On February 18, 2009, pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the
Forum appointed Mr. David H Tatham
as Panelist.
RELIEF SOUGHT
Complainant requests that the
domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant claims
common law rights in the service mark DYNAMIC LANGUAGE and quotes from McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th
ed. 2002), as well as from several
previous Decisions as evidence that the
registration of a trademark is not necessary to establish that a complainant
has sufficient rights in a mark to satisfy the requirements of paragraph
4(a)(i) of the Policy.
Complainant contends that it first
began using the mark DYNAMIC LANGUAGE in commerce in connection with its
language translation services in 1984 and that, shortly thereafter, on November
1, 1985, it was incorporated as Dynamic
Language Center
in the State of Washington. However it did not register its domain name
<dynamiclanguage.com> until
April 29, 2008. Complainant contends
that it has used the DYNAMIC LANGUAGE mark continuously and in all fifty US
states to offer and to sell its services, and has done so for more than twenty
years and that, therefore, it has acquired rights
under the common law and clearly acquired priority to use the mark in
connection with translation services as well as in all associated markets
throughout the United States.
Complainant contends that the disputed domain name is identical to its mark but for
the addition of the word “Services” which simply describes its business, namely
the provision of services. It then
refers to several previous Decisions under the Policy holding that the addition
of a descriptive or generic word to a mark creates no significant distinction
for the purposes of paragraph 4(a)(i) of the Policy.
Complainant
also contends that it is of no moment that the disputed mark also contains the
top-level domain “.com”, as not only
is this a feature that is required of all domain name registrants, but it has
also been held that a domain name with this suffix is still be identical to a complainant’s
mark because it is not relevant.
Complainant contends, and quotes a
number of previous Decisions under the Policy to back this up, that Respondent
has no rights or legitimate interests in the disputed domain name because: (1) it
has never been known by the disputed domain name; (2) its use is not bona
fide, and (3) it is not authorized to use the mark.—
1. Respondent’s WHOIS information identifies
Respondent as “LeAnn Hillman”.
Therefore, Respondent is not commonly known by the disputed domain name
pursuant to paragraph 4(c)(ii)of the Policy.
2. Complainant annexed copies of pages taken
from the website at the disputed domain name which, it contends, clearly show
that Respondent advertises to those seeking translation services. Thus, it is in competition with Complainant's own
identical services. Furthermore,
Respondent operates in South Carolina and one
of Complainant's largest customers is located in neighbouring North Carolina.
Annexed to the Complaint were copies of several invoices from Complainant's
customers in both North and South
Carolina.
Complainant therefore contends that Respondent is using a confusingly similar
domain name to divert its customers to Respondent’s website.
3. Complainant has never authorized Respondent
to register domain names bearing its mark and, furthermore, it contacted
Respondent on November 18, and December 12, 2008, informing Respondent of its
unauthorized use. Annexed to the
Complaint were copies of the relevant correspondence.
Complainant also alleges bad faith
on the part of Respondent because: (1) the disputed domain is confusingly
similar to Complainant’s mark; (2) it attracts unknowing Internet users to
Respondent’s website for commercial gain; (3) Respondent’s website is being utilized
to attract and obtain individuals seeking translation services and, as such,
the disputed domain is being utilized for commercial gain and users accessing
Respondent’s disputed domain may be confused as to Complainant’s affiliation
with the domain; and (4) Respondent is using the disputed domain name, to offer
products in direct competition with Complainant’s business.
B.
Respondent
Respondent commences by outlining
the process that she went through to choose the business name, Dynamic Language
Services, and thus logically the domain name <dynamiclanguageservices.com>.
After moving to the Charleston, South
Carolina area she looked for employment in her chosen
field of medical interpreting, but was unsuccessful as the area was too small
so she started her own business.
First she purchased a number of relevant books and, in a chapter from one of
them, she read of the steps that one should go through to pick a unique brand
for a business. She wanted a name
that was unique to the South Carolina
area, but yet stated what she did.
After several brain-storming sessions with friends, after consulting Roget’s
Thesaurus, and taking into consideration that the names of many language
companies sounded rather the same, and were thus generic, she chose the name
Dynamic Language Services. The word
‘Dynamic’ encompassed who she was and what kind of service she would offer, and
‘Language Services’ let potential clients know what she did.
