18th Dec 2006
NATIONAL ARBITRATION FORUM
Prime Connections, LLC v. Covanta Corporation
Claim Number: FA0610000817103
Complainant is Prime Connections, LLC (“Complainant”), represented by David J. Simonelli, of Clark Hill PLC, 500 Woodward Ave., Suite 3500, Detroit, MI 48226-3435. Respondent is Covanta Corporation (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <primeconnections.com> (“the disputed domain name”), which is registered with Moniker Online Services, Inc. (“Moniker Online”).
The undersigned, David H Tatham, certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum (“the NAF”) electronically on October 9, 2006; the NAF received a hard copy of the Complaint on October 10, 2006.
On October 17, 2006, Moniker Online confirmed by e-mail to the NAF that the disputed domain name <primeconnections.com> was registered with Moniker Online and that the Respondent is the current registrant of the name. Moniker Online has verified that Respondent is bound by its 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 October 24, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 13, 2006 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on November 27, 2006.
On December 4, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the NAF appointed Mr. David H Tatham as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant claims common law rights in the name PRIME CONNECTIONS dating from April 28, 2002 for ‘providing lifestyle management and VIP concierge services namely personal concierge, travel, and home and leisure services; and dating services’. Several documents purporting to support this claim were annexed to the Complaint. Complainant also claims ownership of a registration, No. 2,770,176, for the service mark PRIME CONNECTIONS which was registered on September 30, 2003 in respect of “Dating Services” in Class 45. This registration gives April 28, 2002 as its date of first use.
Complainant contends as follows –
- That the disputed domain name is identical to its service mark PRIME CONNECTIONS.
- That Respondent has no rights or legitimate interests in the disputed domain name.
- An Internet search shows no connection between Respondent and the mark or the domain. Complainant believes that Respondent purchased the disputed domain name on August 9, 2005 which was long after Complainant’s use began and did not purchase any trademark rights or goodwill associated with it.
- Respondent’s use of the disputed domain name is an unfair commercial use, which derives profit by confusing consumers as to the source of the website. The look of the site is typical of “cybersquatter” or “typosquatter” sites in which the sole purpose is to display advertised links and make money when a visitor clicks on those links. Many of these sites are a template and look the same, but contain different categories of “information” which are similar to the types of categories of information a consumer would expect to find when attempting to reach the genuine site. For example, the categories listed on the website at the disputed domain name include ‘gifts’, ‘health & beauty’, ‘personal finance’, ‘related services’, technology’, and ‘vacation’ all of which are highly related to Complainant’s services and are categories one would expect to find on Complainant’s website. Their presence leads the visitor to believe that the site is that of Complainant.
- Complainant annexed to the Complaint copies of the websites at <businessdollar.com>, <christiansurfersvb.com>, and <dlcmulch.com> which, it contended, were said to be owned by the same owner – MDNH, Inc. – but which in fact, according to WHOIS information provided by Complainant, have different owners. By comparing the appearance of these 3 sites with the site at the disputed domain name, it is clear that each is created from a similar squatter template and then customized by listing categories a visitor would expect to find at the intended site. For example a visitor looking for Christian Surfers might mistakenly accesses the <christiansurfersvb.com> site instead of the genuine site at <christiansurfers.com>. The site at <christiansurfersvb.com> includes religious topics and its design is similar to the design of the site at the disputed domain name. It is clear therefore that Respondent’s use of the disputed domain name is a misleading diversion for commercial gain.
- Respondent is not commonly known by the disputed domain name, nor is there a bona fide offering of goods and services by Respondent on the website. Respondent has acquired no trademark or service mark rights in “prime connections” and therefore has no legitimate rights in the disputed domain name.
- The disputed domain name has been registered and is being used in bad faith because Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation and endorsement of Respondent’s website and the links contained therein. Respondent’s site at the disputed domain name exists to profit from people attempting to visit Complainant’s site at <primeconnections1.com> by leaving out the figure 1 . The links and categories of Respondent’s website mislead a visitor into thinking that the site is somehow affiliated with Complainant such that they will navigate and use the site. As a result, every time he/she clicks on a link, Respondent profits.
