Candid Color Systems, Inc. v. Vertical Axis,
Inc c/o Domain Administrator
Claim Number: FA0605000702669
PARTIES
Complainant is Candid Color Systems, Inc. (“Complainant”), represented by Charles L. McLawhorn III, of McAfee & Taft a Professional Corporation, Tenth Floor, Two Leadership Square, 211 North Robinson, Oklahoma City, OK 73102-7103, USA. Respondent is Vertical Axis, Inc c/o Domain Administrator (“Respondent”), represented by Ari Goldberger, of ESQwire.com P.C. The Domain Law Firm 35 Cameo Drive, Cherry Hill, NJ 08003, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is <partypic.com>,
which was first registered with Nameview, Inc.
(“Nameview”) on March 20, 2002.
PANEL
The
undersigned David H Tatham, 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the
“NAF”) electronically on May 8, 2006; the NAF received a hard copy of the
Complaint on May 10, 2006.
On May 12, 2006, Nameview confirmed by e-mail to the NAF that the <partypic.com> domain name is
registered with Nameview and that the Respondent is the current registrant of
the name. Nameview has verified that
Respondent is bound by the Nameview 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 May 16, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of June 5, 2006 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@partypic.com by e-mail.
A Response was received and determined to be complete on June 6, 2006.
On June 12, 2006, a timely Additional Submission was submitted by
Complainant and determined to be complete.
On June 19, 2006, an Additional Submission was submitted by Respondent
and determined by the NAF to be both timely and complete.
On June 14, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the NAF
appointed David H Tatham as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
FACTUAL BACKGROUND
Complainant
claims to be the recognized market leader in many aspects of event photography
services in the United States.
Complainant has a network of licensees throughout the United States. Since at least as early as 1970, Complainant
and its licensees have offered photography services in association with the
registered trademark PARTY PICS.
Complainant owns two federal trademark registrations for PARTY PICS
(Reg. No. 1,440,252 issued May 19, 1987; Reg. No. 2,899,150 issued November 2,
2004) printouts of which were attached to the Complaint.
PARTY PICS
event photography services are offered at nearly every college, university and
high school in the United States for parties, graduation ceremonies, sports and
other groups. Event photography
services in association with the PARTY PICS trademark are also provided at
races, sporting events, concerts, corporate parties and other special
events. Complainant operates a website
at the domain name <partypics.com> where consumers can view and order
photographs taken at these special events.
This website receives over 6 million visits each year.
Respondent
claims to be innocent of any intention to disrupt Complainant’s business,
saying that he simply registers descriptive domain names that have not been
renewed.
PARTIES’ CONTENTIONS
A. Complainant
Based on its extensive
use throughout the United States for over three decades, Complainant contends
that the PARTY PICS trademark is well-known and famous. For example, the retail sales
generated by users who sold photographs using its <partypics.com> website
have exceeded an average of $6.7 million annually over the past five
years. Complainant has expended a great deal of
effort and money to market and promote its photography services and photographs
in connection with the PARTY PICS trademark.
By providing high quality photographs in an exceptionally efficient and
courteous manner, Complainant has established an excellent reputation and
valuable goodwill in association with the PARTY PICS trademark. Throughout the history of its mark,
Complainant has vigorously enforced its rights in the PARTY PICS trademark and
has gone to great lengths to protect the integrity of the goodwill developed in
association with the its mark. Due to
the continuous, widespread and extensive advertising and use of the PARTY PICS
trademark, he has acquired a great deal of strength in commerce with
respect to photographs and photography services and is a famous and well-known
mark.
Respondent operates the website at the disputed domain name as a generic search engine and advertising forum for different links to websites providing photography services, and attached to the Complaint was a printout of the <partypic.com> website as proof thereof. Complainant further contends that Respondent’s unauthorized use of the disputed domain name seriously damages the immense goodwill that Complainant has developed in its famous and well-known trademark PARTY PICS.
a. Confusingly Similar
Under this heading, Complainant contends that the disputed domain name is confusingly similar to its trademark because it incorporates the dominant portion of Complainant’s federally registered and well-known PARTY PICS trademark and he referred to a number of UDRP Decisions to support the contention that, under basic principles of trademark law, a domain name that incorporates the dominant portion of a trademark is confusingly similar. Complainant contends that Respondent’s deletion of the “s” from the PARTY PICS trademark is insufficient to overcome a showing of confusing similarity. These Decisions included Sunglass Hut Corp. v. AAAnet, Inc., FA 94370 (Nat. Arb. Forum May 11, 2000) in which confusing similarity was found because respondent’s domain name differed from complainant’s mark by only a single letter.
b. Rights or Legitimate
Interest
Complainant contends that Respondent does not have any rights or legitimate interest in the disputed domain name. As evidenced by Respondent’s registrant information and website, Respondent is not commonly known by “PARTY PIC,” and the disputed domain name <partypic.com> has nothing to do with the generic search engine and advertising forum that Respondent is hosting at the website, and Complainant referred to a number of UDRP Decisions in support of this claim.
