Downey Communications, Inc. v. Modern Limited-Cayman Web Development
Claim Number: FA0404000260657
Complainant is Downey Communications, Inc. (“Complainant”), represented by Patrick J. Jennings, of Pillsbury Winthrop LLP, 1600 Tysons Boulevard, Suite 100, McLean, VA 22102. Respondent is Modern Limited-Cayman Web Development (“Respondent”), represented by Ari Goldberger, of ESQwire.com P.C., 35 Cameo Drive, Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <militarylife.com>, registered with Address Creation.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator and Chair, Diane Cabell and Sandra Jo Franklin as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 23, 2004; the Forum received a hard copy of the Complaint on April 26, 2004.
On April 25, 2004, Address Creation confirmed by e-mail to the Forum that the domain name <militarylife.com> is registered with Address Creation and that Respondent is the current registrant of the name. Address Creation has verified that Respondent is bound by the Address Creation 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 April 30, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 20, 2004 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 June 3, 2004.
On Thursday, June 17, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator and Chair, Diane Cabell and Sandra Jo Franklin as Panelists.
Complainant submitted a late reply on June 21, 2004, which the Panel elected to consider.
Complainant requests that the domain name be transferred from Respondent to Complainant.
This Complaint concerns Respondent’s blatant bad faith registration of a domain name consisting of Complainant’s distinctive trademarks. Complainant has been using its U.S. registered MILITARY LIFESTYLE mark in connection with, among other things, a monthly special interest magazine for military families since April 1, 1980. Complainant has also applied to register the mark MILITARY LIFE with the United States Patent and Trademark Office for use in connection with, among other things, providing information about the goods and services of others via the global computer network of interest and of use to military personnel and providing a Web site on a global computer network featuring information of interest to military personnel and their dependents. On May 30, 2002, Respondent registered the <militarylife.com> domain name. To the best of Complainant’s knowledge, Respondent has never linked the domain name to an active Internet site.
2. Complainant’s Business and Mark
Complainant is a leader in military resale publishing, marketing and market analysis.
Complainant is the owner of United States Trademark Registration No. 1,450,675 on the Principal Register for the mark MILITARY LIFESTYLE for use on or in connection with a monthly special interest magazine for military families. Complainant applied to register the MILITARY LIFESTYLE mark with the United States Patent and Trademark Office on May 22, 1986, and the mark was registered on August 4, 1987. Complainant has used this mark in commerce continuously since April 1, 1980. On September 2, 1993, Complainant renewed Registration No. 1,450,675 with the United States Patent and Trademark Office.
Complainant is also the owner of a pending intent-to-use trademark application, Serial No. 76/456,285, for the mark MILITARY LIFE for use on or in connection with promoting the sale of goods and services of others through the distribution of coupons; providing information about the goods and services of others via the global computer network of interest and of use to military personnel and their dependents; providing a website on the global computer network featuring information of interest to military personnel and their dependents; providing information of interest to military families and their dependents via the Internet; providing on-line, non-downloadable magazines of interest to military personnel and their dependents; and publication of magazines. Complainant began using the MILITARY LIFE mark in commerce on October 9, 2002 on the Militarylifestyle.com Web site.
The registered mark MILITARY LIFESTYLE and the pending mark MILITARY LIFE are inherently distinctive marks and as such are entitled to the maximum level of protection afforded to any trademark.
Complainant owns and operates the <militarylifestyle.com> domain name. Complainant has invested extensive resources to publicize the MILITARY LIFE and MILITARY LIFESTYLE marks and has widely dispersed the MILITARY LIFE and MILITARY LIFESTYLE marks in manners designed to ensure their automatic identification in the minds of consumers with Complainant’s products and services.
Respondent has been the subject of numerous ICANN complaints pertaining to the questionable registration of more than 2,200 domain names that look similar to well-known trademarks and names.
4. Respondent’s Website
On May 30, 2002, Respondent registered the <militarylife.com> domain name, which is virtually identical to Complainant’s MILITARY LIFE mark and confusingly similar to Complainant’s federally registered MILITARY LIFESTYLE mark. Respondent’s registration of <militarylife.com> occurred more than twenty years after Complainant first used the MILITARY LIFESTYLE mark, and more than twelve years after the MILITARY LIFESTYLE mark was registered on the Principal Register.
There is no evidence that Respondent has any trademark or other right in the name MILITARY LIFE or <militarylife.com>.
Currently, the website at <militarylife.com> is not active and to Complainant’s knowledge has never been actively used.
