WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
G Corporation v. William E. Merritt
Case No. D2000-0266
1. The Parties
Complainant is g (hereinafter "g") a Washington corporation, with its principal place of business in Seattle, Washington, U.S.A. Respondent is William E. Merritt, 1431 SE Knight Street, Portland, OR 97202, U.S.A. (hereinafter "Merritt").
2. The Domain Name and Registrar
The domain name at issue is g registered with R, Inc.
3. Procedural History
The procedural history of this dispute is set forth in the Panel�s earlier decision allowing Respondent to file a response even though the time to respond had passed. This was because of failure of proper service. The history will not be repeated here. Suffice it to say here only that the matter is now appropriate for the Panel to decide. All necessary formalities and procedures have been accomplished.
4. Factual Background
g Formation and Use of the Name
g is an electronic publishing and electronic book distribution company headquartered in Seattle, Washington. g was conceived of by Chris Van Dyk, also the company�s incorporator. Mr. Van Dyk filed an extensive declaration in this case, affirming most of the facts set forth in this section. Mr. Merritt filed no responsive declaration. He relied only on a brief and his unverified Complaint against Van Dyk, g, R and others in a shareholder�s derivative action. Most of the facts asserted by Mr. Van Dyk as to adoption and use of g are uncontested.
Prior to his involvement with g, Van Dyk was President and Chief Administrative Officer of RoxyB corporation ("Roxy"). Roxy is also in the electronic publishing and electronic book distribution business. On November 11, 1999, by motion presented to the Executive Management Committee of Roxy by Respondent, William E. Merritt, Van Dyk was relieved of his duties as President & CAO of Roxy. In a Board of Directors meeting on November 15, 1999, Van Dyk was nominated to a newly created position of Vice President of Finance, but due to serious differences in opinion with respect to Merritt�s business plans related to Roxy, Van Dyk declined the nomination and resigned his position as president.
On or about November 20, 1999, Van Dyk met with at least one person who worked directly with him at Roxy about creating a new company. At least as early as November 27, 1999, Van Dyk had developed a preliminary strategy and workplan for the development of the new company, named g Corporation.
The g name was inspired by Van Dyk�s wife, Jeanne (pronounced like Genie). Van Dyk changed the spelling because "Genie" is an Anglicization of the Arabic jenni and a French word derived from the Latin "genius" which translates roughly to mean the prevailing spirit or guardian knowledge of the place or home. The idea behind the name was that g is the genius domus, engendering and informing the spirit of knowledge through the electronic books that will be delivered to readers from the g website.
Since at least as early as December 9, 1999, Van Dyk has used the g name to refer to the g business in contacts with third persons, e.g., potential investors. Further, by January 7, 2000, Van Dyk had negotiated and was closing a deal on behalf of g with a major software publisher.
On December 8, 1999, Van Dyk submitted a reservation for the g URL to Network Solutions Inc. ("NSI"). However, due to what appears to be a technical problem at NSI, the reservation was not confirmed, nor was Van Dyk�s credit card charged for a reservation. NSI did not provide Complainant with any notice of a problem. Thus, Complainant was not aware the reservation had been unsuccessful.
On January 13, 2000, Thomas Finnelly, Vice-President of g filed the Articles of Incorporation and a Registered Agent Consent (the "Articles") on behalf of g. He requested and paid for expedited filing. Despite the request for expedited service, g was not incorporated until January 19, 2000, because the Secretary of State wanted to change the corporate address from a P.O. Box to a street address.
From December to mid-January, Jim Tate (CEO of g) and Van Dyk met and worked with website and software developers, developing the organization that would in turn develop and build the software infrastructure for the g website (the "Website"). They planned to launch the Website approximately two months after securing initial capital for the company. Their primary task was creating the legal documents -- the Offering Memorandum -- which would enable them to legally raise said capital. On January 17, 2000, Van Dyk substantially completed the Offering Memorandum.
Van Dyk/g and Merritt/Roxy Interaction
Between November 1999 and January 2000, Van Dyk was negotiating with Roxy regarding a termination agreement (the "Termination Agreement") so that Van Dyk could pursue g. Specifically, Van Dyk was corresponding with Ricardo Fleischfresser, who until the week of January 17, 1999 1 and subsequent to Van Dyk�s termination, was the President of Roxy. By Friday January 14, 2000, Van Dyk and Fleischfresser were in the final stages of drafting the Agreement. Van Dyk sent Fleischfresser a copy of the proposed Agreement by email. In the body of the email Van Dyk indicated that g was to be a party to the agreement and commented on other minor changes to the Agreement.
