SCOLA v. Brian Wick d/b/a
CheapYellowPages.com
Claim Number: FA0711001115109
PARTIES
Complainant is SCOLA (“Complainant”), represented by Michael
K. Bydalek, of Kutak Rock LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <scola.com>, registered with Enom, Inc.
PANEL
Each of 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.
David H. Bernstein and Dawn Osborne as
Panelists and Bruce E. O’Connor as Chair.
PROCEDURAL HISTORY
This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 28, 2007; the
National Arbitration Forum received a hard copy of the Complaint on November 30, 2007.
On November 28, 2007, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <scola.com> domain name is registered
with Enom, Inc. and that the Respondent
is the current registrant of the name. Enom, Inc. has verified that Respondent is
bound by the Enom, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with the Policy.
On December 13, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 2, 2008 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@scola.com by e-mail.
A timely Response was received and determined to be complete on January 2, 2008.
A timely Additional Submission was received from Complainant on January
7, 2008 in accordance with Supplemental Rule 7.
A timely Additional Submission was received from Respondent on January
11, 2008 in accordance with Supplemental Rule 7.
On January 11, 2008, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed David H. Bernstein and Dawn Osborne as Panelists and Bruce E. O’Connor as Chair.
On January 25, 2008, pursuant to a request from
the Panel, the National Arbitration Forum issued an order extending the time
for the Panel to render a decision until February 1, 2008.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that it is the owner of the trademark SCOLA (the
“Trademark”) that is the subject of U.S. Trademark Registration No. 1,536,803
registered on April 25, 1989 on the Principal Register for “television
transmission services by means of satellite.”
The registration claims a first use date of June, 1983. Complainant contends that it uses the
Trademark to promote the re-transmission of international television
programming in the
Complainant contends that it is the owner of the domain name
<scola.org> and has conducted business over a Web site using that domain
name since 2002.
Relating to these contentions are copies of a United States Patent and
Trademark Office (“USPTO”) Web page relating to Complainant’s registration and
of a WHOIS record relating to Complainant’s domain name.
Complainant argues that the domain name at issue is confusingly similar
to the Trademark.
In support of this argument, Complainant contends that the domain name
at issue is identical to the Trademark and that the addition of the generic top
level domain “.com” is irrelevant.
Complainant argues that Respondent has no rights or legitimate interest
in the domain name at issue. In support
of this argument, Complainant contends that Respondent purchased the domain
name at issue on or around September 2, 2007. Relating to this contention is a copy of a
WHOIS record for the domain name at issue.
Complainant contends that its rights in the Trademark thus precede and
are superior to any rights that Respondent may claim.
Complainant contends that Respondent intentionally uses the domain name
at issue to intentionally misdirect users, who attempt to visit Complainant’s
Web site, to a Web site operated by Respondent.
At that Web site, Complainant contends that Respondent offers for sale
everything from baby products to prescription drugs to auto insurance to
cosmetic surgery. Complainant contends
that Respondent’s intent to misdirect is also demonstrated by the
fanciful/abstract nature of the Trademark.
Complainant contends that Respondent’s use does not represent any
legitimate or noncommercial use of the domain name at issue.
Complaint contends that it has not authorized Respondent to use the
Trademark, and that Respondent is not commonly known by the Trademark or the
domain name at issue.
Complaint contends that it appears, as history suggests, that
Respondent’s only purpose in registering the domain name at issue is to
misdirect Complainant’s customers and attempt to extort money from Complainant
for purchase of Respondent’s Web site. Relating
to this contention are citations of authority for numerous cases involving
domain names registered by Respondent. See Regions Fin. Corp. v.
Defaultdata.com a/k/a Brian Wick, FA
118271 (Nat. Arb. Forum Oct. 14, 2002); Morrison
& Forrester, LLP v. Brian Wick, FA 94301 (Nat. Arb. Forum April
17, 2000); Hunton & Williams v. Am.
Distribution Sys., Inc. d/b/a Brian Wick, D2000-0501 (WIPO Aug. 1, 2000); Brandon Dunes L.P. v. Defaultdata.com,
D2000-0431 (WIPO July 13, 2000); Am.
Family Life Assurance Co. of Columbus v. defaultdata.com a/k/a Brian Wick,
FA 123896 (Nat. Arb Forum Oct. 14, 2002); and
Chadbourne & Parke, LLC v. Am. Distribution Systems, Inc., d/b/a
Defaultdata.com & Brian Wick, D2003-0553 (WIPO Sep. 8, 2003).
Complainant argues that Respondent has registered and used the domain
name at issue in bad faith.
In support of this argument, Complainant contends that it is reasonable
to infer that Respondent knew or should have known of Complainant’s rights and
interest in the Trademark when Respondent registered the domain name at
issue. Complainant contends that
Respondent’s representative admitted to counsel for Complainant, in a telephone
conversation on October 31, 2007, that Respondent’s was aware of Complainant
prior to acquiring the domain name.
Relating to this contention is an affidavit of Complainant’s counsel
Stephen J. Pederson as to the alleged admission, and, a citation of authority
relating to the constructive notice effect of a registration on the Principal
Register of the USPTO.
Complainant contends that the domain name at issue was registered and
is being used to misdirect Complainant’s customers and to extort money from
Complainant.
