CafePress.com v. Michael Fragomele
Claim Number: FA0502000428848
PARTIES
Complainant
is CafePress.com (“Complainant”),
represented by Jill M. Pietrini, of Manatt, Phelps and Phillips, LLP, 11355 W. Olympic Blvd., Los Angeles, CA 90064. Respondent is Michael Fragomele (“Respondent”), represented by Steve S. Moutsatsos, of Weaver Simmons LLP, 233 Brady Street, Sudbury, ON P3B 4H5,
Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <canpress.com>,
registered with Domainpeople Inc.
("Domainpeople").
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
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/udrppolicy24oct99.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 electronically on February
22, 2005; the National Arbitration Forum received a hard copy of the Complaint,
together with Exhibits 1-3 and a declaration of Ms. Candice Carr (itself
containing a separate set of exhibits numbered 1-3), on February 22, 2005 , and
within the time limit allotted, submitted a slightly amended Complaint to
correct various minor deficiencies.
On
February 22, 2005, the Registrar, Domainpeople, confirmed by e-mail to the
National Arbitration Forum that the domain name <canpress.com> is registered with Domainpeople Inc. and that
the Respondent is the current registrant of the name. Domainpeople Inc. has verified that Respondent is bound by the Domainpeople
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with the Policy.
On
March 1, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of March 21,
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@canpress.com by e-mail.
A
timely Response was received and determined to be complete on March 21, 2005.
Subsequently
and pursuant to Supplemental Rule 7, Complainant timely filed an additional
submission on March 28, 2005.
Thereafter
and also pursuant to Supplemental Rule 7, Respondent timely filed an additional
submission on April 5, 2005.
On March 29, 2005, pursuant to Complainant’s request to
have the dispute decided by a single‑member
Panel, the Forum appointed Mr. Peter L.
Michaelson, Esq. as the Panelist and
set a deadline of April 12, 2005 to receive the decision from the Panel. Due to exceptional circumstances experienced
by the Panel, the Forum, at the Panel's request, extended this deadline to
April 29, 2005.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Confusing similarity/identicality
Complainant
contends that the disputed domain name is confusingly similar to Complainant's
"CAFEPRESS.COM" marks. In
that regard, Complainant points to various factors which, associated with a likelihood
of confusion test, collectively support its view. Specifically, and in context of the present dispute, the
Complainant believes that its marks are relatively strong; the Complainant and
Respondent offer identical services; the disputed domain name and the marks
differ by only a few letters but are otherwise the same; both parties use
identical marketing channels in selling their respective services; the end
customers of both the Complainant's and Respondent's services are generally not
sophisticated purchasers; and while the Respondent may not have intended to
deceive the purchasing public by choosing the disputed domain name,
nevertheless the Respondent was aware of the Complainant's mark when the former
choose and adopted the disputed domain name.
Consequently,
Complainant believes
that it has satisfied the requirements of paragraph 4(a)(i) of the Policy
with respect to the disputed domain name.
2. Rights
and legitimate interests
Complainant
contends that Respondent has no rights or legitimate interests in the disputed
domain name.
Complainant predicates its view on the
following reasons:
(a) Complainant never provided its authorization, license or
consent to Respondent to permit the latter to use the disputed domain name for
the same services offered by Complainant.
(b) Respondent has not made any
legitimate use of the disputed domain name in connection with a bona fide
offering of goods and services. In that
regard, Complainant notes that Respondent does not own a trademark registration
for the term "CANPRESS.COM" or "CANPRESS" nor has he made
any bona fide offering of goods or services under the name or term, prior to
the Complainant's use of its marks.
Further, Complainant alleges that Respondent was actually and fully
aware of Complainant's "CAFEPRESS.COM" marks when Respondent adopted
the disputed domain name and thus, its subsequent use of that name does not
qualify as being "bona fide."