On January 18, 2000, Van Dyk met with Ricardo Fleischfresser of Roxy on behalf of Roxy shareholders, who, together with Van Dyk, owned over 50% of Roxy. Meetings occurred on that and the following day to work out the terms of a tender offer and purchase agreement for Roxy. William Merritt was informed of this proposal, including the involvement of g, on January 19, 2000. The Majority Members, and all other shareholders with the exception of Merritt and two minor shareholders accepted the proposal and g now owns approximately 72% of Roxy common stock. Merritt was and remains hostile to the purchase.
Respondent claims that:
"..., these activities are not effective to divest Respondent of his ownership in the underlying business and, consequently, Respondent is the sole, real owner of Geniebooks. Accordingly, Respondent filed suit in the Circuit Court of the State of Oregon for the County of Multnomah, Case Number 0002 01511, captioned William E Merritt v. G Corporation, RoxyB Corporation, Christopher R. Van Dyk, Roxann Caraway, Ed Hutson, Jim Tate and John Does 1 through 20.
That suit was filed in February 2000. Respondent there alleges that all stock in Geniebooks should be held in constructive trust for RoxyBooks and its shareholders.
Respondent Was Adverse to G and Was Aware of its Activities.
Respondent was aware of the formation of g and was adverse to it as he considered g a competitor to Roxy 2. He claims in his Complaint that Geniebooks is a direct competitor to RoxyBooks. He also there asserts that:
"[s]tarting in late November, 1999, and continuing through the present, Van Dyk set up, owned and ran Geniebooks DBA, a business he established to compete with RoxyBooks. When Geniebooks DBA was incorporated under the name G Corporation, Van Dyk became president and chairman of the board of directors of Geniebooks."
Respondent was informed of the existence of g and Van Dyk�s specific plans with respect to g at least as early as January 14, 2000. As noted above, RoxyB was sent an e-mail and the draft Separation Agreement on January 14, 2000, which showed Van Dyk was using the g name. Although he does not appear as a recipient in the email attached as part of Exhibit E, William Merritt was sent a copy of the email and the attached Agreement at the same time. See Van Dyk Declaration, � 5 and Exhibit F to the Complaint.
On that same day (January 14, 2000), Respondent registered G as his own domain name. He did so in the context of the on-going dispute between him and Van Dyk; not in connection with any offering of goods or services. As Respondent described the situation in a letter on RoxyB letterhead which he signed as "Chairman, RoxyB Corporation,
"I reserved the g URL on 14 January 00. Since genieB Corporation was not even formed until 19 January 00 -- in obvious response to my having already registered the name -- it�s clear that you people are trying to pirate a business name that belongs to me. So, this is my demand that you immediately cease using the genieBooks name. In this regard, unless you can show me some convincing evidence that the existence of the genieBooks company substantially predates my registering the URL, I suggest we hash out in court who among us owns both names. This is going to make a fascinating test case. It�s the kind of thing that might go all the way to the supreme court and make all of us famous." (Emphasis in original.)
5. Parties� Contentions
Complainant has requested that the domain name be transferred to Complainant because:
(1) the domain name G is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name was registered and is being used in bad faith.
Respondent responds to these assertions that:
(1) Complainant has no trademarks or service marks. At most, G is only a company name adopted when Van Dyk was approaching potential investors.
(2) Respondent has a legitimate right to the domain name because his ownership interest in the G company is superior to and displaces the other reputed shareholders. Additionally, since Respondent must serve the "John Does" with his Complaint, the webpage allows the John Does to find out about the lawsuit.
(3) There was no bad faith because Respondent had the right to protect his and RoxyBooks� interests by registering this name. He did so before Complainant had established trademark rights. He also alleges he has been using the domain name for the good faith purposes of giving notice to John Doe defendants named in the litigation.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration.
Paragraph 4(a) of the Policy establishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent�s 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 of the domain name; and
(iii) Respondent�s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. They will be addressed separately below:
The Domain Name, Trademarks and Service Marks
Paragraph 4(a)(i) requires that Respondent�s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Respondent contends that Complainant has not met this requirement because the Complainant lacks trademark rights in the g mark, pointing out that Complainant has made no showing as to any trademark registration.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Since all parties are domiciled in the United States, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel will look to the principles of the law of the United States. Complainant was requested by the Panel to provide supplemental legal authority showing that its activities meet the requirements of Policy paragraph 4(a)(i). It provided no authority in response to that request.
