WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Monotag Corp, dba Signs First v. Melinda Diane Byrd
Case No. D2001-0561
1. The Parties
The Complainant is Monotag Corporation, dba Signs First, a Tennessee corporation whose principal place of business is at 813 Ridge Lake Blvd., Suite 495, Memphis, Tennessee 38120, USA. The Complainant is represented by Nicolette R. Simms of Dinsmore & Shohl LLP with a mailing address of 1900 Chemed Center, 255 E. Fifth Street, Cincinnati, Ohio 45220, USA.
The Respondent is Melinda Diane Byrd, whose mailing address is P.O. Box 210245, Nashville, Tennessee 37211-0245, USA. Respondent is represented by G. Scott Thomas and Robert L. Brewer of Bass, Berry & Sims, PLC with a mailing address of 315 Deaderick Street, Suite 2700, Nashville, Tennessee 37238-0002, USA.
2. The Domain Name and Registrar
The disputed domain name is . The registrar of the domain name is Network Solutions, Inc., of 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") on April 18, 2001 and assigned case number D2001-0561.
The Center verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("Policy"), the ICANN Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), and the WIPO Center Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").
Notification of the Complaint and commencement of the administrative proceedings were communicated by the Center to the Respondent by e-mail, facsimile and courier on April 26, 2001. The Panel has seen the courier receipt and is satisfied that the delivery of the Commencement Notification is in conformity with the relevant requirements under paragraph 2 and paragraph 4 of the Rules and the relevant provisions of the Supplemental Rules.
No response was received by the Center from Respondent on or before May 15, 2001, which was the last day for Respondent to submit a response under paragraph 5 of the Rules and the relevant provisions of the Commencement Notification. A notification of Respondent�s default was communicated by the Center to Respondent on May 15, 2001. On May 16, 2001, the Respondent sent an answer to the Complaint by e-mail with a copy to Complainant. On May 17, 2001, the Respondent sent the original answer (sent via email) and an Amended Answer by email and courier to the Complainant and the Center.
On May 16, 2001, the Center sent an acknowledgement of receipt to the Respondent stating that because the Response was submitted late, the Administrative Panel ("Panel") will decide in its sole discretion whether to consider the Response in deciding the case. On May 23, 2001, the Panel was selected and decided to allow the late submission from Respondent. The Panel is satisfied that the answer and the amended answer satisfied the Rules and the Supplemental Rules with regard to notification.
On May 24, 2001, the Panel granted the Complainant�s request to file a reply to the Response, and correspondingly granted the Respondent�s request to file a sur-reply. Complainant�s reply was due June 7, 2001, and Respondent�s sub-reply was due June 21, 2001. The reply was filed on June 7, 2001, and sent by email to Respondent at the e-mail address noted above. The Panel is satisfied that the reply satisfied the Rules and the Supplemental Rules with regard to notification. A sur-reply was filed on June 20, 2001, and sent by e-mail to Complainant at the e-mail address noted above. The Panel is satisfied that sur-reply satisfied the Rules and the Supplemental Rules with regard to notification.
Based on a Statement of Acceptance and Declaration of Impartiality and Independence, duly signed by the Panel and dated May 23, 2001, the Panel was duly appointed by the Center on May 23, 2001. A notification of appointment of the Panel was communicated by the Center to both Complainant and Respondent on the same date.
In addition to the submissions noted above, on June 5, 2001, the Panel was copied on an email from Complainant regarding changes to the website associated with the domain name , and reciting an excerpt from Network Solution's Service Agreement directed to the prohibition on changes to domain name records while a domain name registration is in dispute. Despite the fact that a change to the website is not the same as a change to the domain name record, on the same day, Respondent replied by stating that Respondent had not initiated or requested the replacement of the website with a third party's content and stating that the hosting company, , had "arbitrarily replaced the content of Melinda Byrd's website without her knowledge or permission." Apparently, at that time, the website was advertising "Appliance Wholesale Warehouse." Respondent stated that it "does not and never has held any connection or affiliation with �Appliance Wholesale�," and has "never even heard of the company."
On July 17, 2001, the Panel received another e-mail from Complainant stating that the content of the website associated with the domain name had once again changed, in the manner noted in Section 4.C. of this decision, and to "advise the Panel that this is not the initial version of the website that appeared when Complainant filed its Complaint with WIPO." In response, Respondent stated in an e-mail also dated July 17th, that "Respondent has not instructed the hosting company to modify the Website content after the commencement of this suit or after Complainant's filing with WIPO. Any changes to the Website have not been at the direction or request of the Respondent."
