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Generic Top Level Domain Name (gTLD) Decisions |
Not My Kid,
Inc. v. Ron Sawchak
Claim Number: FA0307000167978
PARTIES
Complainant
is Not My Kid, Inc., Phoenix, AZ
(“Complainant”) represented by Philip
McAtee. Respondent is Ron Sawchak,
Neptune, NJ (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <notmykid.com>
registered with Namesecure.com.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Jacques
A. Léger, Q.C. as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 10, 2003; the Forum received a hard
copy of the
Complaint on July 21, 2003.
On
August 4, 2003, Namesecure.com confirmed by e-mail to the Forum that the domain
name <notmykid.com> is
registered with Namesecure.com and that Respondent
is the current registrant of the name. Namesecure.com has verified that Respondent is bound by the Namesecure.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
August 4, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of August 25,
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@notmykid.com by e-mail.
A
timely Response was received and determined to be complete on August 25, 2003.
On September 9, 2003, pursuant to Complainant’s request to have the
dispute decided by a single-member
Panel, the Forum appointed Jacques A.
Léger, Q.C. as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A.
Complainant
Complainant
currently holds the rights to <notmykid.org> and <notmykid.net>. It
is also completing the process of getting a service
mark for NOTMYKID.ORG. It
gets numerous phone calls of people saying that they went to its website and nothing
was there.
Respondent
has done nothing with the domain name for the last three years, it has made no
attempts to acquire trademark or service marks for
NOTMYKID.
Respondent
has told the founder and chairman of Complainant,
that it is only interested in selling the domain name.
B.
Respondent
The
domain name was first registered by Respondent
in good faith on February 7, 2000, as a very generic name with a multitude of
applications and website development opportunities.
Complainant
was fully aware that <notmykid.com>
was already registered before <notmykid.org> was registered, on March 29,
2000, before Complainant was
incorporated in the State of Arizona (on December 4, 2000), as “Not My Kid,
Inc.”, and before Complainant
originally filed for a “mark” on October 18, 2000.
Complainant currently does not
hold the rights to <notmykid.net>, as stated in the Complaint. This name
is currently not registered, as
of August 23, 2003, and the rights to the name
remain available.
Complainant is a non-profit/not-for-profit
organization, and as such, the “.org” extension is most appropriate for its
organization, per the
Public Interest Registry (FAQ page), that now handles the
“.org” domain name extension.
The
service mark applied for is specifically for NOTMYKID.ORG, not NOTMYKID.COM.
Use of the name “notmykid.com” may be misleading,
particularly for a non-profit
organization.
The
name was registered in good faith and Respondent
should retain the rights to use the name as long as the website eventually developed
is different in terms of style and content then
that of <notmykid.org>.
Respondent never initiated any
contact with Complainant
offering to sell the name, as it is Complainant
who initiated all contact and discussions regarding the possible sale of <notmykid.com>. The manner in which
these discussions were handled, including the correspondence received (and
further discussed below), made
it less than attractive to pursue.
There
are several issues associated with the letter referenced and included in the
Complaint. First, it is not dated June 21, 2001,
but rather June 25, 2001.
Second, the letter is not as it appears in the Complaint, as it was prepared
and received on letterhead
captioned “Moak & Sons, Inc.”. This made Respondent question the organization
it was actually dealing with and its ultimate intent. Third, the letter states:
“In light of the fact that we have
trademarked the “Not My Kid” name and would take reasonable steps to ensure
that the name and mission
of our organization is not infringed upon”. Respondent found this statement
misleading at the time, as the name was not “marked” at that point, i.e. on
March 21, 2001, rather merely applied for. Fourth, Respondent felt
that the letter was an attempt to recap casual conversations that Complainant initiated regarding the
name, and position the discussions for dispute resolution. Respondent never provided a response
since it felt the statements contained within the letter were incorrect, and it
was not even on its own
organization’s letterhead with corresponding address. Complainant did discuss the name and
asked if Respondent was willing
to donate it to help substantiate its not-for-profit, 501(c)3 status, which Respondent was not interested in doing
at the time.
DISCUSSION AND FINDINGS
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 cumulatively to obtain an order that a domain name 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.
Complainant
asserts it was incorporated in April 2000, under the name NotMYkid, Inc.
Although this is not specifically alleged by Complainant, Panel finds that “NotMYkid” may be viewed as Complainant’s trade name. However, as
stated in Univ. of Konstanz v.
uni-konstanz.com D2001-0744 (WIPO Oct. 18, 2001), the UDRP Policy’s scope
did not encompass trade names in its definition of “mark” in which the Complainant has rights. See also Sintef v. Sintef.com D2001-0507 (WIPO
June 9, 2001) wherein it was found that “trade names as such are, however, not
the subject of the current Policy”.
