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Generic Top Level Domain Name (gTLD) Decisions |
4SaleByOwner.com, Inc. v. Al Parisi
Claim Number: FA0408000311318
Complainant
is 4SaleByOwner.com, Inc. (“Complainant”), represented by Angela
Alvarez Sujek, of Bodman, Attorneys and Counselors LLP, 110 Miller
Suite 300, Ann Arbor, MI 48105.
Respondent is Al Parisi (“Respondent”),
represented by Kevin R. Martin, of McNichols Randick O'Dea & Tooliatos LLP, 5000 Hopyard Road Suite 400, Pleasanton, CA 94588.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <4SaleByOwner.com>,
registered with Go Daddy Software, Inc.
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.
Fernando Triana, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 11, 2004; the Forum received
a hard copy of the
Complaint on August 13, 2004.
On
August 12, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain name <4SaleByOwner.com>
is registered with Go Daddy Software, Inc. and that Respondent is the
current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
Inc. 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 23, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of September
13, 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@4salebyowner.com by e-mail.
A
Response was received on September 16, 2004.
A
timely Additional Submission was received from Complainant and was determined
to be complete on September 22, 2004.
Respondent
also filed a timely Additional Submission, which was determined to be in
accordance with The Forum’s Supplemental Rule
7 on September 23, 2004.
On October 1, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Fernando Triana,
Esq., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
According
to the Complaint, Complainant, 4SaleByOwner.com Inc., is a corporation devoted
to providing, throughout its website, a real
estate listing service for
Internet users. Customers list their homes on the website for a flat fee, to be
listed for a year. Homes
are also placed in the MLS (multiple listing service).
Complainant declares that in 1998, Complainant attempted to register as a
trademark the domain name <4SaleByOwner.com>,
but it was determined that the name
was too generic to officially be a trademark. Complainant asserts that since 1998, Complainant has used Complainant’s Mark in its business of
marketing, via the Internet, extensively
on its website, which confers Complainant common name trademark rights to the domain name <4SaleByOwner.com>.
Complainant alleges that the domain name
<4SaleByOwner.com> is identical to Complainant´s common trademark
<4SaleByOwner.com>. Complainant asserts that the domain name
<4SaleByOwner.com>is under control of Respondent, Al Parisi, a
minority shareholder and recently resigned president. Complainant states it has lost administrative control of the domain
name, as it is an asset for Complainant.
Complainant asserts that in 1998, Respondent, while
working for Complainant, together with Kim Gleichert attempted to register the
trademark <4SaleByOwner.com>, seeking to secure the domain
name as an asset of the company. Complainant paid for all costs incurred for
this procedure, which,
according to Complainant, supports the idea that
Complainant owns the domain name, and not Respondent.
Complainant affirms that on March 17, 1998,
Respondent and Kim Gleichert created an S-Corp., and that the Department of the
Treasury,
IRS, in Fresno, State of California, sent a notice of acceptance as
an S-Corp with the name of 4SaleByOwner.com, Inc. and 4SaleByOwnerDOTCOM.
Complainant further states that on December 17, 1999, Respondent and Kim
Gleichert created in the State of Michigan the corporation
as 4SaleByOwner.com,
Inc., and that Respondent holds no rights or legitimate interest to the domain
name <4SaleByOwner.com>, as Complainant
has registered said domain name as an organizational account and has been
registered with Network Solutions since 1995
and moved to GoDaddy.com in July
2004.
Complainant sets forth that on several
opportunities, Respondent inquired about selling the website <4SaleByOwner.com>
with no references to the fact that the domain belonged to Respondent.
Nonetheless, Complainant states that since March 2004, Respondent
has
proclaimed that the domain name belongs to Respondent. According to Complainant
there are neither legal documents that attest
that the domain name belongs to
Complainant, nor are there any written or verbal lease or rental agreements
between Complainant and
Respondent before or after adding Deborah S. Kiral onto
the board of directors.
Complainant states that Respondent registered the
domain name <4salebyowner.com> with Network
Solutions through an individual account and is preventing
Complainant from having access to Complainant´s Mark, which impedes Complainant
from reflecting said mark in a corresponding
domain name. Also, Complainant
states that Respondent’s attorney sent a letter to Complainant, stating that
Complainant should redirect
the site to another domain name, or else Respondent
would shut down the website on August 20, 2004, thus, preventing Complainant
from using its trademark.
Based
on the above Complainant requests the Panel to order the transfer of the
conflicting domain name from Respondent to Complainant.
B.
