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Russell H. Fish v. Robert Farris d/b/a Virtual Clicks [2005] GENDND 2089 (24 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Russell H. Fish v. Robert Farris d/b/a Virtual Clicks

Case No. D2005-1035

1. The Parties

Complainant is Russell H. Fish, III, d/b/a The Internet Open Records Project (“Complainant”), of Dallas, Texas, United States of America.

Respondents are identified by Complainant as Robert Farris, an individual, d/b/a Virtual Clicks of San Diego, California, United States of America and The JacLind Corporation, of Encinitas, California, United States of America. Respondent identifies itself as Online Promote, Inc. of Encinitas, California, United States of America. All of these entities shall be collectively referred to as “Respondents”.

2. The Domain Name and Registrar

The domain name at issue is <openrecords.org> (the “Domain Name”). The registrar is PSI-USA, Inc. of Las Vegas, Nevada, United States of America.

3. Procedural History

On September 30, 2005, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint via email. On October 4, 2005, the Center received the hardcopy of the Complaint. On October 5, 2005, the Center sent an Acknowledgment of Receipt of Complaint to Complainant.

On October 5, 2005, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the name of Robert Harris, Virtual Clicks

The Center verified that the Complaint with Amendment satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On October 11, 2005, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondents together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On October 31, 2005, the Center received the Response of Respondents via email. The Center later received the Response in hardcopy.

On November 7, 2005, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Panel.

4. Factual Background

Complainant offers a number of services, including online searches of convicted sex offender records for a variety of states, as well as providing online access to other types of public records such as county records, and school district records. Since various dates in 1999, Complainant has continuously used INTERNET OPEN RECORDS PROJECT to indicate the exclusive source of his online searches of sex offender records, other types of public records such as county records and voting records, and school district financial records. Since at least 2000, Complainant has similarly provided online access to insurance company complaints.

In addition, Complainant has also used OPEN RECORDS PROJECT since the above-referenced dates to indicate the exclusive source of his services. At all times, the provision of the services has been via, and associated with, the site located at <openrecords.org>. Many pages of the “open records.org” site included a stylized design for the INTERNET OPEN RECORDS PROJECT in which OPEN RECORDS is the most prominent element.

Respondents purchased the Domain Name in July 2005. Respondents’ business operations include, in part, registering a portfolio of domain names that incorporate common and generic terms, short terms and useful phrases. Respondents seek to obtain such domain names by attempting to register presumptively abandoned domain names, which have dropped from registration. After acquiring a domain name, Respondents “park” the domain by pointing it to a page of general interest links. Then Respondents create a search page with corresponding search terms that are connected to the domain name’s content. The domain name is then used in conjunction with an advertising subscription database operated by an advertising consolidator, which is based on the nexus between terms in the domain name and those search terms for which advertisers have paid subscriptions on a performance basis. Respondents derive substantial revenue from their targeted web traffic business, and do not register domain names only for resale. 

5. Parties’ Contentions

A. Complainant’s contentions

i. Complainant contends that it has common law service mark rights in OPENRECORDS and that his common law service mark is a result of the continuous use of the OPENRECORDS phrase on the Internet since at least 1999. Complainant contends that as a result of his services, the <openrecords.org> website rapidly achieved widespread recognition and visibility. For instance, in December 1999, more than about 1 million hits per day were recorded on average on the website providing these services. In mid-1999, the database server that was used to respond to queries made through that website was processing over 50,000 queries per day. That number increased to more 200,000 per day near the end of 1999. In 2001, <openrecords.org> was rated as a “Hot 9 Site to Watch,” and as recently as April 2005, more than 220,000 hits were recorded on, and 113,000 pages served from, the website located at <openrecords.org> providing these services.

