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Generic Top Level Domain Name (gTLD) Decisions |
Aetna Inc. v. Compana L.L.C.
Claim Number: FA0409000330494
PARTIES
Complainant
is Aetna Inc. (“Complainant”),
represented by Faye A. Dion, 151 Farmington Avenue, Hartford, CT
06156. Respondent is Compana L.L.C. (“Respondent”),
represented by Ari Goldberger of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <docfind.com>,
registered with Enom, Inc.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict
in serving as Panelists in
this proceeding.
David
Sorkin, M. Kelly Tillery, and Tyrus R. Atkinson, Jr., as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on
September 17, 2004; the National Arbitration
Forum received a hard copy of the
Complaint on September 20, 2004.
On
September 20, 2004, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <docfind.com>
is registered with Enom, Inc. and that the Respondent is the current registrant
of the name. Enom, Inc. has verified
that Respondent is bound by the Enom, 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
September 23, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of October 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@docfind.com by e-mail.
A
timely Response was received and determined to be complete on October 27, 2004.
On
November 1, 2004, a timely Additional Submission was received from Complainant.
On November 8, 2004 Respondent filed a timely Additional
Submission. This submission was
forwarded to the Panel via email on November 9, 2004. The Panel reviewed and considered this Additional Submission.
On November 8, 2004, pursuant to Complainant’s request
to have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed David Sorkin, M. Kelly Tillery, and Tyrus R. Atkinson, Jr., as
Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
From 1996, Complainant and its group
of companies have continuously used the DOCFIND mark in connection with their
business. Complainant directly and
through a wholly-owned subsidiary, registered DOCFIND with the United States
Patent and Trademark Office
on July 1, 1997 in international class 42 for
“providing information regarding physicians via a global computer
network.”
Complainant is one of the nation’s
leaders in health care, dental, pharmacy, group life, disability, and long-term
insurance and employee
benefits serving approximately 13 million medical
members, 10.9 million dental members, 7.4 million pharmacy members and 12.3
million
group insurance customers as of December 31, 2003.
On or about August 2, 2003,
Respondent registered <docfind.com> for a term of one year. On or about October 21, 2003, Complainant
sent a cease and desist letter to Respondent demanding Respondent cease all use
of <docfind.com> and transfer the domain name to Complainant. On or about November 3, 2003, Complainant
received an email message from Respondent in which Respondent, in part, denies
infringing
upon Complainant’s trademark.
On or about May 18, 2004, to the best of Complainant’s knowledge and
belief, Respondent renewed the registration for <docfind.com> for
an additional year.
Respondent is using <docfind.com>
to direct Internet users, including Complainant’s customers and members of
Complainant’s health plans, to an online directory housing
pay-per-click links
to health products and physician directories.
The domain name <docfind.com>
is identical or confusingly similar to Complainant’s registered DOCFIND
trademark, which predates Respondent’s registration of <docfind.com>.
Respondent is not affiliated with Complainant and has not
been licensed or otherwise authorized to use the DOCFIND mark. Respondent is not commonly known as <docfind.com>;
nor is Respondent using <docfind.com> for any bona fide offering
of goods or services, or making a legitimate noncommercial or fair use of the
domain name. The <docfind.com>
domain name is used to house an online directory with pay-per-click links
to websites that provide services in direct competition
with those of
Complainant.
Respondent registered and used the
domain name in bad faith. Respondent
had actual knowledge of Complainant’s DOCFIND trademark at the time Respondent
registered <docfind.com>.
Even if Respondent were unfamiliar with Complainant’s DOCFIND service
mark, Respondent would have discovered Complainant’s service
mark upon
performing a trademark search.
Respondent’s use of a domain name identical or confusingly similar to
Complainant’s DOCFIND trademark for commercial benefit by receiving
pay-per-click
fees and diverting Internet users to Complainant’s competitors is harmful to
the business of Complainant, tarnished
Complainant’s reputation, diminishes the
goodwill of Complainant’s mark, and is evidence of bad faith registration.
B.
Respondent
There is no basis for transferring
the disputed domain name to Complainant.
The Complaint must be dismissed because Complainant has no enforceable
trademark rights to the term “doc find” because the term is
a generic or, at
best, a descriptive term as used by Complainant for a directory used by its
members to find doctors a/k/a “docs.”
