DECISION

Jerrold G. Stanoff v. Ultimate Search

Claim Number: FA0403000245973

PARTIES

Complainant is Jerrold G. Stanoff (“Complainant”), P.O. Box 1599, Aptos, CA 95001.  Respondent is Ultimate Search (“Respondent”), represented by John B. Berryhill, Phd., Esq., of Dann Dorfman Herrell & Skillman PC, 1601 Market Street, Suite 2400, Philadelphia, PA 19103.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <rareorientbooks.com>, registered with Moniker Online Services.

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of his or her knowledge have no known conflict in serving as Panelists in this proceeding.

Terry F. Peppard as Panelist.

Alan L. Limbury as Panelist.

Paul M. DeCicco as Panel Chair.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 18, 2004; the Forum received a hard copy of the Complaint on March 26, 2004.

On March 19, 2004, Moniker Online Services confirmed by e-mail to the Forum that the domain name <rareorientbooks.com> is registered with Moniker Online Services and that the Respondent is the current registrant of the name.  Moniker Online Services has verified that Respondent is bound by the Moniker Online Services 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 April 12, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 3, 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@rareorientbooks.com by e-mail.

A timely Response was received and determined to be complete on May 3, 2004.

A timely Additional Submission was received from Complainant and determined to be complete and a timely Additional Submission was received from Respondent and also determined to be complete.

On May 24, 2004 pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Terry F. Peppard, Alan L. Limbury, and Paul M. DeCicco as Panelists.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends as follows:

The service mark RARE ORIENTAL BOOK CO.  and design were registered by

Complainant with United States Patent and Trademark Office on 24 December 1996, Registration No. 2,024,936, for sales of books, in International class 24 (former U.S. classes 100 and 101). The Complainant used that service mark in the conduct of his business continuously since that date.

On December 8, 1995 the Complainant secured the domain-name <rareorientbooks.com> for the conduct of his business via Internet. In 1999, an expansion of the allowable length of domain-names permitted Complainant to secure the longer, more complete form of Complainant's business name. On or about September 12, 1999, the domain name <rareorientalbooks.com> was therefore secured by the Complainant.

The Complainant has conducted his business by Internet at the principal website at domain-name rareorientalbooks.com continuously since that date. The Complainant has also conducted business at the several domain names including, but not limited to <rareorientbooks.com> registered in 1995, by redirecting the domain names to Complainant's principal website. The Complainant has vigorously enforced his rights in each his service marks during the conduct of his business.

During October 2002, the Complainant received notice and demand for fees from Network Solutions, d/b/a Verisign. Because of Complainant's illness at the time, continuing until December 2002, Complainant was unable to attend to his business, and he did not attempt payment to renew the domain-name <rareorientbooks.com> until January 2003.

On January 18, 2003, the Complainant tendered electronic payment for renewal to Verisign, which was refused by Verisign, together with notice that the domain-name had been re-registered within a day of expiration to Respondent.

In June 2003, Complainant again logged on to domain-name <rareorientbooks.com> and discovered that Respondent redirected all searches of that domain-name to competitor Barnes & Noble and to various other sellers of books, none of whom has obtained by license any right to Complainant’s trademark or service marks RAREORIENTBOOKS, RARE ORIENTAL BOOK CO., or to any related marks.

B. Respondent

Respondent claims the following:

Complainant is attempting to have a domain name transferred that is an immediately discernable descriptive term.  The domain name <rareorientalbooks.com> has been registered and used at all relevant times by a company in the Orient for the purpose of advertising books.

Complainant’s assertions of common law rights in the underlying words are not supported by the evidence of consumer perception of the term “Rare Oriental Books” as a trademark.

With regard to the Complainant’s trademark registration, the generic term “Book Co.” is the subject of an express disclaimer, and the descriptive term “Rare Oriental” is the subject of a distinctiveness limitation statement.  The registration itself does not establish prima facie evidence of exclusive rights in the term “Rare Oriental Books” or variations thereof, apart from the mark as registered.

