Generic Top Level Domain Name (gTLD) Decisions

DECISION

Digital Wedding Forum Int’l LLC v. Domain Reseller

Claim Number: FA0406000290945

PARTIES

Complainant is Digital Wedding Forum Int’l, LLC (“Complainant”), represented by Karl S. Kronenberger, of Kronenberger & Associates, 220 Montgomery Street, Ste. 1920, San Francisco, CA 94104.  Respondent is Domain Reseller (“Respondent”), 1056 E. Plata, Mesa, AZ 85212.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <digitalweddingforum.net> and <digitalweddingchat.com>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

R. Glen was appointed as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 30, 2004; the Forum received a hard copy of the Complaint on July 2, 2004.

On June 30, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <digitalweddingforum.net> and <digitalweddingchat.com> are registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 July 8, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 28, 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@digitalweddingforum.net and postmaster@digitalweddingchat.com by e-mail.

A timely Response was received and determined to be complete on July 28, 2004.

On July 29, 2004, additional submission was timely filed by Complainant.

Only August 2, 2005, additional submission was timely filed by Respondent.

On August 5, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed R. Glen Ayers as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The Complainant asserts it holds a common law trademark in the name “Digital Wedding Forum” (“DWF”).  Complainant has registered the website, <digitalweddingforum.com> Complainant alleges continuous use of the name since May of 2000.  Complainant offers some evidence of a secondary meaning for the name, including mention of the name in various other forums and by print and Internet advertising.  Complainant alleges that the Respondent joined <digitalweddingforum.com>, which has been a pay site since 2003, and has full knowledge of the name and operation.

Complainant asserts that Respondent has no legitimate rights in the name and certainly knew of the name at the time of the registration of the <digitalweddingforum.net> domain name.

Complainant makes a number of allegations.  Complainant alleges that Respondents used an elaborate search engine spam system that used the personal and business names of many DWF customers to divert Internet traffic to Respondent’s website. As a result, Complainant ultimately terminated the membership of Respondent.  Complainant alleges that it notified its members that it intended to launch a chat service.  The new chat service would be called “Digital Wedding Chat.”  Respondent then registered the name <digitalweddingchat.com>.  Complainant alleges that Respondent is poaching its customers by “bidding” on the Complainant’s trademark, “Digital Wedding Forum” on the Overture pay-per-click system, thus diverting many Internet users who are seeking <digitalweddingforum.com> and <digitalweddingchat.com>.

Complainant alleges that the Respondents are doing all this in order to generate income by marketing their website <storybookphoto.com>.

The Complainant asserts that its common law trademark is identical to <digitalweddingforum.net> domain name.  In the alternative, Complainant asserts that there is confusing similarity.

Complainant goes on to discuss Respondent’s rights in the two (2) domain names.  Of course, Complainant asserts that Respondent has no right in the common law trademark name “Digital Wedding Forum”.  Complainant asserts that <digitalweddingchat.com>, the second domain name, is not being used for any legitimate purpose other than to infringe upon Complainant’s common law mark.

Complainant’s assertion of bad faith includes Respondent’s prior knowledge of Complainant’s mark, Respondent’s registration of identical or nearly identical names, and Respondent’s knowledge of the new service that Complainant intended to launch, Digital Wedding  Chat.  Complainant asserts that Respondent had knowledge of Complainant’s proposed service, “Digital Wedding Chat,” and that Respondent registered the name.  Complainant certainly asserts that all of this was done with the intent to divert customers.

B. Respondent

In response, Respondent says that it is an “International Wedding Photographer.”  Respondent alleges that its website is non-profit and that the website sells no services or products.

First, Respondent disputes the existence of a common law trademark but certainly does not assert that <digitalweddingforum.net> and the domain name <digitalweddingforum.com> are not identical.  Respondent does dispute that <digitalweddingforum.com> and <digitalweddingchat.com> have any identicality or similarity.  Respondent denies any intent to confuse.  He denies he made any improper use of <overture.com>.

Respondent does assert that he does have rights and interests in the domain name, having purchased <digitalweddingforum.net> from a third party.  Respondent denies registering either name with an intent to disrupt the business of Complainant.

While Respondent alleges that he has become known by the domain name <digitalweddingchat.com>, there is little evidence given to support that statement.

Respondent asserts that he has engaged in legitimate non-commercial use of these names.

Respondent asserts that there has been no evidence of bad faith.  Respondent asserts that he has made no attempt to sell, rent or transfer the domain name, nor has he attempted to use the various domain names to attract customers for commercial gain or disrupt the business of the Complainant.

