24th Jul 2003
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Giftcertificates.com Corp. v. John Zuccarini
Case No. D2003-0267
- The Parties
The Complainant is Giftcertificates.com Corp., of Seattle, Washington , United States of America, represented by Davis & Gilbert LLP of United States of America.
The Respondent is John Zuccarini of “to come”, Atlanta, Georgia , United States of America, represented by Ari Goldberger of ESQwire.com Law Firm, Cherry Hill, New Jersey, United States of America.
- The Domain Name and Registrar
The disputed domain name <giftcetificates.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com.
- Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2003. On April 8, 2003, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name at issue. On April 14, 2003, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant submitted a response sufficient to satisfy the Center and the Panel that the Complaint was technically adequate. The Center then verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced April 16, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2003. The Response was filed with the Center on May 13, 2003.
The Center appointed Frederick M. Abbott, Natasha Lisman and David E. Sorkin as panelists in this matter on June 24, 2003. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On May 19, 2003, Complainant requested leave to file a supplemental submission in reply to the Response for purposes of addressing a factual matter raised by Respondent that was claimed to provide the basis for a finding of reverse domain name hijacking. By Administrative Panel Procedural Order No. 1 dated June 27, 2003, the Panel granted leave to Complainant until June 30, 2003, to file a supplemental submission (transmitted by email to the Panel, Respondent and the Center) limited solely to addressing the factual matter raised by Respondent. On June 30, 2003, Complainant filed its Supplemental Submission.
On June 3, 2003, Complainant filed a Motion to Amend Complaint for purposes of amending the factual record it had presented with respect to the date of first use of its asserted service mark.
- Factual Background
Complainant registered the domain name <giftcertificates.com> on March 1, 1999 (Complaint, Exhibit C). Although the record is not clear regarding the date it introduced services in U.S. commerce, Complainant appears since on or about March 1999, to have operated an active commercial Internet web site at “http://www.giftcertificates.com” (id., paragraph 8). On that web site, Complainant offers for sale gift certificates for use with respect to a variety of third party enterprises (id., Exhibit B). In 2002, Complainant shipped more than 2.6 million gift certificates. Complainant has promoted its web site using the name “Giftcerticates.com”, and has received press coverage of its activities (id., Exhibit D).
On March 29, 2000, Complainant filed an application at the United States Patent and Trademark Office (USPTO) for the word service mark GIFTCERTIFICATES.COM, serial no. 76012856, in International Class 42, covering, inter alia, “computer on-line ordering services and telephone ordering services featuring gift certificates.” (Response, Annex 4). On November 7, 2000, the USPTO transmitted to Complainant a refusal of registration “because the proposed mark merely describes services”, stating that “Applicant’s mark describes a characteristic of the services because applicant’s services include providing gift certificates” (USPTO, Action No. 01, id., Annex 5). The refusal of registration from the USPTO indicated that failure to properly respond within six months would result in abandonment of the application. The application was abandoned on May 8, 2001. (Id., Annex 4).
The term “gift certificates” is incorporated in approximately 338 domain names (Namedroppers.com – Query Results, May 13, 2003, id., Annex 3), and is referenced on a great number of Internet web pages (640,000) not associated with Complainant (Google Advanced Search results, May 13, 2003, id., Annex 2). The referenced web pages include those on “http://hergiftcertificates.com”, “http://getagiftcertificate.com” and “http://amazon.com” (id.).
According to the Registrar’s Verification, Respondent “John Zuccarini” is the registrant of the disputed domain name <giftcetificates.com>. The Administrative Contact is “John Zuccarini.” The record of registration for the disputed domain name was created on January 19, 2000.
Respondent has submitted a Declaration stating, inter alia, “I registered the domain name giftcertificates.com [sic] it is a misspelling of the common dictionary term GIFT CERTIFICATES” (Declaration of John Zuccarini, May 13, 2003, Response, Annex 6).
As of April 3, 2003, the disputed domain name was used to redirect Internet users to a web site at “http://hanky-panky-college.com”. That web site includes as its home page a warning as to adult content. Upon entering, an Internet user would find explicit pornographic photographs and links to other pornographic web sites. (Complaint, paragraph 15 & Exhibit H).
