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PARTIES
Complainant is Corbis Corporation, Bellevue,
WA (“Complainant”) represented by Robert J. Glance, of Merchant & Gould
P.C. Respondent is Zest, Taegu, KOREA (“Respondent”) Ari Goldberger,
of ESQwire.com Law Firm.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <digitalstock.com>,
registered with Melbourne IT.
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.
R. Glen Ayers, Chair, Patrick J. Hines, and David
Sorkin were selected as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National
Arbitration Forum (“the Forum”) electronically on July 31, 2001; the Forum
received a hard copy of the Complaint on July 31, 2001.
On July 31, 2001, Melbourne IT confirmed by e-mail
to the Forum that the domain name <digitalstock.com> is registered with
Melbourne IT and that the Respondent is the current registrant of the name.
Melbourne IT has verified that Respondent is bound by the Melbourne IT
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 August 1, 2001, a Notification of Complaint
and Commencement of Administrative Proceeding (the “Commencement Notification”),
setting a deadline of August 21, 2001 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@digitalstock.com
by e-mail.
A timely response was received and determined
to be complete on August 21, 2001.
Complainant timely filed an Additional Submission,
“Complainant’s Additional Response.”
On August 30, 2001, pursuant to Respondent’s request
to have the dispute decided by a three-member Panel, the Forum appointed
R. Glen Ayers, Chair, Patrick J. Hines, and David Sorkin as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant has provided evidence that it (or
its predecessor in interest) has used the trademark “Digital Stock” since
1993 and that the mark was registered in 1998 with the U. S. Patent and
Trademark Office. That mark is obviously identical to the domain
name.
Complainant states that the Respondent has no
rights in the name for it “has no association, presence, brand awareness,
right or legitimate interest” in the name. Complainant also says
that Respondent has made no use of the name “in connection with a bona
fide offering of goods or services.”
The Complainant alleges that the domain name has
been registered and used in bad faith and has disrupted the Complainant’s
business by misdirecting customers, even though Respondent is not a competitor.
Evidence of misdirection has been provided.
Complainant provides correspondence to show that
it gave notice of the problem to Respondent and that Respondent offered
to sell the domain name for $30,000, even though Respondent had stated
that it only had $20,000 invested. Complainant disputes this last
sum: “Notably, neither Respondent’s website prior to the dispute or after
the dispute indicate than any amount close to $20,000 was spent ....”
B. Respondent
C. Respondent replies that the mark contains
two generic terms which provide no “enforceable rights under the UDRP.”
It also alleges that it has a legitimate interest; that it planned to use
the site for offering online securities information and has launched such
a site.
Respondent denies any bad faith, alleging that
the mark is but two descriptive words and that there is no evidence that
the domain name was acquired for resale to the Complainant or to prevent
Complainant’s use or to disrupt Complainant’s business. Complainant
is accused of “cyberbullying.”
Respondent notes that the mark is not registered
in Korea, where Respondent is located. Respondent, by affidavit,
denies it had any knowledge of the mark prior to registration of the domain
name. Respondent also notes that Complainant approached it about
buying the name; clearly, Respondent did not initially solicit Complainant.
Much of Respondent’s argument focuses on the weakness
of the mark. Respondent cites a number of relevant ICANN decisions
on this point.
Respondent points out that Complainant had registered
this particular domain name but had let the registration lapse.
Respondent goes on to assert that it has a legitimate
interest in the domain name, for it had intended, at the time of registration,
to go on to establish a web site related to the financial (stock) markets.
Respondent elaborates on the “bad faith” issues,
pointing out that it had no knowledge of Complainant prior to registration
and that none of the “bad faith” factors are relevant. As to offering the
domain for sale, Respondent asserts that the Complainant approached the
Respondent, citing decisions that decline to find “bad faith” in cases
where Respondent did not initiate a proposed sale.
D. Additional Submissions
In “Complainant’s Additional Response” (which
was timely filed), the Complaint focuses first on whether Respondent’s
affidavits were competent, not having been filed under penalty of perjury.
Complainant next attempts to rebut Respondent’s arguments about the generic
nature of the words making up the mark and the “weakness” of the registration
of the mark.
Complainant points out that the Respondent had
made no use of the domain name prior to the dispute.
Finally, Complainant offers evidence of distinctiveness
and secondary meaning, as well as evidence that the mark has been circulated
in publications around the world.
