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Kaleidoscope Imaging, Inc. v. V Entertainment a/k/a Slavik Viner [2004] GENDND 124 (5 January 2004)


National Arbitration Forum

DECISION

Kaleidoscope Imaging, Inc. v. V Entertainment a/k/a Slavik Viner

Claim Number: FA0310000203207

PARTIES

Complainant is Kaleidoscope Imaging, Inc., Chicago, IL (“Complainant”) represented by David J. Marr, of Trexler, Bushnell, Giagiorgi, Blackstone, & Marr, Ltd., 105 W. Adams, Suite 3600, Chicago, IL 60603.  Respondent is V Entertainment a/k/a Slavik Viner, San Francisco, CA (“Respondent”) represented by Paul Raynor Keating, of Carroll, Burdick & McDonough, LLP, 44 Montgomery Street, Suite 400, San Francisco, CA 94104.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <kaleidoscope.com>, registered with Register.Com.

PANEL

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

Anne M, Wallace, Q.C., G. Gervaise Davis, III, and Timothy D. O’Leary as Panelists.

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 21, 2003, Register.Com confirmed by e-mail to the Forum that the domain name <kaleidoscope.com> is registered with Register.Com and that the Respondent is the current registrant of the name.  Register.Com has verified that Respondent is bound by the Register.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 27, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 17, 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@kaleidoscope.com by e-mail.

A timely Response was received and determined to be complete on December 2, 2003.

On December 15, 2003, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Anne M, Wallace, Q.C., G. Gervaise Davis, III, and Timothy D. O’Leary as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Kaleidoscope Imaging, Inc., owns United States Service Mark Registration No. 2,218,746 for the Service Mark KALEIDOSCOPE. The Service Mark was registered on January 19, 1999 and was first used by Complainant on December 1, 1994. The services associated with the mark include graphic art and illustration design services for others in International Class 42.

Complainant asserts that with the exception of the .com extension, the Disputed Domain Name <kaleidoscope.com> is identical to Complainant’s service mark.  The Disputed Domain Name is likely the first domain name entered when a consumer is searching the Internet for Complainant.  The association between the domain name and Complainant’s service mark rights is important to its use in e-commerce and the integrity of its service mark rights.  Use of the Disputed Domain Name by Respondent will create confusion on the Internet.

Complainant alleges that Respondent has no rights or legitimate interest in <kaleidoscope.com>.  Complainant’s representative searched the United States Patent and Trademark Office’s website for trademarks or service marks which would signify rights or legitimate interest by Respondent in <kaleidoscope.com>, and found none. Complainant’s representative has searched the Internet for goods and services provided in connection with <kaleidoscope.com>.  With the exception of the shopping page used to “park” the domain name, no use of the domain name in connection with an offering of goods or services by Respondent was found. Complainant found no evidence that Respondent is commonly known by the domain name <kaleidoscope.com>.  Other than Respondent’s “parking” of the domain name, Complainant found no evidence of use or preparation to use the domain name or a name corresponding to the domain name, prior to the notice of this dispute.  Thus, Complainant asserts that prior to notice of this dispute, there had been no use or preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services by Respondent. 

Although a web page has been associated with <kaleidoscope.com>, the web page does not provide a bona fide offering of goods and services.  Rather, Respondent has merely “parked” the domain name.  When the domain name is entered into an Internet browser, a “shopping page” unrelated to the domain name is displayed. The page provides links to various web sites. When the user types in <kaleidoscope.com>, the user is directed to a web page with the URL “http://apps5.oingo.com/apps/domainpark/ domainpark.cgi?s=kaleidoscope&cid= . . .”  The domain name oingo.com is associated with a web page for Applied Semantics. As described on the Applied Semantics web page, one of the services provided by Applied Semantics is domain name “parking”.  As defined by domain name service providers, the term “parking” refers to the reservation of a domain name until the owner develops a site which has content associated with the domain name or until the domain name is sold to a third party. Therefore, Respondent is not using <kaleidoscope.com> in connection with a bona fide offering of goods and services but rather has simply reserved or “parked” the domain name. Because Respondent is not using the domain name in connection with a bona fide offering of goods or services, Complainant alleges that Respondent has no rights or legitimate interest in the domain name.