Complainant contends that its counsel sent cease and desist letters to
Respondent on September 10 and October 4, 2007 and to the registrar, eNom.com
on October 4, 2007, by certified mail and e-mail. Complainant contends that the certified mail
versions were returned marked “Return to Sender” and that it received no other
responses to the letters. Relating to
this contention is an affidavit of Complainant’s counsel Michael K. Bydalek.
Complainant contends that Respondent is no stranger to such bad faith
activity and has engaged in a pattern of conduct whereby Respondent prevents
the owner of a trademark or service mark from reflecting the mark in a
corresponding domain name, often in an effort to extort money from the
trademark holder. Relating to this
contention are the cases involving Respondent, previously mentioned by
Complainant and cited on page 3 of this Decision.
B. Respondent
Respondent argues that the evidence does not
support Complainant’s allegations.
Respondent contends that it is in the business of acquiring domain
names consisting of non-infringing, generic, common use, surnames and
geographic terms. Respondent contends
that these domain names are used to create virtual “Internet TV Channels” where
Yellow Pages directory-style advertising is sold, based on the intuitive
meanings associated with those terms.
Respondent contends that as a rule, its domain names are not advertised
or offered for sale to third parties.
Respondent contends that it acquired the domain name at issue for
$7,000, which was the winning bid in an auction conducted through Snapnames by
the previous owner. Respondent contends
that it entered the auction because it recognized “Scola” as a surname and
intended to use the domain name at issue as a directory site for the Scola
name.
Respondent contends that it has purchased several other surname domain
names, for the purpose of establishing directory sites with links to
information on the varied persons, genealogy and businesses incorporating those
surnames.
Relating to these contentions are a declaration of Brian Wick, the principal
of Respondent, various exhibits to that declaration, and copies of WHOIS
records for the domain name at issue.
Regarding the domain name at issue, Respondent contends that shortly
after acquisition, Respondent set up a Web site using the domain name to
display directory listings for Internet users looking for information on any
one of several businesses, famous people, common people, family trees, or
organizations that are comprised of, in whole or in part, the name “scola.” Relating to this contention is the
declaration of Mr. Wick.
Respondent contends that Respondent never received any cease and desist
letters addressed to Mr. Wick’s attention.
Respondent contends that it did receive a certified letter from
Complainant’s counsel’s law firm and that letter was addressed to a Tom Baron,
albeit at Respondent’s address. Because
Mr. Wick believed that the letter had been sent in error, he did not sign for
the letter. Respondent contends that Mr.
Wick received a telephone call from counsel for Complainant and was informed,
for the first time, of the Trademark.
Respondent contends that Complainant said that it would be willing to
refrain from a lawsuit or a UDRP proceeding if Respondent would transfer the
domain name at issue in exchange for Respondent’s costs. Respondent contends that Mr. Wick explained
that neither he nor the Respondent had prior knowledge of the Trademark, that
the domain name was acquired at auction because it included a recognized
surname, and because there were no indications, based on the number and quality
of other bidders, that the domain name would be subject to an exclusive
trademark claim. Respondent contends
that counsel for Complainant, when he heard that Respondent’s cost for acquiring
the domain name was $7,000, informed Respondent that Complainant would never
pay that much and that Respondent should simply transfer the domain name, which
Respondent declined to do.
Relating to these contentions is the declaration of Mr. Wick.
Respondent contends that it has never used the domain name at issue in
an infringing manner. Respondent
contends that shortly after acquisition, the domain name has been used as a
directory site displaying links to other “scola” sites. Relating to this contention is a copy of a
page from the Web site employing the domain name at issue, and the declaration
of Mr. Wick.
Respondent contends that there is no evidence of record or otherwise to
suggest that visitors to Respondent’s Web site are looking for
Complainant. Respondent contends that
the domain name at issue was originally registered by another business in 1998,
and used as an active Web site until 2003.
Respondent contends that Complainant thus was not the first to use
“scola” in a domain name. Respondent contends that the “.org” domain name of
Complainant and “.com” domain name of Respondent can coexist because of this
prior use and also because of present third party uses of the domain names
<scola.info>, <scola.de>, and <scola.ac.uk>.
Relating to these contentions are copies of a WHOIS record and archived
records and Web pages for the previous use of <scola.com> and of Web pages for the present third party uses
of <scola.info>, <scola.de>, and <scola.ac.uk>.
Respondent contends that Complainant’s use of a
“.org” address is consistent with Complainant’s status as a non-profit
organization. Relating to this
contention is a copy of a Public Interest Web page at <pir.org>.
Respondent contends that if Complainant’s customers had been able to
find Complainant at its <scola.org> Web site for the past five years, it
is unlikely that they are being mislead or confused simply because the domain
name at issue now shows the alternate “scola” Web site of Respondent.
Respondent contends that “Scola” is an Italian and Spanish surname used
in the
Respondent contends that, on the Internet, the word “scola” is subject
to widespread third party use predominantly unrelated to Complainant. Respondent contends that a Google search for
the term “scola” excluding results with the phrase “satellite communications”
and “scola.org” came back with well over
2.2 million results. Respondent contends
that a Google search for the term “scola” including “satellite communications”
and “scola.org” yielded fewer than 22,000 results. Respondent contends that Google searches for
famous “Scolas”, e.g., Cardinal Angelo Scola or basketball player Luis Scola,
both yielded over 500,000 results. Relating
to these contentions are copies of the Google search results.