Respondent pointed out that the disputed domain name <primeconnections.com> was registered on September 16, 1999 – i.e. more than 2 ½ years before Complainant’s first alleged use of the mark on April 28, 2002, and more than 4 years before the September 30, 2003 registration date of Complainant’s trademark. A copy of the WHOIS entry for the disputed domain name was annexed to the Response.
Respondent contends that it is well established that it is impossible to prove bad faith registration under the Policy where a registered domain pre-dates a trademark, and that a Complaint filed under such circumstances constitutes reverse domain name hijacking. Respondent obviously had no knowledge, and could have had no knowledge, of Complainant’s mark when it registered the disputed domain name. Complainant and its counsel should have understood this and known there was no valid basis for a complaint under the Policy.
Respondent further contends that, notwithstanding that Complainant cannot possibly prove bad faith registration of the domain name, Complainant has failed to meet its burden of proof under each of the prongs of the Policy and the Complaint must be dismissed in any event. Respondent registered the disputed domain name because it incorporates the descriptive term “prime connections.” “Prime” means first in excellence or quality, and “connections” means a person with whom one is associated. Accordingly, “prime connections” means first rate associations and it has positive connotations. Respondent selected the disputed domain name because it is a desirable term to use for a web site connecting Internet users to third party advertisers. Respondent hosts the website at the disputed domain name with a third party service that places pay-per-click advertising links on the web page and shares the revenue earned with Respondent. This constitutes use in connection with the bona fide offering of goods and services. Respondent has no control over the links placed on the web site but, in any event, contrary to Complainant’s allegations the links are generic and were not selected in relation to Complainant’s trademark registration or its goods and services. Complainant’s trademark covers “dating services,” and there is no link for dating services on Respondent’s web site.
There is substantial third party use of the descriptive term “prime connections”. An advanced Google search for the term “prime connections,” without “primeconnections1,” “primeconnections.net,” “vip,” or “concierge” to eliminate references to Complainant, yielded 1,670 third party uses of this common descriptive term. The first page of the Google search was annexed to the Response. Respondent points out that there is also a third party registered U.S. trademark for PRIME CONNECTION for the service of providing customers with banking information, and a copy of the USPTO online report for Registration No. 1,516,664 was annexed to the Response.
Respondent had no knowledge of Complainant, its business, its website or trademarks when it registered the disputed domain name, and Complainant has proffered no evidence to the contrary.
Complainant cannot establish that Respondent lacks a legitimate interest in the disputed domain because it is a common descriptive term and because it uses it in connection with a bona fide offering of goods and services. Nor has Complainant established that Respondent has registered or used the disputed domain name in bad faith. Accordingly, the Complaint must be dismissed.
Annexed to the Response was a signed Declaration from Respondent’s President, Mr. Gregory A Ricks. In it he declares that –
- The disputed domain name was registered on September 16, 1999 because it was descriptive and a good name to use for a website connecting individuals to resources on the Internet.
- Respondent did not register the disputed domain name with Complainant’s trademark in mind and had no knowledge of Complainant, its website, its business name or trademark when it registered the name.
- Complainant has not proffered any evidence demonstrating that Respondent had such knowledge. Respondent did not register the disputed domain name with the intent to disrupt Complainant’s business, or to confuse consumers seeking to find Complainant’s web site.
- Respondent did not register the disputed domain name to prevent Complainant from owning a domain name incorporating its trademark.
- Respondent hosts the website at the disputed domain name with Marchex, Inc., which provides generic sponsored advertising links and shares the revenue earned from advertisers with Respondent.
- Marchex selected the links that appear on the web site without input from Respondent. The links are generic and are not associated with Complainant’s online VIP concierge service. A print-out of the <primeconnections.com> homepage was annexed to the Response on which the website is described by Marchex as “Your Finance Resource,” and also provides links related to personal finance.”
