Ancestry.com Operations, Inc. v Kerry Shahan
Claim Number: FA1405001560028
Complainant is Ancestry.com Operations, Inc. (“Complainant”), represented by Alexis Arena of Flaster/Greenberg, P.C., Pennsylvania, USA. Respondent is Kerry Shahan (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ancestry.pro>, registered with 1API GmbH (R2384-PRO).
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.
Mr. Maninder Singh as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 19, 2014; the National Arbitration Forum received payment on May 19, 2014.
On May 20, 2014, 1API GmbH (R2384-PRO) confirmed by e-mail to the National Arbitration Forum that the <ancestry.pro> domain name is registered with 1API GmbH (R2384-PRO) and that Respondent is the current registrant of the name. 1API GmbH (R2384-PRO) has verified that Respondent is bound by the 1API GmbH (R2384-PRO) 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 20, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 9, 2014 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@ancestry.pro. Also on May 20, 2014, 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 June 9, 2014.
An Additional Submission was received from Complainant on June 16, 2014. The Additional Submission was compliant with Supplemental Rule 7.
Additional submission was also received from Respondent on June 23, 2014.
On June 23, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Maninder Singh as 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 in its Complaint has made the following contentions : -
· Complainant in the complaint has stated that Complainant company “Ancestry.com Operations Inc.” is a publicly traded largest for-profit genealogy company in the world, which operates a network of genealogical and historical record websites and offers a wide array of genealogical related services and software products. Complainant claims that it provides access to more than 8 billion records, 33 million family trees containing approximately 4 billion profiles, and more than 1.7 million paying subscribers. Ancestry’s total annual revenue for 2013 was $540.4 million. It claims to have pioneered the market for online family history research. It enjoys widespread consumer recognition for its marks "Ancestry" and "AncestryDNA" brand names and has spent hundreds of thousands of dollars in advt. and promotion of the ANCESTRY marks on TV, print media and the Internet through its website located at Ancestry.com.
· Complainant claims that it commenced its use of the mark ANCESTRY for genealogical services in 1983. It has registered its ANCESTRY and ANCESTRY.COM trademarks in various countries, such as the European Union & Australia. Complainant claims following USPTO registration for the ANCESTRY / ANCESTRY.COM : -
(i) Reg. No. 1,577,711, issued January 16, 1990 for ANCESTRY mark;
(ii) Reg. No. 3,568,993, issued February 3, 2009 for “ANCESTRY.COM” in the USPTO.
(iii) Reg. No. 4,280,444, for "ANCESTRYDNA"
· Complainant claims that it registered the domain Ancestry.com in 1995, and thereafter began using the domain in connection with its genealogical services. Since 1995, Ancestry has registered over 100 domain names containing the mark ANCESTRY or terms confusingly similar thereto and various other top level domains. It also claims to own corresponding international domain names such as ANCESTRY.CO.UK, ANCESTRY.CO.NZ, ANCESTRY.COM.AU, ANCESTRY.SE, ANCESTRY.DE, ANCESTRY.IT, ANCESTRY.FR, and ANCESTRY.CA. Complainant claims that its services are also featured at ANCESTRYDNA.COM and PROGENEALOGISTS.COM.
· Complainant claims that it had previously commenced actions before the World Intellectual Property Organization Arbitration and Mediation Center (“WIPO”) regarding the domain names Ancestry1.com, wwwAncestry.com, and Australian-Ancestry.com. In this regard, it has relied upon the decisions of WIPO in those cases, copies whereof are attached with the Complaint as Exhibit C. Complainant contends that WIPO in its decisions has held that Complainant “Ancestry” had met the necessary elements under the applicable policies and transferred these domain names to Ancestry. Ancestry has also been successful in obtaining domains that were confusingly similar to its Ancestry.com trademark and being used in bad faith from the National Arbitration Forum. Complainant in the complaint has also relied upon some decisions (Exhibit D) of this Forum (NAF).
· Complainant contends that it has registered its "Ancestry" trademark with ICANN's Trademark Clearinghouse, demonstrating its prior rights to any new gTLD consisting of the "Ancestry" trademark and a new domain extension.
Contentions regarding Respondent’s disputed domain name “Ancestry.pro” being identical to Complainant's "Ancestry" & "Ancestry.com" trademarks.
· Complainant contends that the disputed domain name “ANCESTRY.PRO” is identical to Complainant’s federally registered ANCESTRY.COM and ANCESTRY trademarks. Complainant contends that this Forum has repeatedly held that the addition of a generic top-level domain such as “.com” “.net” “.org” or “.pro” to an otherwise identical mark does not cause a domain name to be non-identical under ICANN Policy 4(a)(i). In this regard, it placed reliance on the following decisions of this Forum : -
(i) Emmit Smith, III v. EmmitSmith.com, FA 555486 (Nat. Arb. Forum Oct. 26, 2005);
(ii) Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001);
(iii) Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001).
(iv) Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) wherein it was held that “Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy 4(a)(i).”.
Contentions regarding Respondent having no rights or legitimate interests in the disputed domain name “Ancestry.pro”
· Complainant contends that the Respondent does not sell goods or services in connection with <ancestry.pro>, but sought to capitalize on Ancestry’s trademarks by deriving revenues through referring customers seeking Ancestry’s products to another website – TestCountry.com – which was selling counterfeit AncestryDNA products. In this regard Complainant has attached with the Complaint as Exh. E the Screenshots of Respondent’s <ancestry.pro> website obtained by it on February 25, 2014. Complainant contends that it has not given Respondent permission to use its trademarks and Respondent has no trademark or service mark rights in the ANCESTRY, ANCESTRY.COM, or ANCESTRYDNA trademarks.
· Complainant contends that the Respondent is not commonly known by these marks, as evidenced by the Whois information identifying Respondent as Kerry Shahan. Complainant further contends that Respondent having no rights in the marks ANCESTRY, ANCESTRY.COM, or ANCESTRYDNA, and Respondent is not offering any goods or services, it has simply attempted to profit from misleadingly diverting customers to third-party websites, including a website unlawfully offering services under the “Ancestry” and "Ancestry DNA" names.
· Complainant claims that the Respondent was using the disputed domain name <ancestry.pro> and Ancestry trademarks to link to and advertise for an entity unaffiliated with Complainant, for his own commercial gain. Complainant contends that Respondent has acknowledged his status as an "affiliate" of a website selling potentially-counterfeit goods under the marks "Ancestry" and "Ancestry DNA".
· Complainant contends that Respondent’s use of a domain name that is identical to Complainant’s “Ancestry” marks to divert Internet users to a third-party website, for which Respondent presumably received click-through fees, was not a bona fide offering of goods or services pursuant to ICANN Policy 4(c)(i); nor was it a legitimate noncommercial or fair use pursuant to ICANN Policy 4(c)(iii). In this regard, Complainant has relied upon the following decisions of this Forum : -
(i) Emmit Smith, III v. EmmitSmith.com, FA 555486 (Nat. Arb. Forum Oct. 26, 2005);
(ii) Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat Arb Forum June 24, 2002)
· Complainant contends that Respondent’s prior use of the disputed domain name to divert internet traffic is similar to the domain uses found to be illegitimate in ConsumerInfo.com, Inc. v. Netcorp Netcorp c/o Netcorp, FA 1283469 (Nat. Arb. Forum Nov. 11, 2009), where the Forum remarked: “Complainant submitted screen shots to support its contention that Respondent is using the disputed domain names to resolve to websites displaying links to third-party websites, some of which provide credit report viewing services in direct competition with Complainant. Complainant argues that these are pay-per-click advertising links, and that Respondent monetarily gains from this use by utilizing Complainant’s mark without Complainant’s permission. In that case, the Panel had found that such use was not a use in connection with a bona fide offering of goods or service or a legitimate noncommercial or fair use under Policy 4(c)(i) and (iii), respectively.”