The <militarylife.com> domain name is confusingly similar to Complainant’s federally registered MILITARY LIFESTYLE trademark and identical to Complainant’s pending MILITARY LIFE mark, as required by Policy ¶ 4(a)(i). Generally, confusion as to source of origin or sponsorship is likely to occur if two marks are confusingly similar in sound, appearance, meaning or commercial impression, and the services in connection with which they are either used or intended to be used are closely related. In this case, the domain name and Complainant’s mark are confusingly similar in sound, appearance, meaning and commercial impression. The domain name and Complainant’s mark contain the same dominant elements, namely, the words “MILITARY” and “LIFE” in the same order. These words sound the same, look the same, have the same meaning and create the same distinct commercial impressions. Moreover, the fact the domain name incorporates less than all of Complainant’s mark does not lessen the likelihood that average consumers will confuse the mark and the domain name.
Thus, when viewed in their entireties, the domain name and Complainant’s mark are confusingly similar. In addition, the only difference between the domain name and Complainant’s pending mark is the absence of a space between the word “military” and the word “life,” which is not permitted in second-level domains. Otherwise, the domain name and the pending mark are identical in all regards.
5.Lack of Rights in Domain Name
Respondent is not a licensee of Complainant, nor is it otherwise authorized to use Complainant’s marks.
Because the <militarylife.com> domain name does not resolve to an active website, Respondent has not used the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial purpose.
There is no indication that Respondent is commonly known as MILITARY LIFE.
Respondent cannot be found under MILITARY LIFE in local telephone directories.
Respondent has neither applied for nor registered any trademarks or service marks using the name MILITARY LIFE with either the United States Patent and Trademark Office or any State agency.
As a result, Respondent does not have any rights or legitimate interests in the <militarylife.com> domain name sufficient to satisfy ¶4(a)(ii) of the Policy.
6.Bad Faith Registration and Use
Respondent has not used the <militarylife.com> domain name for any purpose since it registered the name on May 30, 2002. Indeed, Respondent is a known cyber squatter who has registered more than 2,200 domain names that look similar to well-known trademarks and names. Such passive holding is a prima facie case of bad faith under the policy.
As a result, Respondent’s <militarylife.com> domain name has been registered and is being used in bad faith as required by paragraph 4(a)(iii) of the Policy.
1.Summary of Argument
This is a case of blatant Reverse Domain Name Hijacking. Complainant has misrepresented the status of its trademark application for MILITARY LIFE (No. 76456285) to the Panel and violated its certification that the information contained in the Complaint is “complete and accurate.” Complainant has alleged “a copy of the application information from the United States Patent and Trademark Office’s TESS database” has been provided. But that information is incomplete and misleading. Complainant failed to advise the Panel that on March 9, 2004 – prior to the date it submitted the Complaint – the US Patent and Trademark Office (“PTO”) issued an office action “making FINAL a refusal to register the mark” on the grounds that the mark is merely descriptive of Complainant’s services. The PTO’s refusal to register the mark flies smack in the face of Complainant’s allegation that the mark MILITARY LIFE is “inherently distinctive” and “entitled to the maximum level of protection afforded to any trademark.” According to the PTO, that mark is entitled to no protection. Quite to the contrary, the PTO expressly acknowledged that others should “have the freedom to use [such] common descriptive language when merely describing their own good or services…”
Accordingly, the Complaint should be dismissed and the Panel should issue a finding that Complainant has engaged in reverse domain name hijacking, having abused these proceedings by knowingly relying on a trademark application for a proposed trademark, which the PTO has refused to register.
Moreover, notwithstanding Complainant’s misrepresentation concerning its trademark, the marks “MILITARY LIFE” and “MILITARY LIFESTYLE” are descriptive terms for matters related to the military i.e. “military life” and “military lifestyle.” Descriptive terms provide no enforceable trademark rights under the Policy even where a Complainant has a registered trademark. To provide such rights under the Policy would essentially grant trademark owners a monopoly on a generic or descriptive term, which would exceed the limited rights to use a mark for only specific classes of goods and services granted in connection with a federal registration. Absent enforceable trademark rights, the Complaint must fail. Moreover, Complainant’s “MILITARY LIFESTYLE” mark is very different from the disputed domain and, thus, not confusingly similar.