FINDINGS
THE PANEL HAS DECIDED THAT THIS CASE RAISES TWO
PARTICULARLY IMPORTANT AND TROUBLING ISSUES AND HAS ATTEMPTED TO RESOLVE
THOSE ISSUES IN THIS OPINION:
(1) May a weak trademark be the basis for a claim
under the UDRP?
(2) What results should flow from registration
(by a different party) of a lapsed domain name?
First, the Respondent has asserted, with citations
to opinions, that this Panel may find that the Complainant’s mark consists
of generic terms and that the mark is weak. Therefore, Respondent
would have the panel find that Complainant holds no rights in the mark
and has not met its burden of showing that it holds a mark that is “identical
to” the domain name.
Second, the Respondent has shown that the Complainant
had originally registered the domain name and had allowed the registration
to lapse.
Both issues are being raised with some frequency
in ICANN adjudications. The Panel believes that both issues should
be addressed and resolved as much as is possible in the context of a multi-Panelist
arbitration.
VALIDITY OF MARKS: “Identical To Or Confusingly
Similar”
There is no doubt that the mark and domain name
are identical. Respondent argues, with ample support in the arbitration
decision cases, that this Panel has the power to find that an allegedly
weak mark may be ignored.
This Panel does not agree. These proceedings
are not held before a tribunal competent to challenge the validity of a
properly registered mark. In the parlance of legal circles in the
United States of America, “this is not a United States District Court.”
Therefore, the Panel declines to examine the underlying validity of a mark
properly registered in the United States of America or, for that matter,
in any other country. In our opinion, a registered mark is a registered
mark for purposes of establishing the first of the three tests used to
determine domain name disputes. Respectfully, but forcefully, we
disagree with and decline to follow those cases cited by Respondent.
While the use of a domain name which is identical to a registered mark
may not be actionable under the Policies and Rules, it is inappropriate
to ignore the registration even when the mark is allegedly weak or has
allegedly been improvidently granted.
Where a Complainant, as here, demonstrates that
it holds a registered mark that is identical to the domain name, it has
met its burden under the first of the three tests used by this Panel under
the ICANN Rules and Policies.
A Respondent can certainly attack the strength
of the mark in cases where the domain name is not identical but is merely
similar, because the strength of the mark may be relevant to the likelihood
of confusion.
The Panel also holds that Respondent may certainly
assert the nature and relative strength of the mark in the context of "rights
in the domain name" and "bad faith." the Panel, as a whole, however, holds
that prior registration does not help the Complainant, although it may
be able to otherwise show that Respondent has no rights in the domain name
and/or acted in bad faith.
WHERE THE DOMAIN NAME REGISTRATION HAS LAPSED:
“Rights” and “Bad Faith”
The Panel also holds that Respondent may certainly
assert the nature and relative strength of the mark in the context of "rights
in the domain name" and "bad faith." and The Panel, as a whole, however,
holds that prior registration does not help the Complainant, although it
may be able to otherwise show that Respondent has no rights in the domain
name and/or acted in bad faith.
Here, Complainant does not dispute that it was
the first to register the domain name and that it allowed the registration
to lapse. It has not alleged that Respondent was in any way responsible
for that lapse.
One of the Panelists, the Chair, would hold that
a party that has lost an Internet domain name due to renewal lapse should
ordinarily have no recourse under the UDRP and would choose to follow
cases which have previously held as much. National Kidney Foundation
v. Los Girasoles/Jorge Clapes, AF-0293 (eResolution Aug. 31, 2000) (“Once
the complainant's registration had lapsed, the contested domain name became
available ....”); Fiske Industries v. Supreme Interactive, AF-0257
(eResolution Aug. 7, 2000) (decision for Respondent where Complainant “had
previously registered the Domain Name at issue, but failed to timely renew
that registration through an administrative error”).
The Panel, as a whole, however, holds that prior
registration does not help the Complainant, although it may be able to
otherwise show that Respondent has no rights in the name and bad faith.
We do reject the reasoning of cases holding that we may find “bad faith”
simply because Respondent took advantage of the lapse in registration.
See In Test Corp. v. Service point, FA 95291 (Nat. Arb. Forum Aug. 30,
2000) (finding that where the domain name has been previously used by the
Complainant, subsequent registration of the domain name by anyone else
indicates bad faith, absent evidence to the contrary); see also BAA PLC
v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith
where Respondent took advantage of the Complainant’s failure to renew a
domain name).
