31st Jan 2011

NATIONAL ARBITRATION FORUM

DECISION 

Free Geek, Inc. v. FreeGeek.com c/o Nameview Inc. Whois IDentity Shield

Claim Number: FA1011001360890

PARTIES

Complainant is Free Geek, Inc. (“Complainant”), represented by Anne W. Glazer of Stoel Rives LLP, Oregon, USA.  Respondent is FreeGeek.comc/o Nameview Inc. Whois IDentity Shield (“Respondent”), represented by Ari Goldberger of ESQwire.com Law Firm, New Jersey, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <freegeek.com>, registered with Nameview, 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.

R. Glen Ayers (Chair), Hon. Carolyn M. Johnson (Ret.), and Diane Thilly Cablell served as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2010; the National Arbitration Forum received payment on December 6, 2010.

On December 9, 2010, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <freegeek.com> domain name is registered with Nameview, Inc. and that Respondent is the current registrant of the name.  Nameview, Inc. has verified that Respondent is bound by the Nameview, 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 December 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 2010 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@freegeek.com.  Also on December 10, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 December 31, 2010.

A timely and proper Additional Submission was received from Complainant styled Complainant’s Supplemental Submission.

On January 6, 2011, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed R. Glen Ayers (Chair), Hon. Carolyn M. Johnson (Ret.), and Diane Thilly Cabell as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant asserts that it holds a valid U.S. trademark, registered in 2007 (the application was filed in 2006).  The mark, “FREE GEEK,” is identical to the Respondent’s domain name <freegeek.com>. Complainant has registered <freegeek.org>.

Complaint is an entity which works to recycle computer equipment, which it refurbishes, where possible, in order to serve community needs.  FreeGeek, the entity, has been using the name for ten years.  (It registered its <freegeek.org> domain name in February 2000.)

Complainant asserts that the domain name and mark are identical.

Complainant asserts that Respondent has no rights in the name.  Respondent does not have permission to use the name, it is not commonly known by the name, and does not “use the name in combination with any bona fide offering of goods and services.”

FreeGeek also says the mark was registered “in bad faith.”  Complainant argues that Respondent’s commercial pay-per-click advertising on a parked website is not a legitimate use….”  Free Geek goes on to assert that the registration was made to deny use by the mark owner and for commercial gain.

B. Respondent

Respondent asserts that it has both a legitimate interest in the domain name and that there is no evidence of bad faith.  Respondent states that the name was registered on December 28, 2001.  Complainant’s Oregon-based business was started in February 2000, but certainly was not well-known elsewhere when the domain name was registered.  Before registration of the name, the Complainant’s “.org” website received only 37,961 visitors.

Respondent also states that the Complainant’s mark was not a common law mark.  Further, “free” and “geek” are common words, but descriptive and of value because they are descriptive, like <youtube.com>.

Respondent asserts that there is no evidence that it attempted to “target” Complainant’s customers.  Respondent, located in Barbados, asserts that it never knew of Complainant’s existence. Respondent states: “Evidence demonstrating that Respondent registered freegeek.com solely because it is a descriptive term composed of common words are the thousands of other domain names it registered containing simple seemingly made-up, non-trademark phrases containing the words “free” or “geek….”

Respondent states that the Disputed domain name is hosted by HitFarm.com, a parking service which displays pay-per-click advertising links from a feed by Yahoo!. 

Respondent states that there was no trademark in December 2001 when the name was registered.  Six years later, in April 2006, Complainant applied for its mark.  Respondent asserts that “a trademark must predate the registration date of a disputed domain.”

Respondent argues that registration of descriptive term domain names, such as <freegeek.com> establishes a legitimate interest, where the domain was not registered with a trademark in mind.  Respondent continues and asserts that there is no evidence of bad faith in its registration of the name.  It asserts it had no knowledge of the Complainant or its use of the name FreekGeek.  In fact, the name had previously been registered to a third party and abandoned.

Respondent has provided, among other exhibits, the “Declaration of Kamante Fonde-Miller” to support is response.

C. Additional Submissions

In an additional submission, Complainant asserts that there is no dispute that the domain name <freegeek.com> and the Mark are identical.

Complainant goes on to discuss the allegations that the FREE GEEK mark is descriptive, not distinctive.  Asserting that Respondent ignores basic trademark law, Complainant attempts to establish that its mark is distinctive and valid.

Complainant points out that the defense asserted by Respondent, which is that registration of the domain name prior to trademark application or registration, is not always accepted.  Here, Complainant asserts that it was offering goods and services under the name before registration.  Late in the Additional Submission, Complainant points out that Respondent renewed its registration after the mark was issued.  Some panels have found that to be inappropriate and evidence of bad faith.  Other evidence of bad faith seems to be missing.

As to “rights in the name,” Complainant asserts that Respondent’s business model, the click-through usage, is not appropriate.  Complainant also asserts that this business model does require some investigation.  But, how there could be investigation before the Mark application was filed or the Mark issued, given the size of Complainant’s business and its small regional presence, is not explained.

FINDINGS

The facts are not really disputed.  Obviously, the domain name and mark are identical.  Complainant has made a prima facie case and there is no effective rebuttal.  Although Complainant makes some attempt to show some sort of common law mark prior to registration, the Complainant fails to make a prima facie case for that argument.

There is no dispute that the re-registration of the domain name occurred after the Mark was issued.