Reverse Domain Name Hijacking
Respondent contends that there should be a finding of Reverse Domain Name Hijacking because: the Complainant knew or should have known at the time it filed the Complaint that it could not prove that the domain name was registered in bad faith; because the disputed domain name incorporates a descriptive term subject to substantial third party use, which anyone obviously has the right to register and own notwithstanding a trademark; and because the disputed domain name was registered 3 years before the Complainant filed an application for its mark and 4 years before it even used it.
In support of these arguments, Respondent referred to a number of UDRP Decisions and argued that, in addition to denying the Complaint, the Panel should issue a decision holding that Complainant has engaged in Reverse Domain Name Hijacking.
DISCUSSION AND FINDINGS
Paragraph 15(a) of the Rules for the 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
There is no doubt that the disputed domain name <primeconnections.com> is identical to the name PRIME CONNECTIONS seeing that it is customary to disregard a generic top-level domain (“gTLD”) suffix such as ‘.com’ for the purpose of comparison.
Complainant alleges ownership of a registered trademark for PRIME CONNECTIONS. However, the copy of this mark that was annexed to the Complaint shows the registration to be not in the name of the Complainant, but in the name of a Mr. Joseph J Jacoboni. As quoted above, a Panel must make its decision on the basis of, inter alia, the documents submitted by the parties but, just to make sure that there had been no assignment of this registration, the Panel inspected the records of the USPTO and found that at this time the mark is still shown to be registered to Mr. Jacoboni. Thus, it could be said that this Complaint fails at the very first hurdle because Complainant itself does not own a registration of the trademark PRIME CONNECTIONS. However it does not fail completely, as Complainant also claims common law rights in the name PRIME CONNECTIONS. It is therefore necessary to examine this claim.
In the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” which was published last year, the consensus view of what needs to be shown for a complainant to successfully assert common-law or unregistered trademark rights, is as follows:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”
The Complainant annexed the following copy documents as evidence of its common law rights:
- A document which is alleged to be a page of Complainant’s website which was submitted to the USPTO on June 9, 2003 at the time of proving use with the USPTO. [The Panel notes that in fact the copy supplied with the original of the Complaint is illegible.]
- A document dated March 1, 2003 addressed to ‘Prime Connections’ from AT&T. This is stated to be “Not a Bill” but it is not at all clear what it actually is.
- The first page of a Letter of Agreement dated June 23, 2003 between Intercast Media, Inc and Prime Connections, Inc. for the development of a web site by the former.
- An Executive Summary which describes the activities of PrimeConnections, which is dated February 2003.
- The first page of an 8 page Employment Agreement dated February 20, 2003 between Prime Connections, Inc. and Michael Fazio.
- The first page of a Proposal, dated March 3, 2003, by Innova Solutions for building a Call Center for Prime Connections.
- A Confidential Document Proposal dated June 23, 2003 prepared by ITegraNET Corporation for PrimeConnections and entitled “Solution Rough Order of Magnitude Estimate”.
- A document entitled “PrimeConnections Managers and Agents June 12, 2002”. This lists a number of names and telephone numbers and appears to be an order for business cards.
The Panel notes that all of the above documents cover a 1 year period between June 2002 and June 2003. There is nothing to prove that Complainant has traded or done any business after that date; there is none of the information suggested above in the WIPO Overview as being relevant to prove that a name has acquired secondary meaning; and, with the single exception of the Executive Summary, none of the ‘evidence’ relates to Complainant’s alleged activities for “providing lifestyle management and VIP concierge services namely personal concierge, travel, and home and leisure services; and dating services”. The Panel is not satisfied that the evidence supplied by Complainant is sufficient to establish that Complainant’s use of ‘Prime Connections’ has even reached the threshold of acquiring the necessary degree of distinctiveness to establish the phrase exclusively in the public’s mind with Complainant, let alone passed it. In Molecular Nutrition, Inc. v. Network News & Publications FA 156725 (NAF June 24, 2003) it was found that the Complainant had failed to establish common law rights in its mark because the mere assertion of such rights were insufficient without accompanying evidence to demonstrate that the public identified the Complainant’s mark exclusively or primarily with Complainant’s products. Also in Advanced Relational Technology., Inc. v. Domain Deluxe D2003-0567 (WIPO October 13, 2003) it was found that the Complainant had failed to establish rights in the HOME DESIGNER mark because it was “certainly descriptive and probably generic” and the Complainant had not shown that the public identified its goods with the mark.
