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Wild West Domains, Inc. v. Brynne Heaton [2004] GENDND 1479 (18 November 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wild West Domains, Inc. v. Brynne Heaton

Case No. D2004-0789

1. The Parties

The Complainant is Wild West Domains, Inc., Scottsdale, Arizona, United States of America, represented by its general counsel.

The Respondent is Brynne Heaton, an individual residing in Sandy, Utah, United States of America, represented by ZMC Consulting LLC, Pleasant Grove, Utah, United States of America.

2. The Domain Name and Registrar

The disputed domain name <wildwesthosting.com> is registered with Melbourne IT trading as Internet Name Worldwide (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 30, 2004. On October 1, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On October 4, 2004, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the ”Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the ”Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the ”Supplemental Rules”).

In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 5, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was October 25, 2004. The Response was filed with the Center on October 15, 2004.

The Center appointed Richard G. Lyon as the Sole Panelist in this matter on November 3, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.

4. Factual Background

Complainant is an ICANN-accredited registrar of Internet second-level domain names under various top-level domain names such as “.com”, “.net”, and “.org”.¹ Complainant alleges (without evidentiary support) that it has 20,000 web-hosting accounts.

Complainant holds two United States registered trademarks, for “Wild West Domains” and “Wild West”, for use in connection with registration of Internet domain names and related services. Complainant applied for the first of these on August 28, 2002; it was published for opposition on September 23, 2003, and was registered on April 27, 2004. Complainant filed for the latter trademark on December 7, 2001; it was published for opposition on July 2, 2002, and was registered on January 21, 2003. (Complaint, Annex 2). Complainant first used these marks in commerce on July 14, 2002 (Complaint, ¶12). Complainant registered the domain name <wildwestdomains.com> on August 22, 2000.

Respondent registered the disputed domain name on January 15, 2002. As a benefit of her employment by an unrelated company, Respondent was offered a virtual private server for product familiarity and personal hosting, on condition that “no money was to be made from extension of said benefit”. In summer 2004 she was using the disputed domain name for posting of three websites for friends and family. (Response, ¶5-B)²

Complainant notified Respondent by email on June 8, 2004, that she was infringing Complainant’s trademarks. In a series of emails between the parties on June 8 and 9, 2004, Complainant provided Respondent links to Complainant’s hosting service, to illustrate its use of its marks. Respondent denied Complainant had exclusive use of the phrase “Wild West”, asserting among other things that this was a common phrase in United States English (referring to a period of time in the latter half of the nineteenth century often romanticized in the history of and literature about the American West). Respondent identified numerous other sites that incorporated this phrase.

5. Parties’ Contentions

A. Complainant. Complainant contends as follows:

Identical or confusingly similar to a mark in which Complainant has rights. The disputed domain name is identical to one of Complainant’s marks and confusingly similar to the other. Confusion is certain since Respondent’s use of the word “hosting” describes the services for which Complainant’s marks were registered.

Rights or Legitimate Interests; Bad Faith. In light of the findings below, the Panel deems it appropriate to quote in full Complainant’s contentions on these two elements of the Policy:

• “The Respondent registered the domain name <wildwesthosting.com> (the ”Offending Domain Name”) with another registrar of Internet second-level domains, Melbourne IT, on or about January 15, 2002, approximately 13 months after Wild West applied for its trademark registration. Significantly, Wild West registered the domain name <wildwestdomains.com> on August 22, 2000, almost two years prior to the Respondent’s registration, as demonstrated by the Whois search conducted on August 23, 2004, and attached hereto as Annex Number 4.

• On June 8, 2004, Respondent was notified that its domain name was infringing upon the Wild West mark. In its response, Respondent admitted that the Offending Domain Name was used for the purpose of offering Internet hosting services to others. Such service is in direct competition with Complainant. Respondent denied that Complainant had rights in a “Wild West” mark, however and declared its use of the Offending Domain Name as fair use because it offered web hosting services only without the additional service of domain name registration. That same day Complainant provided Respondent links to Complainant’s hosting service site to confirm the inclusion of web hosting as one of the wide array of services offered by Wild West and associated with the Trademarks. See Correspondence attached hereto as Annex Number 5.

