DRB Systems Inc. v. Lycos, Inc.
Claim Number: FA0808001219769
PARTIES
Complainant is DRB Systems Inc. (“Complainant”), represented by Robert
A. Sidoti of FAY SHARPE LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sitewatch.com>, registered with Melbourne
It, Ltd. d/b/a Internet Names Worldwide.
PANEL
The undersigned certifies that she has acted independently and
impartially and that to the best of her knowledge, she has no known conflict in
serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically August 8, 2008; the
National Arbitration Forum received a hard copy of the Complaint August 11, 2008.
On August 12, 2008, Melbourne It, Ltd. d/b/a Internet Names Worldwide
confirmed by e-mail to the National Arbitration Forum that the <sitewatch.com>
domain name is registered with Melbourne It,
Ltd. d/b/a Internet Names Worldwide and that the Respondent is the
current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide
verified that Respondent is bound by the Melbourne
It, Ltd. d/b/a Internet Names Worldwide registration agreement and
thereby has agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On August 15, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of September 4, 2008, 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@sitewatch.com by
e-mail.
A timely Response was received and determined to be complete September 12, 2008.
An Additional Submission was received from Complainant September 19,
2008, but was determined to be deficient pursuant to Supplemental Rule 7
because it was received after the deadline for submissions.
An Additional Submission was received from Respondent September 22,
2008, and was determined to be timely pursuant to the Forum’s Supplemental Rule
7.
On September 23, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed the Hon. Carolyn Marks Johnson to sit as Panelist.
Preliminary Issue: Deficient Additional Submission
The National Arbitration Forum
received an Additional Submission from Complainant September 19, 2008, which
was after the deadline for submissions.
Therefore, Complainant’s Additional Submission was deemed deficient
pursuant to Supplemental Rule 7. The
Respondent also filed an Additional
Submission that the Forum determined to be in compliance with Supplemental Rule
7. With preference for substance over
procedure, the Panel reviewed both Additional Submissions but determined that
they did not require a result different from that set out below.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
makes the following allegations in this Complaint:
1.
Respondent
registered a domain name that contains in its entirety Complainant’s protected
mark.
2.
Both
sides concede that the domain name containing Complainant’s protected mark is identical
to Complainant’s protected mark.
3.
Respondent
has no rights to or legitimate interests in Complainant’s protected mark.
4.
Respondent
acted in bad faith in registering and using Complainant’s protected mark in a
domain name.
B.
Respondent
makes the following points in response:
1.
Respondent
concedes that the domain name and Complainant’s mark are identical; but
Respondent counters that Complainant does not have “exclusive right” to use the
disputed domain name because it contains generic words.
2.
Respondent
urges registration of the “sitewatch” domain name occurred April 3, 1996, and
contends this is prior in time to any registration by Complainant of its mark.
3.
Respondent
contends that it was impossible to have had notice of any claim of rights by
Complainant at the time the domain name was registered.
4.
Respondent
did not register the domain name to sell it to Complainant and did not register
the domain name in bad faith.
5.
Respondent
is using and has used the domain name in good faith.
C.
Additional
Submissions
The Panel reviewed the Additional Submissions of the parties and
determined that they do not require a change in the substantive rulings of the
Panel as set out below.
FINDINGS:
Complainant established rights in its mark.
Complainant’s first use in commerce was November of 1997 and registration was
granted August 31, 1999.
Respondent claims to have registered the
domain name in April of 1996; however, the Whois information sets out a
creation date of April 3, 1996 and registration date of January 30, 2008.
Respondent concedes that Complainant’s mark and
the domain name are identical.
Respondent made a legitimate and bona fide use of the domain name.
Respondent has rights to or legitimate
interests in the domain name.