Under United States law the fact that the Complainant does not have a registered mark does not end the trademark or service mark rights analysis. Actual use in commerce, without more, establishes protectable trademark rights under United States common law 3. The "use in commerce" standard requires (a) a bona fide use of a trademark or service mark in the ordinary course of trade, and (b) not made merely to reserve a right in a mark 4.
Respondent�s Complaint in the Oregon litigation admits such common law use of g by Complainant in connection with goods and services. It refers to Complainant as a "direct competitor" with RoxyBooks, starting at least in November 1999, before Respondent registered the domain name. It also specifically alleges:
"Starting in late November 1999, and continuing through the present, Van Dyk and Geniebooks have directly competed with RoxyBooks in the business of posting and selling electronic copies of books on the World Wide Web."
G has also offered a signed declaration showing uses of the mark g in the ordinary course of trade. Complainant has had business contacts with investors and secured financing for the company using the mark g; has incorporated under the name g in Washington State; has worked with website and software developers using the mark g; and has entered into a signed agreement with Online Web Ventures to provide web hosting for g. There is no need for evidence of an actual sale to establish trademark rights, as long as the company is not merely trying to reserve a right in a mark 5. Here it is clear that g is not merely trying to reserve a mark, but has used and intends to continuously use the mark in the ordinary course of its trade as an electronic book publisher.
Respondent contends that Complainant�s assertion is simply that Respondent has registered Complainant�s business name (not a trade or service mark) as a domain name, and cites to Frank Wagner & Son v. Cindy Mahan for authority that this is insufficient 6. However, it is established that the name of a company may also be a trademark 7. In Frank Wagner & Son, the Complainant presented no evidence of the establishment of common law trademark rights to the panel. Hence, the panel had no choice but to rely on the fact that the mark was not registered and reject the notion that the Complainant in that case had established rights in the mark. Here that is not the case. The Respondent�s Complaint admits trade or service mark use and Complainant�s declaration presents activities sufficient to establish common law trademark or service mark rights.
The evidence presented demonstrates that the domain name g is identical or confusingly similar to Complainant�s g mark. Therefore, the requirement of Paragraph 4(a)(i) is met.
Rights or Legitimate Interests in Respect of the Domain Name
Paragraph 4(c) of the Policy enumerates how a respondent may establish rights to and legitimate interests in a domain name. The evidence presented shows that Respondent never attempted to use the domain name in connection with offering any goods or services, nor any business of any kind. Respondent does not deny this. Therefore, subparagraphs (i) and (ii) of Para. 4(c) are inapplicable. Paragraph 4(c)(iii) does describe a circumstance under which a Respondent can demonstrate such rights and interests even without a commercial use. This is where "you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue."
Respondent offers two asserted "legitimate" uses. First, he says his ownership interests are superior to Complainant�s in the g Corporation. Second, he urges that the use of the domain name to advise "John Does" of the litigation is such legitimate use. Neither basis is appropriate.
This section is meant to cover such "fair uses" as have long been recognized under the law, e.g., use of descriptive words in a descriptive sense, use of a geographic mark to tell customers of location, use of a personal name, etc. To allow a dissident shareholder or purported shareholder to appropriate a domain name of an existing corporation is not such a use and certainly is not a noncommercial or fair use without intent for commercial gain. Additionally, Respondent has other, more appropriate fora for addressing the respective ownership rights to the domain name, such as in the Oregon shareholder�s action. If Respondent is correct, that Court can address relief as to ownership of the domain name.
Likewise, and for the same reasons, the purported use of the domain name for advising John Does in the existing litigation is insufficient. Judicial procedures and other procedures provide perfectly adequate means to perfect service and to advise interested parties about litigations. Adoption of another�s mark as a domain name in its totality is not appropriate or required to provide such notice. Arbitrators applying the ICANN Policy have recognized this principle in analogous contexts. As the arbitrator said in Campagnie de Saint Gobain v. Com-Union Corp., ICANN Case No. D2000-0020.
