8th Sep 2004
Gusztav Ujfalusi Fogarassy v. Domain Deluxe
Claim Number: FA0407000296270
Complainant is Gusztav Ujfalusi Fogarassy, (“Complainant”), Pro Se Attorney International, P.O. Box 708, Marshall, MN 56258. Respondent is Domain Deluxe (“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 <dancefusion.com>, registered with The Registry At Info Avenue d/b/a IA Registry.
The undersigned certify that he or she have acted independently and impartially and to the best of his or her knowledge have no known conflict in serving as Panelists in this proceeding.
Richard Hill (presiding Panelist), Steven L. Schwartz, David P. Miranda as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 13, 2004; the Forum received a hard copy of the Complaint on July 14, 2004.
On July 15, 2004, The Registry At Info Avenue d/b/a IA Registry confirmed by e-mail to the Forum that the domain name <dancefusion.com> is registered with The Registry At Info Avenue d/b/a IA Registry and that Respondent is the current registrant of the name. The Registry At Info Avenue d/b/a IA Registry has verified that Respondent is bound by the The Registry At Info Avenue d/b/a IA Registry 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 July 19, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 9, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on August 9, 2004.
Complainant submitted nine additional submissions, all of which were tardy in terms of Supplemental Rule 7. Respondent submitted an additional submission after reception of Complainant’s ninth submission.
All of the additional submissions were found to be procedurally deficient by the Forum.
On August 25, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Richard Hill as Presiding Panelist and Steven L. Schwartz, and David P. Miranda as Panelists.
On August 26, 2004, after the Panel had been appointed, Complainant asked for a delay until August 31, 2004 for one more additional submission. This submission was received on September 2, 2004, after the Complainant’s self-imposed deadline. It was found to be procedurally deficient by the Forum.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant alleges that he holds registered trademarks in several countries for the DANCEFUSION mark. He alleges that the Respondent offered the disputed domain name for sale and uses the disputed domain name to offer commercial services, thereby violating Complainant’s trademark rights. According to Complainant, Respondent’s actions are not a bona fide offering of goods or services.
In addition, Complainant alleges that there was no bona fide offering of goods or services in connection with the Respondent’s use of the disputed domain name before any notice to Respondent of the dispute.
Furthermore, states the Complainant, the Respondent’s actions violate the provisions of the domain name registration agreement. Complainant states:
For example, [Respondent violates agreements] pertaining to (a) “…the sale of illegal or illegally obtained items;” (b) “must not infringe any third party’s rights, including but not limited to… trademark;” also Section 13.1 Applicable Laws. “Registrant [the Respondent] agrees to comply with all applicable local, state, federal, and international laws, statutes, rules and regulations…” or in other words, the Agreement makes it the Respondent’s responsibility “to determine whether your domain name registration infringes or violates someone else’s rights” (ICANN Policy Section 2(d). In practical terms this means the Respondent should have made sure not to buy from The Registry a USPTO-registered service mark or keep offering it for exorbitant resale even after being warned by the Complainant in 2002. By contractual agreement the Respondent should have researched, if it was not obvious, that the particular domain name to be resold at such a high price was a protected service mark or not.
Complainant alleges that the registration was made in bad faith, because:
Such words as “my client [Respondent] registered this … domain name without knowledge of any trademark owned by your client” are no valid defense for bad faith intent registration and use of Complainant’s service mark. The deed of bad faith intent can be demonstrated and proven on at least two counts: 1. having checked, prior to registration, and found that the name was a service mark yet still registering it as a domain name for resale to its rightful owner, his competitors, or whoever the highest bidder would be; 2. not having checked whether registering the domain name for trafficking and profiteering in that name would be a violation of The Registry-Respondent (registrant) contractual Terms of Agreement, yet still going ahead with it. On either count the Respondent could make a lawful or an unlawful choice--and apparently made the latter. The proof of intent is in the resultant deed, for otherwise trying to prove intentional, willful state of mind would be mere conjecture.