The date scheduled for the issuance of the Panel�s decision is July 23, 2001.
4. Factual Background
A. Complainant
The Complainant is Monotag Corporation dba, Signs First ("Signs First"). The Complainant has owned federally registered service mark SIGNS FIRST since January 25, 1993, and first used the mark in 1990. (See Annex A, U.S. Trademark Registration).
The mark is used in connection with "custom manufacturing of indoor and outdoor signs." (See Annex A). Signs First is a franchisor to manufacturers of custom indoor and outdoor signs. On May 23, 1996, Respondent entered into a Franchise Agreement ("Agreement") with Complainant. (See Annex 4, Franchise Agreement). Under the Agreement, Respondent was licensed to use Complainant�s service marks in connection with the operation of the business.
The Agreement was terminated on March 10, 2000. (See Annex 5, Termination Letter). On March 23, 2001, counsel for Complainant informed Respondent�s counsel that her continued use of the domain name violated Complainant�s rights and demanded that Respondent transfer the domain name to Complainant. (See Annex 6, Cease and Desist Letter). On March 30, 2001, Respondent�s former counsel responded and stated that he no longer represented Respondent but would forward the letter accordingly. (See Annex 7, Representation).
B. Respondent
Respondent is Melinda Diane Byrd ("Byrd"). Respondent is a former franchise owner of a Signs First franchise (See Annex B, Franchise Purchase Agreement ("Agreement"), dated March 23, 1996)). Respondent acknowledges that the Agreement was terminated on March 10, 2000 (See Annex C, Termination Agreement).
Respondent registered the domain name for her former franchise with Network Solutions on July 30, 1997. Network Solutions� records lists Respondent as one of the owners of the domain name. (See Annex D, Network Solutions Ownership Record).
C. Additional Facts
The existence of the collateral dispute between the parties regarding changes to the website, as noted above, encouraged the Panel to review the website associated with the domain name. This website is currently comprised of a single page with text as follows:
HAVE A QUESTION ABOUT
SIGNS?
FIRST,
CONTACT US!
PHONE
615-834-4111
FAX
615-834-5111
This website also includes the following metadata:
meta name="description" content="Do you have something to say? Let us help! We can help with most of your advertising needs. We make signs, banners, logo design & reproduction, vehicle lettering, magnetics, static cling, labels, special event and promotional items and much much more!">
5. Parties� Contentions
A. Complainant
Complainant contends:
(i) The domain name registered by Respondent is identical and confusingly similar to the SIGNS FIRST mark. Upon entering the domain name, the user is redirected to /.
(ii) Respondent has no rights or legitimate interests in the domain name . Under the terms of the Termination Agreement, Respondent was required to terminate all interests that used the service mark SIGNS FIRST, thereby ending Respondent�s right or legitimate interest, if any, in the domain name.
(iii) Respondent�s bad faith registration and use of is a violation of the terms of the Agreement. Respondent was responsible for canceling any assumed names or equivalent registration, which contained the SIGNS FIRST service mark. The Agreement also provided that Respondent may not sell any interest in the franchise without first offering the same to Complainant in writing. Complainant has not received any offer in writing for the sale of the franchise. Therefore, Respondent cannot offer to sell the franchise to others. Respondent offered to sell the domain name to Complainant in excess of the cost of registration.
B. Respondent
Respondent contends:
(i) Complainant has not offered any evidence that there has been any likelihood or actual confusion arising from Respondent�s use of the service mark.
(ii) Respondent contends she sold the domain name , has not used it for a year and if she did use the domain name, it has become a way for Internet users and friends to contact her.
(iii) The domain name was not registered in order to prevent Complainant from reflecting the mark in a corresponding domain name. The domain name was not registered for the purpose of disrupting the business of a competitor, nor was it registered to be sold. Respondent has not attempted to imply that she has any affiliation to the website, location, products or services of Complainant.
6. Discussion and Findings
(i) The domain name registered by Respondent is identical or confusingly similar to a mark owned by Complainant.
The domain name in dispute is . The domain name is identical in appearance to the SIGNS FIRST mark. Indeed, it is the exact character string of Complainant�s federally registered service mark SIGNS FIRST. Attached as Annex 3 of the Complaint are copies of the registered service marks for SIGNS FIRST.
