Register.com,
Inc. v. Wolfgang Reile a/k/a RWG Internet and Marketing Rightway Gate Inc, 101
Internet Service, Internet Service, Rightway Gate Inc, RWG Marketing Rightway
Gate Inc, NA, 101register.net, webpageregister.org, 101register.org, webpageregister.net
Claim Number: FA0311000208576
PARTIES
Complainant is Register.com, Inc. (“Complainant”), represented by Brett E. Lewis, 575 Eighth Avenue, 8th Floor, New York, NY 10018. Respondent is Wolfgang Reile et.al. (“Respondent”), represented by Stephanie Chmura, of Gage Teeple, LLP, 9255 Towne Centre Drive, Suite 500,
San Diego, CA 92121-3038.
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <websiteregister.net>, <101register.com>,
<webpageregister.com>, <101register.net>, <101register.org>,
<webpage-register.net>, <websiteregister.org>,
<website-register.org>, <website-register.net>,
<websiteregister.com>, <webpage-register.org>,
<webpageregister.org>, <website-register.biz>, <websiteregister.info>,
<website-register.info>, <101register.info>,
<webpage-register.info> and <webpageregister.info>, registered with Enom, Inc., and the <webpage-register.com>,
<website-register.com> and <webpageregister.net> domain names registered with Melbourne IT, Ltd., all twenty-one of
which are collectively referred to hereinafter as the "disputed domain
names."
PANEL
The undersigned certifies that he has
acted independently and impartially and to the best of his knowledge has no
known conflict in serving as Panelist in this proceeding.
Mr. Peter L. Michaelson, Esq., as
Panelist.
PROCEDURAL
HISTORY
The Complaint was brought pursuant to the
Uniform Domain Name Dispute Resolution Policy (“Policy”), available at <icann.org/services/udrp/udrp‑policy‑24oct99.htm>,
which was adopted by the Internet Corporation for Assigned Names and Numbers
(ICANN) on August 26, 1999, and approved on October 24, 1999, and in
accordance with the ICANN Rules for Uniform Domain Name Dispute Resolution
Policy (“Rules”) as approved on October 24, 1999, as supplemented by the
National Arbitration Forum Supplemental Rules for Uniform Domain Name Dispute
Resolution Policy then in effect (“Supplemental Rules”).
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on November 4, 2003;
the Forum received a hard copy of the Complaint, together with Exhibits A‑N,
on November 5, 2003.
On November 5, 2003, Enom, Inc. confirmed
by e-mail to the Forum that the domain names <websiteregister.net>,
<101register.com>,
<webpageregister.com>, <101register.net>, <101register.org>,
<webpage-register.net>, <websiteregister.org>,
<website-register.org>, <website-register.net>,
<websiteregister.com>, <webpage-register.org>,
<webpageregister.org>, <website-register.biz>, <websiteregister.info>, <website-register.info>, <101register.info>,
<webpage-register.info> and <webpageregister.info> are
registered with Enom, Inc. and that Respondent is the current registrant of the
names. On November 5, 2003, Melbourne IT, Ltd. confirmed by e-mail
to the Forum that the domain names <webpage-register.com>,
<website-register.com> and <webpageregister.net> are
registered with Melbourne IT, Ltd. and
that Respondent is the current registrant of the names. Enom, Inc. and Melbourne IT, Ltd. have verified that Respondent is bound by their
respective registration agreements and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with the Policy.
On November 13, 2003, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of December 3, 2003 by which Respondent
could file a Response to the Complaint, was transmitted to Respondent via
e-mail, post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts, and to
postmaster@101register.com, postmaster@webpage-register.com, postmaster@website-register.com,
postmaster@webpageregister.com, postmaster@websiteregister.com, postmaster@101register.net,
postmaster@101register.org, postmaster@webpageregister.net, postmaster@webpageregister.org,
postmaster@website-register.net, postmaster@websiteregister.org, postmaster@website-register.org,
postmaster@webpage-register.net, postmaster@websiteregister.net, postmaster@webpage-register.org,
postmaster@101register.info, postmaster@webpageregister.info, postmaster@webpage-register.info,
postmaster@websiteregister.info, postmaster@website-register.info, postmaster@website-register.biz
by e-mail.
A timely Response, together with Exhibit
1 and declarations of Ms. Chmura and Mr. Reile, was received and
determined to be complete on December 10, 2003.
Complainant filed a timely additional
submission on December 12, 2003.
Respondent followed with a timely additional submission on December 12,
2003. Both of these submissions have
been considered.
On December 12, 2003, Complainant
subsequently filed its second additional submission, which was received without
the required fee and is thus not in compliance with Forum Supplemental Rule
#7. Thereafter, but on the same day,
Respondent subsequently filed its second additional submission, which was also
filed without fee and hence not in compliance with Forum Supplemental Rule #7. Nevertheless, the Panel has considered both
of these second additional submissions as well.
On December 26,
2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Mr. Peter L.
Michaelson, Esq. as Panelist and set
a date of January 9, 2004 to receive the decision from the Panel.
On January 8, 2003 and owing to
unforeseen and exceptional circumstances, the Panel extended the due date for
its decision to January 27, 2004. The
Panel appreciates the parties' indulgence and patience.
RELIEF SOUGHT
Complainant requests that the disputed
domain names be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A.
Complainant
1.
Confusing similarity/identicality
Complainant states that each of the
disputed domain names incorporates Complainant’s registered mark “REGISTER” or
"REGISTER.COM" in its entirety.
Specifically, Complainant contends that
four of the disputed domain names, specifically <101register.com>,
<101register.info>, <101register.net> and <101register.org>,
consist of a generic or non-distinctive term added to one of Complainant's
registered marks.
Complainant contends that the remaining
seventeen disputed domain names, specifically <webpage-register.com>,
<website-register.com>, <webpageregister.com>,
<websiteregister.com>, <webpageregister.net>,
<webpageregister.org>, <website-register.net>,
<websiteregister.org>, <website-register.org>,
<webpage-register.net>, <websiteregister.net>,
<webpage-register.org>, <webpageregister.info>,
<webpage-register.info>, <websiteregister.info>, <website-register.info>
and <website-register.biz>, consist of Complainant's
registered mark REGISTER preceded by words or combinations of words that simply
describe Complainant’s business, which is registering domain names for websites
and webpages.
Hence, Complainant concludes that the
requirements of paragraph 4(a)(i) of the Policy are satisfied with respect to
each of the disputed domain names.
2.
Rights and legitimate interests
Complainant
contends that, for the following reasons, Respondent has no rights or
legitimate interests in any of the disputed domain names.
First, Complainant states that it has not licensed, assigned or otherwise
authorized Respondent to use any of Complainant REGISTER Marks, or any
variations thereof, as domain names on the Internet.
Second, Complainant alleges that
Respondent is known by the names Wolfgang Reile, Rightway Gate, Inc., RWG
Internet and Marketing, RWG Marketing, 101 Internet Service and Internet
Service. Accordingly, Complainant contends
that prior to Respondent having registered any of the disputed domain names,
Respondent was never, as an individual, business, or other organization, known
by any of those names.
Third, Complainant alleges that
Respondent never used any of the disputed domain names in connection with a
bona fide offering of goods or services.
In that regard, Complainant contends that Respondent operates "copy
cat" websites that rely on domain names that are confusingly similar to
Complainant's registered names in order to "trick" customers into
using Respondent’s competing domain name registration services.
Fourth, Complainant alleges that
Respondent had no trademark rights in or to Complainant's REGISTER Marks prior
to its having registered any of the disputed domain names and has not subsequently
obtained any rights in or to those marks.
