Quirk Productions, Inc. v. TobyClements.com, LLC / Toby Clements
Claim Number: FA1305001499556
Complainant is Quirk Productions, Inc. (“Complainant”), represented by Daniel B. Markind, Pennsylvania, USA. Respondent is TobyClements.com, LLC / Toby Clements (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <quirk.com>, registered with ENOM, INC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Flip Jan Claude Petillion (Chair), David A. Einhorn and Honorable Bruce E. Meyerson, Esq. as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 13, 2013; the National Arbitration Forum received payment on May 13, 2013.
On May 14, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <quirk.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 2013 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@quirk.com. Also on May 15, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 June 4, 2013.
On June 10, 2013, a timely Additional Submission was received from Complainant and determined to be complete.
On June 17, 2013, a timely Additional Submission was received from Respondent and determined to be complete.
On June 21, 2013, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Flip Jan Claude Petillion, David A. Einhorn and Honorable Bruce E. Meyerson, Esq as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends the following:
a) Complainant has rights in the QUIRK mark. Complainant is the owner of the QUIRK & Design mark (Reg. No. 2,856,317 registered June 22, 2004) registration with the United States Patent and Trademark Office (“USPTO”). See Complainant’s Exhibit A. The mark was first used in commerce in 2001, and has since been used in connection with goods and services related to fiction and nonfiction books, activity books, calendars, stationery, education, and entertainment, namely production of shows, movies, and audiovisual programs, as well as a variety of related goods and services.
b) The <quirk.com> domain name is identical to Complainant’s QUIRK mark.
c) Respondent has not been commonly known by the disputed domain name, and Respondent has not otherwise acquired a trademark or service mark rights. The QUIRK mark is not the name of “TobyClements.com.”
d) Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent resolves the <quirk.com> domain name to a website which purports to be a video sharing community. The disputed domain name is not actually being used for a bona fide offering of goods or services or a legitimate noncommercial or fair use, but rather has been set up to appear as if there is a such a purpose to the website so that Respondent may defeat any challenges to its legitimacy.
e) Respondent’s only purpose in registering the <quirk.com> domain name was to sell the domain name for a large profit. On January 3, 2013, just prior to sending the cease and desist letter to Respondent on January 9, 2013, Complainant was contacted by the then-owner of the <quirk.com> domain name who stated that he/she knew that Complainant owned <quirkbooks.com> and believed that Complainant would be interested in buying the <quirk.com> domain name. The seller stated that he/she had no interest in developing the domain name. The seller noted that the offer was being made to several potential buyers, and the first to agree to pay $35,000 would get the <quirk.com> domain name. Complainant believes that Respondent was the seller in this exchange. The seller admitted to contacting Complainant due to its ownership of a similar domain name incorporating the QUIRK mark. Additionally, the <quirk.com> domain name has been listed for public sale this year. Respondent is in the business of acquiring domain names for resale and brokering the sale of domain names.
f) Respondent is a serial cybersquatter who attempts to outsmart the cybersquatting laws by creating an appearance that it does not register and acquire domain names in bad faith.
g) Respondent has purposefully registered the <quirk.com> domain name to prevent Complainant from reflecting its mark in a domain name.
h) At the time the <quirk.com> domain name was registered, the QUIRK mark was already registered, thus providing Respondent with notice of Complainant’s rights in the mark.
B. Respondent
Respondent contends the following:
a) The present dispute concerns a dictionary word referring to things that are unusual, peculiar, or offbeat. The term “quirk” alone is neither exclusive nor distinctive of Complainant. The term “quirk” is incorporated in some 17 pending and registered U.S. marks for a variety of goods and services.
b) Complainant has been harassing the owner of the <quirk.com> domain name since 2005, and multiple instances of Complainant’s breach of agreement to purchase the disputed domain name caused the owner of the <quirk.com> domain name to assign an agent, TobyClements.com LLC, for the purpose of receiving correspondence for the <quirk.com> domain name.
c) The <quirk.com> domain name has been legitimately used by Michele Wilson d/b/a Exotic Design Group (“EDG”) since 2004, and continues to be used for the same purpose as it has been for several years.
