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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FMV Opinions, Inc. v. the Fair Market Valuation experts
Case No. D2002-0372
1. The Parties
The complainant is FMV Opinions, Inc., a California corporation, with its principal place of business at 4199 Campus Drive, Suite 210, Irvine, California 92612, United States of America ("the Complainant"). The Complainant is represented by Charles C. Fowler of Lyon & Lyon, LLP of 1900 Main Street, Sixth Floor, Irvine, California 92614, United States of America.
The respondent is identified as the business "the Fair Market Valuation experts" having a postal address of P.O. Box 795923, Dallas, Texas 75379-5923, United States of America ("the Respondent").
2. The Domain Name and Registrar
The disputed domain name is <fmv.com> (the "Disputed Domain Name"), registered with Tucows, Inc., 96 Mowat Avenue, Toronto, Ontario, Canada M6K M31 ("Registrar").
3. Procedural History
Complainant filed a complaint ( "the Complaint") with the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") on April 20, 2002.
The Center verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Uniform Policy"), the ICANN Rules for Uniform Domain Name Dispute Resolution Policy ("the Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
A request for Registrar verification was issued by the Center to the Registrar on April 23, 2002, and a response by the Registrar was received by the Center on April 23, 2002.
A notification of Complaint and commencement of administrative proceeding (the "Commencement Notification") was communicated by the Center to the Respondent by e-mail, and post mail on April 24, 2002. The Panel has seen the post mail receipt and is satisfied that the delivery of the Commencement Notification is in conformity with the relevant requirements under Paragraph 2 and Paragraph 4 of the Uniform Rules and the relevant provisions of the Supplemental Rules.
No response was received by the Center from Respondent on or before May 14, 2002, which was the last day for Respondent to submit a response under Paragraph 5 of the Uniform Rules and the relevant provisions of the Commencement Notification. A notification of Respondent’s default (the "Default Notification") was communicated by the Center to Respondent by email and post mail on May 16, 2002. The Panel is satisfied that the Default Notification was effectively delivered to Respondent as required by relevant provisions of the Uniform Rules and the Supplemental Rules.
Complainant has elected to designate a single-member Administrative Panel in accordance with Paragraph 3(b)(iv) of the Uniform Rules. By failing to submit a response on time, Respondent waived the right to designate a three-member Administrative Panel under Paragraph 5(b)(iv) of the Uniform Rules. Based on a Statement of Acceptance and Declaration of Impartiality and Independence, duly signed by the Panelist and dated May 22, 2002, the Administrative Panel (the "Panel") was duly appointed by the Center on May 23, 2002. A notification of appointment of administrative panel and projected decision date was communicated by the Center to both Complainant and Respondent on May 23, 2002. There have been no further submissions thereafter.
4. Factual Background
Under Paragraph 5(e) of the Uniform Rules, "[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the complaint."
Since Respondent failed to submit a response before the date of this decision, the Panel adopts here the following asserted facts in the Complaint as undisputed facts, and decides the dispute between Complainant and Respondent based on the following undisputed facts:
(i) Complainant is the owner of common law trademark and service mark rights in the FMV mark ("Mark"), which it has used for over ten years. Complainant uses the Mark in connection with its business and real estate valuation and other services, and in connection with its publications.
(ii) Complainant registered and owns the following service mark registration:
United States Service mark Registration No. 2,325,841, issued March 7, 2000, for the mark FMV in stylized letters for "financial valuation of personal property and real estate; fiscal assessment and evaluation of businesses," in International Class 36, with a first use in commerce date of January 2, 1991.
(iii) Respondent registered the Disputed Domain Name on February 8, 2000, and is listed on the registration as the Fair Market Valuation experts, no individual contact is identified. Respondent does not provide a telephone number or fax number.
(iv) Complainant attempted to contact Respondent to obtain a transfer of the Disputed Domain Names and to have Respondent cease any use of Complainant’s protected Mark. Respondent did not respond to the letter.
5. Parties’ Contentions
(i) The Disputed Domain Name is identical or confusingly similar to Complainant’s name and registered service mark. Complainant’s service mark registration issued on March 7, 2000, from an application filed on November 23, 1998, and was first used in commerce at least as early as January, 1991. Although the registration is for the stylized design shown in the registration, the word portion of the Mark is predominant. Prior panels have routinely found identity or confusing similarity between domain names and trademarks incorporating stylized forms or designs. (See, e.g., CBS Broadcasting, Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834 (Sept. 4, 2000); The Marigny Corporation v. Discount Coffee.com, Inc., WIPO Case No. D2001-0354 (May 17, 2001); WestJet Air Center, Inc. v. West Jets LLC, NAF CaseNo. FA0103000096883 (April 25, 2001)).