Nevertheless,
“NotMYkid” may potentially be considered as distinctive and as being used by Complainant to identify its services,
and therefore, it could be said that Complainant
could have acquired common law rights in the name “NotMYkid”, subject to proper
evidence being submitted. As it was stated in Stadshypotek Bank AB v. Customer Serv. D2003-0342 (WIPO June 19,
2003), “the Complainant can
assert trademark rights when the Panel can conclude from the circumstances of
the case and the evidence brought to its knowledge
that the Complainant is the holder of a
distinctive designation for a certain category of products and services.” Panel
relies on the findings in Music
United.com AG v. Nauta D2000-1019 (WIPO Nov. 7, 2000): “No circumstances
have been submitted in the case to suggest that the company name is actually
also
a trademark or service mark even if it seems to have been used to identify
Complainant’s activities and
thus, at least partially, fulfils the functions of a trademark. Obviously, the
company name had not at this point
been registered as a trademark. There is not
sufficient evidence available to the Panel to consider whether a trademark
right may
have been acquired through the use of the company name for the
purpose of identifying Complainant’s
goods or services.”
As
well, Complainant’s website is
located at <notmykid.org>, which was registered on March 29, 2000. Panel
relies on the findings in the majority
decision in Delta Air Transp. NV (trading as SN Brussels Airlines) v. De Souza
D2003-0372 (WIPO Aug. 5, 2003) wherein it was stated, “The Respondent is using the Domain Names
as unique identifiers and they are thus serving the purpose of trade marks.[…]
The Complainant has put its case
at risk by not putting more evidence before the Panel. That is, by way of
reliable evidence of actual use to establish
unregistered trade mark rights.”
However, in the case at hand, Complainant
has done very little, if any, in order to demonstrate or attend to demonstrate
any form of common law rights in “NotMYkid”. Complainant additionally contends that it has rights in the domain
name <notmykid.net>, however Panel
proprio motu visited the website located at this address and did not come
across a website belonging to Complainant.
This illustrates that bare allegations alone cannot be considered as such, as
they must be supported by “some” evidence. Under such
circumstances, Panel has
little choice but to conclude, on a procedural ground, that the minimal burden
has not been met on this
element.
Complainant has asserted it is registered under Not MY Kid, Inc. as well as having
Federal pending applications; indeed, Complainant
provided evidence of a pending service mark application with the United States
Patent and Trademark Office (“USPTO”) for the NOTMYKID.ORG
mark (Ser. No.
78,031,308 filed on October 18, 2000) in relation to providing educational
information in the field of parenting skills
via a global computer
network. However, see Amsec Enters. v. McCall, D2001-0083
(WIPO Apr. 3, 2001) wherein it was stated that Complainant’s pending trademark
applications do not establish any enforceable
rights which only occurs once the
trademark application matures to registration; see also Powrachute Inc. v. Buckeye Indus., AF-0076 (e-Resolution,
May 30, 2000) wherein the Complaint was dismissed because Complainant failed to
contend, provide evidence,
or give arguments to the effect that it had either a
registered trademark or service mark in POWRACHUTE or any similar name, or that
it had a common law trademark in the name. In that case, the only evidence that
had been provided, that it was incorporated under
the name, was held insufficient
to create a trademark right. The Panel
relies on its findings in Mio,
Inc. d/b/a Keels and Wheels v. Showplace Publ’ns, Inc. d/b/a By the Sea d/b/a
Boat Shopper Magazine d/b/a boatsho.com FA 157296 (Nat. Arb. Forum, July
10, 2003) wherein it ruled on very similar issues. There needs to be a minimum
of evidence on which Complainant
can sustain its allegations in order to establish that it has rights in the
mark. In the case at hand, it is quite compelling that
Complainant has failed to prove that it has enforceable rights in
the NOTMYKID mark.
Complainant
lastly alleges that it got numerous phone calls of people saying that they had
been to its website and that nothing was there. Panel
could consider this as
being evidence of actual confusion, although the mere statement, not at all
supported by any substantial evidence,
cannot constitute a proper argument
which a Panel may take into account. It is indeed incumbent upon Complainant to adduce evidence to
support its contentions. Having failed to do so, Complainant cannot rely on this averment.
