Complainant is R.V. Kuhns & Associates, Inc. of Portland, Oregon, United States of America ("United States"), represented by Tonkon Torp LLP, United States.
Respondent is Gregory Ricks of Queens Ct, College Station, United States / Whois Privacy Corp. / Domain Administrator of Nassau, New Providence, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 20, 2014. On November 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 25, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 26, 2014.
The Center verified that the Complaint and the amended 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 Respondent of the Complaint, and the proceedings commenced on December 1, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 21, 2014. The Response was filed with the Center on December 1, 2014.
The Center appointed Michael A. Albert, Ik-Hyun Seo and Alan L. Limbury as panelists in this matter on December 29, 2014. 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
Complainant has registered and is using the RVK mark in connection with investment consulting services. Respondent uses the disputed domain name to provide click-through links to unrelated web sites. 5. Parties' Contentions A. Complainant
Complainant alleges that it has been in business "since 1985," that it registered the RVK mark on the United States Patent and Trademark Office's (USPTO) Principal Register (Registration No. 2869750, dated August 3, 2004), that it uses the service mark in connection with investment consulting services, and that it has been doing so "since at least 1992." It alleges that it has expended over USD286,000 in marketing and promotion of its services under its mark.
It alleges that Respondent has made no use of the disputed domain name other than to generate "click-through" revenue by providing sponsored links to unrelated web sites. It further alleges that Respondent has previously been found by UDRP panels to have engaged in improper domain name registrations and that his use deprives Complainant of the ability to use its mark in a domain name. B. Respondent
Respondent alleges that he cannot have registered the domain name in "bad faith"" because he registered it on February 20, 2000, more than four years before Complainant's trademark registration date and several months before Complainant's claimed first use date of April 7, 2000.
He alleges that he had no knowledge of the existence of R.V. Kuhns & Associates, Inc. (now RVK, Inc.) until he received this Complaint almost 15 years after he registered the disputed domain name, and that during that time he had not received notice of any alleged trademark concerns from Complainant.
He alleges that three-letter domain names are commonly known to be valuable and that Complainant is merely seeking to use this process to take away, at little cost, a valuable property he has possessed for many years.
As to the prior instances of UDRP disputes in which he was involved, he explains that some of those disputes were settled after litigation and in one case he chose not to respond. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant's registration of the RVK mark on the USPTO's Principal Register satisfies the requirement that Complainant have rights in the mark. The consensus view is that when a complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. See., e.g., The Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory World, WIPO Case No. D2000-0474.
The disputed domain name is identical to the Complainant's mark, but for the ".com" generic Top-Level Domain, which is generally considered inconsequential when determining confusing similarity. See, e.g., New Holding Limited v. Steve Kerry/WWW Enterprise, Inc., WIPO Case No. D2006-1374.
Accordingly, Complainant has established the first element of its case. B. Rights or Legitimate Interests
Three-letter domain names are well known to have particular value. They have often been the subject of domain name sales at substantial prices (a fact for which Respondent provided evidence in the Annexes to his Response). As long as Respondent did not register the disputed domain name in bad faith or in an attempt to trade on the goodwill associated with Complainant's mark (as discussed below), his contention is plausible that he has frequently engaged in the purchase and/or sale of three-letter domain names as part of his business and considers the acquisition of such domain names to be a legitimate enterprise. Complainant has offered no evidence to the contrary. Accordingly, Complainant fails to meet this element of its case under the Policy. C. Registered and Used in Bad Faith
Respondent registered the disputed domain name on February 20, 2000. Complainant's date of first commercial use of its mark, according to its United States Trademark Registration, was April 7, 2000.
Accordingly, Complainant had apparently not even established trademark rights in the RVK mark as of the date on which Respondent registered the disputed domain name. Moreover, as of that date, Respondent cannot have known of any claim of right by Complainant to the mark. For this reason alone, Respondent cannot have engaged in "bad faith" registration of the disputed domain name.
Respondent further alleges that, for some fifteen years after registration, he was not notified by Complainant of any trademark concern. Complainant does not allege to the contrary. While there is no "laches" doctrine in disputes under the Policy, this fact tends to buttress the credibility of Respondent's position that he was unaware of any concern between his domain name registration and the mark allegedly owned by Complainant. Respondent's use of the disputed domain name to generate pay-per-click revenue from advertising links unrelated to the nature of Complainant's business further supports the conclusion that Respondent was unaware of Complainant or its mark prior to the filing of the present Complaint and does not constitute bad faith use.
Complainant alleges that it has been in business "since 1985." Notably, however, Complainant does not allege (or provide any evidence) that it had been using the disputed mark since that date. Accordingly, its date of incorporation or commencement of business is irrelevant.
