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Generic Top Level Domain Name (gTLD) Decisions |
Boston Law Collaborative (BLC), LLC v.
Netico, Inc. a/k/a Jack D.
Claim Number: FA0410000358038
PARTIES
Complainant
is Boston Law Collaborative (BLC), LLC, 99 Summer Street, Suite 1600, Boston,
MA 02110 (“Complainant”). Respondent is
Netico, Inc. a/k/a Jack D. (“Respondent”), represented by
Stephen H. Sturgeon of Law Offices of Stephen H. Sturgeon &
Assoc of Washington, DC,
11116 Hurdle Hill Drive, Potomac, MD 20854.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <blc.com>,
registered with Enom, 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.
Hugues
Richard as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
29, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on November 1, 2004.
On
November 1, 2004, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <blc.com>
is registered with Enom, Inc. and that the Respondent is the current registrant
of the name. Enom, Inc. has verified
that Respondent is bound by the Enom, 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
November 8, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”),
setting a deadline of November
29, 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@blc.com by e-mail.
A
deficient Response was received by the National Arbitration Forum on November
30, 2004. The Response was received
after the deadline and was not received in hard copy. Therefore, the National Arbitration Forum does not consider this
Response to be in compliance with ICANN Rule #5 (a).
Paragraph
15 (a) of the ICANN Rules serves to instruct the Panel as to the principles the
Panel is to utilize in settling the dispute.
As such, the Panel shares the
opinion set forth by the Panel in the decision Strum v. Nordic Net Exch.
AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002), namely, that the Panel has the
liberty to decide whether a Response should be declared
inadmissible in view of
Respondent’s failure to comply with the provisions of the ICANN rules or if
said Response should be considered
regardless of non-compliance. Further, the
Panel concurs with the decision of the Panel in the previously cited case to
consider
the Response, on the basis that ¨ruling a Response inadmissible
because of formal deficiencies would be an extreme remedy not consistent
with
the basic principles of due process¨. The Panel thus rules the Response
admissible.
On December 10, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Hugues Richard as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
submits as follows:
a)
Identical and /or Confusingly Similar:
The <blc.com> domain
name is identical to the abbreviated term BLC, under which Complainant conducts
business.
The disputed domain name is
confusingly similar to the logo utilized by Complainant, and for which
Complainant has filed a trademark
application.
Complainant
has widely come to be known by the public in general as BLC.
Such a contention is upheld by the
augmentation (258 megabytes in September 2003 to 1.15 gigabytes in September
2004) in the number
of individuals which visit the website with the address
<bostonlawcollaborative.com> operated by Complainant.
b)
Rights or Legitimate Interests:
Respondent fails to use or
demonstrate any preparations to use the domain name in question, in conjunction
with a bona fide offering
of goods and services.
Respondent
has not made any legitimate non-commercial or fair use of the domain name.
Neither Mr. Doumanian, nor Respondent
is connected in any form to the disputed domain name, the acronym BLC or any
configuration of
the letters “b,” “l” or “c.”
Respondent’s utilization of the
disputed domain name misleadingly diverts potential clients of Complainant, an
allegation, which is
supported by both Respondent’s offer to transfer the
domain name to the Complainant in exchange for $17 000, as well as the
pecuniary
gain which Respondent receives each time the website Respondent
operates is visitied.
c) Registration
and Use in Bad Faith:
Respondent
registered the disputed domain name for the primary purpose of selling, renting,
or otherwise transferring the domain name
registration for a pecuniary consideration superior to any expenses
incurred by Respondent as a result of said registration.
Respondent is simply ¨passively
holding¨ the domain name with the expectation that a business with an existing
or future trade or
service mark identical or similar to the domain name in
question will offer an exorbitant monetary consideration in exchange for
its
transfer.
Respondent
has shown a documented pattern of bad faith with respect to illegitimate use of
several domain names.
The
acquisition and ownership by Respondent of the disputed domain name should be construed
as a deliberate attempt to prohibit Complainant
from its utilization.
B.
Respondent
Respondent
submits as follows:
a)
Identical and/or Confusingly Similar:
Complainant’s failure to possess any
registered or common law rights to a trademark which precede the date in which
the domain name
was registered should be regarded as fatal to Complainant’s
request that the domain name be transferred.
Complainant has not set forth any
substantive proof that demonstrates that the words comprising the Complainant’s
name are associated
with any services or products that Complainant markets or
provides.
b)
Rights or Legitimate Interests:
Complainant has failed to prove
absence by Respondent, of any rights or legitimate interests in the disputed
domain name.
The
fact that the domain name in question was not utilized at the time the present complaint
was filed is not detrimental to Respondent’s
contention that it has a legitimate
interest in the domain name.
The domain name was registered for a
fair purpose.