Respondent in this proceeding has been the subject of numerous adverse decisions under the Policy, as well as having been the subject of various adverse findings with respect to abuse of domain names by U.S. courts (Complaint, paragraphs. 12-14 and Exhibits E-G).
The Registration Agreement in effect between Respondent and CSL Computer Service Langenbach GmbH dba Joker.com subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
- Parties’ Contentions
Complainant asserts that it is the holder of common law trademark rights with respect to the term “GIFTCERTIFICATES.COM” based on use in commerce in the United States (see Factual Background, supra).
Complainant argues that the disputed domain name, as a misspelling of its common law trademark, is confusingly similar to it.
Complainant states that Respondent has no rights or legitimate interests in the disputed domain name because he is using it to redirect Internet users to pornographic web sites and earning commissions thereby.
Complainant asserts that Respondent registered and is using the disputed domain name in bad faith by causing Internet users who are looking for its web site but misspell its domain name to be directed to pornographic web sites operated by third parties.
In reply to Respondent’s allegation that it had a duty to disclose the USPTO’s rejection of its trademark application, Complainant states that its asserted mark had acquired distinctiveness through use in its domain name prior to the filing of its application. It indicates that it elected not to submit a response to the initial rejection by the USPTO, which it considered unjustified, because of financial constraints resulting from the .com industry collapse in mid-2000. Complainant in that period was forced to abandon plans for an initial public offering. It states that:
“the fact that Complainant did not reference the Office Action in its Complaint, far from suggesting bad faith as alleged by Respondent, merely reflects Complainant’s good faith belief that a perfunctory PTO Office Action, which for valid business reasons was not responded to, should not be material to this action, especially when evaluated by the Panel within the larger context of Complainant’s established trademark rights in GIFTCERTIFICATES.COM and the bare-bones application record upon which the PTO had issued the Office Action.” (Complainant’s Supplemental Submission).
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to it, and to reject a finding of reverse domain name hijacking.
Respondent alleges that Complainant has no trademark or service mark rights in the term “GIFTCERTIFICATES.COM” because the term “gift certificate” is generic or at least descriptive. Respondent contends that the USPTO’s rejection of Complainant’s trademark application evidences the absence of rights in a mark. It states that “Absent enforceable trademark rights, the Complaint must fail.”
Respondent observes that Complainant is using the term “gift certificates” in its generic or descriptive sense.
Respondent indicates that it has a right or legitimate interest in the disputed domain name because it only incorporates a misspelling of a common term, and anyone is entitled to register and use a common term as a domain name.
Respondent argues that it could not have registered and used the disputed domain name in bad faith because Complainant has no rights in a trademark in that name.
Respondent states that the fact that a domain name directs Internet users to pornographic content does not in itself make the use illegitimate. It notes that the pornographic web site referred to in the Complaint included a warning page.
Respondent requests the Panel to dismiss the Complaint.
Respondent further requests the Panel to find that Complainant engaged in reverse domain name hijacking by filing its Complaint with knowledge that it did not have rights in a trademark, as evidenced by its failure to contest the refusal of registration by the USPTO, and by its intentional withholding of information regarding the USPTO’s refusal from the Panel.
- Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules, establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
In this case, Respondent filed a detailed Response. The Panel is satisfied that Respondent had adequate notice of the proceedings and a reasonable opportunity to respond.
The Panel granted leave to Complainant to reply to a factual matter which it asserted could not reasonably have been foreseen at the time it filed its Complaint. The Panel has accepted the Supplemental Submission filed by Complainant.
Complainant also filed a Motion to Amend Complaint for the purposes of correcting a potential factual discrepancy regarding its initially claimed date of first use of its asserted service mark. Complainant indicates that its motion resulted from “scrutiny of respondent John Zuccarini’s (‘Respondent’) Response.” It further indicates that it is still investigating its own factual submission, which may have been correct in the first place, but “is willing to rely only on its usage dating from 1999 and later”.