Lastly, Complainant alleges that "Complainant has been using the mark in various phases of its business since at least 1992. Annex 17, 2."The cited Annex, however, creates some ambiguity about this assertion. Annex 17 is a declaration from Scott Gratsinger. There are two versions of this declaration, however. In the version filed with the original Complaint, Mr. Gratsinger avers only that Complainant has used the mark "since at least April 2000". This cited paragraph does not support (or even mention) the 1992 date appearing in the Complaint. In the version of the declaration that accompanies the Amended Complaint, however, Mr. Gratsinger has modified this statement to contend that the mark was in use "since at least December 1992." He cites to an exhibit, namely a letter sent by Complainant in December 1992, allegedly using the RVK mark. That exhibit appears to be a letter in which Complainant uses the initials RVK as part of its letterhead. Underneath the RVK letterhead is the corporate name "R.V. Kuhns & Associates, Inc." At issue, therefore, is whether this letter adequately evidences trademark use as of 1992.
This issue is addressed in Section 1301.04(h)(i) of the United States Trademark Office's "Trademark Manual of Examining Procedure" ("TMEP"). This subsection, entitled "Letterhead," establishes when usage of a mark on letterhead will be deemed sufficient to constitute a specimen of commercial use establishing trademark rights:
Letterhead stationery, business cards or invoices bearing the mark may be accepted if they create an association between the mark and the services. To create an association between the mark and the services, the specimen does not have to spell out the specific nature or type of services. A general reference to the industry may be acceptable. In re Ralph Mantia Inc., 54 USPQ2d 1284 (TTAB 2000) (letterhead and business cards showing the word "Design" are acceptable evidence of use of mark for commercial art design services); In re Southwest Petro-Chem, Inc., 183 USPQ 371 (TTAB 1974) (use of mark on letterhead next to the name SOUTHWEST PETRO-CHEM, INC. found to be sufficient to show use of the mark for "consulting and advisory services relating to the making and using of lubricating oils and greases", when used for letters in correspondence with customers).
Letterhead or business cards that bear only the mark and a company name and address are not adequate specimens (unless the mark itself has a descriptive portion that refers to the service), because they do not show that the mark is used in the sale or advertising of the particular services recited in the application. In re Monograms America, Inc., 51 USPQ2d 1317 (TTAB 1999) (letterhead specimens showing the mark MONOGRAMS AMERICA and the wording "A Nationwide Network of Embroidery Stores" held insufficient to support registration for consulting services for embroidery stores).
If the letterhead itself does not include a reference to the services, a copy of an actual letter on letterhead stationery bearing the mark is an acceptable specimen of use if the content of the letter indicates the field or service area in which the mark is used. In Monograms America, the Board indicated that the letterhead specimen might have been accepted if the applicant had submitted a copy of a letter to a store owner describing the services. 51 USPQ2d 1319.
In light of the standard set forth in the TMEP, it does not appear to this Panel that the 1992 letter attached to the version of the Gratsinger Declaration appended to the Amended Complaint meets the standard of establishing trademark use. Although the letter uses RVK as part of the letterhead (along with the company's name and address), the letter does not make reference to the specific services that Complainant alleges are or were associated with its use of that mark. The letter does not, in particular, "indicate [ ] the field or service area in which the mark is used" or "describ[e] the services" in question.
Accordingly, the amended version of the Greisinger Declaration does not establish a 1992 date of first use for purposes of this proceeding. Instead, Complainant is left with its April 2000 claimed date of first use as set forth in its trademark registration. Inasmuch as that date, as discussed above, post-dates Respondent's registration, he cannot have registered the disputed domain name in bad faith. Additionally, the Panel notes that even if the 1992 letter were a trademark use, there would still be no evidence that Respondent was aware of it and thus that he engaged in any bad-faith conduct. 7. Decision
For the foregoing reasons, the Complaint is denied. 8. Reverse Domain-Name Hijacking
Respondent has asked the Panel to find that this is a case of Reverse Domain Name Hijacking.
"Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." Rules, paragraph 1.
Complainant knew that Respondent registered the disputed domain name several months prior to Complainant's claimed date of first use of its mark. Complainant must therefore have been aware that Respondent cannot have registered the disputed domain name in bad faith, since he cannot possibly have known of Complainant's as-yet-nonexistent claim to the mark.
Complainant is not saved by its allegation that its trademark use began in 1992. First of all, that allegation was made only in the amended, not original, Complaint, and accordingly the original Complaint was not a good faith filing. Secondly, even if Complainant believed in good faith that its 1992 letter evidenced trademark use, it did not have a basis to believe that Respondent was aware of this letter or of any other evidence of Complainant's alleged claim of right to the RVK mark.
Accordingly, the Panel finds that Complainant engaged in Reverse Domain Name Hijacking.
Michael A. Albert
Presiding Panelist
Ik-Hyun Seo
Panelist
Alan L. Limbury
Panelist
Date: January 13, 2015
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