Notice
The December 22, 2014 decision of the Panel in the following UDRP proceeding has been withdrawn by agreement of the parties and Consent Judgment dated October 9, 2019 and issued in Russ Smith v. Directors Choice, LLP, Case 1:15-cv-00081-JBS-AMD in the U.S. District Court for the District of New Jersey:
Director’s Choice, LLP v. HELP.org Domain Administrator/HELP.org, LLC,
FA 1411001590433 (December 22, 2014)
Signed:
Renee Fossen
Director of Arbitration
Forum
6465 Wayzata Blvd., Suite 480
Minneapolis, MN 55405
Phone 952.516.6456
E-mail rfossen@adrforum.com
Director's Choice, LLP v. HELP.org Domain Administrator / HELP.org, LLC
Claim Number: FA1411001590433
Complainant is Director's Choice, LLP (“Complainant”), represented by Matthew H. Swyers of The Trademark Company, PLLC, Virginia, USA. Respondent is HELP.org Domain Administrator / HELP.org, LLC (“Respondent”), represented by Russ Smith of HELP.org, LLC, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <directorschoice.com>, registered with TUCOWS, 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.
Scott R. Austin, Esq., as Chair
Hon. Bruce E. Meyerson, (Ret.), as Co-Panelist
Richard W. Hill, as Co-Panelist
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 18, 2014; the National Arbitration Forum received payment on November 18, 2014.
On November 18, 2014, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <directorschoice.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 19, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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@directorschoice.com. Also on November 19, 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 November 19, 2014.
A timely Additional Submission was received from Complainant on November 21, 2014.
A timely Additional Submission was received from Respondent on November 26, 2014.
A timely Additional Submission was received from Respondent on December 8, 2014.
On December 1, 2014, pursuant to Complainant's request to have the dispute decided by a three-member Administrative Panel (the "Panel"), the National Arbitration Forum appointed Scott R. Austin, Esq., as Chair, and Honorable Bruce E. Meyerson and Richard W. Hill, as Co-Panelists.
In E-Mails dated 28 November and 1 December 2014, the Respondent contested the process used by the Forum to select the panel, arguing that the Forum should not have taken into account the list supplied by the Complainant because it was submitted too late. Having reviewed the Respondent's submissions regarding this issue, the Panel holds that the Forum acted properly and that it was properly constituted.
The Panel notes that the Respondent has filed a Consumer Assistance Request with the Minnesota Attorney General on 1 December 2014, related to the nomination of the Panel. The Panel holds that the Request is outside the scope of the present proceedings.
Having reviewed the communications records, 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 makes the following contentions:
1. On November 6, 1996, Complainant organized its business as a Texas corporation, Director’s Choice, Inc., and converted that entity into Director’s Choice, LLP on December 17, 2002, the entity trade name under which it operates today.
2. Complainant had common law trademark rights in the United States with respect to the mark DIRECTOR’S CHOICE and DIRECTOR’S CHOICE TOUR AND TRAVEL (each a “Mark” and collectively, the “Marks”) prior to the date of registration of the disputed domain name and at all times since.
3. Complainant has been continuously using and promoting the Marks since at least as early as 1997 as the source of services for arranging travel tours for music organizations with the goal of providing performance and travel opportunities with the student/director’s educational requirements as a priority.
4. Complainant has pending applications for U.S. Trademark Registration for DIRECTOR’S CHOICE, filed July 14, 2014 (Ser. No. 86/336,351), for arranging travel tours for music organizations; organization of travel, in International Class 39; and DIRECTOR’S CHOICE TOUR AND TRAVEL, filed July 14, 2014 (Ser. No. 86/336,439), for arranging travel tours for music organizations; organization of travel in Class 39, which applications each claimed use in commerce at least as early as April 1997.
