|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
Gallup, Inc. v. Howard Hoffman d/b/a
Domain Name 4 Sale
Claim Number: FA0402000239686
PARTIES
Complainant
is Gallup, Inc. (“Complainant”),
represented by Lisa B. Kiichler, of Gallup, Inc., 1001
Gallup Drive, Omaha, NE 68102.
Respondent is Howard Hoffman d/b/a Domain Name 4 Sale (“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 <gallup.info>,
registered with Doster, Inc.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict
in serving as Panelists in
this proceeding.
Judge
Charles K. McCotter (Ret.) and David Sorkin, as Panelists and Judge Karl V.
Fink (Ret.) as Chair.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on February 23, 2004; the Forum received
a hard copy of the
Complaint on February 26, 2004.
On
March 1, 2004, Doster, Inc.
confirmed by e-mail to the Forum that the domain name <gallup.info> is registered with Doster, Inc. and that the Respondent is the current registrant of
the name. Doster, Inc. has verified that Respondent is bound by the Doster, 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
March 4, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of March 24,
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@gallup.info by e-mail.
A
timely Response was received and determined to be complete on March 24, 2004.
A
timely Additional Submission was received from Complainant on March 29,
2004.
A
timely Additional Submission was received from Respondent on March 30,
2004.
All
submissions by the parties were considered by the Panel.
On April 8, 2004, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the Forum appointed Judge
Charles K. McCotter (Ret.) and David Sorkin, as Panelists and Judge Karl V.
Fink (Ret.) as Chair.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
is the largest, oldest and best-known opinion polling service in the United
States. Established prior to World War
II, Complainant has used the trademarks GALLUP and GALLUP POLL as trademarks
for over sixty years (“GALLUP
Marks”).
The name and mark GALLUP is, in fact, one of the best-known trademarks
in the country.
Complainant owns a website,
<gallup.com> giving users worldwide access.
Complainant registered GALLUP, GALLUP
POLL and other GALLUP trademarks, well before the January 2004 domain
registration of <gallup.info> by
Respondent. The domain name of
Respondent, <gallup.info> is virtually
identical to Complainant’s registered marks, GALLUP and GALLUP POLL, and to its
domain name, <gallup.com>.
Respondent
is not a licensee of Complainant, nor has Respondent ever been authorized by
Complainant to use Complainant’s GALLUP mark
or any name including GALLUP,
including but not limited to, Respondent’s domain name <gallup.info>.
Respondent,
Domain Name 4 Sale, does not appear to be in the polling business. When visiting Respondent’s domain <gallup.info>, you are
re-directed to the domain site <roar.com>. Respondent is not a licensee of Complainant and has no connection
with Gallup or the Gallup Poll and Respondent cannot use GALLUP
or GALLUP POLL
to identify its business.
Complainant
asserts that the domain name registered by Respondent is identical or
confusingly similar to the trademarks in which Complainant
has rights, that
Respondent has no rights or legitimate interests in respect of Respondent’s
domain name, and Respondent’s domain
name has been registered in bad
faith.
B.
Respondent
Gallup is the name of a U.S. city in the State of New Mexico. Respondent has a legitimate interest in the
disputed domain because it incorporates the name of the city of Gallup, and was
registered
to be used for an informational website about the city. Anyone has the right under the UDRP and
under trademark law to register a geographic domain name.
The domain names that Respondent has offered for sale are common
words and terms, and none has been registered with the intent to
sell it to a
trademark holder.
Complainant
is a well-known polling company.
Respondent has not used the disputed domain in connection with this area
of business, and this is admitted in the Complaint at paragraph
6 which states
Respondent “does not appear to be in the polling business.”
Respondent
has registered close to one hundred (100) other city and geographic
domains. Respondent has registered the city domain names for
the purpose of developing a network of websites that will offer information
about
those cities. Respondent has not
yet developed the Gallup, New Mexico website or its network of city websites
but plans to begin doing so over the
next several months. Presently the pages hosted at Respondent’s
city domain name post general advertising links provided through affiliate
programs with
<roar.com> and others.
The city name Gallup is subject to
substantial third party use. An “advanced
search” on <google.com> for pages that include the term “gallup,” but do
not include the terms “gallup poll,” “gallup
organization,” and gallup, inc.
(to avoid pages referencing Complainant) yielded 498,000 third party uses of
the term “gallup,” many
referencing the City of Gallup, New Mexico.
Complainant’s trademark and the disputed domain are
identical. Respondent does not dispute
this element of the Policy.
Utilizing
a geographic domain name for a website about the city is a “classic example” of
legitimate use under the Policy.
Because “gallup” is a descriptive term, to which Complainant does not
have exclusive rights, Respondent, ipso facto, has rights and legitimate
interests in the disputed domain.
Although
Respondent has not yet developed its <gallup.info>
city website, the legitimate interest is still established by virtue of its
bona fide intent to use the disputed domain.
The Policy does not require
actual use to satisfy a Respondent’s legitimate interest. It is the Respondent’s intent to use the
domain name at the time of registration that matters.
