national arbitration forum

DECISION

Cross Optical Group, Inc. v. Electric Online, Inc.

Claim Number: FA1206001449605

PARTIES

Complainant is Cross Optical Group, Inc. (“Complainant”), represented by John Cyril Malloy of Malloy & Malloy, P.L., Florida, USA.; Respondent is Electric Online, Inc. (“Respondent”), represented by Ari Goldberger of ESQwire.com Law Firm, New Jersey, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <costa.com>, registered with eNom, Inc.

PANEL

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.

Panelists: Michael A. Albert as the Chair of the three-member Panel along with Diane Thilly Cabell and Honorable John J. Upchurch (Ret.).

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 20, 2012; the National Arbitration Forum received payment on June 20, 2012.

On Jun 20, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <costa.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 June 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 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@costa.com. Also on June 21, 2012, 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 July 11, 2012.

An Additional Submission was received and determined to be complete on July 16, 2012.

On July 23, 2012, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Michael A. Albert as the Chair of the three-member Panel along with Diane Thilly Cabell and Honorable John J. Upchurch (Ret.).

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A.        Complainant makes the following allegations:

Complainant alleges that it owns rights in the following marks through registration with the United States Patent and Trademark Office (“USPTO”):

COSTA DEL MAR                 (Reg. No. 1,723,449 registered October 13, 1992)

COSTA                                   (Reg. No. 3,857,379 registered October 5, 2010)

Complainant alleges use of its various COSTA marks to promote its sunglass and eyewear business, which has allegedly been in operation under the COSTA DEL MAR mark since 1983. Complainant states that it initially used the COSTA DEL MAR mark to designate its product line, and expanded its marketing to include COSTA and its plural form COSTAS to identify its products since as early as 1996. Complainant states that it has advertised and promoted the COSTA mark on a variety of media. Complainant owns and operates the <costadelmar.com> website to promote its goods. Complainant alleges that it is well-known by the COSTA mark and has spent significant resources to advertise and promote its business.

Complainant alleges that the <costa.com> domain name (the “Disputed Domain Name”) is identical to Complainant’s COSTA mark. Complainant contends that Respondent is not commonly known by the <costa.com> domain name based on the WHOIS information and has not demonstrated any preparations to use the Disputed Domain Name. Complainant also contends that Respondent registered the Disputed Domain Name with the sole purpose of directing Internet users to a website with hyperlinks to unrelated businesses, specifically that Respondent diverts Internet users searching for Complainant’s products to its own website, and that Respondent makes a fee from the diversion. Complainant also contends that Respondent does not make a legitimate noncommercial or fair use of the Disputed Domain Name and that Respondent registered and uses the <costa.com> domain name in bad faith, with knowledge of Complainant’s rights in the COSTA mark. Finally, Complainant contends that Respondent registered the Disputed Domain Name to sell the domain name to Complainant or a competitor of Complainant, in excess of Respondent’s out-of-pocket costs.

B.         Respondent makes the following allegations:

Respondent admits that it registered the <costa.com> domain name on October 24, 1997, noting that that date is nearly fifteen years before Complainant initiated the claim. Respondent admits that it hosts “underdeveloped” domain names with parking services that pay part of the advertising revenue the services generate. Respondent alleges that the <costa.com> domain name derives from the common Spanish word “costa,” which translates to “coast” or “shore.” Respondent contends that Complainant does not have exclusive rights to the word “costa.” In support thereof, Respondent submits that Complainant only recently applied for a trademark for the word “Costa,” part of its “Costa Del Mar” trademark. Respondent contends that it did not register the Disputed Domain Name to sell it to Complainant, to prevent Complainant from owning the domain name, to disrupt Complainant’s business, or to confuse consumers.

Moreover, Respondent contends that Complainant is barred by the doctrine of laches from bringing a claim for the Disputed Domain Name and that Complainant did not have a trademark for the single word COSTA until 2010. Respondent also contends that the Disputed Domain Name is not confusingly similar to Complainant’s COSTA DEL MAR mark. Respondent claims rights and legitimate interests in the <costa.com> domain name based on the common nature of the Spanish word “costa.” Respondent contends that it did not register and use the disputed domain name in bad faith. Finally, Respondent contends that Complainant has engaged in reverse domain name hijacking.

