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Generic Top Level Domain Name (gTLD) Decisions |
Claim Number: FA0407000305302
PARTIES
Complainant
is Associated Newspapers Limited (“Complainant”),
represented by Adam Taylor of Adlex Solicitors,
76A Belsize Lane, London, NW3 5BJ, UK.
Respondent is G.S. Kukard (“Respondent”),
184e Romford Rd., London, Londone79hy, UK.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <thismoney.com>,
registered with Tucows Inc.
PANEL
The
undersigned certifies that she acted independently and impartially and that to
the best of her knowledge, she has no known conflict
in serving as Panelist in
this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically July 29, 2004; the Forum received
a hard copy of the Complaint July
30, 2004.
On
July 29, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain
name <thismoney.com> is
registered with Tucows Inc. and that Respondent is the current registrant of
the name. Tucows Inc. verified that
Respondent is bound by the Tucows Inc. registration agreement and thereby has
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 3, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of August 23,
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 postmaster@thismoney.com by e-mail.
A
timely Response was received and determined to be complete August 23, 2004.
On
August 26, 2004, Complainant timely filed an Additional Submission that
complied with The Forum’s Supplemental Rule 7 and was considered
by the Panel
in reaching its decision.
On August 30, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations in this proceeding:
1. The domain name registered by Respondent
is confusingly similar to a protected mark, THIS IS MONEY, owned by
Complainant.
2. Respondent has no rights to or legitimate
interests in a domain name that is confusingly similar to Complainant’s
protected mark.
3. Respondent registered and used the domain
name in bad faith.
B. Respondent urged in Response:
1. Respondent did not address the issue of
confusing similarity.
2. Respondent urges that the domain name
that Respondent registered is comprised of generic terms and that Respondent
has as much right
as Complainant to use those generic terms in a domain name,
especially where the domain name was registered before Complainant obtained
legal rights in Complainant’s mark. Respondent did not address Complainant’s
common law rights in the mark
3. That Complainant made no showing of bad
faith registration and use in as much as the registration occurred prior to
registration of
Complainant’s mark.
C. Complainant set out in the Additional
Submission, among other things, that:
1. Respondent has a history of registering
protected marks owned by another in domain names.
2. Respondent offers to sell the domain
name.
FINDINGS
Complainant established with extrinsic proof
in this proceeding that Associated Newspapers Limited of London owns UK
trademark, registration
number 2245561B, granted September 13, 2000, for the
THIS IS MONEY mark, in numerous classes of sales and services; and owns the
community trademark, registration number 1074830, dated February 9, 1999, for
the THIS IS MONEY mark, in numerous classes of sales
and services. Complainant commenced its Internet presence
under the mark August 19, 1998.
Complainant is a subsidiary of a
well-known publisher of national and regional newspapers and other media,
education and information
exchange and has been active in its area of commerce
since at least as early April 1,1905.
Complainant urges that it has common law rights arising from use of the
This Is Money mark in commerce as early as 1997, providing
analysis of
financial news as well as information on financial products and services.
Complainant also produced copies of the
THIS IS MONEY website dated February 29, 2000, and July 8, 2004.
The turnover for This is Money, Ltd. for
the year ending September 30, 2001, immediately prior to registration of the
disputed domain
name by Respondent’s predecessor on October 10, 2001, was
985,917 pounds.
Complainant established that it expended
large sums to develop its Internet voice and that considerable goodwill and
secondary means
attaches to its Internet financial advice, analysis and
reporting service.
Complainant urged that Respondent
incorporated Thismoney.co.uk, Ltd., May
14, 2003, and that Complainant became aware of the transfer of the domain
<thismoney.co.uk> to Respondent’s company May
20, 2003. The transfer became effective June 30,
2003. Complainant learned of the website
at some point between March and May of 2004 and then learned that Respondent
uses the website to
generate income by “directing internet traffic to the
<loans.co.uk> website and other affiliate websites…”.
Complainant maintains that the <thismoney.com>
domain name has generated confusion and that Respondent has forwarded to
Complainant copies of Internet emails directed to Editor@thismoney.com and Editor@thismoney.co.uk.
Complainant established that it gives notice of the
protected nature of the mark at its Internet site and notice that “contents of
this website may not be copied, reproduced, distributed, republished,
downloaded, displayed, posted or transmitted in any for or
by any means without
the prior express written permission of Associated.”
Complainant’s services received Awards in
its general area of commerce that presumably increased the public awareness of
Complainant’s
services.