Respondent
According
to the Response, Respondent, Alan Parisi, former president and director of 4SaleByOwner.com, Inc., registered the
domain name <4SaleByOwner.com> with
Network Solutions on September 4, 1995. Respondent affirms that since Network
Solutions would not allow domain names to be registered
under the name of an
individual, Respondent was forced to create a fictitious entity named 4SaleByOwner.com, Inc., to fulfill said
requirement. Therefore, Respondent concludes that the domain name is and always
has been the
sole property of Respondent.
Respondent states that in March 1998, Respondent
created with Kim Gleichert the California Corporation—4SaleByOwner.com, Inc.
According
to Respondent, Respondent only licensed use of the URL <4SaleByOwner.com>
to the venture to promote the business, but never assigned the domain to
the California Corporation. Respondent alleges the he continued
to let the
California Corporation use the domain name, as a sign of good faith, as long as
it paid maintenance fees, which it did.
Respondent states that in December 1999 the
California Corporation dissolved and incorporated Complainant in Michigan. In
March 2000,
Deborah Kiral joined the business and joined Respondent and
Gleichert as directors on Complainant’s Board of Directors. According
to
Respondent, in the early stages of the business, Respondent noted Gleichert did
not have the necessary skills to develop the business,
and Respondent suggested
the company outsource the work to an independent website developer. The
suggestion was overruled by Gleichert
and Kiral. In 2004, Respondent suggested
the company enter into a business relationship with another company that could
attract web
traffic to the site. According to Respondent, Gleichert and Kiral
once again rebuked Respondent, and even tried to oust him from
the business.
Respondent states that without formal corporate
authority, Gleichert and Kiral contacted Network Solutions, changed the contact
information
and e-mail address for the domain name and redirected all e-mails
and notices to Kiral. According to Respondent, after noticing this,
he
contacted Network Solutions to regain rightful control over the domain name,
but Respondent’s efforts were futile, which led Respondent
to resign his
position of President and Director of 4SaleByOwner.com, Inc., effective August
19, 2004. Respondent further states
that to prevent other highjacking attempts,
he transferred the domain name to GoDaddy, Inc., and blocked it to prevent
other unauthorized
transfers.
It
is stated in the Response that Complainant must prove that Respondent’s domain
name is identical or confusingly similar to Complainant’s
Mark, and that
Complainant must evidence the rights it has over said trademark.
Moreover,
Respondent alleged that the term name <4SaleByOwner.com>
is merely descriptive of
Complainant’s services, namely, “for sale by owner” real estate services, and
thus, it is not protectable
as a trademark, in accordance with jurisprudence
from the United States Supreme Court.
Respondent
also manifested that the phonetic equivalent of the term <4SaleByOwner.com> is
usually spelled “For Sale by Owner” or “FSBO”, which is likewise a descriptive
term in the real estate business. Moreover, Respondent
affirms that a slight
misspelling but phonetic equivalent will not modify the descriptive nature of
this expression, for instance,
“For” and “4.” In view of the foregoing,
Respondent insists on the descriptive nature of the term <4SaleByOwner.com> and on its irregistrability as a trademark.
Therefore, according to Respondent, Complainant clearly cannot claim any
trademark rights
on the name.
Respondent
asserts that, even if Complainant achieves trademark rights over <4SaleByOwner.com>, Complainant cannot prove that its rights
over the referred mark are superior to Respondant’s interest in the domain
name, as Complainant
has acknowledged the mark is unregistered. Furthermore,
Respondent affirms that if Complainant cannot prove the trademark <4SaleByOwner.com> is registered, Complainant must demonstrate that
it used the mark in connection with goods or services before Respondent
registered
the domain name.
It
is stated in the Response that in accordance with Policy ¶ 4(c), Respondent has
legitimate interest if Respondent uses or demonstrates
that he will use the
domain name with a bona fide offering of services before he had notice
of a domain name dispute. Respondent asserts it has legitimate interest in the
domain name
<4SaleByOwner.com>, as the Respondant was interested in using
said domain name with a bona fide offering of online real estate
advertising services whilst registering the domain name <4SaleByOwner.com>.
According to Respondent, this cannot be disputed
since, as Complainant concedes, Respondent eventually launched a FSBO website
on
1997, using the domain name
<4SaleByOwner.com>. Respondant also alleges that a domain name
dispute with Complainant at the time the domain name was first registered by
Respondent
in 1999, or at the time it was first used in 1997, is impossible,
since Complainant did not come into existence until late 1999.
In view of the
foregoing, Respondent argues that since the domain name was registered
nearly three years before the California Corporation even existed, and more
than five years before
Complainant was formed, the disputed domain name has
never been registered to Complainant or to the California Corporation, making
the fictitious name of Respondent the owner of <4SaleByOwner.com>.
