2nd Jan 2007
National Arbitration Forum
Roderick W. Accetta v. Domain Admin c/o Covanta Corporation
Claim Number: FA0610000826565
Complainant is Roderick W. Accetta (“Complainant”), represented by Halle B. Markus, Esquire of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036- 5339. Respondent is Covanta Corporation (“Respondent”), represented by Ari Goldberger, Esquire of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rollabout.com>, registered with Moniker Online Services, Inc.
The undersigned 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.
Kelly Tillery, Esquire as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 24, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 25, 2006.
On November 2, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <rollabout.com> domain name is registered with Moniker Online Services, Inc. and that the Respondent is the current Registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 November 8, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 28, 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.
A timely Additional Submission was received from Complainant on December 4, 2006 and was determined to be complete pursuant to Supplemental Rule 7.
On December 5, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed M. Kelly Tillery, Esquire as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that:
1. It owns a United States Federal Registration for ROLL-A-BOUT. (Application filed on March 9, 2000, and Reg. No. 2,533,554 issued on January 29, 2002);
2. It has established common law rights in its mark by selling personal mobility devices under the mark in United States commerce since at least as early as October 28, 1994;
3. It is the only party with an active U.S. Application or Registration for any mark containing the term ROLL-A-BOUT or ROLLABOUT;
4. It has invested substantial sums of money in developing and marketing its ROLL-A-BOUT product and as a result, consumers in the relevant field have come to associate the mark with Complainant’s high quality product;
5. It uses the domain name <roll-a-bout.com> to advertise its products extensively on its web site;
6. Many years after it adopted and first used its mark, and long after the mark became well-known, Respondent registered the domain name <rollabout.com> on December 7, 2005, without authorization of Complainant;
7. Respondent’s domain name is confusingly similar to Complainant’s mark;
8. Respondent has no rights or legitimate interests in the domain name; it is not licensed or authorized to use Complainant’s mark and is not named or commonly known as ROLLABOUT;
9. Respondent commercially benefits from the disputed domain name by redirecting Internet users to a commercial search engine;
10. Respondent registered and is using the <rollabout.com> domain name in bad faith.
Respondent contends that:
1. “Roll about” is a common term used to describe something with wheels on it and there are numerous third parties that sell “roll about” products;
2. Anyone is entitled to register a domain name incorporating a generic or descriptive term and such registration establishes the registrant’s legitimate interest;
3. It hosts the Disputed Domain with a third party service that places pay-per-click advertising links on the web page and shares the revenue earned with Respondent which constitutes use in connection with the bona fide offering of goods and services;
4. The descriptive term “roll about” is in common use by third parties, appearing on over 180,000 third party web pages;
5. Respondent had no knowledge of Complainant, its business, its web site or trademarks when it registered the Disputed Domain, and Complainant has proffered no evidence to the contrary;
6. Complainant cannot establish that Respondent lacks a legitimate interest in the Disputed Domain;
7. Complainant has not established that Respondent has registered or used the Disputed Domain in bad faith;
8. Respondent registered the domain name because it was a descriptive term to which he believed no party could claim exclusive rights;
9. It takes no position as to the validity of Complainant’s mark or its applicability in these proceedings.
C. Additional Submissions
Complainant further contends that:
1. Respondent does not dispute the validity of Complainant’s Federally Registered mark;
2. Respondent also does not dispute the fact that Complainant is the only party with an active U.S. Application or Registration for any mark containing the terms “ROLLABOUT” or “ROLL-A-BOUT;”
3. Respondent does not dispute the fact that <rollabout.com> is confusingly similar to Complainant’s mark;
4. Complainant has invested substantial sums of money in developing and marketing his ROLL-A-BOUT product, in excess of $537,000 to date;
5. Respondent does not dispute the fact that Respondent is not licensed or authorized to use Complainant’s ROLL-A-BOUT mark and is not named or commonly known as ROLLABOUT;
6. Respondent has not demonstrated any legitimate interest in the terms “roll about” because the <rollabout.com> domain name is not being used with any goods or services related to products that “roll about;”
7. One link at <rollabout.com> labeled “Rollabout” redirects to a new search page that advertises a knee walker competitive with Complainant’s ROLL-A-BOUT knee walkers;
8. Respondent does not dispute the fact that Respondent registered the domain name many years after Complainant began using and registered the ROLL-A-BOUT mark and after the mark became well known to consumers;
9. Respondent has a history of bad-faith use and registration of domain names;
10. Respondent’s claim that it had no knowledge of Respondent’s marks or business is highly unlikely since even a simple Internet search would have quickly revealed Complainant’s business and a cursory search of the PTO’s online website would have uncovered Complainant’s federal registration;
1) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s domain name is identical or confusingly similar to a trademark in which Complainant has rights.
2) Complainant has not met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent has no rights or legitimate interests in respect of the domain name.
3) Complainant has not met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s domain name has been registered and is being used in bad faith.
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
As a preface to this Panel’s Decision, it will be helpful to set forth a Chronology of Undisputed Facts and Dates.