· Complainant, while referring to the screenshots of Respondent’s prior website (Exh. E), contends that it is impermissible for Respondent to use Complainant’s Ancestry trademarks. Complainant further contends that pursuant to its cease and desist letter, Respondent has removed the prior content from the website and the domain is now associated with a blank webpage. Further, Respondent’s failure to make demonstrable preparations to use the disputed domain name with an active website supports the finding that Respondent lacks rights to and legitimate interests in the <ancestry.pro> domain name. Therefore, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy 4(c)(i) or (iii), respectively. In this regard, Complainant relies upon the following decisions of this Forum:-
(i) Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005)
(ii) Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004)
Contentions regarding Respondent registered and used the domain name in bad faith, pursuant to ICANN Policy 4(a)(iii)
· Complainant contends that Respondent has intentionally attempted to attract, for commercial gain, internet users to the disputed domain name <ancestry.pro> by creating a likelihood of confusion with Ancestry’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and the website advertised on Respondent's website. Respondent apparently received commissions as an affiliate for diverting Internet users to a third-party website selling counterfeit Ancestry goods, and therefore encouraged and profited from customer confusion.
· Complainant contends that where a disputed domain name containing the Complainant’s trademark is being used to feature links to a website that competes with the complainant, presumably for referral fees, that use alone constitutes bad faith under the Policy. In this regard, Complainant relies upon the following decisions : -
(i) Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006);
(ii) Asbury Auto. Group, Inc., v. Tex. Int’l Prop. Assoc., FA 958542 (Nat. Arb. Forum May 29, 2007);
(iii) David Hall Rare Coins v. Tex. Int’l Prop. Assoc., FA 915206 (Nat. Arb. Forum Apr. 9, 2007);
(iv) Am. Airlines, Inc., v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007).
· Complainant further contends that the Respondent registered the disputed domain name <ancestry.pro> well after Complainant had registered “Ancestry.com” and a variety of other domains consisting of "Ancestry" and various domain extensions. Respondent was put on notice of Complainant's rights by virtue of its trademark registrations with the USPTO, its widespread use of the trademark in connection with over 100 domain names, and with the Trademark Clearinghouse. Complainant contends that it began using its ANCESTRY trademark in 1983, registered its ANCESTRY trademark with the USPTO in 1990, and registered its Ancestry.com website in 1995. Respondent’s use of the domain to sell counterfeit Ancestry goods, subsequent to Complainant’s extremely prominent and widespread use of the mark "Ancestry", creates a likelihood of confusion and suggests an attempt to attract Internet users to Respondent’s website for commercial gain.
· Further, Complainant had sent a cease and desist letter to the Respondent on March 4, 2014. The letter explained that Respondent was infringing on Complainant's intellectual property rights and gave Respondent an opportunity to respond. Respondent responded by temporarily removing the content of the website located at ancestry.pro, which is now associated with a black page and is not making active use of the domain. However, Respondent refused to transfer the domain name to Complainant, even in exchange for more-than-adequate compensation. Non-use of a registered domain constitutes bad faith registration and use under Policy 4(a)(iii). In this regard, it relies upon the following decisions : -
(i) Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000)
(ii) Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000)
· Complainant contends that the Respondent is apparently holding the domain name for the purpose of preventing Ancestry from taking it or for selling it and extracting a significant profit, which constitutes bad faith under the Policy. Moreover, the fact that the website is currently inactive does not mean that Respondent will not reactivate the site and attempt to use it to infringe again in the future. Respondent has refused to acknowledge Complainant’s rights to the disputed domain name <ancestry.pro> and continues his bad faith registration by failing to make active use of the domain. This indicates that Respondent’s registration and use of the disputed domain name is in bad faith and primarily for the purpose of disrupting Complainant’s business and profiting from its marks and customer traffic thereby evidencing that Respondent did not have and does not have any intent to use the disputed domain name if it cannot be used to direct users to third-party websites for profit and at an expense to Complainant’s business.
B. Respondent
The Respondent in its Response to the Complaint has made the following submissions : -
· Respondent contends that Complainant has intentionally submitted the following three (3) overtly false statements in its complaint : -
(i) Complainant has submitted a false quote in [5](b) where they stated “Respondent acknowledged his status as an “affiliate” of a website selling potentially-counterfeit goods under the “Ancestry” and “Ancestry DNA” marks. Whereas Respondent has never made any such claim or statement as it is clearly evidenced in the Exhibit G provided by the Complainant. Complainant has added the word “counterfeit” to create an entirely different sentence where the Respondent actually said “We are not the manufacturer of this product which is sold at Testcountry.com through Shareasale.com of which we are an affiliate only.” Respondent makes no mention of the word “counterfeit” at all in association with a DNA testing kit sold at Ancestry.Pro.
(ii) Complainant deliberately lied in an email dated April 4, 2014 (sent prior to the UDRP filing) by stating “You have acknowledged that you were using the ’Ancestry.pro’ domain name as an ’affiliate’ promoting the goods and services of Ancestry's competitors selling counterfeit Ancestry goods, for profit.” Respondent’s actual statement was “It seems this product ’may’ be in violation of your trademark for AncestryDNA. (Reg. No. 4,280,444)”. The Respondent has included the dictionary definition of the word “may” for the benefit of the Complainant. Nowhere in this email exchange did Respondent acknowledge or mention, the selling of counterfeit goods.
(iii) Complainant is making a false accusation in stating the DNA testing kit listed at <ancestry.pro> is counterfeit, libeling Testcountry.com without evidence to support that claim. Respondent has verified that Test Country sells the ”Ancestry Match Genetic Testtm” as an affiliate of General Genetics Corporation (gtldna.com) and is a highly accredited laboratory that has been in service for over a decade. Respondent has verified the validity of the product as shown in an email, dated, April 9, 2014 (Ex.H). Complainant is in violation of Article 7 (“Certification”) of their complaint by knowingly presenting false testimony and thereby acting in bad faith.
· Respondent contended in its response that the complaint be summarily dismissed without consideration of the spurious claims of the Complainant.
· Complainant has no legal right to the disputed domain name <ancestry.pro>. Respondent has a legitimate interest in the disputed domain and there is no evidence of bad faith registration or use. The disputed domain name was registered on December 02, 2011, because it incorporates a generic term composed of two common words in the English language. The Respondent has registered the domain name plainly for the generic value of the words ‘ancestry’ and ‘pro’ that are both common dictionary words. One of the words ‘pro,’ has no bearing or relation to any of Complainant’s claims in any way, shape or form.
· Complainant’s only Trademark ‘Ancestry’ does not provide it universal rights to all uses - for the common, generic and dictionary word ‘Ancestry’. The trademark list of uses relate to Periodical, Travel Agency Services and Genealogical Research Service in the field of genealogy publications, microfiche readers, and computer hardware and software. None of the uses being infringed upon, under the sliding scale of trademark protection generic or descriptive dictionary words, are offered protection. Respondent has asked the Complainant in its e-mails prior to the filing of the present complaint, to elaborate on how the Complainant feels its trademark(s) were being infringed upon. Respondent argues that it neither received any response nor anywhere in their complaint has the Complainant addressed on how the Respondent is in violation of Complainant’s mark.
· Respondent contends that the Complainant’s trademarks ‘AncestryDNA’ and ‘Ancestry.Com’ are completely separate trademarks that do not apply or have any bearing on the disputed domain name <ancestry.pro>. <ancestry.pro> is a very distinguishable domain and is not an equal or counterpart to Ancestry.com. In this regard, Respondent relies upon the following decisions of this Forum : -
(i) Limco, Inc. v. Jenkins GMC, FA 0112427 ruled in favor of the Respondent ‘Limited.Biz’ from the Complainant’s ‘Limited.Com’ stating “Respondent has registered the generic word LIMITED with a .biz extension. The domain is not identical to Complainant’s mark, but clearly distinguishable.”
