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Generic Top Level Domain Name (gTLD) Decisions |
Downey Communications, Inc. v. Modern
Limited-Cayman Web Development
Claim Number: FA0404000260657
PARTIES
Complainant
is Downey Communications, Inc. (“Complainant”),
represented by Patrick J. Jennings, of Pillsbury Winthrop LLP,
1600 Tysons Boulevard, Suite 100, McLean, VA 22102. Respondent is Modern
Limited-Cayman Web Development (“Respondent”), represented by Ari Goldberger, of ESQwire.com P.C., 35 Cameo Drive,
Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <militarylife.com>,
registered with Address Creation.
PANEL
The
undersigned certifies that they have acted independently and impartially and to
the best of their knowledge have no known conflict
in serving as Panelist in
this proceeding.
Houston
Putnam Lowry, Chartered Arbitrator and Chair, Diane Cabell and Sandra Jo
Franklin as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 23, 2004; the Forum received
a hard copy of the
Complaint on April 26, 2004.
On
April 25, 2004, Address Creation confirmed by e-mail to the Forum that the
domain name <militarylife.com>
is registered with Address Creation and that Respondent is the current
registrant of the name. Address
Creation has verified that Respondent is bound by the Address Creation
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
April 30, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 20,
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@militarylife.com by e-mail.
A
timely Response was received and determined to be complete on June 3, 2004.
On Thursday, June 17, 2004, pursuant to Complainant’s
request to have the dispute decided by a three-member
Panel, the Forum appointed Houston
Putnam Lowry, Chartered Arbitrator and Chair, Diane Cabell and Sandra Jo
Franklin as Panelists.
Complainant
submitted a late reply on June 21, 2004, which the Panel elected to consider.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1.
Introduction
This Complaint concerns Respondent’s
blatant bad faith registration of a domain name consisting of Complainant’s
distinctive trademarks.
Complainant has been using its U.S. registered MILITARY
LIFESTYLE mark in connection with, among other things, a monthly special
interest magazine for military families since April 1, 1980. Complainant has
also applied to register the mark MILITARY LIFE with
the United States Patent
and Trademark Office for use in connection with, among other things, providing
information about the goods
and services of others via the global computer
network of interest and of use to military personnel and providing a Web site
on a
global computer network featuring information of interest to military
personnel and their dependents. On May 30, 2002, Respondent
registered the <militarylife.com>
domain name. To the best of Complainant’s knowledge, Respondent has never
linked the domain name to an active Internet site.
2. Complainant’s
Business and Mark
Complainant is a leader in military
resale publishing, marketing and market analysis.
Complainant is the owner of United
States Trademark Registration No. 1,450,675 on the Principal Register for the mark
MILITARY LIFESTYLE for use on or in connection with a monthly special interest
magazine for
military families.
Complainant applied to register the MILITARY LIFESTYLE mark with the
United States Patent and Trademark Office on May 22, 1986, and
the mark was
registered on August 4, 1987. Complainant has used this mark in commerce
continuously since April 1, 1980. On September
2, 1993, Complainant renewed
Registration No. 1,450,675 with
the United States Patent and Trademark Office.
Complainant is also the owner of a
pending intent-to-use trademark application, Serial No. 76/456,285, for the mark MILITARY LIFE for use on or
in connection with promoting the sale of goods and services of others through
the distribution
of coupons; providing information about the goods and services
of others via the global computer network of interest and of use to
military
personnel and their dependents; providing a website on the global computer
network featuring information of interest to
military personnel and their
dependents; providing information of interest to military families and their
dependents via the Internet;
providing on-line, non-downloadable magazines of
interest to military personnel and their dependents; and publication of
magazines.
Complainant began using the MILITARY LIFE mark in commerce on
October 9, 2002 on the Militarylifestyle.com Web site.
The registered mark MILITARY
LIFESTYLE and the pending mark MILITARY LIFE are inherently distinctive marks
and as such are entitled
to the maximum level of protection afforded to any
trademark.
