27th Jun 2008

National Arbitration Forum

DECISION

LogoDesignGuru.com, Inc. v. Jeremy K. Oliver

Claim Number: FA0804001181507

PARTIES

Complainant is LogoDesignGuru.com, Inc. (“Complainant”), represented by Xavier Morales, of Law Office of Xavier Morales, New York, USA.Respondent is Jeremy K. Oliver (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, New Jersey, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <aboutonlinedegrees.org>, registered with GoDaddy.com, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Dennis A. Foster as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 27, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 28, 2008.

On April 28, 2008, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <aboutonlinedegrees.org> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name.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 April 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 19, 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@aboutonlinedegrees.org by e-mail.

On May 16, 2008, Respondent submitted a Request for Extension of Time to Respond to Complaint pursuant to Supplemental Rule 6.Complainant opposed Respondent’s Request.On May 16, 2008, the National Arbitration Forum granted Respondent’s Request, setting a new Response deadline of May 29, 2008.

On May 28, 2008, Respondent submitted a second Request for Extension of Time to Respond to Complaint pursuant to Supplemental Rule 6.Complainant consented to Respondent’s Request.On May 29, 2008, the National Arbitration Forum granted Respondent’s Request for an Extension of Time to Respond pursuant to Supplemental Rule 6, setting a new deadline of June 5, 2008.

A timely Response was received and determined to be complete on June 5, 2008.

An Additional Submission, which complied with the requirements of Supplemental Rule 7, was received from Complainant on June 10, 2008.The Panel has taken the supplemental filing into account in reaching its Decision.

On June 13, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster as Panelist.

RELIEF SOUGHT

Complainant requests that the disputed domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant is a Delaware corporation that provides branding, advertising and marketing services to many different types of businesses and organizations, including but not limited to, educational businesses and institutions.

Complainant began its business with its registration on March 19, 2006 of the disputed domain name <aboutonlinedegrees.org>.Through its consistent and continuous use of that name since that date, Complainant has established common law service mark rights to the mark ABOUT ONLINE DEGREES.As a result of spending significant time and money in generating substantial goodwill and consumer recognition, Complainant’s website has become a major source of information for people researching and considering online colleges and universities.

In February 2008, Complainant discovered that the disputed domain name had been transferred fraudulently to Respondent without Complainant’s consent.Otherwise, Complainant has no relationship with Respondent.

Submitted affidavits, advertising billing records and cancelled registration renewal checks are evidence of Complainant’s proper ownership of the disputed domain name.

Complainant’s website—or duplicate of it—still appears at the disputed domain name, but Complainant has no control over it.This is evidence that Respondent knew of Complainant’s common law rights in Complainant’s mark.

The disputed domain name is identical and confusingly similar to Complainant’s service mark.

Respondent has no rights or legitimate interests in the domain name at issue.Respondent is not licensed or otherwise authorized to use Complainant’s mark.There is no evidence that Respondent is commonly known by the name.Because the disputed domain name was acquired without Complainant’s permission, the name is being operated in connection neither with a bona fide offering of goods and services nor in a noncommercial or fair use manner.

– Respondent registered and is using the disputed domain name in bad faith.Respondent is attempting to pass itself off as Complainant in the use of the name, denying Complainant control of the same.Respondent fraudulently hijacked that name in order to disrupt Complainant’s business.Respondent registered the disputed domain name with knowledge of Complainant’s rights and is profiting from confusion in ownership of the website located at the name.

B. Respondent

Operating under an Anglicized fictional name, Respondent is an internet business that develops and operates websites.

Complainant has not provided competent evidence that it was the prior owner of the domain name in question, and only initiated this proceeding after an unsuccessful attempt to buy said name from Respondent in March 2008.A party alleging theft of a domain name would hardly suggest such a simple purchase arrangement and, in any event, such allegations do not fall within the purview of the Policy.

