WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Patricia Kelley v. Innovation HQ, Inc. Case No. D2009-1723 1. The Parties
The Complainant is Patricia Kelley of California, United States of America, of United States of America, represented by Doniger / Burroughs, APC, United States of America.
The Respondent is Innovation HQ, Inc. of C St Johns, Antigua, Antigua and Barbuda, represented by The Muscovitch Law Firm, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2009. On December 16, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Disputed Domain Name. On December 16, 2009, Tucows Inc. 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” 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 December 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2010. The Response was filed with the Center on January 11, 2010.
The Center appointed Alistair Payne as the sole panelist in this matter on January 29, 2010. 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
The Complainant is the registered owner of the domain name and although she does not own relevant registered trade mark rights asserts that she owns common law rights in an identical trade mark i.e “P” based on use since July 2000.
The Respondent registered the Disputed Domain Name approximately 18 months after the Complainant registered its domain name and has used it to resolve to a pay per click advertising site. 5. Parties' Contentions A. Complainant
The Complainant asserts that it owns common law trade mark rights in its domain name. The Complainant submits that she has used the word mark “P” as a word mark since July 30, 2000 to promote her website which serves as a leading resource for paper snowflake designs to be used in creating arts and crafts for educational and non-profit markets. The Complainant says that the site has received more than 18,000,000 page views. In addition the Complainant says that the Respondent's domain name is confusingly similar to the to the Complainant's common law trade mark and merely differs by the subtraction of an “s”.
The Complainant says that the Respondent does not use the Disputed Domain Name in relation to bona fide goods or services or in connection with a legitimate non-commercial or fair use. The Respondent's actual use of a site which diverts traffic to both commercial competitors of the Complainant's website or to unrelated weather sites for the purposes of generating referral fees, is neither non commercial nor a fair use of the Disputed Domain name and does not establish legitimate interests. The Complainant also argues that the Respondent has had the opportunity to develop a legitimate business purpose for the Disputed Domain Name over many years since its registration but has failed to do so and as it still does not exhibit any legitimate purpose, and therefore has no legitimate interests in the Domain Name.
Further, the Complainant submits that the Respondent registered the Disputed Domain Name for the purposes of selling it to the Complainant at a profit and that this constitutes bad faith for the purposes of the Policy. The Complainant alleges that the Respondent purposefully registered the Disputed Domain Name more than a year after the Complainant registered its domain name, used it for a search and sponsored links site with the eventual aim of extracting an inflated purchase price from the Complainant. The Respondent's refusal to sell the Disputed Domain Name at the proposed price when approached some two years ago by the Complainant and to require at least a sum of USD 2000 as a sale price is indicative of the Respondent's intention.
In addition the Respondent's use of the Disputed Domain Name for a website which capitalizes on consumer confusion by re-directing consumers to competing websites and from which the Respondent derives benefit as a consequence of “click through” fees and advertising constitutes the intentional attraction of Internet users to the Respondent's website for commercial gain by creating a likelihood of confusion with the Complainant's mark. The Respondent's bad faith is only reinforced by the fact that it had knowledge of the Complainant's domain name when it registered the Disputed Domain Name and subsequently renewed its registration shortly after the Complainant's own renewal of its domain name. B. Respondent
The Respondent submits that the Complainant's alleged trade mark is descriptive as the term “paper snowflake” is a common term which cannot be monopolized by a single party unless there is demonstrable evidence of secondary meaning which the Complainant has failed to demonstrate in this case. The Complainant's domain name has no trade mark significance but is merely a descriptor of what the Complainant offers and the Complainant has not fulfilled the onus on it to demonstrate acquired distinctiveness as set out by the panel in Mayekawa Mfg. Co., Ltd v. Modern Limited – Cayman Web Development, WIPO Case No. D2005-0745. For this reason the Respondent says that the Complainant has not demonstrated the first element required under the Policy and accordingly it is not necessary for the Panel to consider the second and third elements of the Policy.
However the Respondent goes on to submit that it does have a legitimate interest in the Disputed Domain Name as a consequence of it being a common descriptive term and accordingly the Complainant has not demonstrated that the Respondent has “no legitimate interest” as required under the Policy. Further, the Complainant's website appears to be no more legitimate than the Respondent's comprising as it does an “unsightly hodge podge of various advertisements with barely any discernable content”. In any event numerous past UDRP panels have found that “pay per click” sites are not of themselves unlawful or illegitimate.
