WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Goldline International, Inc. v. Gold Line

Case No. D2000-1151

 

1. The Parties

The Complainant is Goldline International, Inc., represented by Spataro & Associates.

The Respondent is Loren C. Stocker, doing business under several trade names including Gold Line Internet, appearing pro se.

 

2. The Domain Name and Registrar

The domain name at issue is "goldline.com". The domain name is registered with Network Solutions, Inc.

 

3. Procedural Background

Complainant filed its Complaint under the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") by e-mail on August 31, 2000 and in hardcopy on September 4, 2000. On October 9, 2000, the Center formally commenced this proceeding. The last day specified in the notice for the Response was October 28, 2000. Respondent timely filed a Response. The Complainant elected a three-member Administrative Panel. On December 14, 2000, after clearing for potential conflicts, the Center appointed the Panel.

The Complainant submitted a Reply to the Response. The Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), though, do not provide the parties with any right to file replies on their own volition. Rather, Rule 12 provides that only the Panel may request further submissions. Plaza Operating Partners, Ltd. v. Pop Data Technologies, Case No. D2000-0166 (WIPO June 1, 2000). Nevertheless, Complainants routinely submit replies, which not only is usually a waste of party resources (not to mention the resources of the Center and Panelists), but also delays the final resolution of the proceeding, which undermines the Policyís promise of rapid, cost effective dispute resolution. CRS Technology Corp. v. CondeNet, Inc., File No. FA0002000093547 (NAF March 27, 2000). For these reasons, many Panels have held that additional submissions are inappropriate except in the rarest of circumstances, such as discovery of evidence not reasonably available to the submitting party at the time of its initial submission, or arguments by the respondent that the complainant could not reasonably have anticipated. Id.; Plaza Operating Partners, Ltd.; Document Technologies, Inc. v. International Electronic Communications, Inc., Case No. D2000-0270 (WIPO June 6, 2000); Universal City Studios, Inc. v. G.A.B. Enterprises, Case No. D2000-0416 (WIPO June 29, 2000); Wal-Mart Stores, Inc. v. Richard MacLeod, Case No. D2000-0662 (WIPO September 19, 2000); Electronic Commerce Media, Inc. v. Taos Mountain, File No. FA0008000095344 (NAF October. 11, 2000); Parfums Christian Dior S.A. v. Jadore, Case No. D2000-0938 (WIPO November 3, 2000); Viz Communications, Inc. v. Redsun dba www.animerica.com, Case No. D2000-0905 (WIPO December 22, 2000). Because the Reply in this case presents neither previously-unavailable evidence nor authority, it is stricken and the Panel has disregarded it in its entirety.

 

4. Factual Background

Complainant is a business dealing in goods and services relating to coins and precious metals. It is the owner of a U.S. trademark registration for "Goldline" for gold and other precious metals and ingots made therefrom, and gold and silver coins, and of a U.S. service mark registration for "Goldline" for providing information as to prices and/or market values of coins, including those comprising precious metals, and information concerning the sale of gold and other precious metals. It states that it spends at least $1 million per year on advertising and sponsorships of its marks.

Respondent is an individual operating under several business names including Gold Line Internet. He has a graduate degree in marketing and operates a consulting business specializing in vanity toll-free numbers, domain name addresses, and the creation of intellectual property. Respondent registered the domain name at issue in 1997.

 

5. Partiesí Allegations

Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name at issue because: (1) Complainantís trademark and service mark registrations predate Respondentís registration of the domain name; (2) Respondentís use of the domain name creates a likelihood of confusion; (3) Respondent has no legitimate noncommercial or fair use of its marks; and (4) Respondent is not commonly known by the domain name and does not provide goods or services under that name.

Complainant further alleges that Respondentís registration and use of the domain name is in bad faith because: (1) Respondent had prior knowledge of Complainantís existing marks; (2) Respondent has no rights in the name; (3) Respondent is not using the domain name except to redirect it to a website for Del Mar Internet, one of Respondentís businesses; (4) Respondent is using Complainantís marks to draw visitors to his website, although the domain name bears no relationship to Respondentís business, and visitors are likely initially to believe that Complainant is the source of, or is affiliated with, Respondentís site; (5) Respondent has used false and misleading information in registering the name to conceal his true identity, and "Gold Line," the business identity of the registrant, is not registered to do business in California, where Respondent resides, in violation of California law; (6) Respondent has failed to provide current, complete and accurate contact information to NSI, such that Complainantís initial letter to Respondent did not reach Respondent because the Chicago address used by Respondent was invalid; (7) Respondentís website states "We are not affiliated with any of these fine companies," listing 30 companies, including 5 which were formerly Complainantís affiliates, revealing Respondentís knowledge of actual confusion and predatory intent.