Following due research as to prior ownership, Respondent’s purchase of the disputed domain name from a third party, Jeff Sims, was proper.Also, the change of Registrar was appropriate. There was no indication of a connection of the name to Complainant.Perhaps Mr. Sims was a prior client of Complainant who held the name in its account for him.

Respondent registered the disputed domain name solely because it containeddescriptive terms to which it believed no party had exclusive rights.Complainant holds no registered service mark rights in a similar markThe United States Patent and Trademark Office (“USPTO”) refused a third party registration request regarding “online degrees” because that term is merely descriptive.

Complainant’s claim to common law rights in the ABOUT ONLINE DEGREES mark, is invalid.That mark is composed of generic or descriptive terms that have not acquired a secondary meaning identified exclusively or almost exclusively with Complainant.Moreover, there are several similar domain names (i.e., <aboutonlinedegrees.com>, <onlinedegrees.org>, <onlinedegrees.com>, etc.) owned by third parties.Finally, there is no evidence that Complainant offered goods and services under that mark.

Respondent did not purchase the disputed domain name with the intent to sell it to Complainant, to disrupt its business, to prevent it from registering a domain name reflecting its alleged mark, or to confuse users.Respondent acquired the disputed domain name to develop and operate a website to promote the sale of online college degrees.

Complainant is engaging in reverse domain name hijacking.Complainant has no basis for claiming common law service mark rights, has not presented credible evidence that it provided services under its alleged mark and attempted to purchase the disputed domain name through an email inquiry that included a short hand term, xo (i.e., “hugs and kisses”), of endearment.

C. Additional Submissions

Complainant

Complainant’s attempt to purchase the disputed domain name was a reasonable attempt to avoid the legal costs associated with a Policy filing.Moreover, one e-mail reply from Respondent indicated that, contrary to its Response above, it was unaware that it owned the disputed domain name or purchased it from a specific third party.

The Panel may consider the fraudulent nature of domain name acquisition when analyzing Respondent’s rights or legitimate interests in the disputed domain name and whether bad faith is applicable.

Complainant created the name, Jeff Sims, to protect its privacy, and there was no legitimate purchase by Respondent from that fictitious entity.Respondent has furnished no supporting documentation as evidence of such a sale.

Though the USPTO might refuse to register “online degrees” due to its descriptive nature, the addition of the word “about” makes the prospective mark distinctive (e.g., ALL ABOUT BOATS is a registered USPTO trademark).As such, a secondary meaning associated with Complainant is unnecessary to establish common law rights.

The claim that Complainant is engaged in reverse domain name hijacking should be rejected as Complainant has clearly established its service mark rights.

FINDINGS

Complainant is an Internet-based United States company that provides marketing services to businesses and organizations, most notably educational institutions.Complainant started its educational services in March 2006.

Respondent is also an Internet-based company that operates websites.Respondent registered the disputed domain name on February 15, 2008.

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.

Identical and/or Confusingly Similar

Complainant bases its filing in this case upon its claim that it previously owned the disputed domain name <aboutonlinedegrees.org>, and through the use of that name acquired service mark rights in the service mark ABOUT ONLINE DEGREES.Therefore, the Panel concludes that there is no doubt that the name is identical to the mark.Less clear is whether Complainant does possess the rights it claims in that mark.

Complainant failed to present the Panel with a formal registration of its mark from any jurisdiction, but it has been well-established under prior UDRP rulings that a complainant may satisfy Policy ¶ 4(a)(i) rights requirements through the acquisition of common law rights. See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001); and LIN Television Corp. v. Home In USA and Home In USA, Inc., D2000-0257 (WIPO June 2, 2000) (“The lack of a federal registration does not prevent the Complainant from establishing common law trademark rights in these terms.”).

In order to establish common law rights in its mark, Complainant must persuade the Panel that the mark has achieved a “secondary meaning” associated solely with Complainant.See Ming v. Evergreen Sports, Inc., FA 154140 (Nat. Arb. Forum May 29, 2003); see also Meijer, Inc. v Porksandwich Web Serv, FA 97186 (Nat. Arb. Forum July 6, 2001).