5. Complainant has asserted facts establishing Complainant’s common law trademark rights in the Marks, including that soon after launching the company in 1997, Complainant received a significant amount of direct input from well-respected band, choir and orchestra directors across the southwest United States, including, but not limited to, Texas, New Mexico, and Arizona. Complainant began hosting contests and assisting with travel needs, totally from the director’s perspective, in the spring of 1997. Over the next decade, Complainant worked with thousands of music programs travelling across the continental United States, Hawaii and Europe. During this time, Complainant also offered performance opportunities in Dallas, San Antonio, Houston, South Padre Island, New Orleans, Branson, Durango, Beaver Creek, Los Angeles, San Francisco, Honolulu and Orlando. By the close of the decade, Complainant had become a full service tour operator while producing numerous proprietary concert events. Complainant continues to provide its travel and performance services to music educators, bands, choir groups and other customers across the United States;
6. Complainant has continuously used the mark in connection with advertisings, invoices, brochures, and in other marketing materials since 1997.
7. Complainant through its longstanding use of the Marks has made considerable business advertising expenditures and achieved significant annual sales and as such has invested substantial resources in promoting the goods and services marketed under the Marks over an extended period of over 17 years.
8. Respondent registered the <directorschoice.com> domain name on March 7, 2000; nearly three (3) years after Complainant began using the Marks in commerce.
9. Respondent’s <directorschoice.com> domain name is confusingly similar to the Marks, and virtually identical to Complainant’s DIRECTOR’S CHOICE mark.
10. Respondent is not commonly known by the <directorschoice.com> name, nor has Complainant authorized Respondent’s use of the Marks.
11. Respondent hosts a website at the disputed domain name that posts click-through advertising and features Respondent’s offering of the disputed domain name for sale for $45,000, which evidence of Respondent’s intention to sell the Domain Name to a third party shows that Respondent lacks rights and legitimate interests in the domain name.
12. Respondent has not used the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use.
13. Respondent registered and is using the disputed domain name <directorschoice.com> in bad faith.
14. Respondent is offering to sell the disputed domain name for a price of $45,000, which significantly exceeds the cost of acquiring and maintaining the disputed domain name.
15. Respondent has attempted to capitalize on Complainant’s goodwill by using the mark to lure users to the associated website and away from Complainant.
16. Respondent’s inactive holding of the domain name for fifteen years evinces bad faith.
17. Respondent is intentionally attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s Marks.
B. Respondent makes the following contentions:
1. The Complaint should be dismissed based on the doctrine of laches.
2. Complainant does not hold any valid trademark registrations for the DIRECTOR’S CHOICE mark.
3. Complainant’s applications do not carry the same weight as registrations.
4. Complainant’s evidence in furtherance of its common law trademark rights are lacking as the attached exhibits show Complainant using service marks for various regional services and projects, but merely references the company name Director’s Choice, LLP.
5. Respondent has parked the disputed domain name with Help.org, a web developer, to operate the disputed domain name as it does for hundreds of websites. HELP.org sometimes offers domain names for sale as a means to raise capital for other projects.
6. Since Complainant did not have trademark rights at the time of Respondent’s registration of the disputed domain, Respondent could not have registered in bad faith.
7. Respondent’s willingness to sell the disputed domain name does not necessarily evince bad faith as Respondent’s sole purpose in the name was not for resale.
8. Respondent requests a finding of Reverse Domain Name Hijacking.
C. Complainant’s Additional Submission
1. Laches is an equitable remedy and has no place in UDRP proceedings.
2. Respondent has not shown that it has suffered any prejudice by Complainant’s delay in bringing this Complaint.
3. Trademark rights are acquired and maintained by actual use of the mark in commerce, and unregistered marks are also protected under common law principles.
4. Complainant’s continuous use of the mark serves to satisfy Policy ¶ 4(a)(i). Respondent’s claim that this <directorschoice.com> domain name was registered for the purposes of providing movie websites is unsubstantiated, and insufficient to show Policy ¶ 4(a)(ii) rights.
5. Respondent is using the domain name for a pay-per-click advertising site featuring, in part, third-party advertisements for travel services that are similar to those offered by Complainant.
6. The absence of promotional development of the domain name, the offer to sell the domain name for $45,000, and the placement of advertisements at the resolving website related to Complainant’s field indicate Respondent registered the domain name for the purpose of selling the domain name in excess of out-of-pocket costs.
