6th Aug 2004
The Landmark Group v. DigiMedia.com, L.P.
Claim Number: FA0406000285459
Complainant is The Landmark Group (“Complainant”), represented by John Schroeder, 326 First St., Suite 39, Annapolis, MD 21403. Respondent is DigiMedia.com, L.P. (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <landmarks.com>, registered with Tucows 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 Panelists in this proceeding.
David H. Bernstein, Diane Cabell and Hugues G. Richard as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 10, 2004; the Forum received a hard copy of the Complaint on June 15, 2004.
On June 14, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain name <landmarks.com> is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 17, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 8, 2004 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on July 7, 2004.
On July 19, 2004, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed David H. Bernstein, Diane Cabell and Hugues G. Richard as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant. Respondent requests a finding of Reverse Domain Name Hijacking.
Complainant filed this proceeding on June 10, 2004 with the National Arbitration Forum. As grounds for the dispute, Complainant contends that Respondent’s domain name, <landmarks.com>, is identical to Complainant’s corporate name and trademark of LANDMARKS, which has been in continuous use since 1990. Complainant further contends that Respondent has no legitimate interest in the domain name and has never developed any bona fide product or service in connection with the domain name <landmarks.com>. Further, Complainant contends that Respondent is not known by the name <landmarks.com> and simply registered the name with the intent to resell or lease it for profit.
In its response, Respondent contends that the word “landmarks” is a generic and descriptive term that is used extensively by third parties. Further, Respondent alleges that it has a legitimate interest in the domain name <landmarks.com>. As part of its business strategy, Respondent registers generic domain names such as <landmarks.com> and provides advertising related to the generic nature of each domain name. Respondent receives revenue through pay-per-click advertising of these links. In addition, Respondent argues that it did not register the domain name in bad faith because it had never heard of Complainant’s trademark LANDMARKS when it registered the domain name in 1998. Finally, Respondent alleges that Complainant is attempting to take this name through reverse domain name hijacking because Complainant knew or should have known at the time it filed the Complaint that it could not prove that the domain name <landmarks.com> was registered in bad faith.
1. Complainant, The Landmark Group, specializes in the production of magazines, pamphlets, DVDs and other publications for the tourism industry.
2. One of the company’s publications is entitled “Landmarks.”
3. Complainant registered the LANDMARKS trademark and service mark with the United States Patent and Trademark Office in July 2003, claiming first use back to 1990.
4. Respondent, DigiMedia.com, L.P., registered the domain name <landmarks.com> in 1998.
5. As part of its business model, Respondent registers, owns and operates a number of websites based on dictionary words such as <chairs.com>, <pants.com>, <decorations.com>, <dress.com>, <cook.com>, <trips.com> and <webdesign.com>.
6. Each of Respondent’s websites provides advertising related to the generic nature of each site’s name and Respondent receives revenue through pay-per-click advertising of these links.
7. The website at <landmarks.com> presents what Respondent characterizes as advertising relating to various landmarks and travel destinations. The alleged advertising is minimal—so much so that the page looks like a generic placeholder page—but nonetheless does include a link to at least one well-known landmark, the Empire State Building.
8. Respondent did not attempt to sell or lease the domain name, <landmarks.com>, to Complainant.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The domain name <landmarks.com> is identical to the trademark LANDMARKS in which Complainant has rights. Complainant registered the LANDMARKS trademark with the United States Patent and Trademark Office. Federal registration of a trademark is prima facie evidence of its validity. Eauto, LLC v. Triple S. Auto Parts, D2000-0047 (WIPO Mar. 24, 2000).
