14th May 2012
NATIONAL ARBITRATION FORUM
Specialty Retailers, Inc. v. Frank L Rasky
Claim Number: FA1203001434227
Complainant is Specialty Retailers, Inc. (“Complainant”), represented by Ryan L. Lobato of McAfee & Taft A Professional Corporation, Oklahoma, USA. Respondent is Frank L Rasky (“Respondent”), represented by Ari Goldberger of ESQwire.com Law Firm, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stage.com>, registered with Network Solutions, LLC.
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.
Flip Petillion, the Hon. Charles K. McCotter, Jr. and the Hon. Neil Brown QC as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 12, 2012; the National Arbitration Forum received payment on March 12, 2012.
On March 13, 2012, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <stage.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 March 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 3, 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 email@example.com. Also on March 14, 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.
A timely Response was received and determined to be complete on April 3, 2012.
Complainant’s Additional Submission was received on April 7, 2012 and was deemed to be in compliance with Supplemental Rule 7.
Respondent’s Additional Submission was received on April 16, 2012 and was deemed to be in compliance with Supplemental Rule 7.
On April 18, 2012, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Flip Petillion, the Hon Charles K. McCotter, Jr. and the Hon. Neil Brown QC as Panelists.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
- Complainant has used the STAGE mark in commerce since 1969 and has acquired a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the mark (Reg. No. 1,525,762 registered February 21, 1989).
- Complainant uses the STAGE mark in connection with retail store services in the field of clothing, shoes, and accessories.
- Respondent’s <stage.com> domain name is identical to the STAGE mark.
- Respondent has used the domain name to display a parked website filled with pay-per-click links to Complainant and its competitors.
- Respondent attempted to sell the domain name for a price between $300,000 and $500,000 through an unsolicited e-mail to Complainant.
- Respondent registered the disputed domain name on June 4, 1997 because it is a generic word.
- Complainant does not have exclusive rights to the common word “stage.”
- Respondent’s domain name matches Respondent’s own documented professional and personal interest in theater and television productions.
- Respondent has always used the disputed domain name in connection with a bona fide offering of goods and services.
- Respondent has been a resident of Canada for over 50 years and had no knowledge of Complainant, who is a Texas based retailer.
- Complainant cannot establish that Respondent registered the domain name with the intent to sell it to Complainant, to disrupt Complainant’s business, to prevent it from registering a domain name reflecting its more or to confuse Internet users.
- Complainant has waited 15 years to bring this claim without merit; thereby supporting a finding of reverse domain name hijacking.
- Complainant’s Additional Submission
- The domain name at issue is identical to Complainant’s mark.
- Respondent is not and has never been commonly known by the disputed domain name.
- Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration for valuable consideration.
- Prior to the filing of this proceeding the disputed domain name contained links to Complainant and Complainant’s competitors resulting in profit to Respondent.
- Complainant did not initiate the discussion regarding the sale of the disputed domain name; Respondent approached Complainant offering to sell the domain name for $300,000-$500,000.
- The Doctrine of Laches should not apply to these proceedings.
- Reverse domain name hijacking is not warranted here.
- Respondent’s Additional Submission
- Complainant is attempting to bully Respondent in to transferring the disputed domain name.
- Complainant failed to present any evidence that it had any presence in Canada in 1997.
- Registering a domain name because of its value as a common word and using the domain name in connection with the common meaning of the word is a legitimate use.
- Offering to sell a descriptive term domain name is not evidence of bad faith registration or use.
- All of the hyperlinks found on the resolving website relate to the term “stage.”
Complainant, Specialty Retailers, Inc., is active in the retail business. Complainant has used the STAGE mark in commerce and in connection with retail store services, since 1969 and has acquired a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the mark (Reg. No. 1,525,762 registered February 21, 1989).
Respondent, a Canadian resident, registered the disputed domain name on June 4, 1997. Respondent has only made a limited use of the disputed domain name and currently uses the disputed domain name for pay-per-click advertising. In 2012, Respondent’s representative has approached many companies, including Complainant, regarding their potential interest in purchasing the disputed domain name.
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.
The Panel will therefore deal with each of these requirements in turn.
Identical and/or Confusingly Similar
Complainant argues that it has established rights in the STAGE mark through its trademark registration with the USPTO (Reg. No. 1,525,762 registered February 21, 1989). The Panel agrees and finds accordingly under Policy ¶ 4(a)(i) that Complainant has established rights in the STAGE mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also 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.”).
Complainant, in its Complaint and Additional Submission, argues that the <stage.com> domain name is identical to the STAGE mark. The Panel notes that Respondent does not dispute this assertion. Therefore, the Panel finds that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that the respondent’s <treeforms.com> domain name is identical to the complainant’s TREEFORMS mark).
Rights or Legitimate Interests
Given the Panel’s decision about the absence of bad faith at the time of registration, there is no need for the Panel to decide on the existence of rights or legitimate interests in the disputed domain name, as all three elements must be proven to obtain an order to have the domain name cancelled or transferred.
Registration and Use in Bad Faith
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See 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 the 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); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Respondent contends that the <stage.com> domain name is comprised entirely of a common term that has many meanings apart from use in Complainant’s STAGE mark. Moreover, Respondent contends that the registration and use of domain name comprising such a common term is not necessarily done in bad faith. The Panel finds that a respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common term. For multiple years, Respondent did not use the disputed domain name in a way that was considered a violation of Complainant’s trademarks and Complainant itself is of the opinion that it had no indication of Registrant’s alleged subjective intent at the time of registration.
Respondent has recently offered to sell the disputed domain name to at least 10 parties for an amount vastly exceeding Respondent’s documented out-of-pocket costs directly relating to the disputed domain name. However, the Panel is of the opinion that there are no other circumstances indicating that the disputed domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant. According to the Panel, there are no indications that the Respondent targeted the Complainant, a trademark or service mark holder or any of their respective competitors when, in 1997, registering the disputed domain name, consisting of a dictionary word. Therefore, the Panel is of the opinion that it is not evidenced that Respondent registered the disputed domain name in bad faith. See Zero Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (“Common words and descriptive terms are legitimately subject to registration as domain names on a ‘first-come, first-served’ basis.”); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
As the requirement of bad faith registration and use is a conjunctive requirement and since no bad faith registration is established, the Panel is of the opinion that there is no need to decide about the bad faith use of the domain name.
Reverse Domain Name Hijacking
Respondent has mentioned the possibility of finding reverse domain name hijacking in the instant case on the part of Complainant. In this regard, the Panel finds no evidence that the Complainant had lodged a vexatious action and accordingly rules out such possibility.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <stage.com> domain name REMAIN WITH Respondent.
Flip Petillion, Panelist
Hon. Charles K. McCotter, Jr., Panelist
Hon. Neil Brown QC, Panelist
Dated: May 14, 2012