7. A finding of reverse domain name hijacking is not warranted as Complainant is not acting in bad faith.
D. Respondent’s First Additional Submission
1. Laches should be applied as a defense because Respondent has been prejudiced by the delay as it is not reasonable to expect Respondent to provide business record from more than 14 years ago to mount an adequate defense.
2. Complainant’s use of the terms DIRECTOR’S CHOICE through its company name, “Director’s Choice, LLC” does not serve to show common law rights in itself.
3. Respondent did not know of Complainant at the time of registration likely due to the limited geographic reach of Complainant’s services at the time.
4. Respondent engages in an ongoing website development business, but detailed evidence of its plans for the <directorschoice.com> domain name are no longer available.
5. The promoted ads at the resolving page do not realize profit as they are used to cover the costs of hosting and registration. This is common practice for website developers.
6. Complainant’s allegations do not fall within the small class of “abusive registration” cases the UDRP was designed to handle.
E. Respondent’s Second Additional Submission – Notice of Opposition of Russ Smith
1. On December 9, 2014, the sole owner of HELP.ORG, LLC, Russ Smith (“Smith”) filed a pro se Notice of Opposition (“Notice”) naming himself individually as Plaintiff/Opposer to commence an Opposition Proceeding before the Trademark Trial and Appeal Board (“TTAB”) against Complainant’s application for U.S. Trademark Registration only for the DIRECTOR’S CHOICE mark (Opp. No. 91219676).
2. In the Notice Smith restates many of the contentions raised in this UDRP case and opposes Complainant’s application for trademark registration on several bases, including, that Smith “would be damaged if this domain was transferred to Defendant without paying the purchase price. Other entities have offered to purchase it. Further, [Smith] would be deprived of legally operating DIRECTORSCHOICE.COM as a web site.”
3. Smith also contends in the Notice he would be damaged if registration issued because “It is more difficult to sell a domain when another entity has a trademark registration that predates the domain registration.”
4. Smith contends in the Notice he would be damaged if registration issued because “[Complainant] waited almost 15 years to dispute [Smith] 's use of the mark in the domain name DIRECTORSCHOICE. COM while claiming its use amounted to "initial interest confusion." [Complainant] offered to buy the domain every few years for over a decade. As a result of [Complainant]'s conduct DIRECTOR'S CHOICE is no longer distinctive as an indication of a source of its goods or services.”
5. Smith makes contentions in the Notice not made in this case, namely, unsubstantiated contentions that Complainant has attempted to commit fraud upon the USPTO in its application for lack of a bona fide intent to use the Mark, that its use of the company name was not trademark use, and the Mark has been abandoned by Complainant which contentions appear beyond the scope of the present proceedings.
Complainant has been continuously using and promoting the Marks since at least as early as 1997 as the source of services for arranging travel tours for music organizations.
Complainant’s marks were in use in the U.S well before Respondent registered its domain name on March 7, 2000;
Complainant has pending applications for U.S. Trademark Registration for DIRECTOR’S CHOICE, filed July 14, 2014 (Ser. No. 86/336,351), for arranging travel tours for music organizations; organization of travel, in International Class 39; and DIRECTOR’S CHOICE TOUR AND TRAVEL, filed July 14, 2014 (Ser. No. 86/336,439), for arranging travel tours for music organizations; organization of travel in Class 39, which applications each claimed use in commerce at least as early as April 1997.
Complainant’s Mark Director’s Choice is comprised of terms which are suggestive of Complainant’s travel services for music organizations but not descriptive or generic.
Respondent and Complainant are both based in the United States and as such Respondent was aware of Complainant’s use of its common law Marks at least 3 years prior to Respondent’s registration of the disputed domain name.
Complainant has asserted facts establishing Complainant’s common law trademark rights in the Marks though Complaint Exhibits showing advertising, sponsorship and invoicing documents from 1998 using the Mark Director’s Choice, supporting over 17 years of continuous use, combined with substantial online advertising shown in specimens from its trademark applications as Exhibits annexed to the Complaint, sufficient to establish secondary meaning.
