Register.com, Inc. v. International Languages
Inc.
Claim Number: FA0509000558106
PARTIES
Complainant is Register.com,
Inc. (“Complainant”), represented by Brett
E. Lewis, of Lewis & Hand LLP, 45 Main Street Suite 818, Suite 818,
Brooklyn, NY 11201. Respondent is International Languages Inc. (“Respondent”),
represented by Ari Goldberger, of ESQwire.com Law Firm, 35
Cameo Drive, Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <registro.com>,
registered with Network Solutions.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Alan L. Limbury, Hon. Nelson A Diaz and Tyrus R. Atkinson, Jr., as
Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 9, 2005; the National Arbitration Forum received a
hard copy of the Complaint on September 12, 2005.
On September 13, 2005, Network Solutions confirmed by e-mail to the
National Arbitration Forum that the <registro.com>
domain name is registered with Network Solutions and that the Respondent is the
current registrant of the name. Network
Solutions has verified that Respondent is bound by the Network Solutions
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On September 13, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 21, 2005 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@registro.com by e-mail.
A timely Response was received and determined to be complete on October
17, 2005.
Complainant’s Additional Submission and Respondent’s Reply To
Complainants Supplemental Papers Pursuant To NAF Supplemental Rule 7, were
timely filed and considered by the Panel.
On October 26, 2005, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Alan L. Limbury, Hon. Nelson A. Diaz, and Tyrus R.
Atkinson, Jr., as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the owner of the United States Trademarks for REGISTER
(Registration Nos. 2,664,968) and REGISTER.COM (Registration Nos. 2,664,967,
2,275, 206, and 2,828,845), and has filed applications for several other
REGISTER.COM trademarks in the United States.
REGISTER.COM was used in commerce in 1994 in connection with the
provision of domain name registration services, online search services, website
hosting and development service.
Complainant has consistently been one of the leading companies in its
industry and has a market capitalization of roughly $190 Million and employs
approximately 500 people.
Complainant’s services have been extensively advertised under the
REGISTER marks through all forms of media.
The disputed domain name, <registro.com> is confusingly
similar to REGISTER.COM and the REGISTER marks. The word “registro” is Spanish for “register.” Under the doctrine of foreign equivalents,
the marks are considered to be confusingly similar.
Respondent has not been licensed by Complainant, or otherwise
authorized to use the REGISTER marks.
Respondent has never been known by the disputed domain name, which
consists solely of Complainant’s registered trademarks in Spanish. Respondent has made no use of, or
demonstrable preparations to use, the disputed domain name in connection with a
bona fide offering of goods and services.
Respondent has no trademark rights in or to the REGISTER marks prior to
registering the disputed domain name and has not subsequently obtained any such
rights in or to the REGISTER marks.
Respondent has engaged in a pattern and practice of registering, as
domain names, well-known and famous trademarks and offering them for sale. Respondent’s use of the disputed domain name
is made with the purpose of commercially profiting off the fame and notoriety
of the REGISTER marks.
Respondent acquired the disputed domain name primarily for the purpose
of selling, renting, or otherwise transferring the domain name to Complainant
or a competitor of Complainant.
Respondent seeks to profit off the fame, notoriety and goodwill of
Complainant’s REGISTER marks.
Immediately after acquiring the domain name, Respondent contacted
Complainant soliciting an investment in, or strategic partnership involving the
domain name. Respondent intended to
profit, in bad faith from its acquisition and use of the domain name, either by
coercing Complainant into investing in its scheme, or by operating an
infringing web site at <registro.com>.
B. Respondent
There is no basis for transferring the domain name to Complainant. The disputed domain name solely incorporates
the common Spanish word “registro”, which means, “register.” REGISTER.COM and <registro.com> are
not identical or confusingly similar.
Because “register” is a common generic word, it is entitled to very
limited trademark protection and small differences are sufficient to eliminate
a finding of confusing similarity.
Complainant does not have exclusive rights to this common word, which is
subject to tremendous third party use in connection with the services offered
by Complainant.
Respondent has rights and a legitimate interest in the disputed domain
name. Respondent purchased the domain
name because it incorporates a common word, and Respondent intends to use it in
connection with the bona fide offering of goods and services described by the
domain name-multilingual service to enable individuals to register domain
names.
Further corroborating Respondent’s legitimate interest is the fact that
it previously had operated another domain name registration service using the
domain name <registrantes.com>, a site operated in partnership with
Complainant.
Respondent did not acquire and register the disputed domain name in bad
faith. It was natural for Respondent to
inquire whether Complainant was interested in working with it to develop a
private label site. Complainant
operates the “Register.com Affiliate Program.”