(ii) Steven H. Schimpff vs Jerry Sumpton, FA 0094333 discusses dictionary word trademarks and how they should be evaluated by stating that: “The strength of a particular mark has and must be evaluated on a sliding scale. Arbitrary or coined marks are at one end of the scale and are entitled to the broadest scope of protection. When the mark is a dictionary word rather than a coined word, however, the strength of the mark, in descending order of protection is: [1] fanciful, [2] suggestive, and [3] descriptive. A generic [i.e., the name of a thing] or merely descriptive mark is at the opposite end of the scale from arbitrary marks and is not entitled to protection, because it cannot satisfy the initial requirement that a mark distinguish the owner’s goods and services from others. See, Lanham Act [15 U.S.C. §1052.] The sliding scale of trademark protection is summarized in 1 McCarthy, Traders and Unfair Competition, Chap.5 [3d ed. 1992] and see, i.e., Nutri/System v. Con-Stan Indus., Inc., (9th Cir. 1987)809 F.3d 601, 605. To receive protection, the holder of a descriptive mark must demonstrate a secondary meaning.”
· Respondent contends that Complainant-Ancestry.com even acknowledges in their own SEC filings for their shareholders’ warning many of their trademarks contain words or terms having a somewhat common usage: “Many of our trademarks contain words or terms having a somewhat common usage and, as a result, we may have difficulty registering them in certain jurisdictions. Although we possess intellectual property rights in some aspects of our digital content, search technology, software products and digitization and indexing processes, our digital content is not protected by any registered copyrights or other registered intellectual property or statutory rights. Rather, our digital content is protected by user agreements that limit access to and use of our data, and by our proprietary indexing and search technology that we apply to make our digital content searchable.” (Exh.G)
· Respondent argues that another active trademark for the word ‘Ancestry’ exists. A search of the (TESS) Trademark Electronic Search System lists another trademark holder for ‘Ancestry’ on the principal Register of the U.S. Patent and Trademark Office, Reg. No. 4359319, issued June 25, 2013 for Pet Food and their ‘Ancestry’ products are listed on Ancestrypet.com and Sammysnacks.com proving that Ancestry does not have universal rights to the word ‘Ancestry’ which seems to be the position Claimant is proposing (Ex. C).
· Respondent argues that Complainant’s ‘AncestryDNA’ is a completely separate trademark from ‘Ancestry’ and was published recently, on January 22, 2013, after the Respondent had registered Ancestry.Pro in 2011. The Complainant has not demonstrated in its complaint as to how the DNA testing kit in question has infringed on their ‘AncestryDNA’ trademark. The Complainant has also not shown any correspondence with the manufacturer of this testing kit, General Genetics Corporation (gtldna.com) or their affiliate testcountry.com. If the product they are claiming is actually “counterfeit,” it stands to reason action would be taken first and foremost against the company(s) producing the counterfeit good(s). There is no evidence of so much as a cease and desist order to this effect due to the fact that claimant knows full well the product is not counterfeit, though that has not prevented them from making spurious accusations presented herein in hopes of intimidating Respondent and/or misleading the Forum.
· Respondent further argues that the word ‘Ancestry’ is an extremely common, generic word used to describe DNA testing kits. A Yahoo search for ‘ancestry dna’ results in several companies that use the word ‘ancestry’ in connection with a DNA home testing kit. These companies include familytreedna.com, 23andMe and ancestrybydna.com that all utilize some use of the generic, common word ‘ancestry’ whether in their meta tags, home pages or domain names to describe their services and attract customers to their DNA testing websites. (Ex.D)
Contentions of Respondent on Doctrine of Laches
· Respondent further contends that the doctrine of Laches applies as the Complainant states that Complainant commenced its use of the mark ANCESTRY for genealogical services in 1983. <Ancestry.pro> was launched in June of 2004 which provides 10 years since the domain has been available for registration. Respondent is not the first registrant of <ancestry.pro> and registered the domain after it had been dropped by the previous registrant. Further, ‘Ancestry.com’ advertises on ‘Ancestry.Org’ through Google ads that rotate with other ads with links to MYHERITAGE.COM, (Ex.E) - a well known competitor of Ancestry.com. Both ‘Ancestry.Org’ and ‘Ancestry.Net’ show whois ownership other than Ancestry.com Operations, Inc. Although Respondent is not affiliated with either of these ‘Ancestry’ sites it is noteworthy that the Complainant has endorsed their use by placing ads on ‘Ancestry.Org’ that also demonstrates a substantial lack of action over a long period of time and is not consistent with their argument.
· The Respondent argues that Complainant has made numerous false accusations regarding the DNA testing kit listed at <ancestry.pro>, libeling Testcountry.com without any evidence to support that claim. Respondent is not a lawyer, nor has it any professional legal training or education, but would suspect it violates a lawyer’s code of conduct to knowingly lie which, in this context, represents at least bad faith. In a court of law, this type of action could be considered perjury. Respondent would never knowingly put a counterfeit product for sale on any website and acted promptly and professionally to provide verification of the authenticity of the DNA testing kit once called into question by the Complainant. The site has only been temporarily put offline as a result of this evaluation.
· Respondent claims that <ancestry.pro> is operated in a professional manner and is distinct without containing any design elements from the Complainant’s website. The Respondent’s website explains that it is “…An Independent Free thinking Genetic Products Site” on the Home Page and provides an About Us Page also stating “We are an independent information site”. The Respondent operates the site in an honest and ethical manner.
· Respondent contends that Complainant cites Consumerinfo.com, Inc. v. Netcorp Netcorp c/o Netcorp, FA 1283469 but that case involves a 1,017 domain portfolio of direct typographical misspellings. <Ancestry.pro> could in no way be accused of being a “misspelling” of Ancestry.com. The <ancestry.pro> website has not received misdirected web traffic from either Ancestry.com or AncestryDNA.com, nor can there be any reasonable suggestion that people looking for Ancestry.com will in any way arrive at <ancestry.pro> and mistake it for Complainant’s web site. Again, Complainant is making an unsubstantiated claim without providing any evidence that even a single customer of theirs has been confused by the <ancestry.pro> website.
· Respondent claims that it is an established online professional web developer, media and licensed architect with a record of developing a number of domains such as RobinHoodFilms.com, Filmmaker.pro, ArchitectLasVegas.com, Sparkle.pro, and Facts.pro as well as a number of additional web sites in various stages of development (Ex.I). Respondent’s business is to register domain names that incorporate generic dictionary words for development and/or resale. The <ancestry.pro> domain name consists of two generic words: “ancestry” and “pro”. The Complainant does not have an exclusive monopoly on the use of these words on the internet and their only applicable trademark on the word ‘Ancestry’ does not apply.
· Respondent has every legal right as the registrant of <ancestry.pro> to own and operate an informative site that offers a legitimate DNA testing kit and/or other genealogical products that they represent.
· Respondent contends that it did not register <ancestry.pro> in bad faith and registered it precisely for its generic value; such a registration is entirely permissible under the UDRP and under trademark law. Respondent further argues that registration of disputed domain name ‘Ancestry.Pro’ is not in any violation of the Complainant’s trademarks. There is no evidence supporting ‘AncestryDNA’ trademark infringement in connection with the testing kit offered at <ancestry.pro> nor is there any evidence of these allegations being first brought to the attention of TestCountry.com or General Genetics Corporation (gtldna.com) <ancestry.pro> has not been used in bad faith as it is a distinct, informative site in association with a genuine product.
