Herbst Gaming, LLC v. Tucows, Inc.
Claim Number: FA1104001384259
Complainant is Herbst Gaming, LLC (“Complainant”), represented by Lauri S. Thompson of Greenberg Traurig, LLP, Nevada, USA. Respondent is Tucows.com Co (“Respondent”), represented by Bret A. Fausett of AlvaradoSmith, APC, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <primm.com>, registered with TUCOWS, INC.
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.
Honorable James A. Carmody, Professor David E. Sorkin and Paul M. DeCicco as Panelists
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 15, 2011; the National Arbitration Forum received payment on April 15, 2011.
On April 18, 2011, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <primm.com> domain name is registered with TUCOWS, INC. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 10, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@primm.com. Also on April 20, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A Response was received on May 11, 2001. However, this Response was received without the Annexes separated from the response; therefore the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5 and the Annex to the Supplemental Rules. The Panel, at its discretion, may choose whether to accept and consider this Response.
On May 18, 2011, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable James A. Carmody, Professor David E. Sorkin and Paul M. DeCicco as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant Herbst Gaming, LLC ("Herbst") is a family-owned gaming and hospitality company based in Las Vegas, Nevada. In 2006, Herbst purchased Primm Valley Resorts from MGM Mirage Corporation. Primm Valley Resorts, a wholly owned subsidiary of Herbst, operates three hotel and casino properties located along Interstate 15 at the border between California and Nevada. The three hotels, Whiskey Pete's, Buffalo Bills, and the Primm Valley Resort, were originally built by the Primm family in an area formerly known as Stateline, Nevada.
To avoid confusion with another State Line in northern Nevada, in 1996, the area was officially renamed Primm, Nevada. Accordingly, the PRIMM name and mark has been used in connection with hotel, casino and resort services since 1996 and is highly recognized in the hotel casino resort industry.
Herbst's predecessor-in-interest obtained federal trademark registrations for the mark PRIMM VALLEY RESORTS in several variations in 2001, (the "PRIMM Marks"). In connection with its purchase of Primm Valley Resorts, Herbst became the owner of the PRIMM Marks and has been using the marks in connection with hotel and casino services and related goods and services since that time.
Herbst has spent substantial sums of money to advertise and promote the PRIMM Marks in print, broadcast media and on the Internet through the Primm Valley Resorts web site, accessible throughout the United States and around the world at <primmvalleyresorts.com>.
Based on its federal trademark registrations and extensive use, Herbst owns the exclusive right to use the PRIMM Marks in connection with hotel, casino and resort services.
The at-issue domain name, <primm.com>, is confusingly similar to Complainant's marks. In fact, the at-issue domain name is comprised of the most unique and recognizable portion of Complainant's trademarks: As such, the domain name should be transferred to Complainant as its rightful registrant.
Respondent has no rights or legitimate interests in the domain name. The domain name was first registered in February 1997 by Melbourne IT, a company that is widely known for its cybersquatting activities. Melbourne IT owned the domain name until sometime in 2006, when it was acquired by Respondent. Although Respondent purports to have acquired the domain name in 2006 in order to offer the domain name for sale in its portfolio of surname domains, Respondent has instead used the domain name in connection with a Pay-Per-Click website that provided links to Las Vegas hotels and casinos and other Las Vegas-related websites. Thus, Respondent improperly utilized the domain name in an attempt to drive internet traffic away from Complainant's website to the at-issue domain name, in order to profit from a Pay-Per-Click website.
Respondent's use of the at-issue domain name for a Pay-Per-Click website demonstrates that it possesses no legitimate interest in <primm.com>. A use that merely operates to redirect users to other sites is not enough to create a legitimate use without a greater connection between the domain name and the redirected site. In this case, there is no particular connection between the at-issue domain name and a Pay-Per-Click website. Rather, the site provides Internet users with purported links to the Primm Valley casino properties, as well as other Las Vegas and gaming-related links.