d) Complainant’s rights in the QUIRK mark are minimal. One of the registrations for the mark was acquired years after Complainant had been interacting with Respondent regarding the purchase of the disputed domain name. While Complainant’s other registration does predate the registration of the <quirk.com> domain name, Complainant fails to substantiate its first use in commerce, claimed date of 2001, and does not allege prior common law rights.
e) Complainant does not make any arguments that the <quirk.com> domain name is used in connection with any goods or services listed in Complainant’s trademark registration.
f) The <quirk.com> domain name is one of several video sharing websites operated by Respondent, including <robottv.com>, <bestviralvideos.com>, <mysunsets.com>, <pokervideos.com>, <ujoke.com>, and <ufunny.com>. See Respondent’s Exhibit C. The <quirk.com> domain name allows registered users to share videos of things the users find to be “quirky,” and is subdivided into categories.
g) Respondent first acquired the <quirk.com> domain name for $4,000 in 2004. Prior to the notification of the dispute, Respondent made substantial investment in developing the <quirk.com> domain name as a video sharing website. Since 2005, Complainant has repeatedly been badgering Respondent about selling the domain name, at one point in 2011 accepting an offer to sell the domain name for $85,000 before attempting to revoke. Complainant also breached a 2012 agreement to purchase the disputed domain name for $21,250. Dictionary words command a high asking price when being sold for their expansive potential purpose. The offer for sale that Complainant recounts was with a Kabnir Rawat, and Complainant makes no assertions that either TobyClements.com LLC or EDG authorized Mr. Rawat. In fact, Mr. Rawat is a swindler in the domain name market, who falsely claims to be authorized by a domain registrant, attempts to negotiate a deal to sell a domain name, and then only contacts the actual domain registrant in order to propose a reduced price to purchase the domain name.
h) Respondent did not attempt to prevent Complainant from registering its mark in a domain name. Respondent did not know of Complainant’s company when the <quirk.com> domain name was registered, and Complainant stated, “We obviously don’t need it,” in reference to the <quirk.com> domain name in a communication with Respondent, continuing to note that Complainant had done well without it for over ten years.
i) Complainant has never raised a disruption argument over the course of a decade. In fact, Complainant has concealed from the Panel Complainant’s own admissions that Respondent’s use of the disputed domain name is not disrupting Complainant’s business, diverting its customers, or infringing its claimed mark.
j) Complainant knows that Respondent was unaware of Complainant at the time of the <quirk.com> domain name’s registration. Complainant had to explain its business when it first contacted Respondent in 2005.
C. Additional Submissions
Complainant’s Additional Submission
In its Additional Submission, Complainant contends the following:
a) Complainant had both common law and statutory trademark rights to the QUIRK marks. Complainant’s first use of the QUIRK mark in commerce is confirmed in an affidavit of Complainant’s President, Brett Cohen. See Complainant’s Additional Submission Exhibit E.
b) Respondent’s hosting of multiple video sharing websites supports Complainant’s claim that Respondent could easily have transferred the content to the <quirk.com> domain name for the purpose of creating a shield against disputes by appearing to be used for either a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent fails to attach an archive to demonstrate that this use was not catalyzed by receiving the cease and desist letter.
c) Complainant never reached a binding agreement with Respondent as to the purchase of the disputed domain name. Whenever Complainant was near reaching a binding agreement, Respondent would impose additional conditions to the deal. The agreements that Respondent mentioned were never final, and Respondent fails to mention the related communications following the possible deals that caused them to fall apart, such as new conditions being imposed.
d) Respondent has a pattern of cybersquatting on trademarks.
a. Respondent did not deny that it is the owner of numerous domain names.
b. Two previous WIPO decisions have held that EDG is a cybersquatter, based on its registration of a trademark of Gateway, Inc. and a trademark of the National Football League, where EDG waited for these companies to make an offer to purchase the domains. See Nat’l Football League v. Exotic Design Grp, D2007-1000 (WIPO Sep. 6, 2007); see also Gateway Inc v. Exotic Design Grp., D2008-0051 (WIPO Feb. 29, 2008).
e) Complainant reiterates Respondent’s actual and constructive knowledge of Complainant’s rights in the QUIRK mark. Respondent asked Complainant what type of books Complainant sold as a way to cover up its knowledge of Complainant’s rights in the QUIRK mark. Obviously, intent on selling the domain name to Complainant, Respondent would not have admitted to knowing of Complainant previously.