Respondent’s disputed domain name, <directorschoice.com> is substantially similar to Complainant’s Marks, because it incorporates Complainant’s DIRECTOR’S CHOICE mark in its entirety in the disputed domain name, and adds only the generic TLD “.com.” As such, this addition does not distinguish the disputed domain name from Complainant’s Mark Director’s Choice.
Respondent’s WHOIS information identifies Respondent HELP.org Domain Administrator as registrant of the disputed domain name and registrant’s organization as HELP.org, LLC.
Respondent is not commonly known by Complainant’s DIRECTOR’S CHOICE or DIRECTOR’S CHOICE TRAVEL AND TOURS Marks, nor is Respondent licensed by Complainant to use either of the Marks.
Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods or services.
Respondent has not used the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use.
Respondent has continuously offered the disputed domain name for sale at a premium above cost and not merely in response to an offer to purchase from Complainant.
Respondent has not been prejudiced by Complainant’s delay in filing this UDRP case because Respondent has known of Complainant’s business using the identical trade name DIRECTORS CHOICE for over a decade, since Complainant first emailed Respondent under such trade name in 2002, inquiring about purchasing the disputed domain name showing Complainant’s trade name in the e-mail header, as shown in Exhibits to Respondent’s Response.
Respondent should not now be permitted to avail itself of the defense of laches when the Respondent is in part responsible for the delay due to protracted negotiations with Complainant over the purchase price of the disputed domain name for over a decade.
Respondent uses the disputed domain name to offer hyperlinks to other businesses’ websites, including travel services that are in competition with
Complainant’s travel services.
Respondent registered and is using the disputed domain name <directorschoice.com> in bad faith.
A finding of reverse domain name hijacking is not warranted as Complainant is not acting in bad faith.
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.
Complainant asserts common law rights in the DIRECTOR’S CHOICE Mark. The Panel finds that a trademark registration is not necessary to prove rights in a mark if Complainant presents sufficient evidence showing continuous use and the establishment of secondary meaning in the mark to establish common law rights. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006)(finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); Surecom Corp. v. Rossi, FA1352722 (Nat. Arb. Forum November 29, 2010) (finding that trademark registration is not necessary to prove rights in a mark if Complainant presents sufficient evidence showing continuous use and the establishment of secondary meaning in the mark to establish common law rights); Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant has submitted evidence to support its claims that it holds common law rights in the DIRECTOR’S CHOICE trademark. For example, Complainant has shown that it was incorporated under the trade name Director’s Choice, Inc. in the state of Texas on November 6, 1996. See Compl., at Attached Ex. 8. Complainant purports to use the DIRECTOR’S CHOICE mark in connection with arranging travel tours for music organizations, and claims to have worked with thousands of music programs travelling across the United States and Europe, acting as a full service tour operator while producing numerous concert events. Complainant’s use of the mark in commerce is evidenced by the attached business invoice dated January 31, 1998, as well as by the attached marketing and sponsorship materials from 1998. See Compl., at Attached Exs. 10, 11.
Complainant asserts that it was using the domain name <directorschoicetourandtravel.com> as early as April 2, 2006. See Compl., at Attached Ex. 7. Complainant claims the mark has acquired considerable distinctiveness due to Complainant’s longstanding use, advertising, and sales and has provided evidence of substantial online advertising in the specimens submitted with each of Complainant’s applications for U.S. trademark registration as filed with the USPTO. See Compl., at Attached Exs. 4 and 5.
As a result, the Panel finds that Complainant has demonstrated continuous use of the DIRECTOR’S CHOICE mark to promote its tour offerings and the subsequent acquisition of secondary meaning that establish Complainant’s common law rights in the mark for the purposes of Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding complainant’s continuous and ongoing use of its mark for many years in association with complainant and its tuxedo rental services was sufficient to establish secondary meaning for common law rights to exist); Cybertania, Inc. v. Right Mobile, Inc. Do-main Manager, FA 1015411 (Nat. Arb. Forum Aug. 6, 2007) (finding complainant had acquired secondary meaning sufficient to establish common law rights in a mark under Policy ¶ 4(a)(i) where that complainant had invested substantial resources in promoting the goods and services marketed under the mark over an extended period); Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that the complainant had common law rights in the McMULLEN COVE mark because the complainant provided sufficient evidence that the mark had acquired secondary meaning, including development plans, correspondence with government officials, and newspaper articles featuring the mark); Hensley Mfg., Inc. v. Piercey FA 1572540 (Nat. Arb. Forum Sep. 3, 2014) (finding that “Complainant has acquired secondary meaning in the TRAILERSAVER mark through continued use and promotion since 2001, and therefore this Panel finds common law rights in the mark for purposes of Policy ¶4(a)(i)”.)