Complainant has uncovered no evidence that Respondent is commonly known by the at-issue domain name. Consumers throughout the world associate the PRIMM mark with the three hotel and casino properties in Primm, Nevada, and not with Respondent. Furthermore, nothing in Respondent's Whois information suggests that Respondent is commonly known by the <primm.com> domain name.
By using the at-issue domain name in connection with a Pay-Per-Click website, Respondent cannot show that it has made a legitimate noncommercial or fair use of the domain name. Therefore, the domain name should be transferred to its rightful registrant - Complainant Herbst.
Respondent acquired and has used the at-issue domain name in bad faith in derogation of ICANN Rule 3(b)(ix)(3). The domain name contains the dominant and most recognized portion of Complainant's name and trademark - PRIMM. The Primm name is one of the most well-known and highly regarded names in the casino industry. Respondent's use of the at-issue domain name in connection with a Pay-Per-Click website makes clear that Respondent was well aware of the strength and recognition of the PRIMM name in the casino resort industry when it acquired the domain name.
Moreover, Respondent's website provided links to other competitor’s websites that offer goods and services related to those provided by Complainant. It is immaterial that Respondent no longer uses the <primm.com> domain name for a Pay-Per-Click site. Its use in the first instance for a Pay-Per-Click site was clearly intended to capitalize off of Complainant's established rights in the PRIMM marks and goodwill in the casino resort business and is nothing short of bad faith. Moreover, Respondent's claim that it acquired the domain name solely for the purpose of adding it to its portfolio of surnames is disingenuous at best considering that only 3,495 people share the surname "Primm" in the United States. PRIMM ranks 9,863rd in popularity and is therefore, hardly a popular surname that would bring any significant value to Respondent's surname portfolio.
By using the at-issue domain name in connection with a Pay-Per-Click website, Respondent has used the at-issue domain name to create a likelihood of confusion among the consuming public as to the source, sponsorship, affiliation or endorsement of Respondent's website. Respondent's prior knowledge of Complainant's PRIMM Marks and its intent to commercially benefit by confusing the public are clear evidence of bad faith under the Policy.
Respondent is not entitled to the ownership of the domain name, and the <primm.com> should be transferred to its rightful registrant - Complainant.
B. Respondent
Respondent contends as follows:
Respondent denies the allegations of bad faith in the Complaint. Respondent registered the domain name at issue on February 19, 1997, through a company it acquired in whole and continued to operate, almost fifteen years ago and, during the domain name's long period of ownership and use, it has been part of a personal email service that allows customers to select an email address in the form of their own last name.
In the present case, Respondent Tucows uses <primm.com> to provide email service to customers with the last name of "Primm." National law and existing UDRP precedent states that the use of surnames in domain names is both a legitimate interest in a domain name and a non-infringing use. The domain name <primm.com> was registered with the intent to license its use to persons named “Primm,” and it has been used for that purpose continuously since it was first acquired in 1997. UDRP precedent holds that Tucows’ use of surname-based domain names like <primm.com> is a bona fide offering of non-infringing service.
Respondent is a Nova Scotia corporation, with a principal place of business in Toronto, Ontario, Canada. Tucows is a wholly owned subsidiary of Tucows, Inc. a publicly traded Pennsylvania corporation (AMEX:TCX, TSX:TC). The Tucows companies are the owners of numerous trademarks and service marks. Tucows is a leading ICANN accredited registrar and earns most of its revenue from domain name registration services plus hosted email, spam and virus protection, website building tools, the Platypus Billing System and digital certificates. Unlike most ICANN accredited registrars and Internet service providers, however, Tucows primarily provides its suite of services wholesale to third parties for resale to the public. Tucows counts as its customers a channel of over 11,000 Internet access and hosting providers.
On June 15, 2006, Tucows acquired all the assets of Mailbank, Inc. (doing business as "NetIdentity"). Since 1996, NetIdentity has been a provider of personalized email, blogging, and web hosting services through a collection of personal surname addresses. The vast majority of NetIdentity's surname domain names were registered in 1996. After the acquisition, Tucows continued the operation of the NetIdentity business as the Tucows’ “Personal Names Service,” servicing the existing NetIdentity customers.