Conversely,
Complainant’s association with the PARTY PICS trademark is unquestionable based
on the number of sales and the length of continuous use.
Complainant
further contends that Respondent does not use the domain name for a bona
fide offering of goods because his website is a search engine and
advertising forum that provides links to a variety of websites. Merely
including a link to an unrelated site does not amount to use of the
domain name in connection with a bona fide offering of goods or services, and
Complainant contends that Respondent does not have
any legitimate interest in the disputed domain name, and that his use of it is
illegitimate.
c.
Bad Faith
Under
this heading, Complainant contends that Respondent’s apparent non-use of the
site for any legitimate offering of goods evidences its bad faith registration
and use of the disputed domain name. As noted above, Respondent does not use
the website for any legitimate purposes, but rather to lure consumers, who are seeking
a legitimate Complainant website, to its website in an attempt to profit off
its advertising links. Respondent has
no connection to Complainant nor has Complainant consented to Respondent’s use
of its mark in the domain name.
Registration
of a well-known trademark by a party with no connection to the owner of the
mark and no authorization and no legitimate purpose to utilize the mark reveals
bad faith. As established above, the PARTY PICS trademark is well-known
throughout the United States as a leading provider of event photography
services and photographs. Complainant suggests that this fame is probably what
Respondent was hoping to capitalize on when it registered the disputed domain
name. Furthermore, Respondent was
likely trying to receive at the site <partypics.com> Complainant
consumers who were attempting to view and/or order event photographs and who
mistakenly typed in the wrong domain name or misspelled “partypics”. In support of this, Complainant cites AltaVista Co. v. Saeid Yomtobian, D2000-0937
(WIPO Oct. 18, 2000) where it was held “[t]he
use of misspellings alone is sufficient to prove bad faith under paragraph
4(b)(iv) of the Policy because Respondent has used these names intentionally to
attract, for commercial gain, Internet users to his website by making a
likelihood of confusion with the Complainant’s mark.”
Furthermore, Respondent has registered a famous and well-known mark in
violation of its Registration Agreement.
In Paragraph 13 of the Nameview Domain Registration Agreement,
Respondent represents that the registration of the disputed domain name does
not infringe the legal rights of a third party. Respondent’s breach of this
warranty constitutes bad faith use and registration of the <partypic.com>
domain name. See Young Genius Software AB v. Vargas,
D2000-0591 (WIPO Aug. 10, 2000).
B. Respondent
Respondent,
on the other hand, states that it did not register the Disputed Domain with
Complainant’s trademark in mind and had no knowledge of Complainant, its
website, its business name, or trademark when it registered the name and in
support of these contentions, there was filed a Declaration from Mr. Chad Park,
Respondent’s Manager. In this he declares that –
Respondent
further contends that Complainant has failed to meet its burden of proof under
each of the three prongs of the Policy and the Complaint must therefore be
dismissed. He goes on to argue as follows –
A.
Identical or Confusingly Similar
Complainant’s
trademark is PARTY PICS. The disputed domain name is <partypic.com>
(singular). The trademark and the disputed domain name are clearly not
identical. Nor are they confusingly similar, because the “s” is sufficient to
distinguish the two considering the limited trademark protection afforded to
weak generic marks like the one at issue here.
Respondent
has rights and a legitimate interest in the disputed domain name because it
incorporates the descriptive term “Party Pic,” which is used by numerous third
parties to describe pictures (or photographs) taken at parties. The mere
registration of this common descriptive term, in and of itself, establishes
Respondent’s legitimate interest, provided Respondent registered without
Complainant’s trademark in mind. Respondent uses the disputed domain name for
photography products and services, bolstering its legitimate interest based on
this bona fide offering of goods and services.
B. Bad Faith
Respondent
did not register, and has not used, the Disputed Domain in bad faith. There is
no evidence that it registered the disputed domain name with the intent to sell
it to Complainant, to disrupt Complainant’s business, to prevent if from
registering a domain name reflecting its mark, or to confuse users. Respondent
simply registered an available generic word domain name after it expired and
became available for anyone to register. Moreover, it is impossible to prove
bad faith registration because Respondent had no knowledge of Complainant, its
business name or alleged mark when it registered the disputed Domain.
Respondent
contends that Complainant’s alleged trademark for PARTY PICS is descriptive. It
is formed from the words “party” and “pics” which is slang for photograph and
Respondent annexed an extract from a Dictionary website as proof thereof. The
term “Party Pic” obviously means photographs taken at a party. He also annexed
a copy of an advanced Google search for the term “Party Pic,” without including
“partypics.com” or “candid color” so as to eliminate references to Complainant,
which yielded 260,000 third party uses of this common descriptive term.
Respondent contends that Complainant uses the word Party Pic in a descriptive
sense, since it uses the mark in the field of photography of events and
parties.
Respondent referred to a number of UDRP Decisions as
evidence that
generic terms do not provide the holder with a right to an identical or
confusingly similar domain name.