Second, Respondent has rights and a legitimate interest in the disputed domain because it incorporates the common term “military life” and Respondent uses the disputed domain in connection with an affiliate advertising program which present links to promote goods and services related to the military, thus satisfying the requirement of use in connection with a bona fide offering of goods or services. This use is contrary to Complainant’s incorrect allegation that Respondent has “made no use of the domain name.”
Third, Respondent did not register, and has not used, the disputed domain in bad faith. To prove bad faith registration and use of a common term domain name, Complainant must prove either that the disputed domain was registered specifically to sell to Complainant, or that the value of the disputed domain derives exclusively from the fame of Complainant’s mark. There is no evidence to support either basis for bad faith registration and use. Respondent simply registered the disputed domain because it incorporates a common descriptive term. Complainant’s only allegation of bad faith is that Respondent has made no use of the domain name and that this “passive holding” permits an inference of bad faith registration. However, as noted above, Respondent is using the disputed domain in connection with advertising links that promote goods and services related to the military. Accordingly, there is no basis for establishing bad faith registration.
Finally, Respondent has cited a Cayman Islands newspaper article referencing the fact that Respondent owns over 2,000 domain names. However, Respondent registers domain names based on its belief that are common words or descriptive terms which do not interfere with the trademark rights of others. The Panel is, therefore, requested to decide this proceeding based solely on the facts and arguments presented here.
Complainant’s purported trademark for MILITARY LIFE has been refused registration by the PTO. On March 9, 2004 – prior to the date this Complaint was filed – the PTO issued an “office action making FINAL a refusal to register the mark.” The Office Action letter states:
Registration was refused under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), because the subject matter for which registration is sought is merely descriptive of the identified goods and services.
The PTO explained that the “dictionary definitions” of the words in the combined term:
clearly illustrate that the mark describes the subject of the information provided in the applicant’s services …, namely “information about goods and services of interest to military personnel and their dependents. . .
The PTO concluding by stating the “mark immediately names the exact nature of the services. Therefore the refusal to register the mark . . . is made FINAL.” (emphasis in original)
Notwithstanding that the PTO refused to register the mark MILITARY LIFE, Complainant alleged that this trademark was “pending,” “inherently distinctive,” and “entitled to the maximum level of protection afforded to any trademark,” facts directly in conflict with the findings of the PTO. Complainant withheld from its Complaint the fact that the PTO issued a final refusal to register the mark.
Other evidence of the descriptive nature of the term “military life” – if necessary -- is evident from the substantial third party use of the term. A search on Google.com for the term “military life,” excluding the word “lifestyle” to eliminate references to Complainant, yielded over 220,000 third party uses of the term. Examples of third party uses include:
Military Life Insurance Premiums
Military Life topics
Military Life [of] Aztecs
Military Life at the Royal Military College of Canada
Military Life in the Valley of the Shadow
Military Life at Isley Field, Saipan
The PTO also noted this third party use in denying registration of the mark “military life.” The Office Action letter states:
A search of the World Wide Web using the terms “military life” retrieved numerous hits featuring goods and services available to military personnel and their dependents as well as general educational information about the life of military personnel. From information on government benefits, careers, military sales, health risks, relocation, and travel to information on family live.
Respondent selected the disputed domain because it incorporates a common descriptive term. Respondent uses the disputed domain in connection with an affiliate advertising program operated by Google.com. Respondent did not register the disputed domain for the purpose of selling it to Complainant. Respondent did not register the disputed domain with the intent to disrupt Complainant’s business, or to confuse consumers seeking to find Complainant’s website. Respondent did not register the disputed domain to prevent Complainant from owning a domain name incorporating its alleged trademark.
3. Basis for Respondent to Retain Registration and Use of Disputed Name
Under the Policy, to prevail on its claim to obtain the rights to the disputed domain, Complainant must demonstrate three things:
1. that the disputed domain name is identical or confusingly similar to its trademark; and
2. that respondent has no rights or legitimate interest in the domain name; and
3. the domain name was registered and is being used in bad faith.
(Policy, ¶¶4(a)(i)-(iii).) Complainant bears the burden of proof as to each element of its claim.
a. Complainant Has No Enforceable Rights to the Under the Policy Because its Mark is Generic or Descriptive
Complainant merely has a trademark application for MILITARY LIFE. At the outset, trademark applications provide no trademark rights until a registration issues. Here, the trademark application has been refused registration by the PTO, which deemed it to be unregistrable on the grounds that it is merely descriptive. Accordingly, rather than providing Complainant with trademark rights, this denied application constitutes strong evidence that Complainant lacks rights to the term MILITARY LIFE.