An overview of Tucows’ business lines can be found at the “About Tucows” page on the Tucows corporate website (tucowsinc.com).
The Tucows Personal Names Service includes tens of thousands of surname domain names, such as "SMITH.NET," "SCHAFER.ORG" and "PRIMM.COM", and uses those names to sell email and other Internet services to the public. Tucows has tens of thousands of personal surnames registered for use in its Personal Names Service, covering over 66% of the U.S. population. Tucows continues to expand its Personal Names Service through the acquisition of personal domain names.
The most popular third-level domain for Internet web sites is the prefix "www," signifying "World Wide Web." Because the Personal Names Service domain names are shared domain names, Tucows has chosen not to give the "www" site to any single customer. Instead, the "www" page contains the Personal Names Service branding and registration link at the top of the page, together with an “About” box that explains the service. Tucows sometimes also places advertisements from an advertising service partner that places paid ads in the margins of “www” page.
<primm.com> was acquired by Tucows over fourteen years ago on February 19, 1997. The domain name was registered because it corresponded with a common surname, Primm. Complainant Herbst Gaming, LLC (Herbst) lists eleven trademarks, on numerous different phrases, in support of its Complaint: Not one of its eleven trademark registrations are for the single word "PRIMM." The lack of identity between the trademarks and the domain name raises two distinct legal issues: (a) is the domain name PRIMM.COM confusingly similar to trademarks such as "Primm Valley Resort & Casino"and "Primm Valley Resorts"? and, if not (b) does the Complainant have sufficient common law rights in the single word "PRIMM" to meet its threshold burden?
The domain name at issue does not contain any of the additional, distinguishing words in Complainant's marks, such as "Valley Resort & Casino," "Valley Resorts," "Lotto Store, "Center," and "Rewards Players Club." Instead, it consists entirely of a common U.S. surname. The domain name at issue is not identical to the trademarks, nor is it confusingly similar.
If <primm.com> is not confusingly similar to “Primm Valley Resort & Casino” and Herbst's similar multiple word marks, which it is not, the question becomes whether the Complainant has established common law rights in the single word “Primm.” Herbt's Complainant is entirely silent on this point. Compainant fails to show with relevant evidence that PRIMM is a trademark.
In the event that the Complainant meets its threshold burden, however, Tucows is using the word "PRIMM" in the domain <primm.com> for non-infringing business purposes. The Tucows Personal Names Services business, both before the Tucows' acquisition and after, has been centered on the provisioning of personal names as domain names for the shared use of endusers. <primm.com> is one such domain name. A domain name identical to a user's surname is a legitimate, non-infringing use of the name.
The fact that the personal names business is a bona fide non-infringing service is established not only by UDRP precedent but also by U.S. trademark law. The Panel should find that Tucows has a legitimate interest in the domain name at issue and that the Complainant has not met its burden of establishing otherwise.
At all times, the domain names in the Personal Names Service were registered and used in good faith. Tucows registered the domain name <primm.com> because “Primm” is a common surname. It is the surname of close to 3,500 individuals in the United States and is one of the country’s top 10,000 most common surnames.
Numerous previous UDRP decisions involve NetIdentity itself, under either the name NetIdentity or Mailbank, and focus on similar facts and allegations as those at issue here. In each of these decisions and others, the panel has found that Tucow’ registration and use of its personal domain names has not been in bad faith. Ignoring all previous UDRP precedent involving Tucows’ personal names service, Complainant’s argument on bad faith registration and use is based solely on a false characterization of Tucows’ “www” page, either by a failure of diligence to understand the nature of the personal names services or a deliberate misreading. First, the Complaint incorrectly alleges that the domain name "was first registered in February 1997 by Melbourne IT, a company that is widely known for its cybersquatting activities." Melbourne IT is a reputable ICANN-Accredited registrar. Since the UDRP was created, three UDRP decisions have been decided against Tucows or its predecessor in interest. Each of them was appealed to a Court of national jurisdiction, and in each case, judgment was entered in Tucows’ favor, including a declaration that Tucows had not engaged in bad faith.