Lastly, Complainant alleges that
Respondent uses the disputed domain names for the sole purpose of misleadingly
diverting consumers for commercial gain.
Specifically, Complainant states that home pages accessible through the
following disputed domain names: <website-register.com>,
<webpage-register.com>, <101register.com>, <101register.net>,
<101register.org>, <websiteregister.com>,
<webpageregister.com>, <webpageregister.net> and
<webpageregister.org> are virtually identical to that which appeared
at Complainant’s <register.com> website from April 1999 through July 2002
-- all as indicated by the hard-copy printouts of various home webpages
appearing in Exhibit J to the Complaint, hence constituting "copy
cat" sites. In that regard,
Complainant notes that such "copy cat" sites use a central frame to
prominently display a domain name search feature from which a customer
navigates through pages where available domain names may be selected and
purchased. Moreover, home pages
appearing through the disputed domain names: <websiteregister.org>,
<website‑register.org>, <webpage-register.net>,
<webpage-register.org>, <website‑register.net> and
<websiteregister.net>, also copy Complainant’s<register.com>
website. As for these latter names,
Respondent's corresponding home pages also place links directly under the logo
and at the top of the left-side navigation frame to “Domain Registration,”
which when clicked, cause the central frame to display the same paid domain
registration services as at Respondent’s former sites listed above.
Thus, under Complainant's analysis,
Respondent can not establish, under paragraph 4(c) of the Policy, rights to and
legitimate interests in any of the disputed domain names.
3.
Bad faith use and registration
Complainant contends that Respondent has
registered and is using all of the disputed domain names in bad faith, hence in
violation of paragraph 4(b)(iv) of thee Policy, by intentionally attempting to
attract, for commercial gain, Internet users to Respondent's websites by
creating a likelihood of confusion with Complainant’s REGISTER Marks as to the
source, sponsorship, affiliation, or endorsement of those websites or of a
service on those sites.
Complainant states as follows:
Respondent registered the disputed domain
names between February 28, 1998 and May 10, 2002, starting four years after
Complainant began using its REGISTER Marks in commerce, in connection with
domain name registration, website hosting, electronic mail and related
services. Further and as indicated in
Exhibits E and F to the Complaint, these registrations also occurred after
Complainant had become a well-known brand, registering over 300,000 domain
names and making PC Magazine’s top 100 best website list.
As early as April 21, 1999 and as
indicated in Exhibit I to the Complaint, Complainant had become the second
registrar accredited by ICANN to compete in the domain name registration
business.
On or about February 8, 2001, Complainant
learned of Respondent's websites located at <website-register.com> and
<webpage-register.com>.
Through these two websites and as indicated in Exhibit J to the
Complaint, Respondent offered domain registration services and displayed
webpages that contained characteristics strikingly similar to Complainant’s
website, logo and slogan as they appeared on Complainant's<register.com>
site as early as April 1999.
Specifically, Respondent’s sites offered the same domain name search and
registration service, used the same overall page layout, placed content on the
same rounded background box, and displayed logos and slogans using the same
font and text patterns as on Complainant’s website. For example, on Complainant’s website, the slogan “The First Step
on the Web” appears beneath the Register.com logo in regular blue letters with
the second word, “First”, in red italics.
Respondent’s sites also contain the slogan “The Affordable Way to Web”
which appears in the same exact color pattern and in the same location as on
Complainant's site but with the second word, “Affordable”, highlighted in
italics.
Moreover, Respondent's site at <website-register.com>
used the same red and blue colors in its logo, and both Respondent's sites at <website-register.com>
and <webpage-register.com> used the same exact distinctive beige
background color (expressed in hexadecimal format as “F7F2D0” or in RGB format
as “247,242,208”) as had Complainant's <register.com> site during April
1999 through July 2002. (See
Exhibit J, and source HTML code listing in Exhibit K attached hereto). Complainant cites to TPI Holdings v. Mark
Geiger, MARINEBAY, D2001-0840 (WIPO Oct. 2, 2001) (finding that the
requisite intent in violation of paragraph 4(b)(iv) of the UDRP Policy may be
inferred from a “virtually identical layout”).
Complainant’s attorneys sent Respondent a
cease and desist letter, a copy of which appears in Exhibit L to the Complaint,
on February 8, 2001 apprising Respondent of Complainant’s belief that, inter
alia, his registration and use of the names <webpage-register.com> and
<website-register.com> infringed Complainant’s REGISTER Marks. The letter also requested that Respondent
transfer registration of those names to Complainant. On June 21, 2001, Complainant sent Respondent a follow-up letter,
a copy of which also appears in Exhibit L, reiterating the notice of
infringement and again requesting the transfer of those two names.
Following its receipt of the cease and
desist letters, Respondent did not transfer the domain names to Complainant as
the latter requested. Instead,
Respondent registered six additional domain names, specifically <101register.info>,
<webpageregister.info>, <webpage-register.info>,
<websiteregister.info>, <website-register.info>, and
<website-register.net>, all of which incorporated Complainant's
REGISTER Marks. Additionally and as
indicated in Exhibit J, Respondent modified the sites resolvable at many of,
what would become, the disputed domain names to further mimic Complainant’s <register.com>
site by adding checkboxes and domain name extension options to its menu of
domain name search functions.
Complainant subsequently became aware of
Respondent’s <101register.com> website, which, like the <website-register.com>
website, imitated the color scheme, logo and layout of Complainant’s
<register.com> website. On
February 5, 2002, Complainant sent Respondent a third cease and desist letter,
a copy of which appears in Exhibit L, through which Complainant demanded
transfer of the <101register.com> name to Complainant and notified
Respondent that, inter alia, the <101register.com> name infringes
Complainant's REGISTER Marks.
Complainant views Respondent's continued refusal to transfer the domain
name as further evidencing bad faith.
In May 2002, three months after receiving
the third cease and desist letter, Respondent registered an additional domain
name incorporating Complainant's REGISTER Marks, specifically <websiteregister.com>. This brought to twenty-one, Respondent’s
total number of such domain names through which it uses to offer commercial
services in direct competition with Complainant.
Furthermore, as indicated in Exhibit J,
the home page of Respondent's site resolvable through <websiteregister.com>
is also virtually identical to Complainant’s <register.com> website.
Complainant opines that Respondent in
having registered so many similar domain names increases the likelihood that
Complainant's customers will be diverted to Respondent’s websites. This is particularly so inasmuch as the
majority of those sites have been designed to resemble Complainant’s site. Given this, Complainant contends that the
large number of infringing domain names registered by Respondent should be seen
as additional evidence of Respondent’s intent to confuse or mislead, citing to
Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10,
2000) (panel held that “[o]verkill in registering domain names incorporating
well-known trademarks for commercial purposes logically leads to an inference
of bad faith registration and use”, even in cases where the marks in issue may
not be “famous”).
Moreover, starting in August 2002,
Respondent updated many of its sites resolvable through the disputed domain
names, specifically <website-register.com>, <webpage‑register.com>
and <101register.com>, to copy additional features similar to
those on Complainant’s <register.com> website, including a left frame
navigation bar, and the identical graphic and prominently displayed slogan
“Make the Most of Your Domain!”. That
slogan had not even appeared on Complainant’s website until several months
after Respondent received the first and second cease and desist letters, in
November 2001.
Complainant contends that Respondent’s
continued and defiant copying of Complainant’s site further evinces
Respondent’s bad faith use and registration of the disputed domain names,
citing TPI Holdings v. JB Designs, D2000-0216 (WIPO May 22, 2000)
(holding respondent’s “slavish copying” of complainant’s website and
intentional infringement of complainant’s copyright were evidence of bad faith
use of a domain name).
