BND Ent. d/b/a Dark Fire v. RN WebReg
a/k/a darkflame.com a/k/a Buy This Domain
Claim Number: FA0405000280502
PARTIES
Complainant
is BND Ent. d/b/a Dark Fire (“Complainant”),
represented by Krista Avalon, P.O. Box 760693, San Antonio, TX
78245. Respondent is RN WebReg a/k/a darkflame.com a/k/a Buy This Domain (“Respondent”), represented by Ari Goldberger of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ
08003, U.S.A.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <darkfire.com> and <darkflame.com>, registered with Register.It Spa and 123 Registration, Inc.
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.
Judge
Karl V. Fink (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 26, 2004; the Forum received a hard copy of the Complaint
on June 1, 2004.
On
May 28, 2004 and June 14, 2004, Register.It Spa and 123 Registration, Inc.
confirmed by e-mail to the Forum that the domain names <darkfire.com> and <darkflame.com> are registered
with Register.It Spa and 123 Registration, Inc., respectively, and that the
Respondent is the current registrant of the names. Register.It Spa and 123 Registration, Inc. have verified that
Respondent is bound by the Register.It Spa and 123 Registration, Inc.
registration agreements and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On
June 14, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 6,
2004 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@darkfire.com and postmaster@darkflame.com by e-mail.
A
timely Response was received and determined to be complete on July 6, 2004.
On July 14, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Judge Karl V.
Fink (Ret.) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
On
May 18, 2004, Respondent registered the domain name <darkfire.com>
with Register.It, an Italy based registrar.
Complainant
informed Register.It on May 20th, 2004 that Complainant had a legitimate claim
to the name, and they did not address that concern in their return e-mail.
RN
WebReg is the registered owner of the <darkfire.com> domain and RN
WebReg a/k/a darkflame.com a/k/a Buy This Domain is the registered owner of <darkflame.com>.
The
<darkfire.com> domain name is being offered on <sedo.co.uk>,
a UK based auction site. Complainant
entered into negotiations on this auction site. In negotiations for the name, Complainant outlined Complainant’s
legitimate claim to the name <darkfire.com>. Respondent knows of Complainant’s trademark
in process, as that information was in Complainant’s counteroffer to
Respondent.
The
Respondent registered the <darkfire.com> and <darkflame.com>
domain names in bad faith. Respondent
registered the <darkfire.com> domain name which is in the process
of being trademarked and has been used in commerce by BND Enterprises since
1996. The <darkflame.com> domain
name, also owned and offered for sale by Respondent, is confusingly similar to <darkfire.com>
and has been included in the Complaint for that reason, as it has also been
registered in bad faith. Respondent is
aware of Complainant's claim to these names, yet still offers them for sale at
a price many times higher than the market rate, thereby keeping Complainant
from having the ability to register and use them in legitimate business
concerns. Respondent is asking €5000
for the name <darkfire.com> and $3,288 US for the name <darkflame.com>.
Respondent
is in the business of reselling domain name registrations, and has no claim or
intention other than to sell the domain name registrations as evidenced by the
Sedo negotiations and the fact that Respondent's site has 22,978 domains that
are offered for sale. Neither name is,
as of the date of the amended complaint, June 7, 2004, being developed in any
way except as a “for sale” page for Buydomains.com. With more than 22,000 names for sale, this company cannot claim
that they are using the names in question for any legitimate purpose.
Respondent
registered both domains specifically for the purpose of selling them for a very
large profit. Respondent has no use of,
or demonstrable preparations to use, the domain names except to sell them for
huge profit. Respondent has not been
commonly known by the domain names and has not acquired trademark or service
mark rights. Respondent is not making a
legitimate noncommercial or fair use of the domain names.
The name
DARK FIRE has been used by Krista Avalon and BND Enterprises in commerce since
1996. Customers have referred to DARK
FIRE numerous times as Dark Flame.
The
<darkfire.com> and <darkflame.com> domain names should
be considered as having been registered and being used in bad faith based on
the trademark proceedings and legitimate use of the name in commerce by Krista
Avalon and BND Enterprises.
B.
Respondent
Complainant
does not have a registered trademark for the term “dark flame,” and has only
recently received a registered trademark for DARK FIRE, issued after the
disputed domains were registered.
Complainant does not have exclusive rights to either the terms DARK FIRE
or “dark flame,” both of which are subject to substantial third party use. Respondent registered the disputed domains
because they were deleted and made available for anyone to register.
Respondent
had no knowledge of Complainant or its purported mark, and did not register the
disputed domains to sell to Complainant, to disrupt its business, prevent it
from acquiring a domain name incorporating its trademark or confuse users. Complainant has not alleged evidence of
common law trademark rights to the common term DARK FIRE.