The whois record attached to the Herbst Complaint clearly shows "NetIdentity" as the domain name's registrant, with Melbourne IT as the registrar. Complainant compounds this fundamental error by ignoring virtually all of the text of the “www” page for Primm, where Tucows explains its service.
By ignoring the text of Respondent’s “www” page, the links to the Personal Names Services, and the instructions on how to register PRIMM.COM email addresses, the Complainant tries to isolate only the web page’s advertising. This too, however, is insufficient to support a finding or bad faith registration and use. Like most commercial Internet sites, Tucows’ web pages include advertising. The advertising is provided by third-party advertising companies. Tucows does not select the ads that run in the advertising spaces or directly sell advertising to advertisers for placement on personal name pages. Instead, the third party advertising vendor serves up advertising based on the keywords in the domain name, content of the website, information it may have about other things interesting to the user, and/or the user's location. Not every user sees the same advertising blend, and results vary from user to user.
Automated advertising, such as that used by Tucows, sometimes produces results that are disfavored by trademark owners. The complex legal issues involved in keyword and search advertising have been litigated in U.S. courts and the prevailing view is that content and advertising providers do not infringe trademarks absent knowledge of the particular issues or notice by trademark owners. Tucows has a program in place to respond to trademark concerns. Each website in the Tucows Personal Names Service contains a link to more detailed information about the service, with a direct avenue for the expression of trademark concerns: “if you feel that you have a genuine trademark or other legal concern related to our use of one of these shared domain names, please write to domain_management [at]tucows.com (replace ‘[at]’ with ‘@’ and note the underscore) and we will be more than happy to assist you.”
Prior to the filing of the current UDRP, Tucows had no knowledge of the "Primm Valley Resort and Casino” trademarks. Tucows’ first notice of any concerns was a voicemail from Primm's counsel asking to talk about the domain name and expressing concerns about some of the advertising on the domain name. Within hours of receipt of this voicemail, Tucows responded to the advertising concerns, as it does whenever it receives an expression of concern from a trademark owner. Tucows understands that many businesses are named after their founders (like Primm Vally Resorts & Casino here) and has a program in place to respond to issues that may arise regarding Tucows’ use of its personal domain names. Following this initial contact, Complainant quickly turned to trying to buy the domain.
Tucows has made a legitimate use of its <primm.com> registration and Tucows has neither registered nor used the domain name in bad faith. ICANN's UDRP Policy provides non-exclusive guidelines on the type of evidence a Complainant can present to establish that a domain name has been registered or used in "bad faith." None of these elements are present here.
The only bad faith here is the bringing of the present action by the Complainant, due either to its complete lack of diligence or by bringing this action under false pretenses. First, the domain name at issue has been in constant use for personal names service since 1997. It has never been owned by Melbourne IT or any cybersquatting operation. Second, the Complainant first attempted to buy the domain name. Third, the Complainant does not even have a trademark on the word "Primm," making only a passing comment that it is generally known in the industry. Finally, the Complainant's failure to mention any of the relevant UDRP precedent on personal names, especially including those many decisions involving the present service operated by Tucows, underscores the lack of good faith in bringing the present action. According, not only should the Panel deny Complainant's request, but it also should find that this UDRP constitutes reverse domain name hijacking. The lack of diligence in this case, from the inaccurate reading of the whois record, to the fact that Complainant does not own a mark on the word at issue here, to the lack of citation to any relevant Tucows-related authority shows that the Complaint was brought in bad faith.
The domain name PRIMM.COM was first registered and has been used continuously for the last fourteen years and prior to the instant dispute in conjunction with a Personal Names Service and thus the doctrine of laches should be applied.
PRIMM is a surname and a location.
The at-issue domain name was first registered on February 19, 1997.
Complainant has not demonstrated rights in the term PRIMM.