As the PTO explained, the mark is descriptive because it:
describes the subject of the information provided in the applicant’s services …, namely “information about goods and services of interest to military personnel and their dependents. . .
Neither of Complainant’s marks provide enforceable rights since they both similarly describe Complainant’s services. Under the Policy, descriptive and generic terms provide no rights even if the mark is registered.
Accordingly, because Complainant’s alleged trademarks are descriptive, Complainant has no enforceable trademark rights under the Policy, and the Complaint must, therefore, be dismissed.
b. Respondent Has Rights And A Legitimate Interest In The Domain Name
The second element Complainant must prove is that Respondent has no rights or legitimate interest in the name. The Complaint fails here, as well. ¶4(c) of the Policy lists three circumstances that can demonstrate a registrant’s rights or legitimate interest in the disputed domain name:
(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;
(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;
(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.
(Policy ¶4(c)(i) - (iii).)
Because “military life” is a common generic or descriptive term, and is not exclusively used by Complainant, Respondent, ipso facto, has rights and a legitimate interest in the disputed domain.
The principal that the mere ownership of a common term domain should, in and of itself, establish the owner’s rights and legitimate interest has been recognized by several ICANN panels. As one such Panel explained:
Where the domain name and trademark in question are generic—and in particular where they comprise no more than a single, short, common term—the rights/interests inquiry is more likely to favor the domain name owner. The ICANN Policy is very narrow in scope; it covers only clear cases of “cybersquatting” and “cyberpiracy,” not every dispute that might arise over a domain name. See, e.g., Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (Oct. 24, 1999). Shirmax Retail Ltd. v. CES Marketing, Inc., Case No. AF-0104 (e-Resolution March 20, 2000)[i] (THYME.COM). See also General Machine Prods Co. v. Prime Domains, Case No. 92531 (NAF Jan. 26, 2000)(CRAFTWORK.COM);[ii] Car Toys, Inc. v. Informa Unlimited, Inc., Case No. FA93682 (NAF Mar. 20, 2000) (CARTOYS.COM);[iii] CRS Technology Corp. v. Condenet, Inc., Case No. FA9347 (NAF March 28, 2000)(CONCIERGE.COM);[iv] Nicholas V. Perricone, M.D. v. Martin Hirst, Case No. FA0095104 (NAF Sept. 1, 2000)(‘WRINKLECURE.COM);[v] Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, Case No. D2000-0161 (WIPO. May 12, 2000)(ZERO.COM);[vi] Primedia Special Interest Publications, Inc. v. John L. Treadway, Case No. D2000-0752 (WIPO Aug. 21, 2000)(SHUTTERBUG.COM)[vii]; First American Funds, Inc. v. Ult.Search, Inc., Case No. D2000-1840 (WIPO April 20, 2001)(FIRSTAMERICAN.COM).[viii]
The right to use the common descriptive term by third parties was expressly noted by the PTO in the Office Action Letter, which stated that “businesses and competitors [should] have the freed to use [such] common descriptive language when merely describing their own goods or services to the public.” This is what Respondent is doing here.
Moreover, prior to the initiation of this dispute Respondent has used the disputed domain in connection with Internet advertising, which relates precisely to the descriptive meaning of the disputed domain. The web page at <militarylife.com> presents advertisements for goods and services related to the military. The use of a descriptive term domain name in connection with third party advertising services constitutes use in connection with a bona fide offering of goods or services, pursuant to ¶4(c)(i).
Accordingly, because Respondent has a legitimate interest in the Disputed Domain, the Complaint should be denied.
c. Complainant Has Not Demonstrated That The Domain Name
Was Registered and Is Being Used In Bad Faith
The third element that Complainant must show is Respondent’s bad faith registration and use. The Complaint fails on this count as well. The Policy identifies four circumstances that may constitute evidence of bad faith registration and use:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
(Policy ¶¶4(b)(i) - (iv).)
There is absolutely no evidence that Respondent registered the disputed domain to sell to Complainant. Nor is there any evidence that Respondent had even heard of Complainant or its purported trademark when it registered the disputed domain. Absent direct proof that a descriptive term domain name was registered or acquired solely for the purpose of profiting from Complainant’s trademark rights, there can be no finding of bad faith registration and use. The three-member panel, in ruling in favor of the owner of the common term domain name <instead.com> held:
A bad faith showing would require the Complainant to prove that the Respondent registered instead.com specifically to sell to the Complainant, or that the value of "instead" as a domain derived exclusively from the fame of its trademark. Neither has been proven in this case. In the absence of an intent to capitalize on the Complainant’s trademark interest, the Complainant cannot assert an exclusive right over a domain name that is a common, generic term. (emphasis added).