Complainant submits that bad faith has been demonstrated by Respondent in two ways.  First, Respondent has engaged in a pattern of conduct of preventing owners of trademarks and service marks from reflecting their marks in a corresponding domain name.  Second, Respondent has acquired <kaleidoscope.com> primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant, who is the owner of United States Service Mark Registration No. 2,218,746 for the mark KALEIDOSCOPE. 

With respect to the allegation of a pattern of conduct, Complainant asserts that the WhoIs database lists the name Slavik Viner, along with V Entertainment, as the administrative contact, suggesting that Slavik Viner is a representative of the entity which uses the name V Entertainment.  Kaleidoscope alleges that V Entertainment, Viper Holdings and Viper are alter egos of Slavik Viner.  

On April 26, 2001, Panelist William L. Mathis for the World Intellectual Property Organization, rendered a decision in the matter of Viacom International, Inc. v. MTVMP3.COM, case number D2001-0275. The Respondent, MTVMP3.com listed its administrative contact address as 740 La Playa #414, San Francisco, California, the same address which is listed for the Respondent, V Entertainment aka Slavik Viner in the instant case.  Panelist Mathis found that this address was also provided for an entity titled Viper Holdings.  The complainant in the MTVMP3.com dispute alleged that V Entertainment and Viper Holdings are alter egos of the Respondent MTVMP3.COM.  As Respondent did not challenge Complainant’s allegations, Panelist Mathis found complainant’s allegations to be true.

On September 18, 2002, Panelist Hon. Ralph Yachnin of the National Arbitration Forum, rendered a decision in the matter of Travelzoo Inc. v. Viper a/k/a/ Slavik Viner, Claim No. FA0208000117866. In this case, Hon. Yachnin found that Slavik Viner of San Francisco, the Respondent, represents himself as Viper. 

Complainant’s representative conducted an Internet search to obtain a current address for V Entertainment.  Although no listing was found for V Entertainment,  Complainant’s representative found a listing for Slavik Viner at 8028 Geary Blvd., San Francisco, California.  Kaleidoscope’s representative also found a listing for Viper Holdings, Inc. which uses the same address.  This is further evidence of the relationship between Slavik Viner and Viper Holdings. 

Complainant alleges, therefore, that V Entertainment, Viper Holdings and Viper are alter egos of Slavik Viner. Thus, a pattern of conduct by Respondent can be established through conduct attributable to V Entertainment, Viper Holdings, Viper or Slavik Viner. In the Viacom International Inc. V. MTVMP3.com case, Panelist Mathis found that Respondent had no legitimate interest in the domain name <mtvmp3.com>.  Panelist Mathis found that the domain name incorporated Complainant’s mark and was chosen by Respondent as an effort to create confusion detrimental to Complainant.  In the Travelzoo Inc. v. Viper a/k/a Slavik Viner decision, Panelist Yachnin found no connection between the Respondent and the domain name travelzo.com and found no evidence which would signify rights or legitimate interest in the domain name travelzo.com.  Panelist Yachnin further found that Viper was “typosquatting” as users incorrectly typing the domain name travelzoo.com were directed to Viper’s website at travelzo.com.  Thus, Panelist Yachin concluded that Viper had no legitimate interest in the domain name.

Two additional decisions involving Respondent include H-D Michigan, Inc. v. Viper Holdings, Claim Number FA 0210000128680, and L.F.P., Inc. v. Viper Holdings, Claim Number FA 0208000117869.  In each of these cases, Respondent was found to have no legitimate rights in the respective domain names and transfer of the domain names was ordered.  Kaleidoscope’s representative has attempted to obtain listings of domain names held under the names V Entertainment, Viper Holdings, Viper and Slavik Viner to further establish a pattern of conduct by Respondent, but was unable to obtain such listings using the WhoIs database.  Panelist Mathis  in the <MTVMP3.COM> case, however, found that “numerous” domain names were registered under the names V Entertainment and Viper Holdings.  Thus, although no listing of domain names registered by V Entertainment, Viper Holding, Viper and Slavik Viner was obtained, the previous decisions rendered under the Uniform Dispute Resolution Policy provide evidence that Respondent  has conducted a pattern of registering domain names not because it has a legitimate interest in the domain names, but rather to prevent the owners of trademarks and service marks from reflecting their marks in a corresponding domain name.  Complainant asserts that such a pattern of conduct is evidence that the Respondent has acted in bad faith with respect to registration of  <kaleidoscope.com>.

