Specialty Publishing Company v. Jeffrey O. Smith
Claim Number: FA1202001431399
Complainant is Specialty Publishing Company (“Complainant”), represented by David Smedley, Esquire, Illinois, USA. Respondent is Jeffrey O. Smith (“Respondent”), represented by Gwen I. Walraven, Esquire of Bell Nunnally & Martin, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <connectedworld.com>, registered with GoDaddy.com, LLC.
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.
M. Kelly Tillery, Esquire as Panelist and Chair.
David H. Bernstein, Esquire as Panelist.
David A. Einhorn, Esquire as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 24, 2012; the National Arbitration Forum received payment on February 24, 2012.
On February 27, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <connectedworld.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@connectedworld.com. Also on March 2, 2012, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 22, 2012.
Complainant’s Additional Submission was received on March 27, 2012 and deemed compliant with Supplemental Rule 7.
Respondent’s Supplemental Submission was received on April 2, 2012 and deemed compliant with Supplemental Rule 7.
On April 3, 2012, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed M. Kelly Tillery, Esquire, as Panelist and Chair, and David H. Bernstein, Esquire and David A. Einhorn, Esquire as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant Claims
B. Respondent Claims
1. Respondent registered the <connectedworld.com> domain name on June 2, 2011.
2. The <connectedworld.com> domain name is comprised of descriptive and/or generic terms.
3. Respondent has been preparing to use the <connectedworld.com> domain name to operate a community social network for eldercare, which Respondent has been researching and preparing since 2008.
4. Respondent purchased the disputed domain name for $7,100.00.
5. Respondent did not list the disputed domain name for sale and believes that GoDaddy.com and BuyDomains.com are listing the domain name for sale without Respondent’s permission.
Additional Submissions
C. Complainant Contends
1. Respondent does not provide sufficient evidence that it has made demonstrable preparations to use the <connectedworld.com> domain name in connection with a legitimate business.
2. Respondent had actual knowledge of Complainant’s rights in the CONNECTED WORLD mark.
3. Respondent purchased the disputed domain name on the same day that Complainant’s mark registered with the USPTO.
D. Respondent Contends
1. Respondent has shown demonstrable preparations to use the domain name since 2008, long before Respondent actually acquired the domain name.
2. Respondent never intended or attempted to sell the domain name.
3. Complainant’s mark is limited to protect only certain uses, and Respondent’s community social network for eldercare is beyond its scope.
1) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s Domain Name is identical to a trademark in which Complainant has rights.
2) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent has no rights or legitimate interest in respect of the Domain Name.
3) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of 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."
For Complainant to obtain an order that the domain name be transferred, Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements:
(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’s CONNECTED WORLD mark is registered with the USPTO (Reg. No. 3,969,479; filed August 11, 2010; first use November 2008; registered May 31, 2011). The Panel finds that ownership of this registration is sufficient to establish Complainant’s rights in the CONNECTED WORLD mark dating back at least to the filing date, and likely to the claimed first use date of November 2008 (the Panel also noting that Respondent does not contest Complainant’s claim of first use as of November 2008). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (where complainant submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to at least the application’s filing date).
Respondent’s <connectedworld.com> domain name wholly incorporates Complainant’s CONNECTED WORLD mark. The Panel concludes that the removal of a space and the addition of the generic top-level domain (“gTLD”) does not avoid a finding under the Policy that the domain name is identical to the Complainant’s trademark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark).
Accordingly, the Panel concludes that Respondent’s <connectedworld.com> domain name is identical to Complainant’s CONNECTED WORLD mark pursuant to Policy ¶ 4(a)(i)
As numerous other panels have explained, because it is difficult to prove a negative, to prevail under the second factor of the Policy, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Thereafter, the burden of production shifts to Respondent to come forward with some evidence showing that it does have rights or legitimate interests (although the burden of proof always remains on the Complainant). 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 of production 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.”).
Paragraph 4(c) of the Policy instructs the Panel that Respondent’s rights or legitimate interests to the domain name shall be demonstrated if any of the following conditions are satisfied:
(i) before any notice to Respondent of the dispute, Respondent used, or demonstrated preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant has adequately established a prima facie case that none of these criteria have been met, and Respondent has not come forward with sufficient evidence to establish these or any other basis for demonstrating his rights or legitimate interests in the <connectedworld.com> domain name.