Here, the undeniable fact is that “military life” is an extremely common descriptive term, appearing on over 220,000 third party web pages unrelated to Complainant. Complainant has presented no specific evidence of bad faith, merely suggesting that an “inference” be drawn from Respondent’s alleged “passive holding of [the] domain name.” However, Respondent is not passively holding the disputed domain. It is using the disputed domain in connection with an affiliate program operated by Google.com, which provides advertising links related to “military life.” This is not a passive holding. In fact, as noted above, several decisions have recognized such use as constituting the bona fide offering of goods and services
Finally, Complainant points to a Cayman Island newspaper article that refers to over 2,000 other domain names registered by Respondent. However, the mere registration of other domain names does not constitute evidence of bad faith. An administrative Panel must decide “each case on its own merits.”
Accordingly, for all the above reasons, Complainant has failed to meet its burden of proving bad faith registration and use and, the Complaint must, therefore, be dismissed.
4.Reverse Domain Name Hijacking
Complainant has brought forth a Complaint without any merit because it did so with the knowledge that it has no enforceable trademark rights under the Policy. This constitutes reverse domain name hijacking. “Military Life” is a descriptive term and the PTO determined it to be descriptive, after providing Complainant with substantial opportunity to argue otherwise. Worst of all, Complainant argued to this Panel that MILITARY LIFE is “inherently distinctive” and “entitled to the maximum protection afforded any trademark.” That was not true. Complainant knew that, prior to filing the Complaint, the PTO had reached a strikingly contrary conclusion, holding that MILITARY LIFE was not entitled to be registered as a trademark because it is “merely descriptive.” The PTO expressly recognized the rights of third parties to use this descriptive term, but Complainant has attempted to use this refused application to preclude such use. It is difficult to imagine a more fitting set of facts to support a finding of reverse domain name hijacking.
This Panel should, therefore, find that Complainant has abused these proceedings by i) bringing forth a Complaint based solely on a descriptive term to which it has no trademark rights and to which it knew it had no trademark rights, ii) by withholding material evidence that underscores the Complainant’s lack of the trademark rights necessary to support a lawful complaint under the Policy; and iii) for using a trademark application for mark to create the appearance that the application confers rights upon Complainant when, in fact, not only does the application contain no such rights but it supports the opposite: that Complainant has no trademark rights to the descriptive term “military life.”
Complainant has proven each of the following three elements necessary 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; and
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.
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; and
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.
Complainant established rights in the MILITARY LIFESTYLE mark through registration of the mark with the United States Patent and Trademark Office on August 7, 1987 (Reg. No. 1,450,675) and a pending application for the MILITARY LIFE mark filed October 2, 2002 (Ser. No. 76/456,285). See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption.); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications.)
Complainant has used the MILITARY LIFESTYLE mark in commerce since 1980 and the MILITARY LIFE mark in commerce since 2002 (although that use occurred after the domain name in question was registered, so the Panel is not considering that mark in this decision).
The disputed domain name is confusingly similar to Complainant’s MILITARY LIFESTYLE mark because, with the exception of the omission of the generic word “style” from the mark, the domain name fully incorporates the mark and merely adds the generic top-level domain (“gTLD”) “.com.” See Hammond Suddards Edge v. Westwood Guardian Ltd., D2000-1235 (WIPO Nov. 6, 2000) (finding that the domain name, “hammondsuddards.net,” is essentially identical to Complainant's mark, Hammond Suddards Edge, where the name “Hammond Suddards” identifies Complainant independently of the word “Edge”); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to Complainant’s “Wellness International Network”); 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).
Respondent is not authorized or licensed to register or use a domain name that incorporates Complainant’s mark. Respondent is not commonly known by the domain name. Therefore, Respondent lacks rights or legitimate interests in the domain name pursuant to Policy ¶4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Respondent has not used the domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when Respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”); see also Open Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that Respondent did not establish rights and legitimate interests in the domain name where Respondent mentioned that it had a business plan for the website at the time of registration but did not furnish any evidence in support of this claim).
Prior to filing this complaint, Respondent did not make use of the <militarylife.com> domain name. After this complaint was filed, Respondent established a page consisting of “click through links” registered with an affiliate advertising website. Respondent did not specify when the “click through links” were first put into service.