Respondent concludes that there is nothing to support Complainant’s
bald assertions that there are numerous consumers wishing to visit
Complainant’s Web site that are being misdirected and mislead by Respondent’s
Web site using the domain name at issue.
Respondent argues that the accusation by Complainant that Respondent
registered the domain name at issue with knowledge of Complainant in order to
extort money is blatantly false.
Respondent contends that, contrary to the representations by Mr.
Pederson, Mr. Wick never offered to sell the domain name at issue to
Complainant, other than in a settlement context, nor did he state that he was
aware of Complainant or the Trademark at the time Respondent registered the
domain name.
Respondent contends that it makes absolutely no sense for Mr. Wick, as
a veteran of prior UDRP and other proceedings, to make the statements
attributed to him. Respondent contends
that for over four years, Respondent has conducted a wholly legitimate
commercial Internet advertising and marketing domain name business, precisely
because Mr. Wick listened to the guidance given to him by prior panels
regarding bad faith and bona fide
use.
Respondent contends that it would be unusual for Mr. Wick to have had
prior awareness of Complainant, given the highly specialized nature of
Complainant’s products and services and the apparently institutional nature of
its client-base.
Relating to these contentions are Mr. Wick’s declaration and a copy of
a page from Complainant’s Web site.
Respondent argues that Mr. Pederson may have misunderstood Mr. Wick’s
statement that Respondent was “aware” of the Scola surname to mean that
Respondent was aware of the Trademark at the time of registration of the domain
name at issue.
Respondent argues that the allegation that Respondent purchased the
domain name at issue to extort money is equally untrue and equally
implausible. Respondent contends that
Complainant is not the ideal target for an extortion scheme, due to its nonprofit
status and its meager Internet traffic.
Relating to this contention are copies of <scola.org> Web site
traffic reports from Quantcast and Alexa.
Respondent contends that the purported “offer” by Mr. Wick to sell the
domain name was in response to Complainant’s request to sell to avoid a lawsuit
or UDRP proceeding, and was for Respondent’s out-of-pocket costs in acquiring
the domain name. Relating to this
contention is the declaration of Mr. Wick.
Respondent contends that agreeing to consider a settlement and
communicating the cost of a domain name are not actions that are in any way
indicative of bad faith. Respondent
contends that where a complainant’s mark is a common word with substantial
third party use, the complainant must proffer evidence that demonstrates that
the respondent has specifically intended to confuse consumer seeking out
complainant..
Respondent argues that it has rights to and
legitimate interest in the domain name at issue.
Respondent contends that because “scola” is a recognized surname and is
used by a multitude of third party Web sites, the mere fact that the Trademark
is registered for use in connection with non-profit satellite broadcast
educational services would not preclude Respondent from using the domain name
at issue to provide directory services linking to other uses of the term
“scola.”
Respondent contends that prior panels have found that use of a domain
name consisting of common terms in connection with third party advertising
services related to the meaning of the domain name may be a bona fide offering of goods or services,
particularly where the common terms are not exclusively associated with any one
mark.
Respondent contends that Respondent’s prior registrations of other
surname domain names at substantial cost further establishes Respondent’s
legitimate interest in surname domain names.
Respondent contends that because the domain name at issue consists of a
recognized surname and was acquired solely for that reason, Respondent’s use of
the domain name to create an online directory of generic links to sites with
information on third party “scolas” is a legitimate use.
Respondent contends that Respondent’s actual use of the domain name at
issue in conjunction with a legitimate business prior to being contacted by
Complainant constitutes evidence of legitimate rights and interests.
Respondent argues that the Complainant has
not demonstrated that the domain name was registered and is being used in bad
faith.
Respondent contends that all use of the domain name at issue was
strictly in good faith. Respondent
contends that, at the time of registration of the domain name, Mr. Wick was not
familiar with Complainant or the Trademark.
Respondent contends that neither Mr. Wick nor Respondent ever offered to
sell, license, or other convey for money the domain name to Complainant or any
of its competitors and never contemplated doing so. Respondent contends that it never used the
domain name at issue to complete with Complainant or to divert Internet
traffic. Relating to these contentions
is the declaration of Mr. Wick.
Respondent contends that it has not registered the domain name at issue
in order to prevent Complainant from reflecting the Trademark in a domain
name. In this regard, Respondent points
out the operation since 2002 by Complainant of a Web site using the domain name
<scola.org>.
Respondent argues that the only purported evidence of bad faith is
contained in an affidavit by counsel for Complainant. Respondent contends that this affidavit is
not substantiated and arguably is contradicted by direct or circumstantial
evidence. Respondent contends that the
affidavit has utterly distorted a conversation in which Complainant offered to
make Respondent whole for its registration costs and Respondent stated that it
had paid $7,000 for the domain name at auction.
Respondent cites authority for the proposition that bad faith cannot be
found, where there has been registration of domain names including common
surnames or geographic names that have not achieved the status of famous marks,
or, including generic terms where there is no direct evidence of Respondent’s
intent to capitalize on the trademark interest of the Complainant.
Respondent contends that ordering the transfer of a domain name is an
extraordinary remedy that should be exercised only in clear cases of
malfeasance and that the purpose of the Policy is to resolve only a narrow class
of abusive registrations.