Hence, Complainant concludes that
Respondent's actions in registering and using each of the disputed domain names
is in bad faith and contravenes paragraph 4(b) of the Policy.
B.
Respondent
1.
Complainant’s federal trademark applications and registrations
Respondent states as follows:
On November 21, 2000, Complainant filed an application (serial number
76/169,140 -- a copy of the TARR record for that application appears as Exhibit
1 to the Response) for registration of the mark “Register.com.” In that application, Complainant recited the
services with which it uses its mark to include “computer network address
management services, namely providing services enabling entities to reserve and
secure computer network address and to access, add, modify, or delete
information relating to their computer network addresses.” Given this, Respondent contends that
Complainant was seeking to use its mark “Register.com” as a vehicle to sell
domain name registrations to its customers and the public. Subsequently during examination of that
application, the PTO rendered a final refusal on November 17, 2003 denying
registration of the mark due to its descriptive nature. See Chmura declaration.
Respondent contends that, in view of the Complaint’s limited recitation
of the services in its application as well as in the registrations supplied in
the Complaint, none of Complainant's marks includes, as services, the sale of
domain name registrations. in that
regard, Respondent alleges that there is no registration by Complainant for the
mark “Register.com” which was specifically intended to be used in conjunction
with the sale of domain names.
Respondent states that it is in the business of, among other things,
selling international and national domain name registrations. (See Reile declaration). Hence, Respondent argues that the
“Complainant cannot be allowed to monopolize the domain name registration
market and claim all uses of the word ‘register.com’ in the sale of domain name
registrations when the U.S.T.P.O. conclusively determined that the mark is
inherently descriptive of the goods and services and, thus, not a protected
mark”. In view of the PTO refusal to
register, the Panel should enter a judgment in favor of Respondent as there is
no trademark infringement of Complainant’s marks.
2.
Policy factors
a.
Confusing similarity/identicality
Respondent takes the position that all
the disputed domain names are neither confusingly similar nor identical to any
of Complainant's marks inasmuch as, contrary to Complainant's position,
Complainant has no federal trademark rights in the term "REGISTER".
As to the issue of Complainant's
trademark rights, Respondent specifically states as follows:
When comparing two marks that contain the same generic term, “although
the marks ultimately must be considered as a whole, the focus of the inquiry
regarding appearance and sound is on the non-generic portion.” John H. Harland Co. v. Clarke Checks,
Inc., 711 F.2d 966, 976 (11th Cir. 1983).
Courts have consistently held that “when the common element of two
trademarks is a generic term, the likelihood of confusion is reduced, as the
public has come to expect that element on different products.” Kelley Blue Book v. Car-Smarts, Inc, et al.,
802 F. Supp. 278; Smithkline Beckham Corp. v. Proctor & Gamble Co., 591
F. Supp. 1229, 1238. (U.S.D.C. N.D.N.Y. 1984)
Furthermore, Courts have held that if the primary significance of the
trademark is to describe the type of product rather than the producer,
the trademark is a generic term and cannot be a valid trademark. Id.
Here, the US Patent and Trademark Office (PTO) determined that the mark
“Register.com” was descriptive of the goods and services Complainant offered
and refused to offer any trademark protection to Complainant. (See Chmura declaration.
Blacks’ Law Dictionary defines the term
“register” as “to record formally and exactly; to enroll; to enter precisely in
a list or the like.” The parties use
the term “register” in their respective domain name registrations. As set forth in the Complaint, Complainant
registered the terms "REGISTER" and "REGISTER.COM" with the
US PTO. However, by definition,
“register” is a generic term used to describe the process by which one formally
records something. Additionally,
through its most fundamental use, “register” is a generic term, non-indicative
of one particular process, product, or producer. Furthermore, the primary significance of the trademark, if any,
is to describe the type of process rather than the producer. Most importantly, the PTO determined that
the word “register” is a descriptive term and cannot be a valid trademark. (See Chmura declaration).
Apart from whether Complainant has federal trademark rights, Respondent
separately contends that Complainant presented no evidence that the disputed
domain names are confusingly similar to its REGISTER Marks. In that regard, Respondent states that
Complainant's mark “Register.com” is distinct from all of the disputed domain
names.
Specifically, seventeen of the disputed domain names contain the words
“webpage” and “website” and are located before the term “register.” The insertion of the words “webpage” and
“website” before the term “register” create distinct and dissimilar domain name
registrations compared to Complainant's REGISTER Marks. The first word within the disputed domain
name registrations is not “register” and will not likely confuse consumers into
believing that the domain names are related to Complainant. The words in Respondent’s domain names are
strategically placed in front of the descriptive term “register” so as to not
confuse consumers into believing that Respondent’s domain name registrations
are anything other than Respondent’s domain name registrations and are not the
REGISTER Marks.
The remaining four disputed domain names do not contain the words
“webpage” and “website,” but start with a numeric term, "101" which
is not contained in the REGISTER Marks.
These name are <101register.com>, <101register.net>,
<101register.org>, and <101register.info>. Complainant’s REGISTER Marks do not contain
any numbers whatsoever. As such,
Respondent contends that the REGISTER Marks are not confusingly similar to any
of the disputed domain names.
Moreover, Respondent contends that, even apart from the visual
differences between the disputed domain names and the REGISTER Marks,
Complainant's designated use of the marks “Register,” and “Register.com”, as
indicated in Complainant's federal registrations and pending application, at
the time, do not include the sale of domain names -- the very services which,
through the disputed domain names, Respondent provides. Respondent points to Complainant's
designated services as being “computer and business services, namely hosting
websites of others on a computer server for a global computer network, and
providing information about website development, electronic mail, and
electronic commerce.” Given this,
Respondent contends that Complainant, by its own description, was not seeking
protection of its marks in connection with the sale of domain name
registrations to other businesses or services -- hence ostensibly excluding
those services from coverage under its federal marks.
b.
Rights and legitimate interests
Respondent contends that it has
legitimate rights and interests in the disputed domain name under paragraph
4(c) of the Policy.
Respondent avers as follows:
First, although Complainant has not licensed, assigned or otherwise authorized
Respondent to use the REGISTER Marks, or any variations thereof, as domain
names, due to the generic and descriptive nature of the term “register,”
Respondent should not be prohibited from using the term as part of its domain
names.
Second, Respondent is commonly known by the disputed domain names. In that regard, Respondent has actively been
engaged in search engine registration and optimization for approximately nine
years. Approximately five years ago,
Respondent expanded its registration business to include international and
national domain registrations and became a web hosting provider focusing on
search engines, optimized, national and international e-commerce systems. (See Reile declaration). As a simple result of its history of
providing registration services to businesses and customers, it is
"understandable that Respondent is known as the disputed domain names in
this complaint".
Third, Complainant first used its REGISTER Marks in commerce in 1994 and
has, admittedly, “used them continuously and extensively in connection with the
provision of domain name registration services, online search engine services,
website hosting and development services, electronic mail services and other
related services ever since.” However,
at no time prior to filing its Complaint, did Complainant ever allege that
Respondent lacked an interest in the disputed domain names or that the disputed
domain names were confusingly similar to the REGISTER Marks. Thus, for approximately nine years,
Complainant failed to identify any reason or justification for challenging
Respondent’s use of the term “register.”
As such, Complainant should be estopped from asserting, nine years after
the fact, that Respondent has no interest in the disputed domain names or that
the disputed domain names are confusingly similar to the REGISTER Marks.
Fourth, as indicated in the Reile declaration, Respondent’s use of the
disputed domain names is directly connected with a bona fide offering of
services, i.e., domain name registrations.
