31st Mar 2014

NATIONAL ARBITRATION FORUM

 

DECISION

 

thinkThin, LLC v. Domain Administrator / Vertical Axis Inc.

Claim Number: FA1401001540853

 

PARTIES

Complainant is thinkThin, LLC (“Complainant”), represented by Eleanor M. Yost of Goodwin Procter LLP, Washington D.C., USA.  Respondent isDomain Administrator / Vertical Axis Inc. (“Respondent”), represented by Ari Goldberger of Esqwire.com, New Jersey, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thinkthin.com>, registered with Fabulous.com Pty Ltd.

PANEL

The undersigned certify 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.

Debrett G. Lyons, the Hon. Neil Brown QC and Carolyn Marks Johnson as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 27, 2014; the National Arbitration Forum received payment on January 27, 2014.

On January 27, 2014, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <thinkthin.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name.  Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 January 30, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2014 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@thinkthin.com.  Also on January 30, 2014, 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 March 3, 2014.

On March 12, 2014, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Debrett G. Lyons (chair), the Hon. Neil Brown QC and Carolyn Marks Johnson 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 THINKTHIN 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 broadly denies each of those allegations.  Its submissions are interlinked, in greater or lesser degree, with the issues of trademark rights, legitimate interests, and good/bad faith and can be distilled as follows.

Respondent is a reseller of generic domain names.  It submits that the expression “THINK THIN” is purely descriptive.  It registered the domain name in 2001.  Complainant’s stated first use of THINKTHIN was in September, 2006 and its trademark application with the USPTO was filed in October, 2006.  Respondent made use of the domain name well before September 2006 in a manner connected with the common descriptive meaning of the expression “THINK THIN”.

Respondent therefore asserts a right to and legitimate interest in the disputed domain name which is composed of two common English words and submits that it did not register and could not have registered the disputed domain name in bad faith because at the time of registration it had no possible knowledge of Complainant or its claim to trademark rights. 

Respondent hosts the domain name with a service which places pay-per-click advertising links, sharing the advertising revenue with the domain name owners.  Respondent states that the links on the resolving website have always been auto-generated by a third party and change from time to time in a manner over which Respondent has no control.

FINDINGS

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

1.    Complainant has sold weight management snack bars by reference to the trademark THINKTHIN since 2006;

2.    Complainant is the proprietor of United States Patent and Trademark Office (“USPTO”) Reg. No. 3,238,772 filed October 19, 2006 for the word mark THINKTHIN;

3.    Respondent registered the disputed domain name on August 8, 2001;

4.    Respondent is a domain name reseller and the domain name is for sale;

5.    The disputed domain name resolves to a portal-style website with links to diet and weight loss plans, including a link to Complainant’s website;

6.    Complainant has not licensed or otherwise given permission to Respondent to use its trademark or to register any domain name incorporating the 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 trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights.  It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.  Since Complainant provides evidence of its USPTO trademark registration for THINKTHIN, 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).”).

Panel is also satisfied that the disputed domain name is confusingly similar, if not legally identical, to Complainant’s trademark.  The disputed domain name takes the trademark and merely adds the non-distinctive gTLD, “.com.” 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); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).

Whilst Respondent argues that registration of the domain name significantly predates Complainant’s use and registration of the trademark, paragraph 4(a)(i) of the Policy has been consistently read such that determination of whether or not Complainant has rights in a trademark is independent of the chronology of the parties’ usage, a matter left for consideration under paragraph 4(a)(ii) and/or (iii).

Further, paragraph 4(a)(i) of the Policy has been read so that the question of whether the disputed domain name is identical or confusingly similar to Complainant’s trademark is largely abstracted from the possibility that the compared terms are composed of descriptive or otherwise non-distinctive elements and, once more, leaves arguments of generic use to the other limbs of the Policy.

Panel follows those practices and so finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy 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 paragraph 4(a)(ii) of the Policy:

(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 trade mark or service mark at issue.

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests. See Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).

The publicly available WHOIS information identifies Respondent as “Domain Administrator / Vertical Axis Inc.” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name.  There is no evidence that Respondent has any trademark rights.  There is no evidence that Complainant has authorized Respondent to use the trademark.  The domain name is for sale.

Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.

The only live question is whether the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute.  Respondent states that it is a generic domain name reseller, and submits that the sale of domain names containing generic terms is a bona fide offering of goods or services. 