In
the Response, Respondent asserts that the ownership of the domain name was never
assigned to the dissolved California Corporation
or the Michigan Corporation,
but simply licensed use of the domain name. In fact, Respondent affirms that
Complainant admits on the
Complaint that “there are no legal documents
showing that the domain name is a legal asset of the corporation.” Respondent argues that should there be no
written assignment, Complainant must evidence that Respondent assigned his
domain name.
According to Respondent, Complainant does not provide any evidence
that demonstrates any ownership interest in the domain name <4SaleByOwner.com>.
C.
Additional Submissions
·
Complainant
The
Additional Submission of Complainant was filed by Complainant’s attorney,
Angela Alvarez, Esq., from Bodman, Attorneys & Counselors,
who reiterated
the facts stated on the Complaint and contends to the assertions made by
Respondent on its Response.
Complainant
alleges that Respondent, prior to his resignation from Complainant, immediately
accessed the domain name, which had only been an organizational account, by
using the administrative address. Complainant
asserts that Respondent moved <4SaleByOwner.com> to the
registrar GoDaddy, Inc. and made it private, so that representatives of
Complainant would have no access or control of the
domain.
Complainant affirms to have common law rights in the
word mark <4SaleByOwner.com>, as it has been used since at
least as early as May 31, 1998 and its trademark registration was applied
before the United States
Trademark Office on September 15, 2004, which is expected
to mature to registration. In view of the above, and the fact that Complainant
has used continuously and exclusively the mark, Complainant attests that even
if <4SaleByOwner.com> was originally
descriptive, it has acquired distinctiveness.
Complainant restates that at all times Complainant
has treated the domain as an asset of Complainant, a statement which is
supported
by the fact that Complainant paid the renewal fees for the domain <4SaleByOwner.com>. Moreover, in
approximately 1999, Respondent, as a representative of Complainant, and in
agreement with its partner, further secured
other similar domain names. At
various times, Complainant asserts to have considered offers to purchase its
assets, including the
domain name.
Complainant affirms Respondent has no legitimate
interest in the domain other than as a shareholder of Complainant, as
Respondent
has neither used or demonstrated preparations to use the domain name
in relation with the bona fide offering of goods or services.
Furthermore, Complainant states company domains are often registered and
maintained by a representative
of the company, thus, the fact that Respondent
originally registered <4SaleByOwner.com> in his own
name does not acknowledge the true ownership of the domain. In this sense,
Respondent does not have facts that demonstrate
his ownership of the domain or
of the license of the domain to the company.
Complainant further argues Respondent’s affirmation
of having absolute misknowledge of the dispute before registering the domain name,
for what Complainant states that Respondent did have notice of Complainant’s
rights in the mark when he moved the domain to GoDaddy.
For Complainant,
Respondent’s transfer of the domain name <4SaleByOwner.com> constitutes a
“registration” for purposes of this action.
Additional to the above, Complainant affirms that
Respondent, whilst resigning from Complainant, demanded large sums of money for
the domain, and is now threatening to cease directing traffic to Complainant’s
website.
·
Respondent
In
the additional submission Respondent contends to the assertions made by
Complainant on its Additional Submissions:
Respondent
firstly brought to mind that Supplemental Rule ¶ 7(d) provides that any
additional submissions may not amend the original
Complaint. In this sense,
Respondent alleged that, on its supplemental filing, Complainant alleges that
the domain name <4SaleByOwner.com>
has acquired distinctiveness as Complainant therefore enjoys trademark rights in the name, whereas in
the Complaint, Complainant recognizes that the trademark
is descriptive. Thus,
Respondent states that since these arguments amend the Complaint, they must be
overlooked.
Moreover, Respondent affirms that even if this amendment is considered, there is
no effective proof that the term <4SaleByOwner.com>
has acquired distinctiveness, and
instead, chooses to rely on its trademark application.
Respondent adds that, even if Complainant
demonstrates the mentioned distinctiveness, it cannot show its rights in the
mark are superior
to Respondent’s interest in the domain name, as the domain
name <4SaleByOwner.com> was registered by Respondant
before Complainant was formed and long before Complainant obtained any alleged
rights to the trademark.
Thus, Respondent was not a shareholder in Complainant
at the time Respondent registered the domain name, which means that the
registration
could not have been for the benefit of Complainant.
Respondent
asserts that, even if Complainant achieves trademark rights over <4SaleByOwner.com>, Complainant cannot prove that its rights
over the referred mark are superior to Respondent’s interest in the domain
name, as Complainant
has acknowledged the mark is unregistered. Furthermore,
Respondent affirms that if Complainant cannot prove the trademark <4SaleByOwner.com> is registered, Complainant must evidence it
used the mark in connection with goods or services before Respondent registered
the domain
name.
