2nd May 2007
NATIONAL ARBITRATION FORUM
CDG v. WSM Domains – Privacy Registrations
Claim Number: FA0703000933942
Complainant is CDG (“Complainant”), represented by David Malmo, of CDG, 222 North Sepulveda Boulevard Suite 300, El Segundo, CA 90245. Respondent is WSM Domains – Privacy Registrations (“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 <cdg.com>, registered with Tucows Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 7, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 8, 2007.
On March 8, 2007, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <cdg.com> domain name is registered with Tucows Inc. and that the 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 March 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 2, 2007 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.
On March 23, 2007, Respondent requested, pursuant to Supplemental Rule 6, an extension of time to respond to the Complaint. On March 23, 2007, the National Arbitration Forum, with Complainant’s consent, granted Respondent an extension and set a new deadline of April 12, 2007 for a filing of a Response.
A timely Response was received and determined to be complete on April 12, 2007.
On April 18, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends as follows:
Complainant CDG of El Segundo, California owns federally registered trademarks for the mark “CDG”. Complainant is known internationally by the brand “CDG” and uses this mark in connection with all of its product and service offerings, including, but not limited to, Technical Authoring, Digital Document Imaging, Internet Portals, and Professional Services. Founded in 1969, CDG’s sales in 2006 exceeded $100 million dollars.
Complainant contends that Respondent’s domain name is identical and confusingly similar to Complainant’s registered trademark.
Complainant further contends that Respondent has no rights or legitimate interests in the domain names in because 1) Respondent does not use the domain name in connection with a bona fide offering of goods or services at <cdg.com>; 2) Respondent has never been known as, or referred to as, ‘CDG’ and; 3) Respondent is not making a legitimate fair use of the domain name.
The domain name should be considered as having been registered and used in bad faith because Respondent has registered or acquired the domain name primarily for the purpose of withholding the domain name from the Complainant who is the owner of the trademark, or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.
Respondent contends as follows:
Respondent acquired <cdg.com> because it is a common 3-letter combination. CDG is a common term, also known as CD+G (which stands for “compact disc + graphics”). There are hundreds of thousands of third party uses of the common term CDG with respect to this meaning. Complainant does not have exclusive rights to this 3-letter combination. Respondent, thus has a legitimate interest in this common 3-letter term. Moreover, Respondent has used the at-issue domain name in connection with providing paid search results related to the descriptive meaning of CDG.
Complainant’s allegations of bad faith are without merit. Complainant has not proffered any evidence that suggests Respondent had knowledge of its mark when it acquired the at-issue domain name. Absent proof that Respondent had knowledge of Complainant’s mark when it acquired the at-issue domain name, the Complaint must fail. Nor is there any evidence the at-issue domain name has been used in bad faith. Respondent has never used the at-issue domain name in connection with the goods/services associated with Complainant’s mark.
Respondent has not used the at-issue domain name in connection with services associated with Complainant’s mark. Complainant is not engaged in services related to Compact Disc + Graphics, the services associated with Repondent.
Complainant’s registered trademark is not solely for letters CDG. It is a design, plus words mark with the letter C, D, and G appearing in block form below a circular image.
Complainant’s trademark is not identical or confusingly similar to the at-issue domain name. Where a trademark incorporates a mere descriptive term, as in the present case, minor differences between a mark and a domain name are sufficient to eliminate a finding of confusing similarity. Because CDG is a common term, the difference between the design mark and the simple three letters of the domain name is a difference that matters.
Respondent’s legitimate interest is further supported by its use of the at-issue domain name in connection with advertising links related to CD+G technology, such as CDG players. This constitutes a bona fide offering of goods and services, which establishes Respondent’s legitimate interest.
Complainant has not demonstrated that the domain name was registered and is being used in bad faith. Absent direct proof that a common term domain name was registered or acquired solely for the purpose of profiting from Complainant’s trademark rights, there can be no finding of bad faith registration or use. There is no evidence Respondent ever heard of Complainant prior to registering the at-issue domain name or prior to the initiation of these proceedings.
Respondent contends that Complainant has abused the Policy by bringing a Complaint that is wholly without merit. There was no evidence of bad faith registration since there is no proof that Respondent had knowledge of Complainant or its mark at the time of registration. Accordingly, the Panel should find that the Complainant has engaged in reverse domain name hijacking.
Complainant has trademark rights in the CDG mark because it registered the mark with the United States Patent and Trademark Office. The registration is for a word mark and design.