In addition, as found by Panelist Mathis, many of the domain names which Respondent has registered are “pornographic in nature”.  Panelist Mathis also found that many of the domain names registered by Respondent were directed to a website www.orgie.com.  In the H-D Michigan decision, the panelist found that Respondent Viper Holdings, posted pornography on the website related to the disputed domain name and ordered the domain name transferred. Complainant asserts that Respondent could at any time cause consumer traffic directed to <kaleidoscope.com> to be diverted to a pornographic website.  As the domain name is identical to Kaleidoscope’s service mark, Complainant’s reputation is at risk, in that consumers might in some way tend to associate Complainant with pornography.  Such an association would severely diminish Complainant’s reputation.

Complainant alleges that Respondent has registered or has acquired <kaleidoscope.com>, primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant, who is the owner of the service mark, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. The WhoIs database indicates that Respondent registered the domain name September 9, 1999 and that the registration does not expire until September 9, 2006.  Thus, under Register.com’s current pricing scheme, Respondent’s cost to register the domain name for seven years is approximately $175.00. Complainant’s representative contacted Respondent regarding purchase of <kaleidoscope.com> for $2,500.00.  Respondent responded by stating that he would consider selling the Disputed Domain Name to Complainant for “a much higher offer” than $2,500.00.  Complainant alleges that holding and parking of the Disputed Domain Name for nearly four years by Respondent in addition to Respondent’s request of payment of “much higher” amount than $2,500, is evidence that Respondent’s primary purpose in registering the Disputed Domain Name was to sell, rent or otherwise transfer the domain name to Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs.  Thus, Complainant submits that Respondent has acted in bad faith.

B. Respondent

Respondent asserts that it validly registered <kaleidoscope.com> in September 1999 and has been consistently and opening using the URL for valid business purposes since 1999 in connection with a search function for people interested in kaleidoscopes. Since 1999, Respondent has generated revenue pursuant to written contracts with various search engines starting with <MOverture/goto.com>. In 2001, Respondent began operating under a written agreement with Applied Semantics to deliver search results using the URL. Google purchased Applied Semantics in April 2003, and since May, 2003, search results have been generated using Google’s search engines, again under a written contract.

Respondent asserts that the Disputed Domain Name is a generic term. A Kaleidoscope is: “[a] tube shaped optical instrument that is rotated to produce a succession of symmetrical designs by means of mirrors reflecting the constantly changing patterns made by bits of colored glass at one end of the tube.” (American Heritage English Dictionary, 4th Ed. 2000). Typing <kaleidoscope.com> results in a search results page that directs the user to a number of websites, all of which sell kaleidoscopes and related toys and objects of interest.

Respondent asserts that the fact Respondent has generated revenues from this use of the Disputed Domain Name since 1999 fortifies the legitimate nature of its use. The use of key words, particularly generic terms, has long been used in connection with Internet search engines. Respondent’s use is merely a top-level domain name rather than an embedded meta tag or web page text source. As such it is a more powerful search term for Internet users. The legitimate nature of such uses is evidenced by activities of companies such as Google, a company whose entire business model is providing search results using traffic generated directly from users or indirectly from others such as Respondent.

Although Respondent has been openly and obviously using the Disputed Domain Name since September 1999, Complainant made no attempt to seek the URL until 2003 when it sent an unsolicited request to Respondent asking if Complainant could purchase the URL. Complainant never identified itself as the holder of a service mark, Respondent affirmed that it was not interested in selling the URL, Complainant’s offer of $2,500 was rejected outright and Respondents never replied to Complainant’s invitation to state a sale price or negotiate further. Respondent made no demand for any sum, much less an exorbitant sum. Complainant did not assert any rights in the URL or disclose that they held a service mark. There were no subsequent demands by Complainant asserting any rights to the URL. The evidence establishes that the URL was not held for sale. Given the legitimate long-term revenue generating use of the URL by Respondent, it was completely with Respondent’s rights to reject an offer that they considered inadequate and break off communications.