Complainant further contends that many pages of the <openrecords.org> site included a stylized design for INTERNET OPEN RECORDS PROJECT in which OPEN RECORDS is the most prominent element. Complainant asserts that this is strong evidence that members of the public interested in those services have recognized – through their own use – that <openrecords.org> is associated with Complainant as sponsor. Complainant states that the public has treated OPENRECORDS.ORG as a service mark as early as December 1999. Complainant cites several references to OPENRECORDS.ORG in other websites as a source of online searches for sexual offender records. In these cases, the public was not simply reciting the domain at which the site was found. Rather, when constructing hyperlinks, OPENRECORDS.ORG was used to identify the website’s (and services’) source, just as with the other hyperlinks on these pages. Complainant offers examples of a computer radio show and the Texas Department of Public Safety using OPENRECORDS.ORG to indicate the source of sexual offender records.

Complainant states that OPENRECORDS.ORG, OPEN RECORDS PROJECT, INTERNET OPEN RECORDS PROJECT, INTERNET OPENRECORDS PROJECT and OPENRECORDS should be collectively considered as the “Open Records Mark” and should be deemed enforceable common law service marks for purposes of this proceeding. The above-described services offered under the Open Records Marks have continued to be available at the “openrecords.org” website. Each year since 1997, Complainant claims to have renewed his registration for the <openrecords.org> Domain Name without interruption.

ii. Complainant argues that the Domain Name is identical with and confusingly similar to the Open Records Mark, pursuant to Paragraph 4(a)(i) of the Policy, because the Domain Name wholly incorporates the Mark. The test is a literal comparison of the Domain Name and the service mark, not whether there is any source confusion shown. First, the primary term of each of them is “open records” – which is identical to the Domain Name if one properly sets aside the “.org” portion. Second, the public specifically recognizes the term <openrecords.org> as an identification of the source for Complainant’s services. Given the similarity in name, there is a strong likelihood of confusion between the Domain Name and the Open Records Mark.

iii. Complainant contends that Respondents have no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondents have failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name pursuant to Paragraphs 4(c)(i-iii).

Complainant alleges that Respondents are not in any way associated with Complainant or the Internet Open Records Project, nor are they authorized to use the Open Records Mark. Nor can Respondents make any of the showings permitted under Paragraph 4(c) of the Policy. Respondents lack any legitimate rights or interest in the Domain Name <openrecords.org>. Respondents have not been commonly known as “Open Records,” or any variation thereof. Nor did Respondents make bona fide use of the Domain Name for offering goods and services before notice of the dispute. Rather, Respondents somehow acquired control of the domain, legally or otherwise, and promptly tried to sell it to the highest bidder and have used it to re-direct internet traffic for Respondents’ own commercial gain.

During the last week of July 2005, Complainant became aware that the <openrecords.org> Domain Name pointed to a webpage offering the Domain Name for sale for a minimum of US$1,000.00. This came as a shock because the Domain Name had been faithfully renewed since 1997. To the best of his knowledge, Complainant had received a renewal notice each year for the <open records.org> Domain Name. Complainant alleges that he never received any renewal or cancellation notice for the Domain Name. Complainant immediately gave Respondents notice of the Domain Name’s disputed status. Complainant asserts that Respondents have not acquired any legitimate rights in the Domain Name because of any lapse in Complainant’s ownership or because of any content posted on the Respondents’ website after their purchase of the Domain Name.

iv. Complainant contends that Respondents registered and are using the Domain Name in bad faith in violation of Paragraph 4(a)(iii).

Complainant alleges that he gave notice of the dispute three times before there was any use by Respondents of the Domain Name. Finally, Complainant alleges he directly notified Respondents through the “Web Site For Sale” page at <openrecords.org> on which Respondents offered to sell the Domain Name for a minimum of US$1,000.00. Complainant alleges that Respondents’ intent was to profit from the sale of the Domain Name, rather than make a bona fide use of it. At the time, there was no other content at that address. But Respondents added content to the <openrecords.org> website only after Complainant gave notice of this dispute.

Complainant alleges that post-notice content shows that Respondents are using the Domain Name to make commercial gain by profiting from the goodwill associated with the Open Records Mark. Complainant contends that this is not a bona fide use: “Attempting to attract traffic for profit, by free-riding on the goodwill of another cannot constitute a bona fide offering of goods or services.” First, each of Respondents’ pages bears at its top the designation OPENRECORDS.ORG. As explained above, the designation is likely to be confused with the Open Records Mark. Second, Respondents offer services that are clearly designed to profit from the goodwill of the Open Records Mark and its association with the <openrecords.org> Domain Name.