Complainant owns and operates the
<militarylifestyle.com> domain name.
Complainant has invested extensive resources to publicize the MILITARY LIFE and MILITARY LIFESTYLE marks and has
widely dispersed the MILITARY LIFE and MILITARY LIFESTYLE marks in manners
designed to ensure
their automatic identification in the minds of consumers
with Complainant’s products and services.
3. Respondent
Respondent has been the subject of numerous ICANN
complaints pertaining to the questionable registration of more than 2,200 domain names
that look similar to
well-known trademarks and names.
4. Respondent’s Website
On May 30, 2002, Respondent
registered the <militarylife.com>
domain name, which is virtually identical to Complainant’s MILITARY LIFE mark
and confusingly similar to Complainant’s federally registered MILITARY LIFESTYLE mark. Respondent’s
registration of <militarylife.com>
occurred
more than twenty years after Complainant first used the MILITARY
LIFESTYLE mark, and more than twelve years after the MILITARY LIFESTYLE mark
was registered
on the Principal Register.
There is no
evidence that Respondent has any trademark or
other right in the name MILITARY LIFE or <militarylife.com>.
Currently, the website at <militarylife.com> is not active
and to Complainant’s knowledge has never been actively used.
The <militarylife.com> domain name is confusingly similar to
Complainant’s federally registered MILITARY LIFESTYLE trademark and identical
to Complainant’s
pending MILITARY LIFE mark, as required by Policy ¶ 4(a)(i).
Generally, confusion as to source of origin or sponsorship is likely
to occur
if two marks are confusingly similar in sound, appearance, meaning or
commercial impression, and the services in connection
with which they are
either used or intended to be used are closely related. In this case, the
domain name and Complainant’s mark
are confusingly similar in sound,
appearance, meaning and commercial impression. The domain name and
Complainant’s mark contain the
same dominant elements, namely, the words
“MILITARY” and “LIFE”
in the same order. These
words sound the same, look the same, have the same meaning and create the same
distinct commercial impressions.
Moreover, the fact the domain name
incorporates less than all of Complainant’s mark does not lessen the likelihood
that average consumers
will confuse the mark and the domain name.
Thus, when viewed in their
entireties, the domain name and Complainant’s mark are confusingly similar. In
addition, the only difference
between the domain name and Complainant’s pending mark is the absence of a
space between the word “military” and
the word “life,” which is not permitted in second-level domains. Otherwise, the domain name and the pending
mark are identical in all regards.
5.Lack
of Rights in Domain Name
Respondent
is not a licensee of Complainant, nor is it otherwise authorized to use Complainant’s marks.
Because the <militarylife.com> domain name does not resolve to an active
website, Respondent has not used the domain name in connection with a bona fide offering of goods or services or for
a legitimate noncommercial purpose.
There is no indication that
Respondent is commonly known as MILITARY LIFE.
Respondent cannot be found under
MILITARY LIFE in local telephone directories.
Respondent has neither applied for
nor registered any trademarks or service marks using the name MILITARY LIFE with either the United States
Patent and Trademark Office or any State agency.
As a result, Respondent does not
have any rights or legitimate interests in the <militarylife.com> domain name sufficient to satisfy ¶4(a)(ii)
of the Policy.
6.Bad
Faith Registration and Use
Respondent has not used the <militarylife.com> domain name
for any purpose
since it registered the name
on May 30, 2002. Indeed, Respondent is a known cyber squatter who has
registered more than 2,200 domain
names that look similar to well-known
trademarks and names. Such passive holding is a prima facie case of bad faith under the policy.
As a result, Respondent’s <militarylife.com> domain name
has been registered and is being used in bad faith as required by paragraph
4(a)(iii) of the Policy.
B. Respondent
1.Summary
of Argument
This is a case
of blatant Reverse Domain Name Hijacking.