Respondent’s Additional Submission
In its Additional Submission, Respondent contends the following:
a) Complainant addresses no information in its Additional Submission that could not have been raised in its Complaint, and thus the supplement is unwarranted.
b) Complainant seems to accept the proposed joinder of Respondents.
c) Complainant attempts to establish that Respondent is a cybersquatter by referencing two prior UDRP decisions. However, Complainant fails to note that Respondent is the owner of several thousand domain names, only two of which have been disputed, and one of those two was transferred with the uncontested consent of Respondent. Complainant itself has been sued for copyright infringement by no less than NBC Studios, Jay Leno, Rita Runder et al. in the U.S. District Court for the Central District of California. See Respondent’s Additional Submission Exhibit A. Respondent need not repetitively deny being a cybersquatter in order to avoid such a finding by the Panel merely because Complainant repeats the argument numerous times over.
d) The additional terms Complainant claims that Respondent imposed before completing the previous sales of the disputed domain name was simply to post the transaction to <escrow.com>, and this condition was accepted by Complainant prior to Complainant’s acceptance of the sale offers. Complainant is attempting to resolve contract disputes through the UDRP which is the wrong forum. Respondent retains a claim to be compensated for Complainant’s breach of contract. Respondent is well within the statute of limitations.
e) Respondent reiterates the characterization of the QUIRK mark and <quirk.com> domain name as nothing more than a dictionary term and re-asserts that Complainant fails to demonstrate the limitations on the use of the QUIRK mark by other individuals. Complainant attempts to expand its mark by stating that it is in the market of video production, but its videos are simply trailers and commercials for its books. Such use in advertising does not create trademark rights in the market of video production.
Complainant is a publisher of books. Complainant shows to be the holder of the following trademarks, which it uses in connection with its book publishing business:
- QUIRK & Design mark (Reg. No. 2,856,317 registered June 22, 2004) registration with the USPTO. See Complainant’s Exhibit A.
- QUIRK, word mark (Reg. No. 4,037,242 registered October 11, 2011) registered with the USPTO. See Complainant’ Exhibit B.
The Complainant advertises its services through the domain name <quirkbooks.com>.
The disputed domain name, <quirk.com>, is registered since July 29, 2004. The disputed domain name currently resolves to a video sharing website.
Between 2005 and 2012, Complainant approached Respondent in view of purchasing the disputed domain name. Complainant ultimately offered up to USD 85,000 for the disputed domain name. On January 3, 2013, Complainant was contacted by a certain Mr. Kabnir Rawat, claiming to offer the disputed domain for sale. The disputed domain name is offered for public sale on <sedo.com>.
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
Respondent asserts that Complainant is attempting to make the Panel resolve a breach of contract dispute between Complainant and Respondent by having the Panel transfer the disputed domain name to Complainant, thereby satisfying Respondent’s obligation under the contract while allowing Complainant’s breach to remain unremedied. Respondent asserts that Complainant accepted two different offers to purchase the domain name, one for $21,250 and one for $85,000, having already consented to all terms and conditions of the sale, but later refused to pay Respondent. Respondent further argues that Complainant consciously hid these sordid past dealings in an attempt to mislead the Panel into believing that nothing more than a normal UDRP dispute had arisen.
Complainant asserts that it was merely in negotiations with Respondent, and whenever the parties were reaching a deal Respondent would impose new conditions on the contract. Complainant asserts that a binding obligation was never made.
According to the Panel, such business/contractual dispute between two companies falls outside the scope of the UDRP (See Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005), where the panel held that complex trademark issues and contractual issues must be brought before a competent court and are not to be dealt with in the framework of administrative proceedings in the framework of the UDRP).