Specifically, unlike the business of Complainant, Respondent is in the
business of selling and providing domain names to its clients and
customers. Respondent is not using the
term “register” in its domain names to divert and confuse Complainant’s
customers to Respondent’s competing websites.
In that regard, Respondent does not even engage in the same primary
business as does Complainant.
Furthermore, Complainant has presented no evidence that its customers
are, in fact, confused by the alleged similarity of marks nor that its
customers are being diverted from Complainant’s websites to Respondent’s
websites.
In that regard, Respondent views Complainant as asserting that, merely
because Respondent has the same website structure and central frame, Respondent
is misleading and diverting customers for commercial gain. As understood by the Panel, Respondent is
arguing that existence of the former does not necessarily result in the
latter. Moreover, Respondent contends
that absent any compelling evidence which actually and emphatically supports
such a contention, it should be inferred that the sole purpose of Respondent’s
use of the disputed domain names is not to mislead and divert customers from
Complainant for Respondent’s commercial gain.
Lastly, Respondent’s use of the disputed domain names is not made with
the sole purpose of misleadingly diverting consumers for commercial gain. As previously indicated, Respondent operates
his own domain name registration business on a much smaller scale than does
Complainant. Complainant stated that it
has millions of visitors to its websites every month and is managing over 3
million domain names under the Register.com mark. On the other hand, Respondent, through its websites, has
approximately 30,000‑50,000 unique visitors per month and an average
customer base of approximately 10,000 users.
(See Reile declaration.)
Hence, Respondent submits that, under
paragraph 4(c) of the Policy, it has legitimate interests and rights in each of
the disputed domain names
c.
Bad faith
Respondent
contends that it did not register and use any of the disputed domain names in
bad faith.
Respondent contends that while Complainant describes the colors and font
used by both Complainant and Respondent on their respective websites,
Complainant has failed to state any facts which indicate that Respondent’s use
of the term "register" was improperly motivated. Insofar as Complainant alleges that
Respondent’s failure to cease and desist prior to its additional website uses
of the disputed domain names was evidence of bad faith, this should not weigh
against a finding of good faith fair use.
Further, Respondent has used the term “register” in the disputed domain
names for several years. Complainant’s
and Respondent’s websites are distinct in that they, as set forth in the
Complaint, have different logos and main frames. While the websites utilize similar colors, this is not enough to
rise to the level of bad faith by Respondent nor are the similarities enough to
confuse consumers. Respondent contends
that "[t]hese minute similarities do not demonstrate that Respondent
intended to mislead and/or confuse the consumer as to source of the different
products or services".
Furthermore, Complainant and Respondent are in different fields whereby
Complainant is not involved in the sale of domain name registrations but
Respondent is.
Thus, because the domain name registrations differ visually and because
Complainant and Respondent do not directly compete against each other,
Respondent submits that it has not acted, with respect to paragraph 4(b) of the
Policy, in bad faith by and through its use of the disputed domain names.
Furthermore, if the Panel determines that Respondent has infringed upon
trademarks of Complainant, Respondent requests that the Panel should not order
Respondent to transfer its domain name registrations to Complainant. Respondent contends that such a transfer
would constitute a windfall to Complainant inasmuch as it would include a
transfer of goodwill that Respondent has established over the past nine
years. Respondent submits that if a
remedy is in necessary, Respondent should be enjoined from using the disputed
domain names which directly relate to the REGISTER Marks.
C.
Additional Submissions
Both Complainant and Respondent have each
filed two additional submissions: one submission from each was timely while the
others were not submitted with the fee required by Forum Supplemental Rule
#7. Nevertheless, as indicated above,
the Panel has considered all these submissions.
1.
Complainant's first additional submission
Complainant, in rebutting the allegations
raised in the Response, posed the following counter-arguments in its first
additional submission:
First, on November 25, 2003, twelve days after Complainant commenced
this proceeding, the PTO granted Complainant’s federal trademark application to
register the mark "REGISTER.COM" on the principal register (now
registration no. 2,785,206), in connection with domain name registration
services -- as indicated in Exhibit O to this submission. This information was plainly available to
Respondent’s counsel had they run a simple trademark search on the PTO’s
website. Curiously, no mention of that
mark appears in Respondent’s papers.
Instead, Respondent relies entirely on an irrelevant discussion of a
design mark application (serial number 76/169,140) which is incomplete and
misleading since Complainant obtained a federal trademark registration,
resulting from a different application, for the word mark “REGISTER.COM”
covering exactly the same services at issue in the present dispute and
specified in the ‘140 application.
As a federally registered mark on the
principal register, that mark is presumptively viewed as being distinctive of
Complainant’s domain name registration services and is sufficient to establish
Complainant’s rights in that mark, in accordance with paragraph 4(a)(i) of the
Policy. Accordingly, Respondent’s
allegation, that the PTO determined that the “REGISTER.COM” mark is inherently
descriptive of the goods and services with which that mark is used, is erroneous.
Second, Respondent alleges that
Complainant is not actually engaged in the business of providing domain name
registration services. This Complainant
states that this claim is "obviously a fiction devised in a desperate
attempt to establish that Respondent’s use of the disputed domain names is
non-competing and, thus, bona fide".
Complainant takes the position that the parties directly compete with
each other in domain name services including domain name registration.
Third, Respondent failed to refute any of
the authority cited by Complainant in its Complaint concerning the confusing
similarity of the disputed Domain Names to the REGISTER Marks. There, Complainant cited a number of UDRP
decisions where panels have espoused the principle that confusing similarity
could not be avoided merely by adding generic or descriptive terms to a
distinctive mark. Also, in that regard,
Complainant cites to shopping24 Gesellschaft für multimediale Anwendungen
mbH v. Rommel, Case No.
D2000-0508 (WIPO Aug. 22, 2000) (prefixing “home”-, “cyber”, “cyber-”,
“e-home”, “internet-”, and “online-” to <shopping24.com> found
confusingly similar to SHOPPING24 mark where panel felt there was a “serious
risk” that Respondent might use the names to compete with complainant’s general
shopping business)).
Fourth, Complainant states that its
REGISTER Marks are presumptively distinctive.
The words “website” and “webpage”, as used by Respondent, are
descriptive of the website registration services offered by Complainant in connection
with the its REGISTER Marks.
Additionally, the number “101” is essentially meaningless when added to
a domain name that also contains a distinctive mark.
Hence, Complainant submits that
Respondent’s allegation that Complainant “presents no evidence” of confusing
similarity between the disputed domain names and the REGISTER Marks is wholly
unsupported.
Fifth, in light of Respondent’s own
admission that he was aware of and visited Complainant’s website on the
Internet, as of at least three years ago, it is beyond reason that Respondent
could not have known that Complainant was in the business of selling domain
name registrations. (See Reile declaration). The <register.com> website that
Respondent would have accessed on the Internet three years ago prominently and
centrally advertised Complainant’s domain name registration services, including
registration services for domains with the .co.uk and .org.uk extensions, which
are clearly international. (See
Complaint Exhibit J specifically the home pages from Complainant's register.
com site as posted in 1999). Moreover,
screen shots (appearing in Exhibit J to the Complaint) providing evidence of
Respondent’s meticulous imitation of the register. com screen layout and domain
name registration search features that were submitted with the Complaint
conclusively contradict Respondent’s claim that he was unaware of the nature of
Complainant’s business. (See Complaint Exhibit J).
Sixth, contrary to Respondent’s
allegation that Complainant never alleged that the disputed domain names were
confusingly similar to the REGISTER Marks prior to filing the Complaint,
Complainant sent Cease and Desist Letters to Respondent as early as February 8,
2001, informing Respondent of Complainant’s belief that the domain names of
which Complainant had then been made aware, <website-register.com>
and <webpage-register.com>, were confusingly similar to
Complainant’s marks. Complainant’s
subsequent February 5, 2002 cease and desist letter to Respondent not only
informed Respondent that the domain name <101register.com> was
confusingly similar to Complainant’s marks, but also that Complainant’s
customers had “contacted us [Complainant] based on actual confusion….”.
