DECISION

CDs-2-Go, Inc. v. Michele Dinoia d/b/a SZK.com

Claim Number: FA0310000203202

PARTIES

Complainant is CDs-2-GO, Tampa, FL (“Complainant”) represented by Cheryl Parrish, 325 South Boulevard, Tampa, FL 33606.  Respondent is Michele Dinoia d/b/a SZK.com  (“Respondent”) is represented by Valerio Donnini 188, Via P. Gobetti, Pescara PE, Italy 65121.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <cds2go.com>, registered with Universal Registration Services, Inc. d/b/a Newdentity.com.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Paul M. DeCicco as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 16, 2003; the Forum received a hard copy of the Complaint on October 20, 2003.

On October 16, 2003, Universal Registration Services, Inc. d/b/a Newdentity.com confirmed by e-mail to the Forum that the domain name <cds2go.com> is registered with Universal Registration Services, Inc. d/b/a Newdentity.com and that the Respondent is the current registrant of the name.  Universal Registration Services, Inc. d/b/a Newdentity.com has verified that Respondent is bound by the Universal Registration Services, Inc. d/b/a Newdentity.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On October 22, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 11, 2003 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@cds2go.com by e-mail.

A timely Response was received and determined to be complete on November 10, 2003.

Complainant filed supplementary papers on November 14, 2003 and Respondent replied to the filing on November 18, 2003.

On November 17, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that through use and registration it has established its right in the CDs-2-GO mark, and Respondent’s <cds2go.com> domain name is confusingly similar to Complainant’s mark because it merely deletes the hyphens from the name.

Complainant asserts that Respondent has no rights or legitimate interests in the <cds2go.com> domain name, which Respondent registered long after Complainant had established rights in its CDs-2-GO marks. Additionally the domain name is not used in connection with any bona fide offering of good or services. Respondent uses the <cds2go.com> domain name to re-direct Internet users to <targetsearches.com>, which is a website that operates as a search engine.

Respondent is not commonly known by the disputed domain name, as shown by its registration information, and is not making legitimate non-commercial or fair use of the domain name.

Furthermore, there exists no relationship between Complainant and Respondent that would give rise to any license, permission, or authorization by which Respondent could own or use the disputed domain name.

Complainant asserts that Respondent has registered the domain name <cds2go.com> in bad faith for the purpose of selling the domain name registration to Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. Evidence of this can be found in an email dated October 14, 2003, in which Respondent states, “Am sorry but we dont [SIC] want to sell the domain for less then $ 2000” and related emails between the parties.  This statement was made in direct response to Complainant’s offer to pay out-of-pocket costs, plus a nominal fee (total offer was $105.00) to Respondent for transfer of the domain name in question to Complainant.

Complainant further asserts that Respondent is engaged in a pattern of such conduct, as evidenced by the eight (8) domain dispute cases that were filed with the National Arbitration Forum, against the Respondent, between December 2001 and the present as well as the three (3) other UDRP actions filed against Respondent.

B. Respondent

Respondent claims the domain name is not identical or confusingly similar to a trademark or service mark in which Complainant has rights. Respondent contends that Complainant has not carried its burden of proving that it has rights in the mark underlying the domain name; the trademark owned by Complainant is valid only in the State of Florida.

Respondent further alleges that Complainant’s ownership of a Florida service mark for “cds-2-go”, standing alone, does not establish any rights beyond that state or the limited class of services for which the mark was granted. It is conceivable that other states besides Florida have granted service marks for the same name.

The business model of Respondent is, among others, to register numerous generic names and to resell or to use them for web sites; Respondent invested in a dedicated web server for his business and negotiated with software developers to complete the software applications necessary to his business.

In this specific case, Respondent was asked by a third Italian company named La Cassandra Edizioni S.n..c.  (La Cassandra), which runs a business in compact discs prints, packaging and typographical works, to register many domain names related to compact discs, and to “point” them to the website of La Cassandra (<lacassandra.com>), in order to promote the business of that company by advertising on the Internet. The contested domain name was registered for that goal on behalf of Respondent’s client. Respondent thus declares it was preparing to use the domain name in connection with a bona fide offering of a service to a client.

Respondent contends that consumers, who see Respondent’s site, are not likely to believe that the site has any connection with Complainant and that no confusion is possible between Complainant and Respondent. Complainant has not produced evidence that Respondent's domain name has caused confusion. If a consumer types <cds2go.com> into the browser in hopes of arriving at Complainant's site, there is no chance of "initial interest" or other confusion.