Respondent concludes by stating that Mr. Wick has a past when it comes
to domain names. Respondent implores the
Panel not to hold his past against him.
Respondent contends that Mr. Wick has learned from his past experiences
and has completely abandoned the activities that prior UDRP panels had found to
be illegitimate. Respondent again
repeats in summary form the contentions and arguments made in
his Response, and asks that the relief requested by Complainant be
denied.
C. Additional Submission of Complainant
Complainant contends that Registrant does not dispute that the domain
name at issue is identical to the Trademark.
Complainant argues that it has met its burden of proof under Policy ¶
4(a)(i).
Complainant contends that Respondent had actual and constructive notice
of the Trademark prior to the notice of this dispute and registration of the
domain name at issue. Complainant relies
on the affidavit of Mr. Pederson and to the constructive notice afforded to a
Complainant disputes Respondent’s contention that it did not receive
the cease and desist letters from Complainant’s
counsel. Complainant argues that Mr.
Wick admits to receiving one of the letters and that Mr. Wick and Tom Baron,
the addressee of the letters, shared the same mailing address. Complainant implies that the letters were
sent to Mr. Baron because of a search by its counsel of WHOIS records for the
domain name at issue. Complainant argues
that it makes no sense that its counsel would discover an accurate mailing
address for Respondent via WHOIS information, but not an accurate contact name
unless Respondent had deliberately kept Mr. Wick’s name off the contact
information.
Complainant contends that Respondent was either willfully blind or
utterly reckless in acquiring the domain name at issue and that such
constitutes bad faith.
Complainant contends that Respondent agreed and warranted that it was
his responsibility to determine whether the domain name at issue infringes or
violates someone else’s rights. Relating
to this contention is a copy of the agreement used by Snapnames for its online
auctions.
Complainant again contends that Respondent had constructive notice of
the Trademark (because of the U.S. Trademark Act). Complainant also contends that Respondent’s
counsel agrees that one seeking to be a domain name owner should perform a
trademark registration search prior to registration of a domain name. Relating to this contention is a copy of an
article written by Respondent’s counsel.
Complainant disputes Respondent’s contention that it set up a Web site
to display directory listings related to the term “scola.” Complainant contends that, until October 31,
2007 (the date upon which Mr. Wick and counsel for Complainant spoke by
telephone), the Web site of Respondent only included links to other Web sites
owned by Respondent and did not include any of the “scola” related domains
present today. Relating to this
contention is a Supplemental Affidavit of Mr. Pederson.
Complainant contends that Respondent has presented evidence based upon
archive.org’s “wayback machine” while denying Complainant and this Panel the
right to access the same service in order to show the Web site using the domain
name at issue from September 2, 2007 to October 30, 2007. Relating to this contention is a copy of a
page from the Web site of archive.org, which states that the site owner has
blocked access to the archive for the domain name at issue using
<robots.txt>.
Complainant contends that Respondent has conspicuously left
Complainant’s Web site using <scola.org> off the directory listings that
currently reside at Respondent’s Web site.
Relating to this contention is a copy of a page from Respondent’s Web
site. Complainant repeats that its Web
site is the top link in the Google search previously discussed.
Complainant contends, assuming that Respondent has continuously
displayed “scola” directory listings on its Web site, that other businesses are
present on the Web site that misdirects individuals from Complainant’s
domain. Relating to this contention is
the previously mentioned page from Respondent’s Web site that directs visitors
to commercial Web sites of Respondent such as <cheapdrugs.com> and
<cheapforeclosures.com>.
Complainant contends that Respondent’s business is predicated on the
premise of misdirection. Complainant
contends that Respondent has stated that at least 15% of users key what they
want into their command line followed by “.com” rather than using a search
engine. Relating to this contention is a
copy of a page from a Web site of Respondent using the domain name
<cheapyellowpages.com>. Complainant
contends that, although this practice may be acceptable with generic or common
words, it cannot be legitimate in the present case.
Complainant contends that “scola” is neither generic nor a common
surname in the
Complainant contends that the Trademark is neither generic nor a common
surname since it has been registered with the USPTO since 1987. Respondent characterizes the authority cited
by Respondent as pertaining to generic terms and not to incontestable
trademarks.
Complainant contends that Respondent is not commonly known by the
domain name at issue.
Complainant contends that Respondent’s purchase and registration of an
identical (and thus confusingly similar) trademark, when it had constructive
notice of the Trademark, is, in and of itself, registration in bad faith.
Complainant disputes Respondent’s contention that there can be no bad
faith because Complainant does not compete with Respondent.
Complainant disputes Respondent’s contention that the existence of
third party domains and uses of “scola” means that Respondent acted in good
faith.
Complainant disputes Respondent’s contention that the existence of
prior owners and users of the domain name at issue means that Respondent acted
in good faith.
Complainant contends that Respondent, by its own admission, is engaging
in “initial interest” confusion.
Relating to this contention is the previously mentioned Web page of
Respondent at <cheapyellowpages.com>.
Complainant contends that Respondent is engaging in disruption of
Complainant’s business, by registering the Trademark in a different top level
domain after Complainant’s registration.
Complainant contends that Respondent’s repeated assertion, that it was
not aware of the Trademark, is of no moment.