Respondent had previously been a reseller partner of REGISTER.CO M with
a site it operated called <registrantes.com> and Respondent naturally
assumed that Complainant would similarly approve the use of the <registro.com>
in its reseller program. The fact
that Complainant had already approved such use in the past is a factor that
weighs heavily in favor of finding of legitimate interest.
C. Additional Submissions
COMPLAINANT’S ADDITIONAL SUBMISSION
Complainant argues that REGISTER.COM is not a generic term, and cites
several domain name dispute decisions that hold that Complainant has protected
rights in REGISTER.COM.
Complainant contends that even if REGISTER.COM can be considered
descriptive, REGISTRER marks have acquired distinctiveness through extensive
secondary use in commerce. Respondent’s
argument that because the parties cooperated in the use of the
<registrantes.com> mark that Respondent was entitled to believe that
Complainant would accept registration of <registro.com>, is
incorrect. Registrant and register are
different words, having different meanings.
Complainant has never used the word “registrant” as a source identifier
and has never sought to prevent a third party from its use.
Respondent could have registered <registro.com> and used
it for something not related to Complainant’s business, but that is not what
Respondent did. Respondent registered
the disputed domain name for use in a domain name services business, with the
intent to solicit Complainant for an investment. Respondent used the threat of partnering with one of Complainant’s
competitors to pressure Complainant into investing in its venture.
It is clear that Respondent acquired the <registro.com> primarily
in furtherance of a bad faith scheme to solicit funds from Complainant.
RESPONDENT’S REPLY TO COMPLAINANT SUPPLEMENTAL PAPERS PURSUANT TO NAF
SUPPLEMENTAL RULE 2.
An administrative panel is not bound by the determination of a U.S.
trademark examiner with respect to enforceability of a mark for purposes of a
UDRP proceeding. None of the cases
cited by Complainant regarding application of the doctrine of foreign
equivalents involve a single common dictionary word, as is the case here. A Panel should exercise caution in too
broadly applying trademark concepts in administrative proceedings. To apply the doctrine would be bad public
policy and contradicts the intended narrow scope of the Policy.
FINDINGS
1.
Complainant
operates a business competing in the domain name registration field under the
name REGISTER.COM.
2.
Complainant
owns United States Trademark Registrations for REGISTER.COM, REGISTER and other
similar marks, which Registrations were granted prior to the registration by
Respondent of <registro.com>.
3.
Respondent is a
language translation firm located in Canada.
4.
Respondent
acquired the domain name <registro.com> and Complainant alleges
that Respondent registered <registro.com> in August 2005. Respondent does not dispute that date so it
is taken as established for the purposes of this proceeding.
5.
Respondent was
aware of Complainant’s marks and business at the time of registering <registro.com>.
6.
Shortly after
registration of <registro.com>, Respondent contacted
Complainant with the suggestion that Complainant and Respondent could commence
a business of soliciting Spanish-speaking individuals in the domain
registration field. Respondent proposed
that Complainant make an investment of funds to establish the business. Agents of Complainant discussed the business
proposition with Respondent but no agreement was ultimately made between the
parties. At this point, Respondent stated
to Complainant that it might attempt to establish the business with a
competitor of Complainant.
7.
Respondent has
not operated a website under the domain name <registro.com>.
8.
After the
business discussions between Complainant and Respondent terminated, Complainant
filed this domain name dispute.
9.
REGISTER.COM
and <registro.com> are confusingly similar under the facts and
circumstances of this case.
10. Respondent has no rights to or legitimate
interests in the domain name.
11. Respondent registered and used the domain
name in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “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 requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1)
the domain name
registered by the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the Respondent
has no rights or legitimate interests in respect of the domain name; and
(3)
the domain name
has been registered and is being used in bad faith.
Complainant’s first requirement is to show
that it has rights in the trademark under consideration. Policy ¶(4)(a)(i). That element is shown by the
registration with the United States Patent and Trademark Office of REGISTER and
REGISTER.COM. See Vibendi Universal Games v. XBNetVentures Inc. FA198803
(Nat. Arb. Forum Nov. 11, 2003 holding that Complainant’s federal trademark
registrations establish Complainant’s rights in the BLIZZARD mark. See also Inomed Techs., Inc. v. DRP
Servs., FA221171 (Nat. Arb. Forum Feb. 18, 2004) holding that registration
of the NASAL-AIRE mark with the USPTO
establishes Complainant’s rights in the mark.
See also Register.com, Inc. v. Mike Torres a/k/a Click 5, et al , FA145209
(Nat. Arb. Forum Mar. 11, 2003); and Register.com, Inc. v. Kuska House, FA167970
(Nat. Arb. Forum Aug. 22, 2003).