Respondent had no intent to divert consumers or to tarnish the trademark at issue, as is demonstrated by the website reached at the URL <cds2go.com>, which re-directs the customer to an Italian Company, that cannot be considered a competitor to Complainant, which is located in Florida and does not direct its business to the Italian market.

Respondent also contends that the domain name should not be considered as having been registered and being used in bad faith.   First, there is no direct evidence that Respondent, living in Italy, was aware of Complainant or its use of the term “cds2go” or its trademark, registered only in Florida, at the time Respondent registered the domain name. Second, it was Complainant that wanted to start a transaction and Respondent did not attempt to sell its domain name registration to Complainant, and there is no evidence supporting the proposition Respondent registered the domain name with any bad faith intent.

According to Respondent, Complainant has not met its burden of proof under Policy ¶ 4 (a)(iii), as no evidence was provided that the domain name was both registered and is used in bad faith.

FINDINGS

The mark CDS-2-GO and domain name <cds2go.com> are identical and Complainant has UDRP actionable trademark rights in the mark CDS-2-GO. CDS-2GO is not generic.

Respondent has no legitimate rights or interest in the at-issue domain name.

Respondent acted in bad faith in registering and using the at-issue domain name.

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

Complainant’s claimed mark and the at-issue domain name are identical or confusingly similar in sound, sight and meaning. The domain name merely omits the hyphens from the mark adding the generic top-level domain “.com.”  See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to Complainant's mark); see also Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

Notwithstanding the forgoing we must nevertheless determine whether or not Complainant has trademark rights in CDs-2-GO. Respondent claims that Complainant’s mark CDs-2-GO was registered only in Florida and that the mark is generic. Respondent claims and the Panel agrees that if the mark is generic Complainant must show that some degree of secondary meaning has been acquired, if a finding is to be made for Complainant.

However, CDs-2-GO (CDs2GO) is not generic. The mark “CD 2 GO” was registered with the United States Patent and Trademark Office (USPTO) on the principal register in 1991, albeit by an entity other than Complainant. That registration has since lapsed. See http://tess2.uspto.gov/bin/showfield?f=doc&state=unlh4e.4.13 (December 3, 2003). The USPTO also lists several other registrations that are similar in sight, sound and meaning to CDS-2-GO. These marks are either currently registered, or have been registered for some period of time. In searching the USPTO records, “CD TO GO,”   and CDROM2GO.COM are listed as “live” while “CDSTOGO” and  “CD TO GO” are listed as “dead.”   See http://tess2.uspto.gov/bin/showfield?f=toc&state=h6hiuo.1.1&p_search=searchss&p_L=50&BackReference=&p_plural=yes&p_s_PARA1=&p_tagrepl%7E%3A=PARA1%24LD&expr=PARA1+AND+PARA2&p_s_PARA2=cd+to&p_tagrepl%7E%3A=PARA2%24COMB&p_op_ALL=AND&a_default=search&a_search=Submit+Query (December 3, 2003).   The fact of prior Federal registrations on the principal register cuts against Respondent’s argument that CDs-2-GO is generic.

Complainant’s Florida trademark may alone be sufficient to allow it to demonstrate the threshold level of trademark rights to prevail in a UDRP proceeding. In Benefitslink.com, Inc. v Haynes, complainant held a trademark in Florida while respondent was from Tennessee, but the Panel emphasized that the mark had acquired secondary meaning outside of Florida by virtue of complainant's Internet business and pointed to a pending federal trademark application. See Benefitslink.com, Inc. v. Haynes, FA 95164 (Nat. Arb. Forum Aug. 13, 2000). While there is no evidence here of a pending federal mark, Complainant has maintained an Internet business and has proffered evidence of such in the form of printouts of various webpages from its website <cds-2-go.com>.

Moreover, common law trademarks have been held to represent sufficient 'rights' to have standing under the UDRP. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Great Plains Metromall, LLC v Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”). Since Complainant’s business is present on the World Wide Web, the business is conducted without any geographic restriction and common law rights are likely to have attached outside of Florida. 

For the forgoing reasons the Panel holds that Complainant has sufficient trademark interests in the domain name to have standing in this UDRP proceeding.