Complainant further alleges that Respondents’ main page located at the Domain Name offers searches in various categories. Several of those categories plainly cover the same types of services that Complainant offered under the Open Records Mark at the <openrecords.org> website. For instance, Respondents offer “Criminal Record,” and “Background Check” searches. Clicking on the “Criminal Record” link leads to at least twenty-five “sponsored” – i.e. commercial, for-profit – listings. Four of the first five specifically offer searches of sex offender records, the exact same services with which Complainant’s Open Records Marks were associated. Moreover, clicking on the “Background Check” link leads to a page with a “Related Link” for “Sex Offender.” That page offers additional services identical to Complainant’s services. Further, the Respondents and Complainant both offer services relating to searching public records of counties. The Respondents’ advertised services overlap substantially with those provided under the Open Records Mark.

Complainant asserts that Respondents are generating revenues from these advertised pay-per-click services and simultaneously misleading Internet users by diverting the traffic intended for Complainant. Moreover, Respondents are using the impression of an association with Complainant and his <openrecords.org> website to divert the traffic to websites that are in no way connected with Complainant or with the Open Records Mark. Complainant provided his online services free-of-charge to the public. Respondents are merely capitalizing upon Complainant’s community service and goodwill. This is no bona fide use, even had it begun before Respondents received notice of this dispute.

Complainant continues that Respondent did not accidentally register the precise mark. Complainant had been offering his services in connection with those marks at the <openrecords.org> website for years. The site was, moreover, widely linked-to. And Respondents chose to seek advertising revenue relating to the very types of services provided by Complainant’s <openrecords.org> website. Complainant sees Respondents’ bad faith in Respondents’ use of sponsored links as the sole (or at least most prominent) “search results”. The plain intent: to attract users to the site for commercial gain. Respondents have used those hits to drive traffic to providers of the same and related services that Complainant used to provide free.

Complaint argues that these circumstances support the conclusion that Respondents have registered and are using the Domain Name in bad faith.

B. Respondents’ contentions

i. Respondents dispute the assertion of Complainant in common law rights in the alleged Open Records Mark.

Respondents challenge Complainant’s claims to have enforceable trademark rights in the Domain Name. Respondents point out that Complainant alleged he registered the Domain Name <openrecords.org> in 1999. However, the WHOIS data for the prior registration that Complainant attached does not show the registration date or the expiration date.  The current WHOIS registration date is July 15, 2005 - the exact date the Respondents purchased this website.

Respondents note that ICANN has instituted certain procedures specifically to enable registrants to renew expired domain names and thus to prevent the registration of the newly-expired domain name by another party.  When a domain name expires, the Registrar requests that the Registry delete the domain name. This request triggers a 30-day Redemption grace period, during which the original registrant can still renew the soon-to-be-deleted domain name. During this 30-day redemption grace period, any websites or Internet services linked to the domain name in question are disabled.

Respondents point out that Complainant alleged he lost the domain name because “…he had not yet received any such renewal notice this year.” He was, in fact, negligent in his failure to timely renew and pay the requisite annual renewal fees.  It is axiomatic that one’s right to control a domain name is subject to and dependent upon one’s timely payment of the necessary renewal fees. Complainant was negligent in this regard.  The fact is that this domain name was not only inactive and disabled on the Internet for over 30 days; but also became freely available on the open market to purchase.

Respondents claim that the Domain Name <openrecords.org> was inactive and disabled for more than 30 days, during which time Complainant had the ability to renew it at anytime.  If <openrecords.org > was such an important website, Respondents assert that it defies logic to believe that Complainant was unaware that the Domain Name was disabled and inactive during this 30-day ICANN redemption grace period.

