WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Real Estate Settlement Corporation v. Envision IT, Inc.
Case No. D2006-1484
1. The Parties
The Complainant is Real Estate Settlement Corporation, California, United States of America, represented by Greenberg Glusker Fields Claman & Machtinger LLP, California, United States of America.
The Respondent is Envision IT, Inc., Honolulu, Hawaii, United States of America.
2. The Domain Names and Registrar
The disputed domain names <sportskids.net> and <sportskidz.net> (the “Disputed Domain Names”) are registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2006. On November 22, 2006, the Center transmitted by e-mail to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On November 22, 2006, Go Daddy Software transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for Respondent. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 November 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2006. The Response was filed with the Center on December 18, 2006.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on January 9, 2007. 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
Complainant is the owner of the following federal trademark registrations in the United States:
- Reg. No. 2,881,995 for SPORTSKIDS, filed February 14, 2000, first used in commerce in 1999 (precise date not specified).
- Reg. No. 2,893,675 for SPORTSKIDS.COM, filed February 14, 2000, first used in commerce in 1999 (precise date not specified).
- Reg. No. 3,032,697 for SPORTSKIDS.COM, filed February 13, 2004, first used in commerce in June 1999 (precise date not specified).
Collectively, the above three trademark registrations are referred to hereafter as the “SPORTSKIDS Trademarks.”
The domain name <sportskids.net> was registered on April 28, 1999, and the domain name <sportskidz.net> was registered on June 4, 2002.
5. Parties’ Contentions
Complainant contends, in relevant part as follows:
- In April 1999, Complainant negotiated with Respondent to acquire the domain name <sportskids.com> from Respondent. Ultimately, “[a]t some point between April 26, 1999 and April 28, 1999” (the exact date of which cannot be determined to a missing date in a printed e-mail exchange), Respondent agreed to transfer the domain name <sportskids.com>, and the transfer occurred on April 29, 1999.
- Respondent’s representative “indicated that he would stop using the name ‘Sportskids’ after the transfer by explaining that his demand for a higher purchase price was in part based on ‘what it is going to cost us to redo anything that is based on the name [Sportskids].’“
- “[A]t some point between April 29, 1999 and May 3, 1999, [Respondent’s representative] again indicated to Complainant in writing that, after selling <sportskids.com> to Complainant, Respondent would discontinue using the name ‘Sportskids’ by stating: ‘…this is kind of a sad day for me. I really like the name sportskids.com and have had it for so long that it is sad. But hey, as you can see, our team here is just not ready to go live and money is always good, so life goes on. In any case, I look forward to seeing the site get out there in some capacity and wish you guys the best of luck.’ In the same e-mail, Respondent stated ‘I don’t want to incur any more costs than necessary as I now have to start the design team on a new name.’“
- “Based on information and belief, at the time of the transfer of the domain name, Respondent had never made any active use of the website at <sportskids.com> or the name ‘Sportskids’.”
- Complainant began publishing a website using the domain name <sportskids.com> on May 28, 1999, and since then has “actively and regularly maintained, improved, and increased the scope of content at <sportskids.com>.” The content on the site includes “coaching tips and sports reporting.”
- Respondent began publishing a website using the domain name <sportskids.net> on or about May 25, 2002. “The content on the site includes sports stories and information about sports leagues for children.”
- Respondent has no rights or legitimate interests in either of the Disputed Domain Names because:
- “By selling the rights to <sportskids.com> to Complainant as well as making material representations that he was going to use a new name, Respondent transferred to Complainant any rights it may have had as to the name ‘Sportskids.’ Respondent acknowledged that he knew he would have no rights to ‘Sportskids’ after the transfer on at least two separate occasions during the negotiations for the transfer.”
- Through its representations to Complainant during negotiations for the domain name <sportskids.com>, “Respondent demonstrated that his agreement to not use the name ‘Sportskids’ was a material component of the parties’ agreement to the sale.”
- “Respondent cannot claim to have any rights or legitimate interests with respect to the name ‘Sportskids’ because Respondent made no use of the name, or any variation of it, as a trademark in any context until well after Complainant used and filed federal trademark applications for the marks SPORTSKIDS and SPORTSKIDS.COM.”
- “Respondent registered the Domain Names after falsely representing that he would not make future use of ‘Sportskids’ and knowing that Complainant would make use of <sportskids.com> all in hopes that it could use the Domain Names to usurp visitors intending to access Complainant’s business. Respondent hoped to capitalize on the efforts of Complainant and on the goodwill Complainant had established in its trademarks.”
