Direct Selling Association v. Michele
Dinoia c/o SZK.com
Claim Number: FA0502000417063
PARTIES
Complainant
is Direct Selling Association (“Complainant”),
1275 Pennsylvania Avenue, NW, Ste. 800, Washington, DC 20004. Respondent is Michele Dinoia c/o SZK.com (“Respondent”),
represented by Valerio Donnini, 4, Via Venezia, 65121 Pescara, PE,
Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <directsellingassociation.com>,
registered with Tuonome.it.
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.
Terry
F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
7, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 8, 2005.
On
February 21, 2005, Tuonome.it confirmed by e-mail to the National Arbitration
Forum that the domain name <directsellingassociation.com>
is registered with Tuonome.it and that the Respondent is the current registrant
of the name. Tuonome.it has verified that Respondent is bound by the Tuonome.it
registration agreement 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
February 22, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 14, 2005 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@directsellingassociation.com by e-mail.
A
timely Response was received and determined to be complete on March 14, 2005.
Complainant
thereafter timely filed an Additional Submission, which was received on March
18, 2005.
On March 22, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Terry F. Peppard as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends, among other things, that:
Complainant
is a trade association of the leading firms that manufacture and distribute
goods and services sold directly to consumers.
It has more than five hundred members.
Complainant
has used the DIRECT SELLING ASSOCIATION service mark in commerce since 1969,
and that mark has been duly and continuously registered with the United States
Patent and Trademark Office since 1973.
The mark’s registration is now incontestable.
Complainant
has for years maintained a number of web sites, including those at
<directsellingassociation.org> and <directsellingassociation.net>,
to facilitate the provision of services to its members and the consuming
public.
The
disputed domain name is confusingly similar to Complainant’s mark because it
merely eliminates the spaces between the words constituting the mark and adds
the suffix “.com” to the result.
The
website maintained by Respondent in association with the disputed domain name
was, at the time of filing of the instant Complaint, configured merely as a
collection of links directing users to a multitude of sites not associated with
Complainant. The site never contained a disclaimer of affiliation with
Complainant.
After
receiving notice of this dispute, Respondent redirected the same site to an
Italian language site accessible under the name <piazzaaffari.com>, which
offers advertisements for various services unconnected with Complainant.
Respondent’s
site originally offered Internet users the opportunity to submit a bid to
purchase the disputed domain name. That
offer was removed from the site shortly after Respondent received notice of
this dispute.
Respondent’s
use of the disputed domain name is likely to cause confusion in the minds of
Internet users by misleading them into believing that Respondent is affiliated
with Complainant or is one of its members.
Respondent
has a history of registering domain names that are identical or similar to the
trademarks of established companies and other organizations (including
Netscape, Anheuser Busch, Disney, Fox Movie Channel, Foot Locker, Quality Inn,
Alcoa, Circuit City, Legg Mason and Volvo), which behavior has been condemned
by UDRP panels.
B.
Respondent
Respondent
alleges, among other things, that:
Respondent
registered the disputed domain name with registrar Tuonome.it, Srl, on August
26, 2003.
Complainant’s
mark is based entirely on common descriptive terms which have not acquired
protectable distinctiveness.
Complainant
has failed to offer proof of any substantial investment in its mark or of any
value of the business conducted under the mark or that the disputed domain name
has caused confusion among Internet users or diverted any business from
Complainant.
Respondent
is the president of the Italian company Piazza Affari, Srl, which has operated
a business-to-business bartering trade in Italy, and only in Italy, since 2001.
Although
its business consists of selling goods and services directly between and among
companies, Piazza Affari, Srl, does not compete with the business of
Complainant.
Complainant
operates only in the United States and its mark is registered only in the
United States.
Complainant
has failed to show that Respondent, living and doing business exclusively in
Italy, had any knowledge of Complainant or of its business when the disputed
domain name was registered.
