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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Edward Don & Company v. Black Bayou LLC / Domain Administrator
Case No. D2008-1373
1. The Parties
Complainant is Edward Don & Company of North Riverside, Illinois, United States of America, represented by the law firm Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
Respondent is Black Bayou LLC / Domain Administrator of Lakeland, Florida, United States of America, represented by John Berryhill, Ph.D., Esq., United States of America.
2. The Domain Name and Registrar
The disputed domain name <don.net> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the вАЬCenterвАЭ) on September 8, 2008. On September 10, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On September 10, 2008, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the вАЬPolicyвАЭ), the Rules for Uniform Domain Name Dispute Resolution Policy (the вАЬRulesвАЭ), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the вАЬSupplemental RulesвАЭ).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced September 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2008. The Response was filed with the Center October 7, 2008.
On October 21, 2008, Complainant submitted a proposed Reply to the Center. The Center advised the parties that the Panel would be advised of this pleading and would determine whether or not to allow it.
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, Jeffrey M. Samuels, and Tony Willoughby as panelists in this matter on October 28, 2008. 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, paragraph 7.
4. Factual Background
Complainant supplies food service equipment supplies nationally and internationally. It has used as trademarks the words DON, EDWARD DON, and DON and design since 1935 for these services. Complainant owns dozens of registered marks that incorporate the word DON, in many countries around the world, including two federal registrations issued by the United States Patent and Trademark Office (вАЬUSPTOвАЭ). The first of these was registered in 1987. ComplainantвАЩs principal website is located at <don.com>.
Respondent is a domainer вАУ a person who owns a large portfolio of domain names and makes money by selling domain names to interested buyers and by placing advertisements on websites established at the domain names it owns. Respondent purchased the disputed domain name from an unaffiliated individual (whose first name was Donald) in August 2007 for USD 5,000 and has subsequently set up a pay-per-click page there. Included on this page is the statement вАЬBUY THIS DOMAIN! This domain name may be for sale by its owner.вАЭ Typical of pay-per-click sites, the website hosts a number of hyperlinks to other websites. Some of these include the word вАЬdonвАЭ; most, however, are the standard references to websites for financial products, automobiles, computer products, and the like. None of the sample pages submitted by either party illustrates any hyperlink to Complainant or a competitor of Complainant.
On July 15, 2008, Complainant sent respondent a cease-and-desist letter, to which Respondent replied on July 22, 2008. The partiesвАЩ positions in these letters are very similar to their arguments in this case.
5. PartiesвАЩ Contentions
Complainant contends as follows:
The disputed domain name is identical to ComplainantвАЩs registered marks that consist of the word вАЬdonвАЭ except for the addition of the generic top-level identifier .net.
Complainant has not authorized Respondent to use its marks, Respondent has never been known commercially or individually by the word вАЬdonвАЭ, and Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services. Respondent had constructive notice of ComplainantвАЩs trademark rights in the DON marks since at least 1984, the year in which Complainant first filed an application to register one of these marks with the USPTO.
RespondentвАЩs use of the disputed domain name to forward users to a pay-per-click site and its offer of the disputed domain name for sale illustrate bad faith in use and registration. Respondent registered the domain name to divert visitors seeking ComplainantвАЩs products or website to its own commercial site. Using anotherвАЩs marks for these purposes is вАЬitself evidence of bad faith.вАЭ Given ComplainantвАЩs global trademark rights вАЬit is not possible to conceive a plausible circumstance in which Respondent could legitimately use the domain name.вАЭ (Quoting from Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003).
Respondent contends as follows:
Respondent does not contest ComplainantвАЩs many trademark registrations but asserts вАЬthat Complainant has provided no evidence of the extent to which Complainant has used the mark and no evidence to support ComplainantвАЩs allegation that this mark is widely known throughout the world.вАЭ
Don is a common American nickname (short for Donald), a common Spanish word meaning lord and therefore having religious significance in that language, and has no inherent distinctiveness. Respondent regularly collects domain names consisting of common first names and domain names with religious significance. As such, it is not improper (and it is a bona fide use under the Policy) to use such domain names for advertising websites, particularly where as here many of the sponsored links on the websites relate to the common meaning of the word and none to ComplainantвАЩs line of business or ComplainantвАЩs competitors. Similarly, buying and selling domain names is perfectly legitimate so long as there is no competition with a mark owner and the mark owner is not uniquely or famously associated with a common word per se. Respondent uses the disputed domain name вАЬin connection with a general search page relating to the name вАШDonвАЩвАЭ, and that use is legitimate under paragraph 4(a)(ii) of the Policy.
For similar reasons Respondent did not register and has not used the disputed domain name in bad faith. Bad faith under the Policy requires specific intent directed against the Complainant, and Respondent must know of and be targeting the Complainant when it registered the disputed domain name. Here Respondent registered the disputed domain name without knowledge of Complainant or its mark, to take advantage of its dual common uses, a nickname and a word with religious overtones.1 ComplainantвАЩs rights in its marks are limited to the services for which they are registered and Respondent does not use the marks in any manner connected to those services.
6. Discussion and Findings
Procedural Matter. After considering ComplainantвАЩs proposed Reply the Panel has determined not to allow it. There was nothing in the Response that Complainant should not have anticipated, and the Reply consisted primarily of re-argument of matters set out in the Complaint. Certainly there was nothing вАЬextraordinaryвАЭ2 justifying a pleading not authorized by the Policy or the Rules. The Panel took no account of the Reply in reaching its decision.