Given that Complainant is only required to show that the "domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights,"(emphasis added by the Panel) and the domain name is identical to Complainant�s federally registered service mark, Respondent�s claim of no actual or likely confusion is irrelevant.
Accordingly, the Panel finds for Complainant on the first element.
(ii) Respondent has no rights or legitimate interests in respect of the domain name.
Paragraph 6 of the Policy states that "[w]e will not participate in any way in any dispute between you and any party other than us regarding the registration and use of your domain name." If litigation had been pending between the parties relating to the domain name, the Panel might be inclined to suspend this action pending the outcome of that litigation, but the Panel was only informed of a decision in previous litigation related to this matter, 3MB, L.L.C. v. G.I.M.C., Inc., No. 98-788-III, Memorandum and Order, Chancery Court for the State of Tennessee 20th Judicial District, Davidson County, Part III, (December 22, 1999). The Panel was not informed of any other pending litigation between the parties relating to the domain name, although the possibility of such litigation was mentioned by the Respondent, so the question of Respondent�s rights or legitimate interests to the domain name will be decided on the facts herein provided.
The parties agree that the Agreement was terminated. Accordingly to Complainant, under the terms of the Termination Agreement, Respondent was required to terminate its use of the SIGNS FIRST service mark and cancel any assumed names or equivalent registrations (presumably referring to trademark registrations, but not excluding domain name registrations) containing the service mark. Respondent, on the other hand, has stated numerous times that she sold the domain name:
"[Respondent] states she sold the domain name . . . ."(Footnote 1)
"[I]n 1999, [Respondent] states she was forced to sell the domain . . . ." (Footnote 2)
"[Respondent] does not even own the domain name in dispute . . . ."(Footnote 3)
"Again, [Respondent] emphasizes that she sold the domain name . . . ."(Footnote 4)
Given the above alone, it would be impossible to find that Respondent has a continuing right or legitimate interest in the domain name, irrespective of whether she once had such a right or interest because she claims to have sold the domain name.
Where no other facts involved, this issue would be readily resolved, but additional facts do complicate the matter. For example, if Respondent has sold and has not used the domain name, then why is Respondent still listed in WHOIS as the Registrant (at least in part), Administrative Contact and Billing Contact for that domain name? For that matter, if Respondent does not own or use the domain name, then why does Respondent even care if the domain name is transferred to Complainant?
The answers to these two questions appear to be that Respondent cares about the domain name because she continues to the own an interest in the domain name, continues to operate a business in competition with Complainant, and continues to utilize the website to attract businesses to that competing business. The Panel is not persuaded by Respondent�s e-mail replies dated June 5th and July 17th, in which Respondent stated that had "arbitrarily replaced the content of Melinda Byrd's Website without her knowledge or permission," or that "[a]ny changes to the Website have not been at the direction or request of the Respondent."
Even though Respondent claims to have sold the domain name, she still refers to the associated website as her website (i.e., the "Melinda Byrd Website") and she continues to be listed as the registrant (i.e., owner) of the domain name in the WHOIS listing. Furthermore, the WHOIS listing denotes the Administrative Contact and Billing Contact email address as , which is the same email address currently advertised on the website. Likewise, Melinda Byrd�s phone numbers, as Administrative Contact, are exactly the same as the phone numbers listed on the website. Thus, even if Respondent did not direct or request the changes to the website, the website is clearly being operated for her benefit, and for the benefit of a competing business. Such continued use also appears to be in contravention to the Termination Agreement, as further noted by Complainant�s Cease and Desist Letter. Respondent�s mere, at one time, potentially legitimate registration of the domain name alone cannot constitute a continuing right or legitimate interest in that domain name.
The Panel finds Respondent has no current right or legitimate interest in respect of the domain name.
Therefore, the Complainant succeeds on the second element.
(iii) The domain name has been registered and is being used in bad faith.
For the purposes of Paragraph 4(a)(iii) of the Policy, there are a number of different circumstances that can constitute evidence of bad faith. If the Panel were to accept the facts as stated by Complainant regarding Respondent�s offer to sell the domain name in excess of the cost of registration, such an offer could constitute evidence of bad faith, especially if the domain name registration was transferred to the current Registrants after the Agreement was terminated. In this regard, it should be noted that while Respondent never indicated the price she was willing to accept, she did state that she had offered to sell the domain to the Complainant "four different times."(Footnote 5) Unfortunately, the circumstances surrounding Respondent�s acquisition of the domain name are cloudy at best, so the Panel is not comfortable deciding the issue of bad faith on this basis alone.
