Connie Campbell Bratcher v. Inspirational
Poetry
Claim Number: FA0902001249815
PARTIES
Complainant is Connie Campbell Bratcher (“Complainant”), represented by Barry R. Bullard,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <inspirationalpoetry.com>,
registered with Tucows, 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 Panelist in this proceeding.
Honorable Charles Kuechenmeister and The Honorable
Neil Anthony Brown QC as Panelists, Dr. Richard Hill as Presiding Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 26, 2009; the National Arbitration Forum received a
hard copy of the Complaint on March 9, 2009.
On February 27, 2009, Tucows, Inc. confirmed by e-mail to the National
Arbitration Forum that the <inspirationalpoetry.com>
domain name is registered with Tucows, Inc. and that the Respondent is the
current registrant of the name. Tucows,
Inc. has verified that Respondent is bound by the Tucows, 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 March 16, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of April 6, 2009 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@inspirationalpoetry.com by e-mail.
On April 6, 2009, the National Arbitration Forum granted Respondent’s
April 3, 2009 Request for Extension of Time to Respond to Complaint without
Complainant’s Consent, thereby setting a deadline of April 16, 2009 by which
Respondent could file a Response to the Complaint.
On April 14, 2009, the National Arbitration Forum denied Respondent’s
April 14, 2009 Request for Extension of Time to Respond to Complaint without
Complainant’s Consent, thereby maintaining the April 16, 2009 deadline by which
Respondent could file a Response to the Complaint.
A timely Response was received and determined to be complete on April
16, 2009.
On April 24, 2009, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Honorable Charles Kuechenmeister, The Honorable Neil
Anthony Brown QC and Dr. Richard Hill as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
According to the Complainant, the disputed domain name has been used in public commerce worldwide since 1998 when it was first registered by the Complainant as a domain name via Network Solutions, the sole domain name registrar at that time. During the ensuing 10 years, the Complainant labored intensively to construct substantial creative and intellectual property and services built upon and offered through a website at the disputed domain name. During that time, a publishing company was also built upon the goodwill and prevalent popularity of that website. The products built upon that website include over 700 original works of inspirational poetry by the Complainant and two privately published books (over three hundred pages each book), at least one of which references the disputed domain name in the introduction of the book.
The Complainant states that future and intended goods and services she had planned (and continues to plan) for the website at the disputed domain name include a third book, over 400 additional poems, and the possibility of an entire suite of goods, services, and media (including video, personal appearances, ministries, greeting cards, websites, and any and all other types of media) intended to deliver strong and meaningful contribution to a worldwide audience and existing fan base.
The Complainant alleges that, while she had not registered with the United States Patent and Trademark Office for protection of her trademark and service-mark INSPIRATIONALPOETRY.COM, she had, in fact, by law, legally established ownership of the INSPIRATIONALPOETRY.COM trademark and service-mark via actual FIRST-USE AND CONTINUOUS USE IN PUBLIC COMMERCE FOR OVER 10 YEARS. This USE is prima facie evidence of Complainant’s ownership of this intellectual property service-mark/trademark known as INSPIRATIONALPOETRY.COM, the use of which by any other entity and in any format or appearance is an infraction upon and a violation of the Complainant’s rightful and established ownership. The Complainant had become and is commonly known by the trademark and service-mark of INSPIRATIONALPOETRY.COM via prevalent media and marketing collateral, including, but not limited to, websites, books, business cards, and brochures. Common intellectual property law provides for the recognition of Complainant’s clear ownership of INSPIRATIONALPOETRY.COM even though Complainant failed to seek additional protection via registration of Complainant’s ownership.
According to the Complainant, the
disputed domain name became available because of an administrative error. The disputed domain name was then allegedly acquired
by BWI Domains who, according to the Complainant, is “a known cyber-squatter who has a verifiable history of larcenous
behavior regarding domain names and intellectual property.”
According to the Complainant, the Respondent is affiliated with BWI Domains.
The Complainant goes on to present her arguments regarding the other
two elements of the Policy. For the
reasons given below, the Panel finds that the first element of the Policy is
dispositive in the present case, and so it will not summarize the Complainant’s
arguments regarding the other two elements of the Policy.
B. Respondent
According to the Respondent, it is an entity under the control of an
individual. The sole purpose of that
entity is to own and utilize the disputed domain name. Neither the Respondent nor the individual
that controls it have any ownership interest in BWI Domains. BWI Domains has no ownership interest in the
Respondent or in the disputed domain name.
The Respondent states that it purchased the disputed domain name from
BWI Domains on February 8, 2008 in a package of twenty domains. The Respondent selected the domain based on
its value as a descriptive term which was not subject to any trademark, which
it knew was subject to substantial lawful third party use, and to which it
believed no party could claim exclusive rights.
Further, says the Respondent, its registration of the disputed domain
name had nothing to do with the Complainant.
The Respondent had no knowledge of the Complainant, her website or her
business name or purported trademark when it acquired the disputed domain
name. The Respondent did not register
the disputed domain name with the intent to sell it to the Complainant, to
disrupt the Complainant’s business, or to confuse consumers seeking to find the
Complainant’s website. The Respondent
did not register the disputed domain name to prevent the Complainant from
owning a domain name incorporating its purported trademark.
