WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Classmates Online Inc. v. Adam Drake and Lori Drake Case No. D2008-1642 1. The Parties
Complainant is Classmates Online Inc., of Renton, Washington, United States of America.
Respondents are Adam Drake and Lori Drake, of Waukesha, Wisconsin, United States of America. 2. The Domain Names and Registrar
The disputed domain names, and , are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2008. On October 29, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On the same date, GoD, Inc. transmitted by email to the Center its verification response confirming that Respondent Adam Drake is listed as the registrant of the disputed domain name and that Respondent Lori Drake is the registrant of the disputed domain name and providing the contact details which are identical for both Respondents. Respondents hereinafter will be referred to jointly and severally as “Respondent”. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 November 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2008. The Response was filed with the Center on November 24, 2008.
The Center appointed M. Scott Donahey as the sole panelist in this matter on December 10, 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
Complainant is the holder of a family of marks registered with the United States Patent and Trademark Offices centered on the CLASSMATES mark, including CLASSMATES, CLASSMATES.COM, CLASSMATES THE WORLD'S BEST PLACE TO REUNITE, and CLASSMATES CONNECTIONS. These registrations were all issue in the calendar years 2001, 2002 and 2003. Complainant has similar registrations in Canada. Complaint, Annex 1, Exhibits A and B. Since as early as 1995, Complainant has used its CLASSMATES.COM mark in connection with online bulletin boards and chat rooms. Since as early as 1995, Complainant has used its CLASSMATES mark in connection with providing online chat rooms, bulletin boards and mail services. Since as early as 2001, Complainant has used its CLASSMATES CONNNECTIONS mark in connection with providing an electronic newsletter relative to classmates and friends. Since as early as 1995, Complainant has used the domain name to resolve to a web site which is one of the leading online social networking companies, and Complainant currently has over 40 million registered users of the site. Complainant has extensively marketed its mark over the last thirteen years, and in January and February, 2007, Complainant ranked fifth overall in estimated advertising spending on the World Wide Web. In September 2006, the Nielsen NetRatings showed that Complainant's web site ranked second, behind only MySpace, in number of unique visits by Internet users. Complaint, Annex 1, Exhibit C.
On or about June 17, 2008, Complainant became aware of Respondent's web site at “www.”. Complaint, Annex 1, Exhibit F. The Screen Shots taken on June 17, 2008, do not show a disclaimer regarding Complainant or its web site. The services offered on Respondent's web site are very similar to the services offered on the web site to which Complainant's domain name resolves and which are the subject of Complainant's trademark and service mark registrations.
On June 18, 2008, Complainant sent Respondent a cease and desist letter demanding Respondent cease the unauthorized use of Complainant's marks on its web site. Complaint, Annex 1, Exhibits F and H. On June 27, 2008, Respondent telephoned Complainant and requested additional clarification. Complainant explained its trademark rights and offered to reimburse Respondent for its expenses incurred related to the registration of the domain name . Respondent declined the offer and terminated the call. Thereafter the parties exchanged emails on an attempt to arrive at a resolution, but could not. Complaint, Annex 1, Exhibit l. The emails from Respondent show an email address of .
Complainant's internal membership records show a membership for one Adam Drake with the aforementioned email address, who registered as a Classmates Basic (free) membership on August 29, 2005.
Respondent alleges that its web site currently has a disclaimer, but attaches no screenshots to substantiate this allegation.1 Respondent contends that its logo, which uses a mortarboard and tassel to represent the “l” in “Classmates-F,” makes its name different from and not confusingly similar to Complainant's mark. Respondent argues that Complainant should never have been awarded a trademark for a common, generic term.
Respondent argues that its intent was not to sell the disputed domain names to any third party, but to use it in an online business. Respondent has never offered to sell and does not intend to offer to sell the disputed domain names to Complainant. Respondent notes that in his blog on the web site, Respondent wrote on November 16, 2007: “I've started a small side business of sorts. ClassMates-F is a FREE forum for making connections with former and current classmates. Organize reunions, reminisce and share stories from back in the day, or reconnect with old friends. This site was started on the premise that you shouldn't have to pay to make connections. Nor should you get spammed everyday offering account “upgrades.” Hope you enjoy and don't forget to tell your friends.”
Respondent does not deny that he is the Adam Drake with a membership in Complainant's online operation.