Complainant has misrepresented the status of its trademark
application for MILITARY LIFE (No. 76456285) to the Panel and violated its
certification that the information
contained in the Complaint is “complete and
accurate.” Complainant has alleged “a
copy of the application information from the United States Patent and Trademark
Office’s TESS database”
has been provided.
But that information is incomplete and misleading. Complainant failed to
advise the Panel that on March 9, 2004 – prior to the date
it submitted the
Complaint – the US Patent and Trademark Office (“PTO”) issued an office action
“making FINAL a refusal to register
the mark” on the grounds that the mark is
merely descriptive of Complainant’s services.
The PTO’s refusal to register the mark flies smack in the face of
Complainant’s allegation that the mark MILITARY LIFE is “inherently
distinctive” and “entitled to the maximum level of protection afforded to any
trademark.” According to the PTO, that
mark is entitled to no protection.
Quite to the contrary, the PTO expressly acknowledged that others should
“have the freedom to use [such] common descriptive language
when merely
describing their own good or services…”
Accordingly,
the Complaint should be dismissed and the Panel should issue a finding that
Complainant has engaged in reverse domain
name hijacking, having abused these
proceedings by knowingly relying on a trademark application for a proposed
trademark, which the
PTO has refused to register.
Moreover,
notwithstanding Complainant’s misrepresentation concerning its trademark, the
marks “MILITARY LIFE” and “MILITARY LIFESTYLE”
are descriptive terms for
matters related to the military i.e. “military life” and “military lifestyle.”
Descriptive terms provide
no enforceable trademark rights under the Policy even
where a Complainant has a registered trademark. To provide such rights under
the Policy would essentially grant trademark owners a monopoly on a generic or
descriptive term, which would exceed the limited rights
to use a mark for only
specific classes of goods and services granted in connection with a federal
registration. Absent enforceable
trademark rights, the Complaint must fail.
Moreover, Complainant’s “MILITARY LIFESTYLE” mark is very different from
the disputed domain and, thus, not confusingly similar.
Second,
Respondent has rights and a legitimate interest in the disputed domain because
it incorporates the common term “military life”
and Respondent uses the
disputed domain in connection with an affiliate advertising program which
present links to promote goods
and services related to the military, thus
satisfying the requirement of use in connection with a bona fide offering of
goods or
services. This use is contrary
to Complainant’s incorrect allegation that Respondent has “made no use of the
domain name.”
Third,
Respondent did not register, and has not used, the disputed domain in bad
faith. To prove bad faith registration
and use of a common term domain name, Complainant must prove either that the
disputed domain was registered
specifically to sell to Complainant, or that the
value of the disputed domain derives exclusively from the fame of Complainant’s
mark. There is no evidence to support
either basis for bad faith registration and use. Respondent simply registered the disputed domain because it
incorporates a common descriptive term. Complainant’s only allegation
of bad
faith is that Respondent has made no use of the domain name and that this
“passive holding” permits an inference of bad faith
registration. However, as noted above, Respondent is using
the disputed domain in connection with advertising links that promote goods and
services
related to the military.
Accordingly, there is no basis for establishing bad faith registration.
Finally,
Respondent has cited a Cayman Islands newspaper article referencing the fact
that Respondent owns over 2,000 domain names.
However, Respondent registers domain names based on its belief that are
common words or descriptive terms which do not interfere with
the trademark
rights of others. The Panel is, therefore, requested to decide this proceeding
based solely on the facts and arguments
presented here.
2. Facts
Complainant’s
purported trademark for MILITARY LIFE has been refused registration by
the PTO. On March 9, 2004 – prior to
the date this Complaint was filed – the PTO issued an “office action making
FINAL a refusal to register
the mark.”
The Office Action letter states:
Registration was
refused under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), because the
subject matter for which registration is sought is merely descriptive of the
identified goods and services.