Complainant has earlier common law rights in the FMV trademark and service mark, by virtue of the inherently distinctive character of the Mark, and of its early use of the Mark. Common law rights are sufficient in order to invoke the Uniform Policy. (See, e.g., MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205 (May 11, 2000)). Therefore, it is beyond dispute that in addition to its federal registration, Complainant owns state and federal common law rights in the Mark.
Complainant’s Mark is inherently distinctive (i.e., non-descriptive) in the sense that it does not "define qualities or characteristics of [the goods or services] in a straightforward way that requires no exercise of the imagination to be understood." Kendall-Jackson Winery v. E & J Gallo Winery, 150 F.3d 1042, 1047 (9th Cir. 1998). The term FMV has no descriptive meaning, rather it is arbitrary, having no relevance to any feature or characteristic of the associated goods or services, id., or, at most, suggestive of those goods or services. Complainant’s rights in the Mark were created at least as early as January, 1991, when it began using the Mark in association with its business and financial valuation services and it has continuously used the Mark from the time those rights were created. Complainant has also invested considerable time, effort, and at least $1.1 million in advertising and publicizing its Mark since 1991. Even if Complainant’s Mark was found to be descriptive, by virtue of its extensive use of the Mark for more than ten years, the Mark has generated substantial secondary meaning, rendering it distinctive and subject to protection.
Respondent’s Disputed Domain Name is identical or confusingly similar to Complainant’s Mark. In making this analysis, it is proper to disregard the ".com" portion of the domain name and the mark as "an irrelevant distinction which does not change the likelihood of confusion." Microsoft Corporation v. Amit Mehrota, WIPO Case No. D2000-0053 (April 10, 2000). This leaves only the identity between the Disputed Domain Name and its Mark, at minimum, confusingly similar to Complainant’s registered service mark.
(ii) Respondent does not demonstrate any legitimate interests in the Disputed Domain Name. Respondent does not have any intellectual property or other rights in the Disputed Domain Name, nor is Respondent using it in a manner consistent with any legitimate interests.
Respondent has constructed a mock-up web page stating that "We are currently in development." The web page is clearly pretextual and falls short of demonstrating any preparations to use the domain name in connection with a bona fide offering of goods or services as required by the Uniform Policy. Respondent registered the Disputed Domain Name more than two years ago and has yet to develop the site in any way. The fact that a site was still "under construction" or "under development" more than one year since registering the domain name was strong evidence of lack of legitimate interests and would not satisfy the Uniform Policy. (See, e.g., Banque Bruxelles Lambert S.A. and One Two Trade S.A. v. AIB and M123 Multimedia Inc., WIPO Case No. D2000-1818 (March 13, 2001); Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems, WIPO Case No. D2001-0932 (October 8, 2001)).
Respondent has provided a click-through advertisement on its Disputed Domain Name website, which users are diverted to another website, http://www.sell.com, which various goods and services are offered for sale in an "online classifieds" style. The diversion is not direct and the user is diverted by way of another site, http://www.stride.com. The <stride.com> domain name is registered to an entity at the same Post Office Box as Respondent. That same Post Office Box is also the address for another domain name registrant, <apparelmart.com> which has a website constructed very similar to Respondent’s with a click-through link to <sell.com.>
Respondent has constructed at least two websites for the purpose of improperly diverting users through click-through advertising to the <sell.com> website. These arrangements typically provide revenues to the diverting website owner, through fees paid by the destination website, which is <sell.com.> These arrangements have been consistently held not to constitute rights or legitimate interests under the Uniform Policy. (See, e.g., Park Place Entertainment Corporation v. Bowno, WIPO Case No. D2001-1410 (January 29, 2001); Royal Bank of Canada v. Personal, WIPO Case No. D2001-0761 (July 24, 2001)). Even in the absence of a fee paid by <sell.com,> Respondent’s use of Complainant’s Mark to divert users from the Disputed Domain Name to <sell.com> cannot constitute a legitimate use of the Disputed Domain Name. (See Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (September 18, 2000) (to be a "legitimate use" of a protected mark under the Policy, the use must be non-infringing).
Finally, Complainant believes that Respondent was never commonly known by the Disputed Domain Name, therefore Respondent does not have a right or legitimate interest in the Disputed Domain Name under paragraph 4(c)(ii) of the Uniform Policy.