Therefore Complainant’s claim to have common law rights in its name is not sufficient for it to succeed under ¶ 4(a)(i) of the Policy.
In view of this finding the Panel has not considered the questions of Rights or Legitimate Interests or Bad Faith. However the Panel notes that it would surely have been impossible for Complainant to prove bad faith if, as Respondent alleges, the disputed domain name was registered long before Complainant’s claimed date of first use of its name. However there does seem to be some dispute between the parties over the date of the disputed domain name. Complainant alleges that Respondent acquired the disputed domain name on August 9, 2005, while Respondent states that the name was first registered on September 16, 1999. Complainant provides no documentary evidence to support its claim, but Respondent does in the form of a WHOIS printout. This shows that although the name is currently owned by Respondent, there have been a number of changes to the name in the course of its existence. Thus it may well be that it was not Respondent who first registered it, despite Mr. Ricks’ assertion to the contrary. However this is not relevant in view of the Panel’s finding that Complainant does not itself possess any rights in the name PRIME CONNECTIONS.
Reverse Domain Name Hijacking
Reverse Domain name hijacking is defined in ¶ 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
The Rules go on, at 15(e) to state:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
In this case the Respondent contends that Complainant has engaged in reverse domain name hijacking. To prevail in such a claim, Respondent must show either that Complainant knew of Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use and nevertheless brought the Complaint in bad faith.
The Panel suspects Complainant registered <primeconnerctions1.com> as its domain name when, in 2002 it discovered that its name of choice <primeconnections.com> was already registered. Perhaps Complainant discovered earlier this year that ownership of the disputed domain name had changed and he may have thought that this presented him with an opportunity to acquire it as by now there was a trademark registration of PRIME CONNECTION. If this was the case, it was bad advice for it is not the acquisition date of a domain name that counts, but the registration date.
However this is pure guesswork. The fact is Complainant knew, or should have known at the time it filed the Complaint, that it could not prove that the domain name was registered in bad faith.
There are many previous cases where panels have found there was bad faith in filing a Complaint under the Policy when a Respondent’s domain name registration preceded a Complainant’s creation of its rights. See, for example, Futureworld Consultancy Pty Ltd. v. Online Advice D2003-0297 (WIPO July 18, 2003) and Carsales.com.au v. Flanders, D2004-0047 (WIPO Apr. 8, 2004). In both of theses cases there was a finding that the Complaint was brought in bad faith in an attempt at reverse domain name hijacking because “Complainant knew or should have known at the time it filed the Complaint that it could not prove that the domain name was registered in bad faith.” Also, in Aspen Grove, Inc. v. Aspen Grove, D2003-0365 (WIPO July 22, 2003), as in the present case, the Complainant failed to demonstrate it had trademark rights in the disputed domain name and the Respondent had registered the disputed domain name some two years before the Complainant came into existence and thus could not have been in bad faith at the moment of registration relative to the Complainant.
The Panel has found that Complainant has demonstrated no trademark rights in the disputed domain name and that, pursuant to Rule 15(e) Complainant filed an unfounded Complaint in an attempt at reverse domain name hijacking. Complainant has failed to established any of the three elements required under the ICANN Policy, and the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the Complaint be dismissed.
David H Tatham, Sole Panelist
Dated: December 18, 2006
NATIONAL ARBITRATION FORUM