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Nevada Corporate Headquarters, Inc. v. Presidential Services Incorporated [2004] GENDND 557 (25 May 2004)

1. The Parties

The Complainant is Nevada Corporate Headquarters, Inc. of Las Vegas, Nevada, United States of America, represented by Michael L. Potter of Las Vegas, Nevada, United States of America.

The Respondent is Presidential Services Incorporated of Santa Clarita, California, United States of America, represented by Gary Schnittgrund of Santa Clarita, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <nevadacorporateheadquarters.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2004. The Center confirmed receipt of the Complaint by e-mail on March 24, 2004. Also, on March 24, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On March 24, 2004, Go Daddy Software 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 contacts. In response to a Notification by the Center that the Complaint was administratively deficient, the Complainant filed a response to the deficiency notification on April 7, 2004. 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 April 7, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2004. The Response was filed with the Center on April 27, 2004.

The Center appointed Jordan S. Weinstein as the Sole Panelist in this matter on May 12, 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

The proceeding involves competing claims to the trademark NEVADA CORPORATE HEADQUARTERS. Complainant uses NEVADA CORPORATE HEADQUARTERS in connection with a service of establishing a corporate presence in Nevada for its customers. Complainant owns no registration for the mark, although it has filed an application to register the mark NEVADA CORPORATE HEADQUARTERS INCORPORATED (Stylized) in connection with “business structuring and servicing for new companies.” The application was filed on October 28, 2002, and assigned serial No. 76/462,770. The United States Patent and Trademark Office issued a Final Refusal of Complainant’s application on October 27, 2003.

Respondent uses the phrase NEVADA CORPORATE HEADQUARTERS PROGRAM in connection with its website “www.companiesinc.com” to refer to a program for permitting customers to establish a corporate presence in Nevada. The domain name <companiesinc.com> is owned by Respondent. Respondent uses the phrase to identify its service, but not as a trade name. Respondent filed an application with the U.S. Patent and Trademark Office to register NEVADA CORPORATE HEADQUARTERS. The application was filed on October 2, 2000, and claimed a first use date of December 15, 1991. The application was assigned serial No. 78/028,565 and was abandoned on October 3, 2001, for failure to respond to an Office Action.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it is the largest resident agent service provider in Nevada and provides business services in Nevada. Complainant asserts that NEVADA CORPORATE HEADQUARTERS is its business name and trademark, and that it has used “NEVADA CORPORATE HEADQUARTERS INC.” in commerce since its inception on May 4, 1992. Complainant asserts it acquired a common law trademark based on its use of the name, and “is in the process of registering the name with the U.S. Patent and Trademark Office.” Complainant asserts that although it incorporates businesses in Nevada, a significant number of its clients are physically located nationwide. Complainant asserts that a large percentage of its clients became aware of Complainant and its services through its Internet advertising.

Complainant asserts that Respondent “interacted repeatedly with [Complainant] and was well aware of its continuous business and commercial use of its corporate name for many years.” Complainant asserts it began negotiating with Respondent in 2003 and 2004, in an effort to obtain the domain name amicably. Complainant asserts that no content was located on Respondent’s website connected to the domain name at the time of these discussions. Complainant asserts that Respondent caused its website “to be changed to reflect a competitor business relationship” when Complainant threatened to bring suit for the domain name. Complainant asserts that Respondent knowingly and intentionally attempted to capitalize on Complainant’s name and reputation by “driving clients to [Respondent’s] competing website, who would otherwise be contacting [Complainant] for such services.”

Complainant asserts that Respondent’s founder was a business affiliate of Complainant in 1998, but after learning of Complainant’s business practices, name and business model, Respondent’s founder discontinued his business relationship with Complainant. Complainant asserts that Respondent registered the domain name at issue in 2000, and has used the domain name wrongfully to divert Internet traffic from Complainant’s website, for the sole purpose of harming Complainant.