The
two names are not confusingly similar. Merely descriptive marks, like
Complainant’s, are entitled to only a
very minimal degree of protection -- if any. Minor differences between a mark
and a domain name are sufficient to eliminate a finding of confusing
similarity, and Respondent referred to a number of UDRP Decisions in this
regard.
C.
Rights and Legitimate Interest
The
disputed domain name incorporates the common descriptive term “Party Pic,”
which means photographs taken at parties. This descriptive term is subject to
substantial third party use. As noted above, a Google search for this common
term yielded 260,000 third party web pages containing the term, clear evidence
that the mark is non-distinctive. Respondent registered the Disputed Domain
simply because it was descriptive, without any knowledge of Complainant or its
mark. On these facts alone the Panel should find that Respondent has a
legitimate interest, and dismiss the Complaint because such registration
establishes the Respondent’s legitimate interest and Respondent again referred
to numerous UDRP Decisions in support of this argument, in particular HP Hood LLC v. hood.com FA 313566 (Nat.
Arb. Forum Nov. 9, 2004) in which it was held that “[t]he principal that the mere ownership of a common word domain
should, in and of itself, establishes the owner’s rights and legitimate
interest has been recognized by several ICANN panels.” Referring to the “Second
Staff Report on Implementation Documents for the Uniform Dispute Resolution
Policy” (October 24, 1999), the Panel then explained that where
the domain name “comprise[s] no more
than a single, short, common descriptive term — the rights/interests inquiry is
more likely to favor the domain name owner.” ‘Party Pic’ appears on hundreds of
thousands of third party web pages wholly unrelated to Complainant, so
it is clear that Complainant does not have exclusive rights to the term.
Respondent’s
legitimate interest is bolstered by the fact that it uses the Disputed Domain
in connection with the bona fide provision of advertising services. Respondent
uses the Disputed Domain to post advertising links for photography services. As
noted in the hood.com case above “[w]here
the domain name incorporates a common word, it is beyond debate that the
posting of related advertising links constitute use of the domain name for the
bona fide offering of goods and services.”
The
fact that the Disputed Domain is composed solely of a descriptive term weighs
heavily against a finding of bad faith. Absent direct proof that a descriptive
term domain name was registered solely for the purpose of profiting from Complainant’s
trademark rights, there can be no finding of bad faith registration and use. See
hood.com, FA 313566 (citing Ultrafem,
Inc. v. Royal, FA 97682 (Nat. Arb.
Forum Aug. 2, 2001)). In Ultrafem, Inc., the 3-member panel, in
ruling in favor of the owner of the common term domain name <instead.com>
held that a bad faith showing would require the Complainant to prove that the
Respondent registered <instead.com> specifically to sell to the
Complainant, or that the value of "instead" as a domain derived exclusively
from the fame of its trademark. Neither has been proven in this case. In the
absence of an intent to capitalize on the Complainant’s trademark he cannot
assert an exclusive right over a domain name that is a common, generic term.
Here,
the undeniable fact is that “Party Pic” is a common descriptive term with
substantial third party use. “Party Pic” appears on over 260,000 third party
web pages unrelated to Complainant. Respondent registered the Disputed Domain
solely because it incorporates a descriptive term, and there is no evidence to
the contrary. Such registration and use of domain names does not constitute bad
faith under the Policy. Moreover, there is absolutely no evidence that
Respondent had any knowledge of Complainant, its business name, website or
trademark when it registered the Disputed Domain, and the evidence is that
Respondent had no such knowledge. Accordingly bad faith registration cannot be
established. As noted in hood.com above “proof of bad faith requires evidence that “a domain name was
registered with Complainant’s trademark in mind.” This evidence cannot be inferred, particularly when there
is “substantial third party use of the
term,” as is the case here as well as in a number of UDRP Decisions
which were cited. Respondent registered the Disputed Domain when it was deleted
and became available for anyone to register. Registering a deleted domain is a
factor weighing against a finding of bad faith. As noted by the hood.com
Panel, “if anything, the fact that a
disputed domain name was registered after being deleted favors Respondent,
because the deletion is a signal that the prior registrant has abandoned any
claim to it.” As noted in the
3-member panel decision in Corbis
Corporation v. Zest FA 98441 (Nat. Arb. Forum Sept. 12, 2001): The Panel
holds that a domain registrant who knows a domain name has been abandoned
should be more confident, not less so, that there is no competing trademark
claim relating to the domain name; a person in the position of Respondent
should be more confident than a registrant who selects a previously
unregistered name.
The
facts of this case are that Respondent registered <partypic.com>
because it incorporates a common descriptive term. This does not constitute bad
faith. Accordingly, for all the above reasons, Complainant has failed to meet
its burden of proving bad faith registration and use and, the Complaint must,
therefore, be dismissed.
C. Complainant’s Additional
Submission
Pursuant to NAF’s Supplemental Rule 7, Complainant submitted an Additional Submission in which it repeated many of the arguments in the Complaint, and filed a supporting Declaration from Michelle Chilton, a Vice President of Complainant in which she confirmed certain of the facts about Complainant’s business.
