Sears Brands, LLC v. Dann J. Flesher c/o Frick & Frack Enterprises
Claim Number: FA0906001267667
PARTIES
Complainant is Sears Brands, LLC (“Complainant”), represented by David A. Wheeler, of Greenberg Traurig, LLP, Illinois, USA. Respondent is Dann J. Flesher c/o Frick & Frack Enterprises (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <my-gofer.biz>, <my-gofer.info>, <my-gofer.net>, <mygofer.info>, and <my-gofer.org>, registered with Godaddy.com, Inc. (the “Disputed Domain Names,” in the singular or plural as the context requires).
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.
Kendall C. Reed as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 10, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 12, 2009.
On June 11, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <my-gofer.biz>, <my-gofer.info>, <my-gofer.net>, <mygofer.info>, and <my-gofer.org> domain names are registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 19, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 9, 2009 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@my-gofer.biz, postmaster@my-gofer.info, postmaster@my-gofer.net, postmaster@mygofer.info, and postmaster@my-gofer.org by e-mail.
A timely Response was received and determined to be complete on July 7, 2009.
Complainant and Respondent each filed a timely Additional Submission.
On
July 14, 2009, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the National
Arbitration Forum appointed Kendall C. Reed as Panelist.
RELIEF SOUGHT
Complainant requests that the Disputed Domain Names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant owns United States trademark registrations and pending applications for trademarks featuring the element "MYGOFER.” Two of these marks, registration numbers 3,559,110 and 3,530,939, relate respectively to: “personal delivery services, namely, delivery of goods up by bicycle, car, truck, and air,” and “online retail services featuring general merchandise, retail store services, featuring general merchandise.”
Complainant has spent several million dollars in the past several years developing and making the "MYGOFER" brand.
Complainant attached to the complaints screen-shots of a website which uses the MYGOFER mark. These screen-shots demonstrate that Complainant Offers goods for sale in at least the following categories: Food and Grocery, Health and Wellness, Beauty, Pet Food and Supplies, Baby, Entertainment, Toys and Games, Computers and Electronics, Fitness and Sports, Clothing, Shoes, Jewelry, Bed and Bath, For the Home, and Appliances.
Confusing Similarity
The only distinction between the Disputed Domain Names and Complainant’s MYGOFER mark is the use of a hyphen and the various top-level domain identifiers, which are insufficient to create a meaningful distinction.
No Right to or Interest in the Disputed Domain Names
Respondent has no trademark rights in the MYGOFER mark, and has not been authorized by complainant to use this mark.
Respondent is not at operating any bona fide business under the Disputed Domain Names, and is not making a protected non-commercial or fair use of the MYGOFER mark. Rather, Respondent is using the Disputed Domain Names to generate pay-per-click revenue with respect to goods and services competing with those of Complainant.
Bad Faith
Respondent’s registration and use of the Disputed Domain Names constitute bad faith under Policy Paragraph 4 (b)(i), 4(b)(iii), and 4(b)(iv).
Given that Respondent registered the Disputed Domain Names after Complainant filed trademark registrations for the MYGOFER mark, Respondent had, at the time of registration, at least constructive knowledge of this trademark and Complainant's rights therein. Further, Respondent had actual knowledge at that time based upon Respondent’s use of a hyphen in the Disputed Domain Names. Responding a confusingly similar domain name with either constructive or actual knowledge of a trademark, is a basis for a finding of bad faith.
Further, Respondent registered and is using the Disputed Domain Names for the purpose of attempting to attract Internet users by creating confusion as to the source and/or sponsorship of the Disputed Domain Names.
B. Respondent
Respondent agrees that: 1) he is the appropriate respondent, 2) complainant has certain trademark rights in the mark MYGOFER; 3) and that the Disputed Domain Names are confusingly similar to Complainant’s mark MYGOFER. Otherwise, Respondent disagrees with Complainant’s allegations.
Respondent points out that among the Disputed Domain Names, one, <my-gofer.org>, is active and directs to a website being used to further Respondents legitimate business (“Respondent’s Website”). Respondent directs the panel to Respondent's Website, and on this site the following statements are made, among others:
“Manage Your Performance Arts Career with My-Gofer.net
‘My-Gofer.net is the Stage / Film / TV communications arm of GNC Contract Quest. Here you can Promote your talents, Plan your future, and Manage your Present. We link you with other Talents, with current Projects, and with the Tasks you need to do today to reach tomorrow dreams.