Respondent alleges that Respondent registered the disputed domain name because it incorporates the common descriptive term “dance fusion,” which is subject to substantial and non-infringing use by parties unassociated with Complainant. Respondent alleges that it did not register the disputed domain name with Complainant in mind.
Furthermore, Respondent claims that it has rights and legitimate interests in the disputed domain name, because it was using this name prior to notification of the dispute and because it incorporates common terms for which the Complainant cannot have exclusive rights.
Respondent concedes that it offered to sell the disputed domain name, but contends that this action, by itself, does not constitute bad faith under the Policy.
C. Additional Submissions
Complainant submitted nine additional submissions, none of which were timely, since they were sent after the deadline provided for in ICANN Rule 7. Complainant’s first additional submission did not contain any new material facts, and simply re-iterated Complainant’s rights in its DANCEFUSION mark as evidenced by registration with the USPTO. Complainant also addressed a few of Respondent’s claims in its Response. In addition, Complainant expressed frustration with delivering all necessary documents pertaining to this claim to Respondent, due to Respondent’s incorrect contact information.
Complainant’s second additional submission included corrections to a typographical error made on Complainant’s Annotated Index and Schedule of Alphabetical exhibits. Complainant’s third additional submission consisted of a procedural complaint directed towards the National Arbitration Forum in regards to the 5 day limit for Complainant to file an additional written statement in response to Respondent’s answer, and a complaint pertaining to Complainant’s frustrated efforts in obtaining Respondent’s correct contact information.
Complainant’s fourth additional submission included a request to strike Ms. Linda Byrne from the pool of Panelists for the addition of the Honorable Gerald Mager. However, neither Complainant nor Respondent requested Ms. Byrne as a Panelist during the selection process. Therefore, Ms. Byrne was not named as a Panelist, and cannot be replaced. Further, due to Complainant’s failure to submit the Honorable Gerald Mager’s name to the Forum during the selection process, Complainant’s untimely request for the Honorable Gerald Mager will not be considered for purposes of procedural efficiency. Complainant also requested the Forum to discard all of Complainant’s additional submissions submitted prior to the fourth additional submission, in addition to a demand for Respondent to provide an explanation with evidence as to why the contact information Complainant obtained from the WHOIS database was not a valid address. Additionally, Complainant included identical copies of Complainant’s first, second and third additional submissions.
Complainant’s fifth, sixth, seventh, eighth and ninth additional submissions consist of nothing more but numerous duplicate copies of Complainant’s first, second, third and fourth additional submissions without the addition of any new, relevant or material facts or issues presented.
Respondent’s additional submission was submitted after Complainant’s ninth additional submission, and did not include any additional material facts. Respondent’s additional submission simply addressed Complainant’s concerns in Complainant’s numerous and excessive additional submissions. Specifically, Respondent denied providing incorrect contact information in the WHOIS database, apologized for Respondent’s error in stating the date of Complainant’s earliest registered mark was later than the Registered date of the disputed domain, and conceded that Complainant’s mark is a valid registered trademark that is identical or confusingly similar to the disputed domain name.