General
Although Respondent argues that
Complainant has no enforceable rights under the Policy to the PARTY PICS
trademark this is contrary to well-established trademark law and prior UDRP
decisions. Complainant has enforceable rights in the mark as evidenced by his its two federal trademark
registrations. Furthermore, Complainant’s
two registrations are incontestable and can no longer be challenged as being
merely descriptive.
In Geoffrey, Inc. v. Proto Web Co., FA 304297 (Nat. Arb. Forum Sept. 17, 2004), Respondent’s subsidiary Proto Web Co argued that it should be allowed to keep the <babysuperstore.com> domain name because it was composed solely of a common descriptive term and subject to a substantial third party use. The Panel, however, held that the Complainant had established rights in the BABY SUPERSTORE marks through its registrations with the U.S. Patent and Trademark Office. In a similar fashion, Complainant has established its rights in the PARTY PICS trademark through its federal trademark registrations.
Complainant draws the Panel’s attention to the fact that Respondent itself has previously challenged a domain name proceeding on the grounds that the USA TRIATHLON mark was merely descriptive. The Panel concluded that “complainant’s use of the USA TRIATHLON mark over the past seven years supports a determination that the mark has acquired the requisite secondary meaning.” USA Triathlon v. Proto Web Co., FA 190643 (Nat. Arb. Forum Nov. 17, 2003). Complainant’s use of the PARTY PICS trademark for over the past twenty-five years certainly supports a finding that the mark has acquired secondary meaning.
Complainant has proven that its PARTY PICS trademark is a well-known, famous and distinctive trademark and, thus, entitled to a broad scope of protection.
Confusing Similarity
In
response to Respondent’s argument that Complainant’s federally registered PARTY
PICS trademark is entitled to only a “very minimal degree of protection”
because the mark is merely descriptive, Complainant again points out that its
PARTY PICS trademark registrations are incontestable and, thus, can no longer
be challenged as a descriptive mark. But even if the mark could have ever been
classified as descriptive, it has now become distinctive and acquired secondary
meaning through Complainant’s widespread and extensive use.
Respondent further contends that
deletion of the letter “s” makes the auditory and visual impression of
<partypics.com> easily distinguishable from the PARTY PICS
trademark. However, prior UDRP decisions
hold that a difference in a single letter is not sufficient to overcome a
finding of confusing similarity. See
Sunglass Hut Corp. v. AAAnet, Inc., FA 94370 (Nat. Arb. Forum May 6,
2000). In fact, Respondent has previously been ordered to transfer a domain
name which differed from a registered trademark by a single “s.” See Pearl Jam v. Vertical Axis, Inc., FA 593325 (Nat. Arb. Forum Dec.
27, 2005), in which the Panel concluded that the addition of a single letter “does not significantly distinguish the
domain name from the mark.”
Respondent filed a Google search
showing third party uses of the term “Party Pic” to attempt to show that the
PARTY PICS trademark is merely descriptive.
With the rise of the Internet it has admittedly become more difficult to
police unauthorized uses of trademark by third parties. Each of these unauthorized uses is in fact
an infringement of the PARTY PICS trademark. As Ms Chilton confirms in her Declaration,
Complainant works diligently to stop all unauthorized commercial uses of its
mark and has vigilantly
protected its rights in the PARTY PICS trademark from unauthorized uses by
third parties. This vigilance has included sending numerous cease and desist
letters, filing legal actions and initiating UDRP proceedings. In addition, and
as noted above, Respondent has been previously ordered to transfer the domain
name <babysuperstore.com> which it claimed was a descriptive term by
referring to a Google search yielding over 8,000 websites containing the
term “baby superstore”.
Respondent relies heavily on a panel decision in HP Hood LLC v. hood.com, FA 313566 (Nat.
Arb. Forum Nov. 9, 2004), to attempt to demonstrate its rights in the disputed
domain name. The Panel in hood.com focused their decision on the
fact that the domain name consisted only of the mere common word “hood”. The Panel found that the registration of
<hood.com> and other single, short, generic terms are allowed if the
domain names were registered “because
of their attraction as dictionary words, and not because of the value as
trademarks.”
The decision in hood.com
is distinguishable from facts in this proceeding for a number of reasons. Firstly, Complainant has shown that the
PARTY PICS trademark has significant value by virtue of the considerable amount
of goodwill Complainant has in it.
Secondly, the term “hood” is a term that appears in the dictionary. Respondent has provided no evidence that
shows the term “party pic” in a dictionary.
Respondent’s citation of the term “pic” is insufficient because it is
well-established that the Policy prohibits the registration of distinctive
trademarks, even if they consist of the combination of common terms. Respondent
is well-aware that this is a prohibited practice as a result of the two
above-cited decisions in which Respondent or its subsidiary was directed to
transfer the domain names. See also the three cases referred to below involving
Respondent or its subsidiary.