The PTO explained that the “dictionary
definitions” of the words in the combined term:
clearly illustrate
that the mark describes the subject of the information provided in the
applicant’s services …, namely “information
about goods and services of interest
to military personnel and their dependents. . .
The PTO concluding by stating the “mark
immediately names the exact nature of the services. Therefore the refusal to register the mark . . . is made FINAL.”
(emphasis in original)
Notwithstanding that
the PTO refused to register the mark MILITARY LIFE, Complainant alleged that
this trademark was “pending,” “inherently
distinctive,” and “entitled to the
maximum level of protection afforded to any trademark,” facts directly in
conflict with the findings
of the PTO. Complainant withheld from its Complaint
the fact that the PTO issued a final refusal to register the mark.
Other evidence of the
descriptive nature of the term “military life” – if necessary -- is evident
from the substantial third party
use of the term. A search on Google.com for the term “military life,” excluding
the word “lifestyle” to eliminate references to Complainant, yielded
over
220,000 third party uses of the term.
Examples of third party uses include:
Military
Life Insurance Premiums
Military
Life topics
Military
Life [of] Aztecs
Military
Life at the Royal Military College of Canada
Military
Life in the Valley of the Shadow
Military
Life at Isley Field, Saipan
The PTO also noted this third party use
in denying registration of the mark “military life.” The Office Action letter states:
A search of the World Wide Web using the
terms “military life” retrieved numerous hits featuring goods and services
available to military
personnel and their dependents as well as general educational
information about the life of military personnel. From information on government benefits, careers, military sales,
health risks, relocation, and travel to information on family live.
Respondent
selected the disputed domain because it incorporates a common descriptive
term. Respondent uses the disputed
domain in connection with an affiliate advertising program operated by
Google.com. Respondent did not register
the disputed domain for the purpose of selling it to Complainant. Respondent did not register the disputed
domain with the intent to disrupt Complainant’s business, or to confuse
consumers seeking
to find Complainant’s website. Respondent did not register the disputed domain to prevent
Complainant from owning a domain name incorporating its alleged trademark.
3.
Basis for Respondent to Retain Registration and Use of Disputed Name
Under
the Policy, to prevail on its claim to obtain the rights to the disputed
domain, Complainant must demonstrate three things:
1.
that
the disputed domain name is identical or confusingly similar to its trademark;
and
2.
that
respondent has no rights or legitimate interest in the domain name; and
3.
the
domain name was registered and is being used in bad faith.
(Policy, ¶¶4(a)(i)-(iii).) Complainant bears the burden of proof as to
each element of its claim.
a. Complainant Has No
Enforceable Rights to the Under the Policy Because its Mark is Generic or
Descriptive
Complainant merely has a
trademark application for MILITARY LIFE.
At the outset, trademark applications provide no trademark rights until
a registration issues. Here, the
trademark application has been refused registration by the PTO, which
deemed it to be unregistrable on the grounds that it is merely
descriptive. Accordingly, rather than
providing Complainant with trademark rights, this denied application
constitutes strong evidence that Complainant
lacks rights to the term
MILITARY LIFE.
As the PTO explained, the mark is
descriptive because it:
describes the subject of the information
provided in the applicant’s services …, namely “information about goods and
services of interest
to military personnel and their dependents. . .
Neither of Complainant’s marks provide
enforceable rights since they both similarly describe Complainant’s
services. Under the Policy, descriptive and generic terms provide no rights
even if the mark is registered.
