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and Mediation Center
Edward G. Linskey Jr. v. Brian Valentine
Case No. D2006-0706
1. The Parties
The Complainant is Edward G. Linskey Jr., Phoenix, Arizona, United States of America, represented by the law firm Lewis and Roca, LLP, Phoenix, Arizona, United States of America.
The Respondent is Brian Valentine, Atlanta, Georgia, United States of America,
represented by ESQwire.com Law Firm, Cherry Hill, New Jersey, United States
2. The Domain Name and Registrar
The disputed domain name <finances.com> is registered with Key-Systems
GmbH d/b/a domaindiscount24.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2006. On June 8, 2006, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the domain name at issue. On June 13, 2006, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced June 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was July 5, 2006. Respondent requested a two-week extension. Over Complainant’s objection, the Center extended the due date for Response to July 10, 2006. The Response was filed with the Center on that date.
Complainant requested a single-member panel. Exercising his right under paragraph 5(b)(iv) of the Rules, Respondent requested a three-member panel. The Center appointed Richard G. Lyon, John Swinson, and David E. Sorkin as panelists in this matter on August 16, 2006. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On July 13, 2006, Complainant requested leave to file
a Reply to the Response. The Panel granted this request in part in Procedural
Order No. 1, dated August 21, 2006. As permitted under this Order, Respondent
submitted a rebuttal on August 25, 2006. The two supplemental filings are discussed
in the following section.
4. Factual Background
This section is divided into two parts because the parties present markedly different factual positions and each party’s contentions rest upon its asserted factual position. Where appropriate the Panel identifies the evidence that a party submits in support of its factual position.
The Panel finds the following facts to be undisputed or established by the evidence.
Complainant is an individual who resides in Phoenix, Arizona, United States of America. He owned the disputed domain name from 1995 through October 2005.
Respondent registered the disputed domain name in October 2005. Since that date, the Respondent has made no use of the disputed domain name other than to redirect an Internet user to a page entitled “DomainDiscount 24.com.”1 At the bottom of this page is a link entitled “About the domain Finances.com” that refers a user to a pop-up box that includes the phrase:
“If you are not the owner of this domain name and. . .
- Are interested in this domain name, try SEDO’s Domain Acquisition Service [with a hyperlink to this latter website]”
Disputed Factual Assertions
The Parties’ Initial Filings
According to Complainant:
Complainant has used the disputed domain name for some years for providing “financial, insurance, and consulting services.” Complainant supports this allegation with a statement to this effect in a sworn affidavit, and supplies examples of logos and business cards with the name “finances.com”, and a tax return showing income of “Edward G.Linskey, DBA Finances.com.”
In October 2005, Respondent “hijacked” the disputed domain name. Again this is supported with Complainant’s sworn statements in an affidavit. Complainant says that he was suddenly unable to receive email through the disputed domain name. He immediately tracked the disputed domain name through various registrars’ databases and discovered that the registration for the disputed domain name had been altered “without [Complainant’s] approval or knowledge.” Complainant contacted Network Solutions, Inc., the registrar with which he had most recently registered the disputed domain name, but was advised that Network Solutions, Inc. would not intervene in the matter. Complainant alleges, without evidentiary support, that “I believe that since transfer requests and approvals are sent via email that in some way my email or account was redirected or hacked in order for the current owner to authorize a fraudulent transfer request and steal my domain name.”
According to Respondent:
Respondent, in a sworn declaration, presents a completely different story. Respondent first spoke with Complainant in September 2005, asking if the disputed domain name was for sale. After an initial refusal, Respondent said he was prepared to offer substantial cash consideration for the domain name. Complainant replied that he would “check with family members” and revert later. “A man who said he was [Complainant’s] father” later called Respondent and said that Complainant and his family would sell the domain name for $150,000 to $170,000. When Respondent offered $120,000, this person agreed. This representative of Complainant sent Respondent a signed Domain Name Purchase Agreement, which Respondent signed and returned. Respondent then wired payment of $120,000 in accordance with the wiring instructions in the Purchase Agreement. Respondent attaches signed copies of this Purchase Agreement and a wire confirmation to the account set forth in the Purchase Agreement.
The Parties’ Supplemental Submissions
Upon receipt of the Response, Complainant immediately filed his request to submit a reply, stating as his principal ground for seeking an extraordinary filing was his contention that the Respondent’s story and supporting evidence were fabricated. Because Respondent’s evidence raised some questions on its face,2 and because the possibility of forged evidence constituted a circumstance that the Panel believed Complainant could not reasonably have anticipated, the Panel allowed most of Complainant’s proffered Reply.3
With the Reply Complainant submitted an affidavit of a handwriting expert, who gave his opinion that the purported signature on the Purchase Agreement was manufactured and in fact copied and pasted from the signature on the affidavit that Complainant submitted in support of the Complaint; an affidavit of an expert in international banking, who opined that the purported wire transfer confirmation was incomplete in a number of specific respects; Complainant’s sworn statement that his father died in 1982 and a copy of his father’s death certificate; Complainant’s sworn statement that neither he nor any company in which he had an interest had ever maintained a bank account at the bank or branch specified in Respondent’s purported wire transfer; and Complainant’s sworn statement that he had never had any contact (by email or by telephone) with Respondent.
