Riveron Consulting, L.P. v.
Claim Number: FA1002001309793
PARTIES
Complainant is Riveron Consulting, L.P. (“Complainant”), represented by Thomas
A. Kulik, of Scheef & Stone, L.L.P.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <riveron.com>, registered with Fabulous.Com
Pty Ltd.
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 February 24, 2010; the
National Arbitration Forum received a hard copy of the Complaint on February 25, 2010.
On February 24, 2010, Fabulous.Com Pty Ltd. confirmed by e-mail to
the National Arbitration Forum that the <riveron.com> domain name is
registered with Fabulous.Com Pty Ltd. and
that the Respondent is the current registrant of the name. Fabulous.Com
Pty Ltd. has verified that Respondent is bound by the Fabulous.Com Pty Ltd. 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 February 26, 2010, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 18, 2010 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@riveron.com by e-mail.
A Response was received and determined to be complete on March 19, 2010, which is after the deadline for
response of March 18, 2010.
Therefore, Respondent’s Response is deemed deficient.
On March 23, 2010, the National Arbitration Forum received
Complainant’s Additional Submission.
Complainant’s Additional Submission complies with Supplemental Rule 7,
and was timely.
On March 24, 2010, the National Arbitration Forum received Respondent’s
Additional Submission in compliance with Supplemental Rule 7.
On March 29, 2010, 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:
The Complainant contends that the <riveron.com> domain
name is substantially and confusingly similar to the Complainant's RIVERON
marks and the disputed domain name includes the entire RIVERON mark. The fact
that the Respondent has added the generic top-level domain ("gTLD")
".com" is irrelevant in distinguishing a disputed domain name from a
registered mark.
Respondent has no rights or legitimate interests in respect of the
domain name <riveron.com> because the Respondent is not authorized
by the Complainant to use Complainant's RIVERON marks and there is no evidence
that the Respondent is known by the disputed domain name.
Respondent's use of the domain name, to point to a "parked"
webpage that advertises and links to various sponsored listings is not a bona
fide offering of goods or services, nor a legitimate noncommercial use, or
fair use pursuant to Policy 4(c)(iii).
Respondent's use of Complainant's trademark in its entirety as a domain
name, using an automatically generated "parked" page, generates
search terms that, by design, correlates to the value of the trademark and may
ultimately redirect potential customers of Complainant.
Respondent has also asserted at the top of the parked page
"Riveron.com Riveron Resources and Information. This website is for
sale!" The "parked" page
also states "the domain riveron.com may be for sale by its owner!" In
December 2009, the Complainant requested a domain appraisal of <riveron.com>
from GoDaddy.com. The domain name registration was appraised at $1,682.00. Complainant offered this amount and the
Respondent counter offered with $19,000.00. Complainant asserts that
Respondent's $19,000.00 offer to transfer the disputed domain name clearly
rests well beyond Respondent's out of pocket costs. Such offer to transfer the <riveron.com>
domain name for an amount far in excess of reasonable costs supports
findings of bad faith registration and use pursuant to Policy 4(b)(i).
Respondent's use of the <riveron.com> domain name
essentially involves nothing other than directing confused Internet users, who
are in search of a legitimate business, to Respondent's parked page. The Panel
may infer that Respondent is profiting from such use through the collection of
click-through and pop-up fees for each redirected Internet user, and that such
use is likely to lead to confusion among Internet users as to Complainant's
sponsorship of or affiliation with the resulting websites and supports findings
of bad faith registration and use pursuant to Policy 4(b)(iv).
Respondent's <riveron.com>
domain name is a disruption of Complainant's business and constitutes bad faith
registration and use pursuant to Policy 4(b)(iii).
B. Respondent
Respondent contends as follows:
The domain name is identical or confusingly similar to a trademark or
service mark in which Complainant has rights.
However, Complainant does not have exclusive rights to this mark and Respondent’s
rights pre-date Complainant’s rights by several years.
The registration of <riveron.com>
predates Complainant’s trademark registration by many years.
Even if <riveron.com>
had been registered yesterday, a registrant could still have legitimate interests.
“Riveron” is not an arbitrary or fanciful term.