The fact that a business/contractual dispute may exist, however, does not necessarily discharge the Panel from proceeding with its analysis under the UDRP. The administrative decision does not prevent parties to bring their contractual dispute before a competent court. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”); see also Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO Mar. 14, 2000) (“This Panel well recognizes that its jurisdiction is limited to providing a remedy in cases of ‘the abusive registration of domain names,’ or ‘Cybersquatting’ ... Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”).
Therefore, the Panel decided to proceed with its analysis under the UDRP.
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."
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; and
(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 contends that it has rights in the QUIRK mark. Complainant proves to be the holder of the following trademarks:
- QUIRK & Design mark (Reg. No. 2,856,317 registered June 22, 2004) registration with the USPTO. See Complainant’s Exhibit A.
- QUIRK, word mark (Reg. No. 4,037,242 registered October 11, 2011) registered with the USPTO. See Complainant’ Exhibit B.
Complainant notes that is using the mark in connection with goods and services related to fiction and nonfiction books, activity books, calendars, stationery, education, and entertainment, namely production of shows, movies, and audiovisual programs, as well as a variety of related goods and services. Panels have found that registration of a mark with a federal trademark authority is sufficient to establish rights under Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Therefore, the Panel finds that Complainant has rights in the QUIRK mark under Policy ¶ 4(a)(i).
Complainant next alleges that the <quirk.com> domain name is identical to its QUIRK marks. The fact that the disputed domain name does not incorporate the design of Complainant’s QUIRK & Design mark is irrelevant, as such designs are impossible to incorporate in a domain name. See Roux Labs., Inc. v. Sheldeez Beauty Salon, D2005-0799 (WIPO Sept. 30, 2005) (“The fact that Complainant’s stylized mark incorporates a distinctive design element is irrelevant to this analysis. Since a domain name can only consist of alphanumeric text, design elements are ignored when considering this element.”). The addition of the generic top-level domain (“gTLD”) “.com” to the QUIRK mark is also of no relevance. Previous panels have found this change to have no bearing on a Policy ¶ 4(a)(i) analysis. See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to the complainant's registered trademark GAY GAMES).
Therefore, the Panel finds that Respondent’s <quirk.com> domain name is identical to Complainant’s QUIRK mark pursuant to Policy ¶ 4(a)(i).
Additional factors, such as the question of whether or not Complainant had common law trademark rights or the fact that the disputed domain name is comprised of a common and generic term are also of no relevance in determining the identity or confusing similarity under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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.”).
Complainant asserts that Respondent has not been commonly known by the disputed domain name, and Respondent has not otherwise acquired trademark or service mark rights. Complainant argues that “TobyClements.com” has not been commonly known by the QUIRK mark. The Panel notes that the WHOIS record for the <quirk.com> domain name lists “TobyClements.com, LLC / Toby Clements” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the <quirk.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant next alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant argues that Respondent resolves the <quirk.com> domain name to a website which purports to be a video sharing community. Complainant contends that the disputed domain name is not actually being used for a bona fide offering of goods or services or a legitimate noncommercial or fair use, but rather has been set up to appear as if there is a such a purpose to the website so that Respondent may defeat any challenges to its legitimacy. In its Additional Submission, Complainant argues that Respondent’s hosting of multiple video sharing websites supports Complainant’s claim that Respondent could easily have transferred the content to the <quirk.com> domain name for the purpose of creating a shield against disputes by appearing to be used for either a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant further states that Respondent fails to attach an archive to demonstrate that this use was not catalyzed by receiving an offer to buy the disputed domain name or by adverse UDRP decisions in other cases involving Exotic Design Group, an entity to which Respondent claims to be providing services.
Respondent contends that the <quirk.com> domain name has been legitimately used by Michele Wilson d/b/a Exotic Design Group (“EDG”) since 2004. Respondent argues that Complainant has been harassing EDG about the <quirk.com> domain name since 2005, and multiple instances of Complainant’s breach of agreement to purchase the disputed domain name caused EDG to assign an agent, TobyClements.com LLC, for the purpose of receiving correspondence for the <quirk.com> domain name. Respondent does note in its Additional Submission that Complainant’s Additional Submission addresses Respondents jointly, thus demonstrating Complainant’s acceptance of the joinder. The Panel indeed observed evidence of concerted action between Respondent and EDG in relation to the disputed domain name. Therefore, the Panel considers the use by EDG prior to TobyClements.com LLC acquiring the disputed domain name also relevant.
