WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Advance News Service Inc. v. Vertical Axis, Inc. / R Case No. D2008-1475 1. The Parties
The Complainant is Advance News Service Inc., Washington, DC, United States of America, represented by Sabin Bermant & Gould, LLP, United States of America.
The Respondent is Vertical Axis, Inc. / R, Domain Administrator, Christ Church, Barbados, represented by ESQ Law Firm, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Nameview Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2008, naming R c/o Whois Identity Shield as the Respondent. On September 30, 2008, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the disputed domain name. On October 7, 2008, Nameview Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name. In its verification response, Nameview Inc. lifted the privacy shield and disclosed the identity of the Respondent, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 10, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In response the Complainant filed an Amended Complaint on October 14, 2008. The Center verified that the Amended 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 October 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2008. The Response was filed with the Center on November 4, 2008.
The Center appointed Joan Clark, David H. Bernstein and David E. Sorkin as panelists in this matter on November 27, 2008. The Panel finds that it was properly constituted. Each member of 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
The Complainant is the owner of the service mark “RELIGION NEWS SERVICE” registered on the Supplemental Register in the United States Patent & Trademark Office (“USPTO”) on November 11, 1997 with a date of first use of October 1994, with a disclaimer to the exclusive right to use of “news service” apart from the mark as shown. The Complainant is also the owner of the service mark “RNS RELIGION NEWS SERVICE” in which the letters “RNS” are the most prominent part of the mark, registered January 14, 1997 on the Principal Register of the USPTO, with a disclaimer to the exclusive right to use “religion news service” apart from the mark as shown.
The domain name in dispute, , was created on July 1, 2004 and is due to expire July 1, 2009. 5. Parties' Contentions A. Complainant
The Complainant states that, for over seventy years, Religion News Service has been the authoritative source of news about religion, ethics, spirituality and moral issues in the United States of America (“United States”), and that the Complainant has acquired substantial goodwill and reputation in the name and trademark RELIGION NEWS SERVICE.
The Complainant also avers that Religion News Service maintains a network of correspondents around the world and provides its services to leading newspapers, magazines, broadcast organizations and television networks.
The Complainant states that it operates the website “” and that its employees use e-mail addresses which utilize this domain name.
The Complainant avers that, in July 2008, it discovered that the disputed domain name had been registered by the Respondent, that it wrote to the Respondent at the address listed in the Whois database for , demanding that this domain name be transferred to the Complainant. A follow-up letter was sent by the Complainant's counsel on July 28, 2008.
After receiving no reply from the Respondent, the Complainant proceeded with the filing of the Complaint.
The grounds put forward by the Complainant are as follows:
(a) Allegation that the disputed domain name is confusingly similar to the Complainant's mark.
The Complainant asserts that the Respondent has registered a domain name which consists of the identical trademark of the Complainant RELIGION NEWS SERVICE, which has led to customer confusion.
The Complainant asserts that, in view of its worldwide reputation, consumers who view the disputed domain name will recognize the RELIGION NEWS SERVICE brand and assume that the domain name links to a website published by the Complainant, or that persons who use any e-mail addresses which contain “@r” are employees of the Complainant.
(b) Allegation that the Respondent has no rights or legitimate interests in the disputed domain name
The Complainant states that it never granted the Respondent the right to use or register the RELIGION NEWS SERVICE mark either in connection with the domain name registration or a bona fide offering of goods or services or for any other reason, that the Respondent had no legitimate use or right to use the RELIGION NEWS SERVICE mark, and the Respondent's failure to substantively reply to the Complainant's communications about the domain name it registered indicates that it cannot demonstrate any legitimate rights or interests in the disputed domain name.
(c) Allegation that the disputed domain name was registered and is being used in bad faith
The Complainant asserts that the Respondent registered the disputed domain name for commercial gain and to trade on the Complainant's goodwill, that the Respondent was clearly aware that consumers who view the disputed domain name and e-mail addresses which contained the domain name will expect to be linked to a website associated with the Complainant's business, and would expect all e-mail addresses utilizing the domain name to be authorized by Religion News Service.
The Complainant asserts that the Respondent is using the domain name to fraudulently direct consumers to a website containing “pay-per-click” links for his/her own commercial gain and to the detriment of the Complainant and the Complainant's reputation and goodwill.
The Complainant concludes there is no doubt that the disputed domain name was registered and is being used in bad faith.