As to rights in the name, Complainant has made a prima facie case, for Respondent is not known by the name, has no license, and the name, even if comprised of two generic words, was accepted for registration by the UPTO.  However, Respondent has shown that it has used the name for commercial purposes, although those commercial purposes are limited to a “click-through” business model.  Apparently this has been a successful business for Respondent, for it asserts registration of an extraordinary number of combinations of two or more generic words, which then show upon on search engines and lead to “click-through” revenues.  This panel, in contrast to other panels, finds that the use of this model and evidence of the use is enough to justify a factual finding that Respondent has used the name for commercial purposes.

And, finally, Complainant has made a prima facie case of bad faith if only by asserting that Respondent re-registered the domain name after the mark was issued.  However, there is no evidence that Respondent was aware of the mark.  There is certainly no evidence that Respondent is attempting to sell the domain name or that it has “poached” any of the Complainant’s business or customers (which is to say that the parties are not competitors).

Further, Complainant has registered the domain name <freegeek.org> and certainly has sole use of that domain name.

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.

 Introduction 

Two of the panelists agree that Respondent should be charged with exercising some diligence at renewal to determine if there are outstanding marks which conflict; one does not.  However, re-registration in this case is not a major issue, for there is no other evidence of bad faith and the parties do not compete.

 Identical and/or Confusingly Similar:  Policy paragraph 4(a)(i)

 The Panel finds that registering a mark with the USPTO conclusively proves Complainant’s rights in the FREE GEEK mark for the purposes of Policy ¶ 4(a)(i) dating back to April 13, 2006, even when Respondent lives in a different country than where the mark is registered.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant’s federal rights is . . . the filing date of its issued registration. Although it might be possible to establish rights prior to that date based on use, Complainant has submitted insufficient evidence to prove common law rights before the filing date of its federal registration.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).  

Although Complainant also argues that it has common law rights in the FREE GEEK mark dating back to 2000 due to its continuous use of the mark in commerce and the alleged subsequent acquisition of secondary meaning, the Panel has determined that there is insufficient evidence that any common law rights existed at the time of the original domain registration. 

To do so, Complainant must provide evidence that consumers identified the terms “free geek” exclusively, or almost exclusively, with Complainant’s products or services.  Complainant simply failed to provide evidence that such an association existed in the minds of consumers.” 

The Panel finds that Complainant has failed to establish common law rights in the FREE GEEK mark dating back to 2000.  See Family & Children’s Center Inc. v. Johns, D2004-0497 (WIPO Aug. 30, 2004) (finding the complainant had not established secondary meaning with respect to its FCC mark where it was only operating in a small geographical area, Northern Indiana); see also Occidental Hotels Mgmt., S.A., & Corictal II, S.A. v. Hargrave Arts, LLC, FA 959645 (Nat. Arb. Forum May 21, 2007) (finding that the complainant did not submit sufficient evidence showing that its OCCIDENTAL mark had acquired the necessary secondary meaning for it to establish common law rights pursuant to Policy ¶ 4(a)(i)).

Therefore, Complainant’s rights in the mark only date from 2006.

Rights and Legitimate Interests: Policy ¶ 4(a)(ii).

The Panel has found that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and that the burden shifted to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

During the period before issuance of the mark, Respondent has clearly demonstrated that it acquired rights in the name by usage even if the usage has been limited to a “pay-per-click” links page.  Such usage does not itself signal a lack of rights and legitimate interests and can constitute a bona fide offering of goods or services according to Policy  ¶ 4(c)(i) or 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”); see also INVESTools Inc v. KingWeb Inc., FA 598845 (Nat. Arb. Forum Jan. 9, 2006) (holding that the respondent’s use of the disputed domain name to operate a web directory with links to investment-related websites in competition with the complainant constituted a bona fide offering of goods or services within the meaning of Policy   ¶ 4(c)(i)).

Respondent has established 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 telecommunications industry,” where a variety of other businesses used the mark in unrelated fields).

Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).

The Panel 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); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).

Respondent registered the domain name before Complainant had registered its mark, hence there was no formal notice that might have alerted Respondent to such a claim. Evidence indicated that Complainant’s business tended to be local and there is no evidence that Complainant was well-known either nationally or internationally at that time.  In short, there is little reason to consider that Complainant’s mark was, at that time, of such value as to attract a cybersquatter. At the time the mark was applied for and issued, the domain name had been in use and registered for many years.  Respondent having established rights or legitimate interests in the <freegeek.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel 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.”).

The Panel also finds that Respondent has not registered or used the <freegeek.com> domain name in bad faith for it finds that Respondent has not 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)).

The Chair of the Panel is concerned that the Respondent renewed its registration after the trademark was applied for and the USPTO registered the mark.  In RapidShare AG and Christian Schmid v. Fantastic Investment Limited, FA1008001338403 (Nat. Arb. Forum Oct. 8, 2010), a panel in which the Chair participated, found that “bad faith” could include renewal of a domain name after the issuance of the mark.  At least one member of the Panel disagreed with this approach.  And, in this case, the evidence of any other element of “bad faith” is non-existent.

Ultimately, the re-registration of the domain name after issuance of a trademark is irrelevant, because the Panel has determined that the Respondent has rights in the name, and the Complainant has failed to establish all three elements of the Policy.

DECISION

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

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

 

R. Glen Ayers, Chair, Panelist

Hon. Carolyn M. Johnson (Ret.), Panelist

Diane Thilly Cablell, Panelist

Dated:  January 31, 2011