Respondent
for its part, asserts that it registered the <notmykid.com> domain name on February 7, 2000, and as such, Complainant has not asserted rights in
the NOTMYKID.ORG mark at the time of the disputed domain name’s registration
and in any event the domain
name registration predates Complainant’s alleged rights in said mark. Panel adopts the views
expressed in Razorbox, Inc.
v. Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003) wherein it was found that Complainant did not establish the
requisite trademark or common law rights to grant Complainant the necessary standing for the Panel to find in its
favor as Complainant’s pending
trademark application did not, in and of itself, demonstrate trademark rights
in the mark applied for; see also
Fisrtgate Internet A.G. v. Soung
D2000-1311 (WIPO Jan. 29, 2001) wherein it was held that “such trademarks
rights must be in existence at the time the domain name
is registered” and Ode d/b/a ODE and ODE – Optimum Digital
Enters. v. Intership Ltd. D2001-0074 (WIPO May 1, 2001) wherein it was
stated: “We are of the unanimous view that the trademark must predate the
domain name.
Whether it arises because of paragraph 4(a)(iii) rather than
paragraph 4(a)(i) does not call for a decision by us at this time. In
either
case, the result is the same, as is apparent from our decision below.”
Given
all that has been stated above, Panel concludes that Complainant has failed to establish any rights in the NOTMYKID.ORG
mark pursuant to Policy paragraph 4(a)(i). However, for the sake of
completeness,
and given that this is an arbitration, which by definition should
remain open and flexible, Panel undertakes to analyse the prongs
set forth
under Policy paragraph 4(a).
As
to the notion of confusing similarity as such, and subject to more scrutiny,
Panel would have had no difficulty in finding that
Respondent’s <notmykid.com>
domain name is confusingly similar to Complainant’s NOTMYKID.ORG mark because the disputed domain name
simply omits the “.org” from the mark and adds the generic top-level domain
(gTLD)
“.com” to the end of the mark. It is trite law that Respondent’s replacement of the “.org”
in Complainant’s mark with the
gTLD “.com” does not sufficiently differentiate the disputed domain name from
the mark. See Wellness Int’l Network, LTD
v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) wherein it was
found that the domain name <wellness-international.com> was confusingly
similar to Complainant’s
“Wellness International Network”.
Respondent
contends and provides Panel with numerous arguments to the fact that “.org” is
more suitable for Complainant as
it is a not-for-profit organization, providing educational services for
parents, and that the “.org” extension was expressly designed
for such
entities. Although it does not belong to Panel to make a finding on this issue,
Panel wishes to point out the decision in
Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1146 (9th Cir. Feb. 11, 2002) wherein: “Internet users
searching for a company’s [w]ebsite [...] assume, as a rule of thumb, that the
domain
name of a particular company will be the company name [or trademark]
followed by ‘.com.’”.
Here
again, Panel has no obligation to examine this ground, as failure to meet the
burden on the first ground leads inevitably to
a rejection of the Complaint,
but Panel undertakes to do so for the sake of completeness.
Complainant
maintains that Respondent has
made no use of the <notmykid.com> domain
name since the domain name was registered three years ago. Panel has proprio motu visited the website at <notmykid.com> and concludes that Respondent’s passive holding of the
disputed domain name indicates neither a bona
fide offering of goods or services under Policy paragraph 4(c)(i) nor a
legitimate noncommercial or fair use under Policy paragraph 4(c)(iii).
Panel
adopts the views expressed in Melbourne
IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) wherein no rights or
legitimate interests were found in the domain name where there was no proof
that Respondent made
preparations to use the domain name or one like it in connection with a bona fide offering of goods and services
before notice of the domain name dispute, the domain name did not resolve to a
website, and Respondent was not
commonly known by the domain name; see also for example Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19,
2001) wherein no rights or legitimate interests were found in the domain name
<solgarvitamins.com>
where Respondent
merely passively held the domain name. Panel finds that the passive holding of
the domain name is an indication that Respondent
does not have rights or legitimate interests in the domain name.
Moreover,
Panel is inclined to believe that Respondent
does not assert, and there is no evidence in the record to suggest that Respondent is commonly known by NOT MY
KID or <notmykid.com>.
Therefore, Panel might have held that Respondent
failed to establish any rights to or legitimate interests in the disputed
domain name with regard to Policy paragraph 4(c)(ii). Panel
refers to the
findings in RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) wherein the Panel interpreted Policy
paragraph 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";
see also for example Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) wherein it was
found that Respondent did not
have rights in a domain name when Respondent
was not known by the mark.
The
evidence submitted by both parties is severely deficient on that matter and
Panel finds it difficult to address this issue thoroughly.
But because the
initial, albeit fairly light, burden rests on Complainant and that this burden has not satisfactorily been met,
Panel has no choice but to conclude that Complainant has failed to meet the requirements set out in Policy
paragraph 4(a)(ii).