By
its filing of the instant complaint, Complainant is guilty of reverse domain
name hijacking, i.e.: an attempt to acquire by administrative action what it is
not entitled to under law.
C.
Additional Submissions
In
its Additional Submission, Complainant asserts, among other things, that:
The
website which Respondent currently associates with the disputed domain name
displays no apparent connection to the concept of a direct selling association
other than the domain name itself.
By
virtue of the longstanding public registration of Complainant’s mark, as well
as its prominence in its field and its substantial presence on the Internet
within that field, with multiple web sites maintained for the benefit of its
members and the public, Respondent had constructive notice of Complainant’s
rights in the disputed domain name when it registered that name in 2003.
FINDINGS
In consideration of the pleadings, proofs
and arguments submitted in this proceeding, the Panel finds as follows:
1. The disputed domain name is substantively
identical and confusingly similar to a mark in which Complainant has rights.
2. Respondent has no legitimate interests or
rights with respect to the disputed domain name.
3. Respondent has registered and is using
the disputed domain name in bad faith.
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.
The disputed domain name <directsellingassociation.com> is
both substantively identical and confusingly similar to Complainant’s DIRECT
SELLING ASSOCIATION service mark. It
contains each of the words “direct” and “selling” and “association,” in that
order, but without spaces between them, and merely adds the required suffix
“.com” to the resulting amalgam. It has
frequently been held that such differences do not distinguish a mark from a
competing domain name for purposes of the Policy. See, e.g., Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001); see
also Rollerblade, Inc. v. McGrady,
D2000-0429 (WIPO June 25, 2000).
Complainant
has shown that its mark is duly registered with the United States Patent and
Trademark Office and that the mark is now incontestable. In ordinary
circumstances, these facts, taken together with the similarity of the mark to
the disputed domain name, would entitle Complainant to a finding that it must
prevail over Respondent under the provisions of Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002).
However, Respondent challenges
Complainant’s entitlement to have the disputed domain name transferred to it on
grounds that the mark in question is composed of generic or merely descriptive
terms in which Complainant cannot claim exclusive rights under the Policy. Respondent’s contention relies upon the
principle that “(g)enericness, if established, will defeat a claim of trademark
rights, even in a mark which is the subject of an incontestable
registration.” Rollerblade, Inc. v. CBNO, D2000-0427 (WIPO Aug. 24, 2000). It therefore becomes necessary to explore
Respondent’s “genericness” defense.
It seems clear that each of the terms
“direct” and “selling” and “association,” taken separately, is generic in
character, as none of them identifies a specific thing originating from a
single source. It is possible, however,
for separate generic terms to acquire protectable distinctiveness, in the form
of “secondary meaning,” when combined.
The conclusion that a sufficient degree of distinctiveness has been
achieved is enhanced when the combination is of three such terms because of the
progressive narrowing of the field of possibilities that each additional
qualifying term affords.
It is thus possible to conclude that this
specific combination of three otherwise generic terms qualifies as adequately
distinctive to merit protection under the Policy. However, in order to secure such a conclusion, some substantial
evidence of acquired secondary meaning must be shown. On this point, it must be conceded that Complainant has not
supplied a wealth of evidence. However, from the available proofs, the Panel
finds convincing on this issue the substantial size of Complainant’s commercial
membership, as well as the decades-long period of its use of the mark and the
scope of its presence in the direct selling marketplace, including on the
Internet. Moreover, no evidence has
been offered in this proceeding to suggest that the designation “direct selling
association” is other than unique to Complainant and its affiliates. The Panel therefore concludes that, for
purposes of this proceeding, Complainant’s DIRECT SELLING ASSOCIATION mark
adequately defines but a single source of directly sold products or services,
or, more precisely, a single collection of such providers.
Accordingly, Complainant’s mark has a
sufficient degree of distinctiveness to survive Respondent’s “genericness”
defense, and, therefore, to prevail under Policy ¶ 4(a)(i).