At the time the domain name was registered, Complainant had no rights in the at-issue PRIMM Marks.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 Issue
The Response is technically deficient and does not comply with ICANN Rule 5 since the dispute resolution provider received the Response without the Annexes separated from the Response. However, the Panel, in its discretion, chooses to accept and consider the Response recognizing that there was no objection raised by the Complainant and further that the deficiency is trivial and does not apparently prejudice Complainant or place any significant additional burden on the Panel or the dispute resolution provider. See Victoria’s Secret Stores Brand Management, Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
Notwithstanding the somewhat confusing label Complainant places on its registered trademarks –The PRIMM Marks- Complainant fails to demonstrate that it has any rights in the mark PRIMM. Rather, by virtue of registration with the United States Patent and Trademark Office, Complainant shows that it has rights in PRIMM VALLEY RESORTS as well as ten other registered marks containing PRIMM. It is well settled that a complainant may establish rights by registering a mark with a trademark authority. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The at-issue domain name utilizes the Complainant’s mark (using PRIMM VALLEY RESORTS as a template example of the proffered registrations) and changes it by adding the generic top-level domain (“gTLD”) “.com” and removing the words “valley” and “resorts,” which merely describe Complainant’s business within the Primm, Nevada area. The Panel is split as to whether or not these deletions of such words remove the disputed domain name from the realm of confusing similarity with one or more of the PRIMM Marks. Panels have decided in the complainant’s favor. See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark). The Panel finds that the affixation of a gTLD, in and of itself, does not adequately distinguish the disputed domain name from Complainant’s mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). On the other hand Respondent reasonably claims that the elimination of the words “valley” and “resorts” make it sufficiently distinct. See Primo Incense v. Spring.net, FA 96565 (Nat. Arb. Forum Apr. 12, 2001) (finding that the <primoincense.com> domain name was not confusingly similar to the complainant’s PRIMO mark despite the complainant’s business name of Primo Incense Distributing Company).
Since, as discussed below, the ulitimate finding in this dispute does not turn on the element of confusing similartity, the Panel focuses its analysis on the other Policy elements leaving the issue of confusing similarity unresolved.
Complainant fails to demonstrate that Respondent lacks rights and interests in respect of the domain name <primm.com>.
Complainant must first make out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Complainant contends that Respondent is not commonly known by the <primm.com> domain name. WHOIS information identifies Tucows.com CO, as the registrant, which is dissimilar to the domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding 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). Furthermore, Respondent is not authorized to register or use any of Complainant’s marks. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding 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); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Therefore, Complainant satisfies its slight initial burden regarding Respondent’s lack of rights and interests in the disputed domain name.
Respondent’s use of the <primm.com> domain name is a bona fide offering of goods or services. Respondent acquired the disputed domain name for its personal names services business, which provides personal names/surnames as domain names for the shared use of Internet users. The use of a domain name identical to a surname for its value as a surname is a legitimate non-infringing use. See Raccords et Plastigques Nicoll v. Tucows.com Co., D2008-1322 (WIPO Nov. 22, 2008); see also Markel Corp. v. Tucows.com Co., D2007-1750 (WIPO June 5, 2008). Therefore, the Panel concludes that Respondent’s use of the disputed domain name is a bona fide offering of good or services pursuant to Policy ¶ 4(c)(i). See Digital Interactive Sys. Corp. v. Christian W, FA 708968 (Nat. Arb. Forum July 3, 2006) (concluding that the complainant failed to satisfy Policy ¶ 4(a)(ii) because the respondent provided sufficient evidence to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that 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).
Additionally, each of Respondent’s landing pages describes the personal names services and information on how to learn more about Respondent’s services. Such language indicates Respondent was not holding itself out as affiliated with Complainant. See Realmark Cape Harbour L.L.C. v. Lewis, D2000-1435 (WIPO Dec. 11, 2000) (finding that the respondent was using the domain name in connection with a bona fide offering of goods and services where the respondent was not holding itself out as the complainant given its disclaimer on the website); see also Realmark Cape Harbour L.L.C. v. Lewis, D2000-1435 (WIPO Dec. 11, 2000) (stating that “[a]lthough a disclaimer of association generally may not be an adequate defense to trademark infringement, Respondent’s use of a disclaimer in this case did serve to alert users of its services that it was not Complainant or its affiliate” in finding that the respondent had rights or legitimate interests in the disputed domain name).