- “Respondent’s use of ‘sportskidz.net’ and ‘The SportsKidz Network’ on its website infringes upon Complainant’s federally registered trademarks.”
- Respondent registered and is using the Domain Names in bad faith because:
- “On two different occasions during the negotiations leading up to the sale of the domain name <sportskids.com> to Complainant, Respondent falsely lead [sic] Complainant to believe that after the sale, Respondent would not use the name ‘Sportskids’ in connection with any business it may operate going forward.”
- “Without such assurances, Complainant would not have paid any price, let alone several thousand dollars, for <sportskids.com>, and especially would not have invested capital and effort into developing the site and building goodwill in the marks SPORTSKIDS and SPORTSKIDS.COM.”
- “Respondent’s bad faith is highlighted by the fact that it made no use of [<sportskids.net>] until several years after Complainant had built a successful business around its marks SPORTSKIDS and SPORTSKIDS.COM through the website <sportskids.com>.”
- “When Respondent did eventually make use of [<sportskids.net>], the use it made was clearly intended to cause confusion among Complainant’s consumers.”
- “Respondent registered… <sportskidz.net>, three years after Complainant began using the marks SPORTSKIDS and SPORTSKIDS.COM and certainly after Respondent had actual knowledge of Complainant’s business that utilized these marks through the website <sportskids.com>.”
- “Respondent registered [<sportskidz.net>] knowing of Complainant’s successful business under its marks SPORTKIDS and SPORTSKIDS.COM through its website <sportkids.com>. Respondent was attempting to capitalize on that success by registering a website utilizing a domain name nearly identical to Complainant’s marks and website.”
- “Respondent implied it would make no future use of the name ‘Sportskids’ in order to induce Complainant to purchase the website <sportskids.com>. By now making use of the Domain Names and the marks found on the website linked to the Domain Names, Respondent is using the Domain Names in bad faith.”
- “Respondent is merely attempting to commercially gain from exploitation of Complainant’s trademarks.”
Respondent contends, in relevant part as follows:
- Complainant filed for registration of the SPORTSKIDS Trademarks after Respondent’s registration of the domain name <sportskids.net>, “with full knowledge that the domain name SPORTKIDS.NET was already registered prior to the filing date.”
- “The words ‘sports’ and ‘kids’ are very generic terms and not specific enough to warrant the exclusion of other organizations from using that combination of words to describe goods or services relating to sports and kids.”
- “We never stated that we would not pursue a sports and kids related venture in the future.”
- “At NO point in time did we acknowledge that we would have no rights to the name ‘sportskids’. We did acknowledge that we would not have rights to the name “sportskids.com” and that all of the materials that we had developed up until that time would have to reflect the change.”
- Respondent initially “had no interest in selling the domain [<sportskids.com>] because we had already invested a significant amount of time in branding our name here in Hawaii and as the website was the primary connection between us and our visitors we would not be interested in making any changes at that time.”
- “Our interest is primarily in trying to provide a FREE service to the youth of Hawaii that should be interested in sports as a way to lead an active and healthy lifestyle.”
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) each of the Disputed Domain Names is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of each of the Disputed Domain Names; and (iii) each of the Disputed Domain Names has been registered and is being used in bad faith. Policy, paragraph 4(a).
A. Identical or Confusingly Similar
Based upon the U.S. trademark registrations cited by Complainant, it is obvious that Complainant has rights in the SPORTSKIDS Trademarks.
As to whether the Disputed Domain Names are identical or confusingly similar to the SPORTSKIDS Trademarks, the relevant comparison to be made is with the second-level portion of the Disputed Domain Names only (i.e., “sportskids” and “sportskidz”), as it is well-established that the top-level domain (i.e., “.net”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Case No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”).
Without the need for any discussion, it is obvious that the second-level domain “sportskids” is identical to Complainant’s SPORTSKIDS Trademarks and, accordingly, the Panel is convinced that Complainant has proven the first element of the Policy with respect to the domain name <sportskids.net>.
With respect to the other Disputed Domain Name, <sportskidz.net>, the Panel finds that the difference of a single letter – that is, use of the letter “z” in the domain name rather than the letter “s” – “is insignificant for purposes of confusing similarity,” Hunter Douglas Industries, BV, and Hunter Douglas Window Fashions, Inc. v. Erik Little, WIPO Case No. D2005 0460, particularly where, as here, the difference does not alter the pronunciation of the domain name. Accordingly, the Panel is convinced that Complainant has proven the first element of the Policy with respect to the domain name <sportskidz.net> as well.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a domain name registrant can demonstrate that it has rights or legitimate interests in a domain name by showing that, “before any notice to [it] of the dispute, it use[d]… or [made] demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.”