(c)
Respondent is not commonly known by the disputed domain name. By virtue of being a "shopkeeper,"
under a contractual agreement with Complainant, Respondent is not authorized to
use a mark that is confusingly similar to the Complainant's
"CAFEPRESS.COM" marks but did so nevertheless.
(d)
Respondent is not making a legitimate noncommercial or fair use of the Domain
Name, without intent for commercial gain.
Here, Complainant alleges that Respondent financially gains by
misleadingly diverting consumers, through use of the disputed domain name which
differs by two letters from Complainant's domain name, away from Complainant's
web site and to Respondent's competitive site instead.
3. Bad
faith use and registration
Complainant
contends that Respondent has registered and is using the disputed domain name
in bad faith, hence in violation of paragraph 4(a)(iii) of the Policy.
In that regard, Complainant specifically
alleges Respondent's bad faith is evidenced by the following:
(a)
Respondent has had an account with CafePress.com since April 22, 2003;
(b)
with full knowledge of Complainant’s rights in its domain name <cafepress.com>, Respondent,
during July 2003, registered the disputed name <canpress.com>, which differs by only two letters from
Complainant’s name; and
(c)
not only did Respondent register a similar domain name, he also copied
Complainant’s services, as well as the layout and specific portions from
Complainant’s web site thus violating Complainant's copyrights, in order to
attract internet users to Respondent’s site for his commercial gain. Though Complainant raises questions of
copyright infringement, the Panel is simply incompetent to assess any such
issue -- as doing so lies outside of its jurisdiction under the Policy; thus,
it dispenses with any further discussion of the issue.
Based
on these contentions, Complainant asserts that one could reasonably infer that
Respondent's intention in becoming a “shopkeeper” of Complainant was solely to
learn of Complainant's services offered under its CAFEPRESS.COM marks, and then
to register a very similar domain name and substantially copy Complainant's web
site all for Respondent's own commercial gain.
As evidence of the Respondent's intent, the Complainant opines that the
dates of the Respondent's actions relative to the Complainant's activities are
not a coincidence and inescapably lead one to conclude that Respondent's
actions constitute bad faith.
B. Respondent
1. Confusing similarity/identicality
Not
surprisingly, Respondent contends that the disputed domain name, <canpress.com>, is neither
identical nor confusingly similar to the Complainant's domain name, <cafepress.com>, or more
generally speaking the CAFEPRESS.COM Marks.
Specifically,
Respondent while acknowledging that the name and marks share a common formative
term "PRESS," that term simply reflects the business of both
Complainant and Respondent, i.e., pressing digital images onto various
merchandise. Respondent then points to
the remaining portion of its name "CAN" which is meant to connote the
Canadian nature of its services, which sharply contrasts with the term
"CAFE" used by Complainant in its marks and name. As such, when the disputed name is viewed in
its entirety, that name suggests a "Canadian photo pressing service that
can print digital photos onto virtually any merchandise."
Given
the differences between the disputed domain name and Complainant's domain name
and its CAFEPRESS.COM marks, Respondent asserts that the former is not
identical to the latter two.
As to
confusing similarity, Respondent asserts that, for various reasons, the
disputed domain name is not confusingly similar, under either a source
confusion or initial interest confusion analysis, to Complainant's domain name
and its CAFEPRESS.COM marks. The Panel,
in light of its conclusions below and in the interest of brevity, sees no
reason to specifically dwell on any of these reasons.
2. Rights and legitimate interests
Respondent
contends that, under paragraph 4(a)(ii) of the Policy, he has legitimate rights
and interests in the disputed domain name and thus rebuts Complainant's
assertions to the contrary.
First, Respondent states that his use of
the disputed domain name in connection with a bona fide offering of goods or
services predates any notice from Complainant of the present dispute.
Second, Respondent contends that his
business is commonly known in and around the town of Sudbury, Ontario (where
Respondent is based) by the name "CANpress".
Lastly, Respondent contends that he is
making legitimate and fair use of the disputed domain name without any intent
to misleadingly divert customers from Complainant's web site or to tarnish
Complainant's CAFEPRESS.COM marks. In
that regard, Respondent argues that Complainant has simply not provided any
evidence to the contrary.