Complainant claims the <directorschoice.com> domain name is virtually identical to its DIRECTOR’S CHOICE mark. The Panel notes that the disputed domain name differs from the Mark by the removal of the possessive apostrophe and the space between the two-word mark, as well as the inclusion of the generic top-level domain (“gTLD”) “.com.” Prior panels have concluded that such alterations fail to negate confusing similarity. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Busy Body, Inc. v. Fitness Outlet Inc., D20000127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ."). Because the spacing and punctuation are not replicable in domain names, and the addition of a gTLD serves no distinguishing value, the Panel agrees and finds that the <directorschoice.com> domain name is confusingly similar to the DIRECTOR’S CHOICE mark pursuant to Policy ¶ 4(a)(i).
Doctrine or Defense of Laches
Respondent asserts that since Complainant filed the Complaint 14 years after the registration of the disputed domain name, the Complaint should be precluded by laches. Respondent reveals, however, in Exhibits A – F attached to its Response, that beginning in November 2002, a little over 2 years after Respondent’s registration of the disputed domain name, Complainant began to email Respondent with evidence in its e-mail header that Complainant had a trade name identical to Respondent’s domain name. This should have put Respondent on notice of the potential for a dispute over Respondent’s registration and use of the disputed domain name. See Resp., at Attached Exs. A-F.
Complainant’s correspondence with Respondent in 2002 began negotiations over the purchase price of the domain name between the parties, who then had repeated contact over the ensuing 12 year period leading up to the filing of this UDRP case. As Respondent participated in the delay, perhaps hoping that holding out would result in a higher price from Complainant, the Panel finds that Respondent should not be permitted to now argue that it has been prejudiced and benefit from a delay it helped continue. This is especially true where, as here, Respondent’s web site using the disputed domain has remained essentially an undeveloped, parked site, with its content limited to selling the disputed domain name and providing revenue from click-through advertising.
The Panel considers it important to note that recent cases have begun to apply laches in contrast to earlier cases to the contrary, and the following cases have been considered in reaching this Panel’s determination regarding laches. See craigslist, Inc. v. Craig Solomon Online Services, FA 1445057 (Nat. Arb. Forum Aug. 13, 2012) (applying laches where local online operating business would be prejudiced by transfer after sophisticated Complainant’s unexplained delay); see also The New York Times Co. v. Name Admin. Inc. (BVI), FA 1349045 (Nat. Arb. Forum Nov. 17, 2010) (Finding that “[a] small number of panels have also begun to acknowledge the possible applicability, in appropriate and limited circumstances, of a defense of laches under the UDRP where the facts so warrant”); cf., Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defence in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”); City Bank v. Domain Admin / Inavit, Inc. FA 1564337 (Nat. Arb. Forum July 21, 2014) (Laches not reached, but noting that lengthy delays in seeking legal or administrative remedies can often have the effect of eroding or undermining the complainant’s arguments with respect to the respondent’s rights or legitimate interests in the disputed domain name, or the respondent's alleged bad faith in registering and using the domain name);Tony Novak v. Marchex Sales, Inc / Brendhan Hight, FA 1418478 (Nat. Arb. Forum Mar. 1, 2012) (while not finding laches nine year delay in bringing complaint held not to establish bad faith); see generally, Mile, Inc. v. Michael Burg, D2010-2011 (WIPO, February 7, 2011) (The parties in the current proceeding are both located in the United States, where courts recognize the equitable doctrine of laches, which can result in the dismissal of a complaint for undue delay in asserting legal claims. However, in the United States, the defense of laches typically bars the recovery of damages incurred before the filing of a lawsuit, and courts have concluded that the rationale behind the doctrine of laches does not militate against injunctive relief in a trademark action that seeks to avoid future confusion in the marketplace); but see Progman Consulting Oy v. Whois Watchdog, WIPO Case No. D2010-1393 (“It is by now well established that trademark doctrines of laches or estoppel have not been incorporated into the Policy”); The E.W. Scripps Company v. Sinologic Indus., WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy's purposes); The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding 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); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“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 desires 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.”); Tom Cruise v. Network Operations Center/ Alberta Hot Rods, WIPO Case No. D2006-0560 (finding no meaningful precedent under the Policy for refusing to enforce trademark rights based on delay in bringing a complaint).