Accordingly, because
Complainant’s alleged trademarks are descriptive, Complainant has no
enforceable trademark rights under the Policy,
and the Complaint must,
therefore, be dismissed.
b. Respondent Has
Rights And A Legitimate Interest In The Domain Name
The second element
Complainant must prove is that Respondent has no rights or legitimate interest
in the name. The Complaint fails
here, as well. ¶4(c) of the Policy lists three circumstances that can
demonstrate a registrant’s rights or legitimate interest in the disputed domain
name:
(i)
before
any notice to you of the dispute, your use of, or demonstrable preparations to
use, the domain name or a name corresponding
to the domain name in connection
with a bona fide offering of goods or services;
(ii)
you
(as an individual, business or other organization) have been commonly known by
the domain name, even if you have acquired no trademark
or service mark rights;
(iii)
You
are making a legitimate noncommercial or fair use of the domain name, without
intent for commercial gain to misleadingly divert
consumers or to tarnish the
trademark or service mark.
(Policy ¶4(c)(i) - (iii).)
Because
“military life” is a common generic or descriptive term, and is not exclusively
used by Complainant, Respondent, ipso facto, has rights and a legitimate
interest in the disputed domain.
The principal that the mere ownership of
a common term domain should, in and of itself, establish the owner’s rights and
legitimate
interest has been recognized by several ICANN panels. As one such Panel explained:
Where the domain name and trademark in
question are generic—and in particular where they comprise no more than a
single, short, common
term—the rights/interests inquiry is more likely to favor
the domain name owner. The ICANN Policy is very narrow in scope; it covers
only
clear cases of “cybersquatting” and “cyberpiracy,” not every dispute that might
arise over a domain name. See, e.g., Second
Staff Report on Implementation
Documents for the Uniform Dispute Resolution Policy (Oct. 24, 1999). Shirmax
Retail Ltd. v. CES Marketing, Inc., Case No. AF-0104 (e-Resolution March
20, 2000)[i]
(THYME.COM). See also General Machine Prods Co. v. Prime
Domains, Case No. 92531 (NAF Jan. 26, 2000)(CRAFTWORK.COM);[ii]
Car Toys, Inc. v. Informa Unlimited, Inc., Case No. FA93682 (NAF Mar.
20, 2000) (CARTOYS.COM);[iii]
CRS Technology Corp. v. Condenet, Inc., Case No. FA9347 (NAF March 28,
2000)(CONCIERGE.COM);[iv] Nicholas V. Perricone, M.D. v. Martin
Hirst, Case No. FA0095104 (NAF Sept. 1, 2000)(‘WRINKLECURE.COM);[v]
Zero International Holding GmbH & Co.
Kommanditgesellschaft v. Beyonet Services and Stephen Urich, Case No. D2000-0161 (WIPO. May 12, 2000)(ZERO.COM);[vi]
Primedia Special Interest Publications, Inc. v. John L. Treadway, Case No. D2000-0752 (WIPO Aug. 21,
2000)(SHUTTERBUG.COM)[vii];
First American Funds, Inc. v.
Ult.Search, Inc., Case
No. D2000-1840 (WIPO April 20, 2001)(FIRSTAMERICAN.COM).[viii]
The right to use the common descriptive
term by third parties was expressly noted by the PTO in the Office Action
Letter, which stated
that “businesses and competitors [should] have the freed
to use [such] common descriptive language when merely describing their own
goods or services to the public.” This
is what Respondent is doing here.
Moreover, prior to the initiation of this
dispute Respondent has used the disputed domain in connection with Internet
advertising,
which relates precisely to the descriptive meaning of the disputed
domain. The web page at <militarylife.com> presents
advertisements for goods and services related to the military. The use of a descriptive term domain name in
connection with third party advertising services constitutes use in connection with a bona fide offering of goods or
services, pursuant to ¶4(c)(i).
Accordingly, because
Respondent has a legitimate interest in the Disputed Domain, the Complaint
should be denied.
c.