The exhibits annexed to the Complaint include WHOIS search results for the domain name at issue, the domain registration agreement for the domain name at issue, and records from the Nevada Secretary of State showing that Complainant was incorporated on May 4, 1992. The Complaint includes no exhibits detailing Complainant’s use or first use of its name as a trademark or service mark, no example of a website showing use of the name as a trademark or service mark by Complainant, no evidence of Complainant’s effort to register its asserted service mark with the U.S. Patent and Trademark Office, no evidence of any communications between Complainant and Respondent and no evidence to corroborate Complainant’s assertions that Respondent changed its website from an inactive site to a site aimed at “driving clients to [Respondent’s] competing website” after Respondent was threatened with suit.

Most important to this Panel, Complainant provided no evidence of the status of its trademark application, which was finally refused registration by the United States Patent and Trademark Office on October 27, 2003, nearly six months before Complainant filed this Complaint. Although Complainant would have had until April 27, 2004, (four days after the Complaint was filed) to file a Request for Reconsideration and Appeal of the Trademark Office’s final refusal, Complainant has provided no evidence or certification that any such documents were filed, or were intended to be filed. Because Complainant, itself, is the correspondent of record with the United States Patent and Trademark Office, this Panel presumes Complainant was aware of the status of its trademark application and intentionally neglected to inform this Panel of that fact.

B. Respondent

Respondent asserts that it was established on October 22, 1991, and commenced using NEVADA CORPORATE HEADQUARTERS as a service mark beginning on December 15, 1991. Respondent attached as an exhibit to its Response a document purporting to be a brochure for its services with prices offered for December 15, through 31, 1991, referring to a “NEVADA CORPORATE HEADQUARTERS PROGRAM.” Respondent asserts that Complainant was not established until May 4, 1992, four months after Respondent commenced using NEVADA CORPORATE HEADQUARTERS PROGRAM as a service mark. Respondent asserts that Complainant chose a name confusingly similar to Respondent’s service mark.

Respondent asserts that to combat Complainant’s “illegal use” of Respondent’s service mark, Respondent filed an application to register the name NEVADA CORPORATE HEADQUARTERS with the United States Patent and Trademark Office on October 2, 2000. Respondent asserts that the application was not accepted because “a similar name existed, NEVADA CORPORATE CENTER, which had been awarded the registration No. 2,357,138.” Respondent asserts that two years after it filed an application to register its service mark, Complainant filed its own application to register the name NEVADA CORPORATE HEADQUARTERS INCORPORATED. Respondent asserts that the Trademark Office has not granted the trademark to Complainant.

Like Complainant, Respondent asserts that a large percentage of its clients became aware of it and its services through Respondent’s Internet advertising.

Respondent asserts that the NEVADA CORPORATE HEADQUARTERS PROGRAM is a service mark of Respondent, which is one of the larger corporation formation businesses in the U.S. Respondent asserts it is irrelevant that Respondent interacted repeatedly with Complainant, since Respondent used the name at issue before Complainant.

Respondent appears to assert that the phrase NEVADA CORPORATE HEADQUARTERS describes the services being rendered. As Respondent explains:

“‘NEVADA’ is a state in the United States. ‘CORPORATE’ means ‘of or relating to a corporation.’ ‘HEADQUARTERS’ is the office that serves as the administrative center of an enterprise. Therefore, the Nevada Corporate Headquarters program offered by [Respondent] establishes, provides [sic] an office or administrative center for the corporations. Through the Nevada Corporate Headquarters program, [Respondent] provides a Nevada office space for its clients, a Nevada telephone number where [Respondent] answers the telephone in Nevada for clients… .”

Respondent asserts that a third party started the “Nevada Headquarters” program in 1972. To distinguish itself from the third party, Respondent added the word “Corporate” on December 15, 1991, to differentiate its own services.

Respondent claims it has had continuous business and commercial use of its service mark since December 15, 1991, and has also contracted use of the mark to Companies Incorporated, which this Panel notes is the trade name for the website connected to the domain name <nevadacorporateheadquarters.com>.

Respondent asserts it obtained the domain name not to drive clients away from a competitor’s website, but “to drive clients to its own website for a service offered by [Respondent].”

