It's Just Lunch
International LLC v. Dialog Software
Claim Number: FA0804001177284
PARTIES
Complainant is It's Just Lunch International LLC (“Complainant”), represented by Amy
S. Cahill, of Stites & Harbison PLLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <datingforbusyprofessionals.com>,
registered with Network Solutions, Inc.
PANEL
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.
Paul M. DeCicco, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 10, 2008; the
National Arbitration Forum received a hard copy of the Complaint on April 14, 2008.
On April 15, 2008, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <datingforbusyprofessionals.com>
domain name is registered with Network
Solutions, Inc. and that the Respondent is the current registrant of the
name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 17, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 7, 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@datingforbusyprofessionals.com by e-mail.
Respondent submitted a request for an extension to respond to the
Complaint on April 25, 2008. Pursuant to
Respondent’s request, the National Arbitration Forum granted an extension,
thereby setting a deadline of May 14, 2008 by which Respondent could file a
Response to the Complaint.
A timely Response was received and determined to be complete on May 14, 2008.
An Additional Submission was received from Complainant on May 20, 2008
and determined to be timely and complete in compliance with the National
Arbitration Forum’s Supplemental Rule 7.
On May 24, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Paul M. DeCicco, as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant contends as follows:
Complainant, It’s Just Lunch
International LLC, was founded in 1991 with a single location in
Complainant selected and has used
DATING FOR BUSY PROFESSIONALS since the early 1990’s as a service mark to
promote its services to existing and potential new members in the
Complainant has used continuously and continues to use extensively and prominently the service mark DATING FOR BUSY PROFESSIONALS in disseminating, marketing, and advertising its services through a variety of media, such as written materials, direct mailing campaigns, nationally distributed magazines and newspapers, and broadcast radio and television advertisements.
Complainant has engaged in continuous use of the DATING FOR BUSY PROFESSIONALS service mark for over fifteen years, since as early as 1991. The promotional materials attached to the LaCota Declaration evidence use in commerce of DATING FOR BUSY PROFESSIONALS as a service mark for more than fifteen years, with evidence of use dating back to August 1993.
In addition, Complainant has sought and received a Certificate of Registration for its DATING FOR BUSY PROFESSIONALS service mark on the Supplemental Register and on the Principal Register of the United States Patent and Trademark Office (“USPTO”).
Respondent registered the <datingforbusyprofessionals.com> domain name through Network Solutions, LLC. Although Complainant’s DATING FOR BUSY PROFESSIONALS mark was not registered on the Principal Register prior to the date of Respondent’s domain name registration, Complainant has established rights in the mark that predate Respondent’s domain name registration on May 24, 2002.
As a result of Complainant’s long-time use in commerce and its registration with the United States Patent and Trademark Office of its service mark DATING FOR BUSY PROFESSIONALS, the public has come to know and associate the service mark exclusively with Complainant as the source of high-quality matchmaking and dating services throughout the United States and abroad.
The at-issue domain name is identical to Complainant’s service mark.
Respondent has no rights or legitimate interests in respect to the <datingforbusyprofessionals.com> domain name. Complainant did not grant any authorization to Respondent in its use of the <datingforbusyprofessionals.com> domain name. Moreover, Respondent is not a licensee of Complainant, nor associated with Complainant in any way; nor upon information and belief is Respondent affiliated with or commonly known as <datingforbusyprofessionals.com>.
Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without the intent for commercial gain. Until being contacted by Complainant, Respondent was misleadingly diverting consumers to a web page that displayed “links” to dating-related goods and services, such as “Dating in San Francisco,” “San Francisco Escort Services,” and “Dating Men.” These links were not associated with any legitimate business offered by Respondent, but instead were revenue-generating links that did not resolve to the goods or services described.
Respondent
admits that it has not used the <datingforbusyprofessionals.com>
domain name in any commercial way.
Therefore, Respondent could not have established any bona fide common law based rights in the mark.
Mere registration of a domain name is not sufficient to confer rights or
legitimate interests. Moreover, nonuse
of a domain name for a sufficiently long period of time may be considered
evidence of a lack of rights or legitimate interests in the domain name.
Similarly,
the mere assertion by a respondent that it had plans for future commercial use
of a domain name is not sufficient. Even
where there is some evidence that plans to use a domain name were underway, a respondent
may have waited too long to begin using the mark to ever establish use of the
domain name.