Complainant
does not have exclusive rights to the geographic term “gallup” and, thus,
Respondent does not need authorization or a
license to use the term.
Because a complainant cannot claim
exclusive rights to a geographic term, it cannot establish bad faith
registration of a domain name
incorporating that term. Bad faith also cannot be established because
“Gallup” is a term not exclusively associated with Complainant.
Where
a complainant’s mark is subject to substantial third party use, as it is here,
the complainant must proffer evidence that demonstrates
that respondent has
specifically targeted complainant.
Complainant has proffered no evidence of any kind that Respondent registered
the disputed domain with its trademark in mind.
The
sale of generic or descriptive term domain names like the disputed domain
constitutes a bona fide offering of goods and services
that establishes
Respondent’s legitimate interest.
C. Additional Submissions
1. Complainant
Gallup sells information and data sets to purchasers through
its Gallup Premium Tuesday Briefing, Gallup Management Journal and Gallup
Brain
through Internet subscriptions.
Therefore, a reasonable person might expect to find poll results or
other Gallup information at <gallup.info>.
Although Respondent has registered city
names since 2001, Respondent does not offer evidence of even one city domain
that has been
developed as an information website. The failure to develop a site over a lengthy period of time
raises the inference that Respondent has no bona fide intent to use the
name.
In 2001, Respondent thought it was
important to register its city domain as <amarillotexas.net> rather than
<amarillo.net>. Had Respondent
exercised the same practice of registering the domain in dispute in this matter
as <gallupnm.info>, <gallupnewmexico.info>
or even
<cityofgallup.info>, this issue would not be before the Panel today. Gallup by itself, without a state
identifier, is “merely an individually unidentifiable geographic name.” There are actually four U.S. Gallup towns
located in the states of New Mexico, Ohio, Kentucky and South Dakota. Respondent has failed to note other domains
that it has registered that do not include the name of a city.
The fact that Gallup is a registered trademark on the Primary Register is
evidence that Gallup has not been
found to be generic by the Patent and Trademark Office.
Given
the fame of the Gallup mark and
its corresponding distinctiveness as a dictionary term referencing
Complainant’s business, Complainant should not have to
prove “bad faith” by
demonstrating that Respondent specifically targeted Complainant. It would be hard to imagine, nor has Respondent
stated, that it had no knowledge of Complainant’s trademark when it registered <gallup.info>.
In
all the geographic cases cited by Respondent and others, the geographic terms
have either exclusive or primary geographic significance. This case is of first impression because
Complainant can demonstrate through its own evidence the fame of the mark, as
well as extrinsic
evidence such as dictionaries, that the primary significance
of the term Gallup to the world at large is in reference to Complainant’s
trademark. The Gallup name has gained its fame from
the polling business of Complainant and not because of the name of a small town
in New Mexico or any
other state.
The name of Respondent given in the WHOIS
record is “Domain Name 4 Sale” giving the appearance that Respondent is in the
business
of registering and selling domain names. It is clear that Respondent is in the business of selling domain
names whether to Complainant, a competitor or other interested third
parties
for an amount in excess of its out-of-pocket costs incurred in relation to the
registration of the domain name.
Respondent offers no evidence of being in
any business other than the registration and sale of domain names.
2.
Respondent
Respondent has presented two elements of
evidence strongly rebutting and eliminating the need for the Panel to speculate
about Respondent’s
interest. First,
Respondent has provided a sworn affidavit that it registered the disputed
domain to use for an informational site about Gallup,
New Mexico. Second, Respondent has provided a list of
dozens of other city and geographic domain names that it has registered for
this same purpose,
strong corroborating evidence that <gallup.info> was registered
as a geographic name, and not because it happened to coincide with
Complainant’s trademark. The offer to
sell the domain names does not detract from this legitimate interest provided
that there is no evidence the intent was
to sell them to a trademark holder.
Complainant
points to Respondent’s domain name <amarillotexas.net>, and questions why
Respondent did not register the domain
name <gallupnewmexico.com>. Respondent would have preferred to register
a domain name with just “Amarillo” since the shorter the domain name the
better, but it
was unable to acquire <amarillo.net> or
<amarillo.info>.
.
FINDINGS
For the reasons set forth below, the Panel finds
Complainant has proved that the domain name should be transferred.
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 rights in the GALLUP mark through registration with the U.S.
Patent and Trademark Office (“USPTO”) on
May 4, 1999 (Reg. No. 2,242,387). 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).
The
Panel finds that Respondent’s <gallup.info>
domain name is identical to Complainant’s GALLUP mark because the domain name
fully incorporates the mark and merely adds the generic
top-level domain
“.info.” The addition of “.info” is
irrelevant in determining whether the domain name is identical to Complainant’s
mark. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22,
2000) (finding that "the addition of the generic top-level domain (gTLD)
name ‘.com’ is . . . without
legal significance since use of a gTLD is required
of domain name registrants"); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain
name for the purpose of determining whether it is
identical or confusingly similar).
The
Panel finds and Respondent does not dispute that Complainant has proved this
element.