Respondent replied to Complainant’s
supplemental submission with a further affidavit, reiterating that his original
statements were true and correct and documentary evidence genuine.
5. Parties’ Contentions
The Panel summarizes the parties’ contentions as follows.
Rights in a mark. Complainant has common law rights in <finances.com> because of his use of that name for the provision of financial and related services for ten years, and because of his prior ownership of the disputed domain name. The disputed domain name is identical to the mark in which Complainant has rights.
No rights or legitimate interests. Respondent has never been known by the disputed domain name and has never been authorized by Complainant to use it. He has made no use of the disputed domain name, and any use subsequently to his hijacking the disputed domain name cannot be legitimate or bona fide.
Bad faith. The circumstances under which Respondent acquired the disputed domain name, involving hacking, theft, fraud (providing false information to the registrar), and forgery, are the epitome of bad faith. Making no use of the disputed domain name, and supplying inaccurate information as contact information for the disputed domain name, are further grounds for findings of bad faith in registration and use.
Suitability of the Policy to this Dispute.
Anticipating Respondent’s argument that this dispute involved matters
not suitable for resolution in disputes under the Policy, Complainant cites
CC Computer Consultants et al. v. APG Solutions & Technologies, WIPO
Case No. D2005-0609, and 8x Entertainment, Inc., Gener8Xion Television,
Inc., Gener8Xion Entertainment, Inc. v. EXC International AG. WIPO
Case No. D2005-1126, as examples of cases in which a panel ordered transfer
based upon hijacking.
Rights in a mark. Complainant cannot satisfy paragraph 4(a)(i) of the Policy because the word “finances” and the phrase “finances.com” are “generic” and therefore not entitled to trademark protection. Complainant has not provided evidence of “secondary meaning” necessary to establish common law rights in either name, and a Google search yields more than 132 million results for the term “finances.” If “finances.com” was used by Complainant at all, it was as merely an email and website address and not as a trademark or service mark.
Rights or legitimate interests. Respondent acquired rights or legitimate interests by paying substantial consideration to purchase the disputed domain name from Complainant. In any event because the word “finances” is generic, anyone, including Respondent, has a legitimate interest in using it, and a right to use it.
Bad faith. A legitimate purchase of the domain name prevents any finding of bad faith in registration or use, and the fact that the word “finances” is generic entitles Respondent to make use of it in a disputed domain name unless Complainant can show that Respondent registered it solely for the purpose of taking advantage of good will appurtenant to Complainant mark. Complainant has made no such showing in this proceeding.
Suitability of the Policy to this Dispute. The Policy was intended to address a narrow class of cases involving cybersquatting. “Regardless of whether the Panel accepts Complainant’s or Respondent’s version of the [background] events, the issue is not one that may be decided under the [Policy].” Respondent cites cases holding that breach of contract and fraudulent transfer allegations are inappropriate for resolution under the Policy but are rather left to national courts.4
Reverse domain name hijacking. Because Complainant
bases his charges on an unprotectable generic term, there is no reasonable basis
for the Complaint.
6. Discussion and Findings
The Panel rejects Respondent’s
broadside contention that a complainant may never possess common law trademark
rights in a common word or phrase, or, to use Respondent’s language, “a
common word in the dictionary.” If a complainant can show that some identifiable
audience was aware of use of the phrase as a designation of origin of goods
and services, he may succeed under the Policy. The more common (or less distinctive)
the claimed mark, of course, the more difficult the complainant’s burden
is to demonstrate public recognition (“secondary meaning”) See,
e.g., Memorydealers.com, Inc. v. Dave Talebi, WIPO
Case No. D2004-0409; James Good o/a Pornreports.com v. Mark Anderson,
WIPO Case No. D2004-0391.
Complainant’s evidence in this proceeding, however, is not sufficient to demonstrate any use of <finances.com> as the source of his claimed consulting services or any public recognition of his mark or website. Other than his own conclusionary statement, Complainant presents no evidence even that he used the disputed domain name for consulting services or any other purpose, and no evidence that any person knew of his “mark” or associated it with him or his business. Such evidence, if it exists, is surely within Complainant’s control and could easily have been supplied - web page printouts, public advertising, a client’s inquiry, invoices, Google searches, or surveys, for example. As Respondent argues, at best Complainant has shown only his use of <finances.com> as a web and email address. There is no evidence of any person visiting that website or sending or receiving emails from that email address. That alone does not establish trademark rights in <finances.com> sufficient to invoke the Policy.
This is not to say that the Complainant has no trademark rights. He may indeed have so. But he has not presented sufficient evidence here to demonstrate such rights.
As the requirements of paragraph 4(a) of the Policy are conjunctive, the Panel need not address whether Complainant has satisfied the requirements of paragraphs 4(a)(ii) and 4(a) (iii) of the Policy.