Respondent
has provided no evidence that it is commonly known by the term “Party
Pic”. The commercial use of a domain
name identical to another’s mark does not constitute a bona fide offering of
goods or services pursuant to paragraph 4(c) of the Policy or a legitimate noncommercial
or fair use pursuant to paragraph 4(c)(iii) of the Policy. Consequently,
Respondent has no rights or legitimate interest in the disputed domain name and
does not use it for a bona fide offering of goods.
Respondent’s Repeated Pattern of Registering Domain Names that
Incorporate Distinctive Trademarks.
Respondent’s main argument against
a finding of bad faith is that the disputed domain name consists solely of a
descriptive term. However Complainant
has demonstrated that the PARTY PICS trademark is distinctive, is well-known,
and is not a descriptive term.
Accordingly, it is entitled to a broad scope of protection.
Respondent
further argues that bad faith registration cannot be established because it was
not aware of Complainant’s mark at the time of registration. However, registration of a domain name that
incorporates a well-known mark is evidence of bad faith registration under the
Policy. See The Caravan Club
v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000). Additionally, Respondent registered and used
the disputed domain name in bad faith because the domain name is confusingly
similar to Complainant’s PARTY PICS trademark and provides links to websites
offering goods and services in competition with Complainant.
Respondent’s
bad faith use and registration is further evidenced by its pattern of
registering domain names that infringe well-known trademarks. In his declaration, Mr. Chad Park (manager
of Vertical Axis) swears that “We only
register domain names, which incorporate common words, descriptive and generic
terms, and/or words and terms to which we believe no single party has exclusive
rights.”
Contrary
to Mr. Park’s declaration, prior UDRP proceedings clearly show that Respondent
has a pattern of registering in bad faith domain names that include distinctive
trademarks. In Pearl Jam v. Vertical Axis, Inc., FA 593325 (Dec. 27, 2005), the
Panel ordered Respondent to transfer the domain name <pearljams.com>
because it was confusingly similar to the federally registered PEARL JAM
mark. The Panel in Harveys Casino Resorts v. Vertical Axis, Inc., FA 117320 (Nat. Arb.
Forum Oct. 10, 2002), ordered Respondent to transfer the
<harveys-tahoe.com> domain name to the owner of the federally registered
HARVEY’S mark, which operates a casino in Lake Tahoe, Nevada. Similarly, Respondent was ordered to
transfer the <factoryphysics.com> domain name to the owner of the FACTORY
PHYSICS trademark. Factory Physics Inc. v. Vertical Axis, Inc., FA 135047 (Nat. Arb.
Forum Jan. 28, 2003). Another Panel
ordered Respondent to transfer the <mbnaaccess.net> domain name to the owner of the MBNA mark. MBNA
America Bank, N.A. v. Vertical Axis, Inc., FA 133632 (Nat. Arb. Forum Jan.
6, 2003).
In MBNA America Bank, N.A. v. Vertical Axis,
Inc., the Panel concluded that “Respondent
has established a pattern of infringing on famous marks and then using them to
mislead Internet users into viewing pop-up advertisements.” This bad
faith pattern of registering infringing domain names evidences bad faith use
and registration pursuant to paragraph 4(b)(ii) of the Policy.
The
decisions cited above demonstrate that Respondent has a pattern of
appropriating well-known trademarks in confusingly similar domain names to
generate commercial gain. This pattern
evidences that Respondent registered and is using in bad faith a domain name
confusingly similar to Complainant’s PARTY PICS trademark. Consequently, Complainant has established
that Respondent registered and is using the <partypic.com> domain
name in bad faith.
D. Respondent’s Additional
Submission
Respondent also submitted an Additional Submission in
accordance with NAF’s Supplemental Rule 7. In it, Respondent states that a Panel need not accept a determination by
the U.S. Patent and Trademark Office if it determines a mark is generic. Also he
states again that Complainant’s
mark is generic since it is in the business of selling “pictures” or “pics”
taken at “parties, ” i.e. party pics.
He also refers
to a similar case involving a descriptive mark
where the difference between the mark and the disputed domain was an
“s”. In that case it was held that the “s” was sufficient to give rise
to a finding of the absence of confusing similarity, namely Tire Discounters, Inc. v. TireDiscounters.com,
FA 679485 (Nat. Arb. Forum May 14, 2006). In denying the Complaint, the
Panel stated: Because the mark is merely descriptive, small differences
matter. In the Internet context, consumers are aware that domain names for
different websites are often quite similar and that small differences
matter. See Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135, 1147
(9th Cir. 2002).
The omission of the letter “s” from the mark
is one of those small differences that matters in this context. Respondent also
referred to Men’s Warehouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002).
Respondent states that, as in
Tirediscounters.com, the “s” matters in the present case and is sufficient to
distinguish the mark and disputed domain name and that accordingly the
Complaint should be dismissed.
Respondent Has a Legitimate
Interest in the Disputed Domain
A term does not have to be in
the dictionary to be deemed descriptive. Where a combination of common terms
form a descriptive term that is subject to third party use, a legitimate
interest is established per se. In the Tire Discounter which was referred to above it was said that “Respondent has persuasively shown that its
<tirediscounter.com> domain name is comprised of common terms and, in any
event is not exclusively associated with Complainant.” “Tire discounters” was not in the
dictionary but this did not preclude a finding of legitimate interest. Nor
should the fact that “party pic” is not in the dictionary preclude a finding of
legitimate interest here.