A party filing a complaint under the Policy is responsible for ascertaining facts prior to submitting its complaint. In its motion, Complainant not only proposes that the Panel consider a different set of facts, but also wishes to reserve rights in its old facts in case they turn out to be accurate. The Panel rejects the Motion to Amend Complaint, and suggests, in the future, a closer examination on the part of the Complainant, of the Complainant’s domain name registrations prior to filing a complaint under the Policy.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
- Identical or Confusingly Similar
Complainant asserts common law service mark rights in the term “GIFTCERTIFICATES.COM”. That term is formed in the customary manner of domain names by the elimination of a space between words, in this case “gift” and “certificates”, and by addition of a generic top level domain (gTLD) identifier, in this case “.com”.
It is well established in decisions under the Policy and by U.S. federal court decisions that addition of “.com” to a generic or commonly descriptive term does not create a term capable of serving a trademark function. The Panel will not further consider the gTLD “.com” as a potentially distinctive element of Complainant’s asserted service mark.
The term “gift certificate” is defined by Merriam-Webster’s Online Dictionary as a noun as “a certificate entitling the recipient to purchase goods or services in the establishment of the issuer to the amount specified”.
A generic term is one that in common usage refers to a genus of product. The Panel determines that the term “gift certificate” refers to a genus of product and is generic. The term is commonly used in American English to identify a voucher or coupon that an individual may exchange for goods or services. It is difficult to identify a synonym for the term without expanding the reference into a phrase.
Although a generic term might be used in a fanciful way and thereby acquire a distinctive trademark character in a limited and specific non-generic sense (e.g., “Apple” for computers), Complainant is claiming service mark rights in a term used in its generic sense. “Gift certificates” is being used to identify “gift certificates”.
Complainant attempts to equate its successful establishment of an online business at <giftcertificates.com> with evidence of acquired distinctiveness as a service mark. These two are by no means equivalent. Generic terms are highly valued as domain names because Internet users are very likely to use them to find products or services by reference to the genus. This does not mean that those terms can be taken out of the common language and reserved to enterprises as trademarks. When an enterprise elects to use a generic term as its domain name, it accepts that its rights in the domain name derive from its good fortune in having secured a valuable address on the Internet. Rights in such a domain name do not derive from a trademark.
The rejection by the USPTO of Complainant’s service mark application is evidence of the generic nature of “gift certificates”.
Because “gift certificates” is a generic term, Complainant cannot establish service mark rights in it, or in its domain name equivalent, <giftcertificates.com>. Absent establishing trademark or service mark rights, Complainant cannot maintain an action against Respondent for abusive domain name registration and use under the Policy. For this reason, the Panel need not and will not consider whether Complainant has satisfied other elements of the Policy.
- Reverse Domain Name Hijacking
The Rules define “Reverse Domain Name Hijacking” to “mean[s] using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name” (Rules, paragraph 1). Respondent has suggested that because Complainant knew it did not have rights in a mark, and failed to disclose evidence material to a determination (i.e., that the USPTO had rejected its application), it filed its Complaint in bad faith to deprive Respondent of his domain name.
Although the Panel considers that Complainant’s evidence of rights in a trademark is weak, its theory of rights is not so implausible that its assertion constitutes bad faith conduct. Parties not infrequently hold the belief that they may establish rights in terms that are eventually determined to be generic or merely descriptive, and it is not unreasonable to seek a formal determination to that effect.
Complainant should have disclosed the USPTO’s rejection of its service mark application in its Complaint since that rejection is directly relevant to the subject matter of this proceeding. Complainant could have explained its reasons for failing to prosecute the application without having been forced to do so by a diligent Respondent. However, the Panel is sufficiently persuaded that Complainant failed to prosecute its application for reasons other than forming an opinion that it was a fruitless enterprise. The Panel will not make a determination that Complainant acted in bad faith on the basis of its failure to disclose the rejection.
For all the foregoing reasons, the Complaint is denied. The Panel does not make a finding of Reverse Domain Name Hijacking.
Frederick M. Abbott
David E. Sorkin
Dated: July 24, 2003