It is both a generic Spanish word and a Spanish surname. Using surnames for email is a legitimate
business use of a domain name and was Respondent’s plan for the at-issue domain
name.
A review of <alexa.com> for the
popularity of < riveronconsulting.com> show that it has no rank. This means that it is
not in the top 30 million sites in the world. None of the automatically
generated ads on the <riveron.com>
website have anything to do with Complainant’s consulting business.
When approached to sell the name, Respondent offered to sell it. This is
entirely within Respondent’s rights since the use of the term by Respondent predates
Complainant’s use and since the term is generic.
An appraisal by Godaddy is completely irrelevant and has no bearing on
this case.
C. Additional Submissions
Complainant additional contends as follows:
Respondent submitted an untimely response to the arbitrator in
contravention of the technical requirements of the ICANN Rules and NAF Supp.
Rules. Complainant provides its
Additional Written Statement to address fundamental flaws and conclusory
statements in Respondent's response.
Registration of a domain name does not confer trademark rights to a
domain name registrant. The domain name registrant must use the domain name as
an identifier or distinguisher of goods or services in order to secure
trademark rights in the domain name. Domain names used only to indicate an internet
address will not garner any rights as a trademark. Where the domain name
registrant later intends to use the domain name commercially, the domain name
registrant still fails to garner trademark rights in the domain name without
actual use of the domain name as a source identifier of goods or services.
Furthermore, registration of a domain name does not confer the right to
infringe on trademark rights. It is an unreasonable to assert that the act of
acquiring a domain name gives the registrant the legal right to use the domain
name as the registrant sees fit. Simple registration of the domain name does
not trump federal trademark law, nor does it confer trademark rights on the
registrant.
Complainant has, inter alia,
a registered trademark to the term "RIVERON" - a valid and subsisting
trademark registration that is not only presumed valid, but prima facie evidence
that the registered mark is not a generic name. On these facts alone, Respondents
arguments as to the alleged genericness of the Complainant's registered
trademark are inadequate.
Respondent's arguments of alleged genericness also fail in light of
Respondent's use of the domain name. Generally, where a respondent alleges that
the registered trademark is generic, whether transfer should be ordered depends
on the manner in which the allegedly generic domain name is used by the
registrant. Where web users were more likely to look for information regarding
the trademarked goods or services rather than the allegedly generic term,
transfer was appropriate over a use directing individuals to material
associated with the alleged generic term.
Contrary to Respondent's assertions, the high page ranking of the
Complainant's website for the term "RIVERON" indicates high global
link popularity and shows that the relevant marketplace associates the Complainant,
and Complainant's services, with the registered trademark "RIVERON". Lastly,
a recent review of the Respondent's parked page has uncovered reference to the
category "Finance", with various subcategories, one of which is
"Investments" that can direct consumers to other sites unaffiliated
with Complainant. Expanding upon Complainant's assertions in the Amended
Complaint, the parked pages under the domain name at issue now currently
present sponsored links that appear directly competitive with Complainant's
business in direct violation of Paragraph 4(c) of the ICANN Policy.
Respondent additionally contends as follows:
Registering a domain name does not confer a
formal trademark but just because someone registers a trademark after someone
has registered a domain name does not mean that the domain name is not the
Complainant’s property. <riveron.com> predates Complainant’s company and
company trademark
None of the content at <riveron.com> has anything to do with specialize consulting
which is apparently what Riveron Consulting does. The main page of <riveron.com>
has hundreds of links ranging from Dating to Electronics to
Travel. The exhibits attached in the Complainant's response are
either altered or produced by deliberately searching for "Finance" in
the search box. Even if you search for Finance on the parked page for <riveron.com>
all you get are results for stock trading and commercial banking links, neither
of which are even close to being competitors of <riveronconsulting.com>,
a highly specialized boutique consulting firm, according to the <riveronconsulting.com>
website:
"Riveron is a unique financial consulting firm serving
middle-market private equity funds, mezzanine and senior lenders, family
offices, and companies growing through acquisitions. Our mission is to help
clients maximize the value of both strategic and financial transactions through
buy-side financial due diligence, sell-side services, and post-transaction
special projects."