Policy ¶ 4(c) recites a set of three
non-exclusive proofs by which an accused respondent may refute an allegation
that it has no rights or legitimate interests in a disputed domain name. They may be summarized as follows: (i) the
respondent’s pre-dispute use of the domain name in connection with a bona fide offering of goods or
services; (ii) a showing that the respondent has been
commonly known by the name; and (iii)
non-commercial or fair use of the name by the respondent without intent
to divert a mark holder’s customers or to tarnish the mark.
As to the first
of these possible proofs, that arising under ¶ 4(c)(i), it is not enough that
Respondent used the disputed domain name commercially before notice of the dispute
came to him. In addition, that use must
have been bona fide. In this connection, it is strong evidence of
guilty knowledge, and therefore antithetical to a finding of bona fide conduct, that, upon learning
of the instant complaint, Respondent substantially changed the character of the
website associated with its domain name, including eliminating an offer it
previously contained to sell the name.
These facts effectively prevent a finding that Respondent’s behavior,
even if commercial in character, was bona
fide within the meaning of the Policy.
As to the
second of these possible proofs, contained in Policy ¶ 4(c)(ii), there is
neither any contention nor any proof that Respondent has ever been known by the
disputed domain name.
Finally, as to
the last of the three avenues of proof that might be available to Respondent,
pursuant to ¶ 4(c)(iii) of the Policy, Respondent does not contend that its use
of the disputed domain name is, or ever was, non-commercial. Moreover, if Respondent were to contend that
the configuration of his website at the time of filing of the complaint in this
proceeding was not commercial, this Panel would be justified in presuming that
his practice of directing Internet users to the commercial sites of others was
done in anticipation of receipt of “pay-per-click” referral fees, and was,
therefore, commercially motivated. See,
e.g., WeddingChannel.com Inc. v.
Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003).
This leaves to
Respondent the potential that he might establish permissible “fair use” of the
disputed domain name within the meaning of Policy ¶ 4(c)(iii). In this connection, Respondent denies that
his use of that name has caused
any actual confusion among Internet users or diverted any actual business from
Complainant. However, the language of ¶ 4(c)(iii) makes
clear that the Policy does not wait until harm is done before a mark holder may
complain. Rather, it is enough for a mark holder to show that a domain name
user intended such harm.
Here the proof
submitted suffices to demonstrate that, at all times pertinent, Respondent
intended to divert Internet traffic away from Complainant by creating the
illusion of affiliation with the direct selling concept and its trade
association. Respondent’s attempt to
insinuate that its putative business-to-business bartering trade is fairly
described as “direct selling,” so as to legitimize its use of the disputed
domain name, is disingenuous. By
definition, direct selling requires direct contact between sellers and public
consumers, whereas, business-to-business barter operates exclusively between
and among sellers.
In short,
Respondent’s use of the subject domain name cannot be said to be “fair use” in
any accepted sense of that term.
Because no
element of ¶ 4(c) falls in favor of Respondent, and because no other
consideration not expressly mentioned in the Policy but favoring Respondent
appears in the proofs submitted, it must be concluded that Respondent has no
rights or legitimate interests in the disputed domain name.
It remains to be determined whether, in
all of the circumstances here obtaining, it may fairly be said that Respondent
has registered and is using the disputed domain name in bad faith as
contemplated in Policy ¶ 4(a)(iii).
On this question, it would be enough to
justify an affirmative response to note that Complainant has proven that the
domain name in issue is substantively identical and confusingly similar to its
service mark, and that the mark has been entered on the public registry of the
United States Patent and Trademark Office for more than thirty (30) years, so
that Respondent had at least constructive knowledge of the existence of that
mark at the time he registered the subject domain name in the fall of 2003. Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000).
However, Respondent protests that,
because he does business only in Italy, while Complainant operates only the
United States and has its mark registered only in the United States, he
(Respondent) could not have been expected to know of Complainant’s mark when he
registered the subject domain name.