Respondent has rights and a legitimate interest in the disputed domain
because it incorporates the common term “doc find.” Anyone is entitled to register a domain name incorporating a
descriptive term, and the first to register such a domain name has a
legitimate
interest in it. Complainant does not
have exclusive rights in the descriptive term “docfind” which is used by
numerous third parties. Respondent did
not register the disputed domain name with Complainant’s mark in mind and had
no knowledge of the mark when it registered
it. Respondent simply registered the disputed domain name when it had
expired and became available for anyone to register. When a domain name expires, a party desiring to register it is
justified in assuming that no party is claiming rights to it. Respondent assumed the mark was merely a
descriptive domain that could be used for a service to find documents. Respondent has registered a number of other
descriptive “find” domain names such as searchfind.com, findfriend.com, and
petfinder.com. The <docfind.com>
domain name simply falls into that pattern of good faith registration of
descriptive term domain names.
Respondent did not register, and has
not used, the disputed domain name in bad faith. There is no evidence to support either basis for bad faith
registration. Respondent had no
knowledge of Complainant or its purported trademark when it registered the
domain name. While it is true that the
disputed domain name did for a time present links for health products and
physicians directories, that was
done without Respondent’s knowledge by a third
party who was hosting the domain name.
As soon as Respondent learned of this, the ads were removed.
C.
Additional Submissions
i.
Complainant’s Additional Submission.
Complainant’s DOCFIND mark is neither
generic nor descriptive. Complainant
has established rights in the DOCFIND mark through widespread and continuous
use in commerce for the last eight years.
Respondent seeks to overcome the presumption of distinctiveness
conferred by federal trademark registration with the bald assertion
that,
because “doc” and “find” appear separately in the dictionary, they are,
therefore, generic and/or descriptive.
The USPTO has granted registration to numerous marks constructed in a
similar fashion to Complainant’s mark (MONEYFIND, FONTFIND,
PHONEFIND,
RAPIDFIND, DOCMEMO and DOCENGINE), all of which function successfully as
trademarks. They are coined, invented
words, created by bringing together two concepts into short, punchy catch-words
that have the additional
desirable trademark characteristic of being easy to
remember. DOCFIND is not a common word
that can be found in a dictionary.
DOCFIND is not generic.
ii.
Respondent’s Additional Submission.
Respondent argues that even though
the word “docfind” is not in the dictionary, it, nevertheless, is a descriptive
term. Respondent attempts to
distinguish certain of the domain name decisions cited by Complainant in its Additional
Submission and cites
to other domain name decisions which support Respondent’s
position as stated in the Response, contending that Respondent has won
more
cases that it has lost in domain name proceedings.
Respondent’s argument fails to consider
the secondary meaning that Complainant’s DOCFIND mark has acquired during eight
years of widespread
and continuous use by millions of Complainant’s health plan
members.
FINDINGS
1. Complainant is an insurance company with
substantial dealings in health care insurance.
2. DOCFIND is Complainant’s online health
care provider directory used by its members to search for providers by type,
name, gender,
language, hospital affiliation and other criteria.
3. Complainant registered DOCFIND with the
United States Patent and Trademark Office on July 1, 1997 and was granted a
Service Mark “for
providing information regarding physicians via a global
computer”. Complainant has used DOCFIND
since that time as its health care provider directory.
4. Respondent does not allege its purposes
or the business in which Respondent engages.
However, it may be inferred from the evidence that Respondent, at least
in part, is engaged in registering expired domain names to
be later used for
commercial profit.
5.
Respondent
registered the domain name <docfind.com> on August 2, 2003, when
the domain name was found to be available for registration because the previous
owner failed to renew the
registration.
6.
Shortly
after Respondent’s registration of <docfind.com>, Complainant
transmitted a cease and desist letter to Respondent demanding Respondent to
cease use of the domain name and transfer
it to Complainant. Respondent promptly replied denying
infringing on Complainant’s mark.
7.
The Service Mark, DOCFIND, is identical to the
domain name, <docfind.com>.
8.
Respondent has no rights or legitimate interests in
the domain name <docfind.com>.
9.
Respondent registered and used the domain name <docfind.com>
in bad faith.
10.
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.
Complainant’s
first requirement is to prove that the domain name is identical or confusingly
similar to a service mark in which the
Complainant has rights. See Policy
¶ 4(a)(i).