(iii) The Disputed Domain Name has been registered and is used by Respondent in bad faith. Respondent registered the Disputed Domain name for the sole purpose of attracting and diverting consumers, for commercial gain, to the <sell.com> website. These actions create a likelihood of confusion with Complainant’s Mark as to the source or sponsorship of the Disputed Domain Name, in direct contravention of Paragraph 4(b)(iv) of the Uniform Policy. (See, e.g., Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199 (November 28, 2001)).
The difficulty in determining the identity of the real party in interest is a fact common to several cases in which bad faith has been found. The Respondent is not a business that is registered with the Texas Secretary of State. In addition, no less than three separate domain name registrants list the same Post Office Box as Respondent. Moreover, the actual owner of the listed Post Office Box, according to the United States Post Office in Dallas, Texas, is yet another business, Emphasys Technology. None of the domain name registrations, including the registration for the Disputed Domain Name list a telephone or fax number by which the registrant may be contacted, nor do any of them include a named individual as a contact. The Respondent has made itself very difficult to locate and did not respond to the cease and desist letter sent by Complainant. These actions have consistently been held to constitute bad faith under the Uniform Policy. (See Park Place Entertainment Corporation v. Bowno (providing erroneous and incomplete contact information constitutes bad faith); Minnesota Mining & Manufacturing v. JonLR, WIPO Case No. D2001-0428 (May 30, 2001) (failure to respond to cease and desist letter)).
Finally, by registering the Disputed Domain Name and using the associated website in the manner it has, Respondent has disrupted the business of Complainant, in part by preventing Complainant from reflecting its mark in a corresponding domain name. Complainant has not obtained evidence of a pattern of such conduct on the part of Respondent, in part because Complainant cannot determine the real party behind Respondent to determine the extent of its domain name registration activities.
Nevertheless, Complainant submits that the impact of Respondent’s actions on Complainant’s business should be considered in determining Respondent’s bad faith. Respondent registered the Disputed Domain Name for no legitimate purpose, but instead to trade on Complainant’s goodwill by diverting consumers to another commercial site. Respondent, whoever it may be, has operated out of a Post Office Box shared by several other entities, the relationships between which are all too unclear. Respondent refuses to respond to Complainant’s request to cease using its infringing domain name, and offers no justification for its continued use. On these facts, Respondent’s bad faith is evident.
Pursuant to Paragraph 5(e) of the Uniform Rules, in the absence of a Response from the Respondent, "the Panel shall decide the dispute based on the complaint." The Panel will independently determine the merits of the Complaint on the basis of all evidence available.
6. Discussion and Findings
(i) The Disputed Domain Name is identical to the trademark in which Complainant has rights.
The Disputed Domain Name is identical or confusingly similar in its functional part to Complainant’s registered service mark. Although Complainant’s registration is for the stylized design shown in the registration, prior Panels have held that since domain names are limited to text and do not include any graphical element, any stylized mark that is to serve as the basis of a domain name must be reduced to a textual form. (See e.g., Playboy Enterprises International, Inc. v. Hector Rodriguez, WIPO Case No. D2000-1016 (November 8, 2000); Surface Protection Industries, Inc. v. The Webposters a/k/a Mark’s Paint Store, Inc., WIPO Case No. D2000-1613 (February 5, 2001)). Even apart from the inherent rights in Complainant’s service mark registration, the Complainant owns common law rights in the word mark "fmv." Paragraph 4(a) of the Uniform Policy does not limit its reach to registered marks only. It has now become a well-established principle, through numerous panel decisions, that the Uniform Policy encompasses unregistered common law marks that are established pursuant to national and/or state law that governs the recognition of those marks. Park Place Entertainment Corporation v. Bowno (holding such marks are indeed recognized and subject to protection under § 43 of the Lanham Act).
The Panel does not consider whether Complainant’s service mark is inherently distinctive and may have developed a secondary meaning, rendering it distinctive and subject to protection, as the Panel finds it unnecessary to consider this analysis. "All that is necessary is that the domain name misappropriate sufficient textual components from the mark such that an ordinary Internet user who is familiar with the goods or services … likely think … that an affiliation exists between the site identified by that domain name and the owner or licensed user of the mark." Playboy Enterprises International, Inc. v. Hector Rodriguez.
The Panel finds that Complainant has proved that the Disputed Domain Name is confusingly similar to Complainant’s Mark under Paragraph 4(a)(i) of the Uniform Policy.