Complainant did not show that Respondent
acted in bad faith in registering and using Complainant’s mark in an
unauthorized manner or in a domain name that seeks to compete with 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 Complainant to 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) 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 asserts rights in the SITEWATCH mark
through registration of the mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 2,274,977 issued Aug. 31, 1999, filed November 24,
1997). Although Complainant’s mark or
alleged first use does not predate Respondent’s registration of the <sitewatch.com> domain name, the Panel finds that the
Policy ¶ 4(a)(i) does not require Complainant’s rights
in the mark to predate Respondent’s domain name. See AB
Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the
UDRP Policy does not require a complainant to have registered its trademark
prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶
4(a)(iii)); see also Clear!Blue Holdings,
L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was
first registered in 1996, four years before Complainant’s alleged first use of
the mark, the Panel finds that Complainant can still establish rights in the
CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Complainant established rights in the mark for
purposes of Policy ¶ 4(a)(i). See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Complainant contends that Respondent’s <sitewatch.com> domain name is identical to Complainant’s
SITEWATCH mark and that Respondent’s addition of the generic top-level domain
(“gTLD”) “.com” is not a sufficient means of distinguishing Respondent’s domain
name from Complainant’s mark for purposes of Policy ¶ 4(a)(i). See Blue Sky Software Corp. v. Digital Sierra,
Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name
<robohelp.com> is identical to the complainant’s registered ROBOHELP
trademark, and that the "addition of .com is not a distinguishing
difference"); see also Isleworth
Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t
is a well established principle that generic top-level domains are irrelevant
when conducting a Policy ¶ 4(a)(i) analysis.”).
Respondent does not dispute that its <sitewatch.com> domain name is identical to Complainant’s mark.
However, Respondent does contend that Complainant’s trademark rights do
not predate Respondent’s domain name registration. Some Panels have held that Policy ¶ 4(a)(i) requires that Complainant’s trademark rights predate
Respondent’s domain name registration in order to satisfy the Policy. See Phoenix Mortgage Corp.
v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“[Policy ¶ 4(a)(i)] necessarily implies that the Complainant’s [trademark]
rights predate the Respondent’s registration and use of the Domain Name. Any other interpretation would allow a junior
trademark user to challenge a prior domain name registration, a possibility
that is obviously contrary to the intent of the Policy and to trademark law
generally”); see also EU Prop. Portfolio Ltd. v. Salvia Corp., FA
873726 (Nat. Arb. Forum Feb. 7, 2007) (finding that the complainant
could not establish rights in the <eupp.com> domain name where its use of
the EUPP mark did not predate the respondent’s registration of the domain name). However, this Panel disagrees with that line
of reasoning.
Once Complainant makes a prima facie case to support its allegations, the burden shifts to Respondent to show that it has rights to or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent is using the <sitewatch.com> domain name to operate a website that features sponsored links to advertisements for various commercial websites. Moreover, Complainant contends that from 1996 until 2007, Respondent did not use the disputed domain name for any purpose. However, the Panel finds that Complainant has not shown that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). But see Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
Complainant also contends in its Complaint that Respondent is not commonly known by the disputed domain name and is not licensed to register domain names using Complainant’s SITEWATCH mark. Respondent’s WHOIS information identifies Respondent as “Lycos, Inc.” The Panel finds that Complainant is correct in its assertion that Respondent is not commonly known by the disputed domain name, under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant
further urges that Respondent offered to sell the <sitewatch.com> domain name to Complainant for the amount of
$3,990. The Panel finds that this point
is not established since Respondent contests this point. But see
Am. Int’l Group, Inc. v. Dobson, FA 146568 (Nat. Arb.
Forum Apr. 8, 2003) (finding evidence that the respondent lacked rights or
legitimate interests in the disputed domain name after it sent several
correspondences offering to sell its rights in the domain name in exchange for
1,500 shares of the complainant’s stock to the complainant); see also Williams-Sonoma,
Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a
respondent’s willingness to sell a domain name to the complainant suggests that
a respondent has no rights or legitimate interests in that domain name under
Policy ¶ 4(a)(ii)).
The Panel finds that Complainant made a prima facie case for lack of rights or legitimate interests pursuant to Policy ¶ 4(a)(ii); but that Respondent rebutted that showing. See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when the respondent does file a response, the complainant must allege facts, which if true, would establish that the respondent does not have any rights or legitimate interests in the disputed domain name); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, the panel may decline to transfer the disputed domain name).
The Panel specifically does not find that
Respondent’s <sitewatch.com> domain name is comprised entirely of generic terms.