Lastly,
Complainant opposes Respondent’s request to the Panel that, even if it should
find “infringement” -- which the Panel interprets to be a basis under the
Policy to warrant either transfer or cancellation of the disputed domain names,
the Panel should not transfer the disputed domain names to Complainant. Specifically, Complainant states that
Respondent, by its own admission, has been aware of Complainant for at least
three years. Respondent’s actions
suggest that it has been fully aware of Complainant’s business for the entire
3-5 year period during which Respondent has been using the disputed domain
names. Respondent’s painstaking copying
of Complainant’s website belies Respondent's assertion that Respondent was
unaware that Complainant sold domain names.
If there was any doubt, the cease and desist letters sent by Complainant
to Respondent placed Respondent on clear notice that Respondent was infringing
on Complainant’s trademarks. Hence,
Complainant takes the position that Respondent cannot now be heard to complain
that the transfer of the disputed domain names would in any way prejudice
him. The goodwill that Respondent
claims will be a windfall to Complainant was wrongfully usurped by Respondent,
and the harm inflicted on Complainant will not be compensated by the mere
transfer of the disputed domain names.
2.
Respondent's first additional submission
Respondent does not dispute that
Complainant has a federally registered trademark for the mark
REGISTER.COM. Furthermore, Respondent
acknowledges that it has seen and is aware of that registration as provided in
Exhibit O (to Complainant's first additional submission).
Respondent's
position is that the word REGISTER is not Complainant’s trademark when used for
the sale of domain name registrations.
As such, sixteen of the twenty-one disputed domain names should not be
subject to this arbitration as they do not deal with Complainant’s valid
trademark for “Register.com.”; instead, as set forth in Response, these
disputed domain names simply utilize the term REGISTER and not “Register.com.”
As
these sixteen disputed domain names are not under the umbrella of Complainant’s
trademark REGISTER.COM, the Panel should determine, based upon Complainant’s
own admissions, that they are not infringements upon Complainant’s registered
trademark for REGISTER.COM.
Finally,
with respect to the remaining five disputed domain names, Respondent defers to
the arguments set forth in the Response inasmuch as those names are not
confusingly similar to those of Complainant.
3.
Complainant's second additional submission
In its second additional submission,
Complainant states essentially as follows:
First,
Complainant has a federal trademark registration for the word REGISTER in
connection with closely-related website hosting, email and related
services. Second, a TLD suffix has no
trademark significance under US law.
Accordingly, there is no difference, for trademark purposes, between
Complainant’s REGISTER. COM mark and the mark REGISTER. Third, Complainant has common law rights in
the REGISTER mark, as established through extensive use in commerce and
recognized in prior UDRP and judicial proceedings. Fourth, nowhere in any of Complainant’s papers has Complainant
admitted that it lacks trademark rights in the term “Register.” Finally, Complainant contends that any
assertion that the term REGISTER is not widely associated with Complainant’s
domain name registration business "borders on the absurd".
4.
Respondent's second additional submission
In its second additional submission,
Respondent states essentially as follows:
While
Respondent does not dispute that Complainant has a registered trademark for the
term REGISTER.COM, Respondent is disputing Complainant’s right to obtain
“blanket” protection over any and every use of the term “register” when used in
conjunction with other terms, etc.
Complainant is attempting to argue that this Panel should extend
trademark protection over all uses of the term “register”, even if they are
used in conjunction with additional words or terms. Respondent is arguing that this protection should not be
over-extended to include sixteen websites such as <website-register.net>
<website-register.org>, or <webpageregister.info>
because they are not confusingly similar to Complainant’s trademark and do not
even contain the registered trademark, REGISTER.COM. This fundamental difference is neither absurd nor an attempt to
deceive this Panel in any way. The
differences speak for themselves.
As
for the mark REGISTER, Complainant asserts that “there is no difference, for
trademark purposes, between Complainant’s REGISTER.COM mark and the mark
REGISTER. Nowhere in Complainant's
registration for the REGISTER mark (appearing in Exhibit D to the Complaint)
does that registration describe the mark as being used to sell domain name
registrations. Instead, the recitation
of services is limited to “computer and business services, namely hosting the
websites of others on a computer server for a global computer network, and
providing information about website development, electronic mail, and
electronic commerce.” Furthermore, Complainant’s recitation does not contain
use for selling domain name registrations.
Thus, the mark does not afford the same breadth of protection as
Complainant would like to believe.
Complainant’s arguments are over-reaching attempts to usurp the market
and obtain “blanket” protection over any and all uses of the word
“Register.”
FINDINGS
A copy of the
registration records for all twenty-one disputed domain names appears in
Exhibit A to the Complaint. These
records indicate that Respondent registered these names between February 28,
1998, and May 10, 2002.
A. Complainant’s REGISTER Marks
Complainant owns several federal service
mark registrations that either consist of or incorporate the term REGISTER and
has provided, in Exhibit D to the Complaint and Exhibit O to Complainant's
first additional submission, a copy of the registration records from the
Trademark Electronic Search System (TESS) or the Trademark Applications and
Registrations Retrieval (TARR) web servers, both of which are provided by the
US Patent and Trademark Office (PTO) and are accessible through the
Internet. The pertinent details are as
follows:
1. REGISTER
(block letter)
US
registration 2,664,968; registered December 24, 2002
This mark was registered for use in
connection with: "electronic mail services" in international class 38
and "computer and business services, namely, hosting the websites of
others on a computer server for a global computer network, and providing
information about website development, electronic mail, and electronic
commerce" in international class 42.
This mark claims a first use and first use in commerce date of December
1, 1994 for class 38 and December 31, 1994 for class 42.
2. REGISTER.COM
(block letter)
US
registration 2,664,967; registered December 24, 2002
This mark was registered for use in
connection with: "electronic mail services" in international class 38
and ”computer and business services, namely, hosting the websites of others on
a computer server for a global computer network, and providing information
about website development, electronic mail, and electronic commerce" in
international class 42. This mark
claims a first use and first use in commerce date of December 31, 1994 for both
classes.
3. REGISTER.COM
(block letter)
US
registration 2,785,206; registered November 25, 2003
This mark was registered for use in
connection with: "commercial information and directory services featuring
directories for locating computer network addresses and demographic information
of entities; providing an online directory of business organizations,
individuals, addresses and resources" in international class 35 and
"computer network address management services, namely providing services
enabling entities to reserve and secure computer network addresses and to
access, add, modify, or delete information relating to their computer network
addresses; computer services, namely providing search engines for obtaining
data on a global computer network; hosting the websites of others on a computer
server for a global information network" in class 42. This mark claims a first use and first use
in commerce date of December 1, 1994 for both classes.
B. The Parties’ Activities
With respect to Complainant,
Register.com Inc. is a publicly-traded company. Complainant was the second ICANN‑accredited company to
compete in the domain name registration field and has consistently been one of
the leading companies in its industry.
Complainant currently has a market capitalization of more than $200
million and employs approximately 500 people.
As of June 30, 2003, Complainant was managing over three million domain
names under the REGISTER.COM mark and has millions of visitors to its website
every month. Net revenues relating to
services marketed and sold under the REGISTER Marks were $86,109,514 in 2000,
$116,280,759 in 2001, approximately $106,288,000 in 2002, and approximately
$53,257,000 for the first two quarters of 2003. (See declaration of Brett E. Lewis appearing in Exhibit G to the
Complaint).