This argument is specious. To begin with, it is inconceivable that
Respondent created the phrase “direct selling association” out of whole cloth
as his domain name of choice. It is
particularly incredible that he would have settled upon use of the word
“association” to describe his business in this context. Moreover, given Respondent’s evident
sophistication with regard to the Internet, taken together with his publicly
revealed pattern of registering as domain names the marks, or variations on the
marks, of a long list of familiar commercial enterprises (including Netscape,
Anheuser Busch, Disney, Fox Movie Channel, Foot Locker, Quality Inn, Alcoa,
Circuit City, Legg Mason and Volvo), it is virtually certain that he
consciously sought out familiar commercial names to exploit, including that of
Complainant.
But there is more. Respondent asserts in his defense that he is
not a competitor of Complainant. That
could be a consideration if this proceeding were to be decided under the
provisions of either ¶ 4(b)(i) or ¶ 4(b)(iii) of the Policy, each of which makes
reference to the competitive relationship between a domain name holder, on the
one hand, and, on the other, either a complaining mark holder or one who might
be induced to purchase the domain name from the name holder, as bearing on the
issue of the name holder’s bad faith in the registration and use of the name. But
this proceeding is best understood within the confines of two different
provisions of Policy ¶ 4(b), namely Policy ¶’s 4(b)(ii) and 4(b)(iv).
Policy ¶
4(b)(ii) expressly provides that it is evidence of bad faith for a domain name
holder to register a domain name in order to prevent the owner of the pertinent
mark from reflecting that mark in a corresponding domain name, provided that
the name holder has engaged in a pattern of such conduct. That Respondent has done exactly that in
other cases is now a matter of public record.
See, e.g., BellSouth Intellectual Prop. Corp. v. Dinoia,
D2004-0486 (WIPO Aug. 27, 2004); see also Société Air France v. SZK.com, D2003-0518 (WIPO Aug. 22, 2003). That he has also done so here is clear from
the record in this proceeding. Such
behavior has been condemned by UDRP panels as evidence of bad faith. See, e.g., Encyclopaedia Britannica Inc. v. Sheldon.com, D2000-0573 (WIPO Sep.
6, 2000).
For its part, ¶ 4(b)(iv) of
the Policy describes, as evidence of bad faith registration and use of a domain
name, a name holder’s attempt to attract, for commercial gain, Internet users
to its website by creating a likelihood of confusion with the mark holder’s
mark as to its source, sponsorship or affiliation. Again, that is precisely what Respondent did in the first version
of his website. Of particular
pertinence on this point is the fact that Respondent made no effort in that
first version of his site to disclaim affiliation with Complainant, so that it
is clear that his (Respondent’s) intent was to trade off of Complainant’s
presence in the marketplace to his commercial benefit.
Respondent’s offer to sell the disputed
domain name over the Internet is still further evidence of his bad faith
registration and use of that name. Am.
Anti-Vivisection Soc’y v.“InfaDotNet”
Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000).
To this list might be added Respondent’s
disingenuous transformation of the offending web site upon receiving notice of
this dispute and his transparent attempt to pass off his business-to-business
barter trade as “direct selling.”
For all of these reasons, the Panel finds
it impossible to conclude other than that Respondent has registered and is
using the disputed domain name in bad faith.
Reverse
Domain Name Hijacking
Respondent has accused Complainant of
attempted “reverse domain name hijacking” in the filing of its Complaint in
this proceeding. “Reverse domain name
hijacking” is an effort aimed at using the Policy in bad faith to deprive a
domain name holder of a name to which it is entitled.
Suffice to say that, the Complaint having
been upheld, Respondent cannot hope to succeed on this argument. Arthur
Guinness Son & Co. (Dublin) Ltd. v. Macesic, D2000-1698 (WIPO Jan. 25,
2001).
DECISION
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that the relief requested shall be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the
domain name <directsellingassociation.com> be TRANSFERRED
forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 6, 2005
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