Complainant contends that Respondent has admitted in its Response that
it has engaged in a pattern of bad-faith conduct in other cases cited by
Complainant in its Complaint. Relating
to this contention are the cases involving Respondent, previously mentioned by
Complainant and cited on page 3 of this Decision.
D. Additional Submission of Respondent
Respondent disputes Complainant’s claim of exclusive rights in the
descriptive last name and geographic name “scola,” the statements made by Mr.
Pederson in his affidavits, and the extent of Complainant’s rights in the
Trademark Respondent also contends that the Trademark was registered by the
USPTO on the basis of acquired distinctiveness, speculating that Complainant
had to overcome an initial objection on any number of grounds, including that
SCOLA is a surname or geographical location.
Relating to this contention is the USPTO information as to the registration.
Respondent contends that Complainant’s Additional Submission
constitutes a new set of deceptive, misleading and flat-out dishonest papers,
in a further attempt to wrest the domain name at issue from Respondent. Respondent contends that Complainant has not
proved that Respondent is a bad faith actor who registered the domain name at
issue with the deliberate intent to profit off the Trademark.
Respondent sets forth a list of contended “un-refuted facts.”
Respondent argues that Respondent’s use and
registration of the domain name was legitimate.
First, Respondent contends that the Complainant’s rights in the
Trademark are limited.
Respondent contends that the rights in the Trademark are limited to
“television transmission services by means of satellite.” Relating to this contention is the USPTO
information as to the registration.
Respondent contends that constructive notice is immaterial because
Complainant does not own exclusive rights to the Trademark and numerous panels
have found that constructive notice (especially of obscure marks) is
insufficient to support a finding of bad faith intent.
Respondent does acknowledge that Respondent ran a quick Yahoo! search
on “scola” prior to acquiring the domain name at issue, and that a link to
Complainant’s Web site was likely on that list.
Respondent contends that, prior to being contacted by counsel for
Complainant, Mr. Wick was not a user of Complainant’s Web site and was unaware
of the nature and extent of Complainant’s business. Respondent contends that Mr. Wick did not
click on any of the links found in the Yahoo! search, but learned from the
search that no single individual or entity could claim ownership to the last
name “scola” used by many businesses. Relating
to these contentions is a Supplemental Declaration of Mr. Wick.
Respondent contends that Complainant has cited no authority to support
its claim that Respondent cannot legitimately use the domain name at issue in
connection with a directory listings service.
Respondent contends that failing to take the advice in its counsel’s
article, cited by Complainant, that Respondent should have performed a
trademark clearance search prior to registering the domain name at issue, does
not constitute evidence of bad faith, particularly in a case like the present
where the name is generic and widely used.
Respondent takes issue with Complainant’s argument based on “scola” not
being a common last name. Respondent
argues that the Panel should ask whether Mr. Wick was familiar with “scola” as
a last name at the time he registered the domain name at issue, and consider
Mr. Wick’s history of registering surnames.
Relating to this contention is Mr. Wick’s declaration. Respondent again points out the third party “scola”
sites that coexist with Complainant’s Web site, and states that it is disingenuous
for Complainant to argues confusion when Complainant started its Web site at
<scola.org> after a <scola.com>
Web site had been running for several years.
Second, Respondent contends that it made legitimate use of the domain
name at issue in its business.
Respondent contends that operating a directory service is a legitimate
business. Relating to this contention is
a Yahoo! search showing numerous yellow pages and white pages sites on the
Internet. Respondent contends that at
its Web site using the domain name at issue, Respondent provides links to
twenty-six different “scola” individuals and businesses.
Third, Respondent contends that it is not associated with “Tom Baron.” Respondent contends that Mr. Wick does not
know Tom Baron (referring to Mr. Wick’s Declaration), and that there is no
proof that Tom Baron and Respondent share the same address. Respondent contends that there is no person
named Tom Baron in the WHOIS records for the domain name at issue, that Mr.
Pederson has not produced the alleged offer to buy the name that his firm
purportedly received from Mr. Baron.
Respondent contends that Complainant has not disclosed the basis for its
conclusion that Respondent and Mr. Baron share the same address, other than to
say that the WHOIS information at some point in early September 2007 reflected
Mr. Wick’s name and address. Respondent
also contends that it would it have made no sense for Mr. Wick to solicit
counsel for Complainant to buy the domain name at issue and then not open the mail
when the response letter arrived.
Respondent speculates that Tom Baron could have been an alias for
another bidder for the domain name at issue, or that use of the name may have
been a scam.
Fourth, Respondent contends that Mr. Pederson’s affidavits should be
disregarded.
Respondent contends that the Supplemental Affidavit of Mr. Pederson
does not specify on what date prior to October 31, 2007 he visited the Web site
of Respondent (and found no references to “scola” individuals or businesses). Respondent contends that Mr. Pederson’s
statement that Respondent had not placed any references to “scola” individuals
or businesses prior to October 31, 2007 is consistent with Mr. Wick’s
Declaration that it took him some time to develop the site after registering
the domain name at issue on September 2, 2007.
Respondent contends that Mr. Pederson’s remaining statements in his
Supplemental Affidavit, concerning the conversation that he initiated with Mr.