"[i]t goes without saying that shareholders or other interested parties have the right to voice opinions, concerns and criticism with respect to a listed company and that the Internet constitutes an ideal vehicle for such activities. The issue at hand is however not as a Respondent seems to contend, the freedom of speech and expression but the mere choice of the domain name used to exercise this inalienable freedom of speech and expression. When registering the Domain Name, Respondent knowingly chose a name which is identical and limited to the trademark of Complainant. . . . Respondent could have chosen a domain name adequately reflecting both the object and independent nature of its site, as evidenced today in thousands of domain names. By failing to do so, and by knowingly choosing a domain name which solely consists of Complainant�s trademark, Respondent has intentionally created a situation which is at odds with the legal rights and obligations of the parties."
The evidence shows that Respondent merely registered this domain name as a tactical move in the struggle between Complainant and Respondent for control of RoxyB and/or to preclude the competitor or potential competitor g from using the name on the Internet. For example, Respondent�s letter of March 4, 2000 demanding an immediate cessation of the use of the G name makes no reference whatsoever to any right or legitimate interest of Respondent with respect to use of the domain name. Rather, Respondent speaks about reservation of the domain name only in the context of the ongoing business struggle for control of the RoxyB corporation.
Therefore, the requirement of paragraph 4(a)(ii) has been proved by Complainant.
Bad Faith
The third element Complainant must prove is in the conjunctive: the domain name "has been registered" and "is being used in bad faith." The evidence presented by the parties demonstrates that the Respondent did both register and use the domain name in bad faith.
As to the original registration, Respondent�s Complaint admits that, at the time Respondent registered the domain name, Complainant was using the mark g corporation in direct competition with the RoxyB corporation. The evidence also shows that Complainant had used the term g in connection with outside persons since at least as early as December 9, 1999, and had submitted a reservation for the g URL with Networks Solutions prior to Respondent�s registration. Furthermore, Respondent was aware of this use. During the negotiations of Mr. Van Dyk�s Termination Agreement with Roxy, on January 14, 2000, Respondent was sent a copy of an email from Mr. Van Dyk to RoxyB�s president, together with the draft agreement, using the term g. On that same day, Respondent, in bad faith, registered g with R, Inc. in his own name. No lawsuit was pending then, so notification of John Does could hot have been a basis for the initial registration.
Likewise, considering all of the evidence, I find that Complainant has shown that Respondent is using the domain name in bad faith. As noted, at the time of registration Respondent had no intention of using the g name. Rather than any legitimate use of the name for Respondent�s own business, the use was in bad faith to try to resolve a corporate management dispute at RoxyB and to keep Van Dyke from using the name in a competitive company.
The letter of March 4, 2000, on the letterhead of RoxyB and signed "William E. Merritt, Chairman, RoxyB Corporation," says that "I�ve reserved the G URL on 14 Jan. 00. Since genieB Corporation was not even formed until 19 Jan. 00-in obvious response to my having already registered the name-it�s clear that you people are trying to pirate a business name that belongs to me." He goes on to demand immediate cessation of the use of the g name. It is apparent that the registration by the chairman of one competitor of his competitor�s business name and use of that name is done in bad faith. See the Policy, para. 4(b)(iii) providing that registration and use of a domain name primarily for the purpose of disrupting the business of a competitor is evidence of bad faith.
Therefore, the requirement of paragraph 4(a)(iii) has been proved by Complainant.
7. Decision
Claimant has proved the necessary elements that the names are identical or confusingly similar to its trade or service marks, that Respondent has no rights or legitimate interests in the domain name and that Respondent registered the domain name in bad faith and is using it in bad faith. Therefore, the remedy requested by Complainant is granted. Respondent is required to transfer the domain name g to Complainant.
Thomas L. Creel
Presiding Panelist
Dated: July 26, 2000
Footnotes:
1. Sic. See Van Dyk Declaration of March 20, 2000, � 5.
2. Respondent has described himself as "Chairman, RoxyB Corporation."
3. Jerome Gilson, Trademark Protection and Practice, �3.02[2].
4. Gilson, supra note 1.
5. See Walt Disney Productions v. Kusan, Inc., 204 U.S.P.Q. 284, 287 (1979).
6. Frank Wagner & Son v. Cindy Mahan a/k/a Cindy Maham, an individual, Case No. D2000-0261.
7. See Hotel Corp. of America v. Inn America, Inc., 153 U.S.P.Q. 574, 575 (1967
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