FINDINGS AND DISCUSSION
Rules ¶ 15(a) 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.”
Rules ¶
10(d) of the Rules for Uniform Domain Name Dispute Resolution Policy, provides
that: “[t]he Panel shall determine the admissibility,
relevance, materiality
and weight of the evidence.”
In the
present case, the Panel wants to place emphasis on the importance of the
evidence filed by the parties to prove their assertions,
which has been studied
to determine its relevance and weight in arriving to a decision. The Panel wishes to clarify that the
statements that have been accompanied by evidence have been given more
importance than the mere
statements made by the parties without further
demonstration of their existence.
Likewise, the Panel has taken into account that each party has been
emphatic in contesting most of the evidence filed by the other
party.
Additionally
the Panel considers noteworthy the fact that the Case Coordinator at the Forum
informed the Panel by communication dated
June 21, 2004, that Respondent’s
response to the Complaint was not received in the timeframe established for
submitting the same,
according to Rules ¶ 5(d) and Supplemental Rules ¶ 6. As a consequence, the Panel is not forced to
accept this late Response, in accordance to Rules ¶ 10. According to Rules ¶
14, the
Panel can draw the inferences that it considers appropriate, if it
finds either party to be in default.
The
fact that Respondent submitted the Response after the deadline, according to
Rules ¶ 14(b), constitutes a technical default, which
allows the Panel to take
such fact as evidence against the party in default, i.e., Respondent.
Nevertheless,
the Panel wants to underline that in order to have an adequate vision of the
facts that gave ground to the present proceeding,
it has determined to take
into consideration certain contentions and evidence filed by Respondent, in
regard to the allegations filed
by Complainant, when arriving at a decision in
this case.
Policy
¶ 4(a) requires that Complainant must prove each of the following three
elements to obtain an order that a domain name should
be cancelled or
transferred:
(i)
the domain
name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has
rights;
(ii)
Respondent
has no rights or legitimate interests in respect of the domain name; and
(iii)
the domain
name has been registered and is being used in bad faith.
The
first element of Policy ¶ 4(a) requires existence of a trademark or a service
mark. This intellectual property right is only acquired
by registration before
the respective competent office in many jurisdictions of the world. However,
unregistered trademarks and service
marks are awarded protection since first
use in commerce in some other jurisdictions of the world. Also the Policy has
not yet extended
the scope of this first element to other distinctive signs
such as the trade slogan, trade name, and trade emblem.
Complainant
contends that it has established common law rights in the <4SaleByOwner.com>
mark through continuous and widespread use of the mark in commerce since at
least March 31, 1998. Complainant also states that its
mark though initially
was considered descriptive has acquired distinctiveness as it is Complainant’s
belief that the mark has acquired
secondary meaning, so that the public clearly
identifies <4SaleByOwner.com> with the goods and services provided by
Complainant. On the contrary, Respondent asserts that <4SaleByOwner.com>
is a descriptive term that cannot be entitled to trademark protection, and that
Complainant has not filed evidence to demonstrate
that the expression has
acquired secondary meaning.
It
is the Panel’s task to determine whether or not Complainant holds any trademark
rights over the term <4SaleByOwner.com>. The worldwide accepted definition of a
trademark involves the concept of distinctive force as the most relevant
element. This distinctive
force gives a sign the capability to identify the
products or services of its owner and differentiate them from the products or
services
of other participants in the market.
A sign lacks of enough distinctive force when it is generic, confusingly
similar to a previous trademark, or descriptive, among other
causes.
In
the case of generic and descriptive terms, such condition must be analyzed in
connection with the kind of products or services
that are identified with the
sign. Taking into account that <4SaleByOwner.com>
is meant to identify a service of providing information on the Internet on the
real estate listing service for web users, the sign
is a descriptive one.
However,
even a descriptive term can achieve distinctive force when due to its use and
recognition by the consumer-public if the descriptive
term acquires a secondary
meaning that allows it to identify the products or services without any risk of
confusion in the market. In this case
the descriptive term can become a trademark.
When
a symbol is registered as a trademark before a Trademark Office, it is
surrounded by a presumption of existence of sufficient
distinctive force. The
mere act of registration is recognition of the distinctiveness of the symbol,
so that the owner is granted
with an exclusive right over the trademark, which
entitles him to prevent any third party from using the registered symbol or any
other symbol confusingly similar to it.
Notwithstanding,
when the symbol is not registered, such presumption of distinctiveness is not
present, and the trademark owner has
the burden to demonstrate that it has
achieved common law rights over the mark. Common law rights arise out of the
use of a mark
in commerce in connection with goods or services, and might only
exist in jurisdictions that acknowledge the existence of such rights,
as in the
case of the jurisdiction of the United States of America, the country of
Complainant and Respondent[1].