Respondent has partaken in measures
to utilize the disputed domain name in conjunction with a site for a ¨Bug
Lovers Club¨.
The
domain name in question was not registered in an attempt to divert those
seeking the Respondent’s website, as it was to eventually
become utilized by
those seeking the ¨Bug Lovers Club¨, thus establishing that the letters “b,”
“l” and “c” were chosen purposely.
c)
Registration and Use in Bad Faith:
The argument set forth by
Complainant in which Respondent was in bad faith at the time the domain name
was registered and subsequently
thereafter, is without any factual bearing.
The registration of the domain name
could not have been undertaken in bad faith, since the rights in the mark at
which such argument
is directed, were establish after the domain name was
already registered.
The fact that the rights obtained in
the disputed domain name precede the date in which Complainant was incorporated
further demonstrates
that the registration of the domain name occurred without
prior knowledge of any potential claim by Complainant to the letters forming
integral part of the domain name.
Consumers
do not readily associate the term ¨BLC¨ with Complainant, thus demonstrating
the absence of any claim by Respondent to the
term ¨BLC¨.
The
Panel should dismiss the allegation set forth by the complainant regarding
previous cybersquatting activity, as Complainant failed
to submit any evidence
in support of such pretension.
FINDINGS
Having reviewed the evidence submitted by
the parties, and their written representations, the Panel makes the following
findings:
The Respondent registered the <blc.com>
domain name on November 18, 1999.
On
August 1 2003, Complainant filed an Intent to Use application with the United
States Patent and Trademark Office (“USPTO”) for
the trademark of
a column design bearing the letters ¨BLC¨ and used by Complainant as a logo.
Upon publication on July 14, 2004 by
the USPTO of the aforementioned trademark bearing the serial number 781281920,
a notice of allowance
was issued in favor of Complainant on October 5, 2004.
As required, the Complainant filed
the documentation regarded as necessary for the completion of the allegation of
use application
on October 27, 2004.
Complainant has not established a necessary
trademark right in the <blc.com> domain name due to the fact that
said domain name was registered some four years before Complainant applied for
a trademark.
Complainant has failed to prove to the
Panel a secondary meaning to the term “BLC” such that the public in general
would be inclined
to associate the aforementioned domain name with Complainant.
FACTUAL BACKGROUND
Complainant, which specializes in
family and collaborative law, as well as mediation and arbitration was
incorporated on May 27, 2003,
and began offering the aforementioned services on
August 15, 2003.
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 the <blc.com>
domain name registered by Respondent is identical to Complainant’s BLC mark, in
that the domain name is comprised of the
mark in its entirety, adding only the generic top level domain (“gTLD”) ¨.com¨.
Furthermore, Complainant argues that the Respondent’s
domain name is
confusingly similar to both Complainant’s service mark and pending trademark.
It has long been regarded, that the
mere addition of a gTLD to a mark is without bearing and insufficient for the
purposes of distinguishing
domain names and marks. See Rollerblade,
Inc. v. Mc Grady, D 2000-0429 (WIPO June 25, 2000) (wherein it was decided
that the top level of the domain name such as ¨.net¨ or ¨.com¨ does not
influence the domain name for the purpose of deciding whether it is identical
or confusingly similar), see also Caplin v. SLP, FA 210305 (Nat.Arb.
Forum Jan.7 2004) (finding that Respondent’s domain name was identical to
Complainant’s mark despite the addition
of the top level domain), see also
Busy Body, Inc. v. Fitness Outlet Inc., D 2000-0127 (WIPO Apr. 22, 2000)
(wherein the Panel concluded that the addition of a top level domain is
insignificant); see also Execujet Holdings Ltd. V. Air Alpha America
Inc., D 2002-0669 (WIPO Oct. 7, 2002) (stating that the Panel need
not consider the addition of a top level domain indicator in deciding whether a
domain
name and mark are identical or confusingly similar); see also S.A.
Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar.13,
2003) (reaching similar conclusions).
Whereas the Panel concurs with the
previously mentioned decisions, the question of whether the domain name
operated by Respondent
is identical or confusingly similar with Complainant’s
service mark is quite irrelevant for reasons set forth below. See Church in
Houston v. Moran, D 2001-0683 (WIPO
Aug. 2, 2001) (¨before a Panel can determine whether the alleged mark is
identical or confusingly similar to the domain name,
it must be satisfied that
Complainant has established its trademark or service mark rights in the first
place¨).
Complainant
asserts that it has established rights in the BLC mark through the filing of an Intent to Use application with the
USPTO.