Respondent asserts that the disputed domain name has been legitimately used since 2004, and continues to be used legitimately. Respondent argues that the <quirk.com> domain name is one of several video sharing websites operated by Respondent, including <robottv.com>, <bestviralvideos.com>, <mysunsets.com>, <pokervideos.com>, <ujoke.com>, and <ufunny.com>. See Respondent’s Exhibit C. Respondent notes that the <quirk.com> domain name allows registered users to share videos of things the users find to be “quirky,” and is subdivided into categories. Respondent also argues that the term of the <quirk.com> domain name is common and generic, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet. Respondent argues that quirk is a dictionary term referring to things that are unusual, peculiar, or offbeat. Respondent asserts that the term “quirk” alone is neither exclusive nor distinctive of Complainant, and that the term “quirk” is incorporated in some 17 pending and registered U.S. marks for a variety of goods and services. Respondent argues that Complainant fails to demonstrate the limitations on the use of the QUIRK mark by other individuals. Finally, Respondent contends Complainant does not make any arguments that the <quirk.com> domain name is used in connection with any goods or services listed in Complainant’s trademark registration. In any event, Complainant cannot expand its trademark protection by stating that it is in the market of video production, while it is only producing some videos that are trailers and commercials for its books, according to Respondent.
The Panel indeed notes “quirk” is a dictionary term and that Complainant does not make any arguments that the disputed domain name is used in connection with any goods or services listed in Complainant’s trademark registration. Nevertheless, the Panel notes that Complainant’s QUIRK & Design mark is registered for “education and entertainment, namely, production of shows, movies and audiovisual programs featuring fictionalized and reality-based situations presented in an educational and entertaining way and distributed via the global computer information network […]”. Complainant’s QUIRK word mark is registered inter alia for “education and entertainment services in the nature of an interactive web site that features book recommendations, online games, and quotes and trivia relating thereto; production of DVDs, featuring science fiction”.
In such circumstances, the Panel is of the opinion that it could only decide that the video sharing services offered by Respondent are a bona fide use of the disputed domain name, to the extent that such use is not infringing Complainant’s trademark rights. The Panel considers that the assessment of a possible trademark infringement is beyond the scope of these proceedings.
As a result, the Panel finds that on the facts there is a serious question to be tried as to whether the Respondent does have rights or legitimate interests in the name. That question needs to be brought in an appropriate forum. So far as this Complaint is concerned, the Panel holds that the Complainant has not discharged its onus to show that the Respondent has no legitimate interests in the disputed domain name and so decides that the Complainant has failed to satisfy the second element in Paragraph 4(a) of the Policy. See Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005), where the panel held that complex trademark issues and contractual issues must be brought before a competent court and are not to be dealt with in the framework of administrative proceedings in the framework of the UDRP, but that such does not discharge the Complainant from its onus to show that Respondent has no legitimate interests in the disputed domain name).
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith (See e.g. Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Ltd. v. Lektronix Ltd., WIPO Case No. D2006‑1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith are the acquisition of the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name or the registration and use is the use of a domain name to intentionally attempted to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location.
Respondent argues that it first acquired the <quirk.com> domain name for $4,000 in 2004. Respondent notes that, prior to the notification of the dispute, Respondent made substantial investment in developing the <quirk.com> domain name as a video sharing website. Respondent argues that, since 2005, Complainant has repeatedly contacted Respondent with the request to sell the disputed domain name, at one point in 2011 accepting an offer to sell the domain name for $85,000 before attempting to revoke. The offer for sale that was expressed later by a certain Kabnir Rawat and to which Complainant is referring was not expressed on behalf of either TobyClements.com LLC or EDG.