It
is not difficult to demonstrate the distinctive force of a fanciful or
arbitrary word that is used in commerce.
However, when the term is not fanciful, but descriptive, the test of
common law rights has to be more drastic because it involves
the proof of
secondary meaning.
In
the present case, the Panel has to determine whether or not the term <4SaleByOwner.com>
is a common law trademark, and to that end, the Panel will have to consider
whether or not <4SaleByOwner.com> has achieved
secondary meaning.
Concerning
common law trademarks, it is important to clarify that the Policy does not
distinguish between registered and unregistered
trademarks. This issue has been
addressed deeply by previous Administrative Panels, such as in the case of Museum
of Science v. Asia Ventures, Inc.[2]:
As
to the first question, the wording of the Paragraph 4(a) (i) to "trademark
or service mark" has been interpreted by numerous
Panels in the past to
include both registered marks and the common law marks. See, inter
alia, British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar.
27, 2000); United Artists Theatre Circuit, Inc. v. Domains for Sale Inc,
D2002-0005. (WIPO Mar. 27, 2002), Prof’l Golfers’ Assoc. of Am. v.
Golf Fitness Inc., D2001-0218 (WIPO Apr. 12, 2001); Brooklyn Inst. of
Arts & Sci. v. Fantastic Sites, Inc., FA 95560 (Nat. Arb. Forum Oct.
30, 2002). With respect to the latter, the Complaint must show that the mark
has been in continuous
use See United Artists Theatre Circuit, Inc. v.
Domains for Sale Inc, D2002-0005. (WIPO Mar. 27, 2002); Keppel
TatLee Bank Ltd. v. Lars Taylor, D2001-0168 (WIPO Apr 10, 2001) and that
the mark achieved secondary meaning ("distinctive character") in
association with
Complainant. See Australian Trade Comm’n v. Reader,
D2002-0786 (WIPO Nov. 12, 2002); Galatasaray Sportif Sinai Ve Ticari
Yatirimlar A.S. v. Maksimum Iletisim A.S., D2002-0726 (WIPO Oct. 15,
2002).” (citations corrected)
As
said before, unregistered trademarks are entitled to protection in several
jurisdictions around the world. In the
present dispute, Complainant’s claim of common law rights over the sign <4SaleByOwner.com>
is supported by the acceptance of such rights by the jurisdiction of the United
States of America.
The
test to determine whether or not a sign can be protected as a common law mark
is highly exigent. Although the
elements to demonstrate common law rights may vary, the following has been
accepted as evidence of common law trademarks
by previous Administrative Panels[3]:
1)
Advertising, marketing, or promotional use of the alleged common law mark
2)
Third-party references to the alleged common law mark
3)
Widespread evidence of recognition among Internet users
4)
Sales of services under and by reference to the alleged common law mark
5)
Appropriate showing of prior continuous use in a given product and territorial
market over a sufficiently long period of time.
Complainant
has alleged that it has common law rights over the sign <4SaleByOwner.com>
stating that by “providing an online data base which features information
regarding real estate listings since at least early as
March 31, 1998.” Most of the evidence filed by Complainant
and allegations were contested by Respondent.
This is due to the fact that Respondent contends that Complainant’s
symbol cannot be protected as a trademark. Therefore, the evidence
filed by
Complainant will only suffice if it also leads to a demonstration of secondary
meaning, regarding the cited descriptive
term.
The
test of secondary meaning requires other elements not necessary for the test of
common law rights. Some of the factors that have
been used by other
Administrative Panels to determine whether a mark has acquired a secondary
meaning, are: “(1) advertising expenditures,
(2) consumer surveys linking the
mark to a source, (3) unsolicited media coverage of the service, (4) sales
success, (5) attempts
to plagiarize the mark, and (6) length and exclusivity of
the mark’s use.”[4] All of these
factors must lead the Panel to conclude that: “in the minds of the public, the
primary significance of [the mark <4SaleByOwner.com >] is to
identify [Complainant] as the source [of its website service] rather than the
[service] itself.”[5]
Complainant
has filed evidence such as its domain name renewal expenditures, website
hosting costs, stating the recognition among
the public and unsolicited media
coverage of the service, among others. The Panel notices that Complainant has
not provided any piece
of evidence that demonstrates that the consumer links
<4SaleByOwner.com> with Complainant, such as consumer surveys.
Likewise, Complainant’s evidence of unsolicited media coverage of its services
is very
scarce. Despite the fact that Complainant placed emphasis in
demonstrating that is has worked hard to promote its website, this does
not
suffice to show that such efforts succeeded and that the public links <4SaleByOwner.com>
with Complainant and its services.
