TLO, LLC v. NA / Antonio Vaz
Claim Number: FA1105001388389
Complainant is TLO, LLC (“Complainant”), represented by James F. Carroll of The Carroll Law Firm, Florida, USA. Respondent is NA / Antonio Vaz (“Respondent”), Portugal.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tlo.net>, registered with NAME.COM LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 11, 2011; the National Arbitration Forum received payment on May 12, 2011.
On May 12, 2011, NAME.COM LLC confirmed by e-mail to the National Arbitration Forum that the <tlo.net> domain name is registered with NAME.COM LLC and that Respondent is the current registrant of the name. NAME.COM LLC has verified that Respondent is bound by the NAME.COM LLC 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 May 17, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 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@tlo.net. Also on May 17, 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 timely Response was received and determined to be complete on June 6, 2011.
An Additional Submission from Complainant was received on June 10, 2011, and was considered as received in a timely manner according to The Forum's Supplemental Rule #7.
An Additional Submission from Respondent was received on June 14, 2011, and was considered as received in a timely manner according to The Forum's Supplemental Rule #7.
On June 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Petter Rindforth as Panelist. The decision date was set to June 21, 2011.
On June 21, 2011, the Complainant filed an Additional Submission, and the decision date was accordingly extended to June 22, 2011. However, the Panelist decided to not consider this Additional Submission. See further comments under “Findings”.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant asserts that it filed a trademark application for “TLO”, as well as for “TLOxp” with the USPTO on November 1, 2010, and claims to have common law trademark rights in the TLO mark nationwide. The Complainant first used the “TLO” and “TLOxp” marks in August 2009, and has been using it in commerce nationwide continuously since no later than October 2009.
Through the Complainant’s web site at <tlo.com>, customers are using Complainant´s online public records research and locate products and databases, which contain very sensitive, legally restricted data. According to the Complainant, the Respondent´s one page site connected to the disputed domain name has confused Complainant’s law enforcement users into entering their user identifications and passwords on that site.
The Complainant argues that the Respondent has no legitimate rights in the disputed domain name because Respondent has not been using or making demonstrable preparations to use the domain name in issue in connection with a bona fide offering of goods or services. Complainant is aware of no trademark applications or registrations by Respondent relating to <tlo.net>, or similar domain names. Respondent, who lives in Portugal, appears to be a domain squatter. Based on a DomainTools.com Reverse WhoIs Lookup relating to Respondent’s email address, Respondent currently owns 57 publicly registered domain names, including many three-letter and four-letter domain names (Annex 11, of the Complaint). Based on a DomainTools.com Reverse WhoIs Lookup summary relating to Respondent’s email address, Respondent historically has owned 459 publicly registered domain names. (Annex 12 of the Complainant). On information and belief, Respondent also owns many privately registered domains -- such as the disputed domain name, and the Complainant concludes that Respondent appears to be a prototypical domain squatter.
The Complainant points out that Respondent registered the disputed domain name on “approximately February 2010”, that in December 2010, Respondent’s ownership of the domain name was not concealed, but that in January 2011 Respondent transferred the domain name to a private registration service and concealed his ownership of the domain name (Annexes 13, 14 and 15 of the Complaint).
The Complainant summarize and concludes that Respondent has been using the domain name in issue to attract and divert Complainant’s customers to Respondent’s site and apparently harvest their user names and passwords. Respondent has not used the domain name in any other manner.
B. Respondent
The Respondent states that Complainant seems so eager in showing bad faith by every possible mean that the Respondent is considering it as a case of reverse domain name hijacking.
Respondent describes itself as a respectable Domain/Web developer and investor with many domain names fully developed and in fair use and domain names registered for value reserve, especially short ones of 2 or 3 characters given its scarcity and generic use. Respondent asserts that Respondent makes every effort to not collect trademarked domain names or domain names subject to other legal restrictions and to not develop domain names in a way that may conflict to third party rights, although this is a process difficult to keep as the portfolio of domains grows overtime.
The Respondent does not see how it could have attracted and mislead Complainant´s customers, as there are “blatant” differences between the parties’ web sites, and Respondent does not sell any goods or services by using the disputed domain name at his private web site. The layout and operation of Respondents web site is equal to many other sites owned by Respondent for ease of management. Respondent has taken the goodwill to put a notice on the web sites of two of his other domain names that the domains in question are not related to other similar domains when Respondent found out that such confusion could arise (Annex 3 and 4 of the Response)
Respondent points out that Respondent is a Portuguese citizen and has never heard of the Complainants trademarks.
