National Arbitration Forum

 

DECISION

 

Ken Greer v. Justin Samuel

Claim Number: FA0604000672375

 

PARTIES

Complainant is Ken Greer (“Complainant”), 11281 Magdalena Road, Los Altos Hills, CA 94024, proceeding pro se.  Respondent is Justin Samuel (“Respondent”), 3938 East Grant Road, #130, Tucson, AZ 85712 represented by Michael Ehline, of the Law Offices of Michael P. Ehline, P.C., 11801 W. Washington Blvd., Los Angeles, CA 90066.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <vegconnect.com> (the “Domain Name”), registered with Wild West Domains, Inc. (the “Registrar”).

 

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.

 

David H. Bernstein as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 6, 2006; the Forum received a hard copy of the Complaint on April 10, 2006.

 

On April 7, 2006, the Registrar confirmed by e-mail to the Forum that the Domain Name is registered with the Registrar and that the Respondent is the current registrant of the Domain Name.  The Registrar has verified that Respondent is bound by the Registrar’s 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 April 12, 2006, the Forum requested certain amendments to the Complaint, to bring it into compliance with the Policy.  On April 13, 2006, the Complainant submitted an Amended Complaint.  On April 14, 2006, the Forum issued a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 4, 2006 by which Respondent could file a Response to the Complaint.  The Forum transmitted the Commencement Notification to the 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@vegconnect.com by e-mail.

 

A timely Response was received and determined to be complete on May 2, 2006.

 

On May 9, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David H. Bernstein as Panelist.  Pursuant to Paragraph 10(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Panel set May 30, 2006 as the targeted date for decision.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Undisputed Facts

 

The relevant dates in this matter are undisputed.  Complainant registered the domain name veggieconnection.com on October 11, 2003, and immediately posted an “Under Construction” notice at the website to which the domain name resolved.

 

Respondent registered the Domain Name on December 19, 2003.

 

On February 4, 2004, Complainant launched its veggieconnection.com website as a dating and friendship site for vegetarians.

 

Respondent posed an “Under Construction” notice at the website to which the Domain Name resolved on June 14, 2004, and launched a competing dating and friendship site for vegetarians on March 17, 2005.

 

B. Complainant’s Contentions

 

Complainant argues that the Domain Name is confusingly similar to Complainant’s mark, noting that combinations of the abbreviations for “vegetarian” and “connection” comprise both the Domain Name and Complainant’s mark.  Complainant notes that customers have misstated the name of Complainant’s domain as “veggieconnect.”  Complainant claims that “[f]ederal registration of <veggieconnection.com> by Complainant is in process,” and that it owns the “trademark <veggieconnection.com> . . . per first use.” 

 

Complainant alleges that Respondent has no rights or legitimate interests in the Domain Name.  He argues that Respondent had not used the Domain Name prior to Complainant’s registration or use of <veggieconnection.com>; Respondent acquired the Domain Name for identical services as those offered by Complainant subsequent to Complainant’s acquisition of his domain name; Respondent failed to respond to Complainant’s email attempting to settle the matter; and Respondent’s use of the Domain Name for the same service is an attempt to divert Complainant’s customers through creating a likelihood of confusion with Complainant’s mark. 

 

Complainant further alleges that Respondent registered and used the Domain Name in bad faith by intentionally attempting to divert customers from Complainant’s website by creating a likelihood of confusion with Complainant’s mark.  In support of this allegation, Complainant points to the fact that his registration preceded Respondent’s and that Complainant’s site was in operation as a site for vegetarian dating and friendship more than a year prior to the launch of Respondent’s competing website.  Complainant notes that both sites offer the same types of services. 

 

C. Respondent’s Contentions

 

Respondent states that the Domain Name is not confusingly similar to Complainant’s mark.  He argues that Complainant does not offer any proof that Complainant’s customers confuse the names or navigate to the incorrect website.  Respondent points out that Complainant has registered another domain name (veggiedining.com) which differs from a third party’s previously existing domain name (vegdining.com) for the same services only by abbreviating “veg” for “veggie.”

 

Respondent argues that he has rights and legitimate interests in the Domain Name based on his use of the Domain Name for over a year prior to notification of the dispute.  Respondent denies any intent to divert Complainant’s customers or tarnish Complainant’s mark. 

 

Respondent argues that Complainant provides no evidence of bad faith registration or use.  Specifically, Respondent claims that registration of the Domain Name was a continuation of Respondent’s pattern of purchasing and using domains ending in “connect.com” for personals sites, a practice Respondent claims that he initiated even prior to Complainant’s registration of his domain name, though Respondent has refused to provide the Panel with information about past registrations (other than <punkconnect.com>) sufficient to allow the Panel to confirm the veracity of these assertions.[1]   

 

FINDINGS

The Panel finds that Complainant has failed to show that Respondent registered the Domain Name in bad faith.  For that reason alone, the Complaint must be denied. 

 

It also appears that Complainant may lack trademark rights in the asserted trademark, veggieconnection.com, and that Complainant may have failed to show that Respondent has no legitimate rights or interests in the Domain Name.  Because the lack of bad faith registration is itself determinative, the Panel does not definitively rule on those factors. 