The Cases Cited by
Complainant are Not Relevant
Complainant has cited three
cases with holdings against Respondent. However, a Panel must decide “each case on its own merits.” As was
held in EPLAN Software & Service GmbH
& Co K.G. v. Folkening,
D2000-0806 (WIPO Oct 7, 2000). As was noted by the 3-member panel in Sustainable Forestry Management Limited v.
SFM.com, D2002-0535 (WIPO
Sept. 13, 2002) “The Complainant has
referred to various other Panel decisions which it says show that the
Respondent has acted in bad faith with regard to domain names on other
occasions. However, the Panel must deal with this case on its own merits, and
we cannot take into account decisions made in other cases on the basis of
different evidence and submissions.”
There are a number of decisions
that have been decided in Respondent’s favor, including: Vernons Pools
Limited v. Vertical Axis, D2003-0041 (WIPO Mar. 12, 2003); Intune Media
Group LLC v. Vertical Axis, Inc., FA 385881 (Nat. Arb. Forum March 2,
2005); Aquascape Designs, Inc. v. Vertical Axis, Inc., FA 629222 (Nat. Arb. Forum March 7, 2006); Jet
Marques v. Vertical Axis, Inc., D2006-0250
(WIPO May 26, 2006). Accordingly, Complainant’s claim that Respondent is a
cybersquatter is not fair. Respondent generally registers generic domains and
descriptive marks. The cases cited by Complainant are limited
exceptions to that rule.
It is clear that “PARTY PICS” is
not a famous mark and there is no evidence Respondent registered partypic.com
with Complainant’s mark in mind. Accordingly, as noted in the Response, bad
faith cannot be proven and the Complaint should, therefore, be denied.
FINDINGS
Respondent requested that a three-member panel be appointed but the
Response was filed late and, as a result, the NAF denied Respondent’s request.
Respondent repeated the request in his Additional Response, pointing out that
under Rule 10(a) of the Rules for Uniform Dispute Resolution Policy (“the
Rules”) the Panel must conduct the proceedings in an appropriate manner, and
that there was no good reason for denying his request.
Under Rule 10(b) of the Rules, a Panel must ensure that each party is
treated equally, and given a fair opportunity to present its case. It is
therefore entirely within the Panel’s discretion as to whether a three-member
panel should be appointed. However, having studied the documentation filed by
both parties, the Panel felt that the issues raised were not of such complexity
as to warrant a three-member Panel and Respondent’s request is denied, although
the Panel has perhaps gone into greater detail in his Findings than might
normally be the case.
With regard to Respondent’s late response, it is again within the sole
discretion of the Panel as to the
amount of weight to be given to it. In the event, he has decided to accept it,
for several reasons: it was only 1 day late; it was received well before the
Panel had been appointed; it was accompanied by a full ‘confession’ by
Respondent’s counsel and his assistant (who had wrongly diarized it for 2 days
after the time appointed by the NAF); and Complainant clearly accepted the
Response by filing an Additional Submission in reply. In these circumstances,
the Panel has accepted the Response as if it had been timely filed.
Both
parties filed Additional Submissions which the NAF deemed to be timely filed
under Rule 7 of its Supplemental Rules. Respondent’s Additional Submission was
received by the Panel some time after the other papers and after he had already
begun to prepare his Decision. However in the interests of fairness and
equality it is summarized above and its contents have been taken into account
in this Decision.
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.
There is no doubt in the mind of this Panel
that the two names in this case are, from a trademark perspective, confusingly
similar. The disputed domain name differs from Complainant’s trademarks only by
the fact that it omits a single letter and that, moreover, is at the end of the
word. In saying that, the Panel makes no distinction between the 2 earlier
trademarks, even though one is in script form. Also, both parties appear to
accept without argument the standard practice of ignoring the ‘.com’ suffix for
the purposes of any comparison under paragraph 4(a)(i) of the Policy.
However Respondent argues very strongly that
this actual similarity should be ignored because Complainant’s trademarks are
descriptive and not enforceable. He instances a number of UDRP Decisions in
support of his argument that the UDRP does give right to generic terms. He also
filed a copy of the first 50 entries from a Google® search for “party pic” out
of a total of ‘about 260,000’ entries none of which he says are connected with
Complainant.
In reply, Complainant points out that even if
the phrase ‘party pics’ might have been descriptive when it was first coined in
1970, nevertheless both of his trademark registrations are now incontestable
and are therefore not open to challenge on the basis of descriptiveness. He
also refers to the fact that by virtue of the extensive use of the trademark
over some 36 years, both by himself and his 180 licensees, it has acquired
distinctiveness and secondary meaning, and it has become well-known and famous.
