9th Sep 2014

NATIONAL ARBITRATION FORUM

 

DECISION

 

LML Investments LLC v. P.A. Gordon

Claim Number: FA1407001571756

PARTIES

Complainant is LML Investments LLC (“Complainant”), represented by Jeremiah A. Pastrick of Continental Enterprises, Indiana, USA.  Respondent isP.A. Gordon (“Respondent”), represented by Ari Goldberger of Esqwire.com, New Jersey, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <countrygirl.com>, registered with Wild West Domains, LLC.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Paul M. DeCicco, Esq., The Honourable Neil Anthony Brown, QC, James A. Carmody, Esq., (Chair), as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 25, 2014; the National Arbitration Forum received payment on July 25, 2014.

On July 29, 2014, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <countrygirl.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name.  Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC 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 August 1, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 2014 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@countrygirl.com.  Also on August 1, 2014, 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 August 21, 2014.

On August 29, 2014, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointedPaul M. DeCicco, Esq., The Honourable Neil Anthony Brown, QC, James A. Carmody, Esq., (Chair), as Panelists.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A.  Complainant makes the following assertions:

1.    Respondent’s <countrygirl.com> domain name, the domain name at issue, is confusingly similar to Complainant’s COUNTRY GIRL mark.

2.    Respondent does not have any rights or legitimate interests in the domain name at issue.

3.    Respondent registered and used the domain name at issue in bad faith.

B.  Respondent filed a Response alleging, among other things:

1.     Respondent’s registration of the disputed domain name predates Complainant’s mark by seven years, which precludes a finding of bad faith registration.

2.    Respondent has used the disputed domain name in connection with email services, search services, dating services, music, and country themed items. Respondent’s use of the disputed domain name in connection with its descriptive meaning establishes Respondent’s rights and interests in the disputed domain name.

3.    Because of Respondent’s registration of the domain name at issue seven years prior to Complainant’s registration of COUNTRY GIRL, it is an absurd assertion to claim that Respondent registered in bad faith.

C:  Additional Submissions:  Each of the parties submitted an additional submission which was considered by the Panel.

FINDINGS

Complainant, LML Investments LLC, has been using the COUNTRY GIRL mark in commerce since 2004 in connection with the sale of clothing, accessories, paper goods, etc.  Complainant has a valid registration with the United States Patent and Trademark Office (“USPTO”) for the COUNTRY GIRL mark (Reg. No. 3,443,872, registered June 10, 2008). The domain name <countrygirl.com> is identical to the mark in which Complainant has rights.  Respondent is attempting to sell the disputed domain name for an amount in excess of its out-of-pocket costs.

Respondent’s registration of the disputed domain name predates Complainant’s registration of the Country Girl mark by 7 years.  As Respondent was not intending to target Complainant’s trademark, Respondent’s registration of the disputed domain name which is made of common descriptive terms, indicates that Respondent has legitimate interests in the disputed domain name.  Respondent has used the disputed domain name in connection with email services, search services, dating services, music, and country themed items. Respondent’s use of the disputed domain name in connection with its descriptive meaning establishes Respondent’s rights and interests in the disputed domain name.  Respondent’s offer of the disputed domain name for sale is not evidence of bad faith. The alleged infringing links displayed on the website to which the disputed domain name resolves do not target Complainant and cannot be considered to be in bad faith. Complainant is engaging in reverse domain hijacking.

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.

Identical and/or Confusingly Similar

Complainant has been using the COUNTRY GIRL mark in commerce since 2004 in connection with the sale of clothing, accessories, and related goods and has a valid registration with the USPTO for the COUNTRY GIRL mark (e.g., Reg. No. 3,443,872, registered June 10, 2008; filed April 11, 2007). Complainant’s registration of the Country Girl mark with the USPTO shows that it has rights in the mark pursuant to Policy ¶ 4(a)(i) dating back to its USPTO filing date. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant’s federal trademark registrations [with the USPTO] establish Complainant’s rights in the BLIZZARD mark.”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”.)

The disputed domain name <countrygirl.com> is identical to the mark in which Complainant has some established rights. The disputed domain name entirely encompasses Complainant’s COUNTRY GIRL mark, with the mere deletion of a space and the addition of the generic top-level domain (“gTLD”) “.com”. The deletion of a space and the addition of a gTLD do not adequately distinguish the disputed domain name from Complainant’s mark. SeeHannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). The Panel holds that the disputed domain name <countrygirl.com> is identical to the COUNTRY GIRL pursuant to Policy ¶ 4(a)(i).