Complainant Has Not
Demonstrated That The Domain Name
Was
Registered and Is Being Used In Bad Faith
The
third element that Complainant must show is Respondent’s bad faith registration
and use. The Complaint fails on this
count as well. The Policy identifies
four circumstances that may constitute evidence of bad faith registration and
use:
(i)
circumstances indicating that you have registered or you have acquired the
domain name primarily for the purpose of selling, renting,
or otherwise
transferring the domain name registration to the complainant who is the owner
of the trademark or service mark or to
a competitor of that complainant, for
valuable consideration in excess of your documented out-of-pocket costs
directly related to
the domain name; or
(ii)
you have registered the domain name in order to prevent the owner of the trademark
or service mark from reflecting the mark in
a corresponding domain name,
provided that you have engaged in a pattern of such conduct; or
(iii)
you have registered the domain name primarily for the purpose of disrupting the
business of a competitor; or
(iv)
by using the domain name, you have intentionally attempted to attract, for
commercial gain, Internet users to your web site or
other on-line location, by
creating a likelihood of confusion with the complainant's mark as to the
source, sponsorship, affiliation,
or endorsement of your web site or location
or of a product or service on your web site or location.
(Policy ¶¶4(b)(i) - (iv).)
There is absolutely no evidence that
Respondent registered the disputed domain to sell to Complainant. Nor is there any evidence that Respondent
had even heard of Complainant or its purported trademark when it registered the
disputed
domain. Absent direct proof
that a descriptive term 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.
The three-member panel, in ruling in favor of the owner of the common
term domain name <instead.com> held:
A bad faith showing would require the
Complainant to prove that the Respondent registered instead.com specifically
to sell to the Complainant, or that the value of "instead" as a
domain derived exclusively from the fame of its trademark. Neither has been proven in this case. In the absence of an intent to capitalize on
the Complainant’s trademark interest, the Complainant cannot assert an
exclusive right
over a domain name that is a common, generic term. (emphasis added).
Here,
the undeniable fact is that “military life” is an extremely common descriptive
term, appearing on over 220,000 third party web
pages unrelated to
Complainant. Complainant has presented
no specific evidence of bad faith, merely suggesting that an “inference” be
drawn from Respondent’s alleged
“passive holding of [the] domain name.” However, Respondent is not passively
holding the disputed domain. It is
using the disputed domain in connection with an affiliate program operated by
Google.com, which provides advertising links related
to “military life.” This is not a passive holding. In fact, as noted above, several decisions
have recognized such use as constituting the bona fide offering of goods and
services.
Finally, Complainant points to a Cayman
Island newspaper article that refers to over 2,000 other domain names
registered by Respondent. However, the
mere registration of other domain names does not constitute evidence of bad
faith. An administrative Panel must
decide “each case on its own merits.”
Accordingly, for all the above reasons,
Complainant has failed to meet its burden of proving bad faith registration and
use and, the
Complaint must, therefore, be dismissed.
4.Reverse Domain Name Hijacking
Complainant has brought forth a
Complaint without any merit because it did so with the knowledge that it has no
enforceable trademark
rights under the Policy.
This constitutes reverse domain name hijacking. “Military Life” is a descriptive term
and the PTO determined it to be descriptive, after providing Complainant with
substantial opportunity to argue otherwise.
Worst of all, Complainant argued to this Panel that MILITARY LIFE is
“inherently distinctive” and “entitled to the maximum protection
afforded any
trademark.” That was not true. Complainant knew that, prior to filing the
Complaint, the PTO had reached a strikingly contrary conclusion, holding that
MILITARY
LIFE was not entitled to be registered as a trademark because it is
“merely descriptive.” The PTO expressly
recognized the rights of third parties to use this descriptive term, but
Complainant has attempted to use this refused application to
preclude such use. It is difficult to
imagine a more fitting set of facts to support a finding of reverse domain name
hijacking.
This
Panel should, therefore, find that Complainant has abused these proceedings by
i) bringing forth a Complaint based solely on
a descriptive term to which it
has no trademark rights and to which it knew it had no trademark rights, ii) by
withholding material
evidence that underscores the Complainant’s lack of the
trademark rights necessary to support a lawful complaint under the Policy;
and
iii) for using a trademark application for mark to create the appearance that
the application confers rights upon Complainant
when, in fact, not only does
the application contain no such rights but it supports the opposite: that
Complainant has no trademark
rights to the descriptive term “military life.”
