19th Dec 2012

national arbitration forum

 

DECISION

Interior Design Media Group, LLC v. P. A. Gordon

Claim Number: FA1210001467034

 

PARTIES

Complainant is Interior Design Media Group, LLC (“Complainant”), represented by J. Rodman Steele, Jr. of Duane Morris, LLP, Florida, USA. Respondent is P. A. Gordon (“Respondent”), represented by Esqwire.com, New Jersey, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <interiordesign.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 has no known conflict in serving as Panelists in this proceeding.

The Hon. Neil Brown QC, the Hon. Charles K. McCotter, Jr. (Ret.) and Debrett G. Lyons as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 12, 2012; the National Arbitration Forum received payment on October 18, 2012.

On October 15, 2012, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <interiordesign.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 October 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 27, 2012 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@interiordesign.com. Also on October 22, 2012, 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.

On November 6, 2012, Respondent submitted a Request for Extension of Time to Respond to Complaint with Complainant’s Request, requesting an extension of 14 days to file its Response. On November 6, 2012, the Forum granted Respondent’s request and extended the deadline to file a Response to November 27, 2012.

A timely Response was received and determined to be complete on November 27, 2012.

On December 10, 2012, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed the Hon. Neil Brown QC, the Hon. Charles K. McCotter, Jr. (Ret.) and Debrett G. Lyons (chair) as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant asserts trademark rights in the words INTERIOR DESIGN and alleges that the disputed domain name is identical to its trademark.

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent does not contest the validity of Complainant’s trademark registration and does not dispute the claim that the disputed domain name and the trade mark are substantially identical.

Nonetheless, it broadly denies the remaining allegations and submits that the words “interior design” are common English language words with a dictionary definition and over which Complainant does not have exclusive rights. Accordingly, Respondent submits that it has for the purpose of the Policy rights in the disputed domain name since it is a commonly understood dictionary term.

Respondent denies having acted in bad faith and denies having targeted Complainant or its trademark at the time it registered the disputed domain name and points to the fact that the disputed domain name has been registered for 15 years during which time Complainant took no action to recover the domain name.

FINDINGS

The factual findings pertinent to the decision in this case are that:

1. Complainant has used the words INTERIOR DESIGN since 1951 as the name of a periodical magazine published in the United States concerned with matters of interior design.

2. Complainant is the registered proprietor of United States Trademark Reg. No. 1,911,286 registered August 15, 1995 for the word mark INTERIOR DESIGN.

3. The disputed domain name was registered on May 19, 1997.

4. The domain name resolves to a website that features advertisements for and sponsored hyperlinks to third-party providers of interior design and related services.

5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.

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

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration, the Panel is satisfied that it has trademark rights. See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).

Respondent alleges generally that the trademark is composed of generic terms which Complainant has not monopolized. Panel notes here that the generic character of a trademark and/or a disputed domain name have in the past been regarded as potentially relevant to paragraphs 4(a)(ii) and 4(a)(iii) and largely disregarded in the assessment of identity or confusing similarity under this aspect of the Policy (see, for example, Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007); Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003)). This Panel follows that same practice.

The disputed domain name takes the trademark and merely adds the non-distinctive gTLD, “.com” and omits the space between the words “Interior” and “design”, neither being alterations or additions which distinguish the domain name from the trademark in any significant way so as to avoid confusion. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

The Panel finds that the disputed domain name is identical to Complainant’s trademark and so finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

No findings required (see, for example, 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).

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.

In spite of submissions from Complainant that Respondent has used the domain name in bad faith and has acted in bad faith generally by offering to sell the domain name to Complainant, the Panel finds that the determinative question in this proceeding is whether it can be said that it is more likely than not that Respondent registered the domain name in bad faith in May 1997.

Annexed to the Response is a declaratory statement from Philip Gordon (Respondent) stating, inter alia :

I registered the Disputed Domain on May 20, 1997, (sic.) because it is a common English term in the dictionary that I believed was not subject to third party trademark rights.

I did not register the Disputed Domain with Complainant’s trademark in mind and I had no knowledge of Complainant, its web site, its business name or trademark when I registered the domain name;

I registered the Disputed Domain solely because it is a common generic term composed of English words like hundreds of other domain names that I own including:

laptops.com, desktops.com, outdoors.com, unitedstates.com, italy.com, spain.com, management.com, getaway.com, autoinsurance.com, and insurancebroker.com.

Whilst Respondent states its ignorance of Complainant’s business and trademark, it has to be remarked that Complainant has used the trademark in connection with a periodical magazine since 1951. Were it necessary to have done so, Panel may have found common law trademark rights for the purposes of paragraph 4(a)(i) of the Policy. Nonetheless, that is not to say that Respondent was or should have been aware of a magazine concerned with interior design at the time of registration of the disputed domain name. Respondent deals in domain names and asserts that it did not target Complainant. It states that it registers only those names consisting of descriptive or generic terms. It provides evidence that “interior design” is a dictionary term. Although still a point attracting controversy, there is at least a steady line of UDRP panelists who have taken the view that a business dealing in generic domain names is prima facie legitimate for the purposes of the Policy.