· The Respondent contends that Complainant has been deceptive in its emails prior to their filing a UDRP complaint by making false and unsubstantiated accusations concerning a ‘counterfeit’ DNA testing kit. Complainant is not consistent with its argument in its own emails and the UDRP filing stating the kit is ‘counterfeit’ on the one hand and then ‘possibly-counterfeit’ in another (Ex.K). The fact that the Complainant doesn’t know the answer to this, begs the question whether they really know the limits of their trademarks or are simply trying to misrepresent those trademarks to obtain a domain name that they don’t have actual rights to in an attempt at reverse domain name hijacking.
· With regard to Complainant’s prior arbitration cases (Case No. D2009-1056, Case No. D2009-1057, Claim Number: FA1006001327838 and Claim Number: FA1003001311543) listed in the Complaint, the Respondent argues that those decisions were based on typographical misspellings of their registered domain name ‘ancestry.com’ such as wwwancestry.com, ancestry1.com, ancesry.com, ancestery.com and ancestery.com (e’s underlined to show misspelling) that have no bearing in this case. Respondent has not intentionally registered as a domain name any trademark holder’s mark in an attempt to extort money from the trademark holder by trying to sell the domain name to the trademark holder. Respondent is an entrepreneur, who has never solicited or initiated contact with the Complainant or any other competitors regarding the sale of this domain. <Ancestry.pro> is not for sale.
C. Additional Submissions
Complainant’s Additional Submissions :
· Complainant in its additional submissions claims that the Respondent has Acknowledged that it did not offer any Products at the <ancestry.pro> domain name, it merely linked to the products of Complainant's competitors. Complaint further claims that Respondent claims that his "business" is to register domain names for development and/or resale. It further admits that the disputed domain name is currently offline. Respondent admits that Respondent never sold or offered any products to the public directly through the Ancestry.pro website; Respondent simply operated as an affiliate of TestCountry.com, which offers goods and services that compete with Complainant. Respondent had the Ancestry.pro website advertise for and link to TestCountry.com.
· Respondent does not dispute that he is not known as <ancestry.pro> he is known as ‘Kerry Shahan’, which is also the contact name identified in the Whois Database. Further, Respondent does not dispute Complainant's claims that Respondent profited from his status as a website affiliate of TestCountry.com and that Respondent’s use of the domain name was commercial.
· Complainant claims that once a complainant makes a prima facie showing of trademark rights under Policy 4(a) through the ownership of a Federal trademark registration, the burden shifts to the respondent to establish that it is commonly known by the mark. In this regard, Complainant relies upon the following decisions of this Forum : -
(i) G.D. Searle v.Martin Mktg., FA118277 (Nat. Arb. Forum Oct. 1, 2002)
(ii) Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(iii) RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(iv) Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
· Complainant contends that Respondent has not been able to establish that he meets the requirements of Policy 4(c):(1) Respondent is not using the domain name in connection with a bona fide offering of goods or services to the public; it is not commonly known as "ancestry"; and it is not making a legitimate, noncommercial fair use of the domain.
· Respondent does not dispute that TestCountry.com's Products "may" be counterfeit Ancestry Products. The Respondent’s response includes a long soliloquy falsely accusing Complainant's attorney of lying and mischaracterizing Respondent's emails. Complainant contends that it had submitted the emails in question to the Forum in their entirety which speak for themselves. Respondent, on the other hand, revised and notated the parties' email exchanges in attaching them as an exhibit, which is improper. In his April 3, 2014 email, Respondent has stated: "It seems this product may be in violation of your trademark for AncestryDNA (Reg. No. 4,280,444). We are not the manufacturer of this product which is sold at Testcountry.com through Shareasale.com of which we are an affiliate only." (Complainant’s Exhibit-G and Respondent's Exhibit-K). While relying upon Section 45 of Lanham Act Complainant further contends that the Lanham Act, defines “counterfeit” as, “a spurious mark” which is identical with, or substantially indistinguishable from, a registered mark. Respondent admitted that the product may be in violation of Complainant’s trademark (i.e. counterfeit) and that he was a TestCountry affiliate. Therefore, despite Respondent’s insistence about the dictionary definitions of the term “may,” Complainant included the statement that Respondent admitted to be an affiliate of a website selling potentially counterfeit goods. The use of the term “potentially” was included to indicate that Respondent did not admit that these goods were actually counterfeit, but that they may be.
· Complainant contends that the goods for sale at TestCountry.com, as linked to from <ancestry.pro>, were identified using the “Ancestry,” “Ancestry Match,” and “Ancestry Home DNA” marks, which are confusingly-similar to Complainant’s registered trademarks “Ancestry” and “AncestryDNA." The actual goods and services are not sponsored by, associated or affiliated with Ancestry. The products are counterfeit. It is to be noted that the “Ancestry Match Genetic Test” that was cited and allegedly "verified" by Respondent is a different product than the “Ancestry Home DNA” kit that was displayed at Respondent’s website at <ancestry.pro>. Moreover, any dispute Complainant has with these third parties selling counterfeit products under the "Ancestry" mark has no bearing in the present case. Respondent’s actions by themselves in using the “Ancestry” mark to direct users to a product that is not authorized by Complainant, the owner of the “Ancestry” mark, constitutes bad faith use and registration of the disputed domain name <ancestry.pro>. Respondent has not rebutted the evidence that he used the "Ancestry" trademark to direct consumers to competing products not authorized by Ancestry.
· Respondent doesn't dispute that the Complainant owned a Federal Registration for "Ancestry" mark with the USPTO before the Respondent registered the disputed domain name <ancestry.pro>. Respondent does not clarify whether or not he had actual knowledge of Ancestry's rights in or use of the trademark before registering the disputed domain name <ancestry.pro>. Even if he did not, Respondent was on constructive notice of Complainant's rights by virtue of its publicly-available trademark registrations and Complainant's many years of nationwide, prevalent advertising. Complainant's trademark use dates back to 1983 and the disputed domain name “Ancestry.Pro” was registered in December, 2011. Complainant in this regard relies upon the following decisions of this Forum : -
(i) Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) - holding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration);
(ii) Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) – holding that “[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”
· Complainant contends that if registering "generic" domain names for "development and/or resale" is Respondent's business model, as he claims, then Respondent should be familiar with the ICANN Policy, with what trademarks are actually "generic," and with how to perform Trademark Office records searches before purchasing a domain name. If Respondent had performed a trademark search in this case, he would have noted the existence of multiple registrations on the Principal Register of the Trademark Office for marks containing "Ancestry" by Complainant, in connection with a wide variety of products and services, specifically including the products and services that would later be advertised on Respondent's website. Respondent also could have learnt that the Trademark Office does not register "generic" trademarks on either the Supplemental or Principal Register, as generic marks are not worthy of trademark protection. The Trademark Office has already determined that “Ancestry” is not generic and is distinctive. Nevertheless, in a last-ditch attempt to refute Complainant's evidence, Respondent presents an attack against Complainant's trademark registrations as generic and/or descriptive. Respondent's arguments highlight numerous misunderstandings regarding Complainant's registered trademarks, trademark law, and the ICANN Policy. First, the burden is not on Complainant to prove distinctiveness, once Complainant has shown that it owns a registration on the Principal Register for the mark. In this regard, Complainant relies upon the following decisions : -
(i) Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) – holding that “Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”;
(ii) Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) - holding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive). The Panel looks to the decision of the Trademark Office as to whether or not a mark is generic or secondary meaning has been acquired. Second, prior Panel decisions have already ruled on this issue. Ancestry's Complaint attached prior WIPO decisions transferring domain names containing the “ANCESTRY” mark to Ancestry. There is nothing to support Respondent’s argument that “ancestry” is a generic term, particularly given the wide variety of goods and services identified in Complainant's multiple registrations. Respondent has not shown that, despite the fact that Complainant has over one million subscribers and advertises extensively around the globe, the mark has not acquired distinctiveness and secondary meaning. The numerous trademark applications and registrations that Complainant owns around the world show otherwise.