The
Panel finds that the mere filing of an application for a trademark is
insufficient to establish rights to
a trademark for the purposes of the Uniform Domain Dispute Resolution Policy (hereinafter
referred to as the ¨UDRP¨). Therefore, Complainant fails to establish rights in the BLC mark, in this respect. See
Amsec Ent. v. Mc Call, D2001-0083 (WIPO Apr. 3 2001) (stating that
Complainant’s pending trade-mark applications
do not establish an enforceable right to the mark until a trademark registration is issued).
The
Complainant is not however without recourse, both registered and common law trademark
rights are regarded by the UDRP as sufficient
to establish rights in a mark.
Such notion is also espoused by
Professor McCarthy in his treatise (McCarthy, Trademarks and Unfair
Competition, section 25:74.2, 4ed. 2002), in which said Professor states
that the UDRP requires only that Complainant demonstrate that Respondent’s
domain name be identical or confusingly similar to a trademark in which the
former has rights. Furthermore, Professor McCarthy asserts
that according to
the UDRP, rights in trademarks may be acquired through their registration or
the acquisition of common law or service
mark rights.
Accordingly,
the Panel must determine if Complainant has demonstrated detention of common
law rights, acquired through the use of
the BLC service mark.
As
such, in establishing common law rights, it is paramount that the party, in
this instance Complainant, demonstrate to the Panel
that the mark in question
has achieved distinctiveness capable of being protected. Said distinctiveness
may be inherent to the mark, or
acquired through secondary meaning. See Weatherford Int’l, Inc. v. Wells,
FA 153626 (Nat. Arb. Forum May 19,
2003) (¨Complainant must establish that the public associates the asserted mark with its goods and
services.¨).
Further, as espoused in the decision
Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum
Feb. 19, 2003), Complainant’s rights, be they by virtue of registered or common
law rights, must always
predate those of the Respondent. In the previously
cited decision, the Panel concluded that a ¨finding to the contrary would obviate
the intention of the Policy, which was prescribed to protect infringement of
existing trademark rights through identical or confusingly
similar domain name
registration”. See also Bus. Architecture Group, Inc. v. Reflex
Publ’g, FA 97051, (Nat. Arb. Forum June 5, 2001) (where the Panel denied
Complainant’s request to transfer the domain name, in the absence
of proof that
Complainant’s rights in the mark preceded those of Respondent), Phonenix
Mortgage Corp. v. Toggas, D 2001-0101 (WIPO Mar. 30, 2001) (wherein the
Panel concluded that Policy Paragraph 4 (a)(i) should be read as implying that
Complainant’s
trademark rights predate those of Respondent), and Ezcommerce
Global Solutions, Inc. v. Alphabase Interactive, D 2002-0943 (WIPO Nov. 21,
2002) (which states that it would be contrary to the intention of the Policy to
permit the transfer of
a domain name where the
Complainant’s rights in a mark ensued subsequently to the date in which
the Respondent registered the domain name).
Accordingly, the key issue in the
present proceedings is whether, Complainant can establish common law rights,
and if such rights
are established, whether Complainant is able to demonstrate
that said rights arose prior to the date in which Respondent acquired
rights in
the domain name.
Complainant argues that it has
acquired notoriety as ¨BLC¨ by virtue of, inter
alia, the website
Complainant operates in which Complainant’s logo clearly appears. Whereas
Complainant attempts to demonstrate said notoriety,
by submitting to the Panel
that traffic at the aforementioned website has augmented from 358 megabytes in
September 2003 to 1.15
megabytes in September 2004, it does not however provide
the Panel with any evidence confirming such a pretension. The Panel holds
that
the affirmations set forth by Complainant are ¨self-serving¨. Consequently, the
Panel accords no significance to such arguments.
See Weatherford Int’l Inc.
v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (wherein the Panel
concluded that Complainant’s allegations must be supported by evidence
and not
self-serving assertions).
According to Complainant,
Complainant’s name has become synonymous with the term ¨BLC¨, and has acquired
secondary meaning. Complainant offers
the following evidence in support of its contentions:
Whereas
Complainant is inclined to regard such submissions as conclusive to the fact that Complainant and the term ¨BLC¨ are
interchangeable and that consequently, the public
is likely to associate the <blc.com> domain name with the
Complainant, the Panel finds such
¨evidence¨ unconvincing.
In fact, Complainant fails to
provide sufficient, rather any,
evidence to this Panel as to, for example, the number of individuals present at
the aforementioned meetings who actually read the
literature distributed. The
Panel holds that simply stating that
the American Bar Association Journal ¨has an internal subscription base of
approximately 500,000 attorneys’, law firms, and
other professionals¨ is not
enough. Complainant must submit proof in support of such assertions; otherwise
such arguments must be
regarded as self-serving and therefore inadmissible. See
Weatherford Int’l Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003).