The Respondent says that it registered the Disputed Domain Name over 7 years ago and since that time has enjoyed quiet possession without contact by the Complainant until her request to acquire the Disputed Domain Name. That the Complainant does not appear to have the requisite supporting trade mark rights now makes any claim that she had developed such rights by the time of the Respondent's registration of the Disputed Domain name quite implausible. In any event the Respondent registered the Disputed Domain Name because of its perceived value as a descriptive domain name and has no memory of awareness of the Complainant's registration and there is no evidence to suggest that the Respondent in any way targeted the Complainant. It was the Complainant who contacted the Respondent to seek to acquire the Disputed Domain Name, firstly through a broker and only around 7 years after the Respondent's registration. It was only after her initial attempts were unsuccessful and she refused to consider the Respondent's counter offer of USD 2000 that she filed this Complaint. The Respondent submits that absent evidence of the Complainant having been targeted there can be no finding of registration and use in bad faith.
The Respondent goes on to request that the Panel makes a finding of reverse domain name hijacking on the basis that the Complainant has used the Policy to attempt to obtain the Disputed Domain Name after negotiations for acquisition failed and in circumstances that she knew that her trade mark was descriptive. 6. Discussion and Findings A. Identical or Confusingly Similar
The first element of the Policy requires that the Complainant demonstrate that she has a registered trade mark or a common law trade mark and that the Disputed Domain Name is identical or confusingly similar to this trade mark.
The Complainant has no trademark registration but submits that she owns common law rights in her trademark PAPERSNOWFLAKES.COM. However the only evidence that she provides in support of common law ownership is the fact that she has used it as a domain name since registration in 2000 to resolve to a website which serves as a leading resource for paper snowflake designs to be used in creating arts and crafts for educational and non-profit markets and during this period the website has been viewed 18,000,000 times.
In Mayekawa Mfg. Co. Ltd v. Modern Limited Case, supra the panel explained that in order to demonstrate common law rights a complainant must show that the mark is used as a trade mark or service mark and that the mark has acquired distinctiveness in relation to the complainant's goods or services. In other words that the mark has developed a secondary meaning as a consequence of use. (See also for example Alpine Entertainment Group, Inc v Walter Alvarez, WIPO Case No. D2006-1392 and Thomas Pick aka Pick Inc. v. EUROPREMIUM LTD, Elaine Maria Gross, WIPO Case No. D2008-1010).
In this case the Disputed Domain Name consists of the common English words “paper” and “snowflake” joined together and of the common element “.com” which need not be considered further. The conjoined term “paper snowflake” is descriptive and is being used by the Complainant in connection with her website and activities concerned with designing and making paper snowflakes. Accordingly, there is nothing inherently distinctive in either the individual word components of the term or of the conjoined words in the context in which the Complainant appears to use them. This means that there needs to be very substantial evidence of acquired distinctiveness or secondary meaning in order for the Complainant to establish that she has common law trade mark rights for the purposes of the first element under the Policy.
The only evidence of such secondary meaning provided in the Complaint is the submission that use has been made of the Complainant's mark in relation to her website since 2000 and that there has been 18,000,000 views of the website since that time. No other evidence of renown in any particular marketplace is provided.
Usually a Panel might expect details of users, markets, testimonials, annual advertising figures, annual business turnover details, detailed website statistics and any awards or public reports or commentary in relation to the business or website. As noted above, previous panels have required this level of evidence in relation to a claim that purely descriptive words have acquired a secondary meaning and there are no special circumstances in this case dictating that this Panel should depart from this approach. Mere evidence of use in relation to a website and a bare submission that there have been substantial website page views during that period is insufficient, even in relation to a not-for-profit business, in order to enable the Panel to infer the requisite degree of secondary meaning to support a claim of common law trade mark rights.
Accordingly, the Complaint does not succeed in relation to the first element and there is no requirement for the Panel to go on to consider the second and third elements under the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Alistair Payne
Sole Panelist
Dated: February 6, 2010
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