She then conducted a search on the
website of the South Carolina Secretary of State, to confirm that there were no
companies that had a similar name and obtained a trademark in the State of South Carolina for the
name. She also applied for and
received a business license.
In 2008 she became a Limited
Liability Company and made another trademark application, which included a
slogan, in the name of the new company.
This was granted on May 13, 2008.
She then enrolled in Yahoo Small
Business’s web hosting service and applied for and was granted the disputed
domain name <dynamiclanguageservices.com> at which she created a website so as to
increase awareness of the business for potential clients in South
Carolina, and only in South
Carolina.
Respondent contends that there was
never any fraud, or intent on her part to copy someone else’s name, rather it
was chosen through a well thought out, planned and researched premise based on
the belief that it was a unique name which, she further contends, it is in
South Carolina.
Respondent contends that the
disputed domain name is neither identical nor confusingly similar to
Complainant's name. For example, in
a Google search for 'Dynamic Language', the first listing for Complainant
occurs on page 4, while Respondent is not even listed.
A similar search on Yahoo shows both companies on page 1, but Complainant is number
2 and refers to it as being in Seattle, WA while Respondent's company is number 4 and mentions it
as being in South Carolina. Complainant's blog is 10th on the same
page and Respondent contends that there is no possible way that a potential
client could confuse the two companies because an internet user, mistakenly
arriving at Respondent's website would find it clearly expressed that the
company only does business in the eastern part of South Carolina.
The counties in which Respondent does business are clearly listed. Respondent states that she has never heard of
Complainant and has never had any client call, or e-mail, or communicate with
her in any way that they had confused the two companies.
She further contends that she
established her mark legitimately and legally and did not take someone else’s
mark and then just add “Services” and she asks the Panel to take into
consideration the fact that both companies have rights to their own respective
domain names and that since Complainant has, by its own admission, coexisted
with Respondent in the State of South Carolina thus far without causing any
confusion among their respective clients she sees no reason why that
arrangement could not continue.
Respondent disputes Complainant's
contention that she is not commonly known as Dynamic Language Services. Whilst it is true that the contact information
listed in WHOIS, is not of Dynamic Language Services, LLC, she chose, for
security reasons, to have a private domain registration in her own name. She claims that Yahoo advises, on its website,
that it is important to have a private registration in order to avoid spam and
other unwanted solicitations.
However it is clearly stated on Respondent's company website that it is a
locally owned, South Carolina company, and not
located in Meryville, CA as the contact information reads. All of the documents for the company are in its
name, not that of Respondent, e.g. the business license, bank account, website,
trademark, brochures, and business cards and, since the website, the trademark,
the business license and the LLC information are all publicly accessible,
Respondent contends that she is commonly known as Dynamic Language Services,
LLC and authorized to use the disputed domain name as it is currently published.
Respondent then argued against
several of the Decisions cited by Complainant and emphatically denied its
contention that she ever, under any circumstances used the website at the
disputed domain name "to divert business away from someone else." She
states that almost all of her clients come from face to face marketing, and the
few clients gotten from the website have been for Notary services.
Respondent contends that she falls into none of the
categories listed in paragraph 4(b) of the Policy and that Complainant has
failed to prove that: (1) she is a “cyber squatter”; (2) she had the intention
of preventing Complainant from reflecting its mark in a corresponding domain
name; (3) she had the intention of disrupting Complainant's business; or (4)
she intentionally tried to attract the business of Complainant’s clients.
Respondent further draws attention to an entry on
Complainant's blog website stating that Complainant's website "went live
on 7/21/08" which is in direct conflict with Complainant's statements in
the Complaint that it established its domain name in April 1998.
Respondent accuses Complainant of trying to obtain any and
all domain names that are similar to its own domain name in order to funnel
traffic to its website so that no matter what search term a person puts in, if
they put even anything close or related to the main name, they will be directed
to the main web address. Respondent
also accuses Complainant of using false allegations in order to take the
disputed domain name away from her, and hints that Complainant may be guilty of
“reverse domain name hijacking”.
She concludes by reiterating that she is an honest local South Carolina business
woman who went about starting a business in order to carve out a modest niche
for herself in her local area, that she has never used her domain name in an
incorrect way, and that she conducts all of her business in a legal and
professional way.
