Alan M. Peters / Can Do Canines v. Marilyn Mathis / Can Do Canines
Claim Number: FA1503001611655
Complainant is Alan M. Peters / Can Do Canines (“Complainant”), represented by Paul Schwarzkopf, Minnesota, USA. Respondent is Marilyn Mathis / Can Do Canines (“Respondent”), represented by Steven L. Rinehart, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <candocanines.org>, registered with Register.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 26, 2015; the Forum received payment on April 3, 2015.
On March 30, 2015, Register.com, Inc. confirmed by e-mail to the Forum that the <candocanines.org> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 2015 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@candocanines.org. Also on April 8, 2015, 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 April 24, 2015.
On May 6, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nathalie Dreyfus as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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
Complainant has registered the CAN DO CANINES mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,967,106, registered May 24, 2011) which demonstrates rights in the mark. The <candocanines.org> domain name is confusingly similar because it uses the exact wording of the CAN DO CANINES mark while adding the generic top-level domain (“gTLD”) identifier “.org” and eliminating spacing between the words of the mark.
Respondent has no rights or legitimate interests in the <candocanines.org> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent has inactively held the <candocanines.org> domain name, evincing neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
Respondent has used the <candocanines.org> domain name in bad faith, but did not register in bad faith. Bad faith use is imputed as the <candocanines.org> domain name has been inactively held for seven years.
B. Respondent
Complainant’s CAN DO CANINES mark was registered four years after Respondent registered the <candocanines.org> domain name. Further, the <candocanines.org> domain name is comprised of generic terms “can”, “do”, and “canines” which have attraction as common dictionary words. Complainant’s registration of the CAN DO CANINES mark does not confer rights under Policy ¶ 4(a)(i).
Respondent’s use of a common word domain name constitutes a bona fide offering of goods or services under Policy ¶ 4(c)(i).
Having been first to register the disputed domain name, Respondent has established rights and is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Further, Complainant has failed to establish a secondary meaning in the CAN DO CANINES mark as Respondent’s domain name registration predates the mark’s registration.
Complainant has conceded that Respondent did not register the <candocanines.org> domain name in bad faith. Further, Complainant is attempting reverse domain name hijacking whereas there is no plausible basis for bringing this action against Respondent.
The Complainant is the owner of the trademark CAN DO CANINES registered at the USPTO on May 24, 2011, which he is using for his charitable, non-profit corporation called Hearing and Service Dogs Minnesota, in Minnesota.
The Complainant owns the domain name <can-do-canines.org> to designate his activity on the Internet since October 16, 2009.
The Respondent is the owner of the domain name <candocanines.org> since January 27, 2007, for the purpose of publishing a book entitled as so and addressing the fact that canines can recover from injuries with love and affection of their owners.
According to the Whois information, the disputed domain name <candocanines.org> is registered but currently not being used.
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:
(i). the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii). Respondent has no rights or legitimate interests in respect of the domain name; and
(iii). the domain name has been registered and is being used in bad faith.
Complainant argues that the <candocanines.org> domain name is confusingly similar because it uses the exact wording of the CAN DO CANINES mark while adding the generic top-level domain (“gTLD”) identifier “.org” and eliminating spacing between words. Panels have found where a respondent has fully incorporated a complainant’s mark and simply added a gTLD and eliminated spacing between words, such alterations are insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
Therefore, this Panel considers that Policy ¶ 4(a)(i) is fulfilled and that Respondent’s <candocanines.org> domain name is confusingly similar to the CAN DO CANINES mark.
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 has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).
See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Therefore, the burden has shifted to Respondent to show that it has rights and legitimate interests in the domain name <candocanines.org>.
Respondent argues that the terms of the <candocanines.org> domain name are common and generic, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. The Panel agrees with Respondent, according to former Panel decisions, such as Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); and also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
Therefore, the Panel finds that Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Respondent argues that it does have rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) as it originally registered the disputed domain name for the purpose of publishing a book on the extent to which canines can recover from injuries with love and affection from their owners. It is presumed that Respondent plans to use this website for this purpose, even though Respondent has submitted no evidence of its plans for such a use of the website. See SFX Entm’t, Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the respondent had rights and legitimate interests in the disputed domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).
The Panel thus finds that Respondent has satisfied Policy ¶ 4(a)(ii).
For this reason, the Panel finds that Complainant failed to meet its burden of showing that Respondent lacked rights or legitimate interests in the disputed domain name, and thus that Policy ¶ 4(a)(ii) is not fulfilled.
Complainant asserts that Respondent has used the <candocanines.org> domain name in bad faith, but concedes that Respondent did not register in bad faith. Complainant argues that the <candocanines.org> domain name has been inactively held for seven years. Complainant has not provided any additional evidence that would establish its bad faith claim.
According to previous Panel decisions, such as Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); and also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith); the Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).
As the Panel concludes that Respondent has rights or legitimate interests in the <candocanines.org> domain name pursuant to Policy ¶ 4(a)(ii), and according to former Panel decisions, such as Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); and also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”); the Panel finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel further finds that Respondent has not registered or used the <candocanines.org> domain name in bad faith as it finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use. See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Therefore, the Panel finds that Respondent has not registered or used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent contends that the <candocanines.org> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s CAN DO CANINES mark. Moreover, Respondent contends that the registration and use of domain name comprising such common terms is not necessarily done in bad faith. See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
As the Panel finds that a respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common terms, the Panel then also finds that Respondent did not register or use the <candocanines.org> domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent also argues that it could not have registered the disputed domain name in bad faith because its registration of the <candocanines.org> domain name predates Complainant’s rights in the CAN DO CANINES mark. The Panel again notes that Respondent registered the disputed domain name in 2007. See Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).
As such, the Panel finds that Respondent’s registration of the disputed domain name predates any rights Complainant has in the CAN DO CANINES mark and finds that Complainant could not have satisfied Policy ¶ 4(a)(iii).
Respondent argues that it did not register the <candocanines.org> domain name for the purpose of offering it to Complainant; and, contrary to Complainant’s assertion that Respondent has forfeited any rights to the <candocanines.org> domain name by using it passively for seven years, it is Complainant who has forfeited any rights to the disputed domain name for having waited seven years to file this action under the doctrine of laches. See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”); see also 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.”).
Therefore, the Panel considers the doctrine of laches as evidence for Respondent in its considerations of the elements of the Policy.
Considering all the above, the Panel finds that Policy ¶ 4(a)(iii) is not fulfilled as Complainant did not meet the burden of proving that Respondent registered or used the domain name <candocanines.org> in bad faith.
Reverse domain name highjacking
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 <candocanines.org> domain name, of its rights to use the disputed domain name. Respondent argues that Complainant had no bona fide basis for commencing this proceeding, and that Complainant brought this action to seize its competitors’ domain name, forcing the incurrence of attorney fees. Thus, the Panel finds that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the <candocanines.org> domain name and that Respondent registered and is using the disputed domain name in bad faith. See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).
As the Panel finds there is sufficient evidence to this effect, it finds that reverse domain name hijacking has occurred.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <candocanines.org> domain name REMAIN WITH Respondent.
Nathalie Dreyfus, Panelist
Dated: May 12, 2015
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