Anu Enterprises Inc. v. DomainRegistry.com Inc.
Claim Number: FA0804001175094
PARTIES
Complainant is Anu Enterprises Inc. (“Complainant”), represented by Michelle
C. Burke, of McDermott Will &
Emery LLP,
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <anu.com>, registered with Domainregistry.com, Inc.
PANEL
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
R. Glen Ayers, Jr., Terry Peppard and Dennis A. Foster (chair) as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 3, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 4, 2008.
On April 7, 2008, Domainregistry.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <anu.com> domain name is registered with Domainregistry.com, Inc. and that the Respondent is the current registrant of the name. Domainregistry.com, Inc. has verified that Respondent is bound by the Domainregistry.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 30, 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@anu.com by e-mail.
A timely Response was received and determined to be complete on April 30, 2008.
A timely Additional Submission, which complied with the requirements of Supplemental Rule 7, was received from Complainant on May 5, 2008. The Panel has taken the supplemental filing into account in reaching its Decision. The Respondent replied with an Additional Submission on May 10, 2008, and the Panel has also taken the Respondent’s further filing into account.
On
May 6, 2008, pursuant to Respondent’s request to have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed R. Glen Ayers, Jr., Terry Peppard and Dennis A. Foster as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
- Complainant operates real estate
management services. Specifically, Complainant
owns and operates real estate properties for Versatile Card Technologies, Inc.
in the states of
- Complainant has used its service mark, ANU, since November 1994 in connection with its business. It owns a United States Patent and Trademark Office (the “USPTO”) registration for the mark. Complainant also has common law service mark rights in its trade name ANU ENTERPRISES.
- On May 16, 2007, Complainant contacted Respondent concerning termination of its use of the disputed domain name and a transfer of rights. Respondent replied on May 30, 2007, rejecting Complainant’s demands. Respondent refused to respond to Complainant’s subsequent communications of July 10, 2007 and September 14, 2007.
- The disputed domain name, <anu.com>, is identical to Complainant’s registered service mark and replicates the distinctive element of its common law mark and trade name.
- Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not consented to the use of the name. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Neither Respondent nor any business owned by Respondent is commonly known by the name. Finally, Respondent is not making noncommercial or fair use of the name.
- Prior to Complainant’s contact with Respondent, the website at the disputed domain name was inactive, offering only web hosting services and providing links to advertising for third party websites. Content added after such contact cannot be cited to sustain Respondent’s claim to rights or legitimate interests in the disputed domain name.
- The disputed domain name was registered in bad faith. Respondent was contacted by Complainant and put on notice of Complainant’s rights, but refused to transfer the name. Instead, Respondent has tried to obscure ownership of the disputed domain name. Since at least August 2007, Respondent’s current use implies deceptively that “Anu.com” owns the name and that it is a legitimate business offering web hosting services.
- Further evidence of Respondent’s bad faith is an email from a third party which attests to Respondent’s attempt to sell the disputed domain name for a sum far in excess of Respondent’s registration costs.
B. Respondent
- Both Respondent and Complainant have USPTO registrations for the service mark ANU. Complainant did not oppose Respondent’s registration.
- ANU is a weak mark, used by many
entities globally, including, among others, the
- There are many companies using
the name, ANU Enterprises, including one each in the states of
- There is no reasonable argument that public confusion arises between Complainant’s mark and Respondent’s use of the disputed domain name. Complainant and Respondent operate in different businesses: Complainant in real estate services; Respondent in Iinternet services.
- Complainant has provided no evidence of its active promotion of its mark, submitting only business cards, W-2 tax forms, corporate meeting minutes and wage reports. There is no widespread public connection of the mark with Complainant.
- When the current president of Respondent registered the disputed domain name in March 1999, he had no knowledge of Complainant. Respondent then used the name, easy to pronounce and remember, as a conduit for Internet sponsored searches, a legitimate business. For example, during the week beginning April 17, 2008, 545 searches were conducted using Respondent’s website. As a result of such use, Respondent obtained common law rights in the ANU.COM mark.
