The Complainant is Happy as Clams, Inc. of Long Beach, California, United States of America represented by Darrow Law Office, United States of America.
The Respondent is Heather Dugan of Lewis Center, Ohio, United States of America, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 24, 2014. On September 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24, 2014, the Registrar 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 October 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2014. The Response was filed with the Center on October 17, 2014.
The Center appointed Richard G. Lyon as the sole panelist in this matter on October 28, 2014. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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 2009 the Complainant has operated a website at at which its principal Bobbi Palmer offers dating advice and promotes her e-book, which is titled 7 Secrets to Finding Love after 40, subtitled How I Learned to Date Like a Grownup and Marry the Man of My Dreams at 47. The Complainant registered the domain name for this website in February 2009. The Complainant holds a service mark for DATELIKEAGROWNUP, registered with the United States Patent & Trademark Office (USPTO) in 2012 and claiming a first use in commerce in 2009, for consulting in the field of personal relationships.
The Respondent is the author of a book entitled Date Like A Grownup: Anecdotes, Admissions of Guilt & Advice Between Friends, which was published in 2014 with a copyright notice dated September 2013. At the disputed domain name the Respondent maintains a website that promotes this book, with a description of the book, copies of media and individual reviews, links to interviews with the author, and notices of upcoming events promoting the author and the book. The Respondent registered the disputed domain name in September 2013.
In February 2014 the Complainant sent the Respondent a cease-and-desist letter but the parties were not able to resolve the matter. 5. Parties' Contentions A. Complainant
The Complainant contends as follows:
1. The disputed domain name is identical to the Complainant's USPTO-registered DATELIKEAGROWNUP mark except for the top-level identifier.
2. The Respondent lacks rights or legitimate interests in the disputed domain name. "[N]one of Respondent's activities preceded the relevant activities and registrations of the Complainant . . .The Respondent is not using [the disputed] domain name in a legitimate non-commercial or fair use without intent for commercial gain, but rather is misleadingly diverting consumers and is tarnishing the service mark at issue. Respondent's activities are in violation of the Lanham Act . . . and common law principles of trademark law."
3. Quoting the Complainant's contentions under paragraph 4(a)(iii) of the Policy: "By her use of the [disputed] domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent's web site by creating a likelihood of confusion with the Complainant's Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on the Respondent's web site or location…It appears clear that Respondent sought and seeks to take advantage of the goodwill built up by Complainant through Complainant's use of the Mark and domain name to promote the sales of Respondent's goods and services." B. Respondent
The Respondent contends as follows:
1. The phrase "date like a grownup" is not unique and was used by others prior to the Complainant's use of it. Many other books and websites incorporate the phrase or portions of it. The respondent's website promotes her book; the Complainant's promotes her relationship advice. No confusion is likely.
2. The Respondent has a right to incorporate the title of her book into a domain name set up to promote that book.
3. The Respondent registered the disputed domain name solely to promote her book. She "was not aware of [the Complainant] until she attempted to secure ." The Respondent and Complainant are not competitors; "[t]he Respondent seeks readers, not coaching clients." The website at the disputed domain name cannot be mistaken for the Complainant's website; its style and content are completely different. The Complainant has thus failed to demonstrate bad faith in registration or use. 6. Discussion and Findings
The Policy's requirements are conjunctive. The Complainant must demonstrate each element by a preponderance of the evidence in order to prevail. As the Complainant here has failed to prove that the Respondent registered or used the disputed domain name in bad faith, the Panel need not address the first two elements of paragraph 4(a) of the Policy.
Under the Policy, "To have registered the domain name in bad faith, Respondent must have been aware of Complainant or its mark when Respondent registered the domain name, and the registration must in some way have been targeted at Complainant or its mark." PFIP, LLC v. Marco Jud, NAF Claim Number: FA1408001577082 (September 26, 2014); see also Kyowa Hakko Bio Co. Ltd. v. Legacy Labs, LLC,WIPO Case No. D2014-1286. This is the general rule though it may be relaxed in certain circumstances. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 3.4.