Complainant first used its REGISTER Marks
in commerce in 1994 and has used them continuously and extensively in
connection with the provision of domain name registration services, online
search engine services, website hosting and development services, electronic
mail services and other related services ever since. Register.com gained national press attention in early 1998, was
ranked by PC Magazine as one of the top 100 Web Sites on the Internet in
December 1998, and, by early 1999, had registered more than 300,000 domain
names for Network Solutions, Inc., making Complainant one of the leading domain
name registration services at that time.
(See Exhibits E, F and M to the Complaint).
Complainant has extensively
advertised its services provided under the REGISTER Marks through all forms of
media, including national television and radio, nationally-distributed print
publications, and on major websites. In
that regard, Complainant has spent tens of millions of dollars on such
advertising during the past four years.
(See Lewis declaration).
Complainant has never licensed, assigned or otherwise
authorized Respondent to use any of the REGISTER Marks as domain names on the
Internet. Complainant and Respondent
are direct competitors in the provision and sale of domain names.
On or about February 8, 2001, Complainant
learned of Respondent's websites located at <website-register.com> and
<webpage-register.com>.
Through these two websites, Respondent offered domain registration
services and displayed webpages that contained characteristics similar to
Complainant’s website, logo and slogan as they appeared on Complainant's
<register.com> site as early as April 1999.
Specifically, Respondent’s websites
offered the same domain name search and registration service, used the same
overall page layout, placed content on the same rounded background box, and
displayed logos and slogans using the same font, colors and text patterns as on
Complainant’s website -- as that site appeared during April 1999 through July
2002.
Complainant’s attorneys sent Respondent a
cease and desist letter on February 8, 2001 informing Respondent that its
registration and use of the domain names <webpage‑register.com> and
<website-register.com> infringed Complainant’s REGISTER Marks. The letter also requested Respondent to
transfer registration of those two names to Complainant. On June 21, 2001, Complainant sent
Respondent a subsequent letter which reiterated Complainant's view of
infringement and again requested the transfer of those two names.
In spite of the letters, Respondent did
not transfer the domain names. Instead,
Respondent registered six additional domain names -- of the 21 ultimately
disputed, specifically <101register.info>,
<webpageregister.info>, <webpage-register.info>,
<websiteregister.info>, <website‑register.info>, and
<website-register.net>, all of which incorporate the term
"register". Furthermore,
Respondent modified certain of its websites by adding checkboxes and domain
name extension options to its menu of domain name search functions which had
the effect of increasing the similarity between each of these sites and
Complainant’s site. Each corresponding
domain name for these additional sites would eventually fall within the
disputed domain names.
Complainant subsequently became aware of
Respondent’s <101register.com> website, which, like the <website-register.com>
website, imitated the color scheme, logo and layout of Complainant’s
<register.com> site. On February
5, 2002, Complainant sent Respondent a third cease and desist letter through
which Complainant demanded transfer of the <101register.com> name
and notified Respondent that, inter alia, the <101register.com>
name infringes Complainant's REGISTER Marks.
Some three months later, during May 2002,
Respondent registered an additional domain name incorporating Complainant's
"Register' Marks, specifically <websiteregister.com>. The home page of Respondent's site
resolvable through that particular name is also quite similar, if not virtually
identical, to Complainant’s <register.com> website.
Starting in August 2002, Respondent
updated many of its sites resolvable through the disputed domain names, and
specifically <website-register.com>, <webpage‑register.com>
and <101register.com>, to copy additional features into its
sites that were similar to those on Complainant’s <register.com> website,
including a left frame navigation bar, and the identical graphic and
prominently displayed slogan “Make the Most of Your Domain!” That slogan had not even appeared on
Complainant’s website until November 2001 which would have been several months
after the dates of the first and second cease and desist letters.
As for Respondent’s business activities, for the past nine years since
1994, Respondent has engaged and continues to engage in search engine
registration and optimization.
Approximately five years ago ‑‑ starting in the 1998-9
timeframe, Respondent expanded its registration business to include
international and national domain registrations and became a web hosting
provider focusing on search engines, optimized, national and international
e-commerce systems. In doing so,
Respondent operates various websites, resolvable through the disputed domain
names, through which it sells and provides domain names to its clients and
customers. Currently, Respondent,
through its websites, has approximately 30,000-50,000 unique visitors per month
and an average customer base of approximately 10,000 users.
DISCUSSION
Though the disputed
domain names collectively embody various different generic top level domains
(“gTLDs”), specifically ".com", ".org", ".net",
".biz" and ".info", the corresponding registrars have each
adopted the Policy as the mechanism for use in resolving disputes that
implicate prior trademark rights involving names having these gTLDs. Accordingly, the Panel will not
differentiate among the various different gTLDs and will treat all the
different gTLDs together.
Paragraph 15(a) of
the Rules of the Policy 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;
(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.
Trademark
Infringement/Validity issues
Questions of
trademark infringement, as Respondent raises, are clearly not within the
purview of any ICANN proceeding and are best left for court adjudication. Not only is doing so outside the very
limited and focused jurisdiction afforded to ICANN panels under the Policy but
moreover the summary and rather abbreviated nature of ICANN proceedings totally
precludes the establishment of a fully developed factual record that underlies
such a question.
Issues concerning
trademark invalidity, which Respondent here raises as a lack of registrability
owing to descriptiveness/genericness, are no different. ICANN panels cannot and hence do not assess
the validity of any federally registered trademark. Instead, such panels must, of necessity, accord significant
deference to decisions of that government body, namely the US PTO, which, in
the first instance, not only possesses the requisite expertise to assess such
issues but also the federal statutory mandate to do so. It is simply not within the purview of any
ICANN panel to evaluate and review the judgment of the US PTO on such
questions. Moreover, even
apart from those jurisdictional concerns but clearly in view of the rather
summary and abbreviated nature of ICANN proceedings, ICANN panels are here too
grossly ill‑equipped to deal with an extensive factual inquiry that
typically underlies an invalidity determination. See, e.g., United
States Office of Personnel Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb.
Forum Dec. 9, 2003), and Lake at Las
Vegas Joint Venture v. Principal Equiti, Inc., D2002‑0758 (WIPO
Oct.
4, 2002).
Hence, once the US
PTO has made a determination that a mark is registrable, as it has here by
issuing a registration for each of the REGISTER Marks, an ICANN panel is not
empowered to nor should it disturb that determination.
To the extent
Respondent wishes to challenge the US PTO’s determination that any of
Complainant’s REGISTER Marks have acquired sufficient distinctiveness upon
which registration can be based, Respondent may well have appropriate
administrative and/or judicial avenues available to it to do so, such as by
filing an action in the US PTO to cancel any of Complainant’s federal
registrations or alternatively instituting federal litigation. Absent Respondent having done so and
attained a final ruling that any of Complainant’s federally registered marks is
indeed merely descriptive or generic and thus not susceptible of registration,
this Panel will simply defer, as it must, to the US PTO’s determination
implicit in its having granted a registration, i.e., that each of Complainant’s
REGISTER Marks have acquired sufficient distinctiveness and hence are not
merely descriptive, and thus qualify for federal trademark protection and enjoy
all the rights afforded thereby.
The Panel finds that confusion is likely
to arise as a result of Respondent’s use of any and all of the disputed domain
names.
Each of the
disputed domain names prepends a generic term (specifically “webpage” or
“website”) or a numeric term (specifically “101”), with or without an
intervening hyphen, to Complainant’s mark REGISTER. As will be seen below, applicable UDRP precedent, illustratively
discussed below, treats all these terms and the addition of punctuation marks
in the same manner, i.e., each being insufficient in and of itself, when used
in forming a domain name that results from adding that item to a mark, to
confer the requisite distinctiveness that would sufficiently abate concomitant
user confusion. Hence, for the sake of
simplicity, the Panel will simply treat all the disputed domain names
collectively.