The Panel finds that Respondent
made a showing of rights to or legitimate interests through registration that
was prior to Complainant’s registration of the mark and through bona fide use that was not shown to compete
with Complainant or limit Complainant’s ability to use its mark in a domain
name. See Energy Source Inc. v.
Your Energy Source, FA 96364
(Nat. Arb. Forum Feb. 19, 2001) (finding that the respondent
has rights and legitimate interests in the domain name where “Respondent has
persuasively shown that the domain name is comprised of generic and/or
descriptive terms, and, in any event, is
not exclusively associated with Complainant’s business”)(Emphasis added); see
also Tough Traveler, Ltd. v. Kelty Pack, Inc, D2000-0783 (WIPO Sept. 28,
2000) (finding that the respondent had a legitimate interest in the domain
name, <kidcarrier.com>, as a generic term for a class of products that
the respondent sells).
The
Panel finds that Complainant failed to satisfy the elements of ICANN Policy ¶
4(a)(ii).
Complainant contends that
Respondent offered to sell the <sitewatch.com> domain name to
Complainant for the amount of $3,990. Complainant
asks the Panel to find that Respondent registered the disputed domain name with
the intent of selling the domain name for an amount in excess of Respondent’s
out-of-pocket costs. This would
constitute evidence of bad faith registration and use under Policy ¶ 4(b)(i) as Complainant asserts.
See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent
registered and was using the <gwbakeries.mobi> domain name in bad faith
according to Policy ¶ 4(b)(i) where it offered it for sale for far more than
its estimated out-of-pocket costs it incurred in initially registering the
disputed domain name); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the
respondent’s offer to sell the domain name for $2,000 sufficient evidence of
bad faith registration and use under Policy ¶ 4(b)(i)).
However,
Respondent asserted that its offer was in Response to Complainant’s prior offer
and this puts in issue the circumstances around Respondent’s offer to sell the
domain name. Respondent maintains
that Complainant was the first to inquire about the possibility of purchasing
the <sitewatch.com> domain name.
The Panel finds that the evidence to support the parties’ contentions on
this issue is evenly divided. As a
result, coupled with the documentary evidence that Respondent registered the
domain name prior to Complainant’s registration of the mark, the dispute over
who sought to sell to whom supports a finding by the Panel that a showing that
a Respondent made a mere response to a Complainant’s offer to buy, will not,
standing alone support findings that Respondent registered the disputed domain
name in bad faith under Policy ¶ 4(b)(i). See JCM
Germany GmbH v. McClatchey Jr.,
D2004-0538 (WIPO Sept. 17, 2004) (holding that the respondent did
not violate Policy ¶ 4(b)(i) by attempting to sell the disputed domain name for
profit because the respondent did not register the domain name with the intent
to sell it to the complainant or one of its competitors); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that the
respondent was not acting in bad faith by discussing the sale of its domain
name registration when the complainant initiated an offer to purchase it from
the respondent).
Complainant contends in its Complaint and its Additional Submission that Respondent is using the <sitewatch.com> domain name to operate a website that provides sponsored links to advertisements for various commercial websites. Complainant did not show that Respondent’s manner of use competes with Complainant or that it will likely lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting website. While, as Complainant contends, such use may support findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iv), Complainant did not establish this. See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel finds that Complainant failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Although the Panel found identicality between the mark and domain name and that Complainant has rights in the mark, the Panel cannot find under the facts here that Complainant established facts to show that Respondent registered the domain name in bad faith pursuant to Policy ¶ 4(a)(iii) where Respondent has shown facts to support rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005) (“Respondent's rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), allow a finding that there was no bad faith registration or use under Policy ¶ 4(a)(iii).”); see also Pensacola Christian Coll. v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001) (“Because the Panel has found that Respondent has rights and interests in respect of [sic] the domain name at issue, there is no need to decide the issue of bad faith.”).
The Panel finds that Complainant did not show that Respondent acted in bad faith in registering and using the <sitewatch.com> domain name under Policy ¶ 4(a)(iii).
DECISION
Complainant having failed to establish two of the three elements
required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <sitewatch.com> domain name NOT be TRANSFERRED
from Respondent to Complainant or CANCELLED.
Hon. Carolyn Marks
Johnson, Panelist
Dated: October 9, 2008.
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