Complainant’s registration of the Service
Mark with the United States Patent and Trademark Office is alone sufficient to
prove Complainant’s
rights in the Service Mark for the purposes of this
element. See Koninklijke KPNN.V. v. Telepathy, Inc., D2000-0217 (WIPO
May 7, 2001).
The
second question is whether the Service Mark and domain name are identical or
confusingly similar. DOCFIND and <docfind.com>
are identical except for the addition of the top-level domain (gTLD)
“com.” The addition of the gTLD to
Complainant’s mark is not relevant to change the exact match between the domain
name and mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June
25, 2000) which found 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); see also Busy Body, Inc. v. Fitness Outlet, Inc. D2000-0127
(WIPO Apr. 22, 2000) and Pomellato S.p.A v. Tonnetti, D2000-0493 (WIPO
July 7, 2000) which reached the same result.
Complainant
contends and offers proof to the effect that Respondent is not affiliated with
Complainant and has not been licensed or
otherwise authorized to use the
DOCFIND mark; that Respondent is not commonly known as <docfind.com>;
nor is Respondent using the domain name for any bona fide offering of goods or
services or making a legitimate noncommercial or
fair use of the domain
name. Complainant shows that Respondent
has used the domain name to house an online directory with pay-per-click links
to websites that
provide services in direct competition with those of
Complainant.
Complainant
cites The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug.
21, 2000), which held that Respondent’s use of domain names confusingly similar
to Complainants’ mark to sell
competing goods was an illegitimate use and not a
bona fide offering of goods, and AltaVista v. Krotov, D2000-1091 (WIPO
Oct. 25, 2000) which held that use of a domain name to direct users to other
unconnected websites does not constitute
a legitimate interest in the domain
name.
As
a result of Complainant’s showing, the burden shifts to Respondent to show its
rights or legitimate interests in the domain name. See Do The Hustle, L.L.C. v. Tropic Web, D2000-0624 (WIPO
Aug. 21, 2000), which held that “[w]here a complainant has asserted that the
respondent has no rights or legitimate
interests in respect of the domain name,
it is incumbent upon the respondent to come forward with concrete evidence
rebutting this
assertion. This
information is uniquely within the knowledge and control of respondent. Failure of a respondent to come forward with
such evidence is tantamount to admitting the truth of complainant’s assertions
in this
regard.” See also G.D.
Searle v. Martin Mktg., FA118277 (Nat. Arb. Forum Oct 1, 2002).
Respondent
contends that Complainant has no enforceable rights under the Policy because
its mark is generic or descriptive.
DOCFIND, Respondent contends, is a generic, or at best descriptive term
as used by Complainant because it describes the essential
features of
Complainant’s service, namely software to “find” “docs.”
Respondent
further contends that “descriptive and generic terms provide no rights under
the Policy under any circumstances even if
they are registered” with the United
States Patent and Trademark Office.
Respondent states that “doc” and “find” are common terms found in a
dictionary. That, Respondent contends,
makes DOCFIND solely a descriptive term deserving no protection under the
Policy. Respondent further advances the
argument that Complainant does not have exclusive rights to the term DOCFIND
because it is subject
to substantial third party use. Respondent attaches a Google search that shows some use by
persons other than Complainant of the word, DOCFIND.
Respondent
cites the following decisions to support its argument that generic or
descriptive terms deserve no protection under the
Policy. Successful Money Management Seminars, Inc. v.
Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001); Pet Warehouse v. Pets.com, D2000-0150
(WIPO Apr. 13, 2000); Canned Foods, Inc. v. Ult. Search Inc. FA96320
(Nat. Arb. Forum Feb. 13, 2001); Energy Source Inc. v. Your Energy Source, FA96364
(Nat. Arb. Forum Feb. 19, 2001); Emoney Group, Inc. v. Eom Sang Sik, FA96337
(Nat. Arb. Forum Mar. 26, 2001). In
none of these decisions was there present a registered trademark or service
mark with the United States Patent and Trademark Office. These decisions are not applicable to the
facts of the present case.
Respondent
cites the decisions in Target Brands, Inc. v. Eastwind Group, FA267475
(Nat. Arb. Forum July 9, 2004) and Goldberg & Osborne v. The Advisory
Board Forum, Inc., D2001-0711 (WIPO Oct. 4, 2001) for the proposition that
“[d]escriptive and generic terms provide no rights under the Policy
under any
circumstances even if they are registered.”