Here the Respondent admits knowledge of the Complainant, though not necessarily the Complainant's mark, immediately prior to her registration of the disputed domain name – she "was not aware of [the Complainant] until she attempted to secure " (emphasis supplied). This might raise questions of her responsibility to investigate the existence of a corresponding trademark. Paragraph 2 of the Policy requires a domain name registrant to "represent and warrant to [the Registrar] that . . . to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party. . .It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights." While an affirmative duty to investigate the trademark rights of third parties has usually been limited to those that register large numbers of domain names, the circumstances of this case might argue for some inquiry. The Respondent was aware that another used the phrase as an identifier; with minimal due diligence she would have learned that its owner used it for dating-related services. That the phrase at issue may be common or used by others does not ipso facto entitle its registration as a domain name or, in this Panel's opinion, automatically discharge a registrant's duty under paragraph 2.
The Panel need not consider these intriguing issues at length, as the record contains no evidence of the second required element for registration in bad faith – targeting. The Respondent's website does not refer to the Complainant, its services, its mark, or its competitors. The Respondent's website does not imitate the Complainant's in any way. As to trading off the renown or goodwill of the Complainant's mark, there is no evidence that that mark, which seems to be a relatively common phrase, is particularly well known even in its own industry or niche or otherwise generally associated with the Complainant. Put another way, no evidence suggests that the Respondent would gain anything (beyond promoting her own book) by choosing it as a domain name. The Complainant and the Respondent compete with each other only to the extent that their target markets include some overlap; based upon a review of the websites this Panel finds accurate the Respondent's summary that the Complainant seeks coaching clients, the Respondent customers for her book. An Internet user could easily be a customer of both parties.
In these circumstances the Panel finds it equally likely (indeed more likely) that the Respondent selected the disputed domain name because it reflects the title of her book than to take advantage of a mark she may never have known existed (and had no particular reason to know existed) and that, so far as the record shows, has no special association with any single individual or organization. Thus the Complainant has not proven registration in bad faith. The factual findings set forth above similarly defeat any claim of use in bad faith.
The operative portions of the Complainant's contentions under paragraphs 4(a)(ii) and 4(a)(iii), quoted in Section 5-A above, require the Panel to consider whether a finding of abuse of this administrative proceeding is appropriate.1 These contentions indicate that the Complaint depends upon applying the U.S. doctrine of constructive notice, a proposition not generally available in a Policy proceeding. See WIPO Overview 2.0, paragraph 3.4 ("Panels have mostly declined to introduce the US concept of constructive (deemed) notice per se into the UDRP"). Such conduct from a represented complainant led this Panel on his own initiative to include a finding of abuse in similar circumstances in Clearwater Systems, Inc. v. Glenn Johnson / Clear Water Systems of Remington Inc.,WIPO Case No. D2014-0878. This Panel believes that paragraph 3(b)(xiv) of the Rules2 requires at the least an explanation as to why the Panel should depart from settled Policy precedent. E.g., Tarheel Take-Out, LLC v. Versimedia, Inc.,WIPO Case No. D2012-1668; Liquid Nutrition Inc. v. /Vertical Axis Inc.,WIPO Case No. D2007-1598.
A Policy proceeding is not and was never intended to be an administrative substitute for an infringement action. Procedures and substantive standards for decision often differ markedly; constructive notice is but one of several examples. Not every trademark infringement makes out bad faith registration and use under the Policy; infringement is not a required element for a finding of bad faith. After nearly fifteen years and thousands of reported Policy decisions the UDRP has its own body of precedent that is to some extent independent of any national law.
And after nearly fifteen years and thousands of reported Policy decisions a party – especially a party with a professional representative – commencing a proceeding under the Policy should be aware – or if not aware, make himself aware – of the Policy, Rules, and precedent that govern the proceeding. Clearwater Systems, Inc. v. Glenn Johnson / Clear Water Systems of Remington Inc., supra; IUNO Advokatpartnerselskab v. Angela Croom,WIPO Case No. D2011-0806.
A finding of abuse of the administrative proceeding is always discretionary with the Panel, however. In recognition that his views set forth in the third preceding paragraph have not been universally accepted and the fact that this appears to be the first time this Complainant or its representative has brought a proceeding, the Panel will refrain from making one in this case. 7. Decision
For the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Sole Panelist
Date: November 1, 2014
1 This Panel believes this inquiry is required even if not requested by the Respondent, see Timbermate Products Pty Ltd v. Domains by Proxy, LLC / Barry Gork,WIPO Case No. D2013-1603; see also WIPO Overview 2.0, paragraph 4.17 ("WIPO panels have on occasion entered such findings on their own initiative.")
2 Paragraph 3(b)(xiv) requires a complainant or its authorized representative to certify that "the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument."
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