Respondent registered the domain name five years before Complainant had any interest in the trademark.  The domain name is generic in the sense that it is apt to describe any foodstuffs marketed in connection with weight management.  At that level Respondent had a right to the domain name at the time of registration and in terms of paragraph 4(c)(i) there is a respectable argument that, well before any notice of the dispute, Respondent made bona fide use of the domain name either as part of business which resells generic domain names and this was one such domain name for sale, or as the host site for links to third parties offering goods or services linked in some way to weight loss or dietary products. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 2.6 (2d ed. 2011), available at http://www.wipo.int/amc/en/domains/search/overview2.0/#26.

The facts that Complainant later came to acquire trademark rights in an all but identical term and that the resolving website linked for a time to Complainant’s official website are additional considerations Panel feels best discussed in relation to paragraph 4(b) of the Policy and for reasons which follow a conclusive finding on this aspect of the Policy is not necessary.

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. 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.

The four specified circumstances are:

‘(i) circumstances indicating that the respondent has registered or acquired the domain name 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 that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’

Panel makes a number of preliminary findings.  First, it is unequivocal that, at the time Respondent registered the disputed domain name, it had noknowledge of Complainant or of its trademark.  Accordingly, it would be open to the Panel to decline to find bad faith registration and move directly to final decision. See, e.g., U.S. Nutraceuticals, LLC v. Telepathy, Inc., FA 365884 (Nat. Arb. Forum Jan. 17, 2005) (“Without knowledge of Complainant or its claim of right in the mark, it is difficult to see how Respondent could have the specific intent required for it to act in bad faith against the rights of Complainant.”); see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 3.1 (2d ed. 2011), available athttp://www.wipo.int/amc/en/domains/search/overview2.0/#31).

Secondly, it follows that there is no scope for the application of any of subparagraphs 4(b)(i)-(iii) above which all hinge on bad faith registration but for the argument made by Complainant that Respondent was aware of Complainant and its trademark upon Respondent’s re-registration (renewal) of the disputed domain name.  In that regard UDRP panels have in the past considered the questions of whether or not transfer or renewal of a domain name constitutes re-registration for the purposes of paragraph 4(b) and – so far as it exists –  the consensus viewpoint has been that transfer might be treated as re-registration but not renewal. See Dixons Group Plc v Mr. Abu Abdullaah, WIPO Case No. D2000-1406; but see contra, Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688. 

Thirdly, Complaint submits that Respondent had constructive knowledge of Complainant’s trademark rights by reason of registration of the trademark.  Constructive knowledge of trademark rights has been largely discredited as a principle to be applied to paragraph 4(b) of the Policy, but in any event, there could have been no knowledge, constructive or otherwise, at the relevant time.

Finally, there is the undeniable evidence that the resolving website provided a link to Complainant’s website after the trademark became registered and Complainant acquired trademark rights.  Moreover, after the establishment of those trademark rights, the resolving website carried links to third parties providing goods and services in competition with Complainant.  Panelists have generally found that a domain name registrant will be deemed responsible for content appearing on a website at its domain name, even if the registrant does not exercise direct control over that content.  The Overview of WIPO Panel Views on Selected UDRP Questions(http://www.wipo.int/amc/en/domains/search/overview2.0) states at one point:

To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks. … Some panels have found that the inclusion of such advertising links may not necessarily be a basis for finding respondent bad faith where shown to be genuinely automated, and there is no evidence that the respondent influenced the advertising content, and the respondent credibly denies knowledge of the complainant’s trademark and there is no evidence of the respondent previously being put on notice of such mark, and other indicia of cybersquatting are not present.

See id. at http://www.wipo.int/amc/en/domains/search/overview2.0/#38.

Respondent explains that the links on the resolving website are and have always been auto-generated by Google and are constantly changing based on Google’s algorithm, keyword advertising inventory and user search behavior.  Additionally, Respondent claims to have personally removed references to Complainant and its competitors on the resolving website.

Accordingly, although the evidence undoubtedly reveals instances of conduct which, without more, might be seen as bad faith use, this should not negate or outweigh the Respondent’s other bona fide actions and motivations. On the evidence, the Panel finds that Respondent did not register the domain name in bad faith and, on balance, did not use the domain name in bad faith.

Panel finds that Complainant has failed to establish this third aspect of the Policy.

 

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 <thinkthin.com> domain name REMAIN WITH Respondent.

Debrett G. Lyons

 

The Hon. Neil Brown QC

 

Carolyn Marks Johnson

 

Panelists

 

 

Dated:  March 31, 2014.