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Asset Marketing Systems, LLC v. Silver Lining [2005] GENDND 558 (22 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Asset Marketing Systems, LLC v. Silver Lining

Case No. D2005-0560

1. The Parties

The Complainant is Asset Marketing Systems, LLC (“AMS”), San Diego, California, United States of America, represented by Higgs, Fletcher & Mack LLP, United States of America.

The Respondent is Silver Lining, Kentville, Nova Scotia, Canada.

2. The Domain Name and Registrar

The disputed domain name <globalguestspeaker.com> (“Domain Name”), is registered with Blue Razor Domains.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2005. On May 27, 2005, the Center transmitted by email to Blue Razor Domains a request for registrar verification in connection with the domain name at issue. On May 27, 2005, Blue Razor Domains 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 contact. 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 June 1, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 21, 2005. On June 21, 2005, upon Respondent’s request the Center extended the due date for Response to June 28, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 30, 2005.

The Center appointed Dawn Osborne as the sole panelist in this matter on July 8, 2005. 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 Complainant has US and Canadian Trade Mark applications for GUEST SPEAKER and uses the mark in the field of education for those involved in finance.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

1. The Complainant has been using “Guest Speaker” in conjunction with providing goods and services in the financial industry since 2003. As a result of this and substantial marketing expenditure the relevant public has come to associate the goods and services sold under “Guest Speaker” with the Complainant.

2. The Respondent registered the Domain Name on October 17, 2004, after AMS began use of the GUEST SPEAKER mark and filed its US and Canadian trade mark applications. The Complainant’s US trade mark application gave the Respondent constructive notice of the Complainant’s trade mark rights.

3. The Domain Name encompasses the dominant element of the Complainant’s trademark GUEST SPEAKER and the Domain Name is identical or confusingly similar thereto.

4. Respondent is not using the Domain Name but has it “parked”. Respondent is not commonly known as the Domain Name and is not making any legitimate non commercial or fair use of the Domain Name. The Complainant could find no connection between the Respondent and the Domain Name <globalguestspeaker.com>.

5. The Domain Name has been registered and used in bad faith as the Respondent has provided false information in its who is and has taken steps to conceal its true identity. The e-mail and telephone contact details did not work and the Respondent did not appear to be based at the address given. However, a person named Justin Bardwell responded by voice message to e-mails sent directly to him. He would not give his phone number and was confrontational and disrespectful on the telephone. Justin Bardwell insisted that the Whois details were correct. The Complainant wanted a signed document setting forth the proposed use of the Domain Name, confirming that there would be no infringement of the Complainant’s rights and reliable contact information. Justin Bardwell responded saying it was to be used for a web log for individuals, but did not sign the document or meet the other requests. The last e-mail appeared to be linked to one John Erb and the Complainant suspect that Mr. Erb and Mr. Bardwell may be one and the same. Justin Bardwell is a name used in relation to a medieval re-enactment group where the members appear to have pseudonyms to fit the historical period. Providing false identification information is evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of 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; 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.

A. Identical or Confusingly Similar

The Complainant does not have registrations for trade mark GUEST SPEAKER, but to the extent that it may well be able to prevent other parties using “Guest Speaker” in the field of education for financial services, at least in the United States of America, it can be said to have rights in the mark.

The first level of the Domain Name “Global Guest Speaker” is not identical to the Complainant’s unregistered mark GUEST SPEAKER. However, due to the generic descriptive nature of the word “Global” and the low threshold for finding confusing similarity for this limb of the Policy, the Panel is prepared to hold that the Domain Name is confusingly similar to a trade mark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent has not responded and does not appear to have any legitimate interests established in relation to the Domain Name. The Domain Name is not being used even for the usage the Respondent said it intended, a web log. There is no fair non commercial use of the name and the Respondent does not seem to have ever been known as “Global Guest Speaker” or to have used the name to trade.

C. Registered and Used in Bad Faith

However, the Panel does not believe that the Complainant has satisfactorily proven its allegation of bad faith.

The Complainant relies on the fact that the Respondent has given incorrect contact details and the doctrine of constructive notice.

It appears to be true that not all of the Respondent’s contact details were correct and the Respondent refused to give a telephone number for contact. However, it does appear that contact was established and a number of instances of communication took place between the parties. Whilst it does appear that Justin Bardwell may not have behaved in a courteous or co-operative matter, the fact remains that both the Center and the Complainant were able to contact him and engage in communication with him. Had the Domain Name registered been a famous or highly distinctive trade mark or there was evidence that the Respondent had targeted the Complainant the whole set of circumstances might have indicated bad faith, but the Panel does not think the incorrect contact details indicate bad faith by themselves in this case.

The crucial factor is that the Complainant has not produced any evidence that the Respondent targeted the Complainant except for the general concept of constructive notice due to the Complainant’s US trade mark application. “Guest Speaker” is a term with a widely accepted generic meaning. Whilst it may have achieved some trade mark significance in the field of education for financial services, there is nothing linking the Respondent to that field or evidencing that he was aware of the Complainant at the time he registered the Domain Name.

Quoting the panel from The Way International Inc. v. Diamond Peters, WIPO Case No. D2003-0264.

“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy. The essence of the Complaint is an allegation of bad faith, bad faith targeted at the Complainant. For that bad faith to be present the cybersquatter must have actual knowledge of the existence of the trade mark owner. If the registrant is unaware of the existence of the trademark owner, how can he sensibly be regarded as having any bad faith intentions directed at the Complainant? If the existence of a trade mark registration was sufficient to give the Respondent knowledge, thousands of innocent domain name registrants would, in the view of the Panel, be brought into the frame quite wrongly. “

Here the Complainant does not have a trade mark registration but only applications and there is nothing to show the Respondent targeted the Complainant. Without the context of use in the education for financial services field “globalguestspeaker” has a perfectly well understood meaning and could be used in almost any context. The addition of the word “global” which the Complainant does not maintain that it uses in combination with its trade mark GUEST SPEAKER might also suggest that the Respondent arrived at its choice of the Domain Name independently. It is highly unsatisfactory that the Respondent did not properly explain why he registered the Domain Name, however, this does not in my view amount to bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dawn Osborne
Sole Panelist

Dated: July 22, 2005