There is no direct evidence that the disputed domain name was registered in bad faith. Panel would be required to infer bad faith in 1997. Coupled with the declaration from Respondent that it did not know of, or target, Complainant, there is an unexplained delay in the commencement of these Administrative Proceedings of 15 years from the time when the domain name was registered. Although the Panel does not in this instance find that the laches or delay is a reason in itself to deny the Complaint, it nonetheless finds the delay to be a factor affecting the integrity of a claim of registration in bad faith so many years earlier, as excessive delay such as has occurred in this case makes it difficult if not impossible to decide whether a registrant registered a domain name in bad faith. Applying the relevant standard of proof, Panel does not find registration in bad faith. Whilst the evidence shows that, for a time, the resolving website carried sponsored links to businesses and services concerned with interior design, that arguably abusive use of the domain name does not cause the Panel to alter its attitude to Respondent’s likely state of mind when it registered the domain name in 1997.

The Panel finds that Complainant has failed to establish the third and final element of the Policy.

SEPARATE BUT CONCURRING OPINION

Panelist Brown agrees with the Panel’s decision on all of the points covered but would go further on the issue of Rights and Legitimate Interests.

A decision on that element is not, of course, necessary for resolving the entire proceeding, in view of the decision against the Complainant on bad faith. However, the issue of Rights and Legitimate Interests is an important one and probably should be dealt with under its own heading. Respondent has argued that it has a right or legitimate interest in the disputed domain name because it is generic or descriptive and Respondent has not registered it with Complainant’s trademark in mind, targeted Complainant or its goods and services or engaged in any other inappropriate conduct with respect to the use of the domain name that might negate its right to use a generic or common expression. Respondent’s basic proposition is supported by the decisions it cites, namely CNRV, Inc. v. Vertical Axis, Inc., No. 1300901(NAF May 3, 2010) and National Gardening Association, Inc. v. CK Ventures, No. 1294457 (NAF Feb. 16, 2010) (“common words and descriptive terms are legitimately subject to registration as domain names on a first come, first-served basis”) and others. So the principle that Respondent relies on is well enough established. On the facts of the present case, the domain name is made up of common words that, when combined, make up a descriptive term. Indeed, it would be difficult to find an expression more generic or descriptive than “interior design” as those words describe the process or concept of designing the interiors of buildings and it is an expression widely and commonly used. Nor do the facts raise a suspicion that Respondent had Complainant’s trademark in mind when it registered the domain name. Indeed, the evidence suggests the contrary. In that regard, Respondent has given evidence that it has registered many such descriptive expressions (such as <laptops.com> and <autoinsurance.com> and that fact tends to suggest, although of course it cannot be conclusive, that Respondent was not motivated by Complainant’s trademark but was more likely motivated by the fact that it, Respondent, had identified a popular phrase that everyone understood and one that described activities that people might be interested in exploring or using on the internet. The real test of Respondent’s intentions, however, is how it has actually used the domain name. Complainant’s concern is that it has a magazine named Interior Design, but the whole of the evidence is that the domain name has not been used to promote a magazine of that or any other name. This panelist has looked at what can be produced by the Wayback Machine and has found that the website has in the past promoted services coming within the generic expression “interior design” such as interior design courses and the like, as it does today. Looking at the current site , it is apparent that as well as carrying legitimate generic advertisements, if the user types the words “ interior design magazine” into its search engine, it will still not give a link to Complainant’s Interior Design Magazine , but simply to job lots on all types of magazines, which is hardly what is generally understood by targeting. So there is no targeting of Complainant or its magazine; if there is, it is difficult to find, not revealed in any of the evidence, clearly the opposite of what the website is trying to achieve and completely ineffective. Complainant relies, of course, on its trademark, but its trademark it for ‘a magazine’ alone and it has chosen as that trademark a very descriptive expression with much wider application than for use as the name of a magazine. In that regard, Respondent rightly draws attention to another important principle stated succinctly in BrightSign LLC v. Administrator, Domain / Vertical Axis, Inc., FA1103001379395 (May 4, 2011). In that decision a 3 person panel unanimously said the following:

“Several panels have noted that the more descriptive a mark, the more difficult becomes Complainant’s burden of proof to establish registration and use with Complainant’s mark as a target. See, e.g., TLR v. United Engineering Servs. LLC, D2007-0148 (WIPO Apr. 9, 2007). Am. Appraisal Assocs. Inc. v. R Hagar, Kinja LLC, D2006-1556 (WIPO January 29, 2007). Further, in cases where circumstances have been quite similar to those at issue in this proceeding, a number of panels have held that use comparable to that demonstrated by Respondent is bona fide for purposes of paragraph 4(a) (ii) and that registration in bad faith is lacking. See, especially, Mariah Media Inc. v. First Place® Internet Inc., D2006-1275 (WIPO Dec. 6, 2006); see also Canned Foods, Inc. v Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001).”

Those remarks are equally applicable to the present case as Complainant has chosen a very descriptive mark, giving rise to a heavy burden of proof. The result is that Complainant has not discharged the high burden of proof that is on it to show that Respondent was using Complainant‘s mark as a target, as the facts are simply not there to support that proposition.

For these reasons I would find that Respondent has a right or legitimate interest in the disputed domain name.DECISION

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

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

Debrett G. Lyons

Presiding Panelist

The Hon Neil Brown Q.C.

Panelist

The Hon Charles K. McCotter, Jr. (Ret.)

Panelist

Dated: December 19, 2012