FINDINGS
Both Complainant
and Respondent are in the business of providing translation services. Complainant for 25 years, and Respondent for only
about 2 years. The former is based
in Washington but has clients in all 50 States
of the USA, and the latter
is based in South Carolina
and operates only in that State.
Respondent is also a Notary Public.
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.
Preliminary
Issues
Respondent, LeAnn Hillman is an individual
and in the Response she mostly refers to herself in the first person singular
(“I”). However she occasionally
lapses into the first person plural (“We”) which could be a reference to her
company, Dynamic Language Services LLC.
The Panel has attempted, in this Decision, to distinguish between Respondent
herself, and her company. Also,
because Respondent is an individual or, as she describes herself, “an honest local South Carolina business
woman”, because she is not represented,
and because she is clearly not familiar with the nuances of the Policy and a
Complaint under it, the Panel has gone into greater detail to explain its
reasoning than if both parties were represented legally.
Identical
and/or Confusingly Similar
Complainant does not have an
application or a registration for DYNAMIC SERVICES as a trademark, but it
claims user rights in this name since 1984.
Paragraph 4(a)(i) of the Policy is clear that it is only necessary for a complainant
to have ‘rights’ in a name that is identical or confusingly similar to a respondent’s
domain name and there have been many Decisions in which it has been held that
common law rights are sufficient in this regard.
An early example was Winterson v. Hogarth,
D2000-0235 (WIPO May 22, 2000), but see
also Artistic Pursuit LLC v.
calcuttawebdevelopers.com, FA
894477 (NAF March 8, 2007) in which it was found that paragraph 4(a)(i) of the
Policy does not require a trademark registration if a complainant can establish
common law rights in its mark, as well as Zee TV USA, Inc. v.
Siddiqi, FA 721969 (NAF July 18, 2006) which found that the
complainant need not own a valid trademark registration for the ZEE CINEMA mark
in order to demonstrate its rights in the mark under the Policy.
Complainant claims to have begun
using the mark DYNAMIC LANGUAGE in 1984 in connection with its language
translation services. However there
is very little proof thereof.
Annexed to the Complaint was a copy of a document from the Secretary of State
in Washington State but this only confirms that Complainant was incorporated as
DYNAMIC LANGUAGE CENTER LTD on November 1, 1985.
However there were also filed copies of four invoices dated variously between
March 2007 and March 2008. The name
at the top of these is DYNAMIC
LANGUAGE CENTER,
with considerable emphasis on the word DYNAMIC, but alongside this is the
company’s address which is topped by the name ‘Dynamic Language’. Also, at the foot of the page, are instructions on
how to pay which are headed “Make all checks payable to Dynamic Language”. Complainant has also registered the domain name
<dynamiclanguage.com>.
This evidence for the use of the
name ‘Dynamic Language’ is thin, but it has not been challenged by Respondent,
and both the invoices and the domain name do seem to indicate that Complainant
does, on occasions, refer to itself by this name.
The Panel is therefore prepared to accept that Complainant has common law
rights in it.
What Respondent does challenge
however, is Complainant’s allegation that her name is confusingly similar to
that of Complainant, but the Panel cannot agree.
Respondent’s description of how she arrived at the name under which she trades
is no doubt accurate, as is the story of her Google and Yahoo searches,
although copies of these were not filed with the Response so the Panel could
not verify them. However this is
beside the point.
Her arguments, whilst passionately
expressed, do not address the real issue.
The concept of “confusingly similar” lies at the very heart of all trademark
conflicts, where the test is whether the names are phonetically, visually, or
conceptually similar. The same
thinking has been carried over into Decisions under the Policy because these
words appear in Paragraph 4(a)(i) thereof.
Although the phrase ‘Dynamic
Language’ is made up of two ordinary dictionary words, their conjunction does
give it a slight degree of distinctiveness which is a requirement for the
registration of every trademark.
Indeed, Respondent has two State registrations for the DYNAMIC LANGUAGE mark,
although a State registration does not go through the same rigorous tests for
registrability that a Federal registration must undergo.
Respondent claims that she hit upon it after considerable research, but it
seems that she omitted to undertake an internet search where, surely,
Complainant’s existence would have come to light.
None of the dictionary definitions for the word ‘dynamic’ describe or have any
relation to the word ‘language’ and so, as noted above, the combination of the
two words does have some distinctiveness.