Respondentís Response admits the validity of Complainantís registrations, but alleges that Complainantís rights are not superior to any other "Goldline" trademark holder or to Respondentís right to develop a "Gold Line" mark in a non-related class. Respondent alleges that 47 applications to register "Gold Line" or "Goldline" trademarks have been filed since 1958, 32 of them since 1976 (when Complainantís registration was issued), without any apparent opposition from Complainant.

Respondent alleges that he has rights or legitimate interests in the domain name at issue because, as a consultant on the design of intellectual property, he selected "Gold Line" to convey "high-end" services, in the absence of any "Gold Line" marks in related fields. He alleges that he has taken steps to build a high-end "Internet and community services" business since at least 1995.

Respondent submits that Complainantís current domain name, which reflects its full corporate name ("GoldLineInternational.com"), is a natural address for Complainant, and that his registration of "goldline.com" does not impede Complainantís business. He contends that no one would confuse a coin-based business with an Internet services business, and that he has no intent to trade on Complainantís goodwill because he offers no competing goods or services.

Respondent disputes Complainantís allegations of bad faith. He alleges that he has never offered the domain name for sale. He further alleges that, were it not for the present dispute, the site would have remained "under construction" but, when Complainant contacted him, he redirected it to his active Del Mar website in order to present a disclaimer of association.

As for the listing of the Chicago address in the NSI registry, Respondent alleges that this was an inadvertent failure to update his initially-valid address after he moved from Chicago to California, that his companion registration for "goldlines.com" contained the proper information, that he corrected the error when it was brought to his attention, and that his lack of concealment is evidenced by the fact that Complainant was able to locate him after the initial letter to Chicago was returned.

Finally, Respondent requests that the Panel make a finding of reverse domain name hijacking because he advised Complainantís representatives orally and in writing of the facts underlying his position and Complainant nonetheless proceeded to file its Complaint.

 

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) 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;

(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) That the domain name has been registered and used in bad faith.

In this case, the first element has been established; Complainant has valid registrations for "Goldline" for goods and services relating to coins and precious metals. Complainant has failed, however, to establish the second and third elements of the Policy.

The Complainantís rights are, as the multiple registrations for similar or identical marks show, limited in scope. Complainant has submitted no evidence that its mark is famous or otherwise is widely recognized outside the market for coins and precious metals.

Respondent has submitted evidence that he has prepared to operate a high-end consulting business under the "Gold Line" mark. Preparations for developing a business that could logically be marketed under a certain domain name can constitute legitimate preparations for use, even if the proposed business has no need to use the exact name at issue. See, e.g., PRIMEDIA Special Interest Publications Inc. v. Treadway, Case No. D2000-0752 (WIPO August 21, 2000) (preparations to develop photography-oriented website created legitimate interest in particular domain name "shutterbug.com"). This is particularly true in the case of a laudatory term such as "Gold Line," which can legitimately be adopted to describe a wide range of businesses that do not overlap with current registered users. In other words, it is legitimate to build a service mark out of the highly suggestive and diluted mark "Gold Line" for products or services not the same as or closely related to those covered by any existing registrations. CRS Technology Corp. v. CondeNet, Inc., File No. FA0002000093547 (NAF March 27, 2000). Of course, the situation would be very different were Complainant and Respondent competitors or in closely related fields, or were Complainantís mark arbitrary or so famous that consumers would be likely to perceive a connection across a wide range of goods or services. In such cases, it would be unlikely that Respondent could develop a legitimate interest in using a domain name confusingly similar to Complainantís mark.

As for the requirement of showing bad faith, Complainant does not even come close. The Policy is designed to prevent abusive cybersquatting. The Complaint does not allege any set of facts that arguably constitute bad faith. There is no evidence that Respondent registered "goldline.com" to profit by selling or renting it to Complainant; to the contrary, Respondent credibly states that he selected this domain name because of its laudatory characteristics (as have many others; Complainantís own submissions show that there are at least ten active "Goldline" businesses in California alone, Complaint Annex 8). Policy ∂ 4(b)(i). Nor is there evidence that Respondent registered the domain name as part of a pattern to prevent Complainant and others from reflecting their marks in their domain names. Id., ∂ 4(b)(ii). Nor are the parties competitors, id., ∂ 4(b)(iii), nor is Respondent trying to gain commercially by causing confusion, id., ∂ 4(b)(iv).

Complainant nevertheless asserts that Respondentís knowledge of Complainantís corporate name (as proven by the disclaimer on the website) is proof of bad faith.