C.        Complainant’s Additional Submission

Complainant submitted an Additional Submission in support of its Complaint, in which Complainant reiterated several of its initial arguments. In its Additional Submission, Complainant also noted that Respondent did not deny its failure to use or make preparations to use the <costa.com> domain name in connection with legitimate goods or services, and Respondent did not explain its reasons for requesting $500,000 for the Disputed Domain Name. Complainant stated that Respondent openly conceded to registering the domain name for investment and development.

Complainant contends that Respondent’s laches argument is inapplicable, alleging that UDRP proceedings are “rendered pursuant to a contractual agreement to abide by a policy that makes no mention of laches or a statute of limitations.” Complainant claims that its diligence in acquiring protection for its brand and mark, as well as Respondent’s failure to make use of the domain name in the context of sale of goods or services renders the defense inapplicable.

FINDINGS

While the Dispute Domain Name is identical to Complainant’s COSTA mark, Complainant has not established that Respondent lacks rights or legitimate interests in the domain name, nor has Complainant established registration and use in bad faith by Respondent. Respondent registered the <costa.com> domain name on October 24, 1997, nearly fifteen years before Complainant initiated this proceeding. The date of first use cited in United States Reg. No. 3,857,379 for Complainant’s COSTA mark is January 1, 2010. Respondent hosts underdeveloped domain names with domain name parking services which pay a share of the advertising revenue they generate, an industry-wide accepted practice. “Costa” is a common term with a number of generic meanings. The Panel denies the relief requested in the Complaint.

DISCUSSION

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.

A.     Identical and/or Confusingly Similar

Complainant alleges that it owns rights in the COSTA mark through registration of the mark with the USPTO (Reg. No. 3,857,379 registered October 5, 2010). Complainant also claims rights in the COSTA DEL MAR mark by having registered the mark with the USPTO (Reg. No. 1,723,4459 registered October 13, 1992). The panel in Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006), held that registration of a mark with a government authority such as the USPTO establishes a complainant’s rights in the mark under Policy ¶ 4(a)(i). Thus, the Panel determines that Complainant secured rights in its COSTA mark and its COSTA DEL MAR mark pursuant to Policy ¶ 4(a)(i) through its USPTO registrations. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).

The Panel finds that the Dispute Domain Name is identical to Complainant’s COSTA mark, since the generic top-level domain name “.com” is insufficient to distinguish the domain name from the trademark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain “.com” after the name POMELLATO is not relevant). Complainant has therefore established that the <costa.com> domain name registered by Respondent is identical to a trademark in which Complainant has rights.

The Panel also notes that the <costa.com> domain name is confusingly similar to Complainant’s COSTA DEL MAR mark because the Disputed Domain Name uses a portion of Complainant’s mark, removing the words “del mar,” and adds the gTLD “.com.” Therefore, the Panel also finds the Disputed Domain Name to be confusingly similar to Complainant’s COSTA DEL MAR mark pursuant to Policy ¶ 4(a)(i). See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”).

While Respondent argues that its registration of the <costa.com> domain name predates Complainant’s alleged rights in the mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i), as this portion of the Policy considers only whether Complainant has rights in the mark(s) and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).

Moreover, while Respondent contends that the Disputed Domain Name is comprised of a common and generic term and as such cannot be found to be identical or confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary 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)).

B.     Rights or Legitimate Interests

Although the <costa.com> domain name is confusingly similar to Complainant’s registered marks, the Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name). Here, Complainant has not made a prima facie showing that Respondent lacks rights or legitimate interests in the Disputed Domain Name.