• On June 9, 2004, Respondent again denied that Complainant had rights in the Trademarks. Again, Complainant responded with proof of the registration of the Trademarks and again requested transfer of the Offending Domain Name to Complainant. See, Correspondence attached hereto as Annex Number 6. After [Complainant] provid[ed] Respondent with the incontestable proof of rights illustrated by the Trademark registration, Respondent ceased all communications with Complainant, preventing any chance of a resolution without the intervention of this Panel.

• The Offending Domain Name is identical or confusingly similar to the “Wild West” mark and the Wild West domain name <wildwestdomains.com> inasmuch as the Offending Domain Name incorporates the mark in its entirety, adding only a description of the service both Wild West and the Respondent offer.

• The Respondent has no rights or legitimate interest in the Offending Domain Name because Wild West Domains, Inc. is the owner of record of the Trademarks and has not given Respondent permission to use the Trademarks in commerce.

• The Respondent registered the Offending Domain Name for the specific purpose of using the Offending Domain Name to offer services identical to that of Wild West. Complainant informed Respondent of its infringement with increasing detail three separate times. When notified of the infringement the first time, Respondent denied the association of the Trademarks with the Offending Domain Name. Complainant responded with proof of services associated with the Trademarks and again put the Respondent on notice of infringement. After receiving the second notification of infringement, Respondent denied Complainant had rights in the Trademarks. Complainant responded a third time providing proof of the Trademarks and again putting Respondent on notice of the infringement. Upon receipt of the third notification, Respondent ceased communications with Complainant.

• Respondent has knowledge of the Trademarks, of the confusingly similar nature of the Offending Domain Name and the intent to offer services directly in competition with the Complainant. Thus, Respondent registered the Offending Domain Name in bad faith and with knowledge that such names were confusingly similar to the Complainant’s domain name, <wildwestdomains.com>.

• Respondent registered the Offending Domain Name knowing such names were confusingly similar to a previously filed trademark, thus intentionally attempting to attract, for financial gain, Internet users to Respondent’s website by creating the likelihood of confusion with the Wild West mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

• Therefore, Respondent should be considered as having registered and used the Offending Domain Name in bad faith.”

B. Respondent. Respondent contends as follows:

Confusingly similar to a mark in which Complainant has rights. Respondent does not deny similarity of the disputed domain name with Complainant’s marks, but (as in her email correspondence with Complainant) asserts that the term “Wild West” “is sufficiently generic as to render any claim of exclusivity null”. Respondent suggests that the Panel may ignore or nullify Complainant’s marks.

Rights or legitimate interests. Complainant’s contention that Respondent registered the disputed domain name thirteen months after Complainant filed for its trademark is false; Complainant’s own evidence shows that its first filing was only one month prior to Respondent’s registration of the disputed domain name. Complainant’s marks were first used in commerce only after Respondent’s registration of the disputed domain name. Respondent is not allowed to and has not made any money from the limited services she has offered to her family and friends.

Bad faith. The disputed domain name is “descriptive of the services desired to be offered to friends and family by Respondent”, and was available for purchase when she registered the disputed domain name. Complainant waited two-and-one-half years after Respondent’s registration to complain of Respondent’s use of its marks. Respondent is not attempting to divert any business from Complainant and has no intention of providing services beyond the limited use described above.

Respondent summarizes her view of this proceeding as follows: “Complainant is trying to ‘strong arm’ the Offending Domain Name from the Respondent, via this Administrative Proceeding.”

6. Discussion and Findings

The Complainant must prove the elements set out in Paragraph 4(a) of the Policy:

(i) Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect to the Domain Name; and

(iii) Respondent’s Domain Name has been registered and is being used in bad faith.

Complainant bears the burden of proof on each of these elements.