The next element Complainant must prove is
that the trademark and domain name are identical or confusingly similar. Policy ¶(4)(a)(i). Both parties agree that “registro” is
the Spanish word matching the English word, “register.” Respondent contends that the two words are
not confusingly similar. Complainant contends
that they are confusingly similar under the doctrine of foreign equivalents as
set out in Popular Bank of Florida v. Banco Popular of Puerto Rico, 9 F.Supp 2nd
1347, 1359(D.C. Fla.1998) wherein is was stated “[I]f a foreign phrase
translated into English is exactly the same as the existing English trademark,
the marks are considered to be confusingly similar.” Respondent objects to the use of the doctrine of foreign
equivalents in domain name dispute proceedings since the narrow scope of the Policy
covering only clear cases of cybersquatting and cyberpiracy would be violated
by such use so that “To apply the doctrine of foreign equivalents in the domain
name context to a common word domain name could potentially give a trademark
owner of any common dictionary word in any language a monopoly over use of the
corresponding domain name in every Tld.”
The Panel acknowledges the merit of
Respondent’s argument. The Panel notes
that domain name decisions do not reflect much use of the doctrine. The Panel has considered the use of the
doctrine with considerable deliberation and keeping in mind the limited scope
of domain name disputes. The present
factual situation shows that Respondent chose the Spanish match for
Complainant’s REGISTER and REGISTER.COM marks, for the specific purpose of attempting
to use the domain name in direct association with, or in a competing use, with
Complainant in the pursuit of Complainant’s primary business enterprise. Respondent chose the domain name to attempt
to solicit Spanish customers to the very purpose of Complainant’s
business.
Since Respondent chose <registro.com>
as a Spanish match for Complainant’s REGISTER and REGISTER.COM marks, it seems
appropriate to apply the doctrine of foreign equivalents in this case, as
permitted under the Rules which allow a Panel to apply any law or precedent it
finds applicable to a particular case.
While the majority of the Panel would be reluctant to use the doctrine
where the disputed domain name is not chosen precisely by a respondent to match
a mark of another to participate in precisely the same business enterprise, the
entire Panel has no reluctance to apply the doctrine in this case based upon
the facts presented herein.
The addition of the top-level domain “com” is
irrelevant in determining whether the <registro.com> domain name
is confusingly similar to Complainant’s mark. See Pomellato S.p.A. v.
Tonetti, D2000-0493 (WIPO July 7, 2000) finding <pomellato.com>
identical to the complainant’s mark because the generic top-level domain (gTLD)
“com” after the name Pomellato is not relevant. See also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO
June 25, 2000).
The Panel finds that <registro.com>
is confusingly similar to REGISTER and REGISTER.COM.
Complainant prevails under the requirements
of Policy ¶ (4)(a)(i).
Complainant has the initial burden of showing
a lack of rights to or legitimate interests in the disputed domain name. Complainant alleges that Respondent is not
commonly known by the <registro.com> domain name. Complainant contends that it has never
licensed, or approved any use of the mark to Respondent. Complainant alleges that Respondent is not
making any use of the domain name, as it resolves to a website that is under
construction and is not functional.
Complainant alleges that Respondent registered the domain name to sell
or rent it to Complainant or a competitor.
Upon such a showing, the burden shifts to
Respondent to show its rights to and legitimate interests in the domain name. See
Do The Hustle, LCC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) “Where a complainant has asserted that the
respondent has no rights or legitimate interests in respect of the domain name,
it is incumbent upon the respondent to come forward with concrete evidence
rebutting this assertion. This
information is uniquely within the knowledge and control of the
respondent. Failure of a respondent to
come forward with such evidence is tantamount to admitting the truth of
complainant’s assertions in this regard.”
Respondent advances the following arguments
to carry its burden.
First, Respondent contends that “registro” is
a common word and registering a common word gives Respondent legitimate
interests. Complainant responds to this
argument by showing that its mark is registered with the United States Patent
and Trademark Office, has been used in commerce for many years, and has
acquired secondary meaning.
Respondent next argues that it is making a
bona fide offering of goods or services.
Respondent contends that it is making demonstrable preparations to use
the domain name and that is sufficient to show legitimate interests.
The Panel finds that Respondent is not
commonly known by the domain name <registro.com>, nor has
Respondent received permission or gained a license to use the domain name from
Complainant. See Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) finding no
rights or legitimate interest where respondent was not commonly known by the
mark and never applied for a license or permission from complainant to use the
trademarked name. See also Broadcom
Corp. v. Intellifone Corp. FA96356 (Nat. Arb. Forum Feb. 5, 2001) finding
no rights or legitimate interests because respondent is not commonly known by
the disputed domain name or using the domain name in connection with a
legitimate or fair use. See also
Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA95162 (Nat. Arb. Forum Aug.
29, 2000).