Complainant
failed to demonstrate that the public associates <4SaleByOwner.com>
directly with the services rendered by Complainant. The number of hits received
by the <4SaleByOwner.com> website are not a proper indicator of
Complainant’s mark recognition among the public. Regardless of the fact that
Respondent contested
the validity of these hits, the Panel believes that there
are many factors that may affect the number of visitors to a website. It
is
clear for the Panel that <4SaleByOwner.com> is a descriptive term
for the service of on-line information on real estate listing service for
Internet users. The registration
of such domain name by Respondent was probably
possible because it was made back in 1995, when the Internet boom was just
beginning.
The registration of attractive domain names, which comprise generic
or descriptive words, encompasses a great business opportunity
for their
owners. Notwithstanding, they must be aware of the fact that they do not
acquire exclusive rights over such generic or
descriptive words, and that third
parties can register domain names including such words, accompanied by other
words to differentiate
each domain.
Internet
pioneers registered attractive domain names, which made them easily found by
Internet users. When a user wants to look for
information on car sales on the
Internet, he would probably try one of two options: (i) use a search engine, or
(ii) enter the words
“carsales” and “.com” in the navigator, looking for a
direct source of information under <carsales.com>. The same happens with Complainant’s site. A
person looking for online information on real estate listing services on the
Internet,
would probably try “4SaleByOwner.com” as one of its first options, as
this term has been recognized in the market of real estate
web offers. This does not mean that the user is
particularly looking for Complainant’s site, but rather for information about
real estate listings
either provided by Complainant or by any other party. The number of hits received by Complainant’s
website, even if they translated into a number of real visitors, is not then
evidence
of the public association between <4SaleByOwner.com> and
Complainant.
Another
factor used to determine the existence of secondary meaning, mentioned above,
is the exclusivity of the mark’s use.
This is again a critical factor in the present dispute. Instead of being
a term exclusively used by Complainant, the word <4SaleByOwner.com>
is composed of words that are commonly used in everyday language, and
particularly, in Complainant’s market.
The term “4SaleByOwner” and its parts “4” (For), “Sale” and
“Owner,” are English words used to designate commercial offers, and establish
its proprietors
that as a whole have been identified as web places that are
visited by consumers interested in buying and/or leasing real estate
goods. It is fact that daily in the
market there is a real estate at offer either for renting or selling in
accordance to needs of the market. As a
consequence, the words “4 sale by owner” are used by a vast number of
participants in the market of real estate brokers and consumers,
including real
estate sellers themselves, real estate lease providers, real estate buyers,
etc. This is evidenced by entering the
words “4 sale by owner” into a search
engine like GOOGLE®, as mentioned by Respondent. The Panel visited this search engine on October 14, 2004, and
made two kinds of search. The first search, using the words “4salebyowner,”
found approximately 45 results. Then
the Panel searched using the same expression but leaving spaces between each
word, i.e., “4 sale by owner” and found approximately
3,990,000 results. All of the sites provided information and
referrals to real estate listings around the world, the same service offered by
Complainant. All of them use either one
of the words “4 sale by owner” to promote their services. Hence, the expression “4salebyowner” is
widely used by third parties in their commercial activities, and therefore, it
is difficult
for the public to associate such words precisely with Complainant
and not with any other of its competitors.
Moreover,
the addition of the suffix “.com” does nothing to give distinctiveness to <4SaleByOwner.com>. Due to the fact that Complainant’s services
are rendered through the Internet, and that Complainant is a commercial
corporation, the
suffix “.com” makes the term <4SaleByOwner.com>
even more descriptive.
Regarding
the registration of the expression 4SaleByOwner.com, or similar expressions as
a trademark, the panel has reviewed the evidence
filed by Respondent, in order
to evidence that the expression “For (4) sale by owner” it too descriptive,
which has made that the
registration of said trademark or any confusingly
similar expression does not meet the requirements established by law, to be
sufficiently
distinctive and be registered as a trademark. Even more, the Panel reviewed the evidence
filed by Respondent, and was able to determine that the live trademarks
registered before
the USPTO, include a disclaimer in which it is stated that
they (the registrant) resigns to the right of using exclusively the expression:
“For sale by owner.” For instance, the
trademark, No. 2810039, HOMES 4 SALE BY OWNER NETWORK .COM, was filed for
registration before the United States
Patent and Trademark Office (USPTO), and was
granted on February 3, 2004 to cover goods in International Class 35. Though it
is noteworthy
that it included said disclaimer in which it stated that: “No
claim is made to the exclusive right to use “HOME FOR SALE BY OWNER
NETWORK.COM” apart from the mark as shown.” The mark as shown is the graphic
feature added to the expression, which gives distinctiveness
to the trademark
not for its denominative part, but because of its graphic element.