A. Identical or Confusingly Similar to a mark in which Complainant has rights

As Respondent has acknowledged, the disputed domain name is identical or confusingly similar to Complainant’s registered marks, thus satisfying this element of the Policy.

Respondent does raise two arguments in opposition notwithstanding its acknowledgement as set forth in the preceding paragraph: First, she says that Complainant’s rights do not extend to the exclusive use of the phrase “Wild West”. Second, Respondent registered the disputed domain name well before Complainant’s trademark rights accrued. As to Respondent’s first argument, a panel under the Policy may set aside a trademark granted by the appropriate local authority, in this proceeding, the United States Patent and Trademark Office, only in extraordinary circumstances.³ Respondent’s argument is more appropriately directed to the second and third Policy elements, as discussed briefly below. Respondent’s timing argument is similarly a matter going to Respondent’s right to use the disputed domain name or bad faith in registration and use. The fact that a domain name was registered prior to accrual of the complainant’s trademark rights does not automatically result in denial of the complaint. See, e.g. ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires a Complainant to prove a negative, that Respondent lacks rights or legitimate interests in the disputed domain name. A Complainant does so with credible assertions, supported by evidence available to it, that Respondent lacks rights or legitimate interests. Upon such a showing, the burden of proof shifts to Respondent to establish, with competent evidence, that it has such rights.

In its Complaint, quoted above, Complainant dutifully recites the Policy language. However, “The Policy requires the Complainant to prove each of the three elements”. Western Research 3000, Inc. v. NEP Products, Inc. WIPO Case No. D2004-0755 (emphasis in original; citation omitted.) Complainant advances scant evidence to support its conclusionary allegations. As this Panel has noted on several occasions,⁴ allegations of legal conclusions have no force or effect under the Policy. A party must plead, and support with evidence, allegations of fact that, if true, allow the Panel to reach the desired legal conclusion.

Complainant’s only factual allegations are that it has two registered trademarks and one registered domain name incorporating the phrase “Wild West”; it notified Respondent of its trademark rights; and Respondent disputed Complainant’s trademark rights and rights to block Respondent from using the disputed domain name. On this basis the Panel is asked to transfer the disputed domain name to Complainant.

Respondent asserts that her use of the disputed domain name is non-commercial (and indeed must be so to satisfy her conditions of employment), and that she registered and began using the disputed domain name in this matter six months before Complainant’s first use in commerce of either of its marks. Respondent’s position stands uncontroverted by Complainant’s evidence or even by Complainant’s allegations. Respondent is thus within the safe harbors of Paragraphs 4(c)(ii) and 4(c)(iii) of the Policy.⁵

Complainant alleges that Respondent’s registration was thirteen months after Complainant applied for trademark registration. This assertion is contradicted by Complainant’s own evidence. Moreover, Panelists under the Policy have generally not adopted the “constructive notice” presumption of trademark law to determine the effective date of Respondent’s knowledge of the Complainant’s mark.⁶ There is no evidence that Respondent actually knew of Complainant’s marks until her receipt of Complainant’s cease-and-desist email in June 2004. The first date upon which the Respondent could be attributed even constructive notice of Complainant’s mark was July 14, 2002, Complainant’s alleged first use in commerce for its Wild West marks, a date six months after Respondent registered the disputed domain name.

Without any evidence it would be pure speculation to infer that Respondent knew in January 2002 of Complainant’s domain name, which had been registered and therefore was in the whois data base at that time, and compounding that speculation to infer further that she selected the disputed domain name in anticipation of Complainant’s marks and services.⁷ Complainant’s domain name conferred no trademark rights, and was not (and is not) a mark in which Complainant had rights sufficient to invoke the Policy. Unless a domain name incorporates a mark in which its owner has or later acquires rights, another’s electing a similar domain name as her web address does not violate the Policy.

C. Registered and Used in Bad Faith

Complainant offers no evidence at all to support its allegations of bad faith. In particular, there is no evidence that:

(i) Respondent has registered or acquired the disputed domain name primarily for purposes of selling, renting or otherwise transferring it to the Complainant. There is no allegation that this occurred.