C. Additional Submissions

Both Complainant and Respondent filed additional submissions.  Complainant’s additional submissions concern alleged misstatements including the use of spam and is essentially a point-by-point rebuttal of Respondent’s contentions.  Complainant also addresses Respondent’s legal position concerning its common law trademark.  In Respondent’s second response, Respondent, like Complainant, returns to issues already discussed.  Respondent denies the search engine allegations and denies that he was in any way aware that Complainant intended to start a service called “Digital Wedding Chat.”  Otherwise, and in general, Respondent and Complainant reiterate arguments previously made.

FINDINGS

It is obvious that the domain names <digitalweddingforum.com> and <digitalweddingforum.net> are identical.  Respondent does not deny this.

However, it is difficult to find any identiticality or confusing similarity between <digitalweddingforum.com> and  <digitalweddingchat.com>. While it may be that Respondent seized an idea, there is nothing in the ICANN Policy that prohibits such an action.

Further, the Panelist cannot find that the name “Digital Wedding Forum” is a name which has become a common law trademark.  Complainant has submitted insufficient evidence to find that “Digital Wedding Forum” has achieved a secondary meaning in commerce sufficient to create a common law trademark.

The Panelist has no trouble finding that Respondent has no rights in the name <digitalweddingforum.net>.  Respondent is not generally known by this name.  Respondent is not making fair use of this name and has demonstrated no evidence of fair use.  The alleged “non-profit nature” of <digitalweddingforum.net.> As to <digitalweddingchat.com>, it is very clear that Respondent was the first to register that domain name.  The <digitalweddingchat.com> domain name is neither identical to nor confusingly similar to <digitalweddingforum.com>,  and that Respondent has rights in the name.

Bad faith has been demonstrated by Complainant.  Complainant has submitted evidence that Respondent registered the “.net” version with intent to redirect traffic.  It would appear that this is of some commercial benefit to Respondent. Certainly, Respondent has not tried to sell, lease or rent the name.  But, there is sufficient evidence of bad faith to justify a finding in that regard.

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:  the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and the Respondent has no rights or legitimate interests in respect of the domain name; and the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

While a common law trademark certainly can exist and certainly can justify imposition of the ICANN Rules, there is not sufficient evidence in this case to find that the Complainant holds a common law trademark as to either “Digital Wedding Forum” or “Digital Wedding Chat” in order to justify transfer of the names.  While Respondent focused upon the generic nature of the words which comprised “Digital Wedding Forum,” that is not important in this case.  There is simply not sufficient evidence of the existence of a secondary meaning.  There should be evidence of continuous and ongoing use for some period of time to establish a secondary meaning.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum - Aug. 17, 2000).  See also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO - Mar. 28, 2001).

Rights or Legitimate Interests

As to rights in the domain name <digitalweddingforum.net>, Respondent is not known by the name.  Although Respondent asserts he is operating the domain name  on a non-profit basis, nevertheless, there is sufficient evidence to find that Respondent is essentially offering the same services as Complainant.  See, e.g. Am. Online Inc. v. Shenzhen JZT Computer Software Co., D2000-0809 (WIPO - Sept. 6, 2000).

Of course, as to <digitalweddingchat.com>, Respondent has rights in this domain name.

Respondent has no right to the name “Digital Wedding Forum” and its use is not fair use.  The evidence is clear that Respondent simply copied the name.

This is not true of “Digital Wedding Chat.”  Irrespective of whose idea it was, the registration of the domain name <digitalweddingchat.com> was first accomplished by Respondent.  Respondent has rights in the name as the first person to register the name.  The name is not a trademark.

Registration and Use in Bad Faith

Evidence of bad faith is somewhat sketchy.  Respondent has not attempted to sell or lease the confusingly similar or identical domain name <digitalweddingforum.net.> However, it is fair to say that by using the name Respondent has redirected Internet users.  It is, however, difficult to determine whether or not this diversion has been for commercial gain.  Certainly, there has been disruption and that might be enough to generate a finding of bad faith.

As to the domain name <digitalweddingchat.com>, none of these observations apply. There is simply no evidence of “bad faith” as that term is used in the ICANN Policies.

Complainant’s assertions that the registration and use of <digitalweddingforum.net> are well taken.  Either Respondent is disrupting Complainant’s business as a competitor under Policy ¶4(b)(iii), or Respondent is attempting to intentionally attract Internet users for commercial gain under Policy ¶4(b)(iv).  See e.g., respectively, Mission KwaSizabantu v. Rost, D2000-0279 (WIPO - June 7, 2000) and G.D. Searle & Co. v. Celebrex Drug Store, FA 123933 (Nat. Arb. Forum - Nov. 21, 2002).

However, again, the same cannot be said for <digitalweddingchat.com>.  There is no bad faith in the use of this registered domain name.

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panelist concludes that relief shall be DENIED.

R. GLEN AYERS, Panelist

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