On August 26, 2004, after the appointment of the Panel, the Claimant submitted the following message, by E-Mail:
The August 25, 2004 email by Ms. Johnson, Case Coordinator, about the appointment of the Panel and related matters, also stated that basically, correspondence and contact with the Panel are to be made through the National Arbitration Forum with copies of written documents and correspondence also sent to the other party. This is significant because the Complainant has been unfairly deprived of time to submit a complete Additional Written Statement to the Response on account of irregularities with Respondent's Whois mailing address identity that had to be researched time consumedly within the five days allotted to the Statement to establish the legality of Respondent's participation as legal entity in this proceeding. It is grossly unfair that this vital information gathering left no time for a complete, proof-read and corrected Statement with sub-statements made out on all the pertinent issues as intended. His choice, as first time NAF/ICANN dispute procedure user was: take much of the five day available time trying to resolve Respondent's identity and not include enough of other vital issues for a complete satatement, or include them and not provide time consumedly researched, documented evidence of Respondent's postal mail address identity being possibly false, and be at least partly responsible for the consequences of the procedure going on under the Respondent's possibly fictitious legal identity. This is irrespective of whether that identity proves to be correct or not later in the proceeding. The Complainant should not have been held up by a situation like this in mid-course and prevented by it from completing his Additional Written Statement fully. Therefore, the Complainant will write a letter by Tuesday midnight, August 31, 2004 by email or postal mail or both, to the National Arbitration Forum intended for the appointed Panelists with copies to Respondent, and in that letter include, among related matter, the evidence-based arguments addressing issues raised by the Respondent the Complainant had no time to include in his original Additional Submission owing to the exacerbating circumstances described. And the Complainant is hereby asking the NAF and the Honorable Panelists that they accept this written communication as part of the complete record to be considered by the Panel under NAF Rule 11. c. "Communications Between Parties and Panel.
On September 2, 2004, the Complainant submitted an additional brief. In this submission, Complainant reiterates his allegation that the Respondent’s mailing address was not correct, and that he has rights to the DANCEFUSION mark which, he claims, is not descriptive, generic, subject to substantial third party use, or common (contrary, says the Complainant, to what the Respondent alleges). Indeed, states the Complainant, it was he who coined the term “dancefusion” in 1980. Complainant states:
The Complainant hereby requests that professional dance experts of the calibre of the Complainant of both Complainant’s and Respondent’s choice on an equal basis, or the Panel’s choice as approved by both, be brought in to testify before the Panel at the Complainant’s and Respondent’s expense, to provide an acceptable legal basis for the Panel’s decision.
Complainant further argues that Respondent’s production of many web sites that use the terms “dance” and “fusion” does not prove that these are common terms, but prove, at most, that there are many infringements of Complainant’s mark. Further, argues Complainant, his business will not be viable if Respondent is allowed to retain the disputed domain name.
Finally, Complainant alleges that Respondent must have registered the disputed domain name primarily for the purpose of selling it to the Complainant, since nobody else would be willing to pay much money for it.
In this last submission, Complainant further repeats allegations and arguments made in his previous submissions.
Complainant has registered and common law rights in the DANCEFUSION mark since 1980. The marks were registered in 1992. These rights predate the registration of the disputed domain name.
Respondent offers links to dance-related web sites at the disputed domain name. These activities predate the dispute regarding the domain name. Respondent registered the disputed domain name in January 2001; there was correspondence regarding the possible sale of the disputed domain name in April 2002; the complaint was filed in July 2004.
Respondent made a generic public offer to sell the disputed domain name.
The first issues to be decided by this Panel are procedural issues.
Complainant failed to submit any of its nine additional submissions in a timely fashion. Furthermore, none of the nine additional submissions contained any new material facts: they simply reiterated Complainant’s rights in its DANCEFUSION mark as evidenced by registration with the USPTO; addressed a few of Respondent’s claims; expressed frustration with delivering all necessary documents pertaining to this claim to Respondent, due to Respondent’s incorrect contact information; included corrections to typographical errors; and discussed non pertinent matters.
Respondent’s additional submission was submitted after Complainant’s ninth additional submission, and did not include any additional material facts but did address Complainant’s concerns.
Complaint’s final submission repeats earlier arguments and does not include any additional material facts.