He produces some impressive evidence of this usage in the shape of statements
regarding the widespread availability of his photographic services throughout
the USA at graduation ceremonies etc.; average annual sales of $6.7 million;
the expenditure of over $1 million in promotional expenses; and the fact that
its website receives 6 million visits a year. With regard to the Google search
Complainant states that it “works diligently to stop all unauthorized
commercial uses of its mark and has vigilantly protected its rights
in the PARTY PICS trademark from unauthorized uses by third parties,” and that each of the entries
listed is an infringement of his trademark.
The Panel can accept that Complainant may be diligent in following up
alleged infringements and misuse of its trademark, but many of the Google
search results look suspiciously like references to the activities of Complainant
or its licensees and it seems doubtful in the extreme that he has commenced, or
will now commence, over 260,000 separate proceedings.
The Panel is not qualified to pronounce
authoritatively on US trademark law but nevertheless he has a good working knowledge
of it and, according to an interpretation posted on the USPTO website, an
incontestable trademark registration is – subject to certain exceptions – “conclusive evidence of the validity of the
registered mark, of the registration of the mark, of the owner’s ownership of
the mark and of the owner’s exclusive right to use the mark with the
goods/services.” Of course a mark can become non-distinctive
after registration through its owner’s misuse or failure to follow up misuses,
but in this case, if Respondent feels that PARTY PICS falls into that category
his recourse is to file the appropriate action at the USPTO or in the courts.
In fact, although Complainant alleges that
both of his trademark registrations are incontestable, actually only one of them
is – No. 1440252. The other is too young. However this is not relevant, as a
single trademark is all that is needed for a UDRP Complaint to succeed.
It is true, as Respondent points out, that in
an internet context, domain names are quite often very similar and that very
small differences can matter. But we are not discussing similarity between two
domain names, and in any case the cases cited by Respondent are not on a par
with this case. For instance, in Men’s
Warehouse v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) Complainant’s
trademark was THE SUIT WAREHOUSE but both of the words ‘suit’ and ‘warehouse’
had been disclaimed. Also in Tire
Discounters, Inc. v. TireDiscounters.com, FA 679485 (Nat. Arb. Forum May 14, 2006) Complainant had
admitted that its mark was descriptive – a fact which Respondent’s counsel (who
also acted in that case) omitted to inform the NAF. Neither of these provisos
is present in this case as there has been no admission of descriptiveness and,
according to the USPTO record, no disclaimers are entered on the record for
Complainant’s two trademark registrations.
What has to be compared in this case is a
domain name that is nearly identical to an incontestable trademark registration
that has been widely and extensively used for over 30 years. Although it is
generally accepted that previous UDRP Decisions cannot be relied upon as
binding precedents, the Panel prefers the line taken in Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 22, 2000)
where it was found that deleting the letter ‘s’ from the Complainant’s
trademark UNIVERSAL STUDIOS STORE did not change the overall impression of it
and this made the disputed domain name confusingly similar to it. Indeed,
Respondent himself lost his <pearljams.com> domain name to the owner of
the PEARL JAM trademark.
The Panel has therefore concluded that the
similarity between the disputed domain name <partypic.com> and the
earlier trademark PARTY PICS is such that paragraph 4(a)(i) of the Policy is
proved.
It is well established that once a
Complainant makes out a prima
facie case in support of its
allegations, the burden shifts to Respondent to show that it does have rights
or legitimate interests in the disputed domain name. In this case, the Panel
accepts that Complainant has made out such a case, so will concentrate on
Respondent’s arguments.
The website at the disputed domain name
consists of a search engine offering links to a number of websites, all of them
offering various photographic services. Respondent claims that these are
provided to him by Yahoo Search Marketing, that he had never heard of
Complainant before registering the disputed domain name, that the name only
became available as a result of its expiry and that he registered it
accordingly, and that the name is purely descriptive.
In support of his arguments, Respondent relies strongly on
the Decision in HP Hood LLC v. hood.com, FA 313566 (Nat. Arb. Forum Nov.
9, 2004) in which the Panel found that the <hood.com> domain name
contained a common word which was being used in its generic sense to advertise
products or services related to the descriptive meaning of the domain name and
thus constituted a bona fide offering of goods and services. On paper
this argument has some merits, but the Panel has concluded that it does not
apply in this case.
Firstly, the name PARTY PICS which, if descriptive once, is now one in which Complainant has acquired – and established to the satisfaction of the Panel – substantial rights and goodwill. Secondly, it is not the sort of term that is likely to be very commonly used and it is certainly not as common as ‘hood’. Respondent annexed to his Response a single page from an on-line dictionary (www.dictionary.com) and this refers to 5 entries for ‘pic’ although Respondent only evidenced 2; the other 3 are all acronyms. The word ‘pic’ does appear in the Panel’s copy of Collins English dictionary as an abbreviation for ‘picture’, but not in his Shorter Oxford Dictionary. Respondent says that a term can be descriptive and not appear in any dictionary, which is true, but ‘party pics’ is not in the same league, or as frequently used, as a common word such as ‘hood’. In contrast to the ‘about 260,000’ Google references to ‘party pics’, a Google search for HOOD undertaken by the Panel revealed ‘about 121 million’ entries. Thirdly, and perhaps most importantly, Respondent is not using his domain name generically solely in connection with products or services that are related to its alleged descriptive meaning. The website at the disputed domain name contains 23 links of which only one could be said to relate to “party pictures” namely: ‘High School Prom Pic’. The others include links that are totally unconnected such as ‘Photo of Animals’, ‘Photo Sharing’, ‘Photo Printer’, ‘Stock Photography’, and ‘Stock Photos Australia’ etc.