C. Additional Submissions
Complainant:
The Complainant concludes that Respondent has failed to rebut any of the elements or establish any other reason that it should be allowed to maintain the domain name in issue.
Complainant points out that Respondent does not dispute Complainant’s common law trademark right, and that Complainant has carried its burden on the first element, pursuant to Policy ¶ 4(a)(i). Respondent’s arguments on this element are not relevant.
According to the Complainant, the Respondent does not dispute Complainant’s assertion of common law trademark rights in the domain name in issue, and does not dispute that he made no effort to do a brief search or basic investigation that would have apprised Respondent of Complainant’s rights in the disputed domain name.
Respondent’s use of the disputed domain name, with a log-in page roughly similar to Complainant’s log-in page, is misleading and confusing – though Complainant need not prove this, since Complainant’s trademarks and the domain name in issue are identical.
Respondent argues that the domain name in issue “can mean many things.” The Respondent’s argument that the disputed domain name can mean many things does not rebut Complainant’s undisputed common law trademark rights.
The Complainant points out that Respondent states his site “does not ask for visitors to introduce any personal information, namely login information, in <tlo.net> (but they are free to do so).” This argument is unfounded. Respondent’s web site effectively sets forth a clear request or invitation to a Complainant subscriber to enter her log-in information:
· Respondent’s web site has user name and password boxes;
· Complainant’s trademark appears above the user name and password boxes, in nearly-one-inch-tall capital letters;
· There are no disclaimers or other notices to steer users to Complainant´s web site; and
· Respondent’s log-in-page web site does not look appreciably different from Complainant’s log-in page; both are spare in detail and have a white background.
The Complainant repeats that Respondent has no rights or legitimate interest with respect to the disputed domain name, as a private site used for a few elected people is not use in connection with a bona fide offering of goods or services. Complainant notes that Respondent seems to have many “private” web sites which for no reason are set up to receive mistakenly entered user name and password information, and claims that Respondent does not identify any fair use that he allegedly is making of the domain name in issue, much less any fair use that does not “misleadingly divert consumers.”
Finally, the Complainant repeats that the disputed domain name has been registered and is being used in bad faith, and that Respondent does not dispute (or address) Complainant’s statement, supported by authority, that the transfer of the domain name in issue to a private registration in approximately January 2011 constituted a new registration for purposes of ascertaining whether the domain name was registered and used in bad faith under Policy ¶ 4(a)(iii).
Respondent:
The Respondent claims that Respondent has demonstrated that he has acted in good faith and has legitimate interests over the disputed domain name, and concludes that Complainant´s Additional Submission only reinforces the idea that Complainant is trying a reverse domain name hijacking now that Complainant found out that the <tlo.net> can be of value to Complainant’s operations.
The Respondent agrees that Respondent’s and Complainant’s domain names are equal, but argues against Complainant’s statements that a simple search engine search by Respondent should have made Respondent aware of the existence of Complainant’s rights in the disputed domain name.
The Respondent claims to have proven that it has legitimate interests with respect to the disputed domain name, in particular that Respondent has proved its rights and interest under Policy paragraph 4(c)(iii). By using the disputed domain name domain for email and file transfer it constitutes a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Respondent´s sites are quickly built for private use that consists on email and file transferring/sharing. These services need a controlled access by means of a username and password.
Finally, Respondent concludes that Respondent has proved beyond doubt that Respondent is using the domain in good faith since he acquired it. The Respondent does not deny that one part of Respondent´s business is buying and selling domain names. Respondent also develops domain names and keeps domain names for long term investment. The disputed domain name will be kept for long term investment, meanwhile is being used for email and file transfer purposes and in the future it may be developed into a fully functional web site.
Trademarks and Disputed domain Name
The Complainant is the owner of two U.S. trademark applications, namely:
U.S. Application No 85,166,574 TLO (word)
Filed on November 1, 2010
Claimed first use in commerce: 2010.08.00
U.S. Application No 85,166,677 TLOXP (word)
Filed on November 1, 2010
Claimed first use in commerce: 2010.08.00
The Disputed domain name was originally registered on January 5, 1998. Complainant and the Respondent agree that Respondent has held the domain name since February 2010, and that from January 2011 it become covered by a private registration service.
Complainant´s Additional Submission of June 21, 2011
The Forum’s Supplemental Rule 7(e) only permits one Additional Submission (7(a)) or response to Additional Submission (7(c)) to be filed per Party:
A party may submit additional written statements and documents to the Forum and the opposing party(s) within five (5) Calendar Days after the date the Response was received by the Forum, or, if no Response has been filed, the last date the Response was due to be received by the Forum.