Respondent registered the at-issue domain name prior to Complainant’s registration of the CDG mark.
Complainant offers no evidence on the issues of Respondent’s rights and interest in the at-issue domain name and offers no evidence as to whether or not Respondent registered and used the at-issue domain name in bad faith.
Respondent uses the at-issue domain name to reference a website containing advertising links.
Respondent and Complainant are not competitors.
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 asserts rights in the CDG mark through its trademark registration with the United States Patent and Trademark Office (Reg. No. 2,801,853 issued January 4, 2004). Such rights demonstrate Complainant’s rights the CDG mark pursuant to Policy ¶4(a)(i). Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007).
Notwithstanding that Respondent’s registration of the <cdg.com> domain name in 1994 predated Complainant’s registration of the CDG mark and notwithstanding that Complainant may not have exclusive rights in such mark, Complainant has rights in the CDG mark with regard to the Policy by virtue of its trademark registration. Further, Complainant’s registration is for a design plus words, letters, and/or numbers. Respondent’s <cdg.com> domain name is identical to the word component of Complainant’s CDG mark because the disputed domain name contains the word component in its entirety. The word component of the trademark is a substantial part of the Complainant’s trademark. The Respondent’s domain name insignificantly adds the generic top-level domain “.com” to a substantial and material component of Complainant’s registered trademark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000).
Respondent argues that because Complainant cannot show rights in the CDG mark at the time the at-issue domain name was registered, it fails under Policy ¶ 4(a)(i) as interpreted by prior UDRP decisions. A plain reading of ¶ 4(a)(i) imposes no burden on a Complainant to demonstrate that it has either exclusive right to a mark or that such rights predate the registration of a domain name.
In Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003) the panel based its finding that the Complainant failed to demonstrate rights in the at-issue mark because Respondent’s domain name registration predated Complainant’s acquiring rights in the mark. There, the Complainant relied on weak common law rights in a descriptive mark (FREEDEBTCONSOLOITATION). The Intermark panel found that since the Complainant had no trademark rights at the time of the domain name’s initial registration, it could not satisfy the requirements of Policy ¶4(a)(i). In so finding the panel effectively re-drafts Policy ¶4(a)(i) to include a per se requirement that a Complainant’s rights in a trademark must predate the at-issue domain name’s registration.
The Intermark rational is mimicked in Transpark LLC v. Network Administrator, FA0212000135602 (December 6, 2002), and elsewhere:
However, without establishing rights in a mark that predates a disputed domain name registration the outcome would allow junior trademark users to contest a prior domain name registration. Such an outcome is contrary to the Policy, which was intended to protect against infringement of existing trademark rights by identical or confusingly similar domain name registrations. Therefore, the Panel concludes that Policy ¶ 4(a)(i) assumes that Complainant’s rights must predate Respondent’s domain name registration, which numerous, previous decisions have held. See Phoenix Mortgage Corp. v. Tom Toggas, D2001-0101 (WIPO March 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily implies that the Complainant’s rights predate the Respondent’s registration…of the domain name”); see also Ezcommerce Global Solutions, Inc. v. Alphabase Interactive, D2002-0943 (WIPO Nov. 21, 2002) (allowing a junior trademark user to challenge a domain name registration, which predates Complainant’s trademark rights, is “obviously contrary to the intent of the Policy and to trademark law generally”).
Id. (emphasis added).
In reviewing several UDRP decisions consistent with the Transpack, Intermark line of decisions this Panel finds little substantive basis for concluding that the Policy at ¶ 4(a)(i), cannot and should not protect trademark holders from the misuse of domain names registered before a Complainant’s rights vest in an at-issue mark. The operative rational in such cases is that not requiring a showing that a Complainant’s rights predate an at-issue domain name registration allows junior trademark users to contest a prior domain name registration and that such would be contrary to trademark law. Transpack’s reasoning, equating the Complainant with a junior trademark holder, thus necessarily entails that the Respondent must be a senior trademark holder. This rational implies that the domain name registrant has or should have trademark rights in a registered domain. It also implies that a UDRP action is always a battle of conflicting trademark rights. Clearly this is not the case since often domain names such as the at-issue domain name, are used descriptively and not for source identification.