Insofar as these decisions reflect Respondent’s contention, the
reasoning of these decisions will not be followed in this case because
this
Panel cannot agree that Respondent’s contention is correct.
Although
Complainant did not specifically allege it, the Panel will infer that
Complainant’s Service Mark, having been filed with
the United States Patent and
Trademark Office more than five years prior to this proceeding has achieved
incontestable status. There is no
question that the Service Mark has been registered and in continuous use for
five consecutive years.
“Marks
that constitute a common descriptive name are referred to as generic. A generic term is one that refers to the
genus of which the particular product is a species…Generic terms are not
registrable…A ‘merely
descriptive’ mark, in contrast, describes the qualities
or characteristics of a good or service, and this type of mark may be
registered
only if the registrant shows that it has acquired secondary
meaning…” Park ‘Fly, Inc. v. Dollar Park And Fly, Inc. [1985] USSC 8; 469 U.S. 189
(1985).
The
United States Patent and Trademark Office is given the responsibility to make
these determinations, and once made should be given
“significant deference by
ICAAN panels…” See Lake at Las Vegas Joint Venture v. Principal Equiti, Inc.
D2002-0758 (WIPO Oct. 4, 2002).
As
to Respondent’s argument that Complainant’s Service Mark is generic, that
contention is not well-founded. “Any
argument that Complainant’s trademark is generic is rejected. Complainant’s trademark is incontestable and
this registration for the mark, which is attached to Complainant’s Complaint
shall be
conclusive evidence of the validity of the registered mark and of the
registration of the mark, of the registrant’s ownership of
the mark, and of the
registrant’s exclusive right to use the registered mark in commerce…” See
Interstate National Dealer Services, Inc. v. Selwyn Colley, D2004-0924
(WIPO Apr. 5, 2004).
As
to Respondent’s contention that it has successfully challenged Complainant’s
Service Mark on the ground that it is descriptive,
that contention is unproved.
[T]he incontestable nature of several of
the LAKE LAS VEGAS Marks would negate the Respondent’s challenge. In that regard, incontestable marks are not
susceptible to attack as being geographically descriptive. See McCarthy at § 14:26. Specifically, the Court in Tonka Corporation
v. Tonka Phone Inc et al 229 U.S.P.Q. 747, 753 (D.Minn. 1985) aff’d 231
U.S.P.Q. 831
(8th Cir. 1986) cited to Park N’ Fly, Inc. v. Dollar
Park and Fly, Inc., 227 U.S.P.Q. 327 (Sup. Ct. 1985) and quoted the U.S.
Supreme
Court in its holding, at page 330, that an ‘incontestable mark may not
be challenged on the grounds that the mark is merely descriptive.’”
See
Lake at Las Vegas Joint Venture v. Principal Equiti, Inc., D2002-0758
(WIPO Oct. 4, 2002).
Respondent
has not presented a proper challenge of Complainant’s incontestable registered Service
Mark on the grounds of either being
generic or descriptive under the facts and
circumstances of this case.
Registration with the United States Patent and Trademark Office of a
trademark or service mark hold a presumption that they are inherently
distinctive
and have acquired secondary meaning. See
Men’s Warehouse, Inc. v. Wick, FA117861 (Nat. Arb. Forum Sept. 16, 2002).
As
to Respondent’s argument that there is substantial third party use of DOCFIND,
the evidence presented does not permit Respondent
to prevail. As correctly stated in a decision: “The Respondent argues, and provides ample
evidence to prove, that complainant’s trademarks are being used for other
products around
the world. The
Respondent then goes on to argue that this gives it the right to use the
complainant’s trademarks. But this
reasoning is incorrect. The same
trademark can be used for different types of products within a country thanks
to the class system, or it can be used by a
different owner for the same type
of product in a different country, thanks to national trademark
registrations. Such is not the case of
a domain name which is unique worldwide.
Since a domain name is unique world-wide, it can be used by only one
owner, unlike trademarks which can be used by several different
owners.” See
Viacom International, Inc., Paramount Pictures Corporation, and Blockbuster
Inc. v. Tvdot.net, Inc. D2000-1253 (WIPO Jan. 16, 2001).