- Respondent’s registration of the disputed domain name was not in bad faith, as Complainant did not seek to register its mark with the USPTO until February 8, 2006 (first use having begun in September 2004), years after Respondent’s registration of the name.
- Respondent did not offer to sell the disputed domain name to Complainant. Respondent may have entertained an offer from an undisclosed third party (through a purchasing agent) to buy the name, but did not respond favorably to that offer. Such offer would have occurred prior to Respondent’s knowledge of Complainant’s existence.
- Respondent has engaged in no deception regarding the registration and ownership of the disputed domain name. The name was simply transferred from an entity owned by Respondent’s president to Respondent. Furthermore, search engine content found at the website located at the disputed domain name was in effect prior to the first communication between the two parties in this case.
- Complainant should be found guilty of reverse domain name hijacking. Because of its limited scope, Complainant has no need to publicize its mark and has not done so. Complainant obtained its USPTO service mark only after it learned through a third party it could not buy the disputed domain name. Complainant failed to defend its mark from a competing USPTO registration and seeks the domain name in dispute solely for speculative future business. Complainant cannot support its allegations of consumer confusion between its service mark and Respondent’s use of said name.
C. Additional Submissions
Complainant
- The strength of Complainant’s service mark, ANU, is irrelevant in determining whether Complainant has rights in that mark.
- Respondent filed for its service mark rights in the mark ANU only after being contacted by Complainant relative to this dispute, meaning that Respondent’s conflicting rights should be accorded little weight.
- Respondent contradicts itself when first contending that ANU is a weak mark because so many entities use it, then contending that the mark appeared to be unconnected to any company or business when Respondent registered the disputed domain name. This contradiction is evidence of Respondents bad faith intentions in registering the name.
- Respondent suggests that it conducted a search for conflicting rights when it registered the domain name in question, but a simple search would have shown that Complainant, incorporated in November 1994, has such rights. Whether or not Complainant conducts business over the Internet or the public associates Complainant’s mark with it does not mitigate Complainant’s rights in that mark.
- Respondent probably acquired the disputed domain name because Respondent wanted to capitalize on the fact that many companies around the world used the mark ANU. The Respondent can be found to have been acting in bad faith even if its actions are outside the circumstances listed in the Policy.
- Respondent has failed to provide evidence to support its allegations of reverse domain name hijacking.
Respondent
-The Respondent has used the disputed domain name for several years. This includes operation of a search engine and providing links to other websites that supply services, including web hosting.
-The USPTO recognized that there would be no confusion between the marks registered by Domain Registry and Complainant.
-Internet commerce in 2008 has grown dramatically from 1999. Many persons and businesses now making use of the mark ANU on the Internet did not do so in 1999.
FINDINGS
Complainant is a
The Respondent is listed as the registrant of the disputed domain name, and the record of registration was created on March 6, 1999. Respondent uses the disputed domain name for a website that provides sponsored searches for Internet users.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(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;
(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.
Complainant has
presented evidence of its valid registration of the service mark ANU with the
USPTO. (Exhibit 7).
In line with prior UDRP panels, the Panel accepts this evidence as
sufficient to establish Complainant’s rights in that mark for the purposes of
paragraph 4(a)(i) of the Policy.
The Panel also determines that the disputed domain name <anu.com> is identical to Complainant’s mark ANU. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000); and Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (finding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").
Ergo, the Panel finds that Complainant has succeeded in proving that the disputed domain name is identical or confusingly similar to a service mark in which Complainant has rights.
Complainant has
established valid rights in its mark to the Panel’s satisfaction and asserted
that it never authorized Respondent to use that mark in a domain name, thus
sustaining a prima facie case that
Respondent has no rights or legitimate interests in the disputed domain
name. It is then incumbent upon
Respondent to come forward and rebut that case.
See, for example, AOL LLC v. Gerberg, FA 780200 (Nat. Arb.