Respondent asserts that the Disputed Domain Name is not identical or confusingly similar to a service mark in which Complainant has rights. Respondent asserts that while Complainant is the holder of a registered service mark KALEIDOSCOPE, such registration provides Complainant with rights only in connection with the specified goods and services. The touchstone liability for trademark infringement is whether the defendant’s use of the disputed mark is likely to cause confusion among consumers regarding the original of the goods offered by the parties. Further, to infringe on the rights of a mark holder, the alleged infringer must use the mark as a mark. Where a domain name is used only to indicate an address on the Internet and not to identify the source of specific goods and services, the name is not functioning as a trademark and there can be no infringement. (Data Concepts, Inc. v. Digital Consulting, Inc. (6th Cir. 1998) [1998] USCA6 240; 150 F3d 620).

Respondent is using the Disputed Domain Name in its ordinary and dictionary sense. Respondent is not using the URL in any manner that links it to Complainant’s business operations or to any goods or services related to “graphic art and illustration design services for others in Class 42.” Complainant has no property right in the use of words commonly found in the English language.

In determining the rights of a mark holder, the law first requires that the strength of the mark be tested. In determining whether confusion between related goods is likely, the following factors are relevant: strength of the mark, proximity of the goods, similarity of the marks, evidence of actual confusion, type of goods an degree of care likely to be exercised by the purchaser, defendant’s intent in selecting the mark, marketing channels used, and likelihood of expansion of product lines. (AMF, Inc. v. Sleekcraft Boats, (9th Cir. 1979) [1979] USCA9 691; 599 F.2d 341).

Respondent asserts that here the mark is extremely weak and consists of a descriptive term. No evidence of secondary meaning or fame has been provided. A Google search results in over 608,000 references to the term KALEIDOSCOPE. A search of <Switchboard.com> (yellow pages) lists 384 businesses in the United States with the name KALEIDOSCOPE, 67 of which use only the word KALEIDOSCOPE. There is no evidence of actual confusion. The goods and services are entirely different. Complainant’s customers are sophisticated – seeking product branding services – and are unlikely to confuse a web search for toys with Complainant.

With respect to rights or legitimate interests, Respondent repeats the arguments already made and states that Respondent has been using KALEIDOSCOPE as a search tool for those interested in Kaleidoscopes since 1999. The term is descriptive in nature and not subject to registration as a trademark. The lack of trademark registration by Respondent, therefore, does not render Respondent’s use illegitimate.

ICANN arbitrations have recognized that that the registration and holding of generic top-level domain names, even in large quantities, for the purpose of selling, renting or leasing the use of those names to others, is a legitimate use. (Gen’l Machine Products Co. v. Prime Domains, (2000) NAF 0001000092531; Cartoys v. Informa Unlimited, Inc. (2001) NAF 0002000093682).

Respondent uses the Disputed Domain Name in connection with Internet searches specifically directed at people interested in Kaleidoscopes. Such use has been consistent over four years and is in accordance with the dictionary definition. Respondent does not use the URL for the purpose of competing with, or taking customer away from, Complainant, and until receiving the e-mails from Complainant in 2003, had no knowledge of Complainant or the nature of its business. Respondent generates revenues from its use of the URL pursuant to a written contract with Google. The URL is not being “parked” so as to hold it for sale as suggested by Complainant. Respondent has not merely holding the URL so that it can either preclude use by Complainant or sell it to Complainant or others for an exorbitant sum. Complainant has provided no evidence to support its allegations in this regard.

With respect to the allegations of bad faith, Respondent points out that Complainant must establish both bad faith registration and bad faith use of the Disputed Domain name.

Respondent asserts that it did not know of Complainant when the Disputed Domain Name was registered. Although Respondent has been openly and obviously using the Disputed Domain Name since September 1999, Complainant made no attempt to seek the URL until 2003 when it sent the unsolicited request to Respondent asking to purchase the URL. Until this action, Complainant did not assert any rights to the Disputed Domain Name or object to the registration. Respondent did not demand exorbitant sums. The URL was not for sale and although Respondent invited Complainant to make a “serious  offer”, that is not evidence of bad faith in light of the longevity of Respondent’s bona fide use of the Disputed Domain Name.

With respect to Complainant’s assertion that Respondent’s registration prevents Complainant from using the Disputed Domain Name in connection with its business, Respondent asserts that Complainant has neither alleged nor proven that the registration was undertaken or maintained for such purpose.