Wick, are flawed on the ground that Mr. Pederson selectively omitted or
misrepresented crucial facts (offer to settle, Mr. Wick telling him that he
paid $7,000 for the domain name at issue, details of the alleged extortion
attempt, that the facts in his first affidavit were truthful, and discrepancies
exposed in the Response).
Fifth, Respondent contends that the remainder of Complainant’s
Additional Submission are filled with misleading statement, speculation and
innuendo, including: Respondent “misdirecting individuals from Complainant’s
domain” (no evidence having been introduced that “scola” is exclusively or even
primarily associated by the public with Complainant); Respondent admitting to
misdirecting 15% of Internet users who search for Web sites using their
browsers (relating to this contention is an article from Mercury News);
Complainant contending that “scola” is not a popular surname and should not be
treated the same as common dictionary words (citing authority for the
proposition that a surname, even a rare one, may be held primarily merely
descriptive); and the Trademark being
incontestable (arguing that what is important is the scope of the Trademark).
Respondent contends that the Complaint fails
to establish bad faith.
First, Respondent contends that bad faith can be inferred from domain
name registration of a descriptive mark only if that mark is well known and a
strong identifier of source. Respondent
again contends that the Trademark is obscure, used by thousands of persons
worldwide, and known to Respondent as a last name at the time of registration.
Second, Respondent contends that bad faith cannot be inferred from Mr.
Wick’s past history. Respondent contends
that Mr. Wick started registering surname domain names several years before
Complainant contacted him or filed this dispute, and that he operates
directory-styles virtual Yellow Pages sites.
Respondent contends that in none of the cases cited by Complainant was
Mr. Wick shown to have proactively called or written to a trademark holder
offering to sell a domain name.
Respondent argues that Complainant has submitted no credible evidence to
the contrary – only an ambiguous affidavit from his attorney who already filed
a misleading and deceptive affidavit.
Respondent requests that the Panel decide this case on its own, rather
than impute bad faith from Mr. Wick’s no longer held belief that he was
protected under the First Amendment in registering domain names whether they
were related to well-known trademarks or not.
Respondent contends that none of the cases cited by Complainant involved
Mr. Wick’s commercial use of a domain name in connection with directory-style
listings.
FINDINGS
The
certification required by ¶ 3(b)(xiv) of the Rules is
the minimum to demonstrate the admissibility of the factual contentions made by
a complainant, and the certification required by ¶ 5(b)(viii) of the Rules
is the minimum to demonstrate the admissibility of the factual contentions made
by a respondent. Without certification, a Panel may
choose not to consider any factual statements, even in the case of pro se parties.
In this case, Complainant has provided the required ¶ 3(b)(xiv) certification, and additional documents and affidavits. The Panel finds that all of the factual contentions made by Complainant are admissible and will be given weight as appropriate.
Respondent has provided the required ¶ 5(c)(vii) certification, and additional documents and declarations. The Panel finds that all of the factual contentions made by Respondent are admissible, and will be given weight as appropriate.
DISCUSSION
¶ 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.”
¶ 4(a) of the Policy requires that the Complainant must prove each of
the following three elements by a preponderance of the evidence to obtain an
order that a domain name should be cancelled or transferred:
(i) the
domain name registered by the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
(ii) the
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.
The Panel finds that Complainant has established rights in the
Trademark, through its possession of U.S. Trademark Registration No. 1,536,803.
The
Respondent has not disputed the corresponding contention
of Complainant. Respondent’s claimed unawareness of the
Trademark is no defense, at least with respect to this first factor under the
Policy. AB Svenska Spel v. Andrey Zacharov, D2003-0527 (WIPO Oct. 2,
2003).
The Panel finds that the domain name at issue is identical to Complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.” See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
Respondent has not disputed the corresponding contention of Complainant.
The Panel thus finds that the domain name at issue is for the purpose of the Policy identical to the Trademark.
Complainant has met its burden of proof under ¶ 4(a)(i) of the Policy.
Once Complainant makes a prima facie case in support of its allegations, the burden of production shifts to Respondent to put forward some evidence to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
¶ 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name, for the purposes of ¶ 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondent’s 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 and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non‑commercial 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.
Respondent does not contend that it is commonly known by the domain name at issue, or that it has obtained permission from Complainant to register or use the domain name. The Panel thus finds that Respondent has not established the circumstances of Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent goes at length to and does establish that it uses the domain name at issue in a commercial business consisting of directory-style Internet Yellow Pages. The Panel thus finds that, because of the commercial nature of Respondent’s website, Respondent has not established the circumstances of Policy ¶ 4(c)(iii).
Resolution of ¶ 4(a)(ii) of the Policy depends on whether or not Respondent has established the circumstances of Policy ¶ 4(c)(i), namely, whether Respondent’s operation of a directory of “Scola” references qualifies as a bona fide offering of goods and services.