CHRONOLOGY OF UNDISPUTED FACTS AND DATES
10/4/94 First use of TM by Complainant
10/28/94 First use of TM in commerce by Complainant
11/19/97 Domain Name <roll-a-bout.com> registered by Complainant
3/9/00 USPTO TM application filed by Complainant (ROLL-A-BOUT)
[Class 10 – Invalid Walkers]
11/06/01 TM “ROLL-A-BOUT” published for opposition
1/29/02 TM “ROLL-A-BOUT” registered by USPTO to Complainant
6/7/04 USPTO TM Application filed by Complainant (ROLLABOUT)
[Class 10 – Invalid Walkers]
1/5/05 Accused Domain Name <roll-a-bout.com> registered by Respondent
5/3/05 TM “ROLLABOUT” published for opposition
10/24/06 ICANN Complaint filed by Complainant
Respondent does not dispute Complainant’s ownership and Federal Registration of the Trademark “ROLL-A-BOUT.” Nor does Respondent dispute Complainant’s claimed common law rights in and to the mark “ROLLABOUT” or oppose Complainant’s pending USPTO Application therefor. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Under these circumstances, Complainant has rights in both marks.
Since the Domain Name in question is identical to the second mark, Complainant has met its burden of proof in regard to the First UDRP Requirement. However, even the first mark is clearly confusingly similar to the Domain Name. See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant’s mark); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (finding that the domain name, <tippex.com> is confusingly similar to the complainant’s mark, TIPP-EX and that use of a hyphen does not negate likelihood of confusion).
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 the burden then shifts to Respondent to show it does have rights or legitimate interests. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Complainant has failed to establish a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See The 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); see also 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 Policy ¶ 4(a)(ii)). Complainant has herein merely confirmed that Respondent is using the Domain Name for a legitimate purpose.
Respondent asserts that it uses the disputed domain name in connection “with a third party service that places pay-per-click advertising links on the web page and shares the revenue earned with Respondent.” Respondent claims this constitutes a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) because the terms of the <rollabout.com> domain name are of common usage and do not refer to Complainant or its products. Respondent’s use of the <rollabout.com> domain name to operate a pay-per-click search engine is a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), based on previous UDRP decisions holding such use to give rise to rights or legitimate interests in a respondent. See Target Brands, Inc. v. ALDnet Media Group and Edward Harrison, FA 227647 (Nat. Arb. Forum Mar. 24, 2004) (holding that the respondent’s use of the <targetwholesale.com> domain name to offer search engine services to wholesale vendors and their customers was a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)); see also Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002) (finding that the respondent’s use of the disputed domain name as a portal to a commercial website featuring various advertisements and links constituted a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).
There are numerous Third Parties using the term “roll about,” including “Roll-about videoconferencing system; roll-about abrasive blasters; roll-about chair; roll-about shovel; roll-about fan.” A Google search of the term “roll about,” yields 184,000 Third-Party uses of the term.
Respondent establishes rights or legitimate interests in the <rollabout.com> domain name under Policy ¶ 4(b)(ii), because it is composed of common terms. See FilmNet Inc. v. Onetz, FA 96196 (Nat. Arb. Forum Feb. 12, 2001) (finding that the complainant failed to establish that the respondent did not have rights or legitimate interests in the <filmnet.com> domain name, where the disputed domain name is wholly comprised of common words, even though the complainant is the owner of the FILMNET mark); see also Shirmax Retail Ltd. v. CES Mktg., Inc., AF-0104 (eResolution Mar. 20, 2000) (“[G]iven the generic nature of the domain name, [Respondent] has at least a tenable argument that its use on the web merely for the purpose of redirecting visitors to a different site constitutes a legitimate fair use, as long as this use is not misleading to consumers and does not tarnish a trademark.”).
Complainant has thus failed to meet its burden of proof on the Second UDRP Requirement.
Registration and Use in Bad Faith
Although this Third UDRP Requirement need not be reached, this Panel finds that Respondent did not register or use the Domain Name in bad faith pursuant to Policy ¶ 4(a)(iii). 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 Pensacola Christian Coll. v. Gage¸ FA 101314 (Nat. Arb. Forum Dec. 12, 2001) (“Because the Panel has found that Respondent has rights and interests in respect of [sic] the domain name at issue, there is no need to decide the issue of bad faith.”).
Respondent claims that it registered the disputed domain name in good faith to maintain a commercial search engine and not to disrupt Complainant’s business or divert Internet users seeking Complainant’s products to Respondent’s own website for commercial gain. Respondent’s registration and use of the domain name does not constitute bad faith because Respondent has not violated any of the other factors listed in Policy ¶ 4(b). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand Ag, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant’s business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also 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 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)).
Respondent also alleges that it did not deliberately register the domain name in bad faith because the domain name is made up of common terms that have many meanings apart from use in Complainant’s mobility products business. Respondent’s registration and use of a domain name consisting of common terms does not violate Policy ¶ 4(a)(iii), because the domain name is not likely to confuse Complainant’s consumers and misleadingly divert them to Respondent’s website. See Canned Foods, Inc. v. Ult. Search inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (holding that, where the domain name is comprised of a generic term, it is difficult to conclude that there was a deliberate attempt to confuse on behalf of the respondent, and stating that “[i]t is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied them”); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (“As to both registration and use, the generic nature of the disputed domain name itself rebuts any allegation by Complainant that Respondent registered or used the disputed name in bad faith.”).
Thus, Complainant has failed to meet its burden of proof on this Third UDRP Requirement.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that the relief requested shall be DENIED.
Accordingly, it is Ordered that Complainant’s Complaint is hereby DISMISSED.
M. Kelly Tillery, Esquire, Panelist
Dated: January 2, 2007