LFP IP, LLC v. Identity
Consultancy
Claim Number: FA0704000969417
PARTIES
Complainant is LFP IP, LLC (“Complainant”), represented by John
P. Hains, of Lipsitz Green Scime Cambria LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tipsandtricks.com>, registered with Enom, Inc.
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
David E. Sorkin (chair), Karl V. Fink, and G.
Gervaise Davis III as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 24, 2007; the
National Arbitration Forum received a hard copy of the Complaint on April 27, 2007.
On April 25, 2007, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <tipsandtricks.com> domain name is
registered with Enom, Inc. and that
Respondent is the current registrant of the name. Enom, Inc.
has verified that Respondent is bound by the Enom,
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 May 3, 2007, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 23, 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@tipsandtricks.com by e-mail.
A timely Response was received and determined to be complete on May 23, 2007.
On May 31, 2007, pursuant to Respondent’s request
to have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed David E. Sorkin, Karl V. Fink, and G. Gervaise Davis III as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the publisher of Tips
& Tricks, a magazine about video games.
Complainant has published the magazine in printed form since 1974, and
more recently has established an Internet presence for the magazine using the
domain name <tipstricks.com>. Complainant has been granted trademark
registrations in the
Respondent is the registrant of the domain name <tipsandtricks.com>, which is identical in spoken English to
Complainant’s TIPS & TRICKS mark.
Complainant alleges that readers of its magazine and other Internet
users searching for information using Complainant’s mark unwittingly reach
Respondent’s website, and that Respondent receives a “click fee” by referring
such Internet users to other vendors.
Complainant alleges that Respondent lacks rights or legitimate
interests in respect of the disputed domain name, on the basis that
Respondent’s website contains essentially no content, but merely links to other
commercial sites. Complainant asserts
that Respondent is generating referral fees by free-riding on Complainant’s
mark.
Complainant further contends that Respondent registered and is using
the domain name in bad faith, using the domain name in a confusing and
infringing manner.
B. Respondent
Respondent contends that the scope of Complainant’s trademark rights is
limited and submits that Complainant lacks exclusive rights to “the ordinary
and widely used term ‘tips and tricks,’” but does not otherwise question the
existence of trademark rights or the identicality or similarity of the disputed
domain name to Complainant’s registered trademarks.
Respondent states that trademark rights as to
an otherwise generic term used as a magazine title are limited in exclusivity to
use of the term in connection with the magazine, and asserts that this principle is applicable to Complainant’s
mark. Respondent submits that its use of
the phrase “tips and tricks” as “common keywords . . . to provide
automatically generated search results” constitutes a bona fide offering of services that does not conflict with
Complainant’s trademark rights and that therefore gives rise to a legitimate
interest for purposes of the Policy.
Finally, Respondent denies that it registered or has used the domain
name in bad faith. Respondent is located
in
FINDINGS
The Panel finds that the disputed domain name
is identical or confusingly similar to a mark in which Complainant has rights. The Panel further finds that Complainant has
failed to sustain its burden of proving that the domain name was registered and
is being used in bad faith. The latter
finding being dispositive of the present matter, the Panel declines to reach a
finding as to the question of rights or legitimate interests.
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.
Complainant holds
Because the Panel’s finding as to bad faith
is dispositive of the matter before the Panel, the Panel declines to address
the question of rights or legitimate interests.
Paragraph 4(a)(iii)
of the Policy requires Complainant to prove that Respondent registered and is
using the domain name in bad faith. The
Panel accepts Respondent’s claim that the phrase “tips and tricks” is in common
use apart from its use as a trademark by Complainant, and considers
Respondent’s claims that its reasons for acquiring the domain name were
entirely unrelated to Complainant’s trademark and that it did not even know of
the mark at that time to be entirely plausible.
Furthermore, based upon the limited record before the Panel, it appears
that Respondent’s use of the domain name is indeed related to “tips and tricks”
generally—not (or at most merely incidentally) to video game “tips and tricks”
in particular, and not at all to Tips
& Tricks magazine or even to magazines about video games
generally. Nor is there other competent
evidence before the Panel tending to show that Respondent acquired or has used
the disputed domain name for reasons or in a manner relating to Complainant or
its mark. The Panel therefore concludes
that Complainant has failed to sustain its burden of proving that the disputed
domain name was registered and is being used in bad faith.
DECISION
Having determined that Complainant has failed to establish all three
elements required under the ICANN Policy, the Panel concludes that relief shall
be DENIED.
David E. Sorkin, Chair
Karl V. Fink, Panelist
G. Gervaise Davis III, Panelist
Dated: June 7, 2007
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