The Panel does, however, note that a number of the statements made by Respondent in its Answer, Amended Answer and sur-reply, are confusing and make it difficult for the Panel to accept Respondent�s assertions. For example:
- In the Respondent�s Sur-Reply the Respondent refers to "Meece�s fraud" (emphasis added). However, the Chancery Court for the State of Tennessee Court held that Respondent "failed to carry their burden of proof on the cause of action for fraud ...."(Footnote 6) The same claim of fraud was made in the Respondent�s Answer, although it was corrected when the Answer was amended (Footnote 7). This characterization of the Chancery Court�s holding belies Respondent�s recitation of the facts.
- As noted above, Respondent states that she sold the domain name (Footnote 8). Nevertheless, she still appears to be one of the Registrants, she is still listed as the Administrative Contact and Billing Contact, and by her own admission, she still appears to be operating the website in competition with other franchisees of Complainant, and therefore Complainant itself. These facts allow for one of two possible conclusions to be reached.
The first possible conclusion is that the Respondent sold the domain name to an unknown entity that is utilizing the website to compete with Complainant, but for reasons that are a mystery to the Panel, the Respondent has not bothered to transfer the domain name registration or have the content of the information on the website corrected.
The second possible conclusion is that the Respondent has not sold the domain name and has misrepresented some of the facts to the Panel (Footnote 9).
- Respondent also states that she has not used the domain name for "almost one year."(Footnote 10) Someone, however, who very much appears to be Respondent, is using the domain name for a website that is directly competing with Complainant.
The Panel is inclined to label Respondent�s confusing assertions to the Panel as bad faith, but does not feel the need to do so in case Respondent is, indeed, confused, and in view of the other determinant avenues that are available. For example, Paragraph 4(b)(iv) of the Policy states that use of the domain in an intentional attempt to attract, for commercial gain, Internet users to the either the Respondent�s website or another on-line location, by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent�s website or the other location or of a product or service on the Respondent�s website or location, is evidence of bad faith. Any Internet user attempting to find Complainant using a domain name as a search tool is likely to attempt entering the domain name into their browser, and when that user does so, the users is going to be directed to the website noted above in the facts. This website, regardless of whether its is being run by Respondent or someone else, since it uses Complainants service mark in the domain name and is offering services in Complainant�s exact same line of business, is likely to confuse the user by leading the user to believe that the website is somehow affiliated with Complainant.
Accordingly, Complainant succeeds on the third element.
7. Decision
In light of the foregoing, the Panel decides that the domain name registered by Respondent is identical to the trademarks of Complainant, Respondent has no right or legitimate interest in respect to the domain name, and Respondent�s domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Uniform Domain Name Dispute Resolution Policy, the Panel requires that registration of the domain name be transferred to Complainant.
The Panel directs the Registrar, Network Solutions, Inc., to transfer ownership of the domain name to the Complainant.
Timothy D. Casey
Sole Panelist
Dated: July 19, 2001
Footnotes:
1. See Respondent Melinda Byrd�s Answer in Accordance with the Uniform Domain Name Dispute Resolution Policy, at 5 [hereinafter "Respondent�s Answer"]. (back to text)
2. See Respondent�s Answer at 6. (back to text)
3. See Respondent�s Answer at 6. (back to text)
4. See Respondent�s Answer at 7 (emphasis added). (back to text)
5. See Respondent�s Answer at 5. (back to text)
6. 3MB, L.L.C. v. G.I.M.C., Inc., No. 98-788-III, Memorandum and Order, Chancery Court for the State of Tennessee 20th Judicial District, Davidson County, Part III, (December 22, 1999). (back to text)
7. See Respondent Melinda Byrd�s Amendment to Answer, dated May 17, 2001. (back to text)
8. See Respondent�s Answer at pp. 5-7. (back to text)
9. The Panel also notes that in the Respondent�s Sur-Reply there was no mention of the sale of the domain name, See Respondent�s Sur-Reply In Accordance With the Uniform Domain Name Dispute Resolution Policy, [hereinafter Respondent�s Sur-Reply], but this does not change the earlier statements made by the Respondent. (back to text)
10. See Respondent�s Answer at 7. (back to text)
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