The at-issue domain name was not registered and used in bad faith.
Having found that Respondent has rights and interests in respect of the domain name pursuant to Policy ¶ 4(a)(ii), the Panel may also find, without more, that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Additionally and independent of the Panel’s finding on rights and interests, Respondent's predecessor in interest registered the domain name because it was a surname; the registration was not motivated by any trademark value and was not targeted at Complainant or any of its proffered 11 registered trademarks. Importantly, each of Complainant’s proffered 11 trademark registrations were made after the domain name was registered.
The fact that the Complainant fails to demonstrate that it had rights in a mark confusingly similar to the at-issue domain name at the time the domain name was registered is highly significant to the issue of bad faith registration and use. “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, available at http://www.wipo.int/amc/en/domains/search/overview/index.html#31 (June 8, 2011).
It is axiomatic that if a complainant does not have trademark rights at the time of an at-issue domain name’s registration, there can be no bad faith registration on the part the domain registrant/respondent. Numerous decisions support this very logical proposition. See John Ode dba ODE and ODE - Optimum Digital Enterprises v. Intership Limited D2001-0074, (WIPO May 1, 2001) ; see also Digital Vision, Ltd. v. Advanced Chemill Systems D2001-0827, (WIPO September 23, 2001); see also PrintForBusiness B.V v. LBS Horticulture D2001-1182, (WIPO December 21, 2001). Although there may be exceptions to the rule, 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 WIPO Overview, supra. But here the record contains absolutely no evidence to support any contention that might hang on such an exception.
As pointed out by Respondent, numerous UDRP decisions involve NetIdentity itself, under either the name NetIdentity or Mailbank, and contain similar facts and allegations as those currently at issue. See,e.g., International Raelian Religion and Raelian Religion of France v. Mailbank.com Inc.,D2000-1210 (WIPO, April 4, 2001); Buhl Optical Co v. Mailbank.com, Inc., D2000-1277 (WIPO, March 1, 2001); Bosco Products, Inc. v. Bosco E-Mail Service and Mailbank.com, NAF Case No. FA94828.; José de Jesús Velázquez Jiménez v. Mailbank.com Inc., D2001-0341 (WIPO. June 10, 2001); Puls Elektronische Stromversorgungen GmbH v. NetIdentity, D2002- 0205 (WIPO. May 31, 2002); Dong A/S v. NetIdentity, FA0404000250240 (Nat. Arb. Forum.June 2, 2004); Walls Industries, Inc. v. Tucows.com Co., NAF 824361 (Nat. Arb. Forum, Dec.21, 2006); Ken Batchelor Cadillac Company, Inc. v. Tucows.com Co., NAF 1126742 (Nat. Arb.Forum, Feb. 26, 2008). The panels in these cases have found that Respondent’s registration and use of its personal domain names has not been in bad faith. Likewise here, as discussed above, Respondent’s registration and use of the <primm.com> domain name concerns purposes other than trading on or otherwise capitalizing on Complainant’s trademarks rights, rights that were for the purposes of this proceeding non-existent at the time Respondent’s predecessor in interest registered <primm.com>.
Bad Faith filing of the Complaint
After considering the submissions the Panel does not find that the Complaint was brought in bad faith pursuant to Rule 15(e). Complainant shows that it has rights in a mark which is arguably confusingly similar to the at-issue domain name and further attempts to support its positions on the questions of rights and interest and bad faith by thoughtful arguments referenced by applicable prior decisions notwithstanding that in hindsight a finding of bad faith may have been foreclosed on the face of the Complaint and accompanying annexed documents.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <primm.com> domain name REMAIN WITH Respondent.
Hon. James A. Carmody,
Prof. David R. Sorkin and
Paul M. DeCicco, as Panelists
Paul M. DeCicco (Chair)
Dated: June 10, 2011
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