The party(s) not filing the original additional submission under 7(a) may file additional written statements and documents to the Forum within five (5) Calendar Days after the date the original submission was received by the Forum.
Each party is limited to one additional submission. In this case, the Complainant
has filed two additional submissions, whereof the latest one on the specific date the Panelist was scheduled to file its decision. Accordingly, the Panelist will not consider this Additional Submission.
Reverse Domain Hijacking
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i), see further below, and accordingly finds that Complainant has not engaged in reverse domain name hijacking. See Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy). Even if Complainant in fact has failed to satisfy its burden under the Policy in total, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
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.
The Complainant asserts rights in the TLO and TLOXP marks. While Complainant does not provide evidence of a trademark registration for the marks, the Panel finds that registration of a mark with a federal trademark authority is not necessary for establishing rights in the mark under Policy ¶ 4(a)(i), so long as Complainant can establish common law rights. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding 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 Policy ¶ 4(a)(i)).
In addition, by the time of filing this Complaint, the Complainant does have pending U.S. trademark applications for both marks.
Complainant contends that it has common law rights in the TLO mark. Complainant states that it uses the mark to offer public records research services. Complainant contends that it has used the name in the field since August 2009. At that time, Complainant contends that it registered the <tlo.com> domain name in connection with its business operations. The Panel finds that Complainant has established rights in the TLO mark dating back to 2009, thus satisfying the requirements set forth in Policy ¶ 4(a)(i). See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).
The disputed domain name <tlo.net> is identical to the TLO mark. Addition of the top-level domain “.net” does no change. See Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”).
While Respondent contends that the <tlo.net> domain name is comprised of a common and generic term and as such cannot be found to be identical to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Complainant must first make 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 shifts to Respondent to show it does have rights or legitimate interests. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the disputed domain name. The WHOIS information does not list or provide any information indicating that Respondent’s name is similar to the disputed domain name. The Panel agrees that Respondent does not seem to be commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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).
However, the Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); 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).
Respondent argues that it uses the disputed domain name and resolving website as an email and file transfer service for users that are approved by Respondent in connection with Respondent’s business development activities. The Panel finds that Respondent’s use is a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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); see also Safeguard Operations, LLC v. Safeguard Storage, FA 672431 (Nat. Arb. Forum June 5, 2006) (finding that the respondent’s operation of a self-storage facility and execution of a business plan demonstrate that the respondent has rights or legitimate interests under Policy ¶ 4(c)(i)).
The Panel further agrees with the Respondent that the letters of the <tlo.net> domain name are common and generic, and therefore, Complainant does not have an exclusive monopoly on the term letters and terms on the Internet. The Complainant may have trademark protection for TLO in the U.S., but the Panel has not been convinced by the Complainant that each use of TLO on the Internet - even if connected with some log-in service – specifically and only points out and refers to Complainant´s services. Accordingly, the Panel finds that Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel concludes that Respondent has at least legitimate interests in the <tlo.net> domain name pursuant to Policy ¶ 4(a)(ii), meaning that the 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.”).
Further, the Panel finds that Respondent has not registered or used the <tlo.net> domain name in bad faith, as the Panel finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Respondent alleges that it did not register the disputed domain name in bad faith because Respondent registered the disputed domain name in connection with a non-competitive and different use than that of Complainant’s business.
Respondent contends that it uses the disputed domain name as an email and file transfer service for registered users. The Panel finds that Respondent’s use seems to be in good faith and not indicative of the bad faith registration and use elements in Policy ¶ 4(b)(iii). See Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding that the respondent did not register and use the <racegirl.com> domain name in bad faith because the complainant provided no evidence that the respondent intended to disrupt or divert business from the complainant); see also PRIMEDIA Special Interest Publ’ns. Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (holding that the respondent did not register or use the <shutterbug.com> domain name to disrupt the complainant’s business because the respondent’s contemplated use at the time of acquisition was not necessarily competitive with the complainant’s SHUTTERBUG magazine).
Finally, there is no evidence provided by the Complainant that would show or strongly indicate that the Respondent, based in Portugal, registered and used the disputed domain name with a clear knowledge of, and bad faith intentions directed against, U.S. based Complainant with no trademark protection or considerable use outside U.S.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <tlo.net> domain name REMAIN WITH Respondent.
Petter Rindforth, Panelist
Dated: June 22, 2011
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