Respondentís knowledge of Complainantís mark, though, came as a result of a review he conducted, before he chose the domain name, of dozens of registered and pending "Gold Line" marks, none of which, he concluded, covered the kind of Internet and Community Services he contemplated for his business (Response ∂ 13B and Exhibit 2, ∂ 5). In registering the domain name, therefore, the Respondent reasonably believed that his proposed services were unlikely to cause confusion with, or trade on, "Gold Line" as a mark for other, unrelated products and services. Cf. General Machine Prods. Co. v. Prime Domains, File No. FA0001000092531 (NAF March 16, 2000). Under these circumstances, the Respondentís knowledge of the Complainantís mark prior to registration of the domain name is not evidence of bad faith.

For similar reasons, the presence of a disclaimer on Respondentís website, allegedly added after Respondent was made aware of Complainantís objections, cannot be said to show bad faith. If the disclaimer were used on a website offering goods and services in competition with Complainant or in a related field, it might be ineffective to defeat an otherwise credible showing of bad faith. But, as applied to a website offering divergent services under a mark with multiple legitimate uses, the presence of a disclaimer provides no evidence of bad faith.

Nor, given the availability of "Gold Line" to describe web-hosting services, can it be said that Respondentís failure to use the site shows bad faith. If this laudatory term was available to describe his proposed business, he can hold it until he decides how best to use the domain name.

Complainant alleges that Respondentís failure to file a fictitious business name statement is a violation of California law. Such disputes are beyond the jurisdiction of this Panel, Electronic Commerce Media, Inc. v. Taos Mountain, File No. FA0008000095344 (NAF October 11, 2000), and, in any event, does not demonstrate bad faith with respect to the domain name itself, as the Policy requires. Because the Panel finds that Respondent has provided a reasonable explanation for the apparent error in leaving an older address in the NSI registry, and because Complainant found Respondent without much difficulty, this is not evidence of a practice of concealment that might justify a finding of bad faith.

 

7. Reverse Domain Name Hijacking

Respondent has asked the Panel to make a finding of attempted reverse domain name hijacking. Rule 1 defines reverse domain name hijacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." See also Rule 15(e). To prevail on such a claim, Respondent must show that Complainant knew of Respondentís unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith. See, e.g., Sydney Opera House Trust v. Trilynx Pty. Ltd., Case No. D2000-1224 (WIPO, Oct. 31, 2000).

Instructive is the Panelís decision in Smart Design LLC v. Hughes, Case No. D2000-0993 (WIPO October 18, 2000), in which the Panel found attempted reverse domain name hijacking in a similar, though not identical, situation, in which the domain name reflected a mark that was likely to have multiple legitimate uses. Taking account of the complainantís delay in bringing its claim and apparent initial acknowledgement that the respondent was the bona fide owner of the domain name, the Panel ruled that it was unreasonable for the complainant to have brought the complaint given the objective unlikelihood of success. In other words, bad faith was found to encompass both malicious intent and recklessness or knowing disregard of the likelihood that the respondent possessed legitimate interests. Cf. Loblaws, Inc. v. Presidentchoice.inc/Presidentchoice.com, Case Nos. AF-0170a to Ė0170c (eResolution, June 7, 2000) (suggesting that, "in a case where the trademark, although a well-known supermarket brand, is a common English phrase used as a mark by other businesses, the failure to conduct a cursory investigation seems especially unreasonable," though declining to find bad faith because the Policy was so new).

Under these standards, Complainantís actions in this case constitute bad faith. Prior to filing its Complaint, Complainant had to know that Complainantís mark was limited to a narrow field, and that Respondentís registration and use of the domain name could not, under any fair interpretation of the facts, constitute bad faith. Not only would a reasonable investigation have revealed these weaknesses in any potential ICANN complaint, but also, Respondent put Complainant on express notice of these facts and that any further attempt to prosecute this matter would be abusive and would constitute reverse domain name "hijack[ing]." Complaint, Annex 2. Complainantís decision to file its Complaint in the face of those facts was in bad faith. Accordingly, the Panel finds that Complainant has engaged in Reverse Domain Name Hijacking.

 

8. Decision

Complainant has failed utterly to establish two of the three elements of the Policy: that Respondent lacks legitimate rights or interests in the domain name "goldline.com", and that Respondent registered and is using the domain name in bad faith. The Panel therefore denies the Complainantís request that the domain name be transferred from Respondent to Complainant and declares that the Complaint was brought in bad faith and thus constitutes Reverse Domain Name Hijacking.

 


 

David H. Bernstein
Presiding Panelist

David Kelly Alan Limbury
Panelists

Dated: January 4, 2001