The Panel further finds that Respondent’s
selection of the domain name which is an exact match in Spanish for Complainant’s
Mark, and thereafter approaching Complainant to finance a joint business
enterprise using the domain name and upon failing to accomplish an agreement,
threatening to go to one of Complainant’s competitors to create a competing
website for Spanish customers, in direct competition with Complainant, is not a
bona fide use of the domain name. See
Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110 (D.Mass. 2002)
finding that, because the respondent’s sole purpose in selecting the domain
names was to cause confusion with the complainant’s website and marks, it use
of the names was not in connection with the offering of goods or services or
any other fair use.
Under the Policy one who makes use of, or
demonstrable preparations to use a domain name must do so “before any notice to
you of the dispute.” Policy ¶(4)(c)(i).
The Panel finds that Respondent knew of the strong possibility of a
dispute with Complainant regarding this domain name when it was
registered. This is a factor that
causes difficulty for Respondent when contending that it is making a bona fide
use of the domain name.
There is no evidence to indicate that the
factual situation required to satisfy Policy ¶ (4)(c)(iii) are present.
The Panel finds that Respondent has not been
known by the domain name nor has Respondent made a bona fide use of the domain
name. Respondent’s showing does not
prove any rights to or legitimate interests in the domain name <registro.com>.
Complainant prevails under Policy, ¶ 4(a)(ii).
The facts show that Respondent registered the
domain name <registro.com> with the intended purpose of using the
domain name to approach Complainant with a request that Complainant fund a
website for the placement of <registro.com> as a website for the
solicitation of Spanish customers for Complainant’s business purposes. Respondent was to share in the ownership and
the proceeds of the enterprise, which could have amounted to a significant
receipt of funds to Respondent as result of the business proceeds. The evidence shows that if Complainant would
not fund the enterprise, it was the intent of Respondent to approach a
competitor of Complainant to fund the proposition in which Respondent would own
a portion of the business.
The Policy states “For the purposes of Paragraph
4(a)(iii) the following circumstances, in particular but without
limitation, if found by the Panel to be present, shall be evidence of the
registration and use of a domain name in bad faith: (i) circumstances indication that you registered or you have
acquired the domain name primarily for the purpose of selling, renting, or
otherwise transferring the domain name registration to the complainant who is
the owner of the trademark or service mark or to a competitor of that complainant,
for valuable consideration in excess of your documented out-of –pocket costs
directly related to the domain name…”
There is no dispute in the evidence that
Respondent intended at the time of registration of the domain name to either
sell, rent or otherwise transfer, some part or all of the domain name to
Complainant or a competitor in creating the Spanish website to solicit
customers for a business operated either by Complainant or a competitor. The transfer of some part, or the rights to
use the domain name was conditioned on a substantial transfer of funds from the
Complainant or a competitor to set up the website for the benefit of Respondent
and the entity which ended up in association with Respondent. Had this website been created, as envisioned
by Respondent, Respondent stood to gain significant sums of money from the
business done by the website.
Complainant shows by affidavit that net revenues relating to services
marketed and sold under the REGISTER marks since 2000 total roughly half a
billion dollars. It can be inferred
that a successful Spanish website in which Respondent was a partner or part
owner would have produced income to Respondent in excess of the documented
out-of-pocket expenses directly related to the
domain name.
Complainant alleges as follows: “Under Respondent’s proposal, Register.com
would ‘invest’ to make <registro.com> a Spanish language domain
name portal, and split the profits with Respondent. Essentially, Respondent would receive a free ride from
exploitation of the REGISTER marks and good will. When Complainant declined to commit to such a partnership,
Respondent remarked that he could not sit on the idea and would begin actively
shop it to Register.com’s competitors. (See Cooperman Decl. ¶¶ 3-5)”
The Panel finds that Respondent registered
and used the domain name <registro.com> in violation of Policy
¶4(b)(i).
If Respondent, not having been successful
with Complainant, enters into a business enterprise with one of Complainant’s
competitors, Respondent is in violation of Policy ¶ 4(b)(i). If Respondent launches the website on its
own, Respondent is in violation of Policy ¶ 4(b)(iv) by using the domain name
to intentionally attract, for commercial gain, Internet users to its website by
creating a likelihood of confusion with the complainant’s mark and disrupting
the business of Complainant in violation of Policy ¶ 4(b)(iii).
Complainant prevails under Policy ¶
4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that Complainant must prevail. Panelist Alan L. Limbury would transfer the domain name to
Complainant. The majority of the Panel
finds that the domain name should not be transferred to Complainant. The majority of the Panel finds that it is possible
that the domain name could be used in a manner which would not infringe upon
Complainant’s mark, and therefore should be cancelled rather than transferred.
Accordingly, it is Ordered that the <registro.com>
domain name be CANCELLED.
Tyrus R. Atkinson, Jr., Panel Chairman for
the Panel
Alan L. Limbury, Honorable Nelson A. Diaz,
and Tyrus R. Atkinson, Panelists
Dated: November 9, 2005
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