This leaves Respondent’s request for a finding that Complainant has engaged in reverse domain name hijacking, to which he claims entitlement on the ground that “it is clear that ‘finances’ is a common word in the dictionary to which Complainant does not have exclusive use.” As the Panel’s has not endorsed the premise for Respondent’s request, a finding of reverse domain name hijacking is not warranted. The Panel’s doubts about the provenance of Respondent’s sworn statements and documentary evidence provide an independent reason for refusing such a finding.
The mandatory administrative
proceeding requirements set forth in the Policy do not prevent either party
from submitting the dispute to a court of competent jurisdiction for independent
resolution before such mandatory administrative proceeding is commenced or after
such proceeding is concluded. This decision should not be treated as limiting
either party’s options in this regard. A resolution of this dispute by
a court may be more appropriate, or lead to a different result, as there are
many factual issues in dispute here.
For the foregoing reasons, the Complaint is denied. Respondent’s request for a finding of reverse domain name hijacking is denied.
Richard G. Lyon
David E. Sorkin
Dated: September 18, 2006
Concurring opinion of Richard G. Lyon:
I join the Panel’s opinion without reservation. I also write separately to address one of Respondent’s contentions that the Panel does not reach because of the threshold issue that determines the outcome of this proceeding.
Respondent, through his counsel, contends that this case is unsuitable for determination by the Panel, in part because of the parties’ competing views of the circumstances of this case. He characterizes the dispute over possibly fabricated evidence as either for breach of contract, if the Panel accepts Respondent’s contentions, or, and I quote, “fraudulent transfer,” which is how he characterizes Complainant’s theory. I fear that Respondent’s success in this proceeding may encourage other cybersquatters or their counsel to attempt to “complicate” Policy proceedings with far-fetched or apparently outright fraudulent contentions or evidence, then claim that these “complications” raise issues that cannot and were not intended to be resolved in Policy proceedings.
As a panelist I have been
exceedingly skeptical of my ability, indeed authority, to resolve genuinely
disputed factual issues when the parties submit conflicting evidence, thus requiring
a determination of which party is telling the truth. As a participant in the
adversary process in the United States I am reluctant to do so without “the
chastening process of cross-examination” and a full record developed through
discovery in a confrontational adversary proceeding. Greyson International,
Inc. v. William Loncar, WIPO Case No.
D2003-0805. I have occasionally questioned whether it is within a Panel’s
brief under the Policy and the Rules to do so. E.g., Rudy Rojas v. Gary Davis,
WIPO Case No. D2004-1081.
That reluctance does not, however, require me to turn a blind eye to perjury and manufactured documentary evidence, which is what appears to have taken place in this proceeding. Complainant has provided documentary evidence that the person Respondent claimed to speak with died more than twenty years before the supposed conversation. He has also provided evidence that the documents on which Respondent bases his sworn statements, are manufactured, and that the supposed signature from Complainant or his “father” was crudely forged. This, it seems to me, is one of the rare instances in which a Panel would be justified in concluding that in all likelihood one party’s evidence was manufactured and that this party’s entire defense constitutes fraud upon the tribunal. And a panel may discount appropriately any “complications” that are invented solely to frustrate the expedited proceedings available against a cybersquatter.
Any action by the Panel in this proceeding based upon these conclusions would be purely an advisory opinion and therefore inappropriate. Serious and sensitive issues would remain for the Panel. Someday these issues may be addressed in a proper proceeding, or by ICANN in considering revisions to the Policy and the Rules, but I wish to state most emphatically that in my view as a Panelist the claim of unsuitability of the Policy to resolve a dispute that rests on forged evidence may certainly be disregarded in the proper circumstances.
Perhaps Respondent and his counsel will someday answer for their conduct in this matter. As the Panel notes, Complainant is free to pursue these matters against Respondent, a United States citizen and resident, in court. If that occurs Respondent’s declaration remains (as stated by Respondent) a statement subject to “penalty of law for false statements” that he and his counsel will have to explain.
Richard G. Lyon
Concurring opinion of David E. Sorkin:
I too join the Panel’s decision without reservation. I also join in the concurring opinion of my colleague Richard G. Lyon, except that I am not quite as confident in accepting Complainant’s claims that Respondent has fabricated evidence. While such a conclusion may well be warranted based upon the evidence presently before the Panel, I would likely require the parties to supplement the record with additional information before reaching a firm conclusion on this point, as permitted by paragraph 12 of the Rules. In this case, the Panel has limited the scope of its inquiry on this point because our finding as to the lack of trademark rights is dispositive of the case.
David E. Sorkin
Concurring opinion of John Swinson:
I too join the Panel’s opinion without reservation. I also join in the concurring opinion of my colleague Richard G. Lyon.
1 This description is based on the Panel's accessing the disputed domain name on August 28, 2006.
2 For example, Edward Linskey signed the Purchase Agreement as Buyer and Respondent as Seller, and the wire transfer confirmation appeared to be incomplete.
3 The Panel did not allow, or consider in making its decision, one section of the Reply that contained re-argument of legal points previously addressed in the Complaint.
4 E.g., The Center for Computer Technology et al v. Domain Listing Agent, NAF Case No. 495379 (2005) ("This case potentially involves a fraudulent registration transfer, which is likely a dispute that should be determined in a court of law. Thus, the Panel finds that this case is outside the scope of the Policy.")