The parties exchanged letters after Complainant sent its
first cease and desist letter March 8, 2004. Respondent maintained from the
outset that the domain name was “generic and distinctly different, in look and
feel to the site <thisismoney.co.uk>.”
At the time of the first exchange, Respondent’s development of the site
was in the stage of “pushing forward,”
permitting a reasonable inference that the site had not yet been developed at
the time Complainant provided Respondent
with notice of Complainant’s legal and
common law rights in the mark.
Respondent has engaged in a pattern of registering domain
names that include the protected marks of others. Respondent wrote in its
Response: “I am also amazed, at how the Lawyer, Adam Taylor, acquired a list of
all the domain names I own, that are hosted with
123reg.co.uk, since it’s not a
public database. I will be investigating
this further, with intent on taking civil action against any parties found to
have broken any of mine or my
company’s legal right, including but not limited
to The Privacy act. There are NO publicly assessable sites, on the Internet
where
a list of my domain names can be found.”
Complainant further alleges that it at no time licensed or
authorized Respondent to use its protected mark, including in a domain
name.
Complainant further alleges that the only use of the disputed domain name has
been in “connection with a directory/search engine
that is being offered for
sale.”
Complainant’s extrinsic proof exceeds the
prima facie standard that shifts the burden to Respondent to establish
that it has rights to and interests in the domain name that is confusingly
similar to Complainant’s protected mark.
Respondent registered the domain name <thismoney.com>
on October 10, 2001. The registration was transferred on June 30, 2003, to
Thismoney.co.uk, Ltd.
Respondent challenges use of “emails that I could not have received …
being used as evidence, claiming that I have forwarded them to the claimant.”
Respondent claims rights in the <thismoney> domain
name dating from March 2, 2000, but then claims that “I bought the name
thismoney.com and paid $600, dated 24/06/2003).…”
The primary thrust of Respondent’s
argument is that the two words contained within the domain name he registered
are generic, are
used together in Internet communications billions of times and
that Respondent had no notice of Complainant’s special interests in
the words
prior to registering and using the domain name <thismoney.com>.
Respondent concedes that it owns “over
1200 of domain names made up of descriptive phrases, generic words, and
misspelling of generic
words and combinations thereof. I take the utmost care when registering
names, to make sure that these names are generic/descriptive, and that at the
time of registration
no Trademarks exist in the UK or USA on them. From time to time our portfolio gets
reviewed to check for any names I registered that might be too close to,
or the same as trademark/s….”
Respondent did not produce sufficient evidence to show
rights to and interests in Complainant’s protected THIS IS MONEY mark such
as
would have permitted Respondent to use it as a confusingly similar 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 Complainant to prove each of the following three
elements to obtain an order that a domain name
should be cancelled or transferred:
(1)
the domain
name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
Respondent
has no rights or legitimate interests in respect of the domain name; and
(3)
the domain
name has been registered and is being used in bad faith.
Complainant
also established common law rights in the THIS IS MONEY mark. Complainant’s
continued use of the mark in commerce for
the last six years and Complainant’s
expenditures and development of the mark to establish secondary meaning in the
mark supports
a finding of common law rights. A common law mark is established
when a plaintiff’s goods or services become distinctive and acquire
secondary
meaning. Complainant established with extrinsic proof in this proceeding
secondary meaning in the THIS IS MONEY mark through
its acquired substantial
reputation, goodwill and extensive use of the mark Complainant also established
rights in the mark pursuant
to Policy ¶ 4(a)(i). 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 Keppel TatLee Bank v. Taylor, D2001-0168
(WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said
name [<keppelbank.com>] in connection
with its banking business, it has
acquired rights under the common law); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000)
(finding common law rights in a mark where its use was continuous and ongoing,
and secondary
meaning was established).
The
domain name registered by Respondent, <thismoney.com>, is
confusingly similar to Complainant’s THIS IS MONEY mark pursuant to Policy ¶
4(a)(i) because the domain name incorporates the
main language of the mark and
merely removes the word “is” and adds the top-level domain “.com.” See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000)
(finding that the domain name <asprey.com> is confusingly similar to
Complainant’s “Asprey &
Garrard” and “Miss Asprey” marks); see also WestJet Air Ctr., Inc. v. W. Jets LLC,
FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com>
domain name is confusingly similar to Complainant’s
mark, where Complainant
holds the WEST JET AIR CENTER mark); 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).