When the
at-issue domain name is used only to link to another site or to post an “under
construction” sign, “use of the domain name for purposes of Paragraph 4(c)(i) is not established.”
The domain name was registered in bad faith by Respondent. Respondent’s web site diverted visitors intending to view Complainant’s site and redirected them to what appears to be “click though” revenue-generating links. Visitors never actually reached legitimate web sites associated with these links. No other content, besides links, appeared on the web page. Respondent’s use of the domain name as a link to dating-related materials created the impression that these links are somehow affiliated with or endorsed by Complainant. Respondent’s conduct does not constitute a bona fide offering of goods and services as those terms are employed in Paragraph 4(c)(i) of the Policy.
Even if the links listed on the web site associated with the <datingforbusyprofessionals.com> domain name did not generate revenue, Respondent’s list of links to what appeared to be competing services evidences its intent to disrupt Complainant’s business under Policy ¶ 4(b)(iii). Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).
Upon being contacted by Complainant regarding Complainant’s rights in the DATING FOR BUSY PROFESSIONALS mark, Respondent altered its website to remove the revenue generating “click-through” links and replaced the website with an “under construction” holding page. Such change was made for the obvious purpose of attempting to appear to be acting in “good faith” in order negotiate a sale of the domain name. Respondent has extended a veiled solicitation to sell the <datingforbusyprofessionals.com> domain name to Complainant in its very first contact with Complainant.
Respondent has directed “robots” to block access to historical versions of its website(s) associated with the <datingforbusyprofessionals.com> domain name. The only reason for hiding past uses of the website is to cover-up past bad faith uses of the website. This technological obfuscation is further evidence of Respondent’s bad faith use of the domain name <datingforbusyprofessionals.com>.
Respondent states that it “registered the domain as part of a comprehensive business plan that centered on providing networking opportunities, restaurant reviews, upcoming local lecture schedules, and other locally-focused information related to academic and social events for working, single professionals.” Nevertheless, it has made no use of the domain name in connection with the purported business plans in the past seven years. Long term inactivity of a domain name in connection with a legitimate business is evidence of bad faith.
Complainant attempted to contact Respondent in an effort to have it voluntarily return the domain name to Complainant. Unfortunately, Respondent has not agreed with Complainant’s position and has refused to return the domain name. Complainant’s business has been harmed by Respondent’s unauthorized and bad faith registration and use of the <datingforbusyprofessionals.com> domain name. Complainant wishes to have the registration for this domain name returned to it, in order for the domain name to be used for its intended purpose of educating the public about Complainant’s services, and not as a set of jump links to false content.
By using
the domain name in the fashion described Respondent has intentionally and in
bad faith attempted to attract, for commercial gain, Internet users to its web pages by creating a likelihood of
confusion with Complainant’s
DATING FOR BUSY PROFESSIONALS service mark as to the source, sponsorship,
affiliation, or endorsement of its web page for commercial gain. ICANN Policy ¶
4(b)(iv).
B.
Respondent
Respondent contends as follows:
Complainant
did not possess trademark rights to DATING FOR BUSY PROFESSIONALS at the time
of Respondent’s registration of the at-issue domain name. By registering DATING FOR BUSY PROFESSIONALS
on the Supplemental Register, Complainant admitted to the United States Patent
and Trademark Office that Complainant’s use of DATING FOR BUSY PROFESSIONALS
was merely descriptive and that it did not have an exclusive right to it at
that time. The USPTO’s requirement that
Complainant disclaim “dating” from its mark, so as to afford it no exclusive
use of the word, only further evidences the lack of rights to the at-issue
domain name. It wasn’t until almost
three years after Respondent had registered the domain name that Complainant
was able to successfully register DATING FOR BUSY PROFESSIONALS on the
Principal Register of the USPTO.
Respondent
was the first to register the at-issue domain name. Respondent’s reason for selecting <datingforbusyprofessionals.com>
was two-fold. First, Respondent
registered the at-issue domain name as part of a comprehensive business plan
that centered on providing networking opportunities, restaurant reviews,
upcoming local lecture schedules, and other locally-focused information related
to academic and social events for working, single professionals. Second, Respondent registered the at-issue
domain name for its descriptive qualities, many of which were noted by other
similar websites, of the service he was planning to offer. The at-issue domain name was not registered
with the purpose of selling to Complainant, disrupting its business, preventing
it from acquiring a domain name incorporating its mark, or to confuse consumers. Respondent was entirely unaware of
Complainant’s existence, let alone any trademark rights Complainant may have
had, when it registered the domain name in good faith.