It falls therefore
for the Panel to decide whether the addition of the word ‘services’ is
sufficient to distinguish Complainant’s common law trademark from Respondent’s
domain name, and the Panel has concluded that it is not.
The two names are conceptually similar.
There have been many
Decisions under the Policy on this point.
Complainant refers to America
Online, Inc. v.
Anytime Online Traffic School, FA 146930
(NAF April 11, 2003) in which it was found that Respondent’s domain names,
which incorporated Complainant’s
entire mark and merely added the descriptive terms ‘traffic school’, ‘defensive
driving’, and ‘driver improvement’ did not add any distinctive features capable
of overcoming a claim of confusing similarity; and Space Imaging LLC v. Brownell, AF-0298 (eResolution September 22,
2000) which found confusing similarity where Respondent’s domain name combines
Complainant’s mark with a generic term that has an obvious relationship to Complainant’s
business. This is particularly
relevant in the present case where the
disputed domain name is simply Complainant’s mark with the addition of the word
“Services” which precisely describes Complainant’s business, namely the
provision of language translation services.
There was also a similar finding in
Novell, Inc. v. Taeho Kim, FA 167964 (NAF October 24, 2003) in
which the <novellsolutions.com>
domain name was found to be confusingly similar to the NOVELL mark despite the
addition of the descriptive term “solutions” because even though “the word
‘solutions’ is descriptive when used for software, Respondent had used this
word paired with Complainant's trademark NOVELL”.
The
disputed domain name also contains the top-level domain “.com”,
but a TLD is something that is required of all domain names, and it been held
in numerous Decisions that this should be disregarded when comparing a domain
name with a name in which a complainant has rights.
See, for example, Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) finding
<pomellato.com> to be identical
to the complainant’s mark POMELLATO because the generic top-level domain “.com” after it was not relevant; as well as Busy Body, Inc. v.
Fitness Outlet Inc., D2000-0127
(WIPO April 22, 2000) where the Panel said: “Similarly, the addition of
the generic top-level domain (gTLD) name ".com"
is likewise without legal significance since use of a gTLD is required of
domain name registrants, ".com"
is one of only several such gTLDs, and ".com"
does not serve to identify a specific service provider as a source of goods or
services.”
Finally, the Decision in Vanguard
Group Inc. v.
Proven Financial Solutions, FA 572937 (NAF Nov. 18, 2005) combines both of
the above two elements for it was held that the addition of both the word
‘advisors’ and the gTLD ‘.com’ did
not sufficiently alter the disputed domain name to negate a finding of
confusing similarity under paragraph 4(a)(i) of the Policy.
On this evidence, the Panel has
concluded that the disputed domain name is confusingly similar to Complainant’s
common law service mark, and that paragraph 4(a)(i) is proved.
Rights
or Legitimate Interests
Under this section of the Policy,
Complainant levels three charges at the door of Respondent, and the Panel will
consider each of them in turn.
1. That Respondent is not commonly known by
the disputed domain name and is not authorized to register a domain name
containing Complainant’s mark.
It is quite true that, according to
the WHOIS information, the owner of the disputed domain name <dynamiclanguageservices.com> is
Respondent herself – LeAnn Hillman.
She provides a very clear and reasonable explanation for why the name came to
be registered by her rather than by her company, but in the circumstances, she
can hardly rely upon paragraph 4(c)(ii) of the Policy to counter this charge
and claim that she herself, as the owner and registrant of the domain name, has
been commonly known by that name.
It was held, for example, in
Braun Corp. v.
Loney, FA 699652 (NAF July 7, 2006) that the respondent was not commonly
known by the disputed domain names where the WHOIS information, as well as all
other information in the record, gave no indication that the respondent was
commonly known by the disputed domain names, and the complainant had not
authorized the respondent to register a domain name containing its registered
mark; while in Reese v. Morgan, FA
917029 (NAF April 5, 2007) it was concluded that the respondent was not
commonly known by the <lilpunk.com>
domain name as there was no evidence in the record showing that the respondent
was commonly known by that domain name, including the WHOIS information as well
as the complainant’s assertion that it did not authorize or license the
respondent’s use of its mark in a domain name.
On this evidence, the Panel
therefore concludes that Complainant’s first charge is proved.
2.
That the use
of the disputed domain name is not bona
fide.