3.
Bad faith use and
registration
For
several reasons, Respondent contends that his behavior does not reflect bad
faith registration and use under paragraph 4(b) of the Policy.
Specifically, Respondent alleges
there is no evidence of record that shows:
(a) Respondent registered the
disputed name primarily for the purpose of selling or otherwise transferring
that name to Complainant.
(b) Respondent registered the disputed name in order
to prevent Complainant from reflecting its mark in its domain name -- which in
fact the Complainant has already done.
(c) Respondent's use of the disputed
name has disrupted or otherwise interfered with Complainant's business. In that regard and as discussed above,
Respondent notes that Complainant has failed to provide evidence of any
consumer confusion, whether likely or actual, resulting from Respondent's use
of the disputed name or of any disruption to Complainant's business as a result
of such use, let alone that Respondent's primary purpose in registering the
name was to cause any such disruption.
Further, Respondent alleges that
given minimal, if any, source or initial interest confusion flowing from his
use of the disputed domain name, the Complainant has failed to prove that
Respondent intentionally attempted to attract, for commercial gain, Internet
users to its website by creating a likelihood of confusion with Complainant's
CAFEPRESS Marks as to the source, sponsorship, affiliation, or endorsement of
Respondent's web site or service.
C. Additional Submissions
Inasmuch
as both Complainant and Respondent timely filed its respective additional
submission, the Panel has appropriately considered both of these submissions.
With
respect to the issue of confusing similarity, each of these submissions
continues the parties', rather strident, debate over whether the disputed
domain name is confusingly similar to the Complainant's CAFEPRESS.COM marks
and, if so, the affect thereof, and more specifically the applicability of the
various tests for determining whether such confusion is likely and the analysis
of the appurtenant factors underlying those tests. As all these issues are moot in light of the Panel's conclusion
below, the Panel sees no benefit in summarizing these specific arguments, let
alone further considering them.
Further,
as to legitimate rights and interests, Complainant alleges that:
(a)
Respondent has not provided any evidence to support his contention that his
business is known by the term "CANPRESS.COM" and specifically that
Respondent, contrary to his claims, has since September 2003 offered any
services on a bona fide basis through a retail outlet in Sudbury, Ontario;
and
(b)
Respondent, while claiming to be making legitimate and fair use of the disputed
domain name, has not provided requisite evidence to support it.
Regarding
bad faith, Complainant points to the following chronology as illustrating that
Respondent adopted the disputed domain name only after he became a
"shopkeeper" of Complainant's business, CAFEPRESS, and thus learned
Complainant's business model, thus evincing bad faith:
a) April 2003 --
Respondent first became a shopkeeper of CAFEPRESS (and continues to this day to
be one);
b) July 2003 --
Respondent registered the disputed name (3 months after being a shopkeeper of
CAFEPRESS); and
c) September 2003 --
Respondent, some five months after he became a shopkeeper of CAFEPRESS,
supposedly began operating a CANPRESS retail outlet in Sudbury, Ontario,
Canada, in direct competition with CAFEPRESS.
Respondent,
for its part, states, with reference to the declarations of Mr. Michael
Fragomele (dated April 4, 2005 and submitted with the Respondent's Additional
Submission) and Mr. Brad Tompkins who is Complainant's private investigator in
Sudbury, Ontario (his declaration was submitted with Complainant's Additional
Submission):
a) CANpress has been operating in Sudbury, Ontario since
September of 2003;
b) CANpress had its grand opening on December 10, 2003. It was then located in the City Centre, next
to "A Buck or Two," in downtown Sudbury, Ontario;
c) The present dispute first came to the attention of
Complainant in November of 2004 with Respondent then having first received
notice of it in December of 2004, more than one year after CANpress began
operating in Sudbury, Ontario; and
d) Respondent was using its domain name in connection with a
bona fide offering of goods and
services long before he received any notice of the present dispute.