Respondent asserts the domain name <nevadacorporateheadquarters.com> has resolved to the website offering the NEVADA CORPORATE HEADQUARTERS PROGRAM since the domain name was registered, and at no time was there no content located on the website, as asserted by Complainant. Respondent asserts that its NEVADA CORPORATE HEADQUARTERS PROGRAM has been offered on its website since the website was created in about October 2, 1999, well before Complainant alerted Respondent of the existence of a dispute.

Respondent asserts that its President never had a business affiliation with Complainant.

Finally, Respondent asserts that Complainant should be denoted a reverse domain name hijacker, because “Complainant was well aware of the use and registration by Respondent for three and one-half years for legitimate sales of [Respondent’s] services. The Complainant also has no credible evidence of any bad faith on the part of [Respondent] in registering and using the subject domain name yet Complainant is seeking to hijack the domain name after [Respondent] has invested a substantial sum of money to build up great value to the domain name and the services associated therewith.”

Although Respondent’s Response is otherwise well documented, it includes no proof that Complainant was aware that Respondent had legitimately used and registered its domain name for three and one-half years prior to instituting the Complaint.

6. Discussion and Findings

A. Applicable Policy Provisions

The UDRP Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:

(1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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.

Policy, Section 4(a)

It is not sufficient to prevail that a Complainant prove only registration in bad faith; rather, the Complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bossman, WIPO Case No. D1999-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.

However, the UDRP Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:

(i) Circumstances indicating that [the Registrant has] registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) [the Registrant has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Registrant has] engaged in a pattern of such conduct; or

(iii) [the Registrant has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the Registrant has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.

Policy, Section 4(b). These circumstances are non-inclusive, and the panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.

The Respondent may demonstrate rights or legitimate interests to the domain name by any of the following, without limitation:

(i) Before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(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 non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

Policy, Section 4(c).

B. Findings

1. Is the domain name identical or confusingly similar to a trademark in which Complainant has rights?

Respondent’s domain name <nevadacorporateheadquarters.com> is certainly identical or confusingly similar to Complainant’s term NEVADA CORPORATE HEADQUARTERS. However, Complainant has failed adequately to prove it has rights in NEVADA CORPORATE HEADQUARTERS as a trademark or service mark. Complainant has provided no evidence that it actually used this term as a mark, or when that use commenced. This Panel need not take a position on whether the term NEVADA CORPORATE HEADQUARTERS is an inherently distinctive trademark and thus capable of protection without proof of secondary meaning, because Complainant has provided no evidence that it used this term as a mark.

2. Does Respondent have no rights or legitimate interests in the domain name?

Respondent has provided evidence that it offered bona fide services under the name NEVADA CORPORATE HEADQUARTERS PROGRAM since December 15, 1991, and that it offered the program on its website since 1999, well prior to the filing of this Complaint. Under Section 4(b)(i) of the Policy, Respondent has demonstrated rights or legitimate interests in the domain name.

3. Was the domain name registered and used in bad faith?

By demonstrating that it has rights or legitimate interests in the domain name, Respondent has established a valid defense to a claim that it has registered and used the domain name in bad faith. In addition, however, Complainant’s evidence falls short of proving, as Complainant asserts, that Respondent uses the domain name in an effort to divert Internet users to its own website. Respondent’s website bears Respondent’s own company name, <companiesinc.com>, to distinguish it from Complainant’s services. Complainant did not provide a sample of its own website to enable this Panel to determine whether any similarities in the sites exist which would appear calculated to cause deception.

4. Is Complainant a reverse domain name hijacker?

This Panel finds that Respondent has failed to support its contentions that Complainant was aware of Respondent’s use and registration of its domain name for three and one-half years in connection with legitimate sales of Respondent’s services. Therefore, this Panel shall not denominate Complainant as a reverse domain name hijacker. However, this Panel does admonish Complainant for its failure to advise the Panel of the status of its finally-refused trademark application, and for using the phrase in its Complaint that Complainant is “in the process of registering the name with the United States Patent and Trademark Office,” without indicating affirmatively that a final refusal was issued by the Trademark Office.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Jordan S. Weinstein
Sole Panelist

Dated: May 25, 2004