Here, Complainant is on less sure
ground, as there is no evidence of mala
fide use.
The disputed domain name resolves
to a website that advertises translation services which, according to
Complainant , compete with those that it offers.
Complainant claims to have clients in both South and North
Carolina – and provides some copy invoices as proof thereof – but
there is no evidence of any confusion between the activities of the two
companies, even thought these appear to be the same, and even though both
companies appear to co-exist in South
Carolina.
Respondent has provided a
comprehensive history of how she came to choose the name of her company and
what her business consists of. She
claims that she has provided translation services in South Carolina since 2006 using the Dynamic
Language Services LLC business name and the disputed domain name, although she
notes that the latter has provided her with little or no translation work. She contends that she is not competing with
Complainant’s business, but instead is offering a set of highly special skills
in a relatively small geographical area.
Of course Complainant offers the same set of skills, but it is true that the
website at the disputed domain name carries a prominent Notice that it is
located in the Charleston, South Carolina area and serves three
surrounding county areas. There is
no evidence to support Complainant’s contention that Respondent is diverting
some of its business to herself or her company.
In Modern Props, Inc. v.
Wallis, FA 152458 (NAF June 2, 2003) it was held that the respondent’s
operation of a bona fide business of online prop rentals for over two
years was evidence that the respondent had rights or legitimate interests in
the disputed domain name; and in Invicta Watch Co.
of Am., Inc.
v. Santana, FA 727672 (NAF
August 3, 2006) it was said: “Moreover, Respondent used the domain name <invicta.com> for a significant period of time for
business purposes, thus further highlighting his rights and legitimate
interests in the title. Respondent alleges that at all times his
business was entirely unrelated to that carried on by Complainant.” Also,
in Workshop Way, Inc. v. Harnage, FA 739879 (NAF August 9, 2006) the
respondent overcame the complainant’s burden by showing it was making a bona
fide offering of goods or services at the disputed domain name. Finally, in Scholastic
Inc. v.
Master Games International, Inc. D2001-1208
(WIPO January 3, 2002) the panel found that the respondent’s use of the
disputed domain name for a website regarding chess tournaments, particularly
because the domain name appropriately described both the target users of the
respondent’s services and the nature of the respondent’s services, was a bona fide use of the domain name.
The Panel has therefore concluded
that Respondent is using the disputed domain name in connection with a bona fide offering of services and that this
second charge is not proved.
3. That Respondent is not authorized to use
Complainant’s mark.
Respondent states that she chose
the business name Dynamic Language Services, LLC because she offered language
services and ‘dynamic’ described how she intended to conduct her business. She therefore contends that the disputed domain
name <dynamiclanguageservices.com> is comprised of common, descriptive
terms that accurately describe her business.
In Advanced Drivers Education
Products & Training, Inc. v. MDNH, Inc.,
FA 567039 (NAF November 10, 2005) it was found that the disputed domain name
was not used in the trademark sense, but was“a
descriptor of the site’s intended content or theme,” and therefore that
complainant failed to prove that the respondent lacked any rights or legitimate
interests in the disputed domain name.
The Panel agrees with these
Decisions, and concludes that Respondent has been able to establish that she
has legitimate rights and interests in the disputed domain name and that,
therefore, paragraph 4(a)(ii) of the Policy is not proved.
Registration
and Use in Bad Faith
Having found for Respondent on the
question of rights or legitimate interest, there is no need for the Panel to
consider the question of bad faith but, for the record, the Panel states that
it found no evidence of any bad faith on the part of Respondent who appears to
have acted in good faith throughout the short period of time in which her
company has been in existence.
Postscript
The Panel would also like to
comment on the following issues which have been referred to by Respondent but
not dealt with in the above Discussion –
1. Respondent
refers to an entry on Complainant’s blog website concerning the date on which
it went live. However she states
that this is in conflict with the date that appears in the Complaint, namely
April 1998. However the Panel has
not been able to find any reference in the Complaint to this date.
2. Respondent
has suggested that Complainant may be guilty of reverse domain name hijacking,
but this requires some evidence of bad faith on the part of a Complainant, and
there is no evidence of that here.
DECISION
Having failed to establish all
three elements required under the ICANN Policy, the Panel concludes that relief
shall be DENIED.
David H Tatham,
Panelist
Dated: March 4, 2009
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