Further, the Respondent states that, for the following
reasons, it has been commonly known in and around Sudbury, Ontario by the term
"CANpress":
a) Respondent has been operating a retail outlet in Sudbury,
Ontario since September, 2003;
b) Respondent has advertised itself in the local media
(referencing Tompkins declaration);
c) Respondent is listed in the local telephone directories
(referencing Tompkins declaration);
d) Respondent held its grand opening in Sudbury’s Tom Davies
Square in Dec. 2003 (referencing Tompkins Declaration); and
e) the “Stepping Stone Program” (a program that supports
young entrepreneurs in and around the City of Greater Sudbury) featured
CANpress in one of its on-line articles (here too referencing the Tompkins
declaration).
Lastly, as to bad faith, the Respondent counters the
Complainant's allegations by again pointing to a lack of supporting evidence as
well as asserting that the disputed domain name is not confusingly similar to
the disputed domain name so all of Complainant's allegations predicated on a
finding of such similarity must necessarily fail.
FINDINGS
A copy of the
WhoIs registration record for the disputed domain name appears in
Exhibit 1 to the Complaint. This
record indicates that Respondent registered <canpress.com> on July 16, 2003.
A. Complainants' CAFEPRESS Marks
Complainant currently owns three federal
trademark registrations for the term "CAFEPRESS.COM," and has
provided, in Exhibit 1 to the Carr Declaration, a copy of the registration
certificate of each mark. The pertinent
details are as follows:
1. CAFEPRESS.COM
(stylized)
registration:
2,824,950; registered: March 23, 2004
This mark was registered for use in
connection with "specialty
merchandising services, namely, promoting the goods and services of others
through the distribution of customized advertising materials, namely,
customized t-shirts, sweatshirts, baby doll t‑shirts, baseball caps,
coffee mugs, mouse pads, totebags, bumper stickers and posters; computerized
online retail stores featuring customized t-shirts, sweatshirts, baby doll‑t‑shirts,
baseball caps, coffee mugs, mouse pads, totebags, bumper stickers and posters;
management services, namely, online business development services, namely,
providing start-up support for businesses of others; business development
services, namely, retail and storefront development services; business
management services; order fulfillment services; customer services in the field
of specialty merchandising and product manufacturing, supplying and order
fulfillment", all in international class 35; and "manufacture of
customized advertising materials and specialty merchandise for others, namely,
customized t‑shirts, sweatshirts, baby doll t‑shirts, baseball
caps, coffee mugs, mouse pads, totebags, bumper stickers and posters", all
in international class 40. This mark
claims, for both classes, a first use and first use in commerce date of June 1,
2002.
2. CAFEPRESS.COM
(block letters)
registration:
2,571,049; registered: May 21, 2002
This mark was registered for use in
connection with "specialty
merchandising services, namely, promoting the goods and services of others
through the distribution of customized advertising materials, namely, customized
t-shirts, sweatshirts, baby doll t‑shirts, baseball caps, coffee mugs,
mouse pads, totebags, bumper stickers and posters; and computerized on-line
retail stores featuring customized t-shirts, sweatshirts, baby doll t‑shirts,
baseball caps, coffee mugs, mousepads, totebags, bumper stickers and
posters", all in international class 35. This mark claims a first use date of June 30, 1997 and a first
use in commerce date of July 31, 1997.
3. cafepress.com
(stylized and with logo)
registration:
2,569,567; registered: May 14, 2002
This mark was registered for use in
connection with "specialty
merchandising services, namely, promoting the goods and services of others
through the distribution of customized advertising materials, namely,
customized t-shirts, sweatshirts, baby doll t‑shirts, baseball caps,
coffee mugs, mouse pads, totebags, bumper stickers and posters; and
computerized on-line retail stores featuring customized t-shirts, sweatshirts,
baby doll t‑shirts, baseball caps, coffee mugs, mousepads, totebags,
bumper stickers and posters", all in international class 35. This mark claims a first use date of June
30, 1997 and a first use in commerce date of July 31, 1997.