Complainant argues that Respondent chose the <connectedworld.com> domain name for the sole purpose of selling the domain name and has the disputed domain name parked with GoDaddy. In response, Respondent asserts that he intended to use the disputed domain name for an elder care social network. Although Respondent has submitted evidence showing that he has considered such a network as far back as 2008, Respondent has not submitted any evidence to establish, or even suggest, that Respondent has made demonstrable preparations to launch such an elder care social network under this specific domain name. Of the evidence that Respondent does provide, Complainant claims that Respondent’s e-mail communication and subsequent kit purchase from Greengoose.com occurred after Complainant informed Respondent that Respondent was violating Complainant’s trademark rights, and thus this evidence cannot establish demonstrable preparations prior to the dispute. Complainant also claims that the passage of time without any activity is further evidence that Respondent never intended to make a legitimate use of the disputed domain name.
Respondent’s June 1, 2011 e-mail to the Complainant further undercuts Respondent’s argument that preparations were under way to use the domain name in connection with a bona fide offering of services. In that e-mail, Respondent told Complainant (whom Respondent knew owned the trademark CONNECTED WORLD) “By the way – I had the opportunity to pick up the domain name [<connectedworld.com>] so I did. I didn’t have an agenda just saw it available and picked it up before someone else did.” Respondent’s contemporaneous concession that he did not have “an agenda” undermines any subsequent claim that he acquired this domain name with the agenda of using it for the elder care social network that he had been considering during the prior three years. The Panel therefore finds that Complainant has shown, by a preponderance of the available evidence, that Respondent did not make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services according to Policy ¶ 4(c)(i). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (when respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint).
Additionally, Paragraph 4(c)(ii) does not apply because there is no evidence that Respondent has ever been known by, or affiliated with, the CONNECTED WORLD mark, and Paragraph 4(c)(iii) does not apply because there is no evidence that Respondent is making a legitimate noncommercial or fair use of the domain name.
In conclusion, the Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent has no rights or legitimate interest in respect of the domain name.
Paragraph 4(b)(i) of the Policy instructs the Panel to find that Respondent's registration and use of the disputed domain name was in bad faith if “circumstances indicate that Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant.”
It cannot seriously be disputed that Respondent was aware of Complainant's rights in the CONNECTED WORLD mark prior to his registration of the disputed domain name. Respondent’s company advertised with Complainant, Respondent participated in Complainant’s 2011 conference, and Respondent expressly thought to tell Complainant about Respondent’s registration of the domain name immediately upon his acquisition of the name. The fact that Respondent immediately e-mailed this news to Complainant on June 1, 2011 is itself powerful evidence that supports the inference that Respondent registered the domain name in bad faith with the intention of selling it to Complainant at a profit. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware of the complainant's YAHOO! mark at the time of registration”); see also Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).
Respondent’s subsequent e-mails with the Complainant further support the inference that Respondent purchased and registered the domain name in bad faith. In several follow-up e-mails, Respondent informed Complainant that Respondent had been contacted by several people since Respondent bought the domain name (June 22, 2011 e-mail), that Respondent has sold domain names in the past (February 21, 2012 e-mail), that Respondent received a quarter of a million dollars for the sale of <memorial.com> (February 21, 2012), and that “Almost everything is for sale, we are just negotiating a price” (February 21, 2012). These statements seemed designed to imply that the Respondent was offering to sell the domain name to the Complainant. Respondent’s contentions to the contrary are simply not credible. For all these reasons, the Panel concludes that Respondent registered the disputed domain name in bad faith and used the domain name in bad faith through its efforts to sell the domain name to the Complainant at a price in excess of his acquisition costs.
Complainant also contends that the Respondent is offering to sell the domain name online for $17,990.00. The Respondent disputes that contention and claims that he is not responsible for that offer. Because the Panel found bad faith registration and use on other grounds, the Panel need not resolve the factual issues underlying these competing contentions.
In conclusion, the Panel does not find Respondent’s claims of good faith registration and/or plans for use to be credible. In fact, Respondent’s claims in both regards appear to be completely disingenuous, after-the-fact creations, intended solely to manipulate this dispute process for Respondent’s pecuniary gain. This Panel will not countenance such misuse of this system.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <connectedworld.com> domain name be TRANSFERRED from Respondent to Complainant.
M. Kelly Tillery, Esquire, Panelist and Chair
David H. Bernstein, Esquire, Panelist
David A. Einhorn, Esquire, Panelist
Dated: April 24, 2012
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