There is no
evidence that Respondent had knowledge of Complainant’s mark at the time of
registration. On May
24, 2002, Respondent registered the <datingforbusyprofessionals.com>
domain name before Complainant even filed for a service mark on the Principal
Register. As of May 27, 2002,
Complainant’s own website contained no use of DATING FOR BUSY
PROFESSIONALS. Only after having
registered the Disputed Domain and having begun to invest significant time and
money into the development of its social networking website and corresponding
business at the at-issue domain name did Respondent learn of Complainant’s
existence. However, Respondent remained
intent on continuing to use <datingforbusyprofessionals.com> given
its good faith registration and intended legitimate use of the Disputed Domain. Respondent registered the at-issue domain
name without knowledge of Complainant, has made significant preparations and
investments to use the name.
Complainant’s
attempt to retroactively monopolize all things related to the descriptive
expression DATING FOR BUSY PROFESSIONALS in an effort to acquire the at-issue
domain name equates to reverse domain name hijacking. Complainant is ignoring its prior
acknowledgement and admission, as evidenced by its registration with the USPTO
on the Supplemental Register, that DATING FOR BUSY PROFESSIONALS is, even as of
today’s date, let alone back in 2002, merely descriptive and therefore is not
entitled to any exclusive right.
Moreover, Complainant is ignoring its own descriptive use of the
expression and the fact that Respondent’s registration of the disputed domain name
predated any rights Complainant could claim to DATING FOR BUSY
PROFESSIONALS. Ultimately, Complainant
cannot establish a prima facie case under the UDRP since Respondent has
not made a commercial use or attempted to sell or monetize the at-issue domain
name in bad faith. Rather, Respondent
has only made preparations to use the at-issue domain name, during which the
domain name has remain parked.
At the time
of Respondent's registration of the subject domain, Complainant's alleged
DATING FOR BUSY PROFESSIONALS mark had not been registered on the Principal
Register, had not possessed secondary meaning so as to acquire distinctiveness,
and had not been made known to Respondent.
C.
Additional
Submissions
Complainant additionally contends as follows:
Complainant had established common law rights in its
service mark years before the disputed domain
name was registered under ¶ 4(a)(i) of the Policy.
Complainant’s business was founded in 1991 and began using DATING FOR BUSY PROFESSIONALS as a service mark shortly thereafter. During the approximate eleven-year period between 1991 and May 24, 2002, Complainant used its DATING FOR BUSY PROFESSIONALS mark prominently and extensively. In 2002, Complainant and its franchisees spent an estimated $2,500,000.00 advertising its services in commerce. Complainant previously submitted evidence of service mark use prior to May 24, 2002 in support of its Complaint, including direct mail pieces and advertisements that appeared in nationally distributed magazines and newspapers including:
Complainant has now produced evidence that it has used DATING FOR BUSY PROFESSIONALS as a service mark for over fifteen years and as a result of widespread use and media attention consumers recognize and have come to know of Complainant’s mark as an indicator of commercial source. To the extent that Complainant’s common law rights in its mark predate Respondent’s registration of the domain name in dispute, these rights are sufficient to satisfy the UDRP.
At the time Respondent registered the domain name <datingforbusyprofessionals.com> Complainant’s DATING FOR BUSY PROFESSIONALS mark had been registered on the Supplemental Register for nearly four years and had been in use more than eleven years. At least one panel considering the UDRP’s application to non-inherently distinctive marks has held that evidence of use of a descriptive mark for five years renders an otherwise descriptive mark valid under common law, and found transfer would be appropriate had the registered domain name been identical to Complainant’s mark.
It is not relevant that the DATING FOR BUSY PROFESSIONALS mark did not appear on Complainant’s web site on May 27, 2002, the date that Respondent chose to retrieve from the “WayBack” machine. Internet advertising of Complainant’s mark at the time of registration of the disputed domain name is not required to prove Complainant’s common law rights at the relevant time.
A disclaimer of the single word “dating” in Complainant’s USPTO registration on the Principal Register is inconsequential to its trademark status.
Bad faith may be inferred by Respondent’s long
period of non-use. It is not tenable that Respondent has held the <datingforbusyprofessionals.com>
domain name for six years with a good faith intent to use it in business,
without ever starting a business or using the domain name. “Parking” or “warehousing” a domain name for
a significant period of time amounts to bad faith. The rational for treating non-use as evidence
of bad faith is that the first three examples of bad faith listed in ¶ 4(b) of
the Policy can be accomplished by merely holding a domain name without using
it.