Simply having a web page that has “click through links” that yield a commission to Respondent is not sufficient to show a bona fide offering of goods and services. Such web sites are easily constructed and there is nothing which shows the website was erected for any purpose other than to prevent the domain name from being transferred (especially since it was erected after the complaint was filed).
The domain name is confusingly similar to Complainant’s MILITARY LIFESTYLE mark because it offers the same types of goods and services, meaning Respondent is using the domain name for commercial benefit by causing Internet user confusion. Use of a domain name that is confusingly similar or identical to another’s mark for unauthorized commercial gain does not constitute a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that Respondent’s diversionary use of Complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to competitors of Complainant, was not a bona fide offering of goods or services).
Much has been said by the parties about the fact Complainant’s MILITARY LIFE mark is not registered or that it is a weak mark. Both are true. However, a party need not have a registered trademark to prevail in a UDRP proceeding, Roberts v. Boyd, WIPO Case No. D2000-0210 (May 29, 2000). The Complainant merely has to have some right in the domain name. Likewise, Respondent cannot have any rights in the domain name. That is true in this case.
Respondent’s business model is to register thousands of domain names which are similar (but not identical to) weak, descriptive registered trademarks. A fairly generic web site of “click through links” is established with a company that will pay a commission on each sale generated by a click through. Yet the business model does not need to generate significant revenue from such links. The implication is that selling the domain names generates the majority of the revenue, which Respondent has failed to rebut. The majority of the Panel believes such practice is not a bona fide offering of goods and services.
Respondent registered the disputed domain name in bad faith because Respondent has passively held the domain name since the time of registration. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see also Sporty's Farm LLC v. Sportsman's Mkt., Inc., 202 F.3d 489 (2nd Cir. 2000) cert. denied, 120 S.Ct. 2719 (2000), (finding bad faith where the domain name was not used until after litigation began and the domain name does not consist of the legal name of the party).
Respondent’s competitive use of the domain name for military-related services is an effort to disrupt Complainant’s business pursuant to Policy ¶4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion).
Respondent’s registration of the disputed domain name, a domain name that incorporates Complainant’s mark and deviates only with the omission of a generic or descriptive term, suggests that Respondent knew of Complainant’s rights in the MILITARY LIFESTYLE mark. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
Additionally, the Panel infers Respondent’s use of the disputed domain name is to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement pursuant to Policy ¶4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <militarylife.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panel Chair
Sandra Jo Franklin,
Dated: June 28, 2004
Dissent - Diane Cabell
I find in favor of the Respondent. Claimant’s more recent mark (MILITARY LIFE) was not used in commerce until after Respondent registered the domain, hence the registration could not be in bad faith as to that particular mark. Claimant was on notice that the domain was owned by another party even before it began using the term, therefore it seems somewhat disingenuous to argue that its investments in that resource are now deserving of protection.
Nor do I find any of the elements of bad faith as to the Claimant’s earlier mark (MILITARY LIFESTYLE).
The only ground for bad faith on which Claimant seems to be making a claim is ¶4(b) (iv):
by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
There is no evidence of such intent, only the inference based on the similarity of names. The Policy requires more than just similarity of names, otherwise ¶¶4(a)(ii) and (iii) would be unnecessary. The Policy requires some intent or action that directly targets the mark owner.
If the trademark were more distinctive or were coined, its uniqueness would support an inference that other users were attempting to ride on its coattails. This is the Telstra reasoning. Where the mark consists of common words, however, this is simply not supportable. "Military life" is far too widely used for non-trademark purposes that it is unlikely that most users would immediately associate it with the trademark of a relatively obscure special-purpose magazine. I cannot deduce that Respondent seriously expects that readers looking for the magazine will prove to be the bulk of users accessing its domain name. It is much more likely, in my opinion, that most people using the term are looking for more general information on the topic. Nor is there any other evidence of an attempt to imply association between the two entities, such as similarity of layout or design.
The fact that Respondent has, as part of its extensive domain registration enterprise, occasionally registered names that are similar to other marks, does not mean that all of the 2200 registrations are acts of cybersquatting. Each registration must be assessed on its own merits. Because almost every common word in the English language forms a part of some trademark registration, it is difficult not to use terms that appear in someone else’s mark. That is why the ¶4(b) and (c) elements must be established to show a particular harm to a particular mark owner.
In the absence of any bad faith, the Complaint must fail.
Diane Cabell Esq.
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