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Under Paragraph 4(c) of the Uniform Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of the dispute, respondent used, or demonstrably prepared 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) respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Except for having registered and maintained the Disputed Domain Name and operating an associated website with a message stating that the site is "currently in development," the only other use undertaken by Respondent appears to be the use of a click-through advertisement stating "[C]urrently working in cooperation with: sell.com," where "sell.com" is a hypertext link to the <sell.com> website. "A mock up prototype website is not adequate evidence to show that the Respondent has used, or made demonstrable preparations to use, the contested domain name in connection with a bona fide offering of goods and services, or that the Respondent is making a legitimate noncommercial or fair use of the contested domain name." Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems, WIPO Case No. D2001-0932 (October 8, 2001). Hence, the issue is whether the click-through advertisement to the <sell.com> website changes the situation.
Complainant asserts that Respondent’s provision of a click-through advertisement is not a legitimate use of the Disputed Domain Name. Given the fact that there is no clear connection between Respondent’s website and the <sell.com> site, and that Respondent’s site has remained under construction for approximately two years (the Panel notes that the copyright notice on the <fmv.com> site is dated 2001) leads the Panel to conclude that the <fmv.com> site is merely being used to divert users to the <sell.com> site. While there is no evidence to suggest whether this is a paid arrangement between Respondent and the owner/operator of <sell.com>, the operation of a website for the limited purpose of diverting users to another site, absent any other evidence, is not a legitimate use of the Disputed Domain Name under the Uniform Policy.
There is no evidence that Respondent has been commonly known by the Disputed Domain Name. The Complainant has never licensed or otherwise permitted the Respondent to use any of its Marks, nor does the Complainant have any relationship or association with the Respondent.
There is also no evidence that Respondent is making or intends to make a legitimate non-commercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademark. Where it appears Respondent has no connection with the Disputed Domain Name, apart from having registered it, and where the Disputed Domain Name has been dormant for a significant period of time (2 years), the burden of proof shifts to the Respondent to demonstrate that such a right or legitimate interest does exist. Clerical Medical Investment Group Limited v. Clericalmedical.com, WIPO Case No. D2000-1228 (November 28, 2000). Respondent has not filed a formal response to this Complaint asserting a legitimate interest in the Disputed Domain Name. Consequently, there isn’t any evidence demonstrating any cognizable rights or legitimate interests the Respondent may have in the Disputed Domain Name.
Based on the above, the Panel concludes that Respondent fails the tests set out in Paragraph 4(c)(i),(ii), and (iii) of the Uniform Policy and cannot claim rights or legitimate interests in the Disputed Domain Name thereunder.
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
Paragraph 4(b) of the Uniform Policy states "the following circumstances, in particular but without limitation, … shall be evidence of the registration and used of a domain name in bad faith:" (i) the domain name has been registered or acquired by a respondent primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the mark or a competitor of complainant, for valuable consideration is excess of respondent’s out-of-pocket costs; (ii) respondent registered the domain name in order to prevent the owner of the mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or location.
The Panel finds tenable Complainant’s contention that under Paragraph 4(b)(iv) of the Uniform Policy, Respondent has "intentionally attempted to attract, for commercial gain, Internet users … by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement" through use of the Disputed Domain Name in association with text proclaiming Respondent to be an "online Fair Market Valuation Expert." Complainant has also established that Respondent has engaged in commercial exploitation of the Disputed Domain Name by providing a click-through advertisement on its website, to the <sell.com> website, which offers various goods and services for sale. Respondent’s website states that it is "currently working in cooperation with" <sell.com>. While no direct conclusion can be drawn from Respondent’s failure to provide some type of explanation, in some circumstances, a negative inference can be drawn from the lack of justification by the Respondent, especially when evidence submitted by Complainant points in the direction of Respondent not having any rights or legitimate interests in the Disputed Domain Name. (See Banque Bruxelles Lambert S.A. and One Two Trade S.A. v. AIB and M123 Multimedia Inc., WIPO Case No. D2000-1818 (March 13, 2001)).
It does not matter under the Uniform Policy how much or little money a party makes from the commercial use of a domain name. The controlling factor is whether or not the Respondent’s website is commercial." National Association for Stock Car Auto Racing, Inc. v. Steven R. Shacklette, WIPO Case No. D2001-1350 (February 4, 2002). The likelihood is that Respondent attracted a fee for the redirection of traffic or Respondent is itself the operator of the <sell.com> site, in which case it benefits directly from the redirection. Such arrangements are common and no other reasons for the redirection are readily apparent. Royal Bankof Canada v. Personal, WIPO Case No. D2001-0761 (July 24, 2001). "Both case law and prior arbitral findings have held that misdirecting or redirecting Internet users can constitute bad faith." Geocities v. Geociites.com, WIPO Case No. D2000-0326 (June 19, 2000). Respondent also appears to own at least two other domain names, <stride.com> and <apparelmart.com,> which also link to the <sell.com> website.