We also strongly disagree that prior registration
should ordinarily be considered as a factor favorable to the Complainant.
See American Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685
(Nat. Arb. Forum Nov. 6, 2000) (finding that Complainant’s prior registration
of the same domain name is a factor in considering Respondent’s rights
or legitimate interest in the domain name). There may be some cases,
for example, where the registrant was aware of the prior use by the holder
of a mark and was aware of the mark and might be found to be attempting
to disrupt or compete; in the alternative, there may be cases where the
registrant was somehow involved in the failure to renew.
In ordinary cases, the existence of a prior registration
that has lapsed is entirely irrelevant to the questions of legitimate interests
and bad faith. This is so even if the subsequent registrant was aware that
the domain name had previously been registered to another party, and even
if the subsequent registration occurred very soon after the domain name
was returned to the pool of available names.
In lapsed registration cases, the “bad faith”
issue should be dispositive. It will usually not be necessary to
address the other issues.
Consider the facts in this case. The domain
name and the mark are identical. Respondent had no identifiable rights
in the name when it registered the domain name or thereafter, or at least
prior to dispute raised by the Complainant’s correspondence.
But, we hold that it cannot ordinarily be “bad
faith” to register a lapsed name where the Respondent is not using the
name to compete with the Complainant, misdirect its customers, or disrupt
its business.
Again, consider the facts of this case.
First, the mark was not registered in Korea. Respondent has made
some showing, even though the affidavit was not submitted under penalty
of perjury, that it had no knowledge of the Complainant or its mark.
Second, the Complainant had let the name lapse;
from this we can infer that the prior holder of the name was abandoning
any interest in the domain name. So, even if Respondent knew of the
prior registration and the Complainant’s prior use, there is no evidence
of “bad faith.”
Finally, the Complainant contacted the Respondent,
which makes the Complainant’s burden somewhat higher where the allegation
is that the Respondent registered the 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 ....” ICANN
Policy ¶ 4.(b).(i). Certainly, however, the Panel is aware of
how the world works. Respondents are frequently sophisticated enough
to wait until the Complainant makes contact.
That said, the only evidence of bad faith here
is that Respondent demanded what seems to be a very large sum of money
for surrender of the domain name. It has not attempted to compete with
the Complainant nor has it tried to disrupt its commerce.
However, the Policy and Rules require evidence
of both registration and use in “bad faith.” Here, there is absolutely
no evidence of bad faith registration.
The Panel also believes that the very fact that
a domain name has lapsed could allow a party to register the domain name
without a trademark search, even in the hope that some person might wish
to buy the name.
The Panel holds that a domain registrant who knows
a domain name has been abandoned should be more confident, not less so,
that there is no competing trademark claim relating to the domain name;
a person in the position of Respondent should be more confident than a
registrant who selects a previously unregistered name.
There is an element of “finders keepers, losers
weepers” in this decision. We believe that is as it should be.
In sum, where a party registers a lapsed domain
name, and it is not attempting to use the name to compete with the mark
holder or disrupt its business, we believe that ordinarily the trademark
holder should be denied relief, whether the mark is a common law or registered
mark, whether the mark is “strong” or “weak.”
We certainly recognize that domain name pirates
may be lurking like buzzards to pick off “good” names which lapse.
But that is true in any area of intellectual property. Failure to
renew or extend those property rights, failure to protect marks and copyrights,
and the like allow third parties to take advantage of the owner’s lack
of diligence.
One of the members of this Panel previously issued
an opinion, Garth Brooks v. Commbine.com, LLC, FA 96097 (Nat Arb. Forum
Jan. 3, 2001), in which an opposite result was reached. That opinion
may be distinguished. The “Garth Brooks” mark, though a common law
mark, is strong and distinctive. Both parties were in the United
States of America, and the Respondent had a history of buying and selling
domain names. However, the author of that opinion agrees, to the
extent this opinion disagrees with his prior opinion, that the Brooks case
should be considered superceded.
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
The mark and domain name are identical.
Rights or Legitimate Interests
Respondent has no rights or legitimate interests
in the name, for it never used the name prior to notice of the dispute
and it is not otherwise known by the name.
Registration and Use in Bad Faith
For the reasons stated above, Respondent did
not act in bad faith by the registration and use of the domain name.
DECISION
The domain name shall not be transferred.
R. Glen Ayers, Chair;
David E. Sorkin; and Jay Hines,
Panelists
Dated: September 12, 2001
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