Respondent notes that its disputed domain name was registered prior to Complainant’s claimed or rights in the mark.  However, because this argument is not applicable under Policy ¶ 4(a)(i), the argument will be presented under Policy ¶ 4(a)(iii).

The Panel finds that Policy ¶ 4(a)(i) has been established. 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts 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.”).

 

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).

 

Respondent has used the disputed domain name in connection with email services, search services, dating services, music, and country themed items during relevant times.  Such use of the disputed domain name in connection with its descriptive meaning establishes Respondent’s rights and interests in the disputed domain name. Previous panels have been persuaded in similar circumstances. In Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) the panel stated, “Respondent is using the domain <groceryoutlet.com> for a website that links to online resources for groceries and similar goods. The domain is therefore being used to describe the content of the site,” as evidence that the respondent was making a bona fide offering of goods or services with the disputed domain name. Respondent’s long prior use of the disputed domain name describes the content of the dispute site and such use evidences Respondent’s bona fide use of the name pursuant to Policy ¶ 4(c)(i).

 

The Panel finds that Policy ¶ 4(a)(ii) has not been established. 

Registration and Use in Bad Faith

Complaint claims that Respondent is attempting to sell the disputed domain name for an amount in excess of its out-of-pocket costs.  The disputed domain name has been listed as for sale by auction and that the starting bid for the disputed domain name is $100,000.00. Complainant asserts that this bid amount is wildly in excess of Respondent’s out-of-pocket costs associated with registering the domain. In Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) the panel found that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name. However, since the Panel finds that Respondent has rights in the domain name at issue which far predate and are superior in some respects to those of Complainant, it is clear that Respondent is legally free to offer the domain for sale at any price it wishes.  Complainant’s argument in this regard is completely frivolous and clearly offered in bad faith.

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 has rights or legitimate interests in the <countrygirl.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.”).

 

Respondent could not have registered the domain name to target Complainant’s mark as Complainant did not register the Country Girl mark for 7 years after Respondent registered the disputed domain name. As such, the Panel finds no evidence of bad faith under Policy  ¶ 4(b)(i). See JCM Germany GmbH v. McClatchey Jr., D2004-0538 (WIPO Sept. 17, 2004) (holding that the respondent did not violate Policy ¶ 4(b)(i) by attempting to sell the disputed domain name for profit because the respondent did not register the domain name with the intent to sell it to the complainant or one of its competitors).

Respondent’s registration of the disputed domain name in 1998 predates Complainant’s registration of the Country Girl mark by seven years.  This predation precludes any serious claim of registering the disputed domain name in bad faith as Complainant’s rights in the Country Girl mark did not even exist when Respondent registered the disputed domain name. Therefore, there is no evidence of bad faith under Policy ¶ 4(a)(iii). See 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).

The Panel finds that Policy ¶ 4(a)(iii) has not been established. 

Laches

Respondent asserts that Complainant should be barred by the Doctrine of Laches as the disputed domain name was registered 16 years ago, and Complainant gave no explanation for why it waited so long to initiate this Complaint. Respondent contends that the delay of 16 years to take action rises to the level of prejudicial and unreasonable delay. Therefore, the Panel may consider the doctrine of laches as evidence for Respondent in its considerations of the elements of the Policy.  See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant’s delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”); see also Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defense in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”).  

However, the Panel unanimously determined that it was not necessary to consider laches as a potential defense in this case despite the extreme length of time that has expired since the institution of these proceedings. Other profound defects in Complainant’s case, as noted above, have made that unnecessary.

Reverse Domain Name Hijacking

The Panel finds that Complainant and its counsel have acted inappropriately and in reverse domain name hijacking by initiating this dispute and continuing with it following the delivery of the Response by Respondent. Complainant is attempting to deprive Respondent, the rightful, registered holder of the disputed domain name, of its rights to use the disputed domain name. Complainant and its counsel should have known that they would be unable to prove at least two of the elements needed to prevail. Even a cursory review of the URDP and UDRP decisions would have alerted Complainant and its counsel to the fact that its case was devoid of merit. Thus, the Panel holds 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. Complainant is engaging in reverse domain hijacking policy”).

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED and Reverse Domain Name Hijacking is found on account of the unacceptable actions of Complainant and its counsel.

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

Paul M. DeCicco, Esq., The Honourable Neil Anthony Brown, QC,

James A. Carmody, Esq., (Chair)

James A. Carmody, Esq. (for the Panel)

Dated:  September 9, 2014