Complainant's assertion that the term Riveron
is known more for the small consulting business than the term's generic Spanish
meaning and surname is completely false, as shown by Google Adwords search
data. In the month of Feb, Google controlled 65.5% of all internet
searches (comScore, JP Morgan analyst report). Of those searches,
"Riveron" was searched over 10,000 times per month. 8100 of
these searches were for the generic term/surname alone. Over 2000 were
for dozens of personal names ending in Riveron.
Only 210 searches were made for "Riveron
Consulting". And several of those searches were me trying to figure
out who was trying to hijack my domain name.
FINDINGS
Complainant currently has trademark rights in
the word mark RIVERON by virtue of its registration with the United States
Patent and Trademark Office. Complainant thereby demonstrates rights in such
mark no sooner than August 15, 2006.
The RIVERON mark is identical to the at-issue
domain name <riveron.com>.
The at-issue domain name was registered prior
to the Complainant acquiring trademark rights in RIVERON.
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 National Arbitration Forum, the dispute resolution provider in this
matter, received the Response after the submission deadline and has determined
that the Response is not in compliance with ICANN Rule 5. However the Panel may nevertheless choose
whether or not to accept and consider it.
See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar.
4, 2003) (holding that the respondent’s failure to submit a hard copy of the
response and its failure to include any evidence to support a finding in its
favor placed the respondent in a de facto default posture, permitting
the panel to draw all appropriate inferences stated in the complaint); see also J.W.
Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct.
17, 2003) (finding that where respondent submitted a timely response
electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature
of the breach and the need to resolve the real dispute between the parties that
this submission should be allowed and given due weight”). Since under the
circumstances striking the Response would be an unduly harsh consequence of what
appears to be a minor inadvertent procedural error on the part of Respondent, and
since the Complainant has neither formally objected nor suggested any unfair
prejudice to its position resulting from Respondent’s procedural transgression,
the Panel will consider the Response as if it were timely.
A trademark registration with the USPTO is sufficient to establish
rights in a mark for the purposes of Policy ¶4(a)(i).
Complaint has such a registration for RIVERON.
Therefore, Complainant demonstrates that it has adequate “rights”
pursuant to Policy ¶ 4(a)(i) to proceed. See Expedia, Inc. v. Tan,
FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark
is registered with the USPTO, [the] complainant has met the requirements of
Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare,
FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the
complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE
marks by registering the marks with the USPTO).
Respondent’s <riveron.com>
domain name is identical to Complainant’s RIVERON mark. The disputed domain name contains
Complainant’s entire mark, only adding the generic top-level domain (“gTLD”)
“.com.” It is well settled that the
addition of a gTLD is immaterial to a panel’s inquiry regarding Policy ¶4(a)(i) since all domain names are required to have a
gTLD. See SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008)
(concluding that “the domain name at
issue is identical to [the] complainant’s SCOLA mark, as the only alteration to
the mark is the addition of the generic top-level domain “.com.”).
Furthermore, Respondent admits that the
at-issue domain name is identical to Complainant’s mark in his Response.
Complainant must first make out a prima
facie case showing that Respondent lacks rights and legitimate interests in
the disputed domain names pursuant to paragraph 4(a)(ii)
of the Policy. The threshold for such prima facie 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 and legitimate interests in the at-issue domain name.
Complainant contends, and Respondent does not dispute, that Respondent
is not known by the at-issue second level domain name, RIVERON, and further contends
that Respondent is not authorized to use Complainant’s RIVERON mark. Normally, such undisputed assertions are sufficient
to carry Complainant’s slight initial burden.
In the instant case however, Complainant fails to demonstrate that it
had any rights in the RIVERON mark at the time Respondent registered the
disputed doain name.