The Complainant submitted no evidence of the descriptive term “Rare Oriental Book” or variations thereof as a trademark. The term “Rare Oriental Book,” standing apart from the Complainant’s registered logo, is a term descriptive of rare oriental books. Evidence shows that Complainant is not a distinctive source or origin of items denominated “rare oriental books.” Therefore, Complainant has not demonstrated that it is exclusively or distinctively associated by the public as the sole source or origin of “rare oriental books”.  The registration alone is insufficient to prove such an allegation.

Respondent has used the domain name prior to the filing of the Complaint in connection with the advertisement of rare books.  The use of descriptive terms such as “rare” and “orient” is to be expected since Respondent’s principal place of business is Hong Kong. Complainant failed to renew his domain name. If Complainant did not renew his trademark it would lapse, as well.

The use of a descriptive term for non-trademark, descriptive purposes is a well-established principle of legitimate rights or interests under the Policy. Even if Complainant is distinctively associated with the term, the use of a descriptive term in accordance with its primary meaning is not an infringement of trademark rights, which inhere in the creation of secondary meaning in the minds of consumers.

The Respondent’s use of abandoned domain names having descriptive or generic qualities to provide targeted advertising traffic, is well-settled under the Policy as constituting a legitimate right or interest in the offering of bona fide services.

The Respondent’s presentation of paid advertisements in connection with descriptive or generic terms is no mere “fig leaf,” pretense of legitimate interest, or a post-hoc rationalization for cybersquatting. The Respondent derives substantial revenue from targeted search traffic relevant to the selected generic or descriptive terms within the domain name it registers, and such is the Respondent’s principal business. This use is a bona fide use of the domain name prior to the dispute.

Respondent is based in the Orient and has associated the domain name with “pay per click” advertising resulting from the term “rare books,” as is readily discernible from the Complainant’s view of the website.  The Policy was not designed to determine factually or legally intensive issues of trademark infringement particularly in questionable cases.

 

Policy examples of “bad faith” are non-limiting. Each of the enumerated examples evinces a knowing intent to capitalize upon the goodwill inherent in a mark actually known to the Respondent. Since the domain name is descriptive within a compound mark, and the mere registration and most logically apparent use of such a term cannot itself demonstrate that the domain name was registered in order to predate upon an unimaginable claim of exclusivity in such a descriptive term.

Respondent denies that it is an unlawful cybersquatter for profit. Respondent has consistently prevailed against over-reaching attempts to use the Policy itself to unfairly deprive the Respondent of the right to use descriptive terms in accordance with their primary meaning.

Respondent has never had any reason to believe the term “rare orient books” could be used in good faith for the advertisement of rare books; the Respondent has never offered the domain name for sale to the Complainant; the Respondent has never authorized any registrar to act as the Respondent’s agent and has every reason to believe that the Complainant had abandoned its odd campaign to wrest this domain name from the Respondent.

C. Additional Submissions

Each party submitted supplemental pleadings that were dully considered by the panel.

FINDINGS

Complainant is a bookseller trading in oriental books and has been in business for over 20 years.

Complainant has trademark rights in the registered compound trademark RARE ORIENTAL BOOK CO.  An element of the mark is the words “Rare Oriental.” Complainant registered the domain name <rareorientbooks.com> and used it continuously as an Internet reference to his business website until he inadvertently let the registration lapse.  The scope of Complainant’s trademark rights encompasses the word element “rare oriental.”

Respondent is in the business of registering previously registered domain names and ostensibly trading on the descriptive qualities of such domain names by selling advertising that relates to the name.  Respondent has been a respondent in at-least four other domain name disputes. In the instant case respondent registered the domain name <rareorientbooks.com> shortly after Complainant’s registration lapsed.

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.

Identical and/or Confusingly Similar

As Respondent recognizes, the Policy was not designed to factually or legally determine intensive issues of trademark infringement.  It follows then that the Panel should look first to the effect of any available trademark registration record and to the undisputed facts to determine the scope of a Complainant’s mark, rather than try to weigh conflicting evidence.  In the UDRP forum where evidence is abbreviated, there is no opportunity to cross-examine witnesses, take live testimony, or challenge unofficial documentary evidence, evaluating opposing contentions is problematic at best.

