Ultrafem Inc.
v. Warren R. Royal
Claim Number: FA0106000097682
PARTIES
The Complainant is Ultrafem Inc., San Diego, CA, USA (“Complainant”) represented by Peter Reichertz, of Arent Fox Kintner Plotkin & Kahn, PLLC. The Respondent is Warren R. Royal, Woodstock, GA, USA (“Respondent”) represented by Ari Goldberger, of ESQwire.com Law Firm.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <instead.com>, registered with Network Solutions.
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.
The Honorable Charles K. McCotter, Jr. (Ret.), the Honorable James Carmody (Ret.), and Mr. Milton Mueller as Panelists.
PROCEDURAL HISTORY
The Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on June 19, 2001; the Forum received a hard copy of the Complaint on June 20, 2001.
On June 22, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <instead.com> is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that the Respondent is bound by the Network Solutions 5.0 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 25, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 16, 2001 by which the Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts, and to postmaster@instead.com by e-mail.
A timely response was received and determined to be complete on July 16, 2001.
On July 25, 2001, pursuant to the Respondent’s
request to have the dispute decided by a three-member Panel, the Forum appointed the Honorable
Charles K. McCotter, Jr. (Ret.), the Honorable James Carmody (Ret.), and Mr.
Milton Mueller as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
SPECIAL CIRCUMSTANCES
The Complainant lists the Respondent as Warren R. Royal. Royal has not filed a response; however, Instead.com, Inc. has filed a response contending that Royal has transferred all his rights to it through its principal, Lawrence Tasady. The Complainant challenges the standing of Instead.com, Inc. to file a response contending that only the registered holder of the domain name has standing to respond. Since Royal is the holder of the domain name, Royal is properly designated as the Respondent. However, since Royal transferred his interest in the domain name to it, Instead.com, Inc. has standing to respond. The Panel also concludes that the use of the domain name by both Royal and Instead.com, Inc. is relevant to the inquiry.
PARTIES’ CONTENTIONS
A. Complainant
The trademark INSTEAD is a registered trademark
(the “Mark”) and has been used exclusively in commerce by the Complainant since
1996 in connection with the sale of its feminine products. Royal registered the domain name, which is
identical to the Mark, long after the Mark was registered and used as a
trademark. Neither does Royal nor Instead.com Inc. have a clear legitimate interest
in the domain name. Instead.com,
Inc. does not have a legitimate purpose in
the domain name by simply claiming use for an ecological friendly consumer products retail web site and
portal. The registration by
Instead.com, Inc.
of the domain name with the
GreatDomains.com auction web site without any showing on behalf of Royal or
Instead.com, Inc.
of additional use since its
registration nearly three years ago,
is sufficient evidence that the domain name was acquired primarily for the
purpose of selling, renting or transferring and thereby preventing the
Complainant from reflecting its Mark in a domain name. Additionally, the Complainant’s
conversations with the domain name registrant and owner of record, Royal,
concerning the sale of the domain name, coupled with the offered sale through GreatDomains
for $80,000, satisfies the requirements of bad faith registration and use under
the UDRP. Finally, any attempt by
Instead.com, Inc.
to now show legitimate use due to
the incorporation of a business without use is not a legitimate purpose.
B. Respondent
The term “instead” is a common word that means
“alternatively” or “rather than.” The
first to register a common word domain name is entitled to keep it absent
specific evidence that the disputed domain name was registered in bad
faith. Instead.com, Inc. has a clear legitimate interest in <instead.com> because it obtained
it to use for an ecological friendly consumer products retail web site and
portal. There is no evidence that the
domain name was acquired primarily for the purpose of selling, renting or
transferring to the Complainant; to prevent the Complainant from reflecting its
trademark in a domain name; or to disrupt the Complainant’s business or attract
customer’s seeking to purchase its products.
Instead.com, Inc. merely purchased a common word domain name and long
before this dispute, made demonstrable efforts to use for the sale of bona fide
products. Accordingly, there can be no
finding of bad faith registration and use.
FINDINGS
1.
This complaint is
based upon the Complainant’s registrations for the following trademarks:
a. INSTEAD, Reg. No. 2026125, in
International Class 10, used in connection with menstrual fluid collection
device, based on a first use date of March 1, 1996.
b. INSTEAD, Reg. No. 2056353, in International Class 10, used in connection with menstrual fluid collection device, based on a first use date of August 5, 1996.
2.
The disputed domain name was
registered by Warren R. Royal, on July 15, 1998. Since registration of the domain name nearly three years
ago, the domain name has not been used in connection with a web site.
3.
In June 1999, Laurence Tasaday purchased the disputed
domain name from Royal for $5,000. On
June 6, 1999, Royal signed and notarized a Registrant Name Change Agreement
(“RNCA”) in which he transferred the domain name to Laurence Tasaday. Tasaday obtained a NIC-tracking number
(NIC–990713.3905), which he placed on the RNCA and faxed to Network
Solutions. Tasaday did not know until
this matter was instituted that the disputed domain name had not been properly
transferred. The RNCA was not processed
because Tasaday failed to sign it.
4.
Tasaday is the founder and President of Instead.com,
Inc. On June 15, 1999, Tasaday
established the Colorado corporation Instead.com, Inc. Instead.com, Inc.
is the owner, but not registered holder, of the disputed domain name.
5. Tasaday purchased the disputed domain name to use for Instead.com, Inc., an ecological friendly retail web site to sell ‘eco-friendly” products.