Rights or Legitimate Interests

Respondent is not commonly known as CDS-2-GO.  Nor is it licensed or authorized to register or use domain names that incorporate the CDS-2-GO mark.  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Respondent claims that it has rights/interests in the domain name <cds2go.com> because it registered the domain name and other generic domain names on behalf of a third-party.  According to Respondent domain name registration of generic names constitutes a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  See Fifty Plus Media Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000; see also Gen. Mach. Prod. Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum Mar. 16, 2000).  As discussed above, the name “CDs-2-Go” is not “generic.”  As discussed below, it is doubtful that Respondent actually was acting on behalf of a third party at the time of registration and immediately thereafter. Accordingly, Respondent’s argument collapses and the Panel finds that Respondent has no legitimate rights or interest in the at-issue domain name.

Registration and Use in Bad Faith

After Complainant initiated an offer to purchase the domain name from Respondent for $105 as Respondent’s out-of-pocket costs, the Respondent replied, “Am sorry but we dont [SIC] want to sell the domain for less then $ 2000.” Complainant alleges that Respondent thereby attempted to sell the <cds2go.com> domain name for more than out-of-pocket costs and shows that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(i).  See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).

The Panel does not find that the parties’ email exchange of offer and counter-offer, standing alone, indicates Respondent’s bad faith. Rather, the Panel agrees with Respondent who argues that it did not register or use the <cds2go.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i) because Complainant was the one that began discussions of selling the domain name.  See Puky GmbH v. Agnello, D2001-1345 (WIPO Jan. 3, 2002) (finding insufficient evidence to hold that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) where Complainant initiated contact with Respondent and Respondent responded with an offer to sell its domain name registration for $50,000); see also Coca-Cola Co. v. Svensson, FA 103933 (Nat. Arb. Forum Feb. 27, 2002) (finding that Respondent was not acting in bad faith when it engaged in discussions to sell its domain name registration to Complainant after Complainant initiated the discussion).

Respondent has had no less than 11 UDRP proceedings filed against it. In no less than 11 UDRP proceedings the at-issue domain name was transferred from Respondent to the complainant.  See, http://cyber.law.harvard.edu/cgi-bin/htsearch?method=and&format=long&config=htdig_udrp&restrict=&words=Michele (December 3, 2003).  Among the domain names transferred: <anheuserbusch.com>, <kidsrus.com>, <wwwfootlocker.com>, <wwwcircuitcity.com> and <foxmoviechannel.com>.  In the instant case Complainant alleges that Respondent acted in bad faith by registering the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, and has engaged in a pattern of such conduct triggering bad faith under section 4(b)(ii) of the Policy. But there is no direct evidence in the record showing that Respondent was aware of the CDs-2-Go mark. One might thereby imply that Respondent could not have intended to deprive Complaint the use of the at-issue domain name. Nevertheless, the above-discussed fact patterns when coupled with the factors setout below lead the Panel to conclude that Respondent acted in bad faith in registering and using the at-issue domain name.

During the course of Complainant’s email exchange with Respondent, Respondent never mentions that it registered the domain name for the benefit of third party La Cassandra, as it claims in its Response.  Respondent’s counter-offer to Complainant’s offer suggests that the domain name was under its exclusive control since there was no reference to La Cassandra express or implied, direct or indirect. Additionally, the letter from La Cassandra’s General Manager, Lino Fleicione, to Respondent annexed to the Response makes no mention of the terms of the agreement that purportedly caused Respondent to register several domain names on La Cassandra’s behalf. Importantly, there is no mention of any fee for Respondent’s services.  The letter thus appears to have been contrived for the purpose of responding to the instant UDRP Complaint. If Respondent were actually acting on behalf of its claimed client La Cassandra, we would expect to see this clearly reflected in the record, yet we do not.

That there are multiple federal trademark registrations which may interfere with the at-issue mark/domain name, indicates that Respondent, a sophisticated registrant, knew or should have known of these trademarks. By registering the at-issue domain name, Respondent was likely to preclude one or another of the mark holders from registering a domain name reflecting a trademark. Therefore, given the number of UDRP proceedings in which Respondent had its domain name transferred away, it appears more likely than not that cybersquatting is an important component of Respondent’s “business model” and the more credible reason for its registration and use of <cd2go.com>.

  

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <cds2go.com> domain name be TRANSFERRED from Respondent to Complainant.

Paul M. DeCicco, Panelist
Dated: December 5, 2003

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