Over the years, a general consensus among Policy panels has developed as to the appropriate criteria to be examined in a common law rights analysis.These criteria include longevity of use, amount of sales, nature and extent of advertising, consumer surveys and media recognition.See Control Techniques Ltd. v. Lektronix Ltd, D2006-1052 (WIPO Oct. 11, 2006); Amsec Enter, L.C. v. McCall, D2001-0083 (WIPO Apr. 3, 2001). Complainant’s case is meager with respect to those criteria.Complainant asserts that it has used its mark for little more that two years, from March 2006 to the present, and even this relatively short period is mitigated by its other allegation that Respondent has controlled the disputed domain name since February 2008, effectively depriving Complainant of doing business under its mark as of that time.Moreover, Complainant has tendered no concrete submissions regarding the amount of sales, nature and extent of advertising, consumer surveys or media recognition.Instead, Complainant has merely asserted that “as a result of spending significant time and money in generating substantial goodwill and consumer recognition, Complainant’s website has become a major source of information for people researching and considering online colleges and universities.”However, given Complainant’s burden of proof on this issue, the Panel cannot simply accept the truth of that assertion without hard substantiation. See Ming v. Evergreen Sports, Inc., FA 154140 (Nat. Arb. Forum May 29, 2003) (“Bald assertions of consumer knowledge are not an adequate form of evidence to establish secondary meaning in a name.”).

The meager showing proffered by Complainant is exacerbated by the descriptive nature of the mark ABOUT ONLINE DEGREES.Complainant contends that this is a distinctive mark.However, the Panel views it as a mark composed of three common English language words, “about,” “online,” and “degrees.”While the combination of these common words may be slightly more distinctive than when they are considered alone, the phrase, “about online degrees,” describes plainly “information concerning educational certifications available through Internet access”—exactly the services Complainant claims to offer.As a result, the Panel is not persuaded that Complainant’s mark is distinctive or linked exclusively with Complainant.The Panel’s conclusion is buttressed by the fact that third parties offer similar services through domain names, such as <aboutonlinedegree.com>, <onlinedegrees.org>, <aboutonlinedegree.org>, etc., that vary only slightly from this mark.

The Panel finds the prior UDRP rulings cited by Complainant to support its claim of common law rights is less than persuasive.Some of those rulings involve marks which were in use far longer than Complainant’s.In the other cases, where the duration of use is comparable to that of Complainant’s, factors not present in the instant case were crucial.In Ameriprise Fin., Inc. v. Domain Park Ltd., FA 1108511 (Nat. Arb. Forum Dec. 21, 2007), the complainant, a subsidiary of the exceedingly well-known American Express Financial Corporation, submitted evidence that it had the most financial planning clients of any firm in the United States and over 12,000 financial advisors throughout that country.In BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000), the complainant put forth compelling evidence of extensive advertising and media coverage as well as consumer usage ranging into the millions per month.Finally, the panel in Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007), found that the complainant had common law rights in its mark primarily on the grounds that the respondent in that case failed to challenge the complainant’s contentions on that issue – unlike the circumstances in the present case.

In view of the foregoing, the Panel rules that Complainant has failed to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights.

Rights or Legitimate Interests/Registration and Use in Bad Faith

As the Panel has found that Complainant failed to satisfy the requirements of ¶ 4(a)(i) of the Policy, the Panel does not need to analyze whether Complainant has proven the elements required of it under ¶¶ 4(a)(ii) and (iii).

Reverse Domain Name Hijacking

Respondent has requested that the Panel find that Complainant has engaged in reverse domain name hijacking in this case.While Complainant’s contentions may not have been particularly strong as to its rights in the service mark that it claimed, Complainant did present credible evidence that it had done business under that name.Furthermore, that evidence also indicated that the Complainant did previously own and operate under the disputed domain name. Therefore, the Panel declines to find that Complainant has engaged in reverse domain name hijacking.

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Dennis A. Foster , Panelist
Dated: June 27, 2008

National Arbitration Forum