There is no express requirement under the Policy ¶ 4(a)(i) or elsewhere in the Policy that a Respondent must or should have colorable trademark rights in the at-issue domain name prior to registration, or that Respondents gets (common law) trademark rights in a domain name simply via registering the domain name. Therefore the Transpack rule seems misplaced. The Policy drafters might have easily included a provision within paragraph 4(a)(i) or elsewhere in the Policy barring a Complainant from prevailing where its trademarks rights were acquired subsequent to the domain name registration had they so desired, but they did not.
Indeed, a registrant might register thousands of domain names to hold such domain names with an overtly admitted intent to prevent the use of such domain names by subsequent trademark holders, or to resell particular domain names to future trademark holders. Moreover, a Respondent’s intent at the time of domain name registration can certainly reveal bad faith despite the fact that the party (future Complainant) that is the object of such “bad faith” had not yet acquired rights in the relevant mark and/or was not particularly identified at the time the relevant domain name was registered. When a Complainant with rights in an at-issue domain name can show that a Respondent both lacks of rights or interest in an at-issue domain name and has acted in bad faith in registration and use of such domain name, this Panel sees no reason why relief should be denied simply because the Complainant lacked trademark rights at the time the Respondent registered the domain name.
In the instant case, Complainant had a registered trademark at the time it filed its Complaint. Contrary to other decisions, the Panel does not find that the Complainant’s lack of an enforceable interest at the time of the Respondent’s domain name registration, without more, causes its claim to fail under Policy ¶ 4(a)(i). However, as indicated below, this does not imply that the fact of domain name registration prior to a Complainant’s acquisition of trademark rights lacks evidentiary value concerning the other elements a Complainant must demonstrate to prevail under the Policy.
Given the forgoing, the Panel finds that the Complainant has rights in a domain name that is confusingly similar to Respondent’s domain name.
Rights or Legitimate Interests
Complainant must first make out a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names under paragraph 4(a)(ii) of the Policy. The threshold for such showing is low. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005). Once a prima facie case is established, the burden then shifts to Respondent who must demonstrate that it nevertheless has rights or legitimate interests in the at-issue domain name.
Complainant baldly contends that Respondent has no rights or legitimate interests in the domain names in because: 1) Respondent does not use the domain name in connection with a bona fide offering of goods or services at <cdg.com>; 2) Respondent has never been known as, or referred to as, CDG; and 3) Respondent is not making a legitimate fair use of the domain name.
Even if Complainant’s unsupported claims are sufficient to overcome its initial burden Respondent shows that it has rights in the <cdg.com>domain name. Respondent registered the domain name without knowledge of the Complainant’s future trademark. Respondent’s explanation for registering the domain name is credible. Furthermore, Respondent used the domain name in conjunction with a bona fide offering of goods and services before any notice to the Respondent of the dispute. The Policy ¶ 4(c)(i) considers such evidence demonstrative of a Respondent’s rights and interest in an at-issue domain name. See generally, Tire Discounter, Inc v. TireDiscounter.com, FA 67985 (NAF June 14, 2006). Therefore the Complainant has rights and interest in the domain name.
Registration and Use in Bad Faith
Complainant fails to offer any evidence in support of its conclusions that Respondent has registered and is using the at-issue domain in bad faith. Without evidencing any general bad faith intent whatsoever on the part of the Respondent and further given that Respondent could not have registered the domain name in bad faith with regard to the Complainant since the Complainant had no rights in the CDG mark at the time of registration, Complainant fails to show Respondent’s bad faith in either registering or using the at-issue domain name.
Reverse Domain Name Hijacking
Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name. See Rule 1. A finding of reverse domain hijacking is warranted where the Complainant “knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the Policy.” Carsales.com.au Ltd. v. Flanders, D2004-0047 (WIPO Apr. 8, 2004); Futureworld Consultancy, Pty Ltd v. On-line Advice, D2003-0297 (WIPO July 18, 2003).
Complainant failed to proffer any evidence that supports its claim that the Respondent has no rights or interest in the at-issue domain name. Complainant likewise failed to proffer evidence that Respondent acted in bad faith in registering and using the domain name. Complainant knew that its CDG trademark was registered well after the Respondent registered its domain name. Complainant should have known that it could not prevail in this proceeding without presenting at least some evidence tending to indicate that the Respondent acted in bad faith in registering and using such domain name. Therefore, the Panel finds that the Complainant has engaged in reverse domain name hijacking.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. The Panel also finds that the Complainant has engaged in reverse domain name hijacking.
Paul M. DeCicco, Panelist
Dated: May 2, 2007
NATIONAL ARBITRATION FORUM