The Complainant has requested that the Panel issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
A Response to the Complaint was filed by Ari Goldberger, ESQ.com Law Firm, declaring himself to be attorney for the Respondent.
The Response states that the Respondent acquired the disputed domain name when the prior registration for it expired and was deleted, the domain name thus becoming available for anyone to register. The Response states that the Respondent registered the disputed domain name because it incorporates the descriptive term “religion news service”, and that the Complainant does not have exclusive rights to, or use of, this descriptive term, composed of three common dictionary words.
The Response further states that the Respondent did not register the disputed domain name with the Complainant's trademark in mind.
According to a declaration by a manager for the Respondent, the latter had no knowledge of the Complainant, its website, its business name or trademark when it registered the domain name, and the Respondent did not register the disputed domain name with the intent to sell it to the Complainant, to disrupt the Complainant's business or to confuse consumers seeking to find the Complainant's website. Further, the statement of the manager claims that the Respondent did not register the disputed domain name to prevent the Complainant from owning a domain name incorporating its trademark.
The Response states that the Respondent has registered over 140 descriptive domain names incorporating variations of the words “religion”, “news” and “service”.
The Response alleges that the Complainant does not have enforceable trademark rights under the Policy to the term “religion news service” alone, that the United States Patent and Trademark Office refused registration of the Complainant's word mark for RELIGION NEWS SERVICE on descriptiveness grounds, that, as a result, the Complainant registered its mark on the Supplemental Register, that trademarks on the Supplemental Register are not enforceable under the Policy, and that such registration constitutes irrefutable evidence of the descriptiveness of the trademark. The Response also notes that the Complainant expressly disclaimed the exclusive right to the term “news service” in the registered mark on the Supplemental Register.
The Response also refers to the Complainant's registration on the Principal Register of a mark including RNS (enlarged script) above “Religion News Service” (in much smaller script), and that the United States Patent and Trademark Office required the Complainant to expressly disclaim the exclusive right to use the entire term “Religion News Service” apart from the mark.
The Response asserts that the domain name in dispute is not identical or confusingly similar to the Complainant's Principal Register mark.
The Response asserts that the Complainant does not have enforceable trademark rights to terms that are disclaimed in a trademark.
The Response states that the Respondent has a legitimate interest in the disputed domain name because it registered it solely because it incorporates a descriptive term, and not with an intent to profit from a trademark, and that it uses the domain name in connection with bona fide offering of goods or services in the sense of pay-per-click advertisements based upon the contextual meaning of the descriptive term “religion news service”.
The Response states that this provision of pay-per-click advertising links has been recognized as a common business practice which provides a legitimate interest for a Respondent in a disputed domain name, provided it has been selected as a result of its generic or descriptive character, as opposed to being selected with a trademark in mind.
The Response claims that there is no evidence that the disputed domain name was registered or is being used in bad faith, and that it was not registered with the specific intent to profit from a complainant's trademark.
The Response states that the Respondent simply registered the disputed domain name because it incorporated a descriptive term, and because it became available to register when the former registration expired and was deleted after the prior registrant of the disputed domain name failed to renew it.
Finally, the Response reiterates that the disputed domain name was not registered and is not being used in bad faith, and notes that the Respondent takes care to register domain names that incorporate only common words and descriptive terms.
The Response states there is no evidence that the Respondent even had knowledge of the Complainant's mark when it registered the disputed domain name, and that bad faith cannot be proven.
The Response also notes that the Complainant waited over four years from the date the Respondent registered the disputed domain name before initiating the Complaint, and suggests that this long delay raises the inference that the Complainant did not truly believe the disputed domain name was registered in bad faith.
The Response concludes that the Complaint should be denied. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, the Complainant has the burden of proving that all three elements are present in the Complaint, namely:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
As discussed below, because the Complainant has not carried its burden of proof with respect to the first element, the Panel need not consider the second and third elements. A. Identical or Confusingly Similar
The disputed domain name is identical for purpose of the Policy to the phrase “RELIGION NEWS SERVICE”, as that phrase is registered on the Supplemental Register. In fact, except for the spacing between the three words and the addition of the top level domain “.com”, the domain name is identical to the registered phrase. The question to be decided is whether the phrase RELIGION NEWS SERVICE is a mark in which the Complainant has rights for purposes of the Policy.