No
evidence has been presented to prove that Respondent was ever known as <docfind.com>. Respondent cannot prevail under Policy ¶
4(c)(ii).
The
domain name was used for commercial purposes.
Respondent cannot prevail under Policy ¶ 4(c)(iii).
Complainant contends and Respondent admits
that the domain name was used in direct competition with Complainant’s DOCFIND
registration. That does not amount to a
bona fide use of the domain name. See
Disney Enters., Inc. v. Dot Shop, FA145227 (Nat. Arb. Forum Mar. 17, 2003)
(finding that Respondent’s diversionary use of Complainant’s mark to attract
Internet users
to its own website, which contained a series of hyperlinks to
unrelated websites, was neither a bona fide offering of goods or services
nor a
legitimate noncommercial or fair use of the disputed domain name). Respondent cannot prevail under Policy ¶4(c)(i).
Complainant
prevails under the requirements of Policy, ¶ 4(a)(ii).
The
last element that must be proved by Complainant is that the domain name has
been registered and is being used in bad faith. See Policy ¶ 4(a)(iii). This may be shown by any of the methods
set out in Policy ¶ 4(b) or by any other method sufficient to illustrate bad
faith.
Complainant
contends that it is evidence of bad faith for Respondent to use a domain name
identical to Complainant’s DOCFIND service
mark for commercial benefit by
receiving pay-for-view fees.
Complainant further claims that diverting Internet users to
Complainant’s competitors is harmful to the business of Complainant, tarnishes
Complainant’s reputation, diminishes the goodwill of Complainant’s mark, and is
evidence of bad faith registration and use.
The facts show that Respondent’s use of the domain name <docfind.com>
was employed, at least for a time, to direct Internet users to medical
products and medical services which is the same type business
in which
Complainant uses its Internet medical directory. Respondent admits this use and states that it discontinued the
use at some time prior to the filing of this proceeding. This might
show the
factual situation necessary to prove that Respondent used the domain name by
intentionally attempting to attract, for commercial
gain, Internet users to
Respondent’s website by creating a likelihood of confusion with Complainant’s
mark as to the source, sponsorship,
affiliation, or endorsement of Respondent’s
website in violation of Policy ¶ 4(b)(iv).
But this paragraph requires intent to commit the violation.
Respondent
contends that there is absolutely no evidence that Respondent registered the
disputed domain name with Complainant in mind.
Absent direct proof that a domain name was registered or acquired solely
for the purpose of profiting from Complainant’s trademark
rights, there can be
no finding of bad faith registration and use, Respondent argues. As proof of this proposition, Respondent
presents the Affidavit of Jeff Baron.
Barron is the Respondent’s President.
He states that he registered the domain name <docfind.com>
when it expired and was deleted because he believed it was a descriptive term
to which no party had exclusive rights.
It seemed like a good domain name to use for a directory to help people
find doctors or for technology to help people locate specific
documents. Barron never heard of Complainant’s mark
before he registered it. He did not
register <docfind.com> to sell to Complainant or any party, to
prevent Complainant from owning a domain name incorporating its alleged
trademark, to disrupt
Complainant’s business, or to confuse consumers seeking
Complainant’s web site. He “simply was
unaware that Complainant or any party had a registered trademark for
“docfind.” Because docfind is a generic
term, I did not think it was necessary to conduct a trademark search.” Barron goes on to admit that after receiving
the cease and desist letter from Complainant he directed the individual
operating the
web site to make sure no content or advertising related to
physicians or doctors appear on <docfind.com> and states that he had no knowledge that any
such ads had appeared.
Respondent is correct that bad faith requires
intent. Barron’s Affidavit presents
evidence of lack of intent.
Complainant responds in Complainant’s
Additional Submission with two domain dispute decisions which presents this
Panel with an insight
into Respondent’s conduct in other domain name disputes
and raises questions as to the sufficiency of the Barron Affidavit
The
first decision is in the case of Eurial Poitouraine v. Compana LLC.,
D2004-0270 (WIPO June 5, 2004). This
was a case where this Respondent had registered a domain name that had not been
renewed. The only difference being that
in that case the Complainant was the party who failed to renew, whereas in this
case, the party who
failed to renew is unknown. Nevertheless, the findings in the Eurial Poitouraine case are
found to be pertinent to this case. The
Panelist found as follows: “The
Respondent”(the same Respondent as in the case here at issue) “states with
emphasis that it has no knowledge of the existence
of Complainant’s Trademarks
and of Complainant itself. This is
quite surprising to this Panel in the present context. First the Lanham Act specifically provides
that Federal Registration of a Trademark constitutes constructive notice to the
world of
the existence and validity of the owner/registrant’s trademark
rights. See 15 U.S.C. No 1072.
