National Arbitration Forum

 

DECISION

 

The Workshop Way, Inc. v. Bill Harnage

Claim Number: FA0606000739879

 

PARTIES

Complainant is The Workshop Way, Inc. (“Complainant”), represented by Michael R. Abejuela, of Clark & Collins, P.C., Market Station, 108-E South St., S.E., Leesburg, VA 20175.  Respondent is Bill Harnage (“Respondent”), represented by Michael K. Bydalek, of Kutak, Rock, LLP, 1650 Farnam St., Omaha, NE 68102.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <workshopway.com>, registered with Network Solutions, Inc.

 

 

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.

 

The Honourable Sir Ian Barker, QC.

 

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 26, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 28, 2006.

 

On June 27, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <workshopway.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 June 30, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 20, 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@workshopway.com by e-mail.

 

A timely Response was received and determined to be complete on July 19, 2006.

 

On July 26, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Sir Ian Barker, QC as Panelist.

 

 

RELIEF SOUGHT

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

 

 

PARTIES’ CONTENTIONS

 

A. Complainant

 

The Complainant owns the U.S. Trademark 1,551,868 for THE WORKSHOP WAY in connection with “printed educational books dealing with music, language, phonics and reading-mathematic readiness.”  The registration date was August 15, 1989.  The Complainant has used THE WORKSHOP WAY in connection with its training of educators as well for its conventions since 1976.  

 

The Complainant is a non-profit Pennsylvania corporation involved with the publication, provision and sale of printed educational books.  Susan Harnage was the Complainant’s Chief Executive Officer from August 1996 through December 2003.  After that date, Ms. Harnage has been engaged by the Complainant as an independent licensed consultant.

 

Ms. Harnage is the sister of the Respondent.  The disputed domain name was registered during Ms. Harnage’s employment with the Complainant as its Chief Executive Officer.  The Respondent registered the domain name on behalf of Ms. Harnage and helped set up a website.  During Ms. Harnage’s employment, the Complainant paid maintenance fees for the disputed domain name and once paid a fee to the Respondent for computer services.  Upon the termination of Ms. Harnage’s employment with the Complainant, she refused to relinquish control of the website and domain name to the Complainant and claimed ownership of the domain name.  The Complainant has since ceased its payments of the maintenance fees.

 

The Respondent has no rights or legitimate interests to the <workshopway.com> domain name.  The Respondent registered the disputed domain name on December 17, 1997 for the benefit of Ms. Harnage as a birthday present, knowing of her then relationship with the Complainant and knowing of the Complainant’s mark.  Ms. Harnage has claimed ownership and control of the domain name in conversations with the Complainant; Ms. Harnage has in the past asked for the Complainant’s permission to take certain actions through the disputed domain name and website.

 

Prior to registration of the disputed domain name, both Ms. Harnage and the Respondent knew that the Complainant’s mark was in use and was integral to its offering of goods and services.  They understood the Complainant’s rights and legitimate interests in the disputed domain name; and their lack of rights or legitimate interests in the disputed domain name.  The most recently-displayed active website homepage on the disputed domain name identified the Complainant as the owner of the registered mark, THE WORKSHOP WAY. 

 

Currently, the disputed domain name resolves to a page that displays an error message.  Therefore, the Respondent is not using the domain name in connection with a bona fide offering of goods or services, nor is he using the domain name in connection with a legitimate noncommercial or fair use.  The Respondent and Ms. Harnage are not commonly known by the domain name.  See Vindex Pty Ltd. v. Auinger, AF-0402 (eResolution Oct. 18, 2000) (finding that because the domain name did not resolve to a developed website, and the respondent, who was a former employee of the complainant, had constructive knowledge of the complainant’s rights in the mark, the respondent lacked rights and legitimate interests in the domain name).

 

While Ms. Harnage may at one time have had limited authorization to use the Complainant’s mark through the disputed domain name, such authorization did not extend beyond the time that Ms. Harnage was engaged as an employee of the Complainant.  Neither Ms. Harnage nor the Respondent, has been given a license or right to the continued use of the Complainant’s mark in such a way. 

 

It is likely that their continued possession and control of the domain name is with the intent to, in the future, either divert or interfere with the Complainant’s business of promoting the Workshop Way method through the use of its registered mark.

 

The Respondent’s registration and use of the domain name has been in bad faith.  Following the termination of Ms. Harnage’s relationship with the Complainant as an employee, the Respondent and Ms. Harnage had no right to the continued use of the Complainant’s mark through the disputed domain name. 

 

Their passive holding of the disputed domain name satisfies the bad faith requirement of the Policy.  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that passive holding of the domain name by the respondent satisfies the requirement of Paragraph 4(a)(iii) of the Policy).

 

As further evidence of the Respondent and Ms. Harnage’s bad faith registration and use of the domain name, Ms. Harnage has ignored attempts by the Complainant to settle this matter amicably without need for a proceeding under the Policy.  On May 12, 2006, the Complainant’s attorney sent a letter to Ms. Harnage in an effort to facilitate the transfer of the domain name.  The Complainant received no response to its letter therefore it sent another letter on May 23, 2006.  Both letters were sent via the U.S. Certified Mail Return-Receipt Requested; Ms. Harnage has refused to pick up and claim this correspondence.  Her refusal to accept correspondence from the Complainant’s attorney in an effort to settle this dispute is further evidence of the Respondent’s bad faith registration of the domain name.