In its response, Respondent argued that its use of the Disputed Domain Name is a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent established that it uses the Disputed Domain Name to display descriptive advertising links, as well as to provide website visitors “the opportunity to locate topic[s] related to the descriptive meaning of the word ‘coast.’” Regardless of whether better uses might exist for the Domain Name, the Panel finds that displaying hyperlinks and content related to the descriptive word “coast” at the resolving website are not illegitimate uses. Therefore, the Panel concludes that Respondent does use the Disputed Domain Name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) and a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See McMullen Argus Publ’g Inc. v. Moniker Privacy Servs., D2007-0676 (WIPO July 24, 2007) (holding that “pay-per-click websites are not in and of themselves unlawful or illegitimate”).

Additionally, because the term COSTA as it appears in the Disputed Domain Name is common and generic in the Spanish dictionary, the Panel finds that Respondent can establish rights or legitimate interests in the Disputed Domain Name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).

In summary, Complainant has not established that Respondent lacks rights or legitimate interests in the disputed domain name.

C.     Registration and Use in Bad Faith

Here, Complainant registered its unitary COSTA mark years after Respondent’s registration of the Disputed Domain Name. Although Complainant has used COSTA DEL MAR since at least as early as 1983, the record establishes that Complainant did not use the singular name “Costa” to identify its business until January 1, 2010. See Complainant’s Exhibit H. Thus, the Panel concludes that Respondent did not register the <costa.com> domain name in bad faith under Policy ¶ 4(a)(iii) insofar as Respondent’s registration of the Disputed Domain Name predates Complainant’s use of the COSTA mark. See Interep Nat’l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant company did not exist at the time of registration).

Moreover, the Disputed Domain Name is comprised entirely of a common Spanish term meaning “shore” or “coast” and has meaning apart from use in Complainant’s COSTA mark. The Panel agrees with Respondent’s contention that the registration and use of domain name comprising a common term such as COSTA is not done in bad faith. In light of the Panel’s finding that Respondent has rights or legitimate interests in the Disputed Domain Name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the Disputed Domain Name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).

Nor has Respondent violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant’s business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).

In addition to the Panel’s determination under Policy ¶ 4(a)(ii), the Panel also finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii). Specifically, the Panel notes that a respondent is free to register a domain name consisting of common terms and that the Disputed Domain Name that is the matter of this dispute is comprised of such a name. In light of this determination, the Panel finds that Respondent did not register or use the <costa.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).

Complainant has failed to establish that the disputed domain name has been registered and is being used in bad faith.

Doctrine of Laches

With respect to Respondent’s contentions that Complainant’s action is barred by the doctrine of laches, the Panel finds that the doctrine of laches does not apply as a defense. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value).

Reverse Domain Name Hijacking

Paragraph 15(e) of the UDRP Rules states: “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”

Respondent alleges that Complainant has acted in bad faith and engaged in reverse domain name hijacking by initiating this dispute. Respondent further contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the Disputed Domain Name, of its rights to use the Disputed Domain Name. Respondent claims that because Complainant did not have trademark rights to the COSTA mark until recently, and Respondent had ownership of the <costa.com> domain name almost fifteen years before the initiation of the dispute, Complainant makes an improper attempt to “wrest” the disputed domain name in a reverse domain name hijacking scheme.

If the record establishes that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the <costa.com> domain name and that Respondent registered and is using the disputed domain name in bad faith, the Panel may find that reverse domain name hijacking has occurred. See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).

While the Panel is troubled by Complainant’s attempt to secure the Disputed Domain Name, a domain name that has been registered to and used by Respondent for years prior to initiation of this action and prior to the use of COSTA as a standalone mark by Complainant, in light of Complainant’s legitimate and senior rights in COSTA DEL MAR, the Panel does not find the Complaint was brought in bad faith under paragraph 15(e) of the Rules. The Panel therefore does not find that reverse domain name hijacking has occurred.

DECISION

Complainant not having established all three elements required under the Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <costa.com> domain name REMAIN WITH Respondent

Michael A. Albert, Chair

Diane Thilly Cabell, Panelist

Honorable John J. Upchurch (Ret.), Panelist

Dated: August 6, 2012