In addition to these marks, the
Complainant also owns domain name registrations for <cafepress.com> and <cafeshops.com> and web sites
accessible through those names.
B. Complainant
Complainant
is a privately owned company based in San Leandro, California. Complainant permits individuals,
organizations and businesses to create, buy and sell customized merchandise
online using its print-on-demand and e-commerce services. Currently, the Complainant has nearly 2
million members who have created more than 6 million original designs on more
than 70 customizable products ranging from apparel, home and office accessories
to music and data CDs and books, to prints, posters and cards.
Through Complainant's business, a
so-called "shopkeeper" (or member) can set up a shop on Complainant's
<cafepress.com> web site. That shopkeeper can then select the merchandise available to him
through the Complainant's service and customize it, e.g., imprint the
shopkeeper’s favorite photograph or design on a t-shirt. The shopkeeper can then sell that t-shirt
through his shop on the <cafepress.com>
site. The Complainant prints the
merchandise, as customized or designed by the shopkeeper, and ships the product
to the shopkeeper or his designated customer.
Through independently run shops, as
well as syndicated and corporate stores, the Complainant offers various aspects
of doing business online for its members, including storefront development,
site hosting, order management, fulfillment, secure payment processing, and
quality customer service, thereby enabling anyone to open a free shop with no
upfront costs and no inventory to maintain, thus allowing those individuals to
easily expand their on-line presence.
Complainant
has 17 federally registered copyrights on various aspects of its website
content (copies of the copyright registration certificates appear in Exhibit 2
to the Carr declaration) including: its Intellectual Property Rights Policy,
Shopkeeper FAQs (Frequently Asked Questions), Terms of Service, and overall
look and feel of its CafePress.com web site.
C. Respondent
Respondent,
doing business as CanPress.com, offers customized digital photo
merchandise at a retail store located in Sudbury, Ontario, Canada as well as
online at <canpress.com>. As noted above, Respondent registered the
disputed domain name on July 16, 2003.
The Respondent began operating its
retail store in September 2003 and the online component of its business began
in March of 2004. Both have been
operating ever since.
Respondent
is a current user of the CafePress.com service and has been a CafePress.com
"shopkeeper" since April 22, 2003.
Respondent has three CafePress.com shops: the “buggutz” shop, the “TAT2”
shop; and the “test12341234” shop.
Respondent opened his first CafePress.com shop on April 22, 2003 and
opened its last shop, the "test12341234” shop, on August 8, 2003. In the “test12341234” shop, Respondent
created merchandise with the text “CanPress Coming Soon ! October, 2003.”
D.
General dispute between the parties
The
parties are apparently involved in a broad business dispute, of which the
present domain name dispute is but one component, flowing from Respondent's
status as one of Complainant's "shopkeepers" and Respondent's
subsequent opening, under the presently disputed domain name, of its own
business directly competitive to that of the Complainant. While the Panel will not opine on this broad
dispute, nevertheless the Complainant's general allegations, as follows, place
the present domain name dispute in its proper context.
First,
Complainant states that Respondent presently offers the exact same services as
Complainant, including allowing his customers to upload content and create
customized merchandise that they can then sell in shops or purchase themselves.
Complainant
generally alleges that the Respondent copied Complainant’s business model and web
site content, and infringed on the Complainant's trademarks and copyrights all
in an effort to unfairly compete with Complainant's CafePress.com service by
passing off his business as affiliated with, or connected to, CafePress.com.
In
that regard, Complainant alleges that Respondent used Complainant's
CafePress.com service to learn intimate details of how CafePress.com does
business and the services that it offers and then registered a confusingly
similar domain name in order to lure potential CafePress.com customers to his
site and unfairly compete with CafePress.com.