FINDINGS
Complainant
has proven each of the following three elements necessary 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; and
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.
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; and
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 established rights in the MILITARY
LIFESTYLE mark through registration of the mark with the United States Patent
and Trademark
Office on August 7, 1987 (Reg. No. 1,450,675) and a pending
application for the MILITARY LIFE mark filed October 2, 2002 (Ser. No.
76/456,285). See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
2002) (“Under U.S. trademark law, registered marks hold a presumption that they
are inherently
distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption.); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that Complainant's trademark or
service mark be registered
by a government authority or agency for such rights
to exist. Rights in the mark can be
established by pending trademark applications.)
Complainant
has used the MILITARY LIFESTYLE mark in commerce since 1980 and the MILITARY
LIFE mark in commerce since 2002 (although
that use occurred after the domain
name in question was registered, so the Panel is not considering that mark in
this decision).
The
disputed domain name is confusingly similar to Complainant’s MILITARY LIFESTYLE
mark because, with the exception of the omission
of the generic word “style”
from the mark, the domain name fully incorporates the mark and merely adds the
generic top-level domain
(“gTLD”) “.com.”
See Hammond Suddards Edge
v. Westwood Guardian Ltd., D2000-1235 (WIPO Nov. 6, 2000) (finding that the
domain name, “hammondsuddards.net,” is essentially identical to Complainant's
mark,
Hammond Suddards Edge, where the name “Hammond Suddards” identifies
Complainant independently of the word “Edge”); see also Wellness Int’l Network, LTD v.
Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the
domain name <wellness-international.com> is confusingly similar
to
Complainant’s “Wellness International Network”); see also Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain
name for the purpose of determining
whether it is identical or confusingly similar).
Respondent is
not authorized or licensed to register or use a domain name that incorporates
Complainant’s mark. Respondent is not
commonly known by the domain name.
Therefore, Respondent lacks rights or legitimate interests in the domain
name pursuant to Policy ¶4(c)(ii). See
Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known
by the mark); see also
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶4(c)(ii) "to require a showing that one has been commonly known
by
the domain name prior to registration of the domain name to prevail").
Respondent has not used the domain name
in connection with a bona fide offering of goods or services pursuant to
Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy
¶4(c)(iii). See Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when
Respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i)
requires
Respondent to show 1) ‘demonstrable’ evidence of such preparations to
use the domain name, and 2) that such preparations were undertaken
‘before any
notice to [Respondent] of the dispute’”); see also Open Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11,
2000) (finding that Respondent did not establish rights and legitimate
interests in the domain name where
Respondent mentioned that it had a business
plan for the website at the time of registration but did not furnish any
evidence in
support of this claim).
Prior to filing this complaint,
Respondent did not make use of the <militarylife.com> domain name. After this complaint was filed, Respondent
established a page consisting of “click through links” registered with an
affiliate advertising
website.
Respondent did not specify when the “click through links” were first put
into service.
Simply having a web page that has “click
through links” that yield a commission to Respondent is not sufficient to show
a bona fide offering of goods and services. Such web sites are easily constructed and there is nothing which
shows the website was erected for any purpose other than to prevent
the domain
name from being transferred (especially since it was erected after the
complaint was filed).
The domain name is confusingly
similar to Complainant’s MILITARY LIFESTYLE mark because it offers the same
types of goods and services,
meaning Respondent is using the domain name for
commercial benefit by causing Internet user confusion. Use of a domain name that is confusingly
similar or identical to another’s mark for unauthorized commercial gain does
not constitute
a bona fide offering of goods or services pursuant to
Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy
¶4(c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding
that, because Respondent's sole purpose in selecting the domain names was to
cause confusion with Complainant's
website and marks, its use of the names was
not in connection with the offering of goods or services or any other fair
use); see also Computer Doctor Franchise Sys., Inc. v.