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

Paragraph 4(a) of the Policy requires that 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.

 

Identical and/or Confusingly Similar

 

To meet his burden of proof under this first factor, Complainant must show both that he has trademark rights in the mark and that the Domain Name is confusingly similar to the mark.  Complainant may establish the existence of trademark rights either by proof of an appropriate registration or through evidence of common law rights in the mark. 

 

Complainant does not allege that he owns a federal registration in the mark.  Complainant does, however, assert that a federal trademark registration is “in process,” implying that a registration will issue shortly and that this fact has some significance for purposes of this proceeding.  That assertion is not only legally insignificant (on the facts of this case), but also appears to be factually incorrect.

 

Ownership of a pending application for registration of a trademark is generally not sufficient to establish trademark rights.  At least with respect to federal applications in the United States, until the application has been examined, has been published in the Official Gazette, and has been registered, the mark does not yet enjoy the presumptions of validity and ownership that flow from registration.  Thus, ownership of a pending application is not itself sufficient to establish trademark rights; rather, the complainant would have to prove common law trademark rights by submitting evidence sufficient to show that the mark has been used in commerce and is either inherently distinctive or has acquired secondary meaning.  See generally World Intellectual Property Organization, Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Decision Overview”), § 1.7 (available at http://arbiter.wipo.int/domains/search/overview/index.html?lang=eng#17).[2]

 

An application might, though, provide some evidence that is at least relevant to the existence of trademark rights.  For example, the application file wrapper might include a specimen of use submitted to the Patent and Trademark Office (“PTO”) or relevant statements as to past use that are sworn under penalty of perjury, and the application may have gone through office actions which might shed light on the PTO’s initial conclusion as to whether the mark is inherently distinctive or has acquired distinctiveness, and whether there are other registered marks or prior applications that might be confusingly similar to the mark at issue.

 

Here, though, no such evidence is available.  Notwithstanding Complainant’s statement that a registration is “in process,” the Panel was unable to find any evidence whatsoever of such an application on the PTO website.[3]  (The only application or registration that the Panel identified as being owned by Respondent was Registration No. 2,834,659, for DANCEPARTNER.COM.)  Accordingly, to establish ownership of a common law trademark, Complainant must prove facts sufficient to show that its mark has acquired secondary meaning.  On the record of this case, it appears that Complainant may not have carried that burden.  

 

The phrase “veggie connection” appears to be descriptive of Complainant’s services – the provision of a website community that allows vegetarians to connect with each other.  See Kent House Ltd. v. RN, WebReg,  FA 244527 (Nat. Arb. Forum May 4, 2004).  If that is correct, to establish trademark rights, Complainant would have to allege facts proving that the mark has acquired secondary meaning.  See Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001).  Complainant has not done so.  All it alleges is that the site was launched on February 4, 2004, and that it has been used by thousands of customers.  Complainant has not submitted any evidence at all that consumers recognize the mark as a designation of source, that the mark has been the subject of unsolicited media coverage, or that Complainant has expended significant resources advertising its services under the mark.  Given the paucity of evidence of secondary meaning, Complainant appears to have failed to establish common law rights in the mark. 

 

Despite these initial impressions, the Panel declines to specifically find an absence to trademark rights for three reasons.  First, because of the Panel’s ruling on bad faith (below), and because Complainant must prevail on all three factors in order to win transfer of the Domain Name, it is not necessary for the Panel to decide this issue.  Second, because the issue is a close one and because the parties did not specifically address this point in their submissions, if it were central to the Panel’s decision, the Panel would be inclined to invite the parties to submit supplemental submissions to address the legal and factual issues related to trademark rights.  Third, although this proceeding is intended to resolve only this dispute, the Panel would not want a gratuitous finding of no trademark rights to be cited against Complainant in any other proceedings.  Cf. Visual Gis Engineering S.L. v. Nitin Tripathi, D2006‑0079 at n.1 (WIPO Mar. 23, 2006) (in the event of other proceedings, decisions in UDRP cases should be of no effect since the UDRP decision is based on a limited factual record and is intended to resolve only the specific dispute; moreover, other proceedings likely would be conducted under different procedural rules and substantive laws).  Rather, if the existence of trademark rights is relevant in any other contexts, that important issue should be decided only after the parties have had a better opportunity to litigate the issue, including, if appropriate, through discovery, cross-examination, and credibility determinations.  See Magnum Piering, Inc. v. Mudjackers, D2000‑1525 (WIPO Jan. 29, 2001). 

 

Rights or Legitimate Interests

 

Paragraph 4(c) of the Policy provides three nonexhaustive examples of circumstances that can demonstrate that a respondent has rights or legitimate interests in a domain name:

 

(i) before any notice to [respondent] of the dispute, [respondent’s] 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; or

 

(ii) [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

(iii) [respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

In this case, Respondent asserts that it has rights in the Domain Name because it has used the Domain Name in connection with a bona fide offering of services, namely, use in connection with a website for friendship and dating for vegetarians, and that it began that use almost eleven months prior to being notified of the current dispute. 