Further,
Complainant also alleges that the Respondent copied, almost word-for-word,
Complainant's copyrighted CafePress.com Intellectual Property Rights Policy,
Terms of Service, and Shopkeeper FAQs sections of its site. In that regard, Respondent’s web site takes
his customer through virtually the same process, with the same links, and many
of the same features as Complainant’s websites. Further, certain pages of Respondent’s web site are nearly
identical, or at least substantially similar, to the corresponding pages on
Complainant’s websites.
Complainant
also alleges that, apart from Respondent’s willful trademark infringement and
dilution, copyright infringement, bad faith registration of the disputed domain
name and unfair business practices, Respondent has also violated Complainant’s
Terms of Service, Shopkeeper Agreement and Privacy Policy. Specifically, in order to become a
CafePress.com shopkeeper, Respondent had to agree to Complainant’s Terms of
Service, Shopkeeper Agreement and Privacy Policy. Anyone who does not agree to be bound by these policies cannot
become a CafePress.com shopkeeper.
Complainant’s Terms of Service includes a provision which grants a
shopkeeper a limited, revocable license to access Complainant’s websites and
Complainant’s service for its intended purpose. The Terms of Service expressly provide that this license does not
include the right to collect or use information contained on Complainant’s
websites for purposes prohibited by CafePress.com, create derivative works
based upon the content of Complainant’s websites, or download or copy
Complainant’s websites.
With
reference to Respondent's web site, the Complainant alleges that Respondent’s
Intellectual Property Rights page is a direct reproduction of Complainant’s
Intellectual Property Rights Policy page.
Likewise, Respondent’s Storeowner FAQs are substantially similar to
Complainant’s Shopkeeper FAQs. Finally,
Respondent’s User Agreement contains sections that have been taken almost word
for word from Complainant’s Terms of Service page.
E. Knowledge of the present dispute
Complainant
first learned of the Respondent's allegedly offending activities during
November 2004. Consequently and on
December 22, 2004, Complainant's counsel sent a cease and desist letter (a copy
of which appears in Exhibit 2 to the Complaint) to Respondent alleging
trademark and copyright infringement and demanding, among other things,
transfer of the disputed domain name. By letter dated January 7, 2005 (a copy of which appears in
Exhibit 3 to the Complaint), Respondent replied to counsel and refused all of
counsel's demands.
DISCUSSION
A. Jurisdiction
As
a general matter, the pleadings are rife with allegations of general trademark
infringement, copyright infringement, unfair competition and other allegations
all outside the purview of the Policy.
An ICANN panel is solely entrusted under
the Policy with determining questions of cybersquatting which is a highly
focused and specific form of trademark infringement. Issues such as trademark infringement lie completely outside the
narrow confines of cybersquatting and hence the very limited jurisdiction of
any ICANN panel. Accordingly, the Panel
leaves all such issues for resolution by appropriate judicial tribunals. See, e.g., this Panel's recent decision in Lockheed Martin Corporation v. The Skunkworx Custom Cycle WIPO Case No. D2004‑0824 (January
18, 2005).
Lately,
this Panel is seeing a very disturbing trend, namely, an increasing number of
ICANN complaints which at their core are nothing more than broad business
disputes that happen to be colored by allegations of cybersquatting, where on
close examination the latter are often found quite wanting. Such complaints have absolutely no basis
being before an ICANN panel.
Nevertheless, as this Panel surmises, they are intentionally filed,
simply as a "strong arm" tactic to exert sufficient leverage on a
respondent, through a modality that is typically much less expensive and much
more time-efficient than conventional litigation, in order to force that
respondent to desist from whatever activity the complainant happens to find
offensive.
This
Panel, like others, being highly cognizant and mindful of its limited role,
competence and jurisdiction, clearly admonishes all would-be complainants
against filing such complaints as those complaints and the ensuing ICANN
proceedings involve nothing more than wasted time, effort and expense for all
concerned.
