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Forte Communications, Inc. v. Wendy Eichenbaum [2005] GENDND 821 (2 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Forte Communications, Inc. v. Wendy Eichenbaum

Case No. D2005-0190

1. The Parties

The Complainant is Forte Communications, Inc, of Tucson, Arizona, represented by Jenkins & Gilchrist, PC, Austin, Texas, United States of America.

The Respondent is Wendy Eichenbaum, San Diego, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <fortecommunications.com> (the “Domain Name”) is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2005. On February 18, 2005, the Center transmitted by e-mail to Go Daddy Software a request for registrar verification in connection with the Domain Name. On that same day, Go Daddy Software transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on March 1, 2005. The Center verified that the Complaint, together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on March 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for filing a response was March 24, 2005. Respondent did not submit any response. Accordingly, the Center notified Respondent of her default on April 4, 2005.

The Center appointed Robert A. Badgley as the sole panelist in this matter on April 18, 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.

On March 24, 2005, Complainant sent the Center an unsolicited Supplement to Complaint, with new exhibits. The Center acknowledged receipt of these materials on April 4, 2005. The Panel, in its discretion, has considered the Supplement to Complaint and exhibits.

4. Factual Background

Complainant asserts that it holds common law rights in the mark FORTE COMMUNICATIONS. Complainant further asserts that, as early as 1996, it “has been engaged in the business of providing high quality marketing materials and sales aids to real estate professionals.” It also asserts that its business has grown steadily and that it has become “a nationally recognized leader in the industry.”

Complainant then alleges to have expended substantial time and money to acquire “substantial goodwill and a valuable reputation.” The culmination of these efforts, Complainant asserts, is a distinctive mark which enjoys several high rankings on a Google search for the name “forte communications.” (A Google web page showing search results, but nothing else, is annexed to the Complaint.)

Respondent registered the Domain Name on October 7, 2003. The Domain Name does not resolve to an active website of Respondent’s creation; rather, the Domain Name is “parked” at an advertising web page established by the Registrar, Go Daddy Software.

In e-mail correspondence attached as exhibits to the Supplement to Complaint, Respondent told Complainant on February 17, 2005: “Please stop bothering me. If you want the name, you can have it. I am not currently using it.” Then, on March 10, 2005, presumably after receiving a hard copy of the Complaint and annexes thereto, Respondent told Complainant: “Well, I got a huge FedEx package in from your lawyers yesterday. I’ll be honest. I didn’t open it. But I did go to godaddy [sic] and release fortecommunications [sic]. It’s no longer mine, so you can get it without paying me. You won. Good luck on your venture.”

5. Parties’ Contentions

A. Complainant

As noted above, Complainant alleges that it holds common law rights in the mark FORTE COMMUNICATIONS. Complainant further alleges that Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Domain Name has been registered and is being used in bad faith. Complainant requests that the Domain Name be transferred to it.

B. Respondent

As noted above, Respondent did not respond to the Complaint. She did, however, communicate informally with Complainant, as set forth in the two e-mails quoted above in the “Factual Background” section.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy in order to succeed:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

As noted above, Complainant asserts that it holds common law rights in the mark FORTE COMMUNICATIONS. The problem with the Complaint, however, is that Complainant’s trademark rights are a matter of mere assertion, not proof. If Complainant’s assertions about the extent, duration, and scope of its use of “Forte Communications” as a mark, and the renown that mark has achieved through such use, were true, then it should have been an easy matter to provide palpable evidence to support these assertions. Complainant has not provided any such evidence of actual use of the term “Forte Communications” as a mark.

Even the Google search result annexed to the Complaint is not, in itself, evidence of trademark use; without more, that search engine result merely shows that, for whatever reason, Complainant’s websites have managed to make their way, at least at the time of this particular search, to the top of the Google list when the term “forte communications” was searched on Google. Complainant did not even attach as annexes to its Complaint the web pages to which the Google search-result entries link.

Bald assertions of protectable common law trademark rights do not, in this Panelist’s view, meet the relatively modest threshold of proof required to give a complainant standing under the Policy. To repeat, if Complainant’s assertions are accepted at face value, then tangible proof should have been easy to provide. Moreover, the fact that Respondent has chosen not to respond to the Complaint and, indeed, appears unwilling to fight for her Domain Name, is of no moment in these circumstances. Put another way, Respondent’s evident unwillingness to be bothered does not rise to the level of an admission of the veracity of Complainant’s alleged common law trademark rights.

It also bears noting that, in its pre-Complaint e-mail correspondence with Respondent, Complainant’s representative never comes close to stating that Complainant holds trademark or service mark rights in the term “Forte Communications.” In the first such e-mail, Complainant’s representative asserts that that term “directly represents our entity.” In the second e-mail, Complainant’s representative asserts that “We’ve been incorporated for over 10 years as Forte Communications, Inc.”

If one accepts as true that Complainant has used “Forte Communications” as a trade name (as opposed to a mark), that use does not provide standing to Complainant under the Policy. In this vein, Complainant asserts that trade names should enjoy the same protection as trademarks under the Policy. Complainant, however, has cited to no authority -- including the text of the Policy and decisions in prior disputes under the Policy -- for the proposition that trade names, by themselves, are protected under the Policy. Indeed, even if there were any such prior decisions under the Policy, they would be vastly outnumbered by the ample body of decisions confirming that trade names as such are not protected under the Policy. See Baltimore Gas & Electric Company v. National Material Supply Co., LLC, WIPO Case No. D2001-0315 (May 17, 2001) (the Policy “does not extend to protection of personal or trade names in which trademark rights have not been established”).