 

Complainant does not dispute that Respondent has been using the Domain Name since March 17, 2005 in connection with a friendship site, and that the launch of this site predates by many months the initiation of this dispute.  Thus, for Complainant to prevail in proving that Respondent lacks a legitimate interest, Complainant must prove that Respondent’s use of the Domain Name for a vegetarian friendship site was not bona fide. 

 

Past cases that have explored the meaning of the words “bona fide,” as used in the Policy, have focused on at least two factors.  First, for a use to be bona fide, the domain name must have some relevance to the services provided at the website.  See Scholastic Inc. v. Master Games Int’l, D2001-1208 (WIPO Jan. 3, 2002) (scholastics.com a legitimate use where “scholastics” is a term of art in chess used to describe young chess players and site was used for information on chess tournaments for young players); see also EAuto, L.L.C. v. EAuto Parts, D2000-0096 (WIPO Apr. 9, 2000) (eautoparts.com legitimate for site that sells auto parts).  In the instant case, the Domain Name is relevant to the services offered, as the Domain Name is a common abbreviation of the phrase “vegetarian connection,” which describes the service of connecting vegetarians for friendship or dating. 

 

Second, for the use to be bona fide, the domain name must not infringe another’s trademark and the respondent should not otherwise be using the domain name unlawfully.  See Universal City Studios v. G.A.B. Enters., D2000-0416 (WIPO Nov. 4, 2000) (no bona fide use of “field of dreams” to sell baseball memorabilia when use would cause confusion with complainant’s FIELD OF DREAMS trademark).  This is a closer question in this case because it depends, in part, on whether Complainant owns trademark rights.  If, as suggested above, Complainant has no trademark rights, then there arguably is nothing for Respondent to have infringed.  However, Respondent did launch its friendship and dating site for vegetarians more than a year after Complainant launched its site.  If Complainant is found to have created trademark rights during that period, or if Respondent’s site otherwise unfairly competed against Complainant’s, it is possible that a court would find infringement or unfair competition that would undermine a claim of legitimacy.  These questions have not been briefed by the parties and raise factually complex issues that would be difficult for the Panel to resolve.

 

If the decision in this case turned on this issue, the Panel would render a decision based on a preponderance of the evidence submitted.  Because this issue is not determinative, though, as with the first factor, the Panel declines to make an unnecessary finding and thus declines to decide whether Respondent’s interest in the Domain Name is legitimate.

 

Registration and Use in Bad Faith

 

Paragraph 4(b) of the Policy provides that evidence of bad faith registration and use of the disputed domain may consist of, but is not limited to:

 

(i) circumstances indicating that [Respondent] registered or [Respondent] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name; or

 

(ii) [Respondent] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] engaged in a pattern of such conduct; or

 

(iii) [Respondent] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on [Respondent’s] website or location.

 

Although resolution of the first and second factors in this case raises close and difficult issues, resolution of the third factor is straightforward.  Based on the chronology as presented by Complainant, it is clear that Respondent could not have registered the Domain Name in bad faith.

 

Complainant admits that Respondent registered the Domain Name more than two months before Complainant’s first use of its <veggieconnection.com> domain name for its own friendship and dating site.  At the time Respondent registered the Domain Name in December 2003, Complainant had no trademark rights whatsoever – it was not using “VeggieConnection” as a trademark, had not registered or even applied to register that mark, and had not launched its veggieconnection.com website.

 

Thus, even if Complainant’s subsequent use of the <veggieconnection.com> domain name for its own vegetarian friendship and dating site were sufficient to establish trademark rights, any such rights could not possibly have arisen until at least February 4, 2004, the date Complainant launched its site.

 

It is axiomatic that registration of a domain name by a respondent before the creation of Complainant’s trademark rights is persuasive evidence of a lack of bad faith registration.  See Intermap Technologies Corp. v. Salvage Electronic Inc., FA 203130 (Nat. Arb. Forum Dec. 12, 2003).  If a respondent is not aware of complainant’s trademark (or of its creation of imminent trademark rights, such as might be the case if a sports team is considering a new name or two companies are candidates for merger), its registration of the domain name cannot possibly have been done with a bad faith intent to trade on or otherwise profit from complainant’s trademark.  Applying this principal to the uncontested facts of this case, it is clear that Respondent did not register the Domain Name in bad faith.

 

Because of this finding, the Panel need not consider whether Respondent’s use of the Domain Name for a competing friendship and dating site for vegetarians, launched more than a year after Complainant introduced its own similar site, constituted bad faith use.  Like the other factors noted above, that is a hotly disputed issue that is best left for resolution in other proceedings that are more suited to detailed fact finding and credibility determinations.

 

DECISION

Because the Complainant has failed to establish that Respondent registered the Domain Name in bad faith, the Panel concludes that the requested relief shall be DENIED.

 

 

 

 

 

David H. Bernstein, Panelist
Dated: May 31, 2006