The
remedies which any ICANN panel can award under the Policy are sharply limited,
under Paragraph 4(i) of the Policy, to transfer or cancellation of the
registration of the disputed domain name(s) and unfortunately and regrettably
do not extend to any award of sanctions, let alone sufficient to deter such
intentional errant and misguided complaints.
As such, this Panel must and does limit its action to only that which it
can legitimately do: categorically refusing Complainant's implicit invitation
to opine on any such issue over which it has absolutely no jurisdiction. Consequently, the Panel will limit its
consideration to just those allegations and defenses that directly concern the
three elements of cybersquatting as specifically defined under the Policy --
thus considerably simplifying its efforts and this decision.
B. Policy
elements
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 Panel finds that Respondent has
rights and legitimate interests in the disputed domain name and specifically
under paragraph 4(c)(i) of the Policy.
Paragraph 4(c)(i) states that a
respondent has rights and legitimate interests in a domain name that
respondent, before it receives any notice of the dispute, has made
“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.”
The record unequivocally reflects that
Respondent registered the disputed domain name on July 16, 2003 and started
using that name in connection with his offering of on-line printing services in
March 2004 -- some nine months before Complainant's counsel, through its letter
of December 22, 2004, notified Respondent of the present dispute.
Respondent obviously knew of
Complainant's business as early as April 22, 2003 when it became a
"shopkeeper" and began engaging in business with Complainant. Obviously, Respondent started learning about
Complainant's business and its business methodology on that date, if not
earlier. Yet, Respondent's acts alone
are insufficient to impute any objection from Complainant onto Respondent so as
to constitute adequate notice under paragraph 4(c)(i) of the Policy. In that regard, paragraph 4(c)(i) states, in
pertinent part, that a respondent has rights and legitimate interests in a
domain name if "before any notice to
you of the dispute", the respondent used the domain name "in
connection with a bona fide offering of goods or services" [emphasis
added].
The Panel interprets the wording of
"any notice to you" as requiring actual notice from a complainant,
not notice by implication or inference.
Imputing requisite notice on a respondent, simply by virtue of its own
actions and prior to the receipt of actual notice from a complainant, would
require the respondent to speculate about the complainant's perceptions and
intentions, possibly erroneously so and hence to the ultimate detriment of the
respondent. A complainant has an
affirmative duty not only to object to a respondent's conduct but equally
importantly to actually notify the respondent of that objection. It is only when the respondent is placed on
actual notice that the dispute, for purposes of paragraph 4(c)(i) of the
Policy, can be said to begin. While
such notice need not be in writing -- and paragraph 4(c)(i) is devoid of any
such written requirement, due process requirements dictate that the
complainant's objections must be adequately communicated to the respondent both
in an appropriate manner and with sufficient content to properly place the
respondent on notice of its objectionable conduct.
Complainant simply supplied no supporting
evidence, let alone persuasive, that it provided actual notice of the present
dispute to Respondent at any time prior to March 2004 when Respondent first
started using the domain name in connection with its on-line commercial
offerings. Further, the Panel, strictly
in light of the present record, is also not persuaded that those offerings were
not bona fide.
Therefore, Respondent has met its burden
under paragraph 4(c)(i) of the Policy. Accordingly, the Respondent has
sufficiently demonstrated that it has rights and legitimate interests in the
disputed domain name, and, as such, has met the requirements of paragraph 4(c)
of the Policy.
In light of the Panel’s finding that the
Respondent has rights and legitimate interests in the disputed domain name, all
issues as to whether: (a) under paragraph 4(a)(i) of the Policy, the disputed
domain name is confusingly similar or identical to the Complainant's CAFEPRESS
Marks; and (b) under paragraph 4(a)(iii) of the Policy, the Respondent's
actions amounted to bad faith use and registration of the name are now
moot. Thus, the Panel declines to
consider these issues any further.
DECISION
Consequently and in accordance with
paragraphs 4(i) of the Policy and 15 of the Rules, the relief sought by
Complainant is hereby DENIED.
Peter L. Michaelson, Esq., Panelist
Dated: April 27, 2005