It
is well established that the offer for sale of common word domain names does
not constitute bad faith under the Policy but, rather, is a bona fide business
activity that establishes the Respondent’s legitimate interest. Respondent hosts the disputed domains at
BuyDomains.com, a legitimate business it operates which provides Internet
services, advertising and offers common and descriptive term domain names for
sale to the general public.
Complainant
operates an Internet web site at <darkfiregallery.com> which offers sex
toys for sale. A search on
<google.com> for the terms “dark flame” and “dark fire,” excluding the
word “sex” to eliminate references to Complainant, yielded over 23,000 third
party uses of these terms.
There
is another third party registered trademark for DARK FIRE for sun tanning
preparations, in use since January 2001 and registered since July 2003. The terms DARK FIRE and “dark flame” are
extremely common terms to which Complainant does not have exclusive rights. Because of the third party uses of the
terms, their mere registration is not evidence that Respondent had
Complainant’s marks in mind when it registered them.
Respondent
registers domain names that become available for registration through
expiration and deletion. Respondent
only registers domain names which incorporate common words, descriptive terms,
and/or words and terms to which it believes no single party has exclusive
rights.
In
order to establish common law trademark rights to a descriptive term,
Complainant “must show that the mark has acquired distinctiveness when
associated with the Complainant’s goods or services.” Complainant has not
proffered evidence that it is one of the only, or even one of a few, associated
with the term DARK FIRE. Complainant
does not even allege that it uses the term “dark flame,” just that <darkflame.com>
is confusingly similar to DARK FIRE.
Complainant does not explain how this very different term is confusingly
similar, or how or why consumers would confuse the two.
Even
though Complainant’s registered trademark for DARK FIRE has now issued, it was
not issued at the time Respondent registered the disputed domains. Accordingly, Complainant’s alleged mark provides no enforceable rights
under the Policy with respect to the disputed domains.
Because
Complainant has no enforceable trademark rights under the Policy to DARK FIRE,
and because it has not produced evidence of how <darkflame.com> is
confusingly similar to DARK FIRE, the Complaint must be dismissed.
The
paid advertising search results that appear on Respondent’s web sites through
its agreement with Overture.com also establish Respondent’s legitimate
interest.
Complainant
has proffered no evidence of any kind demonstrating that Respondent had any
knowledge of its mark or business operations at the time the disputed domains
were registered.
Respondent
simply had no knowledge of the existence of Complainant or its alleged
trademark when it registered the disputed domains and, thus, bad faith cannot
be proven. It is well established that
the sale of domain names constitutes a bona fide offering of goods and services
where the respondent is unaware of a party’s trademark rights.
There
is no basis for inferring that Respondent had knowledge of Complainant when it
registered the disputed domains. There
is no evidence that Complainant was targeted by Respondent. The reason Respondent registered the domain
names is because they were deleted. The
acquisition of such deleted domain names has been endorsed as a bona fide
practice under the Policy. The fact
that a disputed domain name was registered after being deleted favors the
respondent, because the deletion is a signal that the prior registrant has
abandoned any claim to it.
FINDINGS
For
the reasons set forth below, the Panel finds Complainant has not proven that
the domain names should be transferred.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain
name has been registered and is being used in bad faith.
Complainant has established rights in the DARK FIRE
mark by filing for registration with the United States Patent and Trademark
Office on March 19, 2002 and through continued use of the mark in commerce
since 1996. The Panel finds that
Complainant’s pending trademark application and Complainant’s use of its mark
in commerce for approximately eight years are sufficient to establish
Complainant’s rights in the DARK FIRE mark pursuant to Policy ¶ 4(a)(i). See SeekAmerica Networks Inc.
v. Masood, D2000-0131
(WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's
trademark or service mark be registered by a government authority or agency for
such rights to exist. Rights in the mark can be established by pending
trademark applications); see also British Broad. Corp. v.
Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not
distinguish between registered and unregistered trademarks and service marks in
the context of abusive registration of domain names” and applying the Policy to
“unregistered trademarks and service marks”); see also Keppel TatLee Bank v. Taylor, D2001-0168
(WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said
name [<keppelbank.com>] in connection with its banking business, it has
acquired rights under the common law”).
The Panel finds Respondent’s <darkfire.com>
domain name is identical to Complainant’s DARK FIRE mark, because the domain
name fully incorporates the mark, adding only a required generic top-level
domain name (gTLD). See Shirmax Retail Ltd./Detaillants Shirmax
Ltee v. CES Mktg. Group Inc.,
AF-0104 (eRes. Mar. 20, 2000) (refusing to interpret Policy ¶ 4(a)(i) in the
conjunctive rather than disjunctive sense in holding that “mere identicality of
a domain name with a registered trademark is sufficient to meet the first
element [of the Policy], even if there is no likelihood of confusion
whatsoever”); see also Porto Chico Stores, Inc. v. Zambon,
D2000-1270 (WIPO Nov. 15, 2000) (stating that the issue of identicality or
confusing similarity is to be resolved “by comparing the trademark and the
disputed domain name, without regard to the circumstances under which either
may be used”); see also Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
Additionally,
the Panel finds that the <darkflame.com> domain name is
confusingly similar to the DARK FIRE mark.
