8th May 2009
National Arbitration Forum
Connie Campbell Bratcher v. Inspirational Poetry Quebec
Claim Number: FA0902001249815
Complainant is Connie Campbell Bratcher (“Complainant”), represented by Barry R. Bullard, Florida, USA. Respondent is Inspirational Poetry Quebec (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <inspirationalpoetry.com>, registered with Tucows, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Honorable Charles Kuechenmeister and The Honorable Neil Anthony Brown QC as Panelists, Dr. Richard Hill as Presiding Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 26, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 9, 2009.
On February 27, 2009, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <inspirationalpoetry.com> domain name is registered with Tucows, Inc. and that the Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 March 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 6, 2009 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.
On April 6, 2009, the National Arbitration Forum granted Respondent’s April 3, 2009 Request for Extension of Time to Respond to Complaint without Complainant’s Consent, thereby setting a deadline of April 16, 2009 by which Respondent could file a Response to the Complaint.
On April 14, 2009, the National Arbitration Forum denied Respondent’s April 14, 2009 Request for Extension of Time to Respond to Complaint without Complainant’s Consent, thereby maintaining the April 16, 2009 deadline by which Respondent could file a Response to the Complaint.
A timely Response was received and determined to be complete on April 16, 2009.
On April 24, 2009, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Charles Kuechenmeister, The Honorable Neil Anthony Brown QC and Dr. Richard Hill as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
According to the Complainant, the disputed domain name has been used in public commerce worldwide since 1998 when it was first registered by the Complainant as a domain name via Network Solutions, the sole domain name registrar at that time. During the ensuing 10 years, the Complainant labored intensively to construct substantial creative and intellectual property and services built upon and offered through a website at the disputed domain name. During that time, a publishing company was also built upon the goodwill and prevalent popularity of that website. The products built upon that website include over 700 original works of inspirational poetry by the Complainant and two privately published books (over three hundred pages each book), at least one of which references the disputed domain name in the introduction of the book.
The Complainant states that future and intended goods and services she had planned (and continues to plan) for the website at the disputed domain name include a third book, over 400 additional poems, and the possibility of an entire suite of goods, services, and media (including video, personal appearances, ministries, greeting cards, websites, and any and all other types of media) intended to deliver strong and meaningful contribution to a worldwide audience and existing fan base.
The Complainant alleges that, while she had not registered with the United States Patent and Trademark Office for protection of her trademark and service-mark INSPIRATIONALPOETRY.COM, she had, in fact, by law, legally established ownership of the INSPIRATIONALPOETRY.COM trademark and service-mark via actual FIRST-USE AND CONTINUOUS USE IN PUBLIC COMMERCE FOR OVER 10 YEARS. This USE is prima facie evidence of Complainant’s ownership of this intellectual property service-mark/trademark known as INSPIRATIONALPOETRY.COM, the use of which by any other entity and in any format or appearance is an infraction upon and a violation of the Complainant’s rightful and established ownership. The Complainant had become and is commonly known by the trademark and service-mark of INSPIRATIONALPOETRY.COM via prevalent media and marketing collateral, including, but not limited to, websites, books, business cards, and brochures. Common intellectual property law provides for the recognition of Complainant’s clear ownership of INSPIRATIONALPOETRY.COM even though Complainant failed to seek additional protection via registration of Complainant’s ownership.
According to the Complainant, the disputed domain name became available because of an administrative error. The disputed domain name was then allegedly acquired by BWI Domains who, according to the Complainant, is “a known cyber-squatter who has a verifiable history of larcenous behavior regarding domain names and intellectual property.”
According to the Complainant, the Respondent is affiliated with BWI Domains.
The Complainant goes on to present her arguments regarding the other two elements of the Policy. For the reasons given below, the Panel finds that the first element of the Policy is dispositive in the present case, and so it will not summarize the Complainant’s arguments regarding the other two elements of the Policy.
According to the Respondent, it is an entity under the control of an individual. The sole purpose of that entity is to own and utilize the disputed domain name. Neither the Respondent nor the individual that controls it have any ownership interest in BWI Domains. BWI Domains has no ownership interest in the Respondent or in the disputed domain name.
The Respondent states that it purchased the disputed domain name from BWI Domains on February 8, 2008 in a package of twenty domains. The Respondent selected the domain based on its value as a descriptive term which was not subject to any trademark, which it knew was subject to substantial lawful third party use, and to which it believed no party could claim exclusive rights.
Further, says the Respondent, its registration of the disputed domain name had nothing to do with the Complainant. The Respondent had no knowledge of the Complainant, her website or her business name or purported trademark when it acquired the disputed domain name. The Respondent did not register the disputed domain name with the intent to sell it to the Complainant, to disrupt the Complainant’s business, or to confuse consumers seeking to find the Complainant’s website. The Respondent did not register the disputed domain name to prevent the Complainant from owning a domain name incorporating its purported trademark.