‘With my-Gofer, your WORK PAGE becomes your personal information center. Just Check your work page on your computer, PDA, or cell phone once a day (more often if possible). A Red flag and audible alarm indicates something in one of your Projects has changed, something that specifically involves you. Click on the flag (a hot link) and you will be taken to the Project and the page in that project that requires your attention.”
Respondent asserts that Respondent's Website and Respondent's registration and use of the Disputed Domain Names were and are in furtherance of his business model, which is a "contacts site" for professionals. This business model is the subject of an issued United States patent, registration number 6,581,040 (“Respondent’s Patent”). As such, Respondent's business is completely different from Complainant's in purpose, use, application, income/buying methods, and customer base.
More generally, in selecting the Disputed Domain Names, Respondent was motivated to find a domain name that provided a memorable persona for his specific product. It was never Respondent’s intention to engage in pay for click advertising or infringe on anyone's name.
Complainant’s efforts are merely an attempt to bully its way through the ICANN process in an attempt to claim web domain names it did not acquire through legitimate means
C.
Complainant’s Additional Submission
Respondent concedes that the Disputed Domain Names are confusingly similar to Complainant's MYGOFER mark.
Respondent's United States patent number 6,581,040 (a copy of which is attached as an exhibit) relates to business processes with respect to communication and management of construction projects. Moreover, none of the terms "my-gofer.org," "my-gofer.net," "my-gofer.biz," "my-gofer.info," “mygofer.info,” or "my-gofer" is mentioned or referenced in the patent. Although respondent may hold a patent for business communication management processes related to managing communication between project managers, contractors and subcontractors, there is nothing in the record (concerning Respondent’s Patent) that establishes Respondent’s use of the Disputed Domain Names for a bona fide offering of products and services or otherwise establishes a legitimate business interests in the Disputed Domain Names.
Respondent has not provided the panel with any evidence that he is commonly known by any of the Disputed Domain Names.
Contrary to Respondent's contentions that the Disputed Domain Names are not being used for commercial gain, according to the plain language of the current <godaddy.com> parked pages to which several of the Disputed Domain Names direct, the parked Disputed Domain Names are listed for sale at <godaddy.com>.
Respondent does not contend anywhere in his response that he is making a legitimate non-commercial or fair use of the Disputed Domain Names.
D.
Respondent’s Additional Submission
Respondent concedes that the Disputed Domain Names are similar to Complainant’s MYGOFER mark. However, the respective business bases for Respondent and Complainant are completely different, with no overlap of customers or products or business operating procedures.
With respect to Complainant’s argument that Respondent is not offering bona fide goods or services, this argument is actually directed against the registrar, Go Daddy. Go Daddy is the entity that is using the parked Disputed Domain Names for click-through advertising. Respondent never did this, but such is Go Daddy’s standard procedure and is accepted practice for domain name registrars. Further, Complainant’s argument here is only directed to the parked Disputed Domain Names, and not to the active Disputed Domain Name, which is <my-gofer.org>. On this active Disputed Domain Name, no advertisements or third-party links appear.
Respondent has been using and preparing to use the Disputed Domain Names to make a bona fide offering of goods or services. Respondent has filed a patent that covers its activities on Respondent’s Website. Respondent has been working to develop it business plan for approximately two years. Respondent has also prepared a pro-forma cash flow projection.
Complainant attempts to dismiss the relevance of Respondent’s Patent by arguing that the scope is limited to the construction industry. This is not correct. The scope of Respondent’s Patent is broader than that, and it is sufficiently broad to encompass the arts and entertainment industry, which is the subject matter of Respondent’s Website.
FINDINGS
Complainant is the owner of two trademark registrations for the mark MYGOFER, United States Registrations numbers 3,559,110 and 3,530,939, for the following goods and services, respectively: “personal delivery services, namely, delivery of goods by bicycle, car, truck, and air;” “online retail services featuring general merchandise; retail store services featuring general merchandise.”
Complainant operates a website using the MYGOFER mark, and on this website Complainant offers for sale goods in the following categories:
Food and Grocery,
Health and Wellness,
Beauty,
Pet Food and Supplies,
Baby,
Entertainment,
Toys and Games,
Computers and Electronics,
Fitness and Sports,
Clothing,
Shoes,
Jewelry,
Bed and Bath,
For the Home, and
Appliances.