All Complainant’s REGISTER Marks allege
first use of those marks in commerce in connection with its e-commerce/website
(including domain name registration) /e-mail services (collectively “Internet”
services”) as least as of December 31, 1994 ‑‑ approximately 3
years prior to earliest date, February 28, 1998, on which Respondent began
registering the disputed domain names.
In the Panel’s mind, even apart from Respondent’s own admission,
Complainant and Respondent directly and clearly compete in provision and registration
of domain names and have done so for several years. Such domain name services are certainly encompassed within the
recitation of Complainant’s Reg. No. 2,664,967 registration, namely,
"commercial information and directory services" and "computer
network address management services".
As a result of Complainant’s continuous
and extensive use of its REGISTER Marks since 1994, those marks have certainly
acquired requisite secondary meaning and distinctiveness prior to February
1998, and clearly to a level sufficient from which the Panel can infer that
potential customers and Internet users are likely to recognize those marks as
signifying the various Internet services offered by Complainant and not by
Respondent.
Further, in the context of Internet
services, and specifically domain name services—which both Complainant and
Respondent competitively render—the Panel finds that the terms "website”
and “webpage” are simply generic terms, each of which adds absolutely no
distinctive element to any of the disputed domain names, let alone of any
magnitude sufficient to distinguish that name from Complainant's REGISTER Marks
and thus preclude user confusion. See,
e.g., Cable News Network LP, LLP v.
Khouri, FA 117876 (Nat. Arb. Forum Dec. 16, 2002); Pfizer Inc. v. Order Viagra Online, D2002-0366 (WIPO July 11, 2002); Dell Computer Corp. v. MTO C.A., D2002-0363
(WIPO July 5, 2002); Am. Online, Inc. v. Woods, D2001‑0555 (WIPO June 13, 2001); Dell Computer Corp. v. Logo Excellence,
D2001‑0361 (WIPO May 7, 2001); and Quixtar Invs., Inc. v.
Hoffman,
D2000-0253 (WIPO May 29, 2000). The same is true for the addition of “101”
or an insertion of a hyphen, with the latter being such a de minimus
modification that it warrants no further comment of its own. See, e.g., Cable News Network LP, LLP, supra; Southwest Airlines Co. v. TRN, D2002‑0893 (WIPO, Nov. 18, 2002) and MPL
Communications, Ltd. v LOVEARTH.net, FA 97086 (Nat. Arb. Forum, June
4, 2001).
Given
that Respondent’s services are identical and competitively overlap with those
of Complainant and in view of Complainant’s widespread and prior reputation in
the marketplace, the Panel believes, and the record fails to indicate
otherwise, that Respondent’s prepending of either of the generic terms
“webpage” or “website” to Complainant’s REGISTER mark, as Respondent has done
in some of the disputed domain names, is far more likely to exacerbate, rather
than ameliorate, the confusion.
In
fact, there can be no doubt that Respondent had just this goal in mind and
hence intentionally chose to cause and opportunistically exploit the user
confusion that would inevitably arise to Respondent’s own commercial advantage
when it formed the disputed domain names by prepending the generic word
"website” or “webpage” to the mark REGISTER. Otherwise, why would Respondent have chosen a domain name that
verbatim incorporates Complainant's mark REGISTER? The Panel can think of no plausible reason. It is simply inconceivable to the Panel that
Respondent -- contrary to its statements in the Reile declaration -- was
completely unaware of the REGISTER Marks and their reputation when Respondent
formed and registered each of the disputed domain names. Given that the parties are direct
competitors, it stands to reason that either Respondent knew of Complainant at
the time the former started registering the disputed domain names or at least
should have. It strains one’s belief to
think that anyone starting a business or offering a new service under a specific
name (or here through a domain name) -- as Respondent has done -- would not
know his primary competitors.
Complainant was clearly one such competitor, particularly a rather large
competitor, at the time and for some 3 years prior. There is simply nothing in the record to indicate that, during
this time period, Complainant hid its identity from its user/customer
community; in fact, the record clearly indicates the exact opposite.
Such
confusion would undoubtedly cause Internet users intending to access
Complainant's website, but who reach a website through any of the disputed
domain names, to think that an affiliation of some sort exists between
Complainant and Respondent, when, in fact, no such relationship would exist at
all. See, also, e.g., Caesars World, Inc. v. Japan Nippon, D2003‑0615 (WIPO Sept. 30, 2003); Leiner Health Servs. Corp. v. ESJ Nutritional
Prods.,
FA 173362 (Nat. Arb. Forum Sept. 16, 2003); Am. Family Life Assurance
Co. of Columbus v. defaultdata.com, FA 123896 (Nat. Arb. Forum Oct. 14, 2002); AT&T Corp. v. Abreu, D2002‑0605
(WIPO Sept. 11, 2002); Pfizer Inc., supra; L.F.P., Inc. v. B and J Props., FA 109697 (Nat. Arb. Forum May 30,
2002); Frampton v. Frampton Enters.,
Inc., D2002‑0141 (WIPO Apr. 17, 2002); Spence-Chapin Servs. to Families and Children v. Wynman, FA 100492 (Nat. Arb. Forum Dec. 10,
2001); MPL Communications v.
LOVEARTH.net, supra; Meijer, Inc. v.
Porksandwich Web Servs., FA 97186 (Nat. Arb. Forum July 6, 2001); MPL Communications v. 1WebAddress.com, FA
97092 (Nat. Arb. Forum June 4, 2001); Am.
Home Prods. Corp. v. Malgioglio, D2000‑1602 (WIPO Feb. 19,
2001); Surface Prot. Indus., Inc. v.
Webposters, D2000‑1613 (WIPO Feb. 5, 2001); Dollar Fin. Group, Inc. v. VQM NET, FA 96101 (Nat. Arb. Forum Jan.
25, 2001); eBAY Inc. v. G L Liadis
Computing, Ltd., D2000‑1463 (WIPO Jan. 10, 2001); Treeforms, Inc. v. Cayne Indus. Sales Corp.,
FA 95856 (Nat. Arb. Forum Dec. 18, 2000); see also Pep Boys Manny, Moe and Jack of CA v. E‑Commerce
Today, Ltd., AF‑0145 (eResolution May 3, 2000).
Therefore,
the Panel finds that each of the disputed domain names sufficiently resembles
Complainant's REGISTER Marks as to cause confusion; hence, Complainant has
shown sufficient similarity between its marks and all the disputed domain names
under paragraph 4(a)(i) of the Policy.
The
Panel believes that Respondent has yet to provide any basis that would
legitimize any claim it has to any of the disputed domain names. In fact, it is extremely unlikely that
Respondent can even make such a claim.
The
simple reason is that each of the disputed domain names contains one of
Complainant's REGISTER Marks under which Complainant provides its Internet
services. Furthermore, Complainant has
never authorized Respondent to utilize any of its REGISTER Marks, or a mark
confusingly similar thereto, in conjunction with the specific Internet services
which Complainant provides under those marks, nor does Complainant have any
relationship or association whatsoever with Respondent.
Hence, any use to which Respondent were
to put any of the REGISTER Marks or a mark confusingly similar thereto, in
connection with providing Internet services identical or similar to those
currently provided by Complainant would directly violate the exclusive
trademark rights now residing in Complainant.
