WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grateful Web Inc. v. DVB Enterprises
Case No. D2008-0277
1. The Parties
Complainant is Grateful Web Inc., Colorado, United States of America, represented by Hutchinson Black and Cook LLC, United States of America.
Respondent is DVB Enterprises, Oakland, California, United States of America, represented by Douglas Van Buren.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2008. On February 25, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On February 25, 2008, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the 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 “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for the Response was March 26, 2008. The Response was filed with the Center on March 26, 2008.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on April 9, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Since 1995, Complainant has used the mark “Grateful Web” for an online magazine and community forum (Affidavit of Mr. Moran, attached as Annex 3 to Complaint). More specifically, Complainant publishes original essays and articles concerning political and environmental issues; original reviews of musical events and products, including festivals, concerts, and recordings; press releases, interviews, and promotional materials for musical artists; galleries of photographs and images related to musical, political and environmental themes; and hosts online charity auctions. Complainant has raised over $250,000 by auctioning off musical memorabilia for various organizations.
In addition, Complainant owns the domain names and . Between May 2004 and January 2008, Complainant’s Internet site, which prominently displays the “Grateful Web” mark, received nearly 24 million hits (Annex 6 to Complaint).
Complainant’s “Grateful Web” goods and services have been the subject of media articles (Annex 8 to Complaint) and Complainant has extensively publicized and promoted its goods and services through the sale of merchandise prominently displaying the “Grateful Web” mark.1
Respondent registered the disputed domain name in March 1998.
5. Parties’ Contentions
A. Complainant
Complainant contends that, despite the fact that the “Grateful Web” mark is not the subject of a registration, it, nevertheless, has common law rights in such mark. It notes that it has used the mark consistently for 13 years and that the mark has been extensively advertised and promoted on the Internet. Complainant further contends that the mark, as used by it, is “inherently strong … because it is an arbitrary mark that does not describe the goods or services.” As a result, Complainant maintains, a large number of Internet users and others have come to associate the “Grateful Web” mark with Complainant and its goods and services.
Complainant further maintains that the disputed domain name, , is identical or confusingly similar to Complainant’s “Grateful Web” mark. Complainant indicates that the lack of a space between the words “grateful” and “web” does not distinguish the domain name from the mark and that the addition of the specific top level domain name “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.
Complainant argues that Respondent has no rights or legitimate interests in respect of the disputed domain name. To Complainant’s knowledge, based on all available information, Respondent has never made any bona fide offering of goods or services at the domain name, is not known by the domain name, and is not making any legitimate non-commercial or fair use of the domain name. According to Complainant, Respondent’s only use of the domain name has been to forward Internet traffic to Complainant’s services. While Respondent has indicated in an email that it plans to use the domain name for some unspecified “project,” it has not yet done so, Complainant asserts.
Complainant maintains that the circumstances of this case indicate that the domain name has been registered and used in bad faith. In support of such assertion, Complainant notes that, almost immediately after Respondent registered the domain name, Complainant’s president, Mr. Moran, contacted Respondent and requested Respondent to transfer the domain name to Complainant. To the best of Mr. Moran’s recollection, he did not offer to purchase the domain name for any amount above the expenses incurred in the registration. According to Mr. Moran, Respondent refused such request, offered to sell the domain name to Complainant for between $1,000 and $2,000 and agreed to forward Internet traffic from the disputed site to Complainant’s home page (Affidavit of Mr. Moran, attached as Annex 3 to Complaint).
According to Complainant, prior to filing the instant Complaint, it again contacted Respondent in a final effort to facilitate a good faith transfer of the domain name. Complainant offered to reimburse Respondent’s out-of-pocket costs for the transfer. Respondent replied that the domain name is estimated to be worth between $13,000 and $15,000; stated that Respondent “will consider other offers” for purchase of the domain name; and invited Complainant to make an offer to purchase the domain name (Complaint, Annex 13).
“In sum,” Complainant declares, “the evidence clearly demonstrates that Respondent was likely aware of Complainant’s Mark when it registered the Domain Name; that Respondent repeatedly offered to sell the Domain Name to Complainant for a price in excess of Respondent’s out-of-pocket costs related to the Domain Name; and that Respondent has, in the ten years since registering the Domain Name, made no use of it. From this evidence, only one conclusion is possible: in all the circumstances of the case, it can be said that the Respondent is acting in bad faith.”
B. Respondent
In the Response, Respondent’s representative, Mr. Van Buren, indicates that he originally registered the disputed domain name to create a website to trade live recorded music. He contended that he came up with the domain name because he wanted to create a “web” of traders and was a fan of the Grateful Dead. Mr. Van Buren notes that his idea was rendered moot by advancing technology and that “I am still planning on coming up with new ideas for [the domain name’s] use which have not come to fruition as of yet.”