(ii) Respondent registered any other domain name at all, much less engaged in a pattern of abusive domain name registrations. Again, there is no allegation that this occurred.

(iii) Respondent registered the disputed domain name “primarily for the purpose of disrupting the business of the competitor”. Since her use is non-commercial, Respondent has no competitor.

(iv) Respondent, by using the disputed domain name, has “intentionally attempted to attract, for commercial gain, Internet users to its website”. There is no evidence that Respondent has ever used the website for any commercial purpose.

(See Policy, Paragraph 4(b))

Respondent’s evidence indicates that Respondent registered the disputed domain name without knowledge (actual or imputed) of Complainant’s marks and has used it entirely for non-commercial purposes. The record reveals no bad faith on Respondent’s part.

Complainant’s theory seems to be that once it has obtained a registered trademark, it may then exclude anyone in the world from using the operative words of its trademarks in a domain name for any purpose merely by asserting its “trademark rights”. That is the position Complainant asserted in its July 2004 email correspondence with Respondent and asserts in this proceeding.

The language of the Policy, and the body of decisional law interpreting it, provide no support for this argument. To reach Complainant’s desired result on this basis, without any evidence that Respondent lacks a legitimate interest in the disputed domain name or acted in bad faith, would require the Panel to weigh each party’s competing interests in or rights to a domain name and determine which has the stronger claim. With limited evidence and no cross-examination a panel is incapable of making that determination on a reasoned basis. On a more fundamental level, the Policy does not authorize a panel to make that judgment. The Policy is clear in requiring that the respondent lack any right or legitimate interest. Complainant’s argument would therefore require the Panel to sidestep a clear mandate from the authority under which it operates. This the Panel declines to do.

D. Reverse Domain Name Hijacking

Reverse Domain Name Hijacking is “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name” (Rules, Paragraph 1). Complainant’s email correspondence with Respondent can only be described as bullying. That correspondence together with Complainant’s unsupported assertions and highly questionable legal theory in this proceeding – coming from an ICANN-accredited domain name registrar, which should be aware of the Policy, its evidentiary requirements, and its sanctions – constitute conduct that would justify a finding that this definition has been met. In its discretion, however, the Panel declines to hold that “the complaint was brought in bad faith . . . and constitutes an abuse of the administrative proceeding” (Rules, Paragraph 15(e)). The Panel does find that “[the Complaint] was brought primarily to harass the domain-name holder” (ibid.).

7. Decision

For the foregoing reasons, the Complaint is denied.

Richard G. Lyon
Sole Panelist

Dated: November 23, 2004

¹ Complainant is apparently affiliated with The Go Daddy Group, as Complainant lists that company as its address. Go Daddy is an ICANN-accredited registrar of top level domain names.

² Since this server was offered “for product familiarity”, it is possible that Respondent works in some branch of the computer industry.

³ Some panels have held that they lacked jurisdiction to set aside a mark. E.g., Teresa Christie, d/b/a The Mackinac Island Florist v. James Porcaro, d/b/a Weber’s Mackinac Island Florist, WIPO Case No.D2001-0653; Hola S. A. and Hello Limited v. Idealab, WIPO Case No.D2002-0089 (“It is not for the Panel to decide whether registration of the marks should or should not have been granted. The holding of a registered mark is sufficient for the purposes of the Policy. Any claim that the registration should not have been granted or should be revoked falls to be decided by the Courts of the relevant country.”). But see Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.

⁴ Texans For Lawsuit Reform, Inc. v. Kelly Fero, WIPO Case No. D2004-0778; Greyson International, Inc. v. William Loncar, WIPO Case No. D2003-0805.

⁵ “(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

⁶ Olymp Bezner GmbH & Co. KG v. Olympus Access Service, WIPO Case No. D2003-0958; The Way International, Inc. v. Diamond Peters, WIPO Case No. D2003-0264.

⁷ See, e.g. ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669.