официальный сайт ВОИС
Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам
and Mediation Center
ADMINISTRATIVE PANEL DECISION
Janet E. Sidewater v. Worldwide Media Inc.
Case No. D2006-1281
1. The Parties
The Complainant is Janet E. Sidewater, of Gladwyne, Pennsylvania, United States of America, represented by the law firm Morgan, Lewis & Bockius, LLP, United States of America.
The Respondent is Worldwide Media Inc., of Highlands, North Carolina, United States of America,
represented by Stephen H. Sturgeon, United States of America.
2. The Domain Name and Registrar
The disputed domain name <featherinyourcap.com> is registered with Moniker
Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2006. On October 5, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue, and Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced October 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2006. The Response was filed with the Center on November 3, 2006.
Complainant requested a single-member panel. Exercising
its right under paragraph 5(b)(iv) of the Rules, Respondent requested a three-member
panel. The Center appointed Richard G. Lyon, Steven M. Auvil, and David E. Sorkin
as panelists in this matter on December 28, 2006. The Panel finds that it was
properly constituted and has jurisdiction over this proceeding. Each member
of the Panel has submitted his Statement of Acceptance and Declaration of Impartiality
and Independence, as required by the Center to ensure compliance with the Rules,
4. Factual Background
The facts necessary for the Panel to determine this matter are not disputed by the Parties.
Complainant creates, markets, and sells hats, clothing, and jewelry with a theme of the sport of falconry under the trademark FEATHER IN YOUR CAP. She has registered this trademark in the United States of America, filing for registration in the United States Patent and Trademark Office (PTO) in July 1999. Her mark was published for opposition in January 2000 and registered on July 23, 2002, with a first use in commerce of April 5, 2002. Although she owns the domain names <featherinyourcap.biz> and <featherinyourcap.org>, Complainant does not currently make use of an Internet presence to sell her products.
Respondent operates the website <mostwanteddomains.com>, on which it sells or leases “the world’s very best domain names.” Respondent also offers registration services at this website. According to the website, Respondent owns 50,000 domain names. Many of these, including the disputed domain name,1 are everyday words and phrases. Respondent registered the disputed domain name on May 20, 2002. An Internet user who enters the disputed domain name into his/her browser obtains a page entitled “welcome to featherinyourcap.com” that consists of links to many other commercial sites. The page also has a link entitled “inquire about this domain,” that when clicked takes the reader to a page at which he/she is invited to submit an offer to purchase <featherinyourcap.com>.
On June 27, 2006, Complainant sent Respondent an email
message asserting among other things that Respondent’s use of it constituted
trademark infringement, and inquiring about the purchase of the disputed domain
name. Respondent replied the following day, offering the disputed domain name
for sale for US dollars 7,500. On August 2, 2006, Complainant’s counsel
wrote to Respondent, again asserting a violation of Complainant’s rights
and offering to reimburse Respondent’s expenses up to US dollars 1,000
if Respondent would transfer the disputed domain name. Respondent’s counsel
replied on August 23, 2006, disputing Complainant’s charges and refusing
to transfer the disputed domain name.
5. Parties’ Contentions
Complainant contends as follows:
Rights in a mark.
Complainant has rights in FEATHER IN YOUR CAP by virtue of her PTO-registered mark, to which the disputed domain name is identical but for the top level domain. Under United States trademark law these rights accrue from July 13, 1999, the day of her trademark application.
No rights or legitimate interests.
Respondent has never engaged in any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services; Respondent is not commonly known by the disputed domain name; and is not making a legitimate non-commercial or fair use of the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its mark, and Respondent’s business of “registering, warehousing and attempting to sell domain names... is to advertise the [disputed domain name] for sale, rather than offer any goods and services or provide useful information to internet users.”
Under United States trademark law, Respondent had actual or constructive knowledge of Complainant’s mark from the date she filed her trademark application, so its registration and use are in bad faith under Policy precedent. Respondent’s use of the disputed domain name as a “placeholder website” from which it receives click-through revenue is used “intentionally to attempt to attract, for commercial gain, internet users, to respondent’s website by creating a likelihood of confusion with complainant’s mark.” (Policy, paragraph 4 (b)(iv)). Respondent’s offer to sell the disputed domain name for an amount in excess of its costs of registration is also evidence of bad faith in registration and use. Citing many other domain names owned and held for sale by Respondent that are said to infringe trademark rights of third parties, five UDRP proceedings brought against Respondent,2 and four lawsuits against Respondent for cybersquatting, Complainant asserts that Respondent’s conduct comes within paragraph 4(b)(ii) of the Policy.3
Respondent contends as follows:
Rights in a mark.
Because Respondent registered the disputed domain name on May 20, 2002, about two months prior to Complainant’s trademark registration, Complainant has not established rights in her trademark for purposes of invoking the Policy. Complainant has provided no proof of common law rights predating the date of its USPTO registration or of “secondary meaning” attaching to the mark that would render its use for Complainant’s goods distinctive.
Rights or legitimate interests.
Respondent in fact has been using the disputed domain name for a legitimate offering of services “that are unrelated to any product or service for which the Complainant alleges to have trademark rights.” Respondent distinguishes its use as described above from “mere passive holding.” Respondent’s use occurred prior to its first notice of this dispute, Complainant’s counsel’s initial letter in June 2006.
Since Respondent registered the disputed domain name before Complainant’s trademark was registered, it could not have registered the disputed domain name in bad faith; as Complainant had no trademark rights when Respondent registered the disputed domain name it could not have accomplished that registration to prevent Complainant from reflecting her mark in a corresponding domain name. Respondent successfully defended the five UDRP proceedings against it referred to in the Complaint and none of the lawsuits resulting in an adverse finding against Respondent.
Complainant bears the burden of proof under each item
of the Policy and the requirement of proving legitimate interests by a respondent
is very low. The Policy was established to permit expedited disposition of clear
cases of cybersquatting. By reason of its registration of the disputed domain
name prior to Complainant’s USPTO registration, this proceeding is not
a “clear abuse.”
6. Discussion and Findings
Contrary to Respondent’s arguments, Complainant has established that it has rights in its federally registered trademark and has established the first element of the Policy, namely that the domain name is confusingly similar to a trademark in which the Complainant has rights
It is the consensus view that a complainant’s
rights (or not) are determined at the date the complaint is filed, not the date
that a respondent registered the disputed domain name. “WIPO
Overview of WIPO Panel Views on Selected UDRP Questions,” (“Overview”),
Valve Corporation v. ValveNET, Inc., ValveNET, Inc., Charles Morrin, WIPO
Case No. D2005-0038. Complainant’s USPTO registration was issued in
July 2002, more than four years before she commenced this proceeding. Because
the disputed domain name is identical to her mark except for the gTLD designation,
she has met the requirements of paragraph 4(a)(i) of the Policy.
“While the [timing of respondent’s registration]
is not relevant in determining whether a complainant has established rights
in a mark to which the domain name is identical or confusingly similar, it is
indeed relevant for purposes of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.”
Valve Corporation, supra; Brooke Bollea, a.k.a Brooke Hogan v. Robert
McGowan, WIPO Case No. D2004-0383.
Since Complainant must establish each Policy element to succeed, the Panel will
now address only the issue of registration in bad faith, as the undisputed evidence
requires a finding that Complainant has not carried her burden of proof to establish
this Policy element.
Acquiring domain names consisting of common words
or phrases is not in and of itself an illegitimate activity or presumptive evidence
of bad faith in registration. Mariah Media Inc. v. First Place® Internet
Inc., WIPO Case No. D2006-1275; Ibeo Automobile
Sensor GmbH v. Netico Inc., WIPO Case No. D2006-0064.
Of course an operator of such a business may not blithely ignore the trademark
rights of third parties by registering common words or phrases merely because
they are common words or phrases. But the doctrine of “constructive notice”
that is available to a mark owner under United States trademark law has not
been engrafted into the Policy. Overview,
¶3.4. Ordinarily the mark owner must show that the domain name registrant
selected the domain name with actual knowledge of that owner’s mark; some
panels have in certain circumstances also found bad faith where willful blindness
has been established.4
The decisions applying the doctrine of constructive notice are rare and the Panel notes that the doctrine is not applicable on the record in this proceeding. Even if the Panel were to place upon a seller of domain names, as some panels have done,5 a duty to conduct some sort of search as to whether a newly registered domain name infringes or is comparable to the mark of a third party, had Respondent undertaken such a search in May 2002 it would have not have found Complainant’s mark, which was not registered until two months later.6
Complainant’s mark is an everyday phrase. She
has offered no proof of any notoriety or identification in the minds of consumers
with her mark, which was used first in commerce a scant six weeks prior to Respondent’s
registration of the disputed domain name and which has never been used for an
Internet-based business, and no proof that Respondent knew of it. In these circumstances
the Panel finds that Respondent did not register the disputed domain name in
For all the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Steven M. Auvil
David E. Sorkin
Dated: January 11, 2007