The
disclaimer mentioned above is stated in all the evidence submitted by
Respondent, in those trademark submissions and registrations,
considering that
the expression by itself is too descriptive, lacking of the distinctiveness
needed for a trademark. Some of these
service marks are:
-
DIRECT BY OWNER +
Graphic. International Classes 35 and 36. Reg. No. 2667533. Disclaimer: No
claim is made to the exclusive right
to use: “For sale by owner” apart from the
mark as shown.
-
FOR SALE BY OWNERS
+ Graphic. International Class 35. Reg. No. 2050451. Disclaimer: “For sale by
owners.”
-
FOR SALE BY OWNER
MONTHLY + Graphic. International Class 16. Reg. No. 2644573. Disclaimer: No
claim is made to the exclusive right
to use: “For sale by owner monthly” apart
from the mark as shown.
-
FOR SALE BY OWNER
& BUILDER. International Classes 16 and 35 . Reg. No. 2819721. Disclaimer:
No claim is made to the exclusive
right to use: “For sale by owner and builder”
apart from the mark as shown.
The
above demonstrates that the words FOR SALE BY OWNER are not entitled to
trademark protection in the United States of America when
used in connection
with real estate industry.
As
a fact that called the attention of the Panel, the USPTO search showed that
Complainant filed an application for the registration
of 4SaleByOwner.com,
Inc., to cover services of International Class 36. This service mark
application was filed on September 15,
2004 under the Serial Number 78484284,
which means that it was filed after this proceeding commenced. The trademark registration has not been
granted, and no disclaimer was made regarding the use of the expression
submitted for registration.
This would mean that if the USPTO continues with
its previous trend, the registration of said trademark should be denied as this
expression is too descriptive. The Panel considers that though Complainant
might be aware of the lack of trademark rights that it
has over the expression <4SaleByOwner.com>,
it is trying to obtain a trademark in order to evidence trademark rights over
Respondent’s domain name.
The
Panel in the case of Media West-GSI, Inc., v. EARTHCARS.COM, INC.[6],
concluded the following, which can be applied in its entirety to the present
controversy:
The threshold -- and in this case, dispositive -- issue
under Paragraph 4(a) is whether Complainant has protectable "rights"
in the mark to which it contends Respondent’s domain name is identical or
confusingly similar. . . [I]t is fair to infer from the
omission of any
reference to registration that the mark “freepressclassified.com” is not, in
fact, registered with the PTO or any
analogous authority. Consequently,
Complainant does not enjoy the benefit of any presumption of the exclusive
right to use a mark
afforded by registration and must prove that its mark is
distinctive. Wal-Mart
Stores, Inc. v. Samara Bros., Inc., [2000] USSC 26; 120 S. Ct. 1339, 1342 (2000).
To
be distinctive, a mark must, either inherently or through an acquired secondary
meaning, be capable of identifying the source of
a particular product or
service. Only marks that are arbitrary or fanciful in the sense of bearing no
logical relationship to the
product or service for which they are used, or
suggestive in the sense of requiring imagination to be associated with a
product or
service, are deemed inherently distinctive. Wal-Mart, 120 S.
Ct. at 1343. Complainant’s mark, <freepressclassified.com>, is not
arbitrary, fanciful, or suggestive; rather, it quite
plainly describes the very
service in connection with which it is used by Complainant: "a website
service contain[ing] classified
advertisements for a variety of products and
services." The joining of “freepress” with "classifieds" could
add an
element of distinctiveness to Complainant’s mark if it were unique to
Complainant. However, as Mr. Bonfigli’s e-mail correctly pointed
out, and is
sufficiently well known to be properly subject of judicial notice, the use of
"free press" in the names of
English language newspapers is so
ubiquitous that it can not plausibly be argued that “freepressclassified.com”
necessarily points
to The Burlington Free Press rather than, to pick just one
example, The Detroit Free Press, as the source of the particular Internet
classified advertisement service.
.
. .
The
extensive detail in which Complainant sets out its effort to promote its
website through advertising indicates its awareness that
the only route to the
recognition of its unregistered mark as protected is to have it classified as
descriptive. A descriptive mark
is one [that] portrays a characteristic of the
particular article or service to which it refers. Keebler Co. v. Rovira Biscuit
Corp., [1980] USCA1 237; 624 F.2d 366, 374 n.8 (1st Cir. 1980). Such marks are entitled to
protection only if they have acquired a "secondary meaning." Wal-Mart,
120 S. Ct. at 1344; Big Star Entertainment, Inc. v. Next Big Star, Inc.,
2000 WL 420549*9 (S.D.N.Y.).”
This
test requires a demonstration that the mark, by means of sufficient marketing,
sales, usage, and passage of time, has become
identified in the public mind
with a particular source of the goods or services. Id.; see also,
Inwood Laboratories, Inc. v. Ives Laboratories, Inc., [1982] USSC 106; 456 U.S. 844, 851, n.