As a result the Panel has concluded that the hood.com case does not assist Respondent and he finds that the disputed domain name is not being used for a bona fide offering of goods and services. As for Respondent’s other arguments, these are mostly supported by Mr. Park’s Declaration, and this is dealt with below.
Since neither of the
other examples from paragraph 4(c) of the Policy for demonstrating rights or
legitimate interests have been claimed by Respondent or would appear to apply.
The Panel has accordingly found that paragraph 4(a)(ii) is also proved.
Once again it is for Respondent to refute
Complainant’s contentions under this heading, since the latter has made out a prima facie case and once again
Respondent relies heavily on the argument – already rejected by the Panel –
that PARTY PICS is generic and descriptive.
Complainant’s main charge under this heading
is that Respondent is not using the site for
any legitimate offering of goods or services but rather to lure consumers, who
might be looking for information about Complainant, or his website, to its
website in an attempt to profit off its advertising links and that this is evidence
of his bad faith. However, as pointed out above there is in fact only 1 link on
the website at the disputed domain name which could be said to compete with
Complainant, so anyone so ‘lured’ would quite quickly realise his/her mistake,
although perhaps not without having made a click or two and thus contributed to
Respondent’s income stream.
Another charge by Complainant is that Respondent’s registration of its
famous and well-known mark PARTY PICS is in violation of paragraph 13 of
Respondent’s Registration Agreement with Nameview and that, as was held in Young Genius Software AB v. Vargas,
2000-0591 (WIPO Aug. 10, 2000) this constitutes bad faith use and registration.
Respondent did not answer this point, so the Panel accepts it, on the
presumption that, although he has not seen a copy of the Agreement, it is the
standard format.
Respondent does however say that there can be no bad faith because it
was unaware of Complainant’s trademark when registering the disputed domain
name, but Complainant argues that if in fact the trademark was well-known this
is evidence of bad faith, citing The
Caravan Club v. Mrgsale, FA
95314 (Nat. Arb. Forum Aug. 30, 2000) which in turn cites Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) in which it was said that “[f]urthermore, the Domain Name is so
obviously connected with the Complainant and its products that its very use by
someone with no connection with the Complainant suggests opportunistic bad
faith.”
In its Additional Submission, Complainant adds another, more serious,
charge namely that Respondent is a serial registrant of other people’s
trademarks as domain names. If proved this could be a violation of paragraph
4(b)(ii) of the Policy. Complainant cites 3 prior Decisions in which Respondent
figured as the losing party and 2 others in which Respondent’s acknowledged
subsidiary Proto Web Co was the loser. In response, Respondent cites 4
Decisions all of which were decided in Respondent’s favour and he further
stresses that every case must be decided on its own merits, referring to Sustainable Forestry Mgmt. Ltd. v. SFM.com, D2002-0535 (WIPO Sept. 13, 2002) in
which it was held that the Panel could not “take into account decisions made in other cases on the basis of
different evidence and submissions.” That is of course true, but if so firstly
one can wonder why Respondent has been so diligent in citing and relying upon,
previous UDRP Decisions, and secondly it overlooks paragraph 4(b)(ii) of the
Policy under which it is evidence of bad faith if a Respondent has registered a
domain name in order to prevent a Complainant from reflecting the mark in a
corresponding domain name provided he has engaged in a pattern of registering
other people’s trademarks as domain.
This paragraph makes no distinction as between winning a UDRP case and
losing it so the fact that Respondent has figured as the defendant in 7
separate cases would seem to indicate that Respondent is indeed a serial
registrant. This is the direct opposite
of a statement in the sworn Declaration by Respondent’s Manager Mr. Park, thus
casting doubt on the veracity of the entire document, despite the fact that it
is declared “to be true and is offered under penalty of law for making false
statements.” However in this case it
can hardly be said that registration of the disputed domain name has also
prevented Complainant from “reflecting the mark in a corresponding domain name”
(which is the other requirement of paragraph 4(b)(ii)) as by his own admission
he runs a flourishing website at <partypics.com> with over 6 million hits
in a year.
Complainant’s charges of bad faith have not been so conclusively proved
as have his other charges, but nevertheless the Panel has concluded that, on
balance, Respondent did register and is using the <partypic.com>
domain name in bad faith. Respondent has already been branded as an infringer
of famous trademarks in the MBNA case referred to on page 10 above, and the
Panel in this case sees no reason to disagree with this verdict.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <partypic.com>
domain name be TRANSFERRED from Respondent to Complainant.
David H Tatham, Panelist
Dated: June 27, 2006
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