more than the Respondent
paid
for the disputed domain name and the Respondent asks for an even larger
sum”).
With
respect to Complainant’s assertions under Policy ¶ 4(b)(ii), the evidence shows
that Respondent used the domain name for four
years before Complainant
objected, and there is no evidence on which the Panel can conclude that
registration was undertaken in order
to prevent Complainant from registering
the name. Indeed, the evidence establishes that at the time Complainant
registered its own
domain names relating to its business, the disputed domain
name was available and yet Complainant passed on the opportunity to register
it. Therefore, as Respondent suggests,
“it is hard to imagine how Respondent could have prevented Complainant from
registering [the disputed
domain name].”
See Bosco Prod., Inc. v.
Bosco email Serv., FA 94828 (Nat. Arb. Forum June 29, 2000) (“Without
determining if the passage of considerable time would alone bar Complainant
from
relief in this proceeding, the Panel notes that Complainant does not
explain why it has waited nearly four years to try and resolve
[the domain name
dispute]”).
The
Panel has considered Complainant’s assertions with respect to previous UDRP
decisions finding against Respondent or entities which
may be connected to
Respondent. We find it unnecessary to decide whether Respondent is related to
the parties involved in those cases
because those cases involved default
decisions which are of little or no value, and those cases did not involve
situations of the
use of generic terms such as KALEIDOSCOPE.
Complainant
has failed to establish this element.
DECISION
Complainant
having failed to establish all three element required to succeed, the Complaint
is DENIED.
Anne M, Wallace, Q.C.
G. Gervaise Davis, III
Timothy D. O’Leary
Dated: January 5, 2004
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