Although
Respondent argued that it registered the <thismoney.com> domain
name before Complainant’s trademark registration, Respondent did not respond to
Complainant’s allegations of earlier common
law rights that arose from
Complainant’s commercial use of the mark from as early as at least 1997.
Respondent also did not respond
to Complainant’s required showing of confusing
similarity. Even had Respondent
presented proof, it seems unlikely that Respondent could have made the
necessary showing. See Razorbox, Inc. v. Skjodt, FA 150795 (Nat.
Arb. Forum May 9, 2003) (noting that as Respondent’s registration of the
<razorbox.com> domain name predated
Complainant’s alleged rights
(Respondent registered the disputed domain name more than two years prior to
Complainant’s stated first
use in commerce) Complainant did not have standing
to bring a claim under the UDRP); see also Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19,
2003) (finding that any enforceable interest that Complainant may have in its
common law mark
did not predate Respondent’s domain name registration,
therefore finding that Policy ¶ 4(a)(i) had not been satisfied).
However,
here, although domain name registration may have predated the granting of
Complainant’s trademark registration, it did not
predate Complainant’s common
law rights established by extrinsic proof in the mark. Complainant satisfied
the requirements of ICANN
Policy ¶
4(a)(i), requiring a showing that the domain name is “confusing similar” to
a protected mark in which Complainant has exclusive rights.
Complainant
established that it has rights to and legitimate interests in the mark by
virtue of registration with governmental authorities
that are empowered to
grant such rights as well as common law rights arising from Complainant’s use
of the mark in commerce. Complainant
further asserts that Respondent has no such rights to or legitimate interests
in the mark and urges that Respondent’s
use of the <thismoney.com> domain
name to offer directory and search services does not constitute a bona fide
offering of goods or services, pursuant to Policy
¶ 4(c)(i), and does not
constitute a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531
(Nat. Arb. Forum June 3, 2003) (holding that Respondent’s use of infringing
domain names to direct Internet traffic to
a search engine website that hosted
pop-up advertisements was evidence that it lacked rights or legitimate
interests in the domain
name); see also U.S. Franchise Sys., Inc. v. Howell,
FA 152457 (Nat. Arb. Forum May 6, 2003) (holding
that Respondent’s use of Complainant’s mark and the goodwill surrounding that
mark as a means of attracting Internet users
to an unrelated business was not a
bona fide offering of goods or services).
In addition, Complainant urges that Respondent offers the domain
name registration for sale on the website. Complainant’s allegations
met the prima
facie standard and shifted the burden to Respondent.
Respondent
has not shown that it has rights to or legitimate interests in the <thismoney.com>
domain name and the Panel finds that Respondent lacks rights to and
legitimate interests in the domain name.
The domain name wrongfully registered by Respondent resolves to a
commercial website that takes advantage of the goodwill associated
with
Complainant’s THIS IS MONEY mark. See Mothers
Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27,
2003) (holding that under the circumstances, Respondent’s apparent willingness
to dispose of
its rights in the disputed domain name suggested that it
lacked rights or legitimate interests in the domain name); see also Hewlett-Packard Co. v. High Performance
Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights
or legitimate interests where Respondent registered the domain name
with the
intention of selling its rights).
Further,
Complainant alleges and the evidence supports findings that Respondent is not
commonly known by the <thismoney.com> domain name and therefore
cannot show rights and legitimate interests in the domain name by associated
use. The Panel finds that Respondent
is not commonly known by the disputed
domain name and lacks rights and legitimate interests 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 Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interests 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
raised the issue of generic terms and reverse domain name hijacking. Respondent asserted rights and legitimate
interests in the <thismoney.com> domain name on the basis that the
domain name is comprised of two generic words, the terms “this” and “money.”
Some cases have held
that a Respondent may show such rights and legitimate
interests where the Respondent shows solely the use of generic terms not
associated
with a protected mark, pursuant to Policy ¶ 4(a)(ii). Respondent could not do so here because
Complainant established common law rights.
But see Successful Money
Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar.
7, 2001) (finding that “seminar” and “success” are generic terms to which
Complainant cannot maintain
exclusive rights); see also Rollerblade, Inc. v. CBNO and Redican,
D2000-0427 (WIPO Aug. 24, 2000) (finding that “genericness, if established,
will defeat a claim of trademark rights, even in a mark
which is the subject of
an incontestable registration”).