Complainant contends that the <quirk.com> domain name has been listed for public sale as of this year. Complainant argues that Respondent is in the business of acquiring domain names for the purpose of resale and brokering.
This is not disputed by Respondent, who contends that the disputed domain name is comprised of a dictionary word, which justifies a high asking price when being sold for its expansive potential purpose. Respondent considers that its asking price, following negotiations with the Complainant, was legitimate.
According to the Panel, Respondent’s offer to sell the <quirk.com> domain name does not demonstrate bad faith under Policy ¶ 4(b)(i). Indeed, Complainant itself offered high purchase prices for the disputed domain name at several instances, and, until recently, never imputed bad faith registration or use to Respondent. If a respondent does not plan to target a particular trademark holder, a respondent is free to register a domain name consisting of common terms and since the domain name currently in dispute contains such common term, the Panel also finds that Respondent did not register or use the <quirk.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
When a domain name registrant of a common generic term is then contacted by a third party, investigating its willingness to sell the domain name, the registrant is free to offer the domain name for a market price. See 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”); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) (finding that “when a Complainant indicates a willingness to engage in a market transaction for the name, it does not violate the policy for a [the respondent] to offer to sell for a market price, rather than out-of-pocket expenses”).
In the instant case, Complainant does not show that Respondent was targeting Complainant or its trademark. The Panel considers Respondent’s offer to sell the domain name in excess of its out-of-pocket expenses not to be evidence of bad faith registration or use.
Complainant also argues that Respondent did attempt to prevent Complainant from registering its mark in a domain name and has a pattern of doing so. Respondent states that it did not know of Complainant’s company when the <quirk.com> domain name was registered, and that Complainant stated, “We obviously don’t need it,” in reference to the <quirk.com> domain name in a communication with Respondent, continuing to note that Complainant had done well without it for over ten years. The Panel also notes that correspondence between the parties demonstrates that Complainant already controls <quirkbooks.com>.
According to the Panel, Complainant failed to prove a pattern of bad faith registration. Also, Complainant failed to prove that Respondent, when registering a generic term as a domain name, knew or should have known that Complainant had rights in its QUIRK & Design mark (the QUIRK word mark did not exist at the time of registering the domain name). The <quirk.com> domain name is comprised entirely of a common term that has many meanings apart from use in Complainant’s QUIRK mark. See Nursefinder, Inc. v. Vertical Axis, Inc., D2007-0417 (WIPO July 5, 2007) (holding that although some decisions have gone against the respondent, each case has to be decided on its own merits, and the respondent also had won several cases involving domain names comprised of generic terms or short strings of letters). Therefore, the Panel finds that Respondent has not attempted to prevent Complainant from registering its mark in a domain name, nor has Respondent developed a pattern of bad faith so strong as to constitute an inference of bad faith in the present dispute pursuant to Policy ¶ 4(b)(ii).
Respondent argues that Complainant has never raised a disruption argument over the course of a decade. Respondent asserts that Complainant has concealed from the Panel Complainant’s own admissions that Respondent’s use of the disputed domain name is not disrupting Complainant’s business, diverting its customers, or infringing its claimed mark. Respondent continues to note that Complainant does not make any arguments that the <quirk.com> domain name is used in connection with any goods or services listed in Complainant’s trademark registration.
Therefore, the Panel considers that Complainant fails to prove that Respondent’s use of the <quirk.com> domain name is disruptive to Complainant’s business under Policy ¶ 4(b)(iii). See Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding that the respondent did not register and use the <racegirl.com> domain name in bad faith because the complainant provided no evidence that the respondent intended to disrupt or divert business from the complainant); see also PRIMEDIA Special Interest Publ’ns. Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (holding that the respondent did not register or use the <shutterbug.com> domain name to disrupt the complainant’s business because the respondent’s contemplated use at the time of acquisition was not necessarily competitive with the complainant’s SHUTTERBUG magazine).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <quirk.com> domain name REMAIN WITH Respondent.
__________________________________________________________________
Flip Jan Claude Petillion (Chair),
David A. Einhorn
Honorable Bruce E. Meyerson, Esq., Panelists
Dated: July 8, 2013
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