· Complainant further contends that much of Respondent's "evidence" is irrelevant to Complainant's rights in the "Ancestry" trademark. Respondent goes so far as to quote Complainant's SEC filings, not understanding the number of trademarks that are used by Complainant in the marketplace, many of which do not even contain "Ancestry." These trademarks are unrelated to the present dispute. Complainant claims that the “AncestryDNA” mark was considered inherently distinctive, wherein the mark was registered on the Principal Register without any requirement of acquired distinctiveness necessary.
· Respondent also alleges that this mark was published on January 22, 2013. This date is not correct, as the mark was published in April of 2012. In either case, the publication date (as well as the registration date) is not used to determine priority. The date used to determine priority in a trademark is the earlier of the date of first use, or as in this case, the application filing date. The application for the “AncestryDNA” mark was filed August 1, 2011, which is prior to the date Respondent registered the disputed domain name <ancestry.pro>, namely, December 2, 2011.
· Complainant contends that the Respondent doesn't rebut the evidence that the disputed domain name is being held only for resale at an inflated price. Although at one point in his response Respondent alleges that the disputed domain name<ancestry.pro> is "not for sale," this statement appears to be in conflict with his purported business model of selling domain names. Moreover, the statement that the domain is not for sale is misleading as the domain was for sale in the past at a time when it was registered by Respondent. Respondent rejected Ancestry's offer to pay Respondent more than the registration costs of the domain, apparently hoping for a greater financial windfall. Respondent's conduct demonstrates bad faith.
· Complainant contends that the Respondent misses the point that the use of the identical mark in a domain is more likely to cause confusion than the use of a misspelled version of the Mark. Respondent suggests that he has not created confusion because he does not use a misspelling of Complainant’s trademark. This statement is incorrect given the fact that Respondent is using the identical term, which is clearly more likely to cause confusion than a misspelled term. It is reiterated that the use of a generic top level domain, such as “.pro” does not make an otherwise identical domain, not identical. The disputed domain <ancestry.pro> is identical to Complainant’s registered trademarks “Ancestry” and “Ancestry.com.” It is very likely that a consumer, viewing the generic top-level domain “.pro” would consider the goods or services offered at that website as a “professional” version of the goods and services offered by Ancestry. Further, the “professional” versions of goods and services often utilize different appearances than the general product. Thus, a consumer could easily be confused by Respondent’s website offering similar goods and services under the “Ancestry” mark. Furthermore, because the difference between the domain and the mark is the generic top-level extension, consumers are likely to enter this domain directly, and not be redirected, making confusion even more likely.
· Complainant contends that the Respondent cites Limco, Inc. v. Jenkins GMC, FA 0112427 as evidence that ancestry.pro is a distinguishable domain from ancestry.com. However, the Limco claim was between the mark “THE LIMITED” and the domain “limited.biz”. The Forum indicated that “limited” is not identical to the mark “the limited”. (emphasis added). In the present case, the terms are identical, namely Complainant’s mark is “Ancestry” and the disputed domain is “ancestry” plus a generic top-level domain (.pro). As stated hereinabove, generic top-level domains are irrelevant. Therefore, Limco has no relevance to the present case as the facts of that case are clearly distinguishable in that the mark and domain at issue were not identical.
· Complainant contends that the Respondent attempts to invoke the doctrine of laches, which has no applicability in the present case. Respondent asserts that the domain was registered by someone else prior to him and that it’s been 10 years since the “.pro” domain was launched. Neither of these statements has any bearing on the present case. In fact, if they have any use, it is to clarify that Complainant did not “sleep on its rights” as it took action almost immediately when it became aware of Respondent’s infringing domain. Respondent’s infringing content was only recently launched and Respondent apparently only began advertising TestCountry’s products recently. Moreover, in the following decisions the Forum has held that the Policy does not consider laches to be a viable defense : -
(i) Square Peg Interactive, Inc. v. Naim Interactive, Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) - holding that “laches by itself is not a defense to a complaint brought under the Policy.”
(ii) E.W. Scripps Co. v. Sinologic Indus., D2003-0447 (WIPO July 1, 2003) – holding that "[T]he Policy does not provide any defense of laches. This accords with the basic objective of the Policy of providing an expeditious and relatively inexpensive procedure for the determination of disputes relating to egregious misuse of domain names. The availability of defenses such as laches could result in significant delay and expense."
· Complainant contends that the Respondent cites other websites not owned by Complainant, but advertising Complainant’s genealogy products, in an attempt to show that Complainant has somehow slept on its rights in those cases. Respondent appears to be citing websites that are operating with Ancestry’s authorization; Respondent was not advertising Ancestry products or operating with Complainant’s authorization. In any event, the websites are irrelevant to this dispute.
· Complainant contends that the Respondent misunderstands the definition of trademark infringement and the definition of "bad faith" under the Policy. Respondent states: “Respondent has every legal right as the registrant of <ancestry.pro> to own and operate an informative site that offers a legitimate DNA testing kit and/or other genealogical products that they represent.” This statement is entirely false. Respondent's status as the owner of a domain name containing another party's registered trademark does not confer upon him a right to use the domain name for his own commercial gain and in connection with competitive products and services, regardless of the consumer confusion and harm that results to the trademark owner. If Respondent wished to avoid trademark infringement, then he might have avoided any use in connection with the field of "DNA testing kits." Instead, he specifically sought out that field. Respondent cannot hide behind his suggestion that Ancestry take up the issue with TestCountry.com, as Respondent is not the actual product manufacturer. Nor can Respondent hide behind his attempt to portray his website as "informational." Respondent was not selling information; Respondent was selling websites and collecting referral commissions. This is the type of conduct that is indisputable evidence of bad faith.
Respondent’s Additional Submissions :
· The Respondent in its additional submissions argued that the Complainant has not presented any additional relevant evidence in their supplemental filing other than to reiterate and attempt to justify their original false statements as well as attempt to divert the burden of proof to the Respondent as the Complainant does not provide any significant evidence to support their claims. Complainant attempts to distract the Forum from the Complainant’s dishonesty by calling Respondent’s statements “personal attacks,” without even bothering to refute so much as one of the lies made by the Complainant cited in his original Response. It’s interesting that the Complainant’s supplemental filing takes seven pages to provide additional material without so much as addressing their previous false statements which were brought to light.
· Respondent argues that the Complainant now submits another, false claim stating that “Respondent Does Not Dispute That TestCountry.com’s Products “May” Be Counterfeit Ancestry Products.” Once again, Respondent has never used the word ‘Counterfeit’ in connection with the DNA testing kit sold at <ancestry.pro>. This misstatement is even evidenced in Complainant’s own Exhibit G filing (as well as Respondent’s exhibit K). Complainant does not even deny that, as pointed out in Respondent’s original statement, that Complainant has been dishonest in their emails where they attempted to deceive the Respondent and the Forum. Furthermore, Respondent’s original filing has stated that the DNA testing kit offered at Respondent’s site, is not a counterfeit product. Evidence was provided to this effect which, again, Complainant doesn’t address or refute.
· Respondent argues that the Complainant’s trademark ‘Ancestry’ does not apply to DNA testing kits. Respondent further argues that Complainant’s only relevant trademark is for the word ‘Ancestry’ that does not include the use of the term for DNA testing kits. Respondent argues that ‘Ancestry’ is a common word, used extensively by third parties, which is not inherently distinctive.