In 1996, Complainant registered a trademark in a design mark incorporating the words “Rare Oriental Book Co.”  The registration shows that only the words “Book Co.” are disclaimed, “Rare Oriental” is prefaced by “2(f).” The mark was used in commerce since 1967.  From the face of the registration it appears that Complainant, pursuant to 15 U.S.C. § 1052(F) (Trademark Act 2(f)), may have presented the Commissioner with prima facie evidence that the descriptive terms “Rare Oriental” had acquired distinctiveness at the time of registration.

In registering the mark on the principal register and noting that 2(f) applied to “rare oriental” and further there being no disclaimer as to the word elements “rare oriental” we infer that the PTO acknowledges, or at least does not deny, that Complainant may be presumed to have rights in the element “rare oriental” at the time of registration. 

Further, the Panel in Sydney Markets decided "the inclusion of a logo in a trademark does not prevent the Complainant from relying on that trademark for the purpose of a successful proceeding under the Policy."  Sydney Markets Limited v. Rakis, D2001-0932, (WIPO October 8, 2001).  Similarly in Delikomat v. Lehner, D2001-1447 (WIPO Feb. 20, 2001), the Panel found that the text element (‘Delikomat’) of a design mark may be protectable in the context of a UDRP dispute.

In addition to the implications gleaned from the registration, it is not disputed that the Complainant used the mark RAREORIENTBOOK in commerce. Complainant chose that mark for a domain name precisely because it reflected his trade name “Rare Oriental Book Co.”  The domain name referenced Complainant’s commercial website from 1996, until the registration lapsed sometime near the end of 2003. The Complainant, for his business, exclusively used the particular domain name. 

As mentioned above, a showing of continuous use in commerce for 5 years may be considered prima facie evidence of a mark’s distinctiveness. 15 U.S.C. § 1052(f).  Respondent has failed to rebut this presumption. Additionally, Respondent targeted the domain name because it was previously registered, thus implying that the fact of the previous registration contributed to the commercial value of the domain name. 

The Complainant has established rights in the RARE ORIENTAL BOOK CO. mark and in particular the words “rare oriental” as a protectable discrete element of the Complainant’s design.  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). It follows then that the unauthorized use of mark “Rare Oriental Books Co.” or similar derivation thereof in a trademark sense, infringes Complainant’s mark. 

The Panel finds that Respondent’s <rareorientbooks.com> domain name is confusingly similar to Complainant’s RARE ORIENTAL BOOK CO. mark.  As discussed above, the “rare oriental” element of Complainant’s design mark is protected.  The only difference between it and the at-issue domain name is the elimination of the spaces between the words and the abbreviation of the word “oriental.”  These differences do not materially distinguish the domain name from the Complainant’s mark.  See Planned Parenthood Fed’n of Am. v. Bucci, 42 U.S.P.Q. 2d 1430 (S.D.N.Y. 1997) aff’d 152 F3d 920 (2d Cir. 1998) cert. denied 525 U.S. 834 (1998) (finding plaintiff’s PLANNED PARENTHOOD mark and defendant’s <plannedparenthood.com> domain name nearly identical). Confusing similarity is also suggested because the meaning of the protectable element “rare oriental” is similar in meaning to the at-issue domain name. Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003).

Rights or Legitimate Interests

Respondent is not commonly known by the disputed domain name nor licensed to use the name.  Respondent’s WHOIS domain registration information lists the domain name registrant as “Ultimate Search.”  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Respondent’s arguments in favor of its having legitimate rights and interests in the domain name stand or fall with the validity of its much-repeated premise that the at-issue domain name is descriptive or generic, and thus not protectable.  At least one of the panels ruling in favor of Respondent in its prior UDRP disputes, qualifies its decision as limited to activities “carried out in relation to a domain name which is generic or which is clearly not associated with a single entity . . . ” Career Guidance Found. v. Ultimate Search, D2003-0323 (WIPO Dec. 3, 2003).  This Panel further qualifies that limitation. Respondent targets lapsed domain names ostensibly because they are distinguished from other generic terms by reason of the domain name’s prior registration and prior use. Where, as here, a Respondent is in the business of registering lapsed domain names, it does so at its peril, where a Complainant has trademark rights in such a domain name.

Respondent’s business model is to register domain names which have lapsed and which Respondent argues are generic or descriptive and therefore are not entitled to trademark protection. Respondent then trades on the domain name by offering the use of the domain for advertisement. To wit, Respondent’s conduct has been complained of in this forum no less than five times.

Thus, Respondent registers particular domain names precisely because they have acquired some modicum of goodwill through the prior registrant’s use of the domain name in commerce, either as a reference to a website or otherwise. Such use by the prior registrant is a colorable trademark use and distinguishes marks that at first blush might otherwise appear to be generic or descriptive. Indeed, the reason Respondent targets the domain name(s) it does is because they have, in Respondent’s assessment, acquired distinctiveness though prior registration and use. An argument might thus be made that Respondent is estopped by its actions in targeting such domain name, from taking the position that the targeted domain name, here <rareorientbooks.com>, is not protectable.

Complainant’s protectable trademark rights in the “rare oriental” element of its registered trademark is fatal to Respondent’s arguments in favor of legitimate rights and interests in the domain name. It follows that Respondent’s use of Complainant’s trademark to promote other booksellers is not a bona fide offering of goods of services, pursuant to Policy ¶ 4(c)(i) nor is it a noncommercial or fair use, pursuant to Policy ¶ 4(c)(iii).  See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that Respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with Complainant, was not a bona fide offering of goods or services); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services).

Given the foregoing, the Panel finds that the Respondent has no legitimate rights or interests in the domain name.

Registration and Use in Bad Faith

The registered word element “rare oriental” appears to be a protectable element of Complainant’s registered trademark, having been accepted by the USPTO to be distinctive at the time Complainant’s RARE ORIENTAL BOOK CO. mark was registered with the USPTO. Respondent had constructive notice of Complainant’s rights in the RARE ORIENTAL BOOK CO. mark because of its registration with the USPTO.  See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”).  Respondent registered the at-issue domain name with the intent of capitalizing on the goodwill generated by Complainant, the domain name’s prior registrant. Respondent is no neophyte to the world of trademarks, having been through at least four previous UDRP domain name disputes as a respondent.  It knew, or should have known, that the domain name it registered might be found to infringe Complainant’s registered mark.  It knew, or should have known, that the mark RAREORIENTALBOOKS was used in commerce for several years as a domain name to reference Complainant’s website. Registering and using the domain name was thus at Respondent’s peril. 

In particular, Respondent registered and is using Complainant’s mark to advertise booksellers for a profit. The Respondent admits in its Response that it “derives substantial revenue from targeted search traffic relevant to . . . the domain name it registers.”  Such conduct is not materially different from selling or offering the domain name for sale to Complainant’s competitor for a profit. In the former case, the entire domain name is offered for sale; in the latter case the use of the domain name is offered for rent.  Policy ¶ 4(b)(i) states that circumstances indicating that the domain name was registered for the purpose of selling, renting, or otherwise transferring the domain name registration to a competitor of the complainant for valuable consideration, shall be evidence of bad faith registration and use.  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that Respondent registered and used the domain name <eebay.com> in bad faith where Respondent has used the domain name to promote competing auction sites). Therefore, the Respondent is found to have registered and be using the domain name in bad faith. 

Finally, there is something inherently distasteful, although perhaps not in itself conclusive evidence of “bad faith,” about a business model that relies on the inadvertence or mistakes of others for profit. While Respondent notes that if Complainant failed to renew registration in its trademark, the trademark would lapse, it fails to mention that Complainant would also have legal procedures available to him whereby he might revive his registration and correct his mistake.  However, there is no direct mechanism available to revive domain names that have inadvertently lapsed. The “finders keepers” mentality, fundamental to Respondent’s business model, is scant in other areas of the law. There is no reason why it should be tolerated with regard to domain names.

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 <rareorientbooks.com> domain name be TRANSFERRED from Respondent to Complainant.

Terry F. Peppard, Panelist

Paul M. DeCicco, Panel Chair
Dated: June 7, 2004

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