Respondent’s registration of a domain name containing Complainant’s mark interferes with Complainant’s business because if Internet users encounter Respondent’s holding page, they are likely to mistakenly believe that Complainant does not have a web presence associated with its DATING FOR BUSY PROFESSIONALS mark.
Respondent’s failure to check whether the mark was available is evidence of bad faith. Given Complainant’s widespread use and USPTO registration of its DATING FOR BUSY PROFESSIONALS mark, it is not credible that Respondent was not aware of Complainant’s ownership and use of DATING FOR BUSY PROFESSIONALS if in fact it conducted research into the availability of the mark. It is not required that Complainant show that Respondent had actual knowledge of Complainant’s rights in DATING FOR BUSY PROFESSIONALS in order to prevail on a bad faith showing. A respondent warrants in its registration agreement that the domain name registration will not infringe upon the rights of third-parties.
Respondent’s efforts to block past versions of the website suggest bad faith. It is not credible that Respondent blocked access to historic versions of the <datingforbusyprofessionals.com> website(s) if, in fact as it maintains, the website was never used commercially for any purpose. Instead, it is reasonable to infer that obscuring past versions of the website was intended to block Complainant’s access to those historic versions and amounts to bad faith.
Respondent permitted the registrar to post links to competing services. Although the domain name registrar, Network Solutions, retains the right to park an “under construction” page in connection with URLs that do not resolve to an actual website, Network Solutions’ own policy permits registrants to request that the holding page be removed. Respondent’s consent to allow links to what appeared to be services competitive with those offered by Complainant permits a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).
Respondent’s ownership of multiple inactive domain names suggests a pattern of conduct and supports a finding of bad faith. Respondent owns 19 domain names.
Respondent provided inaccurate contact information to the registrar. Respondent violated Paragraph 2 of the UDRP and corresponding provision of registration agreement by failing to provide an accurate contact address. Respondent provided the Registrar with the incorrect or an unattended address as evidenced by the fact that mail sent by Complainant’s counsel to Respondent’s record address was returned.
Respondent’s intent to sell the domain name permits an inference of bad faith. Bad faith may be found in circumstances under which an intent to sell may be inferred. Respondent offered to sell its domain name upon receiving a cease-and-desist letter from Complainant, Respondent made no use of the domain, and Respondent has no rights or legitimate interests in the domain name under Policy ¶ 4(b)(i). Taken together, these facts permit an inference of bad faith.
Intent to sell also may be inferred from the fact that Respondent made no legitimate use of the domain name and attempted to maintain the right to use the domain name after notification of complainant’s trademark rights.
FINDINGS
Complainant applied for registration of the
mark DATING FOR BUSY PROFESSIONALS with the United States Patent and Trademark
Office on January 16, 1996 for
registration on the Supplemental Register. The United States Patent and
Trademark Office registered the mark on the Supplemental Register on July
21, 1998. Complainant used the mark
DATING FOR BUSY PROFESSIONALS in commerce since 1992.
Respondent registered that at-issue disputed
domain name on May 24, 2002. At the time that Respondent registered the
domain name it had no actual knowledge of the Complainant’s claims of right in
the DATING FOR BUSY PROFESSIONALS mark nor should it have known that the
Complainant claimed rights to DATING FOR BUSY PROFESSIONALS.
Complainant applied for registration of the
mark DATING FOR BUSY PROFESSIONALS on the Principal Register with the United
States Patent and Trademark Office on February 23, 2004. The United States Patent and Trademark
Office registered the mark on the Principal Register on March 22, 2005.
Complainant waited for approximately 6 years
before complaining about Respondent’s registration.
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 made a threshold showing that it has rights in the DATING FOR BUSY PROFESSIONALS mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”); (Reg. No. 2,175,795 issued July 21, 1998 on the Supplemental Register, filed January 16, 2006); and (Reg. No. 2,934,935 issued March 22, 2005 on the Principal Register, filed February 23, 2004). Additionally, Complainant states that it used this mark since 1992 and that it acquired common law rights in the mark prior to Respondent’s registration of the <datingforbusyprofessionals.com> domain name.