According to the Respondent, at the time it acquired the disputed
domain name it was registered to BWI Domains.
Accordingly, the Respondent would not have had an opportunity to learn
of the Complainant’s purported trademark for INSPIRATIONALPOETRY.COM, an
Internet address which the Complainant no longer owned and of which she had no
longer had use or control.
The Respondent alleges that “inspirational poetry” is a descriptive
term, composed of two common dictionary words.
It describes poetry which is inspirational. In fact, the Complainant admits that “over
700 original works of inspirational poetry” formerly appeared on its website. The term “inspirational poetry” is subject to
substantial third party use.
The Respondent states that it has used the Disputed Domain to display pay-per-click (“PPC”) advertising links related to inspirational poetry, and Respondent receives a share of the revenue generated from the advertising. The following are among the links on the website: inspirational poetry, inspirational poem, daily inspirational messages, prayers, inspirational quotations.
According to the Respondent, the
Complainant has no registered trademark, and the Complainant would not be
successful in acquiring a trademark for the term “inspirational poetry” or
“inspirationalpoetry.com,” because “inspirational poetry” is descriptive for
“poetry” which is “inspirational.” In
order to acquire common law rights to the string in question, the Complainant
would have to prove secondary meaning, which she has not done. Indeed, the Complainant must provide evidence that consumers identify the term
“inspirational poetry” exclusively, or almost exclusively, with Complainant.
But, says the Respondent, the Complainant has provided no evidence of
secondary meaning showing that consumers identify “inspirationalpoetry.com”
with the Complainant. The Complainant’s
self-serving assertions do not suffice, so there can be no doubt that
“inspirational poetry” is a descriptive term.
Further, according to the Respondent, while the Complainant claims that INSPIRATIONALPOETRY.COM is a trademark, in fact it is simply an Internet address she used for e-mail and for her website address. Such Internet addresses do not function as trademarks and do not provide enforceable rights under the Policy
The
Complainant cites numerous UDRP precedents to support its positions.
The Respondent goes on to present its arguments regarding the other two
elements of the Policy. For the reasons
given below, the Panel finds that the first element of the Policy is
dispositive in the present case, and so it will not summarize the Respondent’s
arguments regarding the other two elements of the Policy.
FINDINGS
The Complainant has not proven that she has a
trademark for the string INSPIRATIONAL POETRY.
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.
The Respondent asserts that the
INSPIRATIONALPOETRY.COM mark is not a trademark but rather merely the domain
name that Complainant has used for its business. The Respondent correctly points out that the
Complainant has not shown any evidence that she has traded under the mark aside
from its use of the disputed domain name, and that there is insufficient
secondary meaning due to the mark’s descriptive and generic content. Indeed, if the Complainant had been engaged
in commercial activity using the disputed domain name as a common law
trademark, she should have presented evidence of that activity, for example
news reports, references, letters, other material associating her with the
purported trademark. No such evidence
has been presented to the Panel.
As the panel
stated in Anna Nicole Smith c/o CMG Worldwide v. DNS Research, Inc. FA 220007 (Nat. Arb. Forum February 21, 2004):
The cases require a clear showing of high
commercial value and significant recognition of the name as solely that of the
performer. The Humphrey Bogart case cited by Complainant is a prime example of the
type of case that would be expected to prevail, since virtually no one
familiar with the movie industry would fail to recognize his name as that of
the famous movie star. The Panel does
not believe Complainant’s name has yet reached that level of fame.
That is a good description of what is
expected and of how the evidence falls short in the present case.
Thus the Panel finds that the Complainant has failed to satisfy her burden of proving the first element of the Policy, namely that she has common law trademark rights in the mark or string INSPIRATIONAL POETRY. See Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (finding that when a disputed domain name, such as <187.com>, is made up entirely of generic or common terms, “good evidence will be needed to show a significant secondary meaning and, above all, one associated with Complainant.”); see also GLB Servicos Interativos S.A. v. Ultimate Search Inc., D2002-0189 (WIPO May 29, 2002) (holding that the complainant’s mere possession of a domain name registration, without demonstrating any common-law or registered rights in a mark, was insufficient to bring a claim under the UDRP).
Since this element
of the Policy is dispositive, the Panel finds that it need not analyze the other two elements of the
Policy. See Creative Curb v. Edgetec Int’l Pty.
Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that
because the complainant must prove all three elements under the Policy, the
complainant’s failure to prove one of the elements makes further inquiry into
the remaining element unnecessary); see
also Hugo Daniel Barbaca
Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into
the respondent’s rights or legitimate interests or its registration and use in
bad faith where the complainant could not satisfy the requirements of Policy ¶
4(a)(i)).
For the reasons set forth above, the Panel
finds that it need not analyze this element of the Policy.
For the reasons set forth above, the Panel
finds that it need not analyze this element of the Policy.
DECISION
As the Complainant has not established all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Dr. Richard Hill, Presiding Panelist
Honorable Charles Kuechenmeister,
The Honorable Neil Anthony Brown QC Panelists
Dated: May 8, 2009
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