The Panel could have chosen to decline Complainant’s and Respondent’s deficient additional submissions in deciding this case, as these additional submissions were not submitted in a timely fashion, and did not include any new material facts or claims pertinent to the matter at hand. This is in particular the case for the Complainant’s last submission, which was received after the Complainant’s self-imposed deadline for this submission. See Lawrence Bridges c/o Red Car, Inc. v. Gilbert Kuang a/k/a Sonnet Digital Media Corp., FA 137040 (Nat. Arb. Forum Jan. 29, 2003) (refusing to consider Respondent’s untimely second additional submission); see also Marco Publ’g Corp. v. Blacker Media, FA 113977 (Nat. Arb. Forum Aug. 6, 2002) (refusing to consider Respondent’s second additional submission as it was untimely and contained no new material facts); see also Glenwood Springs Chamber Resort Ass’n. v. College Transp. Inc. d/b/a Website For Sale, FA 98825 (Nat. Arb. Forum Oct. 31, 2001) (declining to consider Complainant’s Second additional submission because it was untimely and submitted without the required fee).
But, in accordance with Rules 10(b) and 10(c), the Panel admits the additional submissions. A precedent can be found in Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000); see also American Airlines Inc. v. WebWide Internet Communication GmbH, FA 112518 (Nat. Arb. Forum June 13, 2002) (deciding to accept both Complainant and Respondent’s second additional submissions, despite the fact that they did not comply with Forum Supplemental Rule 7).
Complainant requests that the Panel call expert witnesses to determine whether or not the Complainant’s mark is descriptive, generic, a common term, or subject to substantial third party use. Considering Rules 10(a), 10(c) (first sentence), 10(d) and 13, the Panel declines to call such expert witnesses. Indeed, proceedings in front of a national court are a more appropriate venue for such testimony than this Panel would be.
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 has established rights in the DANCEFUSION mark through registration of the mark with several trademark authorities across the world, including the United States Patent and Trademark Office (Reg. No. 1,724,364, issued October 13, 1992, Reg. No. 2,768,579, issued September 30, 2003), Republic of Hungary, World Intellectual Property Organization in Geneva, Switzerland, and Hungary-Paris Convention in the United Kingdom. Once a mark has abeen registered, the date in which the registration’s rights in the mark are effective reverts back to the date the application was filed with the United States Patent and Trademark Office. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption); see also FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003) (finding that Complainant’s rights in the FDNY mark relate back to the date that its successful trademark registration was filed with the U.S. Patent and Trademark Office); see also J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the principal register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration).
Moreover, Complainant has used the mark in commerce since 1980 and has thus established common law rights in the mark through its use in commerce. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Fistech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that Complainant has common law rights in the mark FISHTECH, which it has used since 1982).
Furthermore, the addition of the generic top-level domain “.com” in the domain name is irrelevant in determining whether the domain names are confusingly similar to Complainant’s mark. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
Therefore, the Panel unanimously finds that the disputed domain name is identical or confusingly similar to the disputed domain name.
Rights or Legitimate Interests
Complainant argues that Respondent cannot have rights or legitimates interests in the contested domain names because they include the Complainant’s trademark, Respondent is not authorized to use the trademark, and unauthorized use cannot constitute a bona fide offering of goods or services.
A majority of this Panel cannot accept this argument to the extent that the Respondent is using the contested domain names to point to web sites that offers links to legitimate dance-related activities. As the panel stated in Bayerische Motoren Werke AG v. Bavarian AG, FA0204000110830 (NAF 17 June 2002):
Complainant asserts that Respondent has not met the requirements of paragraphs 4(c)(i) and (iii) of the Policy because Respondent uses Complainant’s BMW mark, without a license or authorization, to route Internet users to its web site <www.bavarianag.com> for commercial benefit. The Respondent offers used BMW automobiles for sale at that site.
Complainant argues that Respondent is not using the domain names "in connection with a bona fide offering of goods or services" because the Respondent is not a licensed BMW dealer. Therefore, according to the Respondent, the Complainant's use of the trademark BMW cannot be legitimate.
While it may be the case that the Respondent's use of the disputed trademark might violate US (or other) trademark law, the Complainant has not presented either evidence or arguments to this effect. It arguments are limited to the statement made above.