Respondent registered the Disputed Domain Names, and each of them:
<my-gofer.biz>,
<my-gofer.info>,
<my-gofer.net>,
<mygofer.info>, and
<my-gofer.org>.
Each of the Disputed Domain Names, except <my-gofer.org>, is parked to a Go
Daddy parkinng facitily.
The active Disputed Domain Name, <my-gofer.org>, resolves to Respondent’s Website which is
directed to those in the arts and movie industries. The following language, inter allia,
appears on Respondent’s Website:
“Manage Your Performance Arts Career with My-Gofer.net
‘My-Gofer.net is the Stage / Film / TV communications arm of GNC Contract Quest. Here you can Promote your talents, Plan your future, and Manage your Present. We link you with other Talents, with current Projects, and with the Tasks you need to do today to reach tomorrow dreams.
‘With my-Gofer, your WORK PAGE becomes your personal information center. Just Check your work page on your computer, PDA, or cell phone once a day (more often if possible). A Red flag and audible alarm indicates something in one of your Projects has changed, something that specifically involves you. Click on the flag (a hot link) and you will be taken to the Project and the page in that project that requires your attention.”
Respondent is one of the inventors of United States Patent number 6,581,040, issued June 17, 2003, entitled “Project Specific Communications System and Method.”
Respondent has been preparing a business plan for his business based on said patent for at least two years.
The Disputed Domain Names are confusingly similar to Complainant’s mark MYGOFER.
Respondent has a legitimate interest in respect to the Disputed Domain Names.
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.
Respondent agrees that the Disputed Domain Names are confusingly similar to Complainant's MYGOFER trademark.
As such, this element of the Policy is established.
The primary issue in this action is whether Respondent’s use of the Disputed Domain Names falls within the scope of Policy Paragraph 4(c)(i). It is clear to this Panel, and the Respondent has not argued otherwise, that Policy Paragraphs 4(c)(ii) and 4(c)(iii) do not apply, as Respondent is not commonly known by the Disputed Domain Names, and Respondent is not making a noncommercial or fair use of the Disputed Domain Names.
Policy Paragraph 4(c)(i) reads as follows:
"before any notice to you of the dispute, your use of, or demonstrable preparation to use, the domain name or any name corresponding to the domain name in connection with the bona fide offering of goods or services…"
This Paragraph contains three primary elements relevant for the present action, to wit: 1) use or preparation to use the Disputed Domain Names; and 2) such use in connection with a bona fide offering of goods or services, and 3) such use began before notice to a respondent of the dispute.
In analyzing these issues, a complainant is obligated to make a prima facie case, and if this burden is carried, then the burden shifts to a respondent to rebut that prima facie case. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
A number of panels, including this one, have previously found the use of confusingly similar domain name by a respondent for the purpose of competing with a complainant is not a use in connection with a bona fide offering of goods or services. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). One variant of such a competing use is to use a disputed domain name for the purpose of generating click-through advertising. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
On the other hand,
where a respondent is operating or preparing to operate a non-competitive business,
then the use of a confusingly similar domain name has been upheld. See David
J. Joseph Co. v. Barry, D2000-1418 (WIPO Jan. 2, 2001) (finding the
respondent provided substantial evidence of his demonstrable preparations to
use the domain name with a business involving the sale of scrap materials prior
to receiving notice of the present dispute); see also Etax Corp. v. Whiting,
AF-0369 (eResolution Oct. 15, 2000) (finding rights and legitimate interests
where the respondent consulted extensively with his business partner,
incorporated a company, and contacted a web designer); see also Warm Things,
Inc. v. Weiss, D2002-0085 (WIPO Apr.
18, 2002) (finding that the respondent was making a bona fide offering
of goods or services at the <warmthings.com> domain name as the
respondent was operating in a field unrelated to the complainant or its
products).
In the present action, this Panel is persuaded that Respondent is using and is preparing to use the Disputed Domain Names in connection with the offering of bona fide services. Respondent has demonstrated a number of actions taken by it in preparation for its business operations. Respondent has prepared a business plan. Respondent is operating Respondent’s Website. Additionally, Respondent has obtained a patent that Respondent believes covers the method of communication and project management embodied in Respondent’s Website.
Furthermore, Respondent and Complaint are not competitors. Complaint is in the business of offering delivery services and retail merchandise, presumably together and separately. Respondent is in the business of offering organizational services for individuals and businesses involved in the entertainment space.