With respect to Complainant’s allegation that Respondent registered the Disputed Domain Name primarily for the purpose of disrupting a competitor, Respondent points out that Complainant is in the business of helping clients develop strategies for getting their brands in front of the public, developing products and packaging standards to align with the strategies. Respondent uses the Disputed Domain Name to generate revenues from searches by people looking to purchase Kaleidoscopes. The parties are not competitors. Respondent did not register and does not use the Disputed Domain Name to disrupt the business of Complainant, but rather to engage in a separate business.

With respect to the allegation that Respondent is using the URL in an attempt to attract Internet users to its site for commercial gain by creating a likelihood of confusion with Complainant’s mark, Respondent asserts that it use is completely unrelated to Complainants business. Respondent further asserts that given the generic nature of the URL, its use, the large number of references to KALEIDOSCOPE on the Internet and the large number of trademark registrations using the term, confusion is highly unlikely. Respondent has never held themselves out to be a product branding or public relations firm and has never used the URL in a manner that would imply such a use. Complainant has provided no evidence of confusion.

With respect to Complainant’s allegations in relation to previous UDRP cases involving Respondent, Respondent points out that these previous decisions are default decisions. Respondent asserts that the use of prior default decisions to establish a fact for the purposes of a separate proceeding is improper and contrary to long established principles of law.

FINDINGS

The panel finds as follows:

1. The Disputed Domain Name, <kaleidoscope.com> is confusingly similar to the KALEIDOSCOPE service mark owned by Complainant.  

2. Respondent has rights or legitimate interests in the Disputed Domain Name. 

3. Respondent has not registered and is not using the Disputed Domain Name in bad faith.

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 has established that it has rights in KALEIDOSCOPE by virtue of its service mark registration for that term. With the exception of the .com extension, the Disputed Domain Name is identical to Complainant’s mark. Complainant asserts, and the Panel agrees, that this is sufficient to establish the first element. See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to Complainant’s BODY BY VICTORIA mark); see also Interstellar Starship Services Ltd. v. EPIX, Inc., 983 F.Supp. 1331, 1335 (D.Or. 1997) (<epix.com> "is the same mark" as EPIX); see also Elder Mfg. Co., Inc. v. Recker, FA 98414 (Nat. Arb. Forum Sep. 10, 2001) (“In the matter at bar it is beyond refute that Respondent’s domain names are virtually identical, and thus confusingly similar to Elder’s trademarks. Any superficial differences between the domain names and the Elder trademarks are de minimis and of no legal consequence”).

While we are mindful that there are cases which have found for Respondents on this element where the mark involves a generic term, it is this Panel’s view that the question of the generic nature of the word KALEIDOSCOPE is more properly addressed when dealing with the issue of rights or legitimate interests.

Rights or Legitimate Interests

Based on the evidence before us, Complainant has failed to establish that Respondent does not have rights or legitimate interests in the Disputed Domain Name. The word KALEIDOSCOPE is a generic English language word with the meaning demonstrated by the dictionary definition cited by Respondent in its submissions. As such, the first to register the word in a domain name can assert rights to that domain. See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (stating, "[c]ommon words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis"); see also CRS Tech. Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (finding that “concierge is not so associated with just one source that only that source could claim a legitimate use of the mark in connection with a website”). See Also with respect to the generic nature of the term: Car Toys, Inc. v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum Mar. 20, 2000) (finding that Respondent has rights and legitimate interests in the domain name where Complainant submitted insufficient evidence to establish either fame or strong secondary meaning in the mark such that consumers are likely to associate <cartoys.net> with the CAR TOYS mark); see also Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that Respondent has rights and legitimate interests in the domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”); see also FilmNet Inc. v. Onetz, FA 96196 (Nat. Arb. Forum Feb. 12, 2001) (finding that Complainant failed to establish that Respondent did not have rights or legitimate interests in the <filmnet.com> domain name where the disputed domain name was wholly comprised of generic words, even though Complainant is the owner of the FILMNET mark); see also Sweeps Vacuum & Repair Ctr., Inc. v. Nett Corp., D2001-0031 (WIPO Apr. 13, 2001) (finding bona fide use of a generic domain name, <sweeps.com>, where Respondent used a legitimate locator service (goto.com) in connection with the domain name).

