DECISION

BND Ent. d/b/a Dark Fire v. RN WebReg a/k/a darkflame.com a/k/a Buy This Domain

Claim Number: FA0405000280502

PARTIES

Complainant is BND Ent. d/b/a Dark Fire (“Complainant”), represented by Krista Avalon, P.O. Box 760693, San Antonio, TX 78245.  Respondent is RN WebReg a/k/a darkflame.com a/k/a Buy This Domain (“Respondent”), represented by Ari Goldberger of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003, U.S.A.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <darkfire.com> and <darkflame.com>, registered with Register.It Spa and 123 Registration, 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.

Judge Karl V. Fink (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 26, 2004; the Forum received a hard copy of the Complaint on June 1, 2004.

On May 28, 2004 and June 14, 2004, Register.It Spa and 123 Registration, Inc. confirmed by e-mail to the Forum that the domain names <darkfire.com> and <darkflame.com> are registered with Register.It Spa and 123 Registration, Inc., respectively, and that the Respondent is the current registrant of the names.  Register.It Spa and 123 Registration, Inc. have verified that Respondent is bound by the Register.It Spa and 123 Registration, Inc. registration agreements 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 June 14, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 6, 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@darkfire.com and postmaster@darkflame.com by e-mail.

A timely Response was received and determined to be complete on July 6, 2004.

On July 14, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Karl V. Fink (Ret.) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

On May 18, 2004, Respondent registered the domain name <darkfire.com> with Register.It, an Italy based registrar.

Complainant informed Register.It on May 20th, 2004 that Complainant had a legitimate claim to the name, and they did not address that concern in their return e-mail.

RN WebReg is the registered owner of the <darkfire.com> domain and RN WebReg a/k/a darkflame.com a/k/a Buy This Domain is the registered owner of <darkflame.com>.

The <darkfire.com> domain name is being offered on <sedo.co.uk>, a UK based auction site.  Complainant entered into negotiations on this auction site.  In negotiations for the name, Complainant outlined Complainant’s legitimate claim to the name <darkfire.com>.  Respondent knows of Complainant’s trademark in process, as that information was in Complainant’s counteroffer to Respondent.

The Respondent registered the <darkfire.com> and <darkflame.com> domain names in bad faith.  Respondent registered the <darkfire.com> domain name which is in the process of being trademarked and has been used in commerce by BND Enterprises since 1996.  The <darkflame.com> domain name, also owned and offered for sale by Respondent, is confusingly similar to <darkfire.com> and has been included in the Complaint for that reason, as it has also been registered in bad faith.  Respondent is aware of Complainant's claim to these names, yet still offers them for sale at a price many times higher than the market rate, thereby keeping Complainant from having the ability to register and use them in legitimate business concerns.  Respondent is asking €5000 for the name <darkfire.com> and $3,288 US for the name <darkflame.com>.

Respondent is in the business of reselling domain name registrations, and has no claim or intention other than to sell the domain name registrations as evidenced by the Sedo negotiations and the fact that Respondent's site has 22,978 domains that are offered for sale.  Neither name is, as of the date of the amended complaint, June 7, 2004, being developed in any way except as a “for sale” page for Buydomains.com.  With more than 22,000 names for sale, this company cannot claim that they are using the names in question for any legitimate purpose.

Respondent registered both domains specifically for the purpose of selling them for a very large profit.  Respondent has no use of, or demonstrable preparations to use, the domain names except to sell them for huge profit.  Respondent has not been commonly known by the domain names and has not acquired trademark or service mark rights.  Respondent is not making a legitimate noncommercial or fair use of the domain names.

The name DARK FIRE has been used by Krista Avalon and BND Enterprises in commerce since 1996.  Customers have referred to DARK FIRE numerous times as Dark Flame.

The <darkfire.com> and <darkflame.com> domain names should be considered as having been registered and being used in bad faith based on the trademark proceedings and legitimate use of the name in commerce by Krista Avalon and BND Enterprises. 

B. Respondent

Complainant does not have a registered trademark for the term “dark flame,” and has only recently received a registered trademark for DARK FIRE, issued after the disputed domains were registered.  Complainant does not have exclusive rights to either the terms DARK FIRE or “dark flame,” both of which are subject to substantial third party use.  Respondent registered the disputed domains because they were deleted and made available for anyone to register. 