Standard for Decision. To prevail the Complainant must establish the following:
(i) RespondentвАЩs domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect to the domain name; and
(iii) RespondentвАЩs domain name has been registered and is being used in bad faith.
Complainant bears the burden of proof on each Policy element.
A. Identical or Confusingly Similar.
This Policy element is clearly met, indeed conceded by Complainant, as the disputed domain name is identical to ComplainantвАЩs registered DON marks except for the top level domain вАЬ.netвАЭ.
B. Rights or Legitimate Interests.
While it is true, as Respondent argues, that aggregation or resale of domain names and using a portfolio for revenue from advertising are not per se illegitimate under the Policy, that fact alone does not give Respondent the unqualified right to appropriate the mark of another for such activities. RespondentвАЩs use may be legitimate only if it did not register the disputed domain name in bad faith, an issue to which the Panel now turns.
C. Registered and Used in Bad Faith.
ComplainantвАЩs case for bad faith depends upon a theory of constructive notice adopted from United States trademark law. That doctrine per se has rarely been applied in Policy proceedings, however. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.4, notes:
Most panels have declined to introduce the concept of constructive notice into the [Policy]. However, where a complainant had a United States registered trademark and respondent was located in the United States, this concept has been used in a few cases to support a finding of registration and/or use in bad faith. In those cases, where the complainantвАЩs trademark registration preceded the respondentвАЩs domain name registration, respondent was presumed to have notice of the trademark.
The exception stated above may be somewhat over-generalized. Most of the cases in which a panel has found bad faith registration without proof or a reasonable inference of actual knowledge of complainantвАЩs mark involved either a distinctive mark, see, e.g., Champion Broadcasting System, Inc. v. Nokta Internet Technologies,
WIPO Case No. D2006-0128 (WUNR); Biogen, Inc. v. Kel Ellis, KELCO,
WIPO Case No. D2002-0679 (Avonex); Kate Spade, LLC v. Darmstadter Designs,
WIPO Case No. D2001-1384 (Kate Spade), or some additional indication of cybersquatting, e.g., Factory Mutual Insurance Company v. Valuable Web Names,
WIPO Case No. D2008-1014 (link to complainantвАЩs website); Briefing.com, Inc. v. Cost Net Domain Manager,
WIPO Case No. D2001-0970 (typosquatting). Especially when the mark is an everyday word or phrase panels tend more often to decline to find registration in bad faith based upon a claim of constructive notice, even when the parties are both American. E.g., Dr. Mitchell Mandel and Ms. Jill Slater v. CSC Laboratories, Inc.,
WIPO Case No. D2006-0719 (вАЬComplainantвАЩs assertion that, pursuant to the constructive notice provision of U.S. trademark law, Respondent should be charged with notice of ComplainantвАЩs rights in the SKIN DOCTOR mark as of its date of registration, i.e., May 23, 1995, is rejected by the Panel. While some panels have relied upon the doctrine of constructive notice in UDRP proceedings, most panels have declined to do so.вАЭ); Jeffrey S. Thompson d/b/a The Wedding Planner v. Weddingchannel.com, Inc.,
WIPO Case No. D2002-0086 (weddingplanner).
The normal rule for establishing registration in bad faith is that the respondent must have actual knowledge of the mark in question, and have actively targeted that mark in order to benefit from the markвАЩs value.3 These matters may sometimes be proven inferentially, but there must be some factual basis for the Panel to make the necessary inference. The partiesвАЩ evidence in this proceeding contains nothing from which that inference could be made. ComplainantвАЩs mark does not appear from the provided record to be famous in the trademark sense, indeed Complainant has provided no evidence of its renown in the United States (where Respondent is based) or anywhere else вАУ in the language of Policy decisions, there is no showing that the mark consisting of a common word is associated exclusively or primarily with its owner or that вАЬthat some identifiable audience [including respondent] was aware of use of the phrase as a designation of origin of goods and services.вАЭ4 Certainly ComplainantвАЩs counselвАЩs conclusionary statement that the marks have achieved вАЬa strong secondary meaningвАЭ is insufficient. What must be demonstrated with competent evidence are facts from which the Panel could make this conclusion under the Policy, and beyond providing copies of its own web site Complainant has furnished no evidence at all of the extent of its marksвАЩ renown. That and the undeniable fact that вАЬDonвАЭ is a common menвАЩs first name and a word used commonly in other contexts lead the Panel to conclude that Complainant has not carried its burden of proof that Respondent registered the disputed domain name in bad faith.
For all the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Jeffrey M. Samuels
Dated: November 10, 2008
1 Respondent provides lists of other such domain names that it owns related to these subjects.
2 See Gigglesworld Corporation v. Mrs Jello,
WIPO Case No. D2007-1189 (order denying proposed supplemental filing quoted in fn. 1).
3 E.g., Align Technology, Inc v. Web Reg/ Rarenames/ Aligntechnology.Com,
WIPO Case No. D2008-0103; Gold Medal Travel Group plc v. Damir Kruzicevic,
WIPO Case No. D2007-1902; Janet E. Sidewater v. Worldwide Media Inc.,
WIPO Case No. D2006-1281.
4 Edward G. Linsky v. Brian Valentine,
WIPO Case No. D2006-0706.