Hartford Escrow, Inc. v.
Insight Consulting Group
Claim Number: FA0703000931675
PARTIES
Complainant is Hartford Escrow, Inc. (“Complainant”), represented by Theodore
A. Prenovost, of Prenovost, Normandin, Bergh & Dawe,
2122 N. Broadway Suite 200,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hartfordescrow.com>, registered with
Network
Solutions, Inc.
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.
Hon. Sir Ian Barker, QC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 2, 2007; the
National Arbitration Forum received a hard copy of the Complaint on March 5, 2007.
On March 5, 2007, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <hartfordescrow.com> domain name is
registered with Network Solutions, Inc.
and that 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 March 15, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 4, 2007 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@hartfordescrow.com by e-mail.
A timely Response was received and determined to be complete on April 4, 2007.
Timely Additional Submissions were received and determined to be
complete from Complainant on April 9, 2007 and from Respondent on April 13,
2007.
On April 11, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Sir Ian Barker, QC as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Hartford Escrow, Inc. was registered as a corporation in
Respondent was given no rights by Complainant to use the disputed
domain name in connection with any bona
fide offering of goods and services.
Respondent has no connection whatsoever with the disputed domain name,
nor with Complainant which does business in
Respondent registered the disputed domain name on July 3, 2000 and has
never used the disputed domain name in a website over the ensuing period. Complainant requested, in April 2005, that
Respondent voluntarily transfer the disputed domain name to Complainant. Respondent, in reply, offered to sell the
disputed domain name.
In a letter dated August 16, 2006 to Complainant’s attorney, Respondent
claimed that, until a letter of August 8, 2006, it had heard nothing from
Complainant since Respondent’s letter to it of April 22, 2005. In that letter, Respondent had indicated that
it would accept a reasonable offer for sale of the disputed domain name.
Complainant claims that Respondent’s six years of non-use of the
disputed domain name, plus the indication that it wished to sell the disputed
domain name, indicated bad faith registration and use.
Respondent re-registered the disputed domain name in January 2007 to
prevent Complainant, who was owner of the service mark, from reflecting the
mark in a corresponding domain name.
B. Respondent
Respondent is holding the disputed domain name for possible use in a
real estate enterprise. The name “
Respondent’s business associates in the state of
Respondent’s refusal to transfer the disputed domain name does not show
bad faith registration. The registration
of the disputed domain name was a possible marketing tool which may be used in
the future. Respondent has no intention
of affecting the business of Complainant.
C. Complainant’s Additional
Submissions
The
A search on April 6, 2007 for the phrase “Hartford Escrow” resulted in
fewer than 2,000 hits – 67% of the top results were for Complainant.
D. Respondent’s Additional Submissions
The failure to renew the name reservation in
A search on April 13, 2005 yielded 609,000 hits of the name Hartford
Escrow. Another search yielded a review
of
FINDINGS
Complainant has traded as an escrow service
under the name “Hartford Escrow, Inc.” since 1964. There is no evidence as to the geographical
extent of its business outside
Complainant applied to register a service
mark in April 2005. The mark will be
issued shortly, since the time for opposition to the grant of the mark has now
expired without any opposition having been filed.
Respondent registered the disputed domain
name on January 3, 2000 and renewed the registration in January 2007.
Respondent has not used the disputed domain
name for about seven years. There was a
suggestion of an associated business in the State of
Complainant sought a voluntary transfer of
the disputed domain name in April 2005 and renewed the request in August
2006. In reply to both communications,
Respondent indicated that it was not prepared to transfer the disputed domain
name voluntarily but would be prepared to sell it in response to a reasonable
offer from Complainant.
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 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 Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights;
(2)
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
Complainant is required to prove that it has a trademark or service
mark in which it has rights. Such rights
can arise either by way of registration of a mark or by proof of a common law
mark.
Complainant has not, in the view of the Panel, proved that it has a
common law mark in the name HARTFORD ESCROW.
It did not provide sufficient evidence to enable the Panel to form this
conclusion.
Various NAF and WIPO decisions have shown that the threshold for
proving a common law mark is a fairly high one.
Evidence of geographical coverage, advertising expenditure and turnover
and the like is often provided as proof.
In the Panel’s view, the disputed domain name <hartfordescrow.com>
is confusingly similar to the Federal trademark application for HARTFORD ESCROW
INC. It would be identical, if the
letters INC did not feature in the trademark.
Complainant has
proved that it has applied for and is about to receive the grant of United
States Federal service mark for the name HARTFORD ESCROW INC. Various UDRP cases show that a qualifying
registered mark can be acquired by a complainant after the date of registration
of the disputed domain name.
Accordingly, Complainant succeeds on satisfying the first limb of the
Policy because registration of the mark is imminent.
Rights or Legitimate
Interests
Complainant gave Respondent no rights or legitimate interests in the
disputed domain name. Therefore, the
burden shifts to Respondent to provide evidence that it has rights or
legitimate interests in the disputed domain name under ¶ 4(c) of the Policy. Respondent’s evidence in this respect is
vague. It does not discharge the burden
of showing that it is using the disputed domain name in connection with a bona fide offering of goods and
services, or that it had made demonstrable preparations to use the disputed
domain name, or one like it, in connection with a bona fide offering of goods and services before notice of the
dispute. Mere registration of a domain
name is not sufficient to establish rights or legitimate interests for the
purposes of ¶ 4(a)(ii) of the Policy.
Respondent’s claims are generalized.
Its only hard evidence is that an associated company in Tennessee, some
two years ago, applied for the reservation of a corporate name in that state of
a name similar to that of the disputed domain name. However, the reservation expired and has not
been renewed. The vague statements by
Respondent of its possible business in
The Panel is unable to infer that there was bad faith shown by the
Respondent at the time of registration of the disputed domain name in
2000. There is no proof of the range of
the fame or reach of Complainant’s mark at the date of registration. Apart from an unsubstantiated generalized
statement to the effect that Respondent would have known about Complainant and
its business in 2000, there is no evidence from which the Panel can infer that
Respondent had actual knowledge of Complainant in the year 2000. Complainant in its business name, uses the name of a city in another part of the country
to run a fairly standard sort of real estate service, namely an escrow
company. If someone in
Under the Policy, Complainant must prove both bad faith registration
and use. Although bad faith registration
can be inferred sometimes from bad faith use, the Panel is not able to make
such an inference in the circumstances of this case. Whatever may be the situation in this case
with bad faith use, such as the offer of Respondent to sell the name, there is
just not sufficient basis, in the Panel’s view, to justify an inference of bad
faith registration.
Accordingly, the Panel concludes that relief
should be denied since the third element of the Policy ¶ 4(a) has not been
proved.
DECISION
The Panel concludes that relief shall be DENIED.
Hon. Sir Ian Barker, QC, Panelist
Dated: April 25, 2007
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