Parlance Corporation v. Dynamo.com c/o Privacy Protection
Claim Number: FA1307001508767
Complainant is Parlance Corporation (“Complainant”), represented by Kathryn V. Chelini of Bowditch & Dewey, LLP, Massachusetts, USA. Respondent is Dynamo.com c/o Privacy Protection (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <parlance.com>, registered with eNom, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Ian Barker and Michael Albert as Panelists. Richard Hill as Presiding Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 9, 2013; the National Arbitration Forum received payment on July 9, 2013.
On July 10, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <parlance.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 July 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 2013 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@parlance.com. Also on July 16, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 August 5, 2013.
On August 12, 2013, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Ian Barker and Michael Albert as Panelists and Richard Hill as Presiding Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant alleges that it owns the registered trademark PARLANCE and has used it since at least 1996 for its business, which is the provision of telephone operator services using speech recognition technology. The mark was registered in June 1999. The Complainant’s primary business location is Woburn, Massachusetts.
According to the Complainant, the disputed domain name is identical to its mark. That domain name was registered in August 2001.
Further, says the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name because it is not commonly known by that name and because it has not used that domain name in any manner, let alone in connection with a bona fide offering of goods or services.
The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith because it is in the business of buying and selling domain names. The Respondent owns over 5000 domain names and it replied to an email from Complainant with an offer to acquire the disputed domain name, stating that the Complainant is not eligible to acquire or purchase the domain name (apparently the Respondent only sells domain names to entities that acquired a related mark after the domain name was registered).
Thus, according to the Complainant, the Respondent registered the disputed domain name in order to prevent the owner of the trademark from acquiring the domain name.
B. Respondent
The Respondent states that it registered the disputed domain name for its own business use immediately upon abandonment by the prior registrant. The Respondent executes name conception, logos and brand graphics, trademark research, and promotional copy for new start-ups and for corporations. Founded in Silicon Valley and based there until 2005, the Respondent holds, and manages for clients, generic and coined domains from and for use in its business. There are hundreds of companies in the US alone which offer the service of coining and locating names which are viable for a new mark use. Ideally the name proffered has an obtainable intuitive dotcom. The service is neither novel nor obscure, with demand over the past 20 years increasing alongside the growth of the internet.
According to the Respondent, the term “parlance” is a common word in English.
Many parties worldwide currently use the word as a mark alongside each other with rights intact, and many more will use it in future.
The Respondent alleges it routinely uses generic domains in its business. The name in question was first selected for one of the Respondent’s clients, but was not actually used. But it is being actively researched for possible future use. Thus the Respondent has used the disputed domain name repeatedly since registration and many years prior to the filing of this Complaint.
The Respondent alleges that the Complainant is a small local company, active in a specific field of business.
The Respondent states that it has never offered the disputed domain name for sale to the public. No embarrassing or malignant content, nor any content which could be confused with any mark user's rights, has ever been posted by the Respondent.
The Respondent submits that the disputed domain name was registered in good faith because it is a generic word, suited for many non-infringing uses and of intrinsic value. The Respondent cites UDRP precedents to support its position.
Further, says the Respondent, with respect to passive holding, it is well-established that it does not constitute bad faith unless there is factual evidence showing how the Respondent intended to use the disputed domain name in bad faith. The Respondent cites UDRP precedents to support its position.
The Complainant has rights in the registered trademark PARLANCE. The rights date back to 1996, the registration to 1999.
The disputed domain name was registered in 2001.
The term “parlance” is a word in the English language and it is used by many other companies and trademark owners.
The Complainant is a small local business.
The Respondent is in the business of registering generic terms as domain names so as to offer them to potential clients in conjunction with name conception, logos and brand graphics, trademark research, and promotional copy services.
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 disputed domain name is obviously identical to the Complainant’s mark.
As the Respondent correctly points out, there is case law under the Policy to the effect that a business dealing in generic domain names is prima facie legitimate. See Interior Design Media Group, LLC v. P. A. Gordon, FA1467034 (Nat. Arb. Forum, Dec 19, 2012); see also Gen. Mach. Prods. Co., Inc. v. Prime Domains, FA0092531 (Nat. Arb. Forum, Jan 26, 2000) (Respondent has proven that it is in the business of selling generic and descriptive domain names such as craftwork.com. As a result, it does have a legitimate interest in the domain name.); see also Fifty Plus Media Corp. v. Digital Income, Inc., FA 0094924 (Nat. Arb. Forum July 17, 2000) (finding that the complainant failed to prove that the respondent had no rights in the domain name and had registered and used the domain name in bad faith where the respondent is an Internet business which deals in selling or leasing descriptive/generic domain names); see also John Fairfax Publ’n Pty Ltd v. Domain Names 4U, D2000-1403 (WIPO Dec. 13, 2000) (finding legitimate interests and no bad faith registration where the respondent is a seller of generic domain names).
The Panel accepts that that case law applies to the present case, because anyone may legitimately register and use a generic term. Since "parlance" is a word in the English language, and the Respondent is in the business of registering domain names composed of common words, the Panel holds that the Complainant has failed to satisfy its burden of proving that the Respondent lacks rights or legitimate interests.
And this in particular because the disputed domain name is not strongly associated in the minds of the general public with a single, particular trademark owner: while the Complainant has a trademark registration, it has not shown that its mark is famous or even particularly well known; on the contrary, the Respondent has presented evidence to the effect that many other companies use marks or business names that are similar to the disputed domain name.
The Panel holds that the Complaint fails to establish either bad-faith registration or bad-faith use. As noted above, while the mark is indeed registered, it has not been shown to be so famous as to make it reasonable to assume that the Respondent was aware of it and deliberately targeted the Complainant or sought to trade on its goodwill when registering the domain name. There is no evidence that, in the two-year period between the Complainant's registration of the mark and the Respondent's registration of the domain name, the Respondent became (or had reason to become) aware of it.
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).
Further, while passive holding of a domain name may be sufficient to indicate bad faith, those are typically cases in which the complainant's mark is sufficiently well known that it would be implausible to assume that the respondent was not aware of it. That is not the case here. See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term).
In addition, being in the business of selling domain names is not, per se, indicative of bad faith in the sense of the Policy. See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses). The opposite is true in the present case: the Respondent refuses to sell the disputed domain name to anybody who owns a related trademark. See Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no bad faith where the domain name involves a generic term, and there is no direct evidence that the respondent registered the domain name with the intent of capitalizing on the complainant’s trademark interest).
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 <parlance.com> domain name REMAIN WITH Respondent.
Ian Barker Michael
Albert
Panelist Panelist
Richard Hill, Presiding Panelist
Dated: August 19, 2013
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