Complainant
has made out a prima facie case which Respondent has failed to rebut. Respondent has incorporated a well-known
trademark in a geographic domain name but has shown no preparations to use the
domain name
to feature the geographic location. See Do the Hustle, LLC v. Tropic Web, 2000-0624 (WIPO Aug
21, 2000). Nor has Respondent shown any
preparations to develop the numerous other domain names. The only use Respondent has made of the
domain name is “for sale” and with affiliate advertising programs operated by
<roar.com>
and others.
Respondent
placed an advertisement in the <gallup.info>
domain name’s WHOIS information stating that the domain name was for
sale. The Panel finds that Respondent’s
willingness to sell the domain name is evidence that Respondent lacks rights or
legitimate interests
in the domain name.
See Mothers Against Drunk
Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that
under the circumstances, Respondent’s apparent willingness to dispose of
its
rights in the disputed domain name suggested that it lacked rights or
legitimate interests in the domain name); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083
(Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests
where Respondent registered the domain name
with the intention of selling its
rights).
Furthermore,
the <gallup.info> domain name
revolves to a website located at <roar.com>, which contains links for
several topics unrelated to Complainant such
as “Home & Lifestyle,”
“Games,” and “Wholesale & Auction.”
Respondent admits that these links are advertisements. It may be inferred that Respondent receives
“click-through fees” from Internet vendors by using the <gallup.info> domain name in a process to reroute Internet
users to the vendors’ websites. The
Panel may find that Respondent’s use of a domain name confusingly similar to
Complainant’s mark for commercial gain does not constitute
a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy
¶ 4(c)(iii). See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May
12, 2003) (finding that Respondent did not have rights or legitimate interests
in a domain name that
used Complainant’s mark and redirected Internet users to
a website that pays domain name registrants for referring those users to
its
search engine and pop-up advertisements); see also FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000)
(finding no rights or legitimate interests in the domain names
<faoscwartz.com>, <foaschwartz.com>,
<faoshwartz.com>, and
<faoswartz.com> where Respondent was using these domain names to link to
an advertising website).
In
Complainant’s Additional Submission, it refutes Respondent’s assertion that
Respondent is in the process of developing a network
of informational websites
related to American cities. Complainant
asserts that Respondent registered its first “city” domain name on December 14,
2001; however, Respondent still has not
developed a single informational
website related to any of its registered domain names. Respondent’s failure to develop a site over
a lengthy period of time raises the inference that Respondent has no bona fide
intent
to use the <gallup.info> domain
name.
Complainant has proved this element.
The
evidence also supports a finding that Respondent registered and used the domain
name in bad faith. Respondent had
knowledge or should have had knowledge of Complainant’s well-known
trademark. See MIRC Elecs.
Ltd. v. Onida.com, 2001-1061 (WIPO) (finding bad faith on the basis that
Complainant’s trademark, rather than the identical geographic name, was uppermost
in Respondent’s mind when it registered the disputed domain name).
Complainant
asserts that the <gallup.info> domain
name revolves to a website located at <roar.com>, which contains links
for several topics unrelated to Complainant such
as “Home & Lifestyle,”
“Games,” and “Wholesale & Auction.”
The Panel finds that Respondent registered and used the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv).
See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat.
Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names
contain entire versions of Complainant’s
marks and are used for something
completely unrelated to their descriptive quality, a consumer searching for
Complainant would become
confused as to Complainant’s affiliation with the
resulting search engine website” in holding that the domain names were
registered
and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also
ESPN, Inc. v. Ballerini, FA 95410
(Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the
domain name to another website <iwin.com>,
presumably receiving a portion
of the advertising revenue from the site by directing Internet traffic there,
thus using a domain
name to attract Internet users for commercial gain).
Respondent’s
attempt to sell the <gallup.info> domain
name is evidence of bad faith registration pursuant to Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa
dot Net” Web Serv., FA 95685
(Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain
name, even if no certain price is demanded,
are evidence of bad faith”);
see also Microsoft Corp. v.
Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding bad faith where
Respondent registered the domain name for the purpose of selling it, as
revealed by the name Respondent chose for the registrant, “If you want this
domain name, please contact me”); see also Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding bad faith where Respondent’s WHOIS registration information contained
the words, “This
is domain name is for sale”).
Complainant
has proved this element.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gallup.info>
domain name be TRANSFERRED from Respondent to Complainant.
Judge Charles K. McCotter, Jr. (Ret.),
Panelist
Judge
Karl V. Fink(Ret.), Chair
I respectfully
dissent. In my view, the evidence
before the Panel supports an inference that Respondent registered and used the
disputed domain name for reasons
entirely unrelated to Complainant and its
marks. Unlike the respondent in MIRC
Elecs. Ltd. v. Onida.com, Respondent here has furnished substantial and
credible evidence to substantiate its claimed motivation for registering the
disputed
domain name. I would find that
Complainant has failed to sustain its burden of proving that Respondent
registered the disputed domain name in bad
faith, and would therefore dismiss
the Complaint.
David Sorkin, Panelist
Dated: April 23, 2004
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/436.html