Computer Doctor, FA
95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that Respondent’s website, which
is blank but for links to other websites, is
not a legitimate use of the domain
names); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat.
Arb. Forum Dec. 31, 2002) (finding that Respondent’s diversionary use of
Complainant’s marks to send Internet users
to a website which displayed a
series of links, some of which linked to competitors of Complainant, was not a
bona fide offering
of goods or services).
Much has been said by the parties
about the fact Complainant’s MILITARY
LIFE mark is not registered or that it is a weak mark. Both are true. However, a party need not have a registered trademark to prevail
in a UDRP proceeding, Roberts v. Boyd, WIPO Case No. D2000-0210 (May 29,
2000). The Complainant merely has to
have some right in the domain name. Likewise, Respondent cannot have any rights in the domain name. That
is true in this case.
Respondent’s
business model is to register thousands of domain names which are similar (but
not identical to) weak, descriptive registered
trademarks. A fairly generic web site of “click through
links” is established with a company that will pay a commission on each sale
generated
by a click through. Yet the
business model does not need to generate significant revenue from such
links. The implication is that selling
the domain names generates the majority of the revenue, which Respondent has
failed to rebut. The majority of the
Panel believes such practice is not a bona fide offering of goods and
services.
Respondent
registered the disputed domain name in bad faith because Respondent has
passively held the domain name since the time of
registration. See
DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000)
(concluding that Respondent’s passive holding of the domain name satisfies the
requirement of ¶4(a)(iii)
of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000)
(finding that Respondent made no use of the domain name or website that
connects with the
domain name, and that passive holding of a domain name
permits an inference of registration and use in bad faith); see also Sporty's Farm LLC v. Sportsman's Mkt., Inc.,
[2000] USCA2 33; 202 F.3d 489 (2nd Cir. 2000) cert. denied, 120 S.Ct. 2719 (2000), (finding bad
faith where the domain name was not used until after litigation began and the
domain name does not consist of
the legal name of the party).
Respondent’s
competitive use of the domain name for military-related services is an effort
to disrupt Complainant’s business pursuant
to Policy ¶4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by
attracting Internet users to a website that
competes with Complainant’s
business); see also Surface
Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001)
(finding that, given the competitive relationship between Complainant and
Respondent, Respondent
likely registered the contested domain name with the
intent to disrupt Complainant's business and create user confusion).
Respondent’s
registration of the disputed domain name, a domain name that incorporates
Complainant’s mark and deviates only with the
omission of a generic or
descriptive term, suggests that Respondent knew of Complainant’s rights in the
MILITARY LIFESTYLE mark. See
Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb.
11, 2002) (finding that "[w]here an alleged infringer chooses a mark he
knows to be similar to another, one can
infer an intent to confuse"); see
also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)
(holding that “there is a legal presumption of bad faith, when Respondent
reasonably should
have been aware of Complainant’s trademarks, actually or
constructively”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr.
24, 2002) (finding that because the link between Complainant’s mark and the
content advertised on Respondent’s
website was obvious, Respondent “must have
known about the Complainant’s mark when it registered the subject domain
name”).
Additionally, the Panel infers
Respondent’s use of the disputed domain name is to attract, for commercial
gain, Internet users by
creating a likelihood of confusion with Complainant’s
mark as to the source, sponsorship, affiliation or endorsement pursuant to
Policy ¶4(b)(iv). See G.D. Searle
& Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that Respondent registered and used the domain name in bad faith
pursuant to
Policy ¶4(b)(iv) because Respondent was using the confusingly
similar domain name to attract Internet users to its commercial website);
see
also Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
Respondent directed Internet users seeking Complainant’s site
to its own
website for commercial gain).
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 <militarylife.com>
domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered
Arbitrator, Panel Chair
Sandra Jo Franklin, Panelist
Dated: June 28, 2004
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