Furthermore the Respondent, so able with surname searching devices, could have
verified this, as rapidly as
this Panel did, had it so wished.”
“Thus whether Respondent admits to or
whether there is sufficient evidence of Record that Respondent actually knew of
the trademark
rights of Complainant prior to registering the domain name in
dispute, Respondent should and will be held to have known of same by
the
doctrine of constructive notice. Again
as stated by the panel in PerkinElmer Life Science Inc. case”(PerkinElmer
Life Sciences Inc. v. Compana, LLC, FA124752 (Nat. Arb. Forum Nov. 26,
2002) under these circumstances the registration by Respondent of a domain name
identical and thus
confusingly similar to a federally registered trademark is
in and of itself registration in bad faith.”
“Secondly, the present case is, to the
knowledge of the Panel and on the evidence of record, the fifth instance in
which the Respondent
is respondent and challenging a demand for the transfer of
a domain name it had registered. In
each instance, the Respondent had always asserted that it had no knowledge of
the trademark registration and of the existence of
the Complainant. Considering the impression of a
sophisticated Respondent conveyed by the Response, its significant use of
technology to locate surnames
that are not registered as a domain name, on the
one hand and the ease with which within one hour, the Panel was able to verify
the
two U.S. registrations on the U.S.P.T.O.Gov website…this Panel considers
that this behavior of the Respondent is one of willful blindness
which further
confirms a bad faith situation.”
This case is at least the sixth instance
where this Respondent, Compana LLC, has been a party to a domain name dispute wherein
in
each it contends that it cannot be found to have registered the domain name
in bad faith because it had no knowledge of the trademark
registration and of
the existence of the Complainant.
Respondent’s conduct in these six domain name dispute cases brings the
credibility of the Barron Affidavit into question. Considering Respondent’s knowledge in acquiring domain names, its
utilization of same and its experiences in domain name disputes, Respondent cannot be given the benefit of
its alleged ignorance of the trademark rights and existence of trademark
registrants. Respondent’s conduct and
allegation of ignorance of these facts suggest a pattern of bad faith
registration.
The Panel in PerkinElmer Life Sciences
Inc. v. Compagna LLC, cited above, involving this same Respondent, when
faced with a similar factual situation as found here and in Eurial
Poutouraine, where Respondent denied knowledge of Complainant, the Panel
stated as follows:
Thus, whether
Respondent admits to or whether there is sufficient credible evidence of record
that Respondent actually knew of the
trademark rights…prior to registering the
domain name in question, Respondent should and will be held to have known of
same by the
doctrine of constructive notice.
Under these circumstances, the registration by Respondent of a domain
name identical and thus confusingly similar to a Federally-Registered
Trademark
is in and of itself registration in bad faith.
Constructive notice alone is insufficient
ground upon which to base a finding of bad faith under the Policy. Thus, this Panel understands the statement
cited next above in the PerkinElmer case to be guided by the
circumstances and the facts in that case, which are similar to the
circumstances of this case.
This Panel finds that Respondent’s
continuing allegations of ignorance of the rights and existence of trademark
holders when registering
domain names constitutes a pattern of willful conduct
from which can be drawn the inference that this sophisticated Respondent either
acquires actual knowledge of the trademark rights of others prior to
registering domain names which might infringe upon the mark,
or simply
willfully refuses to make itself aware of such trademark registrants so that a
defense to bad faith can be asserted in
the domain dispute hearing. The Panel finds that Respondent’s conduct is
evidence of bad faith. Bad faith
registration is found. Respondent has
admitted bad faith use, though it refuses to accept responsibility for such
use.
The Panel finds that Complainant has
proven and must prevail under 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 <docfind.com>
domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Chairman, for the
Panel Majority.
Panelist M. Kelly Tillery Member
Dated: November 20, 2004
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