Respondent nevertheless argues that Complainant’s registration should be disregarded because Complainant applied for this registration after the registration of the domain name, and thus Complainant lacked trademark rights predating the date of the domain name registration. That argument is without merit. First, Complainant has alleged common law trademark rights back to 1990, as reflected in Complainant’s trademark registration. Respondent has submitted no facts suggesting that Complainant did not have such trademark rights, and its legal arguments that the mark lacks secondary meaning are insufficient to overcome the presumption of validity. Elec. Commerce Media v. Taos Mountain, FA 95344 (Nat. Arb. Forum Oct. 1, 2000). Thus, Complainant does appear to have had trademark rights in the LANDMARKS mark at the time Respondent registered the domain name.
In any event, the issue under the first factor is limited to whether Complainant has trademark rights as of the time of the filing of the Complaint. See generally HQ Holdings, LLC v. EquiCorp, Inc., FA 256402 (Nat. Arb. Forum June 15, 2004) (Kyle, concurring). It may be very relevant to the third factor, and indeed dispositive of the challenge, if Complainant had no trademark rights at the time of the domain name registration, as the registration cannot, therefore, have been in bad faith vis-à-vis Complainant. See E-Duction, Inc. v. Zuccarini, D2000-1369 (WIPO Feb. 5, 2001); see also Intermap Techns. Corp. v. Salvage Elec. Inc., FA 203130 (Nat. Arb. Forum Dec. 14, 2003). However, under the first factor—which is a kind of threshhold factor designed to determine whether Complainant has standing—the issue is only whether Complainant has trademark rights today and, if so, whether the domain name is identical or confusingly similar to that mark.
Rights or Legitimate Interests
Complainant has failed to sustain its burden of proving that Respondent has no legitimate interest in the domain name <landmarks.com>.
Respondent alleges that its business model is the registration of large numbers of dictionary words commonly searched by Internet users, and that it generates revenue by providing pay-per-click advertising links related to the generic nature of each site’s domain name. For example, in addition to the generic domain name <landmarks.com>, Respondent also owns and operates websites such as <chairs.com>, <pants.com>, <dress.com> and <webdesign.com>. As long as the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks, this is a business model that is permitted under the Policy. Gen. Mach. Prods. Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum Jan. 26, 2000).
Registration and Use in Bad Faith
Complainant has also failed to prove that Respondent registered and used the domain name <landmarks.com> in bad faith. The affidavit of Respondent’s Vice President, Jay Chapman, states that Respondent had no knowledge of Complainant or its publications at the time it registered the domain name. Respondent cannot be found to have engaged in bad faith registration of Complainant’s mark if it had never heard of Complainant’s mark at the time of the registration. DK Bellevue, Inc. v. Landers, D2003-0780 (WIPO Nov. 24, 2003) (no bad faith registration if respondent had not heard of complainant’s mark at time of registration); Intermap Techns. Corp. v. Salvage Elec. Inc., FA 203130 (Nat. Arb. Forum Dec. 12, 2003); Experimental Aircraft Ass’n (EAA) v. EAA.COM, FA 206309 (Nat. Arb. Forum Dec. 16, 2003).
Reverse Domain Name Hijacking
This is a close case for Reverse Domain Name Hijacking. On the one hand, the Complaint is so bare bones that it suggests a failure to investigate properly the facts and to consider whether this was a proper case for a UDRP complaint. Nevertheless, because the nature of Respondent’s business was not obvious from its websites, which, as noted, have such minimal advertising that they appear to be mere placeholder pages, and because Complainant did not know whether Respondent was aware of Complainant and its mark at the time it registered the domain name, the Panel declines to enter a finding of Reverse Domain Name Hijacking in this case.
Upon careful review of all the evidence, the Panel concludes that the domain name in dispute is confusingly similar to a mark in which Complainant has rights, but that Complainant has failed to prove that Respondent lacks a legitimate interest in the domain name, nor has it proven that Respondent registered and used the domain name in bad faith. Further, the Panel concludes that Complainant did not engage in Reverse Domain Name Hijacking. The Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <landmarks.com> domain name NOT be transferred from Respondent to Complainant.
David H. Bernstein, Diane Cabell, and Hugues G. Richard, Panelists
Dated: August 6, 2004