11, [1982] USSC 106; 102 S. Ct. 2182, n. 11 (1982); Bristol-Meyers Squibb Co. v.
McNeil-P.P.C., Inc., [1992] USCA2 876; 973 F.2d 1033, 1040 (2d Cir. 1992). . . .
Complainant’s
dedication of significant resources to the promotion of its website through
advertising in its own Burlington Free Press
newspaper, on the radio and
through fliers, and its sales success as measured by the number of visits to
its website, while relevant,
are not, without more, sufficient to support a
finding that it has succeeded in creating a secondary meaning for its mark. It
is
the effect of such activities, not merely their extent, that shows actual
acquisition of a secondary meaning. Co-Rect Prods. Inc. v. Marvy!
Advertising Photography, Inc., 780 F.2d 1324, 1329 (8th Cir. 1985).
Complainant has presented no evidence of consumer surveys, focus group studies,
or even substantial anecdotal
evidence, showing that consumers have come to
associate <freepressclassified.com> with The Burlington Free Press.
Likewise,
Complainant has provided no evidence of any independent or
unsolicited media coverage of its website service. . . . Whatever the
length of
use by one party, use of part or all of the mark by third parties weakens the
mark’s overall strength. Big Star Entertainment, Inc. 2000 WL 420549
*17; Streetwise Maps Inc. v. Vandam, Inc., [1998] USCA2 464; 159 F.3d 739, 744 (2d Cir.
1998).
In
sum, on the evidence available in this case, the Panelist cannot conclude that
"in the minds of the public, the primary significance
of [the mark
<freepressclassified.com>] is to identify [Complainant] as the source [of
its website service] rather than the
[service] itself." Inwood
Laboratories, supra. Since Complainant has failed to discharge its burden
of proof as to the threshold element of its case under the . . . Policy [¶]
4(a), it is not necessary to reach the remaining elements: whether the domain
name <freepressclassifieds.com> is identical
or confusingly similar to
<freepressclassified.com.>, whether Respondent has any rights or legitimate
interest with respect
to <freepressclassifieds.com>, and whether it has
registered and used that domain name in bad faith.”
Complainant’s
sign <4SaleByOwner.com> is a descriptive and unregistered term,
not entitled to trademark protection in the absence of sufficient evidence of
secondary meaning.
The evidence required in this case is far more exigent than
the one required to prove common law rights. Complainant failed to support
its
allegation of secondary meaning, due to the fact that the evidence presented by
it does not allow this Panel to conclude that
the public associates <4SaleByOwner.com>
with Complainant. On the contrary, such association appears very difficult in
the circumstances found by the Panel.
Based
on all the foregoing, the Panel finds that Complainant does not have trademark
rights over the expression <4SaleByOwner.com> and that
Complainant has failed to meet the requirements of Policy ¶ 4(a) (i).
The finding with regard to the absence of
trademark rights on the part of Complainant precludes the Panel from
considering this issue
of rights and legitimate interests. However, the Panel
notes that the parties are involved in a dispute over the ownership of the
domain name <4SaleByOwner.com> and the business developed under
the same, which fall out of the reach of the ICANN’s policy. The parties’
allegations include issues
of breach of corporate duties and ownership of
corporate assets among others. These conflicts fall out of the competence of
this
Administrative Panel and should be addressed, if that is the parties’
desire, before a Court of Law.
As set forth above, since the Panel has
found that the domain name <4SaleByOwner.com> is not identical to
a trademark over which Complainant has rights, it would not be necessary to
study if Respondent has acted in bad
faith, as stated in the Complaint. The disagreements between Complainant and
Respondent, as seen in their submissions to this Panel, are beyond the borders
of a domain
name dispute, such as the one that was entrusted to this Panelist
for decision. Hence, it belongs to a Court of Law to resolve such
kind of
disputes between the parties.
DECISION
The
Panel has found that Complainant failed to prove that it has rights in its mark
for the purpose of satisfying Paragraph 4(a)(i)
of the Policy. Therefore,
Complainant’s request that the domain name <4SaleByOwner.com> be
transferred from Respondent to Complainant is DENIED.
Fernando Triana, Esq., Panelist
Dated: October, 19, 2004
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