· Respondent further argues that Generic and descriptive words used often by third parties are weak trademarks. A trademark is considered strong if it is conspicuously distinctive. If not distinctive, but rather a common word or words, it is a weak trademark and its protection is narrower. In this regard, it relies upon the following decisions : -
(i) Bell v. Davidson, 597 P.2d 753 (Okla., 1979). Words used often by other parties are weak trademarks.
(ii) Exxon Corp. v. Texas Motor Exchange of Houston, Inc.,628 F.2d 500 (C.A.5 (Tex.), 1980). Example: EXXON is a strong trademark. DOMINO, SUN, UNIVERSAL and WORLD are weak trademarks because of their common use by third parties. A mark incorporating a common English word is inherently weaker than a mark consisting of fanciful and fictitious terms.
(iii) Michael Caruso & Co. v. Estefan Enterprises, 994 F.Supp. 1454 (S.D. Fla., 1998). A `weak' mark is a mark that is a meaningful word in common usage or is merely a suggestive or descriptive trademark. A strong mark is entitled to a greater degree of protection than is a weak one, because of its unique usage."
(iv) Alpha Indus., Inc. v. Alpha Tube & Shapes, Inc., 616 F.2d 440, 445-46 (9th Cir.1980). (Ex. L, Respondent)
· Respondent argues that the Complainant’s ‘Ancestry’ US trademark registration is not a principal mark, but is predicated on Lanham Act §2(f) where the section permits registration of descriptive marks based on a declaration by the applicant that they have used the mark in connection with goods and services for which the mark was sought for at least five years. Complainant is desperately trying to shift the burden to the Respondent, but has not provided sufficient evidence to show how having a testing kit on the Respondent’s website is in any way a violation of their ‘Ancestry’ trademark. First, Respondent acknowledges and recognizes that Complainant has a US trademark registration predicated on Lanham Act §2(f) for ‘Ancestry’, but the goods and services for this mark are different from those offered by <ancestry.pro>. Secondly, Complainant’s Ancestry mark is absolutely a generic term, by definition and usage, and is widely utilized by third parties within the genetic products industry as a description for DNA testing kit products. The original response cited numerous examples where word “Ancestry” is being used to describe products and services throughout the internet and world by several different companies including a pet food product. Further, for Complainant to state that “There is nothing supporting Respondent’s argument that “ancestry” is a generic term, particularly given the wide variety of goods and services identified in Ancestry’s multiple registrations.” is absurd for a word that has been around and in common usage for 500 years prior to the Complainant’s first use. Thirdly, Complainant does not provide any examples to support their statement that “Respondent goes so far as to quote Ancestry’s SEC filings, not understanding the number of trademarks that are used by Ancestry in the marketplace, many of which do not even contain the word “Ancestry.” Complainant does not refute that the risk statement is not related to their trademarks containing the word “Ancestry” in their response either.
· Respondent further argues that the Complainant has stated that their ‘AncestryDNA’ mark is distinctive but does not provide evidence showing how the ‘AncestryDNA’ mark has any bearing on <ancestry.pro> or the DNA testing kit offered at the site. It seems Complainant is still trying to cast a vast net over any usage of the word “ancestry,” regardless of the actual validity of the claim, in hopes of grabbing what they can with or without justification. There is no connection between this trademark and the <ancestry.pro> website or the DNA testing kit offered there.
· Respondent contends that “Ancestry”, “Ancestry Match” and “Ancestry Home DNA” are descriptive terms associated with the product itself. Their original response demonstrates that ‘Ancestry’ is widely used throughout the industry as a descriptive term for DNA testing kit products by a variety of manufacturers. A Trademark search does not produce any results for “AncestryMatch” or “AncestryHomeDNA” terms nor has Complainant stated that they own either of these marks. With third party usage of “AncestrybyDNA”, filed on August 12, 2005 (much earlier than Complainant’s, filed August 1, 2011) and registered with the USPTO and not owned by the Complainant it is reasonable to believe that any of these terms could be used by a website, in association with a product already utilizing these terms within their advertising.
· Respondent contends that it is not under any obligation to file a trademark for <ancestry.pro> and to suggest that it does not have rights based on ownership and/or first use, is without merit. The Respondent further contends that Complainant is trying to point out that the product listed on the Respondent’s website infringes on Complainant’s AncestryDNA mark, but also states that “Moreover, any dispute Ancestry has with these third parties selling counterfeit products under the “Ancestry” mark has no bearing in the present case”. The Respondent argues that it couldn’t disagree more, since they cannot furnish a piece of evidence of complaint to the manufacturer itself, nor as much as even a cease and desist letter, it seriously undermines any legitimacy to their claim. It’s highly convenient for the Complainant to make spurious, unfounded and unverified claims against the product manufacturer since the manufacturer has no voice in this dispute to defend itself. The fact remains that despite bringing this point up clearly in Respondent’s original response, Complainant again fails to address this very salient point. Since Complainant has failed to prove any evidence (again) to support their claim of the alleged ‘counterfeit’ product, it seems either no such evidence exists or there is evidence which only bolsters the Respondent’s position which Complainant is, understandably, unwilling to provide.
· Respondent argues that Limco, Inc. v. Jenkins GMC, FA 0112427, is relevant, as the complaint was denied against the Complainant who owned Limited.com where the Respondent owned Limited.biz described as distinguishable from .com. Respondent further argues that in a follow up appeal to this case, Limco, Inc. v. Jenkins GMC, Claim Number: FA 0115082, the complaint was again denied. Further discussion in that case discusses non-distinctive trademarks: “In view of the many trademarks and trade names that contain the term “Limited,” as set forth in Respondent’s evidence, The LIMITED mark is not a particularly distinctive mark, especially in the U.K. where the Complainant is located. Thus, this case is distinguishable from the cases cited by Complainant involving famous marks. E.g., GUESS? Inc. v. Lee Koon Joo, FA 102949 (Nat. Arb. ForumJan. 31, 2002).”
· Respondent states that the Complainant is bringing up a new piece of information with the motivation of establishing new and unacceptable precedent for the .pro extension being inferred to be a “professional version of Ancestry or Ancestry.com” where they are saying: “It is very likely that a consumer, viewing the generic top-level domain “.pro” would consider the goods or services offered at that website as a “professional” version of the goods and services offered by Ancestry.” Respondent argues that the Complainant wants to hold its URL to a higher standard than any other extension and effectively penalize Respondent for having a presumably “better” extension than other generic web addresses using the same generic word. By this logic, anyone with a .pro generic URL stands to lose their domain essentially invalidating the entire .pro extension. E.g., seeing Pizza.pro, Cars.pro, Insurance.pro and Stocks.pro all being handed over to the owners of corresponding .com’s by virtue of this flimsy argument would be tragic, and if accepted, would be a horribly unfair and unfortunate precedent.
· Respondent further argues that Complainant supports Ancestry.Org ads linking to competitor site Myheritage.com. Complainant has contended that it authorizes and supports the ‘Ancestry.net’ and ‘Ancestry.Org’ websites. ‘Ancestry.Org’ advertises competitive products on this site and the Respondent now acknowledges that they are okay with other competitive products and services being offered through their affiliated websites. It is worth noting that, again, Complainant has not provided the Forum with any documents actually showing an affiliation agreement or whether one actually existed prior to the commencement of this UDRP filing.
· Respondent contends that the Complainant has not registered the domain name in bad faith. Respondent has clearly stated in his original response that “Respondent did not register <ancestry.pro> in bad faith and registered it precisely for its generic value; such registration is entirely permissible under the UDRP and under trademark law.” However, it appears that Complainant is still trying to assert tacit ownership of any variation of any URL with any use of the word “ancestry” through nothing more than the use of sophistry and not actual, verifiable facts. They appear to be taking a shotgun approach by throwing out the “ancestry” mark in one case and the “ancestryDNA” mark in another in hopes that they can get either one to stick.