Respondent disputes that
Complainant had common law rights in the at-issue mark at the time the domain name was registered and alleges that its
registration of the <datingforbusyprofessionals.com> domain name therefore pre-dates
Complainant’s trademark rights in the mark. Respondent argues that Complainant should be
denied the requested relief because the <datingforbusyprofessionals.com> domain name is descriptive
and was admittedly decriptive at the time Respondent registered the at-issue
domain name.
However, Complainant’s rights need
not pre-date Respondent’s registration of the disputed domain name in order for
a complainant to prevail under Policy ¶ 4(a)(i). See
AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding
that the UDRP Policy does not require a complainant to have registered its trademark
prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶
4(a)(iii)); see also Javacool Software Dev., LLC v. Elbanhawy
Invs., FA 836772 (Nat. Arb. Forum Jan. 2, 2007) (holding that a
complainant need not show that its rights in its mark predate the respondent’s
registration of the disputed domain name in order to satisfy Policy ¶ 4(a)(i)).
Complainant therefore has established that it has rights in the DATING FOR BUSY
PROFESSIONALS mark pursuant to Policy ¶ 4(a)(i). See
State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June
19, 2006) (“Complainant’s registrations with the United States Patent and
Trademark Office of the trademark, STATE FARM, establishes its rights in the
STATE FARM mark pursuant to Policy ¶ 4(a)(i).”); see also Enter. Rent-A-Car Co. v. David Mizer
Enters., Inc., FA 622122 (Nat. Arb.
Forum Apr. 14, 2006) (finding that the complainant’s registration with the
USPTO for the ENTERPRISE mark established the complainant’s rights in the
mark); see also
Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently
distinctive.").
Additionally, the <datingforbusyprofessionals.com> domain name is identical to Complainant’s mark. It contains Complainant’s registered trademark in its entirety and adds only the generic top-level domain (“gTLD”) “.com.” See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Complainant has
satisfied its burden under Policy ¶ 4(a)(i), having
established that the at-issue domain name is identical to a trademark in which
it has rights.
Under Paragraph 4(a)(ii) of the Policy, Complainant must first make a prima facie showing that Respondent lacks rights or legitimate interests in the at-issue domain name. The threshold for such showing is low. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005). Once a prima facie case is established, the burden then shifts to Respondent who must demonstrate that it nevertheless has rights or legitimate interests in the domain name.
Respondent is not commonly known as
DATING FOR BUSY PROFESSIONALS. Indeed, Respondent urges that DATING FOR BUSY PROFESSIONALS is not a
name at all, but rather a descriptive pharse.
Complainant contends that it did not authorize Respondent to use
the <datingforbusyprofessionals.com > domain name. Respondent is
neither a licensee of Complainant nor associated with Complainant. The Panel therefore
concludes that Respondent has made a prima facie showing that Respondent
lacks rights and interest in respect of the at-issue domain name.
Complainant having made a prima facie showing, the burden shifts to Respondent to affirmatively show that it has rights or interests in the at-issue domain name. Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that can demonstrate rights or legitimate interest of a domain name registrant 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.
Policy ¶ 4(c).
Since Policy 4(c)(ii) is inapposite,
Respondent’s claims that it registered the at-issue domain name for its
descriptive qualities, and since Respondent’s claimed intended use for the
domain name is a commercial use, the Panel only considers Policy ¶4(c)(i).
Respondent alleges that its reason for
registering the at-issue domain name was to support its business plans relating
to events and activities for single professionals. As such and pursuant to
Policy ¶4(c)(i),
Respondent claims it has legitimate rights or interests as to the domain
name. While it is not this Panel’s role to supplant its business judgment for a
party’s, the evidence of such a “business plan” presented in the Respondent’s
annexed documents is of dubious weight. The “business plan notes” presented by
the Respondent is a mere list of bulleted generic concerns or thoughts that
ostensibly relate to dating for busy professionals. Respondent includes no
dates or milestones, financials, promotional/advertising plans, market demographics,
or other criteria that one commonly finds in a business plan. Curiously, the
logo presented along with Response’s annexed materials, as well as other
instances of the text “Dating for Busy Professionals” in the annexed proforma
webpages, each have a ™ appended. Thus,
while Respondent claims that DATING FOR BUSY PROFESSIONALS is descriptive
elsewhere in its response, it is clear from its annexed documents that the
Respondent intended to use DATING FOR BUSY PROFESSIONALS in a trademark
sense.