Complainant argues that Respondent’s Patent cannot be evidence of use or any demonstrable preparation to use the Disputed Domain Names in connection with a bona fide offering or services. Complainant argues that the scope of Respondent’s Patent is restricted to the construction industry, which is not the subject of Respondent’s Website (being directed to the entertainment business), and further, that Respondent’s Patent does not mention any of the Disputed Domain Names. Whereas this Panel is not prepared to determine the exact scope of Respondent’s Patent, as such a determination is beyond the scope of the Policy, this Panel is generally aware that the scope of a patent grant is broader than the specifications, and it is within the specifications of Respondent’s Patent that the discussion about the management of projects in the construction industry appears. It is this Panel’s understanding that the scope of a patent grant is more closely linked to the patent claims, and the claims of Respondent’s Patent includes a general description about the use of the internet for the purpose of project management (in various configurations). What is important for this Panel in this present action is that the scope of Respondent’s Patent are not so far afield from Respondent’s activities as to discount Respondent’s Patent as evidence of preparation for purposes of the Policy.
Complainant argues that several of the Disputed Domain Names (all but one) are parked, and that these parked Disputed Domain Names are being used to generate click-through revenues, which is evidence against a finding of a bona fide offering of goods or services. As noted above, Complainant is correct that the use of a confusingly similar domain name to generate click-though revenues can preclude a finding of a bona fide offering of goods or services. See also Yahoo! Inc., et al. v. Chan, FA 162050 (Nat. Arb. Forum July 16, 2003) (directing Internet users to a competitor’s website and bombarding them with advertisements is not legitimate, noncommercial, or fair use). However, such administrative actions tend to lack evidence of any other use (other than the click-through advertising activities) that could constitute a bona fide offering of goods or services. In the present action, and as noted above, Respondent presents evidence about another acceptable use; this other acceptable use is the holding (parking) of these Disputed Domain Names in preparation for use in the course of a non-competing Internet business.
Complainant also argues that with respect to the parked Disputed Domain Names that competition does exist between Respondent’s use of the parked Disputed Domain Names and Complainant’s business and that this precludes a finding that these Disputed Domain Names are being used in connection with a bona fide offering of goods or services. This Panel does find on the screen-shot of the Go Daddy parking pages (for the parked Disputed Domain Names) a possible point of competition. This possibility consists of a block advertisement (among eight on the page), that relates to something called “Go Daddy Marketplace,” and the advertising slogan at this point on the page claims, “From ATV Parts to Toys, We’ve Got It All!” However, and again, the administrative actions that find fault with competitive uses of a confusingly similar disputed domain name tend to lack evidence about another acceptable use, which, as noted, this Panel does find in this action.
Complainant argues that the parked Disputed Domain Names are offered for sale, and this precludes a finding that they are being used to make a bona fide offering of goods or services (being classic cyber-squatting). In support of this proposition, Complainant directs this Panel’s attention to a screen-shot for a Go Daddy Website page that exhibits the caption “Domain Buy Service – Your chance to get the domain you want – even if it’s taken!” However, the content of this screen-shot makes it clear that this is an offer to engage Go Daddy’s services to obtain domain names, if possible. This Panel is not persuaded that this an actual offer by Respondent, as opposed to a generalized offer by Go Daddy to engage it to seek an offer from the registrant of the parked domain names, that in this instance happen to be the parked Disputed Domain Names.
Turning to the noted third element of Policy Paragraph 4(c)(i) (a respondent’s use must have begun before notice of the dispute), no evidence on this point is presented by Complainant, and as such, Complainant has not maintained its burden as to this issue.
As such, Respondent has sustained it burden of demonstrating that it does have a legitimate interest in the Disputed Domain Names for purposes of the Policy.
It is not necessary to consider the issue of bad faith as one element of the policy has not been established, and the Policy requires that all three elements be established. See Policy Paragraph 4(a).
REVERSE BAD FAITH
Respondent raises the issue of reverse bad faith. Respondent argues that Complainant’s efforts are merely an attempt to bully its way through the ICANN process in an attempt to claim web domain names it did not acquire through legitimate means. However, this Panel is not persuaded that Complainant’s claim is in bad faith. The high degree of similarity between the Disputed Domain Names and Complaint’s MYGOFER mark (actual identicality in the case of <mygofer.info>) and the colorable arguments with respect to the parked Disputed Domain Names leads this Panel to conclude that the claim was not brought in bad faith.
DECISION
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Kendall C. Reed,
Panelist
Dated: July 28, 2009
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