Forum Sept. 25, 2006); and
Hanna-Barbera
Productions, Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Without relying necessarily on compliance with one of the criteria suggested in Policy paragraph 4(c), Respondent has put forth a persuasive argument supporting its claim to rights and legitimate interests in the disputed domain name. Respondent asserts that it registered the disputed domain name before Complainant obtained its rights in the corresponding service mark. It is clear to the Panel that the registration of the disputed domain name in 1999 preceded the registration of Complainant’s trademark in 2007. Furthermore, the USPTO registration that Complainant submitted in evidence (see Exhibit 7), indicates that the Complainant did not begin using the mark ANU in commerce before September, 2004.
Complainant counters this argument by claiming that it had common law rights in its mark much earlier than its registration with the USPTO. Complainant contends that it began operating under the mark or its equivalent mark, ANU ENTERPRISES, in 1994. However, Complainant’s adoption of that trade name in 1994 does not necessarily mean that Complainant had acquired common law rights by 1999.
In determining whether common law rights, or a “secondary meaning” exclusively associated with an entity have vested in a mark, prior Policy panels have considered several factors. See, for example, Control Techniques Ltd. v. Lektronix Ltd., D2006-1052 (WIPO Oct. 11, 2006); and Candy Direct, Inc. v. itsalldirect2u.com, FA514784 (Nat. Arb. Forum Aug. 22, 2005) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). The Panel concedes that longevity of use is one crucial factor in a common law rights analysis, and Complainant’s record is not insufficient in that regard. However, Complainant has made no showing with respect to the degree of its sales or volume of its revenues. In fact, it admits to having had only one client during its operations. Similarly, Complainant has presented no evidence as to money spent on advertising or promotion and does not point to any media coverage of its business. On the contrary, it merely offers as evidence employee business cards, tax forms and various internal reports. Meanwhile, Respondent has supplied the Panel with compelling evidence that many other entities are known by the name or initials ANU. In sum, the record falls far short of supporting Complainant’s assertion that it possessed common law rights in its mark prior to Respondent’s registration of the disputed domain name.
Therefore, since the Panel finds that Respondent registered the disputed domain name <anu.com> before Complainant can claim reasonably to have achieved service mark rights in its mark ANU, the Panel concludes that Respondent has rebutted Complainant’s prima facie case and demonstrated Respondent’s rights and legitimate interests in the name. See EU Property Portfolio Ltd. v. Salvia Corp., FA 873726 (Nat. Arb. Forum Feb. 7, 2007); Anwar Kazi v. Domain Deluxe, FA 488845 (Nat. Arb. Forum July 18, 2005); Topp Construction Services, Inc. v. Ho Kyoung Trading Co., Ltd., FA 292873 (Nat. Arb. Forum November 1, 2004) (“…the Panel concludes that Respondent has rights and legitimate interests in the [disputed] domain name because it registered the [disputed] domain name before Complainant registered [its] mark, and Complainant has not demonstrated that its rights existed before the [disputed] domain name registration.”); and Warm Things, Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002).
As a result of the foregoing, the Panel rules that Complainant has failed to prove Respondent has no rights or legitimate interests in the disputed domain name.
As Complainant must satisfy all three elements of paragraph 4(a) of the Policy to prevail in this proceeding but has failed to satisfy paragraph 4(a)(ii), the Panel need not examine whether the disputed domain name was registered and is being used in bad faith.
Respondent has asked the Panel to find that Complainant has engaged in an attempt at reverse domain name hijacking in this case. However, Complainant clearly demonstrated its valid service mark rights in a mark identical to the disputed domain name and established a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Moreover, Complainant provided good evidence that it was using its mark prior to registration of the disputed domain name, even if the Panel did not conclude that it had achieved common law rights in that mark by that time. Therefore, the Panel detects no bad faith in Complainant’s filing and will not issue a finding of reverse domain name hijacking.
DECISION
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Dennis A. Foster, Chair R. Glen Ayers, Jr., Panelist Terry Peppard, Panelist
Dated: May 20, 2008
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