Complainant argues that Respondent’s <datingforbusyprofessionals.com> domain name diverted Internet users to a corresponding website that featured links to Complainant’s direct competitors and that upon commencement of the instant UDRP proceeding Respondent changed the corresponding website to display an “under development” message. The Panel gives little weight to what may be characterized as a subsequent remedial measure by Respondent as creating an evidentiary inference that Respondent admits that its use of the domain name use ran afoul of Complainant’s rights. Rather, the Panel sees the action as simply an accommodation to Complainant concerns.
On the other hand, Respondent’s failure to change the Registrant’s placeholder web page early on, is not consistent with a finding that Respondent had made demonstrable preparations for a bona fide offering of services. Likewise, the use of third-party advertisements and subsequent “under development” messages do not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) (or a legitimate noncommercial use under Policy ¶ 4(c)(ii)). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to display an “under construction” page did not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Nor is the evidence of Respondent’s business persuasive. With a little effort a respondent may gin up “evidence” of a business plan or plan for non-commercial fair use along with a corroborating proforma website, notes, communications and the like and thereby create a shield under Policy ¶¶ 4(c)(i) or 4(c)(iii). Requiring only a scant amount of uncorroborated evidence to demonstrate Respondent’s “preparations” for a bona fide offering renders Paragraph 4(c)(iii) meaningless since an unscrupulous domain name registrant might then preemptively vitiate a panel’s finding against it by concocting “preparations” out of whole cloth. Credible evidence of a respondent’s “demonstrable preparations” needs to be something more than what Respondent proffers, especially in light of the undisputed fact that many years have passed after the at-issue domain name was registered without any of Respondent’s “preparations” coming to fruition.
Therefore, Respondent has not met its burden to show that it has rights or legitimate interests in respect of the domain name.
To prevail in a UDRP proceeding, a complainant must show that the respondent registered and is using the at-issue domain name in bad faith. Policy ¶4(a)(iii). A complainant may show bad faith by evidencing one or more of the bad faith circumstances enumerated in paragraph 4(b) of the Policy, and/or by demonstrating that the respondent otherwise acted in bad faith in registering and using the at-issue domain name.
Complainant contends that Respondent motioned to sell the at-issue domain name to Complainant and as such Respondent acted in bad faith. Policy ¶ 4(b)(i) concerns a respondent’s overtures to transfer a domain name for more than its costs. However, the fact that Respondent may have offered to sell the domain name within the context of settling the dispute raised by Complainant’s cease-and-desist letter is not persuasive evidence that Respondent registered the domain name “primarily for the purpose of selling, renting, or otherwise transferring the domain name to the [C]omplainant ” under Policy ¶ 4(b)i. Nor is it otherwise indicative of bad faith.
First, parties
should be free to settle their disputes in advance of administrative or legal
proceedings without having to worry that related negotiations will be used
against them if, and when, the dispute moves to a more formal forum. But even if the alleged offer to sell the
domain name by Respondent was outside the settlement context, there is no
evidence tending to prove that the at-issue domain name was primarily
registered for the purpose of selling it to Complainant. Importantly, the fact that there is no
evidence that Respondent attempted to sell the domain name at anytime during
the approximately six-year long pendency of the domain name’s registration
prior to the Complainant’s cease-and-desist letter supports a conclusion that
the domain name was not registered with the intent that it might be later
transferred to capitalize on Complainant’s claim of rights. See Think Service, Inc. v. Carlos a/k/a Carlos
Linardi, D2005-1033 (WIPO Nov. 18, 2005); see also Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000)
(finding that considering or offering to sell a domain name is insufficient to
amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it
to the owner of a trademark for an amount in excess of out-of-pocket expenses).
Complainant further
contends that the presence of third-party links to websites in direct
competition with Complainant on a web page referenced by the at-issue domain
name indicates Respondent’s intent to use the disputed domain name primarily
for the disruption of Complainant’s business.
Complainant claims that Respondent
receives referral fees for listing these advertisements. Complainant also
asserts that Respondent’s use of the disputed domain name has created a
substantial likelihood of confusion as to the source and affiliation of the
disputed domain name and corresponding website, given the identical status of
the disputed domain name and Complainant’s mark. Complainant makes several other claims that
might tend to show bad faith on the part of Respondent. However, while
these contentions may cut to whether or not the at-issue domain name is or was
being used in good faith, they do not, given the record in this case and as
discussed below, prove that six years ago Respondent registered the domain name
in bad faith.