Respondent claims that its use of scola.com is legitimate because “Scola” is a common Spanish and Italian surname and Respondent’s website provides a directory of links to “Scola”-related websites. It is true that some uses of a descriptive or generic term as a domain name for a directory of links related to that term have been held legitimate by past panels. See Target Brands v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (<target.org> legitimate for directory of hunting related websites); Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (<kaleidoscope.com> legitimate for directory of links to kaleidoscope information); Sweeps Vacuum & Repair Ctr. v. Nett Corp., D2001-0031 (WIPO Apr. 13, 2001) (<sweeps.com> legitimate for directory of sweepstakes-related businesses). Panels have also found legitimate the registration of common surnames to provide vanity e-mail services to persons with that surname. See Buhl Optical Co v. Mailbank.com, Inc., D2000-1277 (WIPO Mar. 1, 2001) (<buhl.com> legitimate for site that sells vanity e-mails to person with the surname "Buhl"); Int'l Raelian Religion & Raelian Religion of France v. Mailbank.com Inc., D2000-1210 (WIPO Apr. 4, 2001) (<rael.com> legitimate for site that sells vanity e-mails to persons with surname "Rael").
In each of these decisions, the respondent had registered a commonly used term to describe (based on the dictionary meaning of the word) the offerings on its website, or registered a surname for the sole purpose of providing vanity e-mail services to people with that surname. It did not matter that a third-party may have held a trademark in that term because the respondent did not, in any way, trade off the trademark value of the term. Rather, respondent traded off the generic or descriptive qualities of the term, and a trademark owner is not entitled to prevent such descriptive uses. Here, in contrast, Respondent’s domain name <scola.com> includes links that trade off both the descriptive and trademark qualities of the term “SCOLA.” Although non-commercial links to persons or towns named “Scola” may, in appropriate circumstances, qualify as a fair use under § 4(c)(iii), the inclusion of links to websites based on SCOLA trademarks cannot be deemed a bona fide use and therefore are not legitimate. Chanel, Inc. v. ESTCO Tech. Group, D2000-0413 (WIPO Sept. 18, 2000) (it is not a legitimate interest for respondent to create a directory to Chanel stores and products using domain names containing the CHANEL trademark). Furthermore, Respondent’s inclusion of extensive unrelated advertising on the site suggests that the list of “Scola” related links is really a pre-text, and that Respondent’s true intent is to lure Internet users to the site because of the trademark and descriptive value of the “Scola” name and then divert those Internet users to review Respondent’s advertising and directory-related services.
Moreover, even if Respondent’s present use of <scola.com> were arguably legitimate, Complainant has alleged that, prior to receipt of its cease and desist letter on October 31, 2007, Respondent’s website did not contain the directory of links that it now does. If this is true, then Respondent’s allegedly bona fide use did not occur “before any notice of the dispute,” and Respondent would be unable to establish a legitimate interest in the domain name based on prior use of the “Scola”-related directory. Although Respondent denies this allegation, there is no evidence in the record of legitimate use prior to October 31, 2007 because Respondent has enabled robots.txt in order to block access to archives of its Web site, making it impossible for Complainant or the Panel to verify its assertions. In light of Respondent’s blocking of the archived versions of the Web site, the Panel will assume that Complainant’s reasonable allegations of historical use are true. See iFranchise Group v. Bean / MDNH, Inc. / Moniker Privacy Servs., D2007-1438 (WIPO Dec. 18, 2007).
Respondent might nevertheless have been able to salvage its legitimacy argument if it could have shown “demonstrable preparations to use” <scola.com> in a legitimate manner prior to October 31, 2007.[i] Although demonstrable preparations to develop an appropriate network of descriptive sites has been held to constitute a legitimate interest in other cases, see Empresa Municipal Promoción Madrid S.A. v. Easylink Servs. Corp., D2002-1110 (WIPO Feb. 26, 2003) (registration of <madrid.com> as part of a network of city-related domain names constituted demonstrable preparations to use); SportSoft Golf, Inc. v. playermagazine, FA 95289 (Nat. Arb. Forum Sept. 14, 2000) (registration of <playersmagazine.com> as part of gambling-related network), for the reasons stated above, the Panel is unconvinced that Respondent is using these “surnames” primarily in their descriptive sense. Thus, even if Respondent could show demonstrable preparations prior to October 31, 2007, because the preparations were for a Web site that the Panel has deemed illegitimate, those preparations would not save Respondent’s domain name registration. Furthermore, Respondent has also blocked archive access to its other “surname” domain names, making it impossible for him to rebut Complainant’s prima facie case under ¶ 4(a)(ii).[ii]
The Panel thus finds that the
domain name at issue has been used (in the pre-directory page) and is being
used (in the current directory page) to divert Internet users to commercial Web
sites unrelated to Complainant’s business, and as such has not been used in the
conduct of a bona fide business. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly
similar to Complainant’s mark to divert Internet users to websites unrelated to
Complainant's business does not represent a bona
fide offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also U.S. Franchise Sys.,
Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the
complainant’s mark and the goodwill surrounding that mark as a means of
attracting Internet users to an unrelated business was not a bona fide offering of goods or services).
The Panel finds that Complainant has met its burden under ¶ 4(a)(ii) of the Policy.
Registration and Use in Bad
Faith
The circumstances of ¶ 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under ¶ 4(a)(iii) of the Policy can be established.
¶ 4(b) of the Policy reads:
[T] he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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 or service on your web site or location.