Respondents conclude that Complainant has not established an enforceable service mark in the term OPEN RECORDS.

ii. Respondents do not contest that the Domain Name is identical or confusingly similar to the claimed Open Records Mark.

iii. Respondents assert that they have rights to or legitimate interests in the Domain Name by their offering of bona fide services, and because their operation is endorsed and supported under well-established policy. Such legitimate rights and interests under the Policy are not limited to trademark or service rights, but include use of the domain name in connection with a legitimate business purpose. 

Respondents argue that any use or intended use of the Domain Name does not compete with or disparage the business interests of Complainant. Respondents assert that they are not using the Domain Name for the purpose of tarnishing the Complainant’s alleged Open Records Mark, and they have not registered the Domain name as part of a pattern to prevent the Complainant from reflecting its alleged trademark in a domain name. The fact is that other domain variations of “open records” are currently unregistered and freely available to the Complainant to purchase.

Respondents are under contract to a pay-per-click advertising consolidator.  As such, Respondents provide relevant, targeted web traffic to advertisers and share in a commission paid by advertisers to the advertising consolidator. They hold a legitimate expectation interest in the undisturbed use of common descriptive terms. In this instance, the Respondents are using the Domain Name <openrecords.org> in keeping with the primary and widely-used term “open records” to provide paid advertising links relevant to the search terms. This can be verified by visiting the page in question. The term “open records” is a generic term and over 1,700,000 web pages are using this generic term at Google.com.

Respondents’ business operations include, in part, registering a portfolio of domain names that incorporate common and generic terms, short terms and useful phrases. Respondents seek to obtain such domain names by attempting to register presumptively abandoned domain names, which have dropped from registration.  When Respondents acquire a domain name, they “park” the domain by pointing it to a page of general interest links. Then the Respondents create a search page with corresponding search terms that are connected to the domain name’s content. The domain name is then used in conjunction with an advertising subscription database operated by an advertising consolidator, which is based on the nexus between the terms in the domain name and those search terms for which advertisers have paid subscriptions on a performance basis. Respondents derive substantial revenue from its targeted web traffic business, and do not register domain names only for resale. 

In GLB Servicos Interativos S.A. v. Ultimate Search, WIPO Case No. D2002-0189, the complainant was a prior domain registrant who had lost a generic term through his failure to renew registration. The panel concluded, “The respondent is entitled to conduct a business of capturing generic trademark names which become available in the marketplace - often through failure to renew registration.”

It is not a violation of the Policy to simply seek to register generic words, as they become abandoned, and match those words with a pool of advertisers seeking to use them.  Respondents expend considerable time and effort to configure the domains for shared use among advertisers in the third party database.  Respondents derive significant revenue from its business and has a legitimate expectation in the continuation of its revenue. Respondents are using the name for what has been repeatedly held in other WIPO UDRP decisions to be a legitimate business.

iv. Respondents deny that it registered or used the Domain Names in bad faith.

Paragraph 4(b) suggests four types of evidence of bad faith registration, none of which applies:

Respondents allege that the first time they were even contacted regarding the subject domain name was with the UDRP notice.  The Whois records have shown Respondents’ company information since July 15, 2005, and Respondents are unaware of and unaffiliated with any of the individuals that were referenced in the complaint as having received notice from Complainant of this dispute.

Respondents further allege that Complainant has failed to provide any evidence of bad faith on Respondents’ part. Respondents had no prior knowledge of Complainant’s Domain Name until it became aware, in the course of this proceeding, that this common generic word phrase had become available for registration.  Respondents did not know, nor should they have known, that an active web site was previously located at <openrecords.org>. 

Respondents conclude that the lawful registration of a month-old inactive, disabled and non-renewed domain name cannot be construed as bad faith toward the Complainant.  Respondents submit that the Complainant’s allegations of bad faith are misplaced and wholly inconsistent with the examples of bad faith illustrated in the Policy.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Because both the Complainant and Respondents are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772 n. 3.

A. Enforceable Trademark Rights

Complainant contends that it has common law service mark rights in OPENRECORDS and that his common law service marks are a result of the continuous use of the OPENRECORDS phrase on the Internet since at least 1999.