· The Respondent has not used the domain name in bad faith. It has not profited from the Ancestry.pro website at the Complainant’s expense in any way, certainly not by misleading their customers. Furthermore, <ancestry.pro> carries no imitation or counterfeit products of the Complainant. There is no evidence to support any such claim and the Complainant has again failed to provide any evidence in their supplemental filing despite requests to do so. The Ancestry.pro website is distinct from the Complainant and there is no confusion being caused in the marketplace which is further supported by no evidence proving otherwise. Respondent’s site is no more confusing than Ancestry.net, Ancestry.org, Ancestry.biz, Ancestry.co, Ancestry.guru, Ancestry.xyz, Ancestry.club, etc. The Respondent states that its domain name site is temporarily offline due to false allegations brought on by the Complainant. Respondent’s actions were not just reasonable, but demonstrate our responsibility and willingness to verify the quality of products listed on the site. Although our site is in an early stage of development, there clearly is a demonstrable preparation to use the domain name in connection with a bona fide offering of goods or services. Pay-per-click sites do constitute a bona fide offering of goods or services, especially when used in connection with a descriptive term. In this regard, Respondent relies upon the following decisions of this Forum : -
(i) Future Steel Holdings, Ltd. V. Private Whois Serv., Case No FA 1350737 (Nat. Arb. Forum Dec. 6, 2010) where the panel supported the Respondent’s use of a pay per click site stating: “The Panel determines that Respondent’s use of the <steelmaster.com> domain name constitutes a bona fide offering of goods or services pursuant to Policy 4(c)(i).
(ii) McMullen Argus Publ’g Inc. v. Moniker Privacy Servs., D2007-0676 (WIPO July 24, 2007) - holding that “pay-per-click websites are not in and of themselves unlawful or illegitimate”);
(iii) EU Prop. Portfolio Ltd. v. Salvia Corp., FA 873726 (Nat. Arb. Forum Feb. 7, 2007) - holding that the respondent’s website usage of pay-perclick links was a bona fide offering of goods and services).”
· The Respondent argues that the Complainant’s main argument is an objection they have over a DNA testing kit listed on the website that infringes on their AncestryDNA trademark. It is not acceptable to send emails as a tool to deceive and manipulate the Respondent into forfeiting rights to our domain name. From day one, after the Respondent had received their initial email, it was suggested that they take this up with the product manufacturer which would be the very root of the supposed infringement issue if that were genuinely the concern, but still no evidence provided even suggests that they have done that or are concerned about this “counterfeit” product at all except as it appears on Respondent’s site. Respondent seriously questions Complainant’s motivation, as their main objective appears to be obtaining our domain rather than pursuing an “infringing” product where they have no evidence to support the claim.
· Respondent argues that the Complainant has stated, “Respondent rejected Ancestry’s offer to pay Respondent more than the registration costs of the domain, apparently hoping for a greater financial windfall.” This statement is completely false. At least Complainant included the word “apparently” in this instance evidencing that their claim is nothing more than a “guess”.
· Respondent contends that Complainant’s Trademark for “Ancestry” does not include “DNA testing kits”. Respondent has not created his business based on periodicals or the field of genealogical publications or microfiche readers, but on what the facts show to be a legitimate use and completely permissible. The Respondent has been in the business to buy and sell domains for over 15 years. His motivation, as is most serious internet professionals is not to take advantage of trademark owners but to invest in generic domains. Respondent takes a serious interest in developing domains within his portfolio for legitimate commercial business purposes as is evident through our established record of legitimate websites. The Complainant even admits in their closing statement that the Respondent could have avoided this, if the site was not used in connection with the field of “DNA testing kits”. The Complainant seems to acknowledge all of their other arguments are so insignificant to not warrant a UDRP filing at all since they admit the only element worthy of this dispute is the presence of the DNA testing kit on Respondent’s site; an argument with no legal basis, for which no evidence has been provided. Despite considerable time and effort that clearly went into Complainant’s supplemental response, most of the points made by the Respondent have gone unaddressed by Complainant: No evidence has been provided to support their allegation of a “counterfeit” product, No rationale for their trademark ‘AncestryDNA’ has any bearing on this case, no customer complaints or evidence on how Ancestry.pro has caused any confusion in the marketplace and provided no explanation on why their ‘Ancestry’ trademark relates to other goods and services not related to this case.
· Respondent contends that without providing reasonable evidence, Complainant seems intent to continually reiterate the imaginary mark infringement which they have not provided evidence for. In fact, far too little to no evidence has been provided on a number of key issues related to this case.
· Complainant contends that it has rights in the ANCESTRY mark through its use and various registrations with the USPTO. Complainant claims that it has used and registered its ANCESTRY and ANCESTRY.COM trademarks in various countries around the globe, such as the European Union and Australia for providing a network of genealogical and historical record websites and offering a wide array of genealogical related services and software products since 1983.
· Respondent contends that the disputed domain name <ancestry.pro> is comprised of common and generic terms “ancestry” & “.pro” and thus cannot be deemed confusingly similar to Complainant’s mark. Registration and use of disputed domain name comprising such common terms cannot be said to be done in bad faith.
· The Panel finds that the use of the domain name <ancestry.pro> by the Respondent is in bad faith and the Respondent has no rights or legitimate interests in relation to the domain name.
· The Panel also finds that the domain name <ancestry.pro> deserves to be transferred to the Complainant and the Respondent is not entitled to use this domain name. The Complaint deserves to be allowed forthwith and the Panel decides accordingly. However, in terms of the ICANN Policy and the requirements thereunder, the formal observations / findings of the Panel are as under.
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.
· There is no doubt that Complainant has rights in the ANCESTRY mark, used in connection with genealogical services. Complainant states it owns registrations for the mark with the USPTO (e.g., Reg. No. 1,577,711 registered January 16, 1990). It is thus found that Complainant has rights in the ANCESTRY mark within the meaning of Policy 4(a)(i) because Complainant holds valid registrations for the mark with the USPTO. In this regard, Panel places reliance on decision of this Forum in Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy 4(a)(i).
· The contention of the Respondent that the disputed domain name is comprised of a common and generic term and thus cannot be deemed identical to Complainant’s mark, is without any merit and deserves to be rejected.
· The Panel finds that the allegation by the Complainant that Respondent’s <ancestry.pro> domain name is identical to Complainant’s ANCESTRY mark, is correct. Complainant asserts that the disputed domain name incorporates Complainant’s mark in its entirety while only adding the gTLD “.pro.” The Panel observes that past panels have also found that the addition of a gTLD is irrelevant for the purpose of Policy 4(a)(i) analysis. In this regard, the Panel places reliance on the decision in Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) – holding that <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Therefore, the Panel finds that Respondent’s <ancestry.pro> domain name is identical to Complainant’s ANCESTRY mark pursuant to Policy 4(a)(i).
· The Panel observes that in this case, the contention of the Respondent that the <ancestry.pro> domain name is comprised of a common and generic term and as such cannot be found to be identical to Complainant’s mark – in view of the provison of 4(a)(i) of the Policy, would not require any further determination 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. In this regard the Panel relies upon the following decisions of this Forum : -
(i) Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) - examining Respondent’s generic terms arguments only under Policy 4(a)(ii) and Policy 4(a)(iii) and not under Policy 4(a)(i);
(ii) Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) - holding 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).
· Therefore, the Panel concludes that Respondent’s <ancestry.pro> domain name is identical and confusingly similar to Complainant’s ANCESTRY mark pursuant to Policy 4(a)(i).
· The attention of the Panel is drawn to the fact that that the 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. In this regard following decisions are relevant : -
(i) Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) - holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name.
(ii) AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) – holding that “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.”