In sum, Complainant has failed to prove that it holds common law rights in the mark FORTE COMMUNICATIONS, and hence has not satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(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.

Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). In connection with the “rights or legitimate interests” element under the Policy, one panel has aptly observed:

Most panels have concluded that, once a complainant makes a prima facie showing that the respondent lacks a legitimate interest, the burden of production shifts to the respondent to come forward with demonstrable evidence proving a legitimate interest in the domain name. Of course, the burden of proof always remains on the complainant.

See Bootie Brewing Company v. Deanna D. Ward and Grabebootie Inc., WIPO Case No. D2003-0185 (May 28, 2003).

In the Panel’s view, Complainant has not made out a prima facie case that Respondent lacks any rights or legitimate interests in respect of the Domain Name. This is not a case where, owing to the strength of the trademark in question, the domain name on its face arouses suspicion of cybersquatting or infringement. Indeed, there appear to be various unrelated entities making use of the term “Forte Communications” in various spheres of activity. Nor is there any indication that Respondent is using the Domain Name for illegitimate purposes, such as attempting to siphon off Internet traffic for pecuniary gain, or engage in other such improper conduct. On this record, there is simply no hard basis for concluding that Respondent’s decision to adopt the term “Forte Communications” in her Domain Name was without right or legitimacy.

In sum, the Panel rules, on the record before it, that Complainant has failed to carry its burden of proof that Respondent lacks rights or legitimate interests in respect of the Domain Name, and hence this Complaint fails under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

There is no basis for concluding that any of the four enumerated “bad faith” categories under Policy, paragraph 4(b) exist in the present case. Indeed, Complainant does not seriously invoke any of these four specific categories. Rather, Complainant’s argument is focused on the fact that Respondent has made no active use of the Domain Name.

With respect to the element of “bad faith” registration of the Domain Name, the Panel has seen no evidence, and has been provided no reason to infer, that Respondent had Complainant or the latter’s alleged trademark in mind when she registered the Domain Name. As discussed above, the alleged mark FORTE COMMUNICATIONS is, as far as this Panel can determine based on the properties of the mark itself and the evidence provided by Complainant, weak.

‘Forte’ is a surname, and does not appear to be a very uncommon one. It is also an English word, borrowed from French. One’s “forte” is, of course, one’s “strength” or “strong suit,” or something at which one excels. To couple that unremarkable, and generally laudatory, word with a descriptive term such as “communications” is not to coin a manifestly powerful mark.

The Panel’s impression of “Forte Communications” as not being particularly distinctive is fortified by the very evidence put into the record by Complainant. Specifically, Complainant has made the Panel aware that other entities, totally unrelated to Complainant, have made or are making use of the name “Forte Communications” in connection with their own businesses or activities. Indeed, for a time, there were at least two entities known as “Forte Communications” in the State of California alone. Further, a very brief Google search by the Panel unearthed yet another “Forte Communications,” that one based in Illinois.

In short, there seems to be a peaceful coexistence among various entities at the moment who use “Forte Communications” as their trade name (and perhaps as a mark, but the Panel did not need to verify that point). Whether there are actual trademark disputes to be sorted out among such entities is an issue well beyond the contemplation of this Panel. The point here, for purposes of the only dispute before this Panel, is that there is simply no evidence upon which to conclude, or even infer, that Respondent had any particular company or trademark (including Complainant’s) in mind when she registered the Domain Name. As such, the Panel cannot find bad faith.

Complainant’s assertion, while apparently true, that Respondent has not made any active use of the Domain Name is not dispositive of the “bad faith” issue in this case. Contrary to Complainant’s suggestion, this case does not fall within the “passive use” doctrine first articulated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000). The Telstra case involved a strong, famous mark, and there were various indicia of bad faith by the respondent in that case. Under those circumstances, the Telstra panel concluded that the respondent’s non-use of the disputed domain name nonetheless constituted “bad faith” use.

The present case is not even a case where the complainant owner of a relatively weak mark nevertheless prevails because it is difficult to imagine any legitimate purpose for the respondent’s choice and “passive use” of the domain name in question. In such cases, there is typically evidence that the respondent had actual knowledge of the complainant or its mark, was a serial cybersquatter, had provided misleading or false contact information, or had engaged in other dubious conduct.

In the present case, we know very little about Respondent’s motives. Based on the weakness of the alleged mark in question, Complainant’s assertions and evidence, such as they are, have done nothing to arouse suspicion about Respondent, who, according to the Panel’s simple search of prior decisions under the Policy, apparently has never figured as a party to any case under the Policy.

In sum, the Panel concludes that Complainant has failed to establish, on this record, that Respondent’s registration and use of the Domain Name constitutes “bad faith” within the meaning of Policy, paragraph 4(a)(iii).

7. Decision

For all the foregoing reasons, the Complaint is denied.

Robert A. Badgley
Sole Panelist

Dated: May 2, 2005