Respondent has furnished incomplete contact information to the Registrar, which constitutes a breach of the registration agreement, which can be taken as evidence of bad faith. (See, e.g. Women in Military Service for America Memorial Foundation, Inc. v. Russian Web Marketing, WIPO Case No. D2001-0610 (July 11, 2001); Advanced Micro Devices, Inc. v. [No Name], WIPO Case No. D2000-0515 (September 13, 2000)). "An obligation exists on each domain name registrant, under its registration agreement, to not only provide its registrar with current, complete and accurate contact information but also to update that information to reflect any subsequent changes in order that the information, accessible through the WhoIs database, is always current, complete and accurate." Park Place Entertainment Corporation v. Bowno (holding that Panels view erroneous contact information as a deliberate, continuing attempt calculated to conceal that registrant’s identity and location, and thereby frustrate service of process and obstruct the application of the Uniform Policy).
Complainant contends that under Paragraph 4(b)(iii) of the Uniform Policy, Respondent has disrupted the business of Complainant, in part by preventing Complainant from reflecting its service mark in a corresponding domain name, although Complainant has not obtained evidence that Respondent has a pattern of such conduct. Complainant has not been able to produce such evidence because Complainant has been unable to determine the real party behind Respondent to determine the extent of its domain name registration activities.
While the Panel also has been unable to determine the real party behind Respondent, it has found evidence that Respondent may have been involved in at least two other WIPO administrative proceedings (See, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607 (August 22, 2000); AKG Acoustics GmbH v. Allen G., WIPO Case No. D2001-0533 (July 2, 2001). In the VAT Holding AG v. Vat.com proceeding, in which the Respondent prevailed, the website associated with the <vat.com> stated that it was "coming soon" and provided a link to the <sell.com> website. Although the <vat.com> site currently displays some information about value added taxes, it continues to claim it is "coming soon," almost two years later, and continues to redirect visitors to <sell.com>. The Respondent in the VAT Holding AG v. Vat.com decision was called eMphasys Technologies Inc. ("eMphasys") of the same address as Respondent in this administrative proceeding. Complainant has indicated that Respondent’s P.O. Box in Texas is assigned to "Emphasys Technologies." eMphasys specializes in web hosting, email services, web design and branding, and database backed websites. At least 26 clients are listed on eMphasys website including <sell.com> and <stride.com>. Without additional information from Respondent, the Panel finds it reasonable to conclude that eMphasys and Respondent are one in the same.
The Panel finds the facts in the VAT Holding AG case distinguishable from the facts in the present case primarily because of the <vat.com> site’s provision of information about value added taxes. The <fmv.com> site provides no useful information. In the AKG Acoustices GmbH v. Allen G. proceeding, the Respondent is listed as Allen G. of the same address as Respondent in this administrative proceeding. The Respondent in this case failed to respond to the Complaint and the Panel found for the Complainant. From this evidence, the Panel finds it plausible that under Paragraph 4(b)(ii) of the Uniform Policy, Respondent has registered the Disputed Domain Name in order to prevent Complainant from reflecting its Mark in a corresponding domain name, and the Respondent has engaged in a pattern of such conduct.
Absent any explanation from Respondent to refute the evidence submitted by the Complainant and found by the Panel, the Panel finds evidence of bad faith, including Respondent trading on Complainant’s goodwill by diverting Internet users to another commercial site, Respondent’s registration of the domain name in order to prevent Complainant from doing so, Respondent’s provision of erroneous contact information, and Respondent’s failure to respond to the Complainant’s cease and desist letter or to file any response in these administrative proceedings.
The Panel therefore finds that Complainant has proved Respondent’s bad faith in registering and using the Disputed Domain Name under Paragraph 4(b)(ii) and (iv) of the Uniform Policy.
In light of the foregoing, the Panel hereby determines that the Disputed Domain Name is identical or confusingly similar to the trademark of Complainant, that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and that the Disputed Domain Name has been registered and is being used by Respondent in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Uniform Policy, the Panel hereby orders that the Disputed Domain Name <fmv.com> be transferred to Complainant.
Timothy D. Casey
Dated: June 10, 2002