According to the Respondent, at the time it acquired the disputed domain name it was registered to BWI Domains. Accordingly, the Respondent would not have had an opportunity to learn of the Complainant’s purported trademark for INSPIRATIONALPOETRY.COM, an Internet address which the Complainant no longer owned and of which she had no longer had use or control.
The Respondent alleges that “inspirational poetry” is a descriptive term, composed of two common dictionary words. It describes poetry which is inspirational. In fact, the Complainant admits that “over 700 original works of inspirational poetry” formerly appeared on its website. The term “inspirational poetry” is subject to substantial third party use.
The Respondent states that it has used the Disputed Domain to display pay-per-click (“PPC”) advertising links related to inspirational poetry, and Respondent receives a share of the revenue generated from the advertising. The following are among the links on the website: inspirational poetry, inspirational poem, daily inspirational messages, prayers, inspirational quotations.
According to the Respondent, the Complainant has no registered trademark, and the Complainant would not be successful in acquiring a trademark for the term “inspirational poetry” or “inspirationalpoetry.com,” because “inspirational poetry” is descriptive for “poetry” which is “inspirational.” In order to acquire common law rights to the string in question, the Complainant would have to prove secondary meaning, which she has not done. Indeed, the Complainant must provide evidence that consumers identify the term “inspirational poetry” exclusively, or almost exclusively, with Complainant.
But, says the Respondent, the Complainant has provided no evidence of secondary meaning showing that consumers identify “inspirationalpoetry.com” with the Complainant. The Complainant’s self-serving assertions do not suffice, so there can be no doubt that “inspirational poetry” is a descriptive term.
Further, according to the Respondent, while the Complainant claims that INSPIRATIONALPOETRY.COM is a trademark, in fact it is simply an Internet address she used for e-mail and for her website address. Such Internet addresses do not function as trademarks and do not provide enforceable rights under the Policy
The Complainant cites numerous UDRP precedents to support its positions.
The Respondent goes on to present its arguments regarding the other two elements of the Policy. For the reasons given below, the Panel finds that the first element of the Policy is dispositive in the present case, and so it will not summarize the Respondent’s arguments regarding the other two elements of the Policy.
The Complainant has not proven that she has a trademark for the string INSPIRATIONAL POETRY.
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
The Respondent asserts that the INSPIRATIONALPOETRY.COM mark is not a trademark but rather merely the domain name that Complainant has used for its business. The Respondent correctly points out that the Complainant has not shown any evidence that she has traded under the mark aside from its use of the disputed domain name, and that there is insufficient secondary meaning due to the mark’s descriptive and generic content. Indeed, if the Complainant had been engaged in commercial activity using the disputed domain name as a common law trademark, she should have presented evidence of that activity, for example news reports, references, letters, other material associating her with the purported trademark. No such evidence has been presented to the Panel.
As the panel stated in Anna Nicole Smith c/o CMG Worldwide v. DNS Research, Inc. FA 220007 (Nat. Arb. Forum February 21, 2004):
The cases require a clear showing of high commercial value and significant recognition of the name as solely that of the performer. The Humphrey Bogart case cited by Complainant is a prime example of the type of case that would be expected to prevail, since virtually no one familiar with the movie industry would fail to recognize his name as that of the famous movie star. The Panel does not believe Complainant’s name has yet reached that level of fame.
That is a good description of what is expected and of how the evidence falls short in the present case.
Thus the Panel finds that the Complainant has failed to satisfy her burden of proving the first element of the Policy, namely that she has common law trademark rights in the mark or string INSPIRATIONAL POETRY. See Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (finding that when a disputed domain name, such as <187.com>, is made up entirely of generic or common terms, “good evidence will be needed to show a significant secondary meaning and, above all, one associated with Complainant.”); see also GLB Servicos Interativos S.A. v. Ultimate Search Inc., D2002-0189 (WIPO May 29, 2002) (holding that the complainant’s mere possession of a domain name registration, without demonstrating any common-law or registered rights in a mark, was insufficient to bring a claim under the UDRP).
Since this element of the Policy is dispositive, the Panel finds that it need not analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Rights or Legitimate Interests
For the reasons set forth above, the Panel finds that it need not analyze this element of the Policy.
Registration and Use in Bad Faith
For the reasons set forth above, the Panel finds that it need not analyze this element of the Policy.
As the Complainant has not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Dr. Richard Hill, Presiding Panelist
Honorable Charles Kuechenmeister,
The Honorable Neil Anthony Brown QC Panelists
Dated: May 8, 2009
National Arbitration Forum