In this case, Respondent apparently began using each of the Disputed Domain Names in connection with sports-related websites prior to the date on which the Complaint was filed. (There is no indication in the Complaint that Complainant notified Respondent of the matters leading to this dispute prior to the date on which the Complaint was filed.) Therefore, the critical question is whether Respondent’s usage constitutes “a bona fide offering of goods or services.”
According to Respondent, the Disputed Domain Names are used in connection with websites that provide a “service to the youth of Hawaii that should be interested in sports as a way to lead an active and healthy lifestyle.” Printouts of these websites provided by Complainant appear to be consistent with this statement. The words used in the disputed domain names, “sports” and “kids” (and “sports” and “kidz”) appear from the available evidence as if they are being used in a generic or descriptive manner. Such usage is likely to be “bona fide” under the Policy. See, e.g., United Rentals, Inc. v. United Rental Services, Ltd., WIPO Case No. D2006-0529 (finding rights or legitimate interests where respondent registered and used a domain name in connection with a “legitimate” service several years prior to the dispute).
Furthermore, although Complainant asserts that Respondent’s usage of the Disputed Domain Names and associated websites infringe the SPORTSKIDS Trademarks, the record is unconvincing on this point. Complainant fails to provide any printouts of its own website for comparison with Respondent’s websites, and the Panel’s independent visit to the website at “www.sportskids.com“ (visited January 23, 2007) reveals a website that offers games, bedding, clothing and furniture in addition to news.1 Based on the foregoing, the Panel is not convinced that Complainant’s assertion has been established in the present circumstances. See, e.g., Pet Food Experts, Inc v. R. Ryner, WIPO Case No. D2005-0536 (finding rights or legitimate interests where the respondent’s usage was not clearly a “deliberate infringement of Complainant’s rights”).
Finally, it is far from clear that, as Complainant states, Respondent ever agreed to refrain from using the phrase “Sports Kids” or domain names containing those words, and Respondent expressly denies that it agreed to do so. The evidence submitted by Complainant shows only that Respondent agreed to transfer the domain name <sportskids.com> to Respondent; the evidence is, at best, inconclusive as to what Respondent agreed to do or not to do with respect to the phrase “Sports Kids” or domain names containing those words after transfer of the domain name. Indeed, while Complainant cites Respondent’s statement that it would “start the design team on a new name” as support for the assertion that Respondent agreed to refrain from future uses of “Sports Kids,” this statement was made by Respondent after Complainant’s representative told Respondent, “We’ve got a deal!” in an e-mail dated April 29, 1999. While that same e-mail referred to Complainant’s desire to “draw up a contract” for transfer of the domain name, the record does not anywhere else refer to, nor has either party provided a copy of, such a contract. Accordingly, the Panel is not in a position to assess its impact (if any), in the present proceedings.
Accordingly, because of the presence of all of the issues set forth above and because “the overall burden of proof rests with the complainant”2 in proving the absence of the Respondent’s rights or legitimate interests, the Panel finds that Complainant has failed to prove the second element of the Policy.
C. Registered and Used in Bad Faith
Where a complainant does not prove one or more of the elements set forth in paragraph 4 of the Policy, the Panel is compelled to issue a decision denying the complaint, regardless of the complainant’s ability to prove the other elements required by the Policy. Accordingly, under such circumstances, any discussion by the Panel with respect to the third element would be unnecessary in reaching a decision to deny the complaint. See, e.g., Admerex Limited v. Metyor Inc., WIPO Case No. D2005-1246 (“[s]ince the Complainant must prove all three elements of the Policy, and since the Complainant fails under the third element,… it is not necessary to make a finding under the second element of the Policy”); Micro Electronics, Inc. v. MicroCenter, WIPO Case No. D2005-1289 (where the complainant failed to prove the second element of the Policy, “there is no need for the Panel to address the third element of the Policy”). Therefore, given that the Panel in the instant case finds, as discussed above, that Complainant has failed to prove the second element of the Policy – that is, paragraph 4(a)(ii) – it is unnecessary for the Panel to make a finding with respect to the third element of the Policy.
For all the foregoing reasons, the Complaint is denied.
Douglas M. Isenberg
Dated: January 23, 2007
1 “The panel may… undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision.” “WIPO Overview of WIPO Panel Views on Selected UDRP Questions,” paragraph 4.5.
2 Id. at paragraph 2.1.