It is most of the time quite difficult,
if not impossible, to actually show bad faith with concrete evidence. While bad
faith cannot
be presumed, once Complainant
has presented some evidence pointing in that direction, it is then incumbent
upon Respondent to either
respond or explain why its conduct should not be assimilated to bad faith. The
Panel’s understanding of the Policy is that
although the initial burden to
prove Respondent’s bad faith in
the registration or the use of the disputed domain name relies squarely on the
shoulders of Complainant, such
obligation is only to make out a prima
facie case, and once it has done so, it is then incumbent upon Respondent to either justify or
explain its business conduct (if not to demonstrate the contrary). Failure
to do so will, in some circumstances, enable the Panel to draw a negative
inference.
The main issue seems to revolve around an
alleged “offer to sell” the domain name by Respondent. Complainant
attached to its Complaint a copy of a letter written by its founder and
chairman and sent to Respondent.
Respondent attacks the
appearance and content of the letter and also submits a version of the same
letter, seemingly the one it received. As
the differences are purely formal
(the letterhead is present on one and not on the other, one is dated June 21,
whereas the other
is dated June 25—the former being presumably a draft
version), Panel will consider Respondent’s
version to be the letter in question, since it is the one that was actually
sent to it by Complainant.
It is relevant to quote the following
passage from this letter: “As you and I have discussed several times you have
no interest in
the name other than to sell the rights to someone and you have
no plans to utilize the site for any use.” Panel considers that at
best this
letter is self-serving evidence and cannot accept it as actual evidence of Respondent’s offer to sell since it
emanates from Complainant.
That
being said, Panel undertakes a review of Complainant’s assertion, taken on its face. It is argued that Respondent told Complainant’s founder and chairman
that Respondent is only
interested in selling the domain name. It is far from clear, as per the
evidence submitted, that the <notmykid.com>
domain name was registered primarily for the purpose of selling the domain name
to Complainant for valuable
consideration in excess of Respondent’s
out-of-pocket costs. Although Respondent
makes an allusion to the fact that some discussions have taken place between
the parties as to the possible sale of the domain name,
Panel is not convinced
that such statements are enough to overcome the burden established in Policy
paragraph 4(a)(iii).
Furthermore,
Panel is mindful that Respondent’s
passive holding of the <notmykid.com>
domain name for over three years may in some circumstances indicate Respondent’s bad faith registration
and use. See for instance DCI S.A. v.
Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) where the Panel
concluded that Respondent’s
passive holding of the domain name satisfied the requirement of paragraph
4(a)(iii) of the Policy; see also Mondich
& Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16,
2000) wherein it was held that Respondent’s
failure to develop its website in a two-year period raises the inference of
registration in bad faith. In the case at hand, the mere
fact that Respondent has held the domain name
inactive for three years cannot, in and of itself, satisfactorily meet the
burden which relies on Complainant
to establish bad faith. In other circumstances, Panel could have found this
fact to be determinative as to the requirements of bad
faith. But given the
lack of proper evidence provided by Complainant
on that matter, Panel must once again conclude that Policy paragraph 4(a)(iii)
has not been met.
Should it be open for Complainant to re-file its
Complaint under the Policy in order to deal with the deficiencies in this
Complaint?
In this respect , the Panel relies on the views expressed in Omnipod, Inc. v. Nassef D2002-0084 (WIPO
Apr. 20, 2002), where the factual situation was quite similar to the present
one, and adopts the Panel’s obiter: “Here the Complaint is so lacking in
substance that it would not be practical for the Panelist to request further
statements or documents
pursuant to Rules, paragraph 12. That provision is not
intended to permit a Panelist to advise a party how to write its Complaint
or
Response, as the case may be. Although as stated above, this is a case where
the equities appear to be firmly in the Complainant's
favor, it is for the
Complainant properly and fully to plead its Complaint. However, the Panel must
make it clear that should the
Complainant decide to file a further Complaint,
it will be for a future Panelist, if and when appointed, to decide on the
admissibility
of that Complaint.”
Consequently,
the Panel finds that the Complaint is deficient on its face and, without
inviting the Complainant to do
so, leaves it for a future Panel to decide on the admissibility of a re-filed
Complaint. It would not be appropriate for this
Panel to bind another Panel by
incorporating the words “without prejudice” as others have done.
DECISION
Not having
adequately submitted evidence and therefore not having established each of the
three elements required under the ICANN
Policy, the Panel concludes that relief
shall be DENIED.
Jacques A. Léger, Q.C., Panelist
Dated: September 23, 2003
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