See, e.g., Leiner Health
Servs. Corp.; AT&T Corp.;
MPL Communications, FA
97086 and FA 97092; Am. Online, Inc. v. Fu, D2000‑1374
(WIPO Dec. 11, 2000); and Treeforms,
Inc., all supra.
It
is eminently clear to this Panel, as stated previously, that Respondent, in
choosing each of the disputed domain names that, at its essence, completely
incorporates one of Complainant's REGISTER Marks and then prepending to it
either a generic or a numeric term has been and is intentionally seeking to
create confusingly similar names, each of which opportunistically exploits
Internet user confusion by diverting, through re‑direction and diversion,
Internet users away from Complainant's site to Respondent's site for the
latter's own pecuniary benefit.
Specifically, those users would think they are purchasing Complainant's
services through Respondent's site and, by doing so, generate profit to
Respondent from those sales ‑‑ to Complainant's ultimate financial
detriment.
Moreover,
this conclusion is reinforced by the sheer number of the disputed domain names
registered, some of which were registered in spite of Respondent having
received direct prior written notice from Complainant as to the latter's
trademarks. The Panel has no doubt that
Respondent, in furtherance of rendering services identical to some of those
provided by Complainant, registered each name in succession to incrementally
heighten user confusion and thus, as an ensuing result, incrementally increase
the amount of user traffic it diverted from Complainant's site.
Such
parasitic use, which at its essence relies on instigating and exacerbating user
confusion, can not and does not constitute bona fide commercial or fair use
sufficient to legitimize any rights and interests Respondent might have in any
of the disputed domain names. See,
e.g., Leiner Health Servs. Corp., supra and Frampton,
supra.
Respondent
has repeatedly argued to the Panel that Complainant, in seeking transfer of the
disputed domain names under the Policy, is essentially using the Policy as an
instrumentality to monopolize all uses of the word "register" for use
in any domain name. That argument,
while often raised in numerous prior ICANN disputes to counter a complainant's
transfer request, is both unpersuasive and rejected.
First,
the Policy, through inclusion of a "bona fide" requirement within
paragraph 4(c)(i):
"c.
... Any of the
following circumstances, in particular but without limitation ... shall demonstrate your rights or legitimate
interests to the domain name for purposes of Paragraph 4(a)(ii):
(i)
before any notice to you of the dispute, your use of, or demonstrable
preparations to use, the domain name or a name corresponding to the domain name
in connection with a bona fide offering
of goods or services ..."
[emphasis added]
clearly
contemplates concurrent third-party use of trademark-containing domain names
along with use of those same marks by their respective owners provided those
domain names are used or are to be used (via a showing of demonstrable
preparations) in conjunction with a "bona fide" offering of goods or
services. In this context, the term
"bona fide," which is generally synonymous with "good
faith" and in qualifying the term "offering," implicates use,
whether present or future, which, inter
alia, is not likely to engender user confusion. Therefore, it is plainly evident that the Policy, parallel to
most national trademark laws -- of which US trademark law is clearly
illustrative, does not proscribe all domain names that happen to contain a
trademarked term, such as "register" or any other such term for that
matter, but only those that are or would be used in any manner which is likely
to cause confusion and hence conflict with activities of the trademark
owner. Such a use is a competitive
service offering -- as Respondent's offering is here. The existence of such a conflict and its potential for confusion
necessitates that any panel, as has the present Panel, examine the "bona
fides" of any respondent in assessing whether, in fact, that respondent
has rights and legitimate interests in a disputed domain name.
Second,
the Policy, by expressly stating "but without limitation" has not
restricted the grounds under which any respondent can prove it has rights and
legitimate interests to a domain name that includes a trademarked
component. Paragraphs 4(c)(i)-(iii)
simply provide three illustrative, though broad, bases. The respondent, to the extent it can assert
and prove any other basis in support of its claim of rights and legitimate
interests, can retain that domain name.
However, Respondent here has not and is highly unlikely to ever have any
such other basis.
In
light of the above findings, the Panel is not persuaded that Respondent has any
rights or legitimate interests or, based on current facts provided to the
Panel, is likely to acquire any rights or legitimate interests in any of the
disputed domain names under any provision of paragraph 4(c) of the Policy.
Thus,
the Panel finds that Respondent has no rights or legitimate interests in any of
the disputed domain names within paragraph 4(a)(ii) of the Policy.
The
Panel firmly believes that Respondent's actions constitute bad faith
registration and use of all the disputed domain names.
As
discussed above, it is absolutely inconceivable to this Panel that Respondent
was unaware of Complainant’s mark, either REGISTER or REGISTER.COM, when the
former started registering its domain names in 1998 -- some 3 years after the
earliest date on which Complainant started using those marks.
In
fact, by virtue of offering Internet services directly competitive to those
then being offered by Complainant through: (a) websites resolvable through
domain names that incorporated Complainant's marks, and (b) website page design
that copied significant portions of Complainant's website (i.e., to form a
so-called "copy cat" site), Respondent's intention becomes
inescapable: an on-going attempt to cause user confusion and, by doing so,
misappropriate to itself a portion of the goodwill inherent in Complainant’s
REGISTER Marks for its own pecuniary gain.
As discussed in the section above, that intention becomes all the more
apparent, by virtue of Respondent's actions in registering not one single
domain name that included the REGISTER Marks, but 21 of those names of which
all are now disputed.
Further,
in successively registering so many domain names, including registering some of
those names in spite of having express prior written knowledge of Complainant's
trademark rights, based on the record before the Panel, it is simply
irrefutable that Respondent intended to cause and to opportunistically exploit
escalating amounts of inevitable user confusion and diversion that would result
from use of each additional one of the disputed domain names, and obviously
achieve similarly increasing financial benefit there from. Such actions would yield, as their natural
consequence, concomitantly escalating loss to Complainant not only in terms of
revenue but also in terms of its goodwill and reputation. Thus, Respondent's conduct here regarding
the disputed domain names directly contravenes paragraph 4(b)(iv) of the
Policy. See Cable News Network LP, LLP, supra.
With Complainant having adduced sufficient evidence to substantiate its
allegations of bad faith use and registration, the burden of going forward then
shifted to Respondent to raise sufficient doubt and effectively rebut those
allegations. Respondent has simply
failed to meet its burden. Other than
providing a declaration from Respondent Reile, which, given its self-serving
nature, is necessarily meet with skepticism, Respondent has provided no proof,
let alone independent proof, to support its own contentions. In fact, the Panel doubts that such proof
exists.
Therefore,
the Panel views Respondents’ actions as constituting bad faith use and
registration in violation of paragraph 4(b)(iv) of the Policy.
Consequently,
Respondent's conduct constitutes bad faith use under paragraph 4(a)(iii) of the
Policy.
Thus, the Panel concludes that
Complainant has provided sufficient proof of its allegations to establish a
prima facie case under paragraph 4(a) of the Policy upon which the relief it
now seeks can be granted.
DECISION
In accordance with paragraphs 4(i) of the
Policy and 15 of the Rules, the relief sought by Complainant is hereby GRANTED.
Accordingly,
the Panel orders that all the disputed domain names, specifically <101register.com>,
<webpage-register.com>, <website-register.com>,
<webpageregister.com>, <websiteregister.com>,
<101register.net>, <101register.org>, <webpageregister.net>,
<webpageregister.org>, <website-register.net>,
<websiteregister.org>, <website-register.org>,
<webpage-register.net>, <websiteregister.net>,
<webpage-register.org>, <101register.info>,
<webpageregister.info>, <webpage-register.info>,
<websiteregister.info>, <website-register.info> and <website-register.biz>, are to be TRANSFERRED
from Respondent to Complainant.
Peter L.
Michaelson, Esq., Panelist
Dated: January
27, 2004
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