Respondent argues that Complainant is engaged in Reverse Domain Name Hijacking for making “wild allegations of bad faith.”
The domain names and were registered on March 25, 2007 and June 27, 2008, respectively. 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain names are confusingly similar to Complainant's registered marks that Respondent has no rights or legitimate interests in respect of the disputed domain names, and that Respondent registered and is using the disputed domain names in bad faith. B. Respondent
Respondent contends that the disputed domain names are not confusingly similar to Complainant's marks and that the marks are based on generic terms and should never have been issued as they are not entitled to trademark protection, that Respondent has rights and legitimate interests in that Respondent wishes to use them to operate an online business involving a forum for classmates to exchange recollections and to reconnect, and that Respondent has registered and is using the disputed domain names in good faith for the operation of his business and not to sell the domain names to Complainant or to third parties. Respondent also alleges that Complainant is engaged in Reverse Domain Name Hijacking. 6. Discussion and Findings
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.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Generally, where a domain name incorporates a complainant's mark in its entirety, the domain name is confusingly similar to the complainant's mark, despite the addition of other words in the domain name and despite the fact that common words may be appended or common words inserted therein. This is the so-called “objective test” adopted by the majority of WIPO panelists. See Wal-Mart Stores, Inc. v. MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. Therefore the Panel finds that the disputed domain names, both of which incorporate Complainant's CLASSMATES mark in its plural or singular form, are confusingly similar to Complainant's mark.
It is not for the Panel to second guess the expert regulators who determine whether or not an applicant is entitled to register a particular term as a trademark. Complainant submitted that question to the United States Patent and Trademark Office on many occasions. That body has issued several registrations of marks to Complainants. The Panel must respect that august body's determination, absent clear and convincing evidence in an extraordinary circumstance that the issuance was in error. That is clearly not the case here.
Accordingly, the Panel finds that Complainant has met the first element of the Policy. B. Rights or Legitimate Interests
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name, nor has Complainant granted Respondent a license, permission, or authorization to use its registered CLASSMATES family of marks.
Respondent argues that he is using the disputed domain names in the operation of a bona fide business, the furnishing of online forum services for classmates. The Panel will withhold judgment on this issue until it analyzes the issue of bad faith. If the Panel finds that Respondent has acted in good faith, then Respondent has a legitimate interest in the domain names. If the Panel finds that Respondent did not act in good faith, then Respondent has no rights or legitimate interests in respect of the domain names. C. Registered and Used in Bad Faith
The ultimate focus of the “bad faith” inquiry should be the wrong that the Policy is trying to address: that is the attempt to profit from the goodwill which has been developed by a complainant through the registration and use of similar or identical domain names by respondent.
In the present case what facts has the Panel been given that are uncontested? First, that Complainant registered and used its trademarks to conduct an online business involving the exchange of information and connection between former school attendees, military personnel, etc. That use by Complainant preceded by more than ten years the registration of the disputed domain names. Second, Respondent did not deny that he is the Adam Drake who registered as a member of Complainant's online operation in August 2006, seven months before he registered the first of the two disputed domain names. Third, in November 2007, his blog postings on his web site directed toward an unnamed competing web site that charged for some membership services and who sent emails regarding upgrading memberships (by additional payments) was clearly aimed at Complainant, who offers paid services and upgrades based on additional payments. This shows familiarity with Complainant and its businesses prior to the registration of the second domain name at issue.
Respondent might have registered , , , (assuming these are available), or any other similar domain name, and the Panel would not now be writing this decision. Instead, with full knowledge of Complainant and the way Complainant conducted its business, Respondent registered the disputed domain names which are confusingly similar to Complainant's marks, in order to profit from the goodwill Complainant had developed through years of advertising and promotion. This is the type of conduct that is described in paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names and that Respondent has registered and is using the disputed domain names in bad faith.
The Panel further dismisses Respondent's claim for reverse domain hijacking for the reasons set out above. 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 names, and be transferred to Complainant.
M. Scott Donahey
Sole Panelist
Dated: December 18, 2008
1 The Panel independently visited Respondent's web site on December 17, 2007, and notes that under the banner heading “Classmates-F,” the line that read “FREE Classmates Connections” on the June 17, 2008, screenshot, has now been replaced with the line “*This site is not affiliated with Classmates Online, Inc. or !”
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