Having registered a generic term, Respondent also claims rights and legitimate interests in the Disputed Domain Name because it has, since 1999, used the name as a search tool for Internet users interested in Kaleidoscopes. Based on the evidence before us, there is nothing to suggest that this use is anything but a bona fide offering of goods or services within the meaning of the Policy, particularly given the length of time Respondent has been using the Disputed Domain Name in this fashion. See Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (finding Respondent’s use of the domain name, <groceryoutlet.com>, for a website that links to online resources for groceries and similar goods evidences that Respondent was making a bona fide offering of goods or services); see also Bankinter S.A. v. BI Fin. Inc., D2000-0460 (WIPO Sept. 5, 2000) (finding that Respondent’s use of <bankinternet.com> for a period of four years was sufficient to demonstrate a bona fide offering of goods and services).

The Panel finds, therefore, that Complainant has failed to establish the second element.

Registration and Use in Bad Faith

While it is not necessary, given our findings with respect to rights and legitimate interests, the Panel will address the issue of bad faith. 

With respect to Complainant’s allegations pursuant to Policy 4(b)(i), Complainant has failed to satisfactorily establish bad faith registration of the disputed domain name, because  Respondent had no knowledge of Complainant at the time of registration and never made a deliberate attempt to capitalize from the name.  See Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (holding that where the domain name is a generic term, it is difficult to conclude that there was a deliberate attempt to confuse on behalf of Respondent, and stating that “[i]t is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied them”).

With respect to the matter of the possible sale of the Disputed Domain Name to Complainant, the evidence before us establishes that it was Complainant who made the contact with Respondent and that it was Complainant who raised the matter of a possible sale. Furthermore, the mere consideration of a domain name’s sale, especially relating to a generic term, is not evidence of bad faith.  See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses); see also PRIMEDIA Special Interest Publ’n Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (finding that Respondent did not register the domain names in bad faith where there is no evidence that Respondent intended to sell the domain name or disrupt Complainant’s business); see also John Fairfax Publ’n Pty Ltd v. Domain Names 4U & Fred Gray, D2000-1403 (WIPO Dec. 13, 2000) (finding legitimate interests and no bad faith registration where Respondent is a seller of generic domain names); see also  Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no bad faith where the domain name involves a generic term, and there is no direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interest).   

See Also Pocatello Idaho Auditorium Dist. v. CES Marketing Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("when a Complainant indicates a willingness to engage in a market transaction for the name, it does not violate the policy for a [Respondent] to offer to sell for a market price, rather than out-of-pocket expenses"); see also 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); see also Open Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that Respondent was not acting in bad faith by discussing a sale when Complainant initiated an offer to purchase it from Respondent); see also Sumner v. Urvan, WIPO D2000-0596 (WIPO July 24, 2000) (finding no bad faith where Respondent did not contact Complainant first, but rather, Complainant first contacted Respondent about purchasing the domain name); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 5, 2001) (finding no bad faith where “Complainant offers the Respondent far more than the Respondent paid for the disputed domain name and the Respondent asks for an even larger sum”).

With respect to Complainant’s assertions under Policy ¶ 4(b)(ii), the evidence shows that Respondent used the domain name for four years before Complainant objected, and there is no evidence on which the Panel can conclude that registration was undertaken in order to prevent Complainant from registering the name. Indeed, the evidence establishes that at the time Complainant registered its own domain names relating to its business, the disputed domain name was available and yet Complainant passed on the opportunity to register it.  Therefore, as Respondent suggests, “it is hard to imagine how Respondent could have prevented Complainant from registering [the disputed domain name].”  See Bosco Prod., Inc. v. Bosco email Serv., FA 94828 (Nat. Arb. Forum June 29, 2000) (“Without determining if the passage of considerable time would alone bar Complainant from relief in this proceeding, the Panel notes that Complainant does not explain why it has waited nearly four years to try and resolve [the domain name dispute]”).

The Panel has considered Complainant’s assertions with respect to previous UDRP decisions finding against Respondent or entities which may be connected to Respondent. We find it unnecessary to decide whether Respondent is related to the parties involved in those cases because those cases involved default decisions which are of little or no value, and those cases did not involve situations of the use of generic terms such as KALEIDOSCOPE.

Complainant has failed to establish this element.

DECISION

Complainant having failed to establish all three element required to succeed, the Complaint is DENIED.

Anne M, Wallace, Q.C.

G. Gervaise Davis, III

Timothy D. O’Leary

Dated: January 5, 2004


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