To establish common law rights in a term, it is necessary to show use of that term as an indication of the source of goods or services supplied in trade or commerce and that, as a result of such use, the term has become distinctive of that source. Complainant has supplied sufficient information to establish that the Open Records Mark has achieved secondary association with Complainant.

Respondents’ primary challenge to the common law service mark is that Complainant has been negligent in not timely renewing the Domain Name. Respondents assert that this constitutes negligence on the part of the Complainant and precludes Complainant from asserting enforceable rights in this proceeding.

Respondents make passing reference to the “generic” nature of the domain name, but offer no further evidence that the term “open records” has become “generic” in the sense that the phrase cannot properly constitute a common law service mark. Therefore, the Panel concludes that Complainant does have a common law service mark. Regardless of whether the lapse in registration of the Domain Name was negligent, it is not sufficient to determine that there has been an abandonment of the common law service mark.

Therefore, the Panel concludes that for the purposes of this proceeding, the Complaint has enforceable rights in the Open Records Mark.

B. Identity or Confusing Similarity

Complainant further contends that the Domain Name is identical with and confusingly similar to the trademark pursuant to the Policy paragraph 4(a)(i). Respondents have not contested this assertion. The Panel notes that the Domain Name is identical to the Open Records Mark. Therefore, the Panel finds that the Domain Name is identical with and confusingly similar to the Open Records Mark pursuant to the Policy paragraph 4(a)(i).

C. Rights or Legitimate Interests

Complainant contends that Respondents have no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondents have no rights to or legitimate interests in the Domain Name. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden shifts to the Respondents to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.

Respondents have no relationship with or permission from Complainant for the use of the Open Records Mark.

The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondents have rights or a legitimate interest in the Domain Name:

“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The paragraph at issue in this proceeding is Paragraph 4(c)(i). Complainant alleges that no content was posted by Respondents on the <openrecords.org> website until after Respondents received notice from Complainant of its rights in the Open Records Mark. Respondents claim that no notice was received until the filing of this proceeding and that the individuals and entities to whom notice was given have no relationship to Respondents.

Complainant further alleges that the similarities in the structure of Complainant’s and Respondents’ websites demonstrate that the content posted by Respondents was intended to further confusion as to the source of Complainant’s website. Respondents assert that once the Domain Name has lapsed and is available to the public, then Respondents are free to purchase the Domain Name and to post any content they choose even if the content is similar to another active website protected by service mark rights.

The Panel finds that the similarities in website structure suggest that the content posted by Respondents was created with an understanding of the content of Complainant’s <openrecords.org> website. A respondent may be free to buy a lapsed website and commence its own business. However, buying a lapsed domain name and then copy or simulate the content of the prior owner who maintains an active website protected by a common law service mark is not a bona fide offering of goods and services. Therefore, the Panel decides that that Respondents have no rights or legitimate interests in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

D. Bad Faith

Complainant contends that Respondents registered and are using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product.”

The evidence established that Respondents are intentionally obtaining domain names which appear to be abandoned. Respondents then “park” the domain names by pointing them to a page of general interest links. Then, the Respondents create a search page with corresponding search terms that are connected to the domain name’s (or website’s) content. Respondents then commercially exploit the traffic which is captured. Having found that Complainant has enforceable rights for purposes of this proceeding and that the Domain Name is identical or confusingly similar, all of the elements of Paragraph 4(b)(iv) are met. Therefore, the Panel determines that evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv).

Based upon this evidence, the Panel finds that Complainant has demonstrated the existence of the criteria in the Policy paragraph 4(b)(iv) and that Respondents registered and used the Domain Name in bad faith pursuant to the Policy paragraph 4(a)(iii).

7. Decision

The Panel concludes (a) that the Domain Name <openrecords.org> is confusingly similar to Complainant’s common law Open Records Mark, (b) that Respondents have no rights or legitimate interests in the Domain Name and (c) that Respondents registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.

Richard W. Page
Sole Panelist

Date: November 24, 2005