The phrase RELIGION NEWS SERVICE is registered on the Supplemental Register in the United States Patent and Trademark Office. Under United States law, marks that are merely descriptive, and that have not been shown to have acquired distinctiveness, may be registered on the Supplemental Register, but that registration does not confer any of the usual presumptions that accompany a mark registered on the Principal register (such as prima facie evidence of validity, ownership, and distinctiveness). Thus, the fact of a Supplemental Registration is no evidence whatsoever the Complainant owns trademark rights in the phrase RELIGION NEWS SERVICE. See Rodale, Inc. v. Cambridge,WIPO Case No. DBIZ2002-00153 (June 28, 2002).
Similarly, when descriptive or generic words are disclaimed in a registration on the Principal Register, the legal effect is that the registration does not evidence any trademark rights in the disclaimed words; rather, those words are protected only when used with the mark as a whole. See Goway Travel Limited v. Tourism Australia, WIPO Case No. D2006-0344 (June 6, 2006). Here, although the Complainant has a registration in the design mark RNS RELIGION NEWS SERVICE on the Principal Register, the phrase at issue in this case, “Religion News Service”, is disclaimed. Therefore this registration does not provide any evidence of trademark rights for the Complainant in the disclaimed phrase apart from the mark as a whole.
Of course, even without a trademark registration, a phrase can be protected under the Policy if the phrase is a common law trademark based e.g., on use in commerce in the United States. The Complainant has attempted to establish common law rights in the descriptive phrase RELIGION NEWS SERVICE by the statement in the Complaint that, “Through its many years of use, Complainant has acquired substantial goodwill and reputation in the name and trademark RELIGION NEWS SERVICE”. Other than this bald allegation, the Complainant has not submitted factual evidence sufficient to establish secondary meaning. For example, the Complainant has not submitted sufficient evidence of sales revenues, advertising, unsolicited media attention, or brand recognition surveys to establish that consumers interpret the phrase RELIGION NEWS SERVICE as a designation of source as opposed to a descriptor (e.g., any news service offering information about religion). As another panel found in an analogous case, the absence of such evidence is fatal to an attempt to establish common law rights in a descriptive phrase. See PC Mall, Inc. v. Pygmy Computer Systems, Inc.,WIPO Case No. D2004-0437 (August 25, 2004): “there is no specific argument, or evidence, regarding the extent of Complainant's usage of its various marks during the relevant time period. There is no evidence at all regarding the amount of Complainant's sales of goods or services in connection with any of its marks. Nor is there any evidence of the extent of Complainant's advertising or promotion of any of its marks. Complainant has not presented evidence of how the purchasing public perceives the “mall” common characteristic of Complainant's family of marks, through a survey or otherwise. And Complaint has sidestepped, rather than squarely addressed, the question of whether the members of its family of marks are distinctive (in particular those that are registered only on the supplemental register, or not registered at all). Thus, Complainant's arguments regarding its family of marks fail for want of supporting evidence.” See also WIPO Overview of WIPO Panels Views on selected UDRP Questions, section 1.7.
Moreover, it is telling that Complainant was unable to persuade the USPTO to register its mark on the Principal Register, or avoid a disclaimer of “religion news service”, when it applied to register its marks in 1995. At that time, Complainant had already been using the phrase for more than half a century; if that evidence were not enough to persuade the USPTO that the mark had acquired distinctiveness through longtime use, then it is also not sufficient to establish in this proceeding that Complainant has developed common law trademark rights in the phrase.
Accordingly, the Panel finds that the Complainant, for purposes of the Policy, has not shown that it has registered trademark rights in the phrase “RELIGION NEWS SERVICE” nor has it shown it has common law rights in the same phrase, and the Complainant has not satisfied the first requirement for the Complainant to succeed. To be clear, the Panel is not definitively holding that Complainant lacks trademark rights in that phrase; rather, the Panel is simply holding that for the purposes of the Policy, on the minimal record submitted in this proceeding, Complainant has not submitted sufficient evidence to this Panel to carry its burden of proving trademark rights.
Because the Complaint fails for the foregoing reasons, the Panel deems it is unnecessary to consider whether Complainant has prevailed under the second and third elements of the Policy, namely, whether the Respondent lacks rights or a legitimate interest in the Domain Name and whether Respondent registered and used the Domain Name in bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Joan Clark
Presiding Panelist
David H. Bernstein
Panelist
David E. Sorkin
Panelist
Dated: December 11, 2008
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