Respondent
also asserts common law rights to and legitimate interests in the <thismoney.com>
domain name by virtue of use; but Respondent failed to show use in commerce
of the <thismoney.com> domain
name that would give rise to common law rights. Complainant’s business in the
area of commerce began as early as 1905 and Complainant’s
specific use of
financial services under the THIS IS MNOEY mark began as early as 1997, a point
in time that is longer than any period
of time in which Respondent asserted
that he has been active. Further, Respondent
did not establish by extrinsic proof that there has been any commercial
activity by this Respondent supporting
the rise of common law rights. Pursuant
to Policy ¶ 4(c)(i), Respondent did not show use of the disputed domain name
that would constitute
a bona fide offering of goods or services to promote its
business through use of the domain name.
But see Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum
June 2, 2003) (finding that Respondent’s operation of a bona fide business of
online prop rentals for
over two years was evidence that Respondent had rights
or legitimate interests in the disputed domain name); see also Verkaik v.
Crownonlinemedia.com, D2001-1502 (WIPO March 19, 2002) (finding that
Respondent’s use of the disputed domain name to make a bona fide offering of
services
bestowed rights and legitimate interests in the domain name).
Unregistered marks are afforded protection under the
Policy if a complainant can establish common law rights in the mark. Common law rights are established through a
mark’s inherent distinctiveness or the secondary meaning associated with a
mark. See Restatement (Third) of Unfair Competition § 13, pp. 37-38, and Comment a
(Tent. Draft No. 2, Mar. 23, 1990) (An identifying mark is distinctive and
capable of being protected if it either (1) is inherently distinctive or
(2) has acquired distinctiveness through secondary meaning.). Complainant met that requirement.
Complainant met the requirements of ICANN
Policy ¶ 4(a)(ii), requiring a showing that Complainant has rights to or
legitimate interests
in the disputed domain name and that Respondent has no
such rights.
Complainant
asserts that Respondent registered the <thismoney.com> domain name
for the purpose of disrupting Complainant’s business because Respondent diverts
Internet users to a commercial website
with links to websites offering
financial news and information on financial products and services, similar to
the financial news,
information, products and services Complainant offers on
it’s own website. The Panel concludes that under the facts and proof offered
here, Respondent registered and used the domain name in bad faith pursuant to
Policy ¶ 4(b)(iii). See Mission
KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor”
as “one who acts in opposition to another and the context does not imply or
demand any restricted meaning such as commercial or business competitor”); see
also 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 Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb.
Forum Dec. 23, 2000) (concluding that domain names were registered and used in
bad faith where Respondent and
Complainant were in the same line of business in
the same market area); see also Hewlett
Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding
that Respondent registered and used the domain name primarily for the purpose
of
disrupting the business of Complainant by offering personal e-mail accounts
under the domain name <openmail.com> which is identical
to Complainant’s
services under the OPENMAIL mark).
Further,
Complainant asserts that Respondent registered the <thismoney.com> domain
name to intentionally attempt to attract Internet users for commercial gain by
creating a likelihood of confusion with Complainant’s
THIS IS MONEY mark. The
Panel concludes, based on the facts and proof here, that Respondent registered
and used the domain name in
bad faith, 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 Luck's Music
Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000)
(finding that Respondent had engaged in bad faith use and registration by
linking the
domain name to a website that offers services similar to
Complainant’s services, intentionally attempting to attract, for commercial
gain, Internet users to its website by creating a likelihood of confusion with
Complainant’s marks); see also Scholastic
Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001)
(finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the
domain name at issue
to resolve to a website where educational services were
offered to the same market as that served by Complainant and later Respondent
modified use of the domain name after receiving domain name Complaint).
Moreover,
Complainant asserts that Respondent registered the <thismoney.com> domain
name for the primary purpose of selling the domain name registration because
Respondent advertises the domain name registration
for sale at the top of the
web page. The facts and proof here
support findings that Respondent has shown a pattern of registering domain
names containing the marks of
others and it is appropriate in such
circumstances to assume that Respondent registered those marks for the purpose
of selling them
when they come to the attention of those holding legitimate
rights in the marks contained within the domain names. Here, Respondent registered and used a
domain name containing the protected mark of another and this supports findings
of 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
Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000)
(finding bad faith where Respondent offered the domain names for sale); see
also Am. Anti-Vivisection Soc’y v.
“Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (“General
offers to sell the domain name, even if no certain price is demanded, are
evidence
of bad faith.”).
Taking into consideration the totality of
the circumstances, the Panel finds that Complainant met the requirements of
showing bad
faith registration and use pursuant to ICANN Policy ¶
4(a)(iii).
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 <thismoney.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: September 13, 2004
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