Proof of ¶ 4(a)(iii) generally requires more than assertions of bad faith. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith). Lack of rights or legitimate interest under Policy ¶ 4(a)(ii) does not automatically translate into a finding of bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has not established any of the circumstances of ¶¶ 4(b)(i), (ii), or (iii) of the Policy. Respondent has demonstrated that any offer to sell by Respondent was for its documented out-of-pocket costs directly related to the domain name at issue. Complainant has not demonstrated that Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name at issue. Although Respondent has been found wanting in numerous prior UDRP proceedings, the Panel accepts Respondent’s contention that none of those involved any attempt to sell the involved domain name to the trademark owner. Nor is there any evidence of intent on the part of Respondent to primarily disrupt the business of Complainant, which has its own domain name <scola.org> employing one of the significant top level domains and which clearly is not a competitor of Respondent.
Complainant’s other contentions as to bad faith are based on the registration of the Trademark, the asserted constructive and actual knowledge by Respondent of Complainant and the Trademark, and the use of the domain name at issue to divert Internet traffic to Respondent’s commercial Web sites. Respondent’s defenses are based on its asserted ignorance of Complainant and the Trademark, the use of the domain name to direct Internet traffic to “Scola” individual and businesses, and the asserted requirement for a Trademark consisting of generic or common terms or surnames to be famous in order to support a finding of bad faith.
After due consideration, the Panel finds that Respondent has engaged in bad faith in this matter, with respect to the circumstances of ¶ 4(b)(iv) of the Policy and with respect to the general requirements of ¶ 4(a)(iii).
There are two main factors present that support a finding of bad faith under ¶ 4(a)(iii) and 4(b)(iv) of the Policy.
First, there is evidence that Respondent registered the domain name with knowledge of Complainant’s mark. Although the parties dispute whether Respondent admitted knowledge of the mark in a phone conversation with Complainant’s lawyer or whether it merely admitted knowledge of the surname Scola, Respondent has conceded that Complainant’s website was probably on the list generated by its search on the word “Scola.” Where Respondent was planning to acquire this domain name and Respondent specifically conducted a search that, in all likelihood, revealed the existence of Complainant’s website, Respondent cannot thereafter ignore the search result and become willfully blind to Complainant’s trademark rights, the attractive force of the Trademark and likelihood of confusion, whether initial interest or otherwise. mVisible Techs., Inc. v. Navigation Catalyst Sys., Inc., D2007-1141 (WIPO Nov. 30, 2007) (“Although there may be no obligation that a domain name registrant conduct trademark or search engine searches to determine whether a domain name may infringe trademark rights, a sophisticated domainer who regularly registers domain names for use as PPC landing pages cannot be willfully blind to whether a particular domain name may violate trademark rights. In this context, a failure to conduct adequate searching may give rise to an inference of knowledge. Furthermore, if a party elects to conduct such searches to show its absence of bad faith, the searches should be properly done to make it likely that any existing trademark rights will be found.”).
Second, with regard to the general requirements of ¶ 4(a)(iii) of the Policy, Respondent intentionally employed
robots.txt to block archive access to all of his domain names. This has been deemed a
strong indicia of bad faith. See
iFranchise Group v. Bean / MDNH, Inc. / Moniker Privacy Servs. [23658], D2007-1438 (WIPO Dec. 18, 2007) (“It is the opinion of
the Panel that absent convincing justification for the employment of robots.txt
in a given case, the use of the device may be considered as an attempt by the
domain name owner and operator to block access by the panel to relevant
evidence… the use of robots.txt in the particular case may be considered as an indicia of bad faith.”).[iii]
The
Panel thus finds that Complainant has met its burden under ¶ 4(a)(iii) and 4(b)(iv) of the Policy.
DECISION
Complainant having established all three elements required under the
Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <scola.com> domain name be TRANSFERRED
from Respondent to Complainant.
Bruce E. O’Connor, Chair
David H. Bernstein, Panelist, Dawn Osborne,
Panelist
Decision Date: February 1, 2008
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[i] Although October 31, 2007 is the date Respondent acknowledges it received actual notice of the dispute, there is substantial evidence indicating an earlier date. Registrant admits that it conducted a Yahoo! search for “scola” prior to obtaining the domain name on September 2, 2007 and that a link to Complainant’s Web site was likely in the search results. Respondent does not deny that it received either the certified mail or the e-mail versions of the cease and desist letters from Complainant’s counsel sent on September 10 and October 4, 2007. Respondent says only that Mr. Wick did not receive cease and desist letters addressed to his attention. Respondent explanation for refusing delivery of one of the certified versions addressed to Tom Baron is hard to believe. Although Respondent contends that it has no idea who the addressee, Tom Baron, was, it offers no explanation as to how a WHOIS record for its own domain name could have included the name of Tom Baron. The Panel doubts that this name was made up by counsel for Complainants, and relies on the declaration of Mr. Bydalek for proof of proper addressing and service of the cease and desist letters to the name and address cited in a WHOIS record for the domain name at issue. Although this evidence is sufficient to support an earlier date of notice, it is not dispositive of the Panel’s decision.
[ii] Complainant’s contentions are based on the
constructive notice effect of its
[iii] The Panel also has considered whether the use by Respondent of a name (Tom Baron), of which Respondent disclaims all knowledge, at some point in registration of the domain name at issue, could constitute bad faith under the requirement of Policy ¶ 4(a)(iii). Home Dir., Inc. v. HomeDirector, D2000-0111 (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith); see also Quixtar Invs., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that use of false registration information constitutes bad faith). In view of the findings of bad faith made by the Panel in this case, the Panel declines to address this issue.