26th Nov 2008

National Arbitration Forum

DECISION

Alexis C. Le Hara v. Vertical Axis, Inc c/o Domain Administrator

Claim Number: FA0809001225832

PARTIES

Complainant is Alexis C. Le Hara (“Complainant”), California, USA.Respondent is Vertical Axis, Inc c/o Domain Administrator (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, New Jersey, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sellersmarket.com>, registered with Nameview, Inc.

PANEL

The undersigned certifies 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.

Judge Robert Pfeuffer, Diane Cabell and Debrett Lyons (chair) as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 22, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 22, 2008.

On October 3, 2008, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <sellersmarket.com> domain name is registered with Nameview, Inc. and that the Respondent is the current registrant of the name.Nameview, Inc. has verified that Respondent is bound by the Nameview, 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 October 15, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 4, 2008 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 postmaster@sellersmarket.com by e-mail.

A timely Response was received and determined to be complete on November 4, 2008.

Both parties made timely Additional Submissions pursuant to Supplemental Rule 7.

On November 13, 2008, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Judge Robert Pfeuffer, Diane Cabell and Debrett Lyons as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant asserts trademark rights and alleges that the disputed domain name is confusingly similar, if not 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.

The detail of the Complaint is considered in the Discussion which follows below.

B. Respondent

Respondent asserts that Complainant has no enforceable trademark rights but does not challenge Complainant’s registration, nor the claim of identity / confusing similarity of the disputed domain name to the trademark.

Respondent denies it acted in bad faith and argues that it has a legitimate interest in the domain name.

The detail of the Response is considered in the Discussion which follows below.

C. Additional Submissions

Both parties made Additional Submissions which have been fully taken into account by the Panel and are considered along with the submissions in the Complaint and Response.

FINDINGS

Complainant is the proprietor of U.S. Federal Trademark Registration No. 2,643,185 for SELLER’S MARKET issued October 29, 2002 in class 36 in respect of “real estate services, namely brokerage, escrow, land acquisition, leasing of real estate, listing, and real estate agencies.”

Respondent is in the business of registering domain names for the purpose of generating pay-per-click revenue.

Respondent registered the disputed domain name on April 29, 2002.

There is no relationship between the parties, nor prior to the Complaint have they ever been in contact with each other.

Complainant’s repeated claim that Respondent had actual knowledge of it and its trademark are not supported by the evidence.

DISCUSSION

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

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Complainant provided evidence of a U.S. Federally-registered trademark for SELLER’S MARKET.Accordingly, the Panel finds that Complainant has rights in that trademark for the purposes of Policy ¶ 4(a)(i).See State Farm Mut. Auto. Ins. Co. v. 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 ¶ 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 ¶ 4(a)(i)).

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The differences between the disputed domain name and Complainant’s trademark are trivial and amount only to the elimination of the apostrophe and space between the two words, and the addition of the gTLD, “.com.”The Panel follows the consensus view of panelists in earlier decisions under the Policy in holding that those differences do not prevent a finding of identicality.See Diesel v. LMN a/k/a L. M. Nordell, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”);see also Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003) (“The lack of an apostrophe in the domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark.”); see also 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).

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Accordingly, the Panel finds that Complainant has satisfied the first element of the Policy.

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Rights or Legitimate Interests

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Under the Policy, Complainant has the burden to establish that Respondent has no rights or legitimate interests in the domain name.Nevertheless, it is well settled that Complainant need only make out a prima facie case, after which the onus shifts to Respondent to demonstrate rights or legitimate interests.See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).

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The WHOIS data does not support any argument that Respondent might be commonly known by the domain name.Complainant has stated there to be no relationship between the parties.Complainant alleges that Respondent has no bona fide business under the domain name because the website <sellersmarket.com> simply “catalog[s] real estate services and offer web links that connect internet users to other real estate-service websites”.

The Panel takes the view that Complainant has done just enough to establish a prima facie case and so shift the onus onto Respondent.