· The contention of the Complainant that it has registration of the trademark with the USPTO is not disputed. This claim is correct. The Respondent has no permission / licence from the complainant to use the word ANCESTRY in any manner whatsoever. As such, the Panel finds that there is substance in the contentions raised by the Complainant that the Respondent does not have any rights or legitimate interests in the <ancestry.pro> domain name. The Complainant is also right in contending that the Respondent is not commonly known by the disputed domain name. The Panel observes that the WHOIS record for the disputed domain name lists “Kerry Shahan” as the domain name registrant. The Panel also observes that past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name.
· In this regard, the Panel finds the decision of this forum in 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. Having regard to the fact that Respondent was not authorized by Complainant to use the ANCESTRY mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <ancestry.pro> domain name under Policy 4(c)(ii).
· The Panel has also examined the clarification given by the complainant with regard its plea that prior to receiving Complainant’s cease and desist letter, Respondent used the <ancestry.pro> domain name to divert Internet users to a third-party website that was selling counterfeit versions of Complainant’s Ancestry DNA products (Exhibits E & F of Complaint). The clarification in its additional submission Complainant is to the extent that the competing product associated with the <ancestry.pro> domain name is only potentially counterfeit. The Respondent has taken serious objections to the user of the words ‘potentially’ and ‘counterfeit’. Nevertheless, Complainant claims that at bottom Respondent is using the disputed domain name to promote a competing product. The Panel observes that various Panels have found that operating a disputed domain name in connection with the sale of counterfeit goods does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use.
(i) World Wrestling Entertainment, Inc. v. xie yue hong / Li xiao, FA 1511882 (Nat. Arb. Forum Aug. 30, 2013) (finding that Respondent’s unauthorized sale of these counterfeit goods does not create either a Policy 4(c)(i) bona fide offering of goods or services, or a Policy 4(c)(iii) legitimate noncommercial or fair use) Additionally, panels have held that using a disputed domain name to promote competing goods or services fails to pass tests of Policy 4(c)(i) or 4(c)(iii).
(ii) Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) - holding that the respondent was not using the domain name within the parameters of Policy 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site.
(iii) Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) - “Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.” Therefore, the Panel finds that the product marketed by Respondent via the <ancestry.pro> domain name is not making a bona fide offering of goods or services, or a Policy 4(c)(iii) legitimate noncommercial or fair use because Respondent is using an identical domain name to market a closely competing product.
· Complainant contends that the <ancestry.pro> domain name currently resolves to a blank page, which indicates Respondent’s failure to make demonstrable preparations to use the disputed domain name for a legitimate purpose (Complainant’s Exhibit H). The Panel observes that Past panels have also held that a failure to make an active use of a disputed domain name provides evidence of a respondent’s lack of rights or legitimate interests under Policy 4(a)(ii).
(i) U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) – holding that “Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy 4(a)(ii).”
(ii) Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) - holding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii).
· Having regard to the totality of the relevant facts on this aspect, the Panel finds that Respondent’s failure to make an active use of the <ancestry.pro> domain name provides further evidence that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy 4(a)(ii).
· Complainant contends that Respondent registered and is using the <ancestry.pro> domain name in bad faith. In its additional submission, Complainant asserts that on September 27, 2013, the disputed domain name was listed for sale on <facts.com>. (Complainant’s Additional Submission Exhibit-I). Previous panels have also found that a general offer of sale of a confusingly similar domain name constitutes bad faith registration and use under Policy 4(b)(i).
(i) CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) – holding that “There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent”;
(ii) Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) – holding that “Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy 4(b)(i).” Therefore, the Panel finds that the Respondent’s offer to sell the <ancestry.pro> domain name constitutes bad faith pursuant to Policy 4(b)(i).
· Complainant claims that, based on Respondent’s prior use of the <ancestry.pro> domain name, Respondent was attempting to disrupt Complainant’s business by diverting Internet users to a competing website selling counterfeit, or at least competing, versions of Complainant’s AncestryDNA products (Exhibits E & F Complainant’s). The Panel observes that previous panels have also found that the sale of either counterfeit or competing goods through a disputed domain name constitutes a bad faith disruption under Policy 4(b)(iii).
(i) Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) – holding that “Respondent registered and used the domain name in bad faith, pursuant to Policy 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”);
(ii) Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) - concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products). Therefore, the Panel finds that Respondent registered and is using the <ancestry.pro> domain name in bad faith pursuant to Policy 4(b)(iii) because the Respondent is using the disputed domain name to market competing goods, which may be counterfeit, on behalf of Complainant’s competitor.
· Complainant alleges that, based on Respondent’s prior use of the <ancestry.pro> domain name, Respondent attempted to intentionally attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s ANCESTRY mark. Respondent received commissions as an affiliate of the third-party website selling counterfeit goods or competing goods, and thus Respondent was able to profit from consumer confusion (Complainant’s Exhibits E and G). The Panel observes that previous panels have also found that using a disputed domain name to sell competing and/or counterfeit goods demonstrates bad faith via attraction for commercial gain under Policy 4(b)(iv).
(i) Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) – holding that “Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”
(ii) Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) – holding that the evidence of bad faith under Policy 4(b)(iv) where the respondent created confusion as to the complainant’s connection with the website by selling counterfeit products). Therefore, the Panel finds that Respondent registered and is using the <ancestry.pro> domain name in bad faith pursuant to Policy 4(b)(iv) because Respondent is promoting competing goods through the disputed domain name.
· Complainant claims that Respondent had knowledge of Complainant’s ANCESTRY mark prior to registering the <ancestry.pro> domain name because Respondent was put on notice by Complainant’s trademark registrations and widespread use of the trademark in connection with over 100 domain names. The Panel observes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy 4(a)(iii). The Panel in this regard finds the following decisions to be relevant : -
(i) GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) – holding that “[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”;
(ii) Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) - holding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”.
· Complainant asserts that the <ancestry.pro> domain name currently resolves to a blank page, which demonstrates that Respondent is not making an active use of the disputed domain name. Previous panels have also found that failure to make an active use of a disputed domain name within a reasonable time after registering the domain name demonstrates bad faith under Policy 4(a)(iii). In this regard, the Panel finds strength from the decision of this Forum in Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) - concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
· Therefore, the Panel finds that Respondent have violated Policy 4(a)(iii) because Respondent is currently not making in active use of the <ancestry.pro> domain name.
Doctrine of Laches
· Respondent argues that doctrine of laches applies in this case because the “.pro” domain names became available in 2004, more than one person has held the <ancestry.pro> domain name since that time, and Complainant has not at any time attempted to register the disputed domain name. However, the Panel finds that the doctrine of laches does not apply as a defense, and correspondingly choose to disregard Respondent’s assertions. In this regard, the Panel finds the following decisions to be pertinent : -
(i) Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) – holding that “The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”
(ii) Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) - holding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value.
(iii) Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) – holding that “Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desire requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”
Reverse Domain Name Hijacking
· Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <ancestry.pro> domain name, of its rights to use the disputed domain name. Respondent claims that Complainant is attempting to reverse hijack the disputed domain name by misrepresenting the extent of their trademark rights and Respondent’s actions in this case. However, the Panel observes that the Complainant has claimed to be using the marks “ANCESTRY” and “ANCESTRY.COM” and has registered its mark in USPTO (Reg. No.1,577,711 on January 16, 1990. The Panel observes that Complainant has satisfied Policy 4(a)(i). Hence, the Panel finds that Complainant has not engaged in reverse domain name hijacking. In this regard the Panel finds the following decisions to be relevant : -
(i) World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) – holding that “Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”);
(ii) Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) - holding that no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ancestry.pro> domain name be TRANSFERRED from Respondent to Complainant.
Maninder Singh, Panelist
Dated: July 6, 2014
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