In
Media West-GSI, Inc. v. Earthcards.com, Inc., D 2000-0463 (WIPO July 28,
2000), the Panel concluded that the courts are inclined to consider various
factors when analyzing the
acquisition of secondary meaning in a term, namely
advertising expenditures, consumer surveys linking the mark to a source,
unsolicited
media coverage of the service, sales success, attempts to
plagiarize the mark, and length and exclusivity of the mark’s use. See
Australian Trade Comm’n v. Reader, D 2002-0786 (WIPO Nov.12, 2002) (wherein
the Panel concluded that Complainant had met its burden by submitting evidence
of Complainant’s
substantial investment in the promotion of its services as
well as written materials in which Complainant’s services and name were
documented).
Failure
by Complainant to submit such evidence to the panel is paramount. Furthermore, although
Complainant has asserted common law rights in the mark, the Panel holds that no
conclusive evidence has been advanced
in support of such a contention.
Consequently, the Panel finds that
Complainant has not satisfied its burden under Policy 4(a)(i) with respect to
the <blc.com> domain name.
In proceedings such as the present,
the onus is on Complainant to prove all three elements under Paragraph 4(a) of
the Policy. Once
it is established that the complainant has failed to
demonstrate the presence of one of the elements listed in Policy Paragraph
4(a)(i),
the Panel is of the view that it need not consider whether the
remaining elements contained in Policy Paragraphs 4(a)(ii) and (iii)
have been
proven by Complainant. See Intermark Media, Inc. v. Wang Logic Corp.,
FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (wherein the Panel terminated its
inquiry once satisfied that Complainant did not satisfy
the requirements set
forth in Policy Paragraph 4 (a)(i)); see also Decker v. Antwer, FA
263584 (Nat. Arb. Forum June 28, 2004); see also Creative Curb v. Edgetic
Intl. Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that
because Complainant must prove all three elements under the Policy,
Complainant’s
failure to prove one of the elements makes further inquiry into
the remaining elements unnecessary); see also Mattel, Inc. v. Domain Admin
a/k/a ****** It’s all in the name ******, FA 248936 (Nat. Arb. Forum May 7,
2004) (wherein the Panel ended its analysis once it became apparent that
Complainant did not demonstrate
the elements listed in Policy Paragraph
4(a)(i)).
No Rights or Legitimate Interests/
Domain Name Registered and Used in Bad Faith
Even though the Panel does not need
to address these issues, it wishes to succinctly state that in its opinion
Complainant has not,
regarding the other two elements i.e. ¨rights or
legitimate interests¨ and ¨bad faith¨, proven either of said elements. In fact,
the Respondent has shown (Respondent’s
Exhibit B) that it has a project called
¨Bug Lovers Club (BLC) ¨, which supports the view that it has rights and
legitimate interests
in the domain name. Furthermore the Respondent has rightly
argued that it could not have registered and used in bad faith the said
domain name since its registration predates the incorporation of the Complainant
by approximately four
years. Under the circumstances the Complaint must be
rejected.
Reverse Domain
Name Hijacking
Respondent seeks a declaration that
the Complainant is engaging in Reverse Domain Name Hijacking. It is therefore
incumbent upon the
Respondent to demonstrate that the Complainant knew or
should have known that one of the three elements set forth in Paragraph 4
(a)
of the Policy was absent. See Church in Houston v. Moran, D2001-0683
(WIPO Aug, 2, 2001) (where such was concluded by the Panel).
Reverse domain name hijacking is defined at Rule 1 of
the ICANN rules as: “using the Policy in bad faith to attempt to deprive a
registered
domain name holder of a domain name.”
As stated in Verkakik v.
Crownonlinemedia.com, D 2001-1502 (WIPO Mar. 19, 2002), when Respondent
seeks a reverse domain name hijacking declaration, it is he who bears the
burden
of establishing to the satisfaction of the Panel that Complainant had
knowledge of the Respondent’s rights or legitimate interests
in the domain name
and that in virtue of such knowledge, Complainant has harassed Respondent.
Similar conclusions were drawn in Plan Express Inc. v. Plan Express, D
2000-0565 (WIPO July 17, 2000) and Sydney Opera House Trust v. Trilynx Pty.
Ltd., D 2000-1224 (WIPO Oct. 31, 2000).
In light of the failure of
Respondent to provide sufficient evidence in this matter, the Panel finds that
Complainant did not file
the complaint in bad faith.
DECISION
Having failed to establish all three
elements required under the ICANN Policy, the Panel concludes that relief shall
be DENIED.
Respondent did not establish to the
satisfaction of the Panel that the Complaint was filed in bad faith and
warrants a finding of
reverse domain name hijacking.
Pursuant to Paragraph 4 (i) of the ICANN
Policy, and Rule 15 of the ICANN Rules, the Panel dismisses the Complaint and
orders that
the <blc.com> domain name remain registered to the
Respondent.
Hugues Richard, Panelist
Dated: December 24, 2004
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