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Policy ¶ 4(c) states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of Policy ¶ 4(a)(ii):

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(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

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Clearly, it is only Policy ¶ 4(c)(i) that might be of relevance in this case, however the Panel notes that the given circumstances are merely exemplary of what might show rights or a legitimate interest.

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Respondent provides evidence that the term “seller’s market” is a broadly used expression and so argues that Complainant does not have an exclusive monopoly over it for all purposes.Specifically, Respondent claims that “seller’s market” simply describes a market condition where demand is high and sellers have an advantage.Respondent argues that it has registered numerous generic domain names which include the words “seller” and “market”, and that its sole intention was to target the generic nature of these domain names.They include:

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antiqueseller.com, bestsellerchristianbooks.com, bestsellermovie.com, book-seller.com, businessreseller.com, cheapwebhostingreseller.com, coinseller.com, collegebookseller.com, comseller.com, domainnamereseller.com, estateseller.com, freehomesellerservice.com, freeresellerhosting.com, freeresellerprograms.com, goldbullionseller.com, homesellerseminar.com, insurancereseller.com, rvseller.com, webhostingresellerplan.com, wholesalebookseller.com, worldbestseller.com, afterhourmarkets.com, after-market.com, aftermarketautoaccessory.com, bankmarket.com, aftermarketautopartswholesale.com, aftermarketbumpers.com, aftermarketcarproducts.com, aftermarketdecals.com, aftermarketexhaust.com, aftermarketimportparts.com, aftermarketmirrors.com, aftermarketwarranty.com, biochipmarket.com, aircraftsupermarket.com, answermarket.com, antiquefleamarkets.com, aspmarketer.com, astromarketing.com, australiamarket.com, automarketonline.com, automarketpro.com, bestmarketingstrategy.com, bestmoneymarketaccount.com, bestmoneymarketrate.com, bestrealestatemarket.com, bestrealestatemarkets.com, betonthemarket.com, blackmarketrecord.com, boommarket.com, bulkemailmarketingservices.com, businessmarketingbooks.com, businessmarketingnetwork.com, businesstelemarketing.com, countymarkets.com, christianmarket.com,commoditystockmarket.com, consumerdirectmarketing.com, and contentmarketing.com.

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Returning to Policy ¶ 4(c)(i), there is nothing in the evidence to suggest that Respondent’s use of the domain name only occurred after notice of this dispute. Complainant submits that prior to registration of the disputed domain name, “neither Respondent, nor a business in which Respondent had or has an interest was or is known by the mark Seller’s Market”. With respect, that is not what is required by the Policy. So far as Policy ¶ 4(c)(i) is concerned, the only residual question is whether the use has been in connection with a bona fide offering of goods or services.

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In the first place, former Policy panels have held that a respondent can have rights or legitimate interests in domain names that are composed of common descriptive or generic words, even if those names correspond to a valid trademark.See, e.g., HSBC Fin. Corp. v. Clear Blue Sky Inc. Domain Manager, D2007-0062 (WIPO June 4, 2007); Nat’l Trust for Historic Preservation v. Preston, D2005-0424 (WIPO Aug. 10, 2005); and Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., D2004-0843 (WIPO Dec. 14, 2004).

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Moreover, the use of the domain name has been in that descriptive sense.

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Respondent admits that it obtains pay-per-click revenue from use of the domain name and many other domain names it owns and that this is the platform of its business.That business model is legitimate under the Policy.In the case of Weather Shield Manufacturing, Inc. v. Phan, D2007-1247 (WIPO Oct. 10, 2007), it was said:

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The Respondent has also made commercial use of the Domain Name for extended periods in the form of third-party marketing, pay-per-click advertising, and listing the Domain Name for resale. These might, according to the circumstances, represent use in connection with a bona fide offering of goods or services, particularly where the Domain Name is a dictionary word and there is not persuasive evidence that the Respondent was more likely than not aware of the Complainant’s marks. See, e.g., Media General Communications, Inc. v. Rarenames, WebReg, D2006-0964 (WIPO Sept. 23, 2006).

