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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Family Watchdog LLC v. Lester Schweiss

Case No. D2008-0183

1. The Parties

The Complainant is Family Watchdog LLC, Carmel, Indiana, of United States of America, represented internally.

The Respondent is Lester Schweiss, Bridgeton, Missouri, of United States of America, represented by Annette P. Heller, United States of America.

2. The Domain Names and Registrar

The disputed domain names <familywatchdog.com>, <familywatchdog.net>, and <familywatchdog.org> are registered with Key-Systems GmbH dba domaindiscount24.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on February 4, 2008. On February 5, 2008, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the domain names at issue. On February 6, 2008, 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. Thereafter, an Amended Complaint was submitted to the Center by email on February 19, 2008, and by hard copy on March 11, 2008. The Center verified that the Complaint as amended 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 on March 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2008. The Response was filed with the Center on March 28, 2008.

The Center appointed William R. Towns as the sole panelist in this matter on April 9, 2008. The Panel finds that it was properly constituted. 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.

4. Factual Background

The Complainant is the owner of a United States trademark registration for FAMILY WATCHDOG for use with security services, namely a sexual offender, crime, and criminal registry, search and notification service, issued by the United States Patent and Trademark Office (“USPTO”) on October 17, 2006. The Complainant’s trademark application was filed on November 9, 2005. It is undisputed that the Complainant has used the mark in commerce in the United States since at least June 7, 2005, in connection with its national sex offender registry, search and notification service. These services are made available to the public free of charge at the Complainant’s website at “www.familywatchdog.us”. The Complainant’s website was launched in August 2007.

According to the concerned registrar’s WhoIs database, the Respondent is the current registrant of the disputed domain names, which were initially registered on January 6, 2005. The WhoIs history for the disputed domain names indicates that the initial registrar was GoDaddy.com, and that the domain name registrant was Innovates, Inc. The record reflects that Innovates, Inc. is a corporation formed by the Respondent, and that its corporate status had been forfeited in 2004.¹ The WhoIs registrant information was revised on March 9, 2006 to list the Respondent² as the domain name registrant. Subsequently, on December 17, 2007, the disputed domain names were transferred by the Respondent to the current registrar.³ The pertinent circumstances surrounding these registration events are addressed below.

The earliest record of the Respondent’s website is a starter page posted on February 12, 2005,⁴ announcing that Family Watchdog had been formed to provide services and products geared to keeping children safe on the Internet. On the “www.familywatch.com” website that subsequently replaced the starter page several months later, Family Watch is described as a family business owned by the Respondent and his wife, providing services, education, and products geared to keeping families safe on the Internet. The Respondent concedes, however, that no products have ever been offered on the website.

On October 13, 2005, two months after the inauguration of the Complainant’s “www.familywatchdog.us” website, the Respondent offered to sell the disputed domain names to the Complainant for $80,000.00. Subsequently, the Complainant made a counter proposal for the disputed domain names, offering $5,000.00 in cash augmented by a “unified Family Watchdog marketing campaign”, under which the Complainant would implement a computer security and awareness program, respecting which the Respondent would be the exclusive provider and would receive royalty payments for an initial twelve month period. However, no agreement was reached between the parties.

The Respondent’s website (“www.familywatchdog.com”) in its present iteration, while providing information on various Internet security and safety topics, also prominently features an advertising banner offering a free sexual predator search, and provides a link to the website of the National Alert Registry (“NAR”), a direct competitor of the Complainant. While the banner advertises that the search is free, a credit card charge is required if individuals using the search engine wish to see the actual results of their search (“search report”). The record reflects that the Respondent is a member of NAR’s affiliate program, and thus generates revenue from this affiliation. The Respondent’s website also contains a number of what appear to be pay-per-click advertising links to other third-party websites.

The sexual predator advertising banner and link to the NAR website referred to above were added to the Respondent’s website in March 2006, shortly after the Complainant’s service was featured on The O’Reilly Factor on March 2, 2006. Other advertising links appear to have been added to the Respondent’s website since on or after that time, and there is some indication in the record that advertising links previously had been added to the Respondent’s website after the Complainant was featured on the October 27, 2005 edition of The Oprah Show.

As noted above, the Complainant’s services are provided free of charge, while the services offered by the Respondent, as an affiliate of NAR are not. The Complainant has documented instances in which individuals have contacted the Complainant demanding a refund of credit card charges, mistakenly believing they were using the Complainant’s free online services when in fact they were using the services provided on the Respondent’s “www.familywatchdog.com” website. The Complainant further has documented an incident that occurred after Complainant’s services were featured on The Dr. Phil Show on May 22, 2006, which generated publicity to the extent that for several days thereafter the Complainant’s servers could not handle the level of Internet traffic. On May 23, 2006, the Respondent placed the following statement on his website beneath the “free sexual predator search” banner: “Due to the mention on Dr. Phil, servers are overloaded. If the page fails to load, keep trying.”

The Complainant maintains that following the Dr. Phil incident it sent two cease and desist letters to the Respondent, to which no reply was ever received. The Respondent disputes receiving these letters. In any event, on December 10, 2007, the Complainant lodged a formal trademark infringement complaint respecting the Respondent’s website with GoDaddy.com, which was then providing webhosting services for the disputed domain names in addition to being the domain name registrar. On the basis of the Complainant’s submission, GoDaddy.com redirected the disputed domain names away from the Respondent’s website.

Thereafter, the Respondent on or about December 17, 2007, transferred the registrations of the disputed domain names to the current registrar. Following this occurrence, the Complainant on or about December 19, 2007 resubmitted its trademark infringement complaint to the new domain name registrar. The Respondent subsequently filed a Petition for Cancellation before the USPTO Trademark Trial and Appeal Board (TTAB) on January 7, 2008, seeking cancellation of the Complainant’s FAMILY WATCHDOG mark. The Respondent also filed with the USPTO on January 16, 2008, an application to register FAMILYWATCHDOG.COM as a mark for use with “providing an interactive website featuring information in the field of computer, computer network, and Internet safety and security; computer consultation in the field of computer, computer network, and Internet safety and security”. In both filings, the Respondent claims first use in commerce of the FAMILYWATCHDOG.COM mark in February 2005.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain names are identical to its FAMILY WATCHDOG mark, in which the Complainant has established rights through registration and use since as early as June 7, 2005. The Complainant contends that its mark has become well known as a result of its continuous and extensive use in commerce, and as a result of being featured on popular television shows such as The Oprah Show, The Dr. Phil Show, and The O’Reilly Factor, among others.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant concedes that Innovates, Inc. registered the domain names prior to the Complainant’s establishment of Complainant’s common law rights in the FAMILY WATCHDOG mark and the subsequent United States of America registration of the mark. However, the Complainant, although not conceding that the Respondent is the President of Innovates, Inc., asserts that the Respondent failed as required by Missouri law to properly register his business or to register any fictitious names under which he claims to be transacting business.⁵ According to the Complainant, under Missouri law Innovates, Inc., the Respondent, Family Watchdog, and FamilyWatchdog.com lacked legal authority to transact business in Missouri at the time the disputed domain names were registered and at all material times thereafter.

The Complainant denies that the Respondent has made any bona fide use of the disputed domain names, or that the Respondent has been commonly known by the domain names. The Complainant contends that the Respondent has not lawfully engaged in any commerce at any time, and therefore has not established Family Watchdog, Family Watchdog.com, or any variations thereof as a trademark or other trade identity. The Complainant further asserts that the Respondent lacks rights or legitimate interests in the disputed domain names due to the collective misconduct of the Respondent and his predecessors, Innovates, Inc. and Chip Schweiss.⁶

Although the Complainant maintains that the registration and transfers of the disputed domain names were defective, the Complainant asserts that the transfer of the domain names on March 6, 2006 from Innovates, Inc. to “Chip Schweiss” amounted to a new registration. The Complainant argues that bad faith registration can be found because at that time it was clear that the domain names were registered to exploit confusion between the domain names and any potential rights of the Complainant. According to the Complainant, the Respondent and his predecessors’ bad faith is established by the unsolicited offer to sell the disputed domain names to the Complainant for an excessive amount, Respondent and his predecessor’s collusion with the Complainant’s competitor (NAR), the placement of prominent links to the Complainant’s competitor’s website on the “www.familywatchdog.com” website, and the Respondent and his predecessor’s exploitation of the confusion caused by the similarity between the Complainant’s mark and the disputed domain names.

B. Respondent

The Respondent denies that the Complainant has exclusive rights to the FAMILY WATCHDOG mark. According to the Respondent, he has used “Family Watchdog” and “FamilyWatchdog.com” as trademarks since as early as February 2005 in connection with providing an interactive website featuring information in the field of computer, computer network, and Internet safety and security. The Respondent asserts that such trademark use precedes both the Complainant’s first use in commerce of the FAMILY WATCHDOG mark and the filing of the Complainant’s application to register this mark with the USPTO. The Respondent points out that on January 16, 2008, he filed an application with the USPTO to register FAMILYWATCHDOG.COM for such use. The Respondent also has filed with the TTAB a Petition to Cancel the Complainant’s registration of the FAMILY WATCHDOG mark.

The Respondent maintains that he has established rights or legitimate interests in the disputed domain names based on his registration and use of the domain names prior to the time that the Complainant first began using FAMILY WATCHDOG in commerce. The Respondent contends that he registered the domain names on January 6, 2005 as the President of Innovates, Inc., unaware that Innovates, Inc.’s corporate status had been forfeited on May 29, 2004 by the State of Wyoming. According to the Respondent, he formed this corporation under the laws of Wyoming in 1999, serving at all times as its President and sole Director.

The Respondent explains that he changed the registrant information for the disputed domain names from Innovates, Inc. to “Chip Schweiss” on March 9, 2006 after learning that the corporation had been administratively dissolved. According to the Respondent, he has been commonly known by “Chip” since childhood to avoid confusion with his father and grandfather, as all three share the given name “Lester”.

The Respondent characterizes the Complainant’s trademark infringement Complainant lodged with GoDaddy.com, the former domain name registrar and webhosting company, as frivolous. According to the Respondent, GoDaddy.com shut down his website without any notice to him, following which he transferred the disputed domain names to the current registrar. The Respondent maintains he then changed the registrant information again to his full legal name, “Lester Schweiss”, in preparation for litigation concerning the disputed domain names.

After the Complainant lodged the same trademark infringement complaint with the new registrar, the Respondent states that he filed the Petition for Cancellation of the Complainant’s mark, and subsequently filed the to register FAMILYWATCHDOG.COM as a mark. The Respondent maintains that Complainant retaliated by filing the present Complaint.

The Respondent argues that his rights or legitimate interests in the disputed domain name are firmly established by his registration and use of the domain names. He argues that his rights or not altered because the Complainant may have advertised and marketed its services more aggressively than the Respondent and become more well-known than the Respondent. The Respondent contends that the Complainant cannot demonstrate bad faith registration because the Respondent registered the disputed domain names on January 6, 2005, months before the Complainant’s first use of FAMILY WATCHDOG in commerce.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

On the basis of the statements and documents submitted by the Parties, the Panel has concluded that this case involves disputes regarding trademark rights and usage, trademark infringement, unfair competition, deceptive trade practices and related state law issues beyond the scope of the Panel’s limited jurisdiction under the Policy. The Policy was adopted to deal with the problem of cybersquatting – that is, the registration of domain names consisting of, including, or confusingly similar to marks belonging to another for the purpose of profiting from the goodwill associated with the mark. The questions that the Panel has jurisdiction to address under the Policy are relatively simple and straightforward. This proceeding is a summary one, without the benefit of confrontation of the witnesses, or of a hearing. Jason Crouch and Virginia McNeill v. Clement Stein, WIPO Case No. D2005-1201.

It is evident from the record that this dispute involves broad factual and legal issues respecting trademark rights and usage, as opposed to the more narrowly framed questions to be decided under the Policy. The record reflects that the Complainant, in an apparent effort to enforce its trademark rights, has lodged formal complaints with the Secretary of State and the Attorney General of the State of Missouri respecting unfair competition and deceptive trade practices. These are matters clearly beyond the scope of the Policy. Further, the Complainant’s arguments regarding the Respondent’s rights or legitimate interests under the Policy are predicated in the main on state law issues regarding corporate status and legal capacity, as well as fictitious name registration requirements.

It is also evident that the Panel cannot render a decision in this case under the Policy without passing judgment on the Respondent’s claim to have established prior trademark rights in “Family Watchdog” and “FamilyWatchdog.com”. The Policy was never intended to serve as a vehicle for adjudication of traditional trademark disputes. The Respondent has filed a Petition for Cancellation before the TTAB, in which the Respondent asserts that it has prior trademark rights in “Family Watchdog” or “Family Watchdog.com”. The Complainant argues from prior panel decisions that the outcome of the Respondent’s TTAB proceeding has no bearing on the decision in this case, but the Panel respectfully disagrees. To cancel the Complainant’s registration of the FAMILY WATCHDOG mark, the Respondent necessarily must establish prior rights in “Family Watchdog” or “Family Watchdog.com” as a trademark, trade name or other trade identity. See, e.g., Tower v. Advent Software, Inc., 913 F.2d 942 (Fed. Cir. 1990).

The Complainant is correct that a cancellation of its FAMILY WATCHDOG registration in and of itself should not be outcome determinative under the Policy, given the Complainant’s assertion of common law rights in the mark. Nevertheless, before the TTAB the Respondent alleges to have used “Family Watchdog” or “Family Watchdog.com” as a trademark since February 2005, months before the Complainant’s earliest use of FAMILY WATCHDOG in commerce, a claim which the Respondent also relies on in this administrative proceeding.

Ultimately, after thorough consideration of the record and for all of the foregoing reasons, the Panel considers that the domain name dispute in this case is ancillary to the trademark, unfair competition and other trade related disputes between the Parties. See Jason Crouch and Virginia McNeill v. Clement Stein, supra. Such disputes are more appropriately decided by traditional means, as they turn on questions of fact that cannot be resolved on the basis of the Parties’ statements and documents, and on questions of law beyond the limited scope of the Policy. See Clinomics Biosciences, Inc. v. Simplicity Software, Inc., WIPO Case No. D2001-0823. Accordingly the Panel, in rendering its decision below expresses no view on the respective merits of the Parties’ cases, as presented, in the instant dispute. In any event, this decision would have no precedential effect upon any subsequent judicial proceedings.

7. Decision

For all the foregoing reasons, the Complaint is denied.

William R. Towns
Sole Panelist

Dated: April 23, 2008