The Panel finds that the substitution of the term “flame” in the
disputed domain name for the similarly defined term “fire” in Complainant’s
mark renders the disputed domain name confusingly similar to Complainant’s mark
due to the likelihood of confusion on the part of Internet users attempting to
access Complainant’s products and services.
See Treeforms, Inc. v.
Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding
that confusion would result when Internet users, intending to access
Complainant’s website, think that an affiliation of some sort exists between
Complainant and Respondent, when in fact, no such relationship would exist).
Complainant
has proven this element.
Respondent has
rights and legitimate interests in the disputed domain names, because the sale
of generic domain names constitutes a bona fide offering of goods and services
where Respondent is not aware of a party’s rights in a mark. The Panel finds that as a generic domain
name reseller, Respondent has rights and legitimate interests, pursuant to
Policy ¶ 4(a)(ii), in attempting to sell the <darkfire.com> and <darkflame.com>
domain names when it was unaware of any possible rights held by Complainant in
similar marks. See Fifty
Plus Media Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000) (finding that
Complainant failed to prove that Respondent had no rights in the domain name
and had registered and used the domain name in bad faith where Respondent is an
Internet business which deals in selling or leasing descriptive/generic domain
names); see also Gen. Mach. Prod. Co. v. Prime
Domains, FA 92531 (Nat. Arb. Forum Mar. 16, 2000) (finding for
Respondent, who was in the business of identifying domain names comprised of
generic or descriptive terms, registering those domain names, selling them to
interested parties, and developing websites using those domain names for
clients. Respondent rebutted the
argument that it had no legitimate interest in the domain name
<craftwork.com> since the name had not acquired distinctiveness, and
instead, was merely generic and descriptive at the time of registration); see
also Front
Range Internet, Inc. v. Murphy,
FA 145231 (Nat. Arb. Forum Apr. 4, 2003) (“In some circumstances, the trading
of domain name registrations is considered a bona fide offering of goods and
services”).
Complainant has not proven this element.
Respondent
was not aware of Complainant or Complainant’s products or services at the time
it registered the domain names. The
domain names are generic terms that Respondent registered once they became
available, believing that no party had rights to the <darkfire.com> and
<darkflame.com> domain names.
Numerous other third parties are known by the DARK FIRE mark, which
evidences Respondent’s claim that it did not register the disputed domain names
with the knowledge of any exclusive rights in the mark on the part of
Complainant. The Panel finds that
Respondent did not have actual or constructive knowledge of Complainant and,
therefore, it did not register or use the disputed domain names in bad
faith. See Seaway Bolt &
Specials Corp. v. Digital Income Inc., FA 114672 (Nat. Arb Forum August 5,
2002) (finding that because Complainant’s mark was not particularly well-known
outside of its field, and Complainant failed to show that Respondent knew or
should have known about Complainant at the time of registration, Respondent did
not register the domain name in bad faith); see also MatchMaker Int'l
Dev. Corp. v. Kaiser Dev. Corp., FA 146933 (Nat. Arb. Forum May 9, 2003)
(Panelist David Sorkin, dissenting) (finding that Respondent’s reasonable
belief in its legitimate right to register the disputed domain name precluded a
finding of bad faith registration).
Respondent
asserts that it did not register the disputed domain names with the intent to
sell them specifically to Complainant.
Because Respondent is a generic domain name reseller, Respondent’s
general offer to sell the domain names to anyone who may be interested is not
evidence of bad faith use or registration pursuant to Policy ¶ 4(b)(i). See Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb.
Forum May 11, 2000) (finding no bad faith where the domain name involves a
generic term, and there is no direct evidence that Respondent registered the
domain name with the intent of capitalizing on Complainant’s trademark
interest); see also John Fairfax
Publ’n Pty Ltd v. Domain Names 4U & Fred Gray, D2000-1403 (WIPO Dec.
13, 2000) (finding legitimate interests and no bad faith registration where
Respondent is a seller of generic domain names); see also LifePlan v. Life Plan, FA 94826 (Nat.
Arb. Forum July 13, 2000) (“[T]he mere offering [of the domain name for sale],
without more, does not indicate circumstances suggesting that Respondent
registered the domain name primarily for the purpose of selling . . . the domain
name to the Complainant”).
Complainant has not proven this element.
DECISION
Complainant
having failed to establish all three elements required under the ICANN Policy,
the Panel concludes that relief requested shall be DENIED.
Accordingly, it is Ordered that the <darkfire.com>
and <darkflame.com> domain names REMAIN with Respondent.
Judge Karl V. Fink (Ret.), Panelist
Dated: July 28, 2004
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