Respondent had no knowledge of Complainant or its purported mark, and did not register the disputed domains to sell to Complainant, to disrupt its business, prevent it from acquiring a domain name incorporating its trademark or confuse users.  Complainant has not alleged evidence of common law trademark rights to the common term DARK FIRE.

It is well established that the offer for sale of common word domain names does not constitute bad faith under the Policy but, rather, is a bona fide business activity that establishes the Respondent’s legitimate interest.  Respondent hosts the disputed domains at BuyDomains.com, a legitimate business it operates which provides Internet services, advertising and offers common and descriptive term domain names for sale to the general public.

Complainant operates an Internet web site at <darkfiregallery.com> which offers sex toys for sale.  A search on <google.com> for the terms “dark flame” and “dark fire,” excluding the word “sex” to eliminate references to Complainant, yielded over 23,000 third party uses of these terms.

There is another third party registered trademark for DARK FIRE for sun tanning preparations, in use since January 2001 and registered since July 2003.  The terms DARK FIRE and “dark flame” are extremely common terms to which Complainant does not have exclusive rights.  Because of the third party uses of the terms, their mere registration is not evidence that Respondent had Complainant’s marks in mind when it registered them. 

Respondent registers domain names that become available for registration through expiration and deletion.  Respondent only registers domain names which incorporate common words, descriptive terms, and/or words and terms to which it believes no single party has exclusive rights. 

In order to establish common law trademark rights to a descriptive term, Complainant “must show that the mark has acquired distinctiveness when associated with the Complainant’s goods or services.”  Complainant has not proffered evidence that it is one of the only, or even one of a few, associated with the term DARK FIRE.  Complainant does not even allege that it uses the term “dark flame,” just that <darkflame.com> is confusingly similar to DARK FIRE.  Complainant does not explain how this very different term is confusingly similar, or how or why consumers would confuse the two.

Even though Complainant’s registered trademark for DARK FIRE has now issued, it was not issued at the time Respondent registered the disputed domains.  Accordingly, Complainant’s alleged mark provides no enforceable rights under the Policy with respect to the disputed domains.

Because Complainant has no enforceable trademark rights under the Policy to DARK FIRE, and because it has not produced evidence of how <darkflame.com> is confusingly similar to DARK FIRE, the Complaint must be dismissed. 

The paid advertising search results that appear on Respondent’s web sites through its agreement with Overture.com also establish Respondent’s legitimate interest.

Complainant has proffered no evidence of any kind demonstrating that Respondent had any knowledge of its mark or business operations at the time the disputed domains were registered.

Respondent simply had no knowledge of the existence of Complainant or its alleged trademark when it registered the disputed domains and, thus, bad faith cannot be proven.  It is well established that the sale of domain names constitutes a bona fide offering of goods and services where the respondent is unaware of a party’s trademark rights.

There is no basis for inferring that Respondent had knowledge of Complainant when it registered the disputed domains.  There is no evidence that Complainant was targeted by Respondent.  The reason Respondent registered the domain names is because they were deleted.  The acquisition of such deleted domain names has been endorsed as a bona fide practice under the Policy.  The fact that a disputed domain name was registered after being deleted favors the respondent, because the deletion is a signal that the prior registrant has abandoned any claim to it. 

FINDINGS

For the reasons set forth below, the Panel finds Complainant has not proven that the domain names 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.

Identical and/or Confusingly Similar

Complainant has established rights in the DARK FIRE mark by filing for registration with the United States Patent and Trademark Office on March 19, 2002 and through continued use of the mark in commerce since 1996.  The Panel finds that Complainant’s pending trademark application and Complainant’s use of its mark in commerce for approximately eight years are sufficient to establish Complainant’s rights in the DARK FIRE mark pursuant to Policy ¶ 4(a)(i).  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist.  Rights in the mark can be established by pending trademark applications); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law”).

The Panel finds Respondent’s <darkfire.com> domain name is identical to Complainant’s DARK FIRE mark, because the domain name fully incorporates the mark, adding only a required generic top-level domain name (gTLD).  See Shirmax Retail Ltd./Detaillants Shirmax Ltee v. CES Mktg. Group Inc., AF-0104 (eRes. Mar. 20, 2000) (refusing to interpret Policy ¶ 4(a)(i) in the conjunctive rather than disjunctive sense in holding that “mere identicality of a domain name with a registered trademark is sufficient to meet the first element [of the Policy], even if there is no likelihood of confusion whatsoever”); see also Porto Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000) (stating that the issue of identicality or confusing similarity is to be resolved “by comparing the trademark and the disputed domain name, without regard to the circumstances under which either may be used”); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

Additionally, the Panel finds that the <darkflame.com> domain name is confusingly similar to the DARK FIRE mark.  The Panel finds that the substitution of the term “flame” in the disputed domain name for the similarly defined term “fire” in Complainant’s mark renders the disputed domain name confusingly similar to Complainant’s mark due to the likelihood of confusion on the part of Internet users attempting to access Complainant’s products and services.  See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between Complainant and Respondent, when in fact, no such relationship would exist).