In the case of Bag Boy LLC v. Chad Wright WebQuest.com, Inc., FA 530334 (Nat. Arb. Forum Sept. 15, 2005), the panel said:

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Complainant seems to believe that only the owner of a registered trademark can use that mark within a domain name.This is of course not the case.Ownership of a trademark does not confer the exclusive right to all domain names containing the mark.And using a domain name for commercial gain is not, per se, a bad faith activity prohibited under the Policy.

Moreover, although Respondent is no stranger to disputes under the Policy, its own business has been held legitimate on more than one occasion.See Metro Sportswear Ltd. v. Vertical Axis, D2008-0754 (WIPO Aug. 4, 2008); Nursefinders, Inc. v. Vertical Axis, D2007-0417 (WIPO July 5, 2007); Super Supplements, Inc. v. Vertical Axis, Inc., D2008-0244 (WIPO May 13, 2008).

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In the case of Jet Marques v. Vertical Axis, Inc., No. D2006-0250 (WIPO May 26, 2006), the panel stated:

In the English language, the Domain Name is a generic or descriptive expression. The Respondent says that it is in the business of acquiring such names that have either expired or been deleted, and the Panel has no reason to disbelieve that statement. Indeed, the earlier decisions under the Policy in which the Respondent has been a party appear to confirm that description of its business.

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In Bright Horizons Family Solutions, Inc. et al. v. Vertical Axis, Inc., D2007-0795 (WIPO Oct. 12, 2007), the panel observed that “[T]he Respondent’s record in domain name disputes . . . does not establish that the Domain Name in this case was registered in bad faith.”

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There is no evidence that Respondent had knowledge of Complainant’s trademark when it registered the domain name.Complainant has provided no evidence of reputation or common law rights in the trademark and there is nothing to give rise to a rebuttable inference that Respondent was aware of Complainant’s trademark.Nonetheless, Complainant submitted that Respondent had constructive knowledge of its trademark rights because of Federal registration.The Panel rejects that argument.Not only was Complainant’s trademark still pending at the time the domain name was registered, but cases where a respondent has been imputed with knowledge of a complainant’s U.S. federally registered mark have been contained to instances where both parties were located in the United States.Here, Respondent is in Barbados.In any event, this Panel endorses what was said in the previously cited case of Bag Boy LLC that:

under the Policy, a domain name registrant has no obligation to perform a trademark search.Indeed, it is clear from the travaux preparatoires of the Policy that mere failure to conduct a trademark search does not constitute bad faith behavior.The closest equivalent to a legislative history for the Policy can be found in the April 30, 1999 Final Report of the WIPO Internet Domain Name Process, which formed the basis for the ICANN Policy.

The report states at paragraph 103:

[T]he performance of a prior search for potentially conflicting trademarks should not be a condition for obtaining a domain name registration. … Particularly in an international context, the requirement of searches prior to the registration of a domain name was generally considered to be unrealistic and conducive to unnecessary delays in the registration process.

The Panel finds those words apply with even greater force in the case of terms which consist of entirely descriptive words, as here.For all these reasons, the Panel finds that for the purposes of Policy ¶ 4(c)(i), the use of the domain name has been in connection with a bona fide offering of goods or services.

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The Panel finds that Respondent has discharged the burden of proof which fell to it under Policy ¶ 4(a)(ii) and has shown itself to have a legitimate interest in the domain name.

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Complainant has failed to establish the second limb of its case. Accordingly, there is no need for the Panel to go on to consider bad faith arguments.

Registration and Use in Bad Faith

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No findings required.

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DECISION

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

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Judge Robert Pfeuffer, Diane Cabell and Debrett Lyons

Dated: November 26, 2008

National Arbitration Forum