It is not obvious to this Panel that the use of the trademark BMW combined with a geographical term to route Internet users to a web site that very clearly indicates that
· it offers used BMW automobiles for sale and
· it is not an official BMW dealership,
is in any way illegitimate.
Furthermore, on the basis of the evidence presented, it is not obvious to this Panel that the Respondent violates paragraph 4(c)(iii) of the Policy, because Complainant has not presented any evidence to the effect that the Respondent has an intent to "misleadingly divert customers" or to "tarnish the trademark". Presumably the trademark is not tarnished by the mere offer to sell used automobiles.
The Complainant has argued that customers are mislead or confused when they are routed to the Respondent's site, because the Respondent is not an authorized BMW dealer. But the Respondent has not presented any evidence to the effect that Internet users automatically associate a domain name that combines the mark BMW with a geographic term with an authorized BMW dealer. Furthermore, the Respondent's site is very clear with respect to the nature of its business, so, prima facie, it would appear to this Panel that confusion is unlikely.
The majority of this Panel notes that under paragraph 4(a) of the Policy, the burden of proof rests with Complainant. Complainant has not proven that using the disputed domain names to point to web sites which offers items related to dance does not constitute a legitimate use.
Furthermore, the majority notes that the Respondent was using the disputed domain name well before any notice of the dispute, namely since January 2001. Although the complaint was filed in July 2004, Complainant might point to the exchange of E-Mails of April 2002 regarding possible purchase of the disputed domain name as a “notice of the dispute,” but that exchange of E-Mails took place after Respondent started using the disputed domain name, therefore Respondent’s use of the disputed domain name precedes any notice of the dispute.
According to the majority, the fact that the disputed domain name is a combination of two common words, namely DANCE and FUSION, furthermore argues against the Complainant’s implicit assertion that he has exclusive rights to the disputed domain name. See Ming v. Evergreen Sports, Inc., FA 154140 (Nat. Arb. Forum May 29, 2003) (stating that “[b]ald assertions of consumer knowledge are not an adequate form of evidence to establish secondary meaning in a name” in holding that Complainant had not established common-law rights in the YAO MING mark); see also Weatherford Int’ll, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (stating that “[a]lthough Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [a]lthough Complainant’s WELLSERV product and related services may be well-known among relevant consumers, that is a finding that must be supported by evidence and not self-serving assertions); see also Lowestfare.com LLA v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000) (finding that marks classified as descriptive cannot be protected unless secondary meaning is proven and to establish secondary meaning Complainant must show that the public identifies the source of the product rather than the product itself).
Complainant asserts, but does not provide any evidence to prove, that his trademark is famous. The majority cannot accept the assertion. The majority notes that Respondent has provided a signed declaration, declared to be true under penalty of law, by its Director, stating that the disputed domain name was registered because it is descriptive and stating that Respondent had no prior knowledge of Complainant’s mark or activities.
Furthermore, notes the majority, Respondent contends it has rights and legitimate interests in the domain name because it has used the domain name to make a bona fide offering of services pursuant to Policy ¶ 4(c)(i). See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that Respondents operation of a bona fide business of online prop rentals for over two years was evidence that Respondent had rights or legitimate interests in the disputed domain name); see also Bankinter S.A. v. BI Fin. Inc., D2000-0460 (WIPO Sept. 5, 2000) (stating that “[b]y September 1999, when first approached by the Complainant, the Respondent or its predecessors had used the <bankinternet.com> website for almost 4 years, thus demonstrating "a bona fide offering of goods and services").
Dissenting from the above, one member of the Panel notes that Respondent is not commonly known by the <dancefusion.com> domain name. There is nothing in the Record that indicates that Respondent is commonly known by the disputed domain name, pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question). The facts of this case are distinguishable from those in the Bayerische case relied upon by the majority of the Panel. In Bayerische Respondent actually offered goods for sale at its website. In the case at bar, Respondent does not offer any goods under the mark, nor is it or its business known by the domain name at issue.