 

There is no logical use by the Respondent and Ms. Harnage of the disputed domain name other than to attract, for commercial gain, internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.  Despite no active website currently being displayed when accessing the domain name, the circumstance of Ms. Harnage as a former employee of the Complainant leads one to believe that she and the Respondent intend to use the website to attract internet users to their website by creating a likelihood of confusion with the Complainant’s registered mark.

 

B. Respondent

 

The Respondent does not dispute that the disputed domain name is identical with the Complainant’s registered trademark.

 

The Complainant’s relationship with Ms. Harnage and the Respondent began in October 1993 when the Complainant “officially endorsed” Ms. Harnage as a consultant.

 

The Complainant ultimately appointed Ms. Harnage as its Chief Executive Officer from August 1996 through December 2003.  After her tenure as Chief Operating Officer, Ms. Harnage was engaged by the Complainant to continue as an independent licensed consultant.

 

In December 1997, the Respondent registered the disputed domain name and has run the website with the assistance of Ms. Harnage and unpaid volunteers. 

 

Ms. Harnage has conducted three workshops in the past two months in her role as a consultant for the Complainant.  The Complainant supplied Ms. Harnage with materials in furtherance of the workshops.  The Complainant benefits directly from each workshop conducted by Ms. Harnage on its behalf, both from increased profile and through the payment of royalties and the purchase of materials.

 

Out of concern for her relationship with the Complainant, Ms. Harnage has repeatedly contacted the Complainant, including calls to Jo Anna Russo, the Complainant’s Executive Director, on June 29, 2006, and to Sister Melita Bearinger on July 1, 2006, to confirm she may still act as a consultant for the Complainant.  At no time was her status as a consultant questioned.

 

The Complainant does not allege that, at the time or immediately after the Respondent registered the domain name in 1997 or any time after Ms Harnage’s departure as Chief Executive Officer, it required the Respondent to cease operating the website at the disputed domain name.  The Complainant has at all times benefited from the Respondent’s operation of the disputed domain name since the time of registration.  Revenue has been produced for the Complainant through the generation of sales of the Complainant’s materials over the website.  The Respondent has paid all registration fees to maintain the domain registration from 1997 to the present.

 

The Complainant’s allegations show that, since the date of registration, the Respondent and Ms. Harnage have operated a website at the disputed domain name with the Complainant’s full knowledge and tacit acceptance. 

 

During this time, the Respondent has operated the website for the purpose of promoting the Complainant’s educational programs and purpose.  The Complainant has, in fact, benefited financially from the existence of the website and content posted at the website.  The Respondent has prominently displayed the Complainant’s contact information.

 

The Respondent’s use of the disputed domain name to promote and sell the Complainant’s products constitutes a bona fide offering of goods or services, satisfying Policy ¶ 4(c)(i).  In light of these facts and the prior UDRP decisions, Policy ¶ 4(a)(ii) has NOT been satisfied.  If there are other factual and legal disputes surrounding ownership and use of the domain name at issue, another forum, not the UDRP, will need to resolve the factual and legal disputes.

 

Further, to the extent that this dispute involves allegations of whether the Respondent is using the Complainant’s trademark without the Complainant’s consent and is violating the Complainant’s trademark rights, it is outside the Policy’s scope because it centers on interpretation of trademark law.  See Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Nat. Arb. Forum Apr. 25, 2002) (“If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding.”); see also AutoNation Holding Corp. v. Alawneh, D2002-0581 (WIPO May 2, 2002) (“[A]ssertions [of trademark infringement] are entirely misplaced and totally inappropriate for resolution through an ICANN proceeding.  The scope of an ICANN proceeding is extremely narrow: it only targets abusive cybersquatting, nothing else.”).  But see Estate of Brando v. thewordbank twb, FA 505502 (Nat. Arb. Forum Aug. 16, 2005). 

 

The Complainant asserts that the Respondent has registered and is using the disputed domain name in bad faith but failed to cite any specific portions of Policy ¶ 4(b) that are applicable or provide any facts as evidence of the Respondent’s registration in bad faith at the time of registration or present use (aside from the general assertion noted above).

 

The Respondent’s website shows that it has not intentionally attempted to attract internet users to its website by creating a likelihood of confusion with the Complainant.  Conflicting assertions regarding the general veracity of the information on a disputed website without more is insufficient evidence of registration and use in bad faith within the meaning of Policy ¶ 4(b).

 

The Respondent’s disclaimer at the website and acknowledgement on the home page of the site of the Complainant’s registered trademark rights indicates a lack of bad faith as it shows the Respondent has no intention to attract internet users to its website by creating a likelihood of confusion with the Complainant’s mark.  See Al-Anon Family Group Headquarters, Inc. v. Reid, D2000-0232 (WIPO June 5, 2000) (refusing to find bad faith where the respondent conspicuously informs viewers that his site is not affiliated with the complainant and alternatively finding that such a disclaimer is evidence of good faith on the part of the respondent which precludes any determination that the respondent intentionally attempted to attract internet users to his website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s website).