The Response also calls into question Complainant’s lack of business foresight in failing to register the name, in view of its registration of in 1995.
“In short,” Respondent asserts, “I never registered the domain to make a profit on it. However as time has passed, I do now own a valuable piece of ‘Internet real-estate’.”
“To sum up, I was and am not in this to make money. However, I also can not just walk away from an asset that I have owned for the last 10 years of such value. I registered this domain name with no ill will or bad faith as it was an obvious domain name for the project I was formulating. I believe I have done nothing wrong and would like to continue to own this domain name.”
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel concludes that Complainant has established that it has common law rights in the unregistered mark GRATEFUL WEB, as used by it on various goods and services. As noted in the Complaint, “a series of UDRP decisions have held, and it is now established, that the Policy protects rights in unregistered trademarks.” See Control Techniques Ltd. v. Lektronix Ltd.WIPO Case No. D2006-0516. The evidence, including use of the GRATEFUL WEB mark since 1995, advertising and promotional expenses, media coverage, and prominent display of such mark on Complainant’s Internet sites, establishes that such mark has become a distinctive identifier associated with Complainant’s goods and services. See Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322 (“[C]ommon law trademark and service mark rights exist when a party proves that there is enough goodwill and reputation in and to a name and sufficient association of the same with the party itself.”).
The Panel further finds that the disputed domain name, , is, for all intents and purposes, identical to Complainant’s GRATEFUL WEB mark. Complainant’s mark and the domain name differ only in that the latter does not include a space between “grateful” and “web” and includes the top-level domain “.com.” It is well established that, pursuant to the applicable Policy, such differences have no legal significance in determining whether a domain name is identical or confusingly similar to a mark. VAT Holding AG v. ,WIPO Case No. D2000-0607 ( identical to VAT mark); Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a AC2, a/k/a Robert Chua, a/k/a Registrant,WIPO Case No. D2004-0896 (holding that various combinations of words without spaces in which the complainant had established rights were “not sufficient to distinguish respondent’s domain names from complainant’s trademarks”).
B. Rights or Legitimate Interests
The Panel rules that Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the domain name in issue. There is no evidence that Respondent is making a bona fide use of the domain name, is commonly known by the domain name, or is making a noncommercial or fair use of the domain name. Indeed, Respondent admits that it is not making any use of the domain name, although it harbors an ambition to do so in the future. One who views Respondent’s site finds only a link to Complainant’s “www.” site.
C. Registered and Used in Bad Faith
The more difficult issue in this case is whether Complainant has sustained its burden of establishing that the domain name was registered and is being used in bad faith. The Panel concludes that it has.2
The evidence indicates that Complainant used the GRATEFUL WEB mark on goods and services and on its widely used “www.” site at least three years before Respondent registered its domain name. It is, thus, reasonable to assume that Respondent was aware of Complainant’s mark and and domain names before it adopted and registered the disputed domain name.3 Respondent has not claimed otherwise.
Moreover, the evidence indicates that Respondent has not made use of the disputed domain name, other than to redirect traffic to Complainant, for more than ten (10) years. While Respondent asserts that it is “still planning on coming up with new ideas,” the Panel finds that Respondent is really waiting for someone to make it a generous offer for transfer. See Mondich v. Brown,WIPO Case No. D2000-0004 (bad faith evidenced by “failure for a substantial period of time [two years] to make good faith use of the domain name for [respondent’s] business.”). Under such circumstances, the Panel agrees with the sentiment expressed in Educational testing Service v. TOEFL,WIPO Case No. D2000-0044, to the effect that “because Respondent is contributing no value-added to the Internet […], the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it.”
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Jeffrey M. Samuels
Sole Panelist
Dated: April 21, 2008
1 Complainant submitted a Supplemental Filing providing additional information regarding advertisements for its “Grateful Dead” goods and services. While Complainant indicates that it was not aware of such evidence at the time of the filing of its Complaint, it does not explain the circumstances surrounding the discovery of such evidence so as to indicate why such evidence could not have been advanced in the Complaint. Thus, the Panel, in the exercise of its discretion, declines to accept the Supplemental Filing.
2 The fact that Complainant did not register the disputed domain name when it registered its domain name in 1995 has no relevance to the issue of “bad faith” registration and use. See Pharmacia & Upjohn Co. v. Moreline,WIPO Case No. D2000-0134.
3 Respondent’s explanation for how it arrived at the domain name is not inconsistent with this determination.
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