The minority finds that Respondent’s use of a domain name that is identical to Complainant’s DANCE FUSION marks to redirect Internet users interested in Complainant’s services to a website providing links to other websites offering similar services, is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(i). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services); see also TM Acquisition Corp. v. Sign Guards a/k/a William Moore, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that Respondent’s diversionary use of Complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to competitors of Complainant, was not a bona fide offering of goods or services); see also WeddingChannel.com Inc. v. Andrey Vasiliev a/k/a NA and Free Domains Parking, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that Respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to Complainant’s mark, websites where Respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
On the basis of the above, the majority of this Panel finds that Complainant has failed to satisfy his burden of proving that Respondent has no legitimate rights in the contested domain name, while one member of the Panel finds that Complainant has satisfied his burden of proving this element of his claim.
Registration and Use in Bad Faith
Complainant asserts the fact that Respondent offered the contested domain name for sale, is evidence of bad faith registration and use. However, this is not the case. As stated in Manchester Airport PLC v. Club Club Limited D2000-0638 (WIPO, August 21, 2000):
Selling a domain name is not per se prohibited by the ICANN Policy (nor is it illegal or even, in a capitalist system, ethically reprehensible). Selling of domain names is prohibited by the ICANN Policy only if the other elements of the ICANN Policy are also violated, namely trademark infringement and lack of legitimate interest.
Clause 4(b)(I) of the ICANN Policy states that the following shall be evidence of the registration and use of a domain name in bad faith:
circumstances indicating that you have registered or you have acquired 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 [emphasis added]
Complainant argued that Respondent registered the domain name specifically for the purpose of selling it to Respondent, but has not provided any evidence to prove this allegation (and it must be stressed that the burden of proof is on the Complainant). On the contrary, the limited evidence available to the Panel indicates that Respondent most likely registered the disputed domain name in order to use it to attract network traffic and to sell it to whoever might wish to have it. Since registering generic names, even with the intent to resell them, is a legitimate business activity, the Panel holds that Respondent did not act in bad faith.
Complainant makes much of the fact that Respondent could have easily discovered, prior to registering the contested domain name, that it is identical to Complainant’s registered trademark. But Respondent’s failure to verify the existence of Complainant's trademark, is not, on its own, evidence of bad faith. Indeed, it is clear from the travaux preparatoires of the Policy that mere failure to conduct a trademark search does not constitute bad faith behavior. The closest equivalent to a legislative history for the Policy can be found in the 30 April 1999 Final Report of the WIPO Internet Domain Name Process, which formed the basis for the ICANN Policy (available online at: http://wipo2.wipo.int/process1/report/doc/report.doc ). This report states at paragraph 103:
… the performance of a prior search for potentially conflicting trademarks should not be a condition for obtaining a domain name registration. … Particularly in an international context, the requirement of searches prior to the registration of a domain name was generally considered to be unrealistic and conducive to unnecessary delays in the registration process.
And the report states at paragraph 105:
It is not recommended that domain name registrations be made conditional upon a prior search of potentially conflicting trademarks but it is recommended that the domain name application contain appropriate language encouraging the applicant to undertake voluntarily such a search.
Finally, Complainant alleges that the physical mailing addresses provided by Respondent was false. This allegation is disputed by Respondent. The Panel is not the appropriate forum in which to determine the facts concerning this situation. In any case, provision of an incorrect mailing address, absent other circumstances, would not be sufficient to prove bad faith behavior. See Microsoft Corporation v. Goldman, D2003-004 (WIPO, April 15, 2003).
Complainant does not allege, much less provide evidence for, any other type of bad faith behavior by the Respondent.
The panel unanimously finds that Complainant has failed to satisfy his burden of proving bad faith registration and use.
For the reasons mentioned above, the Panel concludes that relief shall be DENIED. The Complaint is DISMISSED.
Richard Hill (presiding Panelist)
Steven L. Schwartz, David P. Miranda (Panelists)
Dated: 8 September 2004