 

Further, numerous cases find that if a Respondent has rights or legitimate interests in the disputed domain name, pursuant to Policy ¶ 4(a)(ii), then the Respondent’s registration and use of the disputed domain name are not in bad faith pursuant to Policy  ¶ 4(a)(iii).

 

 

FINDINGS

The Complainant owns a registered trademark which is identical to the disputed domain name apart from the definite article in the trademark.

 

The Respondent registered the disputed domain name on December 17, 1997, at a time when his sister was the Chief Executive Officer of the Complainant.

 

Although the Respondent at the time of registration of the disputed domain name knew of the Complainant’s trademark, registration was achieved with the knowledge and approval of the Complainant and its then CEO, the Respondent’s sister.

 

Since registration and after the Respondent’s sister ceased to be CEO of the Complainant in 2003, the Respondent has been using the website accessed by the disputed domain name to sell the Complainant’s products.  The latest website acknowledges the Complainant’s ownership of the trademark.

 

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.

 

Identical and/or Confusingly Similar

 

The disputed domain name is identical to the Complainant’s mark, apart from the definite article in the mark.  This is not disputed by the Respondent.

 

Rights or Legitimate Interests

 

The Respondent has shown that he comes within Para. 4(c)(i) of the Policy.

 

The Respondent has a long-standing relationship with the Complainant.  His sister served as CEO for the Complainant from 1997 to 2003 and continues to be an independent licensed consultant.  He registered the domain name in 1997, when his sister became CEO of the Complainant, and has run it with the assistance of his sister and other unpaid volunteers.  His sister still communicates with the Complainant and has run three workshops for the Complainant in recent months.

 

He also has operated a website at the disputed domain name on the Complainant’s behalf for over nine years with the Complainant’s full knowledge and tacit acceptance.  Since the Complainant has approved of the Respondent using the disputed domain name in the past and now has changed its mind, the Respondent’s use of the disputed domain name to promote the Complainant’s educational products and services is a bona fide offering of goods or services under Policy ¶ 4(c)(i).  See Farberware Licensing Co., LLC v. The Pfaltzgraf Co., FA 655015 (Nat. Arb. Forum May 5, 2006) (finding that the respondent’s use of the <farberware.com> domain name to sell the complainant’s FARBERWARE products constituted a bona fide offering of goods or services under Policy ¶4(c)(i) because the complainant’s predecessor had apparently authorized the respondent to register the domain name and establish a website for the complainant); see also K&N Eng’g, Inc. v. Kinnor Servs., D2000-1077 (WIPO Jan. 19, 2001)(finding that the respondent had rights and legitimate interests in the domain name because “Respondent has been an authorized distributor of the Complainant’s goods for many years”); see also ABIT Computer Corp. v. Motherboard Super Store, Inc., D2000-0399 (WIPO Aug. 8, 2000) (“The Panel finds that Respondent demonstrated bona fide use of the domain name in the offering for sale by retail of Complainant’s motherboards and that such commenced prior to notice of the dispute.”). 

 

It may well be that the Complainant might succeed in a trademark infringement action in a Court.  The cases referred to in the Respondent’s submissions show that a proceeding under the Policy is not a suitable forum for such litigation.  The Respondent is not a cybersquatter.

 

Registration and Use in Bad Faith

 

The Complaint must fail under this part of the Policy also.  Both bad faith registration and bad faith use have to be proved or inferred.  See, e.g., VZ Vermögens – Zentrum Asr. Anything.com, D2000-0527 (WIPO Aug. 29, 2000).  

 

On the scenario in this case, there can be no room for any inference of bad faith registration by the Respondent in 1997.  At that time, the parties were well-disposed to one another.  The Respondent’s sister was the Complainant’s CEO.  The Complainant knew and approved both of the domain name and the subsequent use to which it has been put over nine years – largely for the benefit of the Complainant.

 

It is therefore unnecessary to consider bad faith use, since the Complainant has failed to prove bad faith registration.

 

The present case has some similarities with Eddy’s (Nottingham) Ltd v. Smith, D2000-0789 (WIPO Sept. 19, 2000).  There, the Respondent, whilst an employee of the Complainant, registered domain names identical to the complainant’s mark.  This was done with the knowledge of the Complainant, who raised no objection until some time later.  The Panel found that, at the time of registration, the Respondent had a legitimate interest in the names.  The Complainant had failed to prove both lack of legitimate interest and, bad faith registration.

 

Another matter which the Panel notes is the delay of over eight years by the Complainant in challenging the Respondent’s use of the disputed domain name.  Although the equitable doctrine of laches may well not apply to cases under the Policy, such a lengthy delay can only assist the Respondent’s allegation that he had the Complainant’s express or tacit approval when he registered the disputed domain name.

 

 

DECISION

Because the Complainant has not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

 

 

Hon. Sir Ian Barker, QC Panelist
Dated: August 9, 2006