Because the <riveron.com>
domain name registration pre-dates Complainant’s trademark registration as well
as Complainant’s first use of the
RIVERON mark, under Policy 4(a)ii and as discussed below 4(a)iii, Complainant
logically needs to show either that it had common law trademark rights in RIVERON
at the time the disputed domain name was registered despite the first use date
reflected on its USPTO registration, or
show that Respondent’s rights and interests
in <riveron.com>, although ripe at the time of registration, have since been
vitiated. To prove the former
Complainant must provide the Panel with competent evidence demonstrating common
law trademark rights dating back to the time of the domain name’s
registration. This it did not do. To
prove the latter (that Respondent lost any rights it might have had),
Complainant must at least suggest some circumstance which divested Respondent
of its rights and interests in the domain name since such rights and interests
are acquired at the time of registration, by the fact of registration, and are maintained
by conduct consistent with the terms and conditions of the registration
agreement. Without evidence of either Complainant’s
trademark rights at the time of the at-issue domain name’s registration, or a showing
that Respondent somehow lost any rights and interests in the domain name, there
is no foundation from which to conclude that Respondent is, or was, legally
bound to license the mark from the Respondent. If Respondent had no duty to
license the domain name before registering it, then the fact that there was no
license from Complainant and the fact that Respondent did not commonly go by
the domain name, are each ultimately immaterial regarding paragraph 4(a)ii.
Complainant presents some colorable evidence that might tend to show
that the rights granted to Respondent by virtue of the domain name registration
agreement were lost through Respondent’s subsequent bad faith conduct in
violation of such agreement. Respondent attempts to support its having rights
and interests in the domain name by urging that circumstances relevant to
paragraph 4(c)i are operative. However, because the Panel finds that Complainant fails
to meet its burden of proof concerning bad faith registration and use under
Policy ¶4(a)(iii) as discussed below, a determination as to whether Respondent has established rights or
legitimate interests in the disputed domain name pursuant to paragraph 4(a)ii
is unnecessary.
The undisputed facts in this matter foreclose a finding of bad faith registration and use under Policy 4(a)iii. While Complainant currently has trademark rights in the at-issue mark by virtue of its RIVERON
trademark registration, such rights do not magically relate back to the time
that Respondent first registered the <riveron.com>
domain name, a time well prior to Complainant’s first use of its mark.
Normally speaking, when a domain name is registered before a trademark
right is established, the registration of the domain name was not in bad faith
because the registrant could not have contemplated the complainant’s
non-existent right.
WIPO Overview of WIPO Panel Views on Selected
UDRP Questions,
http://www.wipo.int/amc/en/domains/search/overview/index.html#31
(April 7, 2009).
There is no evidence within the record which tends to show that
Complainant had trademark rights in RIVERON at the time Respondent first
registered <riveron.com>. As noted above, it is axiomatic that if a
complainant lacks trademark rights at the time the respondent registered the
disputed domain name, there can
be no finding of bad faith registration. Numerous decisions support this very
logical proposition. For example see, John Ode dba ODE and ODE - Optimum
Digital Enterprises v. Intership Limited D2001-0074, (WIPO May 1,
2001) ; Digital Vision, Ltd. v. Advanced Chemill Systems D2001-0827,
(WIPO September 23, 2001); PrintForBusiness B.V v. LBS Horticulture D2001-1182,
(WIPO December 21, 2001); Aspen Grove, Inc. v. Aspen Grove,
D2001-0798 (WIPO Oct. 5, 2001); Open Sys.
Computing AS v. degli Alessandri,
D2000-1393 (WIPO Dec. 11, 2000); San Diego Hydroponics & Organics v.
Innovative Growing Solutions, Inc., D2009-1545
(WIPO March 3, 2010).
There may be exceptions to the rule, but such exceptions require that
“it is clear that the aim of the registration was to take advantage of the
confusion between the domain name and any potential complainant rights.” See
supra, WIPO Overview. Here there
is no evidence that supports a finding that at the time he registered <riveron.com> Respondent believed
that Complainant would subsequently acquire rights in RIVERON. Nor is there
evidence suggesting that Respondent hoped to take advantage of any other
party’s future trademark rights when he registered the disputed domain name. Therefore, the Panel concludes that
the at-issue domain name, <riveron.com>,
was not registered and used in bad faith. The Complaint thus fails under Policy
¶4(a)iii.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Paul M. DeCicco, Panelist
Dated: April 12, 2010
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