6. In March 2001, the Complainant contacted Royal concerning the domain name. Royal explained to the Complainant that unless the Complainant was “serious” about negotiating for the domain name, it was not worth Royal’s time. Royal then stated that he was the registrant of over 1300 domains and that if one looks at “greatdomains.com,” not many domains sell for under $100,000. The Respondent further explained that “serious” meant around $50,000 to $100,000.
7.
Royal is the registrant of more than fifty (50) domain
names. Furthermore, Royal’s name and
address is listed as the administrative and technical contact for additional
domain name registrations.
8.
Instead.com, Inc. is listed as the administrative and
billing contact information for
the disputed domain name. Neither Royal, Tassady, nor Instead.com, Inc. intentionally
caused the registrant information for the disputed domain name to be
incorrect. The Respondent provided
clear and correct administrative and billing contact information for the WHOIS
database.
9.
Instead.com, Inc. prepared a
business plan setting forth Instead.com, Inc.’s ambitious goal of catering to
what it projected as a $12 billion retail market for eco-products by 2004.
10.
While Instead.com, Inc.
raised initial funding, it has run out of capital and has not been able to acquire
additional necessary funding due to the downturn in the Internet economy. Instead.com, Inc. is continuing its efforts
to secure funding. Because Instead.com, Inc. was unable to raise additional
funds through conventional channels, but still desired to launch its
eco-products web site, it listed the disputed domain name for sale on the Great
Domains auction site in the Summer of 2000, for the purpose of raising money to
fund the venture. If the disputed domain
name were sold, Instead.com, Inc. would
register an alternative domain name to use.
11.
Instead.com, Inc. owns
only one domain name <instead.com>.
12.
“Instead” is a common word meaning “a substitute or an
equivalent,” as in Having planned to drive, we walked instead. The
Complainant uses “instead” in a descriptive manner to mean that
its softcup menstrual fluid device is a substitute, or alternative, to standard
tampons or pads.
13. The word “instead” is subject to substantial third-party use. It is incorporated in 29 active U.S. registered trademark applications. An Altavista search for the word “INSTEAD” resulted in over 10 million web pages containing this common word.
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
There is no dispute that the Complainant’s registered
trademark, INSTEAD, and the domain name <instead.com> are identical.
Because the Complainant’s Mark and the domain name are identical, the
first factor is met.
Rights or Legitimate Interests
Instead.com, Inc. has a legitimate
interest in the domain name. The <instead.com>
domain name is generic, and is a commonly used word. See Successful Money Mgmt.
Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7,
2001) (finding that seminar and success are generic terms to which Complainant
cannot maintain exclusive rights); see also
Rollerblade, Inc. v. CBNO and Redican, D2000-0427 (WIPO Aug. 24, 2000)
(finding that “[G]enericness, if established, will defeat a claim of trademark
rights, even in a mark which is the subject of an incontestable registration”);
see also CRS Tech. Corp. v. CondeNet, Inc.,
FA 93547 (Nat. Arb. Forum Mar. 28, 2000).
(“This is not the case in which [Respondent] selected a domain name
incorporating a famous or distinctive mark that, it should have known it was
not entitled to use. Rather,
[Respondent] selected as its domain name a mark that is somewhat descriptive
and is meant to communicate some aspect of the services provided. . . In these circumstances, the first to
register a domain name containing a generic or descriptive mark should prevail
absent bad faith and a lack of legitimate interest.”)
While it is true that Instead.com, Inc. has offered to sell the disputed domain name on the Great Domains auction site, the intent to sell a common word domain name, itself, can constitute a legitimate interest, where there is no evidence the Respondent registered it to sell to a trademark holder. Newstoday Printers and Publishers (P) Ltd. v. InetU, Inc., D2001-0085 (WIPO May 23, 2001). (Even if Respondent’s business were to comprise the registration for sale of generic domain names either generally or to its customers that would not be an illegitimate use of the domain name). See also Audiopont, Inc. v. eCorp, D2001-0509 (WIPO June 14, 2001) (“Indeed, speculation in domain names without any intent to profit from others’ trademark rights may itself constitute a bona fide activity under paragraph 4(c)(i)”).
Registration and Use in Bad Faith
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 interest, the Complainant cannot assert an exclusive right over a domain name that is a common, generic term. Therefore, it does not constitute bad faith for a company making a legitimate use of a domain name to attempt to sell the domain name. Many precedents uphold the principle that registering a generic term with intent to benefit from its economic value in the secondary market is a legitimate use as long as no bad faith is involved. The UDRP was not drafted to eliminate the secondary market in domain names, it was only intended to stop deliberate cybersquatting on trademarks. See Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no bad faith where the domain name involves a generic term, and there is no direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interest); Perricone v. Hirst, FA 95104 (Nat. Arb. Forum Sept. 1, 2000) (“Respondent is legally entitled to sell generic or merely descriptive domain names”); Etam, plc v. Alberta Hot Rods, D2000-1654 (WIPO Jan. 31, 2001). (“Respondent’s offer to sell the domain name does not constitute bad faith, in light of the fact that it has a legitimate interest in the domain name.”)
DECISION
Based upon the above findings and conclusions, we find in favor of the Respondent. Therefore, the relief requested by the Complainant pursuant to Paragraph 4.i of the Policy is Denied. The Respondent shall not be required to transfer to the Complainant the domain name <instead.com>.
Charles K. McCotter, Jr., Panel Chair
Dated: August 2, 2001
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