Complainant alleges that Respondent should have performed a trademark search prior to registering the domain name to determine if another claims rights in the name. Complainant reasons that since the domain name registration agreement conditions a domain name registration on the domain name’s not infringing upon the rights of others, failure to make such an inquiry regarding competing rights evidences bad faith. However, the operative domain name registration agreement neither expressly nor impliedly requires a registrant to perform a trademark search prior to registration. It would have been an easy matter to include such a requirement in the text of the registration agreement if such was the intent of the agreement’s drafter. Likewise, the UDRP includes no such mandate.
Without some clear duty to inquire prior to registration into whether or not another claims rights in a domain name, Respondent’s failure to inquire about competing rights to the domain name is of no consequence. Naturally, if Complainant had no rights to the domain name at the time Respondent registered the name, it would be hard pressed to credibly urge that Respondent’s registration was made in bad faith. Whether or not Complainant had trademark rights in DATING FOR BUSY PROFESSIONALS at the time Respondent registered the domain name is difficult to determine given the limited scope of this forum. Nevertheless, by registering the mark on the Supplemental Register Complainant admits that the mark was not inherently distinctive at the time of such registration. However, Complainant claims that it had common law trademark rights in the at-issue mark at the time Respondent registered the <datingforbusyprofessionals.com> domain name approximately two years later notwithstanding the fact that it had not applied for registration of the mark on the Principal Register until yet another two years had passed.
To be entitled to trademark protection, a
non-inherently distinctive mark, like DATING FOR BUSY PROFESSIONALS, must have
acquired distinctiveness or secondary meaning.
This means that that the “primary significance of the term in the minds
of the consuming public is not the product but the producer.” See Ralston Purina Co. v.
Thomas J. Lipton, Inc., 341 F. Supp. 129, 133, 173 USPQ 820, 823
(S.D.N.Y. 1972). Although Complainant shows that it used the at-issue
mark for several years prior to Respondent’s registering the domain name <datingforbusyprofessionals.com>,
Complainant presents no evidence of secondary meaning in the form of letters or
statements from the trade or public, or other appropriate evidence tending to
show that the at-issue mark distinguishes Complainant’s services. Rather, Complainant focuses primarily on the
fact that it used the mark/phrase in advertisements and expended more than a
trivial amount in advertising its business. Since there is no substantial
evidence of consumers associating Complainant’s mark with Complainant as the
provider of certain services rather than simply a description of such services,
Complainant’s common law trademark rights at the time of registration appear
tenuous at best.
Complainant’s case for having common law
trademark rights in DATING FOR BUSY PROFESSIONALS at the time Respondent
registered the domain name, is weak. Any presumption that Respondent should
have been aware of such putative rights is even weaker. Without inquiry notice
or some duty that compels Respondent to inquire into possible competing rights
to the domain name before registration, and without evidence that substantially
controverts Respondent’s claim that it had no knowledge or belief regarding
Complainant’s claimed trademark rights at the time of registration, the Panel
cannot find Respondent to have acted in bad faith in registering the domain
name.
Since there is no strong basis from which to
find that Respondent was aware of Complainant’s claim of trademark rights in
DATING FOR BUSY PROFESSIONALS at the time it registered the <datingforbusyprofessionals.com>
domain name and for the reasons stated above, Complainant fails to show that
Respondent both registered and used the at-issue domain name in bad faith.
Respondent requests a finding that
Complainant has engaged in reverse domain name hijacking. Even though the Panel has found that
Complainant has failed to satisfy its burden under the Policy, this does not
necessarily support a finding of reverse domain name hijacking. See Rusconi Editore S.P.A. v. Bestinfo, D2001-0656 (WIPO July 5, 2001).
To show reverse domain name hijacking Respondent needs to demonstrate that “Complainant knew of Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith.” See Goldline Int’l v. Gold Line, D2000-1151 (WIPO Jan. 4, 2001). This Respondent cannot do. Complainant shows that the at-issue domain name is confusingly similar to its trademark, makes a prima facie showing that Respondent has no rights or interest in the at-issue domain name which Respondent fails to overcome, and presents evidence, albeit not compelling evidence, that Respondent’s registration and use of the at-issue domain name was in “bad faith”. These findings do not support a claim 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. For the reasons stated above, Respondent’s
request for a finding of reverse domain name hijacking is also DENIED.
Paul M. DeCicco, Panelist
Dated: June 10, 2008
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