WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Bell Policy Center v. Ken Hess and Graphis, Inc.
Case No. D2010-1072
1. The Parties
The Complainant is The Bell Policy Center of Denver, Colorado, United States of America, represented by Augustine Law Firm, LLC, United States of America.
The Respondent is, collectively, Ken Hess and Graphis, Inc. of Boulder, Colorado, United States of America.
2. The Domain Name and Registrar
The disputed domain name <thebell.org> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2010. On June 29, 2010, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain name. On June 30, 2010, Register.com 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 the Complainant on July 21, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint on July 22, 2010.
The Center verified that the Complaint together with 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 the Respondent of the Complaint, and the proceedings commenced on July 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on August 16, 2010.
The Center appointed Dennis A. Foster as the sole panelist in this matter on August 20, 2010. 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.
On September 28, 2010, the Panel, pursuant to its discretion under the Rules, paragraph 12, and in the pursuit of fairness in its decision-making, issued Procedural Order No. 1, requesting that the Complainant and Respondent file Additional Submissions to address the issue of common law service mark rights. On October 1, 2010, the Complainant filed such Additional Submission with the Center. The Respondent did not file an Additional Submission.
4. Factual Background
The Complainant has operated a non-profit lobbying service in the United States of America since at least 2002. It has used the brand names, “The Bell” and “The Bell Policy Center”, in connection with those services. The Complainant has engaged in extensive promotion and received significant media recognition of its brand name, THE BELL”.
While working for the Complainant, the Respondent registered the disputed domain name, <thebell.org>, on February 19, 2000. The Respondent refuses to provide the Complainant with the user name and password connected with the disputed domain name, which is necessary for the Complainant to continue using the disputed domain name.
5. Parties’ Contentions
- Since 2002, the Complainant has operated a non-profit service in the United States that identifies and promotes policies that help individuals and families access opportunity and move toward self-sufficiency.
- The Complainant has used the trademarks, THE BELL and THE BELL POLICY NETWORK, in an open, notorious and exclusive manner in interstate commerce since 2000. Moreover, the Complainant has used the marks, THE BELL and THE BELL POLICY CENTER, in conjunction with its non-profit service since 2002. Those marks have become famous and distinctive among non-profit and charitable communities.
- The disputed domain name is confusingly similar, if not identical, to the Complainant’s trademarks.
- The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is in no way connected with the Complainant, by either affiliation or license.
- The Respondent is not using the disputed domain name in connection with any goods or services. Neither the Respondent, nor any business associated with the Respondent, has been commonly known as the disputed domain name.
- The disputed domain name was registered and is being used in bad faith. In 2000, the Respondent was hired by the Complainant to, among other things, acquire the disputed domain name on behalf of the Complainant. The Complainant paid the Respondent for the registration costs of the disputed domain name in 2000, but it remained registered in the Respondent’s name.
- By 2001, the Respondent had finished his contractual duties with the Complainant, and a short time afterward started an entirely new company, under which it did business. The Complainant has never had dealings with that new company.
- From 2000 to 2010, the disputed domain name was used exclusively by the Complainant, who paid all registration and hosting costs associated with the name, though it remained registered with the Respondent. In 2010, while attempting to change website hosting services, the Complainant was informed that it needed to submit a user name and password that only the Respondent knew.
- When contacted by the Complainant for said user name and password, the Respondent attempted to extort a fee of USD 10,000, far beyond any registration costs ever associated with the disputed domain name. Moreover, the Respondent threatened to increase the fee to USD 30,000 if the Complainant refused to comply with the demand promptly and later on disabled the Complainant’s website located at the disputed domain name. This action is clear evidence of bad faith and resulted in a significant business disruption for the Complainant.
The Respondent did not reply to the Complainant’s contentions.
C. Complainant’s Additional Submission
- There are two types of submissions that may show common law rights in a service mark, one that demonstrates a complainant’s efforts to establish those rights and another that shows the effects of those efforts.
- For ten years the Complainant has used its website at the disputed domain name to publicize its activities. It has also authored for print publications numerous articles that include its service mark.
- The Respondent’s own current website refers to the Complainant as “THE BELL”. Moreover, many print and online articles authored by organizations in Colorado have mentioned the Complainant’s activities, while referring to it by the same service mark.
6. Discussion and Findings
In accordance with paragraphs 4(a)(i) – (iii) of the Policy, the Complainant shall prevail in these proceedings and gain transfer of the disputed domