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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
J. Crew International, Inc. v. crew.com
Case No. D2000-0054
1. The Parties
Claimant is J. Crew International, Inc. a corporation located at 802 West Street, Suite102, Wilmington, Delaware 19801 USA with its corporate headquarters located at 770 Broadway, New York, New York 10003 USA.
Respondent is "crew.com" an entity of unknown type located at P.O. Box 9911, Washington, DC 20016 USA. Respondent's alter ego is Telepathy, Inc., which uses the identical post office box as Respondent, and which is listed as the Administrative Contact, Technical Contact and Billing Contact for Respondent. Respondent refers to itself in the Response as Telepathy, Inc. The only time it used the business name "crew.com" was when it registered its domain name <crew.com>. Respondent is not incorporated under the name "crew.com" and has not filed an assumed name certificate under the name "crew.com."
2. The Domain Name and Registrar
The domain name at issue is <crew.com>. The registrar is Network Solutions, Inc. (the "Registrar"), 505 Huntmar Park Dr., Herndon, Virginia 20170 USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Complainant on February 10, 2000 by email and on February 15, 2000 in hardcopy. The Complainant paid the required fee.
On February 16, 2000, the Center sent an Acknowledgement of Receipt of the Complaint to the Complainant. On the same date, the Center sent to the Registrar a request for verification of registration data. On February 16, 2000, the Registrar confirmed, inter alia, that it is the registrar of the domain name in dispute and that <crew.com> is registered in the Respondent's name.
Having verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center on February 16, 2000 sent to the Respondent, with a copy to the Complainant, a notification of the administrative proceeding together with copies of the Complaint. This notification was sent by the methods required under paragraph 2(a) of the Rules. The formal date of the commencement of this administrative proceeding is February 16, 2000.
On March 7, 2000, the Center received Respondent’s Response by email with hardcopy received on March 9, 2000. On March 10, 2000, the Center sought clarification of certain items in the Response and in correspondence from Complainant. On March 24, 2000, after receiving their completed and signed Statements of Acceptance and Declarations of Impartiality and Independence, the Center notified the parties of the appointment of a three-arbitrator panel consisting of Mr. Richard W. Page as the Presiding Panelist, Mr. Mark Partridge as Complainant’s party-appointed panelist and Mr. G. Gervaise Davis, as Respondent’s party-appointed panelist.
The Panel met by telephone conference call on April 5, 2000. In the Panel’s Procedural Order No.1delivered to the Center and the parties, the Presiding Panelist confirmed the Panel’s finding that the resolution of the present dispute involved extraordinary circumstances warranting the extension of the deadline to deliver the Decision until April 20, 2000.
4. Factual Background
Complainant is a leading retailer of women's and men's apparel, shoes and accessories and is the owner of two United States trademarks (1) J. CREW for bags, clothing and catalog services, Reg. No. 1308888, issued December 11, 1984, and (2) CREW for clothing, Reg. No. 1348064, issued July 19, 1985. Complainant has been using its principal trademark is J. CREW since 1982. It has used in a more limited manner its secondary trademark CREW for in-store signs, but not in its primary advertising. Complainant's products are distributed exclusively through the company's retail stores, factory outlet stores, catalogs and Internet site www.jcrew.com. Complainant currently circulates over 73 million J. CREW catalogs per year and operates over 80 J. CREW retail stores and 45 J. CREW factory outlet stores. In 1998, products sold under the J. CREW brand name contributed $626 million in revenues. Revenues derived from the Internet were estimated at $20 million for 1998.
Respondent registered the domain name <crew.com> on July 12, 1998, then later registered the domain name <j.crew.com> as a sub-account. Respondent's alter ego is Telepathy, Inc., which uses the identical post office box as Respondent, and which is listed as the Administrative Contact, Technical Contact and Billing Contact for Respondent. Telepathy has registered or acquired more than 50 domain names consisting of words that may be trademarks of others or are generic words that others may wish to use. The identical post office box also is listed for an individual named Nat Cohen, who is believed to be a principal of both Respondent and Telepathy, Inc.
None of Telepathy's domain names (other than its own domain name <telepathy.com>) is being used for an active website. Telepathy is clearly in the business of offering its domain names for sale. Its purpose in registering or acquiring these domain names has been expressly stated on its website, www.telepathy.com:
Telepathy has acquired attractive domains both for use in its own development efforts and for its development partners and clients.
Telepathy registered or acquired these domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to its "clients." The same appears to be true of Respondent's domain name <crew.com>.
Complainant registered the trademarks J. CREW and CREW before Respondent registered the domain name <crew.com> or the variation domain name <j.crew.com>.
Respondent has used its domain name <crew.com> only for a website linked to Complainant's web site, and for no other purpose.
After Respondent had registered the domain name <crew.com>, an employee of Complainant invited Respondent to join Complainant’s affiliate network. Pursuant to this affiliate program, Respondent was permitted to place a banner ad on Respondent’s website which was linked to Complainant’s website. Complainant promised Respondent a commission for sales made to customers using that link, but has apparently defaulted on its obligation. The only material on Respondent's website was the banner ad linked to Complainant's website.
When Complainant's attorney asked Respondent's attorney whether Respondent might be willing to sell its domain name <crew.com> to Complainant, Respondent's attorney said that Respondent had "spent over 6 figures for domain names" and "would not be interested in a nominal sum." Complainant then revoked Respondent's participation in the affiliate network. Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to use Respondent's domain name <crew.com> or the variation domain name <j.crew.com>.
In response to a request by Complainant to Network Solutions, Inc. ("NSI"), Respondent's domain name <crew.com> was placed on "Hold" on September 3, 1999 in accordance with NSI's Domain Name Dispute Policy. However, under the new ICANN Uniform Domain Name Dispute Resolution Policy, NSI has informed Complainant that Respondent's domain name <crew.com> will be reactivated on February 11, 2000 unless it receives a copy of the Complaint in this matter.
5. Parties’ Contentions
A. Complainant contends that the domain name <crew.com> is identical to the trademark CREW and confusingly similar to the trademark J. CREW pursuant to the Policy paragraph 4(a)(i).
B. Complainant contends that Respondent has no rights or legitimate interest in the domain name <crew.com> pursuant to the Policy paragraph 4(a)(ii).
C. Complainant contends that Respondent registered and is using the domain name <crew.com> in bad faith in violation of the Policy paragraph 4(a)(iii).
D. Respondent does not contest that the domain name <crew.com> is identical with the trademark CREW. Respondent does contest that the domain name <crew.com> is confusingly similar to the trademark J. CREW.
E. Respondent contends that it has rights and legitimate interest in <crew.com> because of Respondent’s legitimate business of developing domain names for its own use and for sale to its clients.
F. Respondent contends that its registration and use of <crew.com> is in good faith because it had no actual knowledge of the CREW or J. CREW trademarks when it registered the domain name and because it was asked to join Complainant’s affiliates group.
6. Discussion and Findings
Identity or Confusing Similarity.
The domain name presently at issue is <crew.com>. The "crew" portion of this domain name is identical to Complainant’s trademark CREW. Therefore, a majority of the Panel finds that the requirement of the Policy paragraph 4(a)(i) is satisfied.
The Complainant has not offered sufficient proof to warrant a finding the domain name <crew.com> is confusingly similar to Complainant's trademark J. CREW or to its domain name <jcrew.com>.
Rights or Legitimate Interest.
Respondent is a speculator who registers domain names in the hopes that others will seek to buy or license the domain names from it. Speculation means the practice of registering or acquiring domain names without any demonstrable plan for a specific use of that domain name. The speculator hopes to license or sell the domain name in the future for profit, but has no specific use in mind at the time of registration or acquisition. Such conduct does not fall within any of the circumstances listed under Paragraph 4 of the Policy as evidence of rights or legitimate interest in the domain name. Such conduct precludes others who have a legitimate desire to use the name from doing so. Persons precluded by such conduct may be those who have no prior right or interest in the name, as well as those who have a demonstrable prior interest in the name. Speculation is not recognized by the Policy as a legitimate interest in a name, and the Policy should not be interpreted to hold that mere speculation in domain names is a legitimate interest. To hold otherwise would be contrary to well-established principles that preclude mere speculation in names and trademarks and would encourage speculators to appropriate domain names that others desire to put to legitimate use. Ultimately, speculation in domain names increases costs to the operators of websites and limits the availability of domain names.
The Complainant and the Respondent are both domiciled in the United States of America. Therefore, the case law on United States trademarks gives the most persuasive point of reference for resolution of the legitimacy of speculation in domain names and provides authority that speculation in the registration and use of domain names corresponding to another's trademark is an abusive registration.
Respondent asserts that its activities are no different than what other entrepreneurs do in developing intent to use trademarks. However, Respondent is in error in its suggestion that speculation in trademarks is permissible. Under United States trademark law, an applicant must have a demonstrable bona fide intent to use a trademark before filing an intent to use application. 15 U.S.C. 1051(b). Failure to present evidence of a demonstrable plan to use the mark can result in a finding that the application is invalid. See Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 U.S. P.Q.2d 1503, 1507 (T.T.A.B. 1993):
[W]e hold that absent other facts which adequately explain or outweigh the failure of an applicant to have any documents supportive of or bearing upon its claimed intent to use its mark in commerce, the absence of any documentary evidence on the part of an applicant regarding such intent is sufficient to prove that the applicant lacks a bona fide intention to use the mark in commerce.
Further, the applicant may not obtain a registration before it has made actual use of the mark. 15 U.S.C. 1051(d). While the application is pending, the application may not be sold to any other party except in connection with a sale of the underlying business. 15 U.S.C. 1060. Otherwise, the application becomes void and any subsequent registration is subject to cancellation. Clorox Co. v. Chemical Bank, 40 U.S.P.Q.2d 1098, 1104-1106 (T.T.A.B. 1996)(holding that the assignment of an intent to use application and resulting registration were void). These statutory rules were carefully considered and serve a valuable purpose of preventing mere speculation in the registration of trademarks. As discussed in Clorox, the provisions of United States law preventing the assignment of intent to use applications without the sale of the underlying business is part of a strong public policy recognized by the United States Congress to prevent trafficking or speculation in trademarks. Id. at 1104. The policy against trafficking in trademarks has also been adopted in other countries besides the United States.
The ICANN Policy is based on the principle of "abusive registration" set forth in the Report of the WIPO Internet Domain Name Process, April 30, 1999 (the "WIPO Report"). Paragraph 172 of the WIPO report identifies situations not considered to fall within the definition of an abusive registration:
The cumulative conditions of the first paragraph of the definition make it clear that the behavior of innocent or good faith domain name registrants is not to be considered abusive. For example, a small business that had registered a domain name could show, through business plans, correspondence, reports, or other forms of evidence, that it had a bona fide intention to use the name in good faith.
Here, Respondent has failed to show demonstrable evidence of plans to use the domain name in good faith. Indeed, its response concedes that it had no definite plan for use of the <crew.com> domain name when it obtained the registration and made no bona fide use of the domain name prior to being contacted by Complainant to participate in Complainant's affiliate program.
Respondent has given various justifications for its registration of <crew.com>, claiming that the domain name could be used for rowing or for construction teams. Shifting justifications for the selection of a domain name has been deemed to support a finding of bad faith. See Northern Light Technology, Inc. v. Northern Lights Club, 2000 U.S. Dist. LEXIS 4732 (D. Mass. March 31, 2000)(finding the defendant’s various explanations to be mere pretext).
Mere speculation in domain names is distinguishable from the conduct allowed in other cases where the domain name registrant has prevailed over the objections of a trademark owner. For example, in Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999), on which Respondent relies, the defendant was making bona fide use of the domain names at issue. That is not the case here. Further, the Court decisions have not yet interpreted the meaning of "abusive registration" within the context of the ICANN policy.
This also is not a case of reverse domain name "hijacking." The typical case of reverse domain name hijacking arose where a trademark owner would use the old NSI policy to place a domain name on "Hold" status even though the domain name holder was using the name in connection with unrelated goods or services or was already known by the name. Here, Respondent has not presented any evidence of demonstrable plans to use the domain name in connection with a bona fide offering of goods or services or actual use of the domain name. Rather, it has registered the domain name for purely speculative purposes despite the fact that it had constructive notice as a matter of law that the name was a registered trademark of another.
Therefore, a majority of the Panel finds that Respondent has no rights or legitimate interest in the domain name <crew.com> and that the requirement of the Policy paragraph 4(a)(ii) is satisfied.
Paragraph 4 of the Policy provides that evidence of bad faith registration and use includes circumstances showing:
(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.
Respondent's registration prevents Complainant from using the <crew.com> or <j.crew.com> domain names corresponding to Complainant’s registered trademarks. We recognize that Complainant has registered the domain name <jcrew.com>. However, the ability of the Complainant to obtain alternate domain names should not make this provision inapplicable. Otherwise, the provision would always be inapplicable for it would nearly always be possible for the Complainant to obtain an alternative domain name or even to register the same name as its trademark in another gTLD or ccTLD.
b. Constructive Notice
Although Respondent claims it acquired the domain name without knowledge of Complainant's trademark registration, Respondent had constructive notice of that registration as a matter of United States trademark law pursuant to 17 U.S.C. 1072. As a result, Respondent cannot rely on lack of knowledge as a defense to its conduct. It knew or should have known that its registration of <crew.com> prevented Complainant from reflecting its CREW trademark in a corresponding .com domain name. Because of the constructive notice provisions of United States trademark law, lack of actual knowledge is not a defense and it is not necessary to find actual knowledge to conclude that the use or registration of a mark is in bad faith.
c. Pattern of Conduct
Respondent admits it is engaged in a pattern of conduct involving the speculative registration of domain names for profit. While Respondent owns a long list of registrations, it has given only one example where it has made bona fide use of a domain name. This pattern of conduct prevents others from making bona fide use of desirable domain names that may correspond to their trademarks.
Therefore, a majority of the Panel finds that Respondent has registered and used the domain name <crew.com> in bad faith and that the requirement of the Policy paragraph 4(a)(iii) is satisfied.
Prior Decisions Regarding Speculation
A majority of the Panel has considered the decision in General Machine Products Company, Inc. v. Prime Domains, ICANN Case No. FA0001000092531, finding that registration of the domain name <craftwork.com> was not an abusive registration. In General Machine, Respondent’s alter ego Telepathy, Inc. (then known as Prime Domains) was in the business of selling generic and descriptive domain names. Respondent demonstrated that the phrase "craftwork" was commonly used as a descriptive term, and claimed that it registered the domain name without actual knowledge of the complainant's trademark because it had widespread use as a descriptive or generic term.
Although General Machine appears to be directly applicable to the present case, the panel in that case did not discuss the fact that Respondent had constructive notice as a matter of law of the complainant's mark and the decision does not disclose whether the Respondent had a demonstrable plan to use the domain name when it was registered. A majority of the present Panel could only agree with the result in General Machine if there were evidence of a demonstrable plan at the time of registration. If it is the holding of the panel in General Machine that the Policy permits speculative registration of names that happen to be the trademarks of others without a demonstrable plan for bona fide use of the domain name, then a majority of the present Panel must respectfully disagree with the decision.
In reaching our opinion we are well aware that trademarks are not "rights in gross" and we do not think our opinion grants trademark owners rights beyond those recognized under applicable law, particularly in the United States where Congress has enacted the Anti-Cybersquatting Consumer Protection Act ("ACPA"), in part, to prevent trafficking in domain names that are the same as the trademarks of another. See, for example, Cello Holdings, L.L.C. v. Lawrence-Dahl Companies, 2000 U.S. Dist. LEXIS 3936 (S.D.N.Y. March 30, 2000)(denying cross motions for summary judgment due to factual disputes); Northern Light Technology, Inc. v. Northern Lights Club, 2000 U.S. Dist. LEXIS 4732 (D. Mass. March 31, 2000)(refusing to modify preliminary injunction against northernlights.com domain name based on ACPA). In Cello Holdings, the Court stated that a reasonable fact finder could conclude the defendant had a bad faith intent to profit from registration of a domain name that matched the plaintiff's CELLO mark because " he had no proprietary rights to the ‘Cello’ mark when he registered ‘cello.com,’ he had not previously used it, and he had engaged in a pattern of registering domain names that could be of interest to others and then trying to sell them." Thus, our conclusion--that the Respondent's registration of <crew.com> was an abusive registration--is consistent with the scope of protection afforded consumers and trademark owners under U.S. law.
The majority of the Panel does not decide that all speculation in domain names is prevented by the Policy. Rather, for the purpose of this case, we merely hold that registration of domain names for speculative purposes constitutes an abusive registration when (1) the respondent has no demonstrable plan to use the domain name for a bona fide purpose prior to registration or acquisition of the domain name; (2) the respondent had constructive or actual notice of another's rights in a trademark corresponding to the domain name prior to registration or acquisition of the domain name; (3) the respondent engages in a pattern of conduct involving speculative registration of domain names; and (4) the domain name registration prevents the trademark holder from having a domain name that corresponds to its registered mark. This definition is consistent with the considerations stated in the WIPO Report and allows speculation in domain names that do not correspond to registered marks or where the registrant has a demonstrable plan to use the domain name for a bona fide purpose prior to registration or acquisition.
A majority of the Panel concludes (a) that the domain name <crew.com> is identical to the trademark CREW, (b) that Respondent has no rights or legitimate interest in the domain name and (c) that Respondent registered and used the domain name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, a majority of the Panel orders that the domain name <crew.com> be transferred to Complainant J. Crew International, Inc.
Richard W. Page
Mark V.B. Partridge
April 20, 2000
DISSENT BY PANELIST
I respectfully dissent from the decision of the majority of this panel because their decision creates and applies a test for "abusive domain name registrations" which is not, in my opinion, part of the ICANN Uniform Dispute Resolution Policy nor consonant with the stated and very limited purpose of this Policy. It does so in what I deem a mistaken view that it is up to the panel to enforce a non-existent policy of ICANN to prevent people from registering domain names for resale to others than the trademark owner. Whether such activity is proper or improper is not before us under the ICANN Policy and we do not, in any event, have the authority to so decide under the ICANN rules. Even if the decision were correct under the Anti-Cybersquatting Consumer Protection Act , which I do not think is the case, we are not here authorized to apply that Act which differs significantly from the ICANN Policy and Rules. The majority decision goes far beyond the scope of the present ICANN Policy.
The panel holds "that the registration of domain names for speculative purposes constitutes a abusive registration when (1) the Respondent has no demonstrable plan to use the domain name for a bona fide purpose prior to registration or acquisition of the domain name; (2) the Respondent had constructive or actual notice of another's rights in a trademark corresponding to the domain prior to registration or acquisition of the domain name; (3) the respondent engages in a pattern of conduct involving speculative registration of domain names; and (4) the domain name registration prevents the trademark holder from having a domain name that corresponds to its registered trademark."
Unfortunately, the biased test the panel has used here automatically creates a situation, in every case, where there is only one element left to test, if the Complainant has a registered trademark and the domain registered by the Respondent is similar to the Complainant’s registered trademark. Since every ICANN case, by definition, has to have these two other elements the decision obviates two thirds of the tests set up under the ICANN Policy. The majority view boils each case down to the single question, "Did the Respondent have a specific bona fide purpose or use in mind prior to acquisition of the domain name?" It rejects the idea that someone might not know exactly how he or she intends to use the domain name, and makes such uncertainty bad faith registration. That is not what the Policy we, as rule bound arbitrators, are directed to apply by the Rules.
The majority has identified the second element as "knowledge." This test, however, is always satisfied per se by what the majority identifies as automatic "constructive" notice of another's trademark rights. This is not a test, since this element would be satisfied for all registered trademarks by virtue of the simple fact of registration under the majority’s logic.
Similarly, the third element of the majority's test is also satisfied per se anytime the second level domain name and the registered trademark are similar or identical. Thus, the only test left, in each case, is whether the Respondent had a demonstrable plan to use the domain name for a bona fide purpose prior to registration or acquisition of the domain name. This is a gross over-simplification of the issues involved in preventing abusive domain name registrations. It ignores the planned limits of the ICANN Policy and adds wholly new purposes to what is presently a fairly clear set of rules. These rules were worked out as a compromise between the one view of assuming all registrations of domains that are the same as or similar to a trademark were abusive, and the other that recognizes that it is not against the trademark laws of the world to register a domain with an intent to use it that is not fully developed at the time of the registration. The majority decision would create a world where Intent to Use Registrations could be destroyed by simply showing that the ITU registrant has changed his mind after the fact, or was not entirely certain how the mark would finally be used or on what type of product or service. I do not believe this was the intent of the ICANN Directors or the many people who participated in developing these rules. To do so, would be tantamount to repeal of some of the very sound reasons the US and other nations permit ITU registrations.
Complainants are the owners of the United States trademark registrations for (1) J. CREW for bags, clothing and catalog services, Reg. No. 1,308,888 and (2) CREW for clothing, Reg. No. 1308064. Complainant uses as its principal mark J. CREW, and admits that the trademark CREW has not been used as primary advertising for its products and mostly only for in-store signs, etc. Even that is questionable given that the only evidence of that is a few pictures of signs which could have been created for this case, although I do not suggest that that is the fact here. While the majority notes that substantial amounts of advertising have been expended on the J. CREW brand-name, this also appears to be of little relevance in the instant case because the trademark at issue is the CREW mark, not J. CREW. It appears all of Complainant's products are distributed exclusively through the retail stores, factory outlet stores, catalogs and an Internet site at www.jcrew.com. In 1998 for example, Complainant sold under the J. CREW brand-name $626 million worth of merchandise. There is no evidence before this panel that any goods or services were ever sold under the CREW name.
The Respondent claims to have had no actual knowledge of the CREW trademark when it registered the CREW domain name. There is no evidence before this panel to the contrary. The majority states that "Telepathy has registered or acquired more than 50 domain names consisting of words that may be trademarks of others or which are generic words that others may wish to use."  [Emphasis added]
The parties to this dispute are not unfamiliar with each other. Long prior to this dispute, Respondent was solicited by Complainant to become part of Complainant’s affiliate network advertising its goods. Respondent agreed to permit Complainant to place banner ads on Respondent's Web site that were linked to Complainant’s web site. Complainant promised Respondent to pay a commission on sales made to customers using that link, but defaulted on its obligation to pay the commission. At one time Complainant’s attorney apparently unilaterally offered to purchase the <crew.com> domain name from Respondent. When it became clear that Respondent would not sell the domain name for a nominal sum, Complainant revoked Respondent's participation in the affiliate network and instituted this action. One might question whether this does not suggest that, in fact, this is a case of reverse domain name hijacking in which the Complainant has unilaterally decided this is a domain it would now like to have, after encouraging its use by another, and that it is now trying to use the ICANN rules to achieve what it cannot do by negotiations for the purchase of the name.
Nature of the word and trademark "CREW"
It is not disputed that the Complainant's trademark CREW and the Respondent's domain name are essentially the same. Paragraph 4 (a) (i) of the ICANN Policy requires that the domain name be identical or confusingly similar to the Complainant’s trademark. The Complainant clearly meets this test. In this case, however, that fact cuts both ways because the word CREW is so generic. The American Heritage Dictionary defines CREW as:
CREW1 (kr›) n. 1.a. A group of people working together; a gang: a CREW of stagehands. b. A group of people gathered together temporarily; a crowd. 2.a. All personnel operating or serving aboard a ship. b. All of a ship's personnel except the officers. c. All personnel operating or serving aboard an aircraft in flight. 3.a. Sports. A team of rowers, as of a racing shell. b. The sport of rowing. --CREW intr.v. CREWed, CREW·ing, CREWs. To serve as a member of a CREW: CREWed for my sister on a sloop; a spacecraft that was CREWed by a team of eight people. [Middle English creue, military reinforcement, from Old French creue, increase, from feminine past participle of creistre, to grow, from Latin cr¶scere. See ker-2 below.]
CREW2 (kr›) v. Chiefly British. A past tense of crow2.
As discussed below, the fact that CREW is a generic term permeates any analysis for trademark purposes. The majority's contention that any trademark registration by Complainant means that Respondent should automatically be imbued with constructive knowledge of the existence of the registration for purposes of the ICANN Policy, while incorrect in and of itself, is particularly inappropriate for a generic term. Additionally, as numerous courts have stated, a trademark owner is not by definition entitled to all domain names incorporating their trademark or even those identical to their trademark. See, Judge Pregerson’s excellent discussion of this issue in Lockheed Martin Corp. v. Network Solutions, Inc., 985 F.Supp. 949 (C.D. Cal. 1997), aff'd, 194 F.3d 980 (9th Cir. 1999). This is especially so where the mark is generic and a common term. See, Cello Holdings, LLC v. Lawrence-Dahl Companies, 2000 U.S. Dist. LEXIS 3936 (S.D. N.Y. 2000), denying cross motions for summary judgment because the Court felt the Plaintiff could not prove bad faith registration under the ACPA because of the generic nature of the word Cello, as a musical instrument. In Cello the defendant even acknowledged that it had sought to sell the domain name to others, as part of his business of selling domain names for generic use. This is exactly the situation here, and the same logic should apply.
Furthermore, the majority seems to assume that a trademark owner has some sort of God given right to use the trademark to the exclusion of others. As Justice Holmes observed, "A trademark does not confer a right to prohibit the use of the word or words…. A trademark only gives the right to prohibit the use of it so far as to protect the owner's goodwill against the sale of another's product as his." Prestonettes, Inc. v. Coty, 264 U.S. 359 (1924). In short, the Complainant does not own all rights to the generic word CREW by virtue of its trademark registration.
Registrant Rights or Legitimate Interests
Paragraph 4 (a) (I I) of the ICANN Policy asks whether the Respondent has any rights or legitimate interests in respect of the domain name. Where the domain name and trademark in question are generic, and in particular where they comprise no more than a single, short, common word, the rights and interests inquiry is more likely to favor the domain name owner. As the court held in Hasbro, Inc. v. Clue Computing, Inc., 66 F.Supp.2d 117, (D. Mass., 1999), holders of a famous mark are not automatically entitled to use that mark as their domain name; trademark law does not support such a monopoly. If another Internet user has an innocent and legitimate reason for using the famous mark as a domain name and is the first to register it, that user should be able to use the domain name, provided that it has not otherwise infringed upon or diluted the trademark.
The ICANN policy is very narrow in scope; covers only clear cases "cybersquatting" and "cyber piracy," and does not cover every dispute that might rise over domain names. See, for example, Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (October 24th, 1999), http://www.icann.org/udrp/ udrp-second-staff-report-24oct99.htm 4.1(c) which states:
Except in cases involving "abusive registrations" made with bad-faith intent to profit commercially from others' trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide. The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of "abusive registrations." Thus, the fact that the policy's administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger's trademark) is a feature of the policy, not a flaw.
The majority decision spends substantial effort attempting to demonstrate that what it terms "speculation in domain names" is sufficient per se to be an "abusive registration." However, carefully reviewing the tests provided in the ICANN policy indicates otherwise.
Bad Faith Registration and Use
The third element of the ICANN policy requires that Complainant prove that the domain name was registered and is being used in bad faith. Paragraph 4 (B)(U) of the policy sets forth four factual examples of circumstances under which the registration and use of the domain name may be found to be in bad faith. The Complainant in the instant case has not and cannot meet any of the four alternative elements of a bad faith registration and use.
Specifically, the key alternative element which the Complainant is unable to meet in paragraph 4 is underlined below:
(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…
Despite the majority's contention that Complainant’s registration of the CREW trademark somehow automatically imputes to the Respondent a violation of this element, there is absolutely no such evidence before this panel. While it is possible that the Respondent acquired the domain name for the purpose selling renting or otherwise transferring the domain name, because CREW is a common word, it cannot merely be assumed that Respondent's intent was to sell and transfer the domain name to the Complainant.
(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…
Similar to the first test element above, one cannot simply, without additional evidence, impute that when one registered a generic name he or she by definition does so to prevent the owner of the trademark on a generic word from having or using that domain name. While a court of law might come, after having taken proper evidence, listened to testimony, and properly weighed the evidence, to a determination that this was the intent of the domain name registrant, it is not place of this panel to do so, based on unsupported assumptions of intent.
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or…
There is no evidence to support this element and it is thus completely inapplicable.
And finally, the last alternative test is
(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.
This element of the bad faith analysis also fails for two reasons. First, the name is generic and as such does not have an immediate relationship to the Complainant any more than it does to thousands of CREW teams around world or any of a number of its other meanings. (Again, see the Hasbro decision supra). Second, there is no evidence that the Respondent in any way attempted to create confusion as to the source of origin, sponsorship, or ownership of the domain name. Any confusion which may have occurred was at least, in part, due to the conduct of the Complainant whose own solicitation of the link on the web site of www.crew.com caused an implied relationship. As noted above, at the behest of Complaint’s own representative, the Respondent was encouraged by an offer of a commission, to, and did, place a banner ad on the CREW.com web site to direct traffic to the Complainant’s web site. In my judgment, it is highly illogical to find that by placing the banner ad, solicited and sanctioned by the Complainant, that directing traffic to the Complainant’s business should be considered an intentional attempt to create confusion as to the source of the domain. To the contrary, it seems an admission by Complainant that there is no confusion likely.
We are not legislators, but arbitrators. The majority, in an effort to stop a practice that it seems to take upon itself to believe is an unstated purpose of the ICANN Policy, has completely over-stepped its mandate as arbitrators. The decision creates a new and unauthorized test out of whole cloth, based on assumptions of fact by arbitrators without evidence on the subject, instead of using the appropriate and carefully crafted three step test for required evidence set out by the ICANN’ Policy and Rules. In my judgment, the majority's decision prohibits conduct which was not intended to be regulated by the ICANN policy. This creates a dangerous and unauthorized situation whereby the registration and use of common generic words as domains can be prevented by trademark owners wishing to own their generic trademarks in gross. I cannot and will not agree to any such decision, which is fundamentally wrong. I respectfully dissent from the majority decision of my fellow professional panelists.
G. Gervaise Davis III
April 20, 2000
1. Found in part in 15 U.S.C. §1125(d).
2. The majority takes this fact, rules it bad, and uses it to achieve its desired result. In contrast, see the discussion in Administrative Panel Decision for the <thyme.com> domain name, dispute case No.AF-0104.