Based on the foregoing, the Panel finds that although in appropriate cases the equitable defense of laches may apply, this is not one such case.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims that Respondent is not commonly known by the <directorschoice.com> name, nor has Complainant authorized Respondent’s use of the Marks. As Respondent’s rebuttal does not rely on Policy ¶ 4(c)(ii), the Panel finds that Respondent is not commonly known by the disputed domain name. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant asserts that Respondent has not used the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. In its additional submission, Complainant claims Respondent is using the domain name for a pay-per-click advertising site featuring third-party advertisements for travel services that are similar to those offered by Complainant, and that any intention to use the name in connection with a movie website is unsubstantiated. See Compl., Add’l Sub., at Attached Ex. 1.
The Panel finds that there is insufficient evidence to show demonstrable preparations to use the domain name for a Policy ¶ 4(a)(ii) protected use, and that Respondent’s use of the domain name to generate click-through fees amounts to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); Baylor Univ. v. Red Hot Web Gems, Inc., FA 1082178 (Nat. Arb. Forum Dec. 3, 2007) (finding that, even though a respondent does not receive any revenue from the hyperlinks displayed on the website and that the revenues are received by the parking service, a respondent still registered and used the domain name in bad faith because a respondent still allowed the parking service to access the domain name, instead of resolving the webpage to a blank page).
Further, Complainant claims that Respondent’s willingness to sell the disputed domain name is additional evidence that Respondent lacks rights in this domain name. In its additional submission, Complainant notes that Respondent offered to sell the disputed domain name in the amount of $45,000. See Compl., Add’l Sub., at Attached Ex. 1. In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel found that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name. The Panel agrees that Respondent’s offer to sell the <directorschoice.com> domain name for $45,000 is further evidence that Respondent lacks rights in the domain name.
Complainant argues that Respondent registered the disputed domain name with the intention of selling it to the rightful trademark holder or highest bidder. The Panel notes Respondent’s offer to sell the disputed domain name for $45,000. See Compl., Add’l Sub., at Attached Ex. 1. The Panel finds that Respondent’s willingness to sell the disputed domain name in excess of out-of-pocket expenses is suggestive of Policy ¶ 4(b)(i) bad faith. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Complainant also argues that Respondent has attempted to capitalize on Complainant’s goodwill by using the mark to lure users to the associate website and away from Complainant. In its additional submission, Complainant urges that the disputed domain name resolves to a website offering advertisements potentially related to Complainant from which Respondent derives revenue. See Compl., Add’l Sub., at Attached Ex. 1. The Panel upon review of the Exhibits sees that the disputed domain name resolves to featured advertisements relating to “New Beazer Homes,” “Enterprise Filing Sharing,” “Florida Vacation Deals,” and “Winter Sun Escapes.” Based on this review the Panel accepts as persuasive Complainant’s argument that the use of the domain names is creating an opportunity for Respondent to profit from a likelihood of confusion, which the Panel finds is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Reverse Domain Name Hijacking
Since the Panel finds that Complainant has satisfied all of the elements of Policy ¶ 4(a), the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <directorschoice.com> domain name be TRANSFERRED from Respondent to Complainant.
Scott R. Austin, Esq., Chair of the Panel
Dated: December 22, 2014
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