Complainant has proven this element.

Rights or Legitimate Interests

Respondent has rights and legitimate interests in the disputed domain names, because the sale of generic domain names constitutes a bona fide offering of goods and services where Respondent is not aware of a party’s rights in a mark.  The Panel finds that as a generic domain name reseller, Respondent has rights and legitimate interests, pursuant to Policy ¶ 4(a)(ii), in attempting to sell the <darkfire.com> and <darkflame.com> domain names when it was unaware of any possible rights held by Complainant in similar marks.  See Fifty Plus Media Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000) (finding that Complainant failed to prove that Respondent had no rights in the domain name and had registered and used the domain name in bad faith where Respondent is an Internet business which deals in selling or leasing descriptive/generic domain names); see also Gen. Mach. Prod. Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum Mar. 16, 2000) (finding for Respondent, who was in the business of identifying domain names comprised of generic or descriptive terms, registering those domain names, selling them to interested parties, and developing websites using those domain names for clients.  Respondent rebutted the argument that it had no legitimate interest in the domain name <craftwork.com> since the name had not acquired distinctiveness, and instead, was merely generic and descriptive at the time of registration); see also Front Range Internet, Inc. v. Murphy, FA 145231 (Nat. Arb. Forum Apr. 4, 2003) (“In some circumstances, the trading of domain name registrations is considered a bona fide offering of goods and services”).

Complainant has not proven this element.

Registration and Use in Bad Faith

Respondent was not aware of Complainant or Complainant’s products or services at the time it registered the domain names.  The domain names are generic terms that Respondent registered once they became available, believing that no party had rights to the <darkfire.com> and <darkflame.com> domain names.  Numerous other third parties are known by the DARK FIRE mark, which evidences Respondent’s claim that it did not register the disputed domain names with the knowledge of any exclusive rights in the mark on the part of Complainant.  The Panel finds that Respondent did not have actual or constructive knowledge of Complainant and, therefore, it did not register or use the disputed domain names in bad faith.  See Seaway Bolt & Specials Corp. v. Digital Income Inc., FA 114672 (Nat. Arb Forum August 5, 2002) (finding that because Complainant’s mark was not particularly well-known outside of its field, and Complainant failed to show that Respondent knew or should have known about Complainant at the time of registration, Respondent did not register the domain name in bad faith); see also MatchMaker Int'l Dev. Corp. v. Kaiser Dev. Corp., FA 146933 (Nat. Arb. Forum May 9, 2003) (Panelist David Sorkin, dissenting) (finding that Respondent’s reasonable belief in its legitimate right to register the disputed domain name precluded a finding of bad faith registration). 

Respondent asserts that it did not register the disputed domain names with the intent to sell them specifically to Complainant.  Because Respondent is a generic domain name reseller, Respondent’s general offer to sell the domain names to anyone who may be interested is not evidence of bad faith use or registration pursuant to Policy ¶ 4(b)(i).   See Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no bad faith where the domain name involves a generic term, and there is no direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interest); see also John Fairfax Publ’n Pty Ltd v. Domain Names 4U & Fred Gray, D2000-1403 (WIPO Dec. 13, 2000) (finding legitimate interests and no bad faith registration where Respondent is a seller of generic domain names); see also LifePlan v. Life Plan, FA 94826 (Nat. Arb. Forum July 13, 2000) (“[T]he mere offering [of the domain name for sale], without more, does not indicate circumstances suggesting that Respondent registered the domain name primarily for the purpose of selling . . . the domain name to the Complainant”).

Complainant has not proven this element.

DECISION

Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief requested shall be DENIED.

Accordingly, it is Ordered that the <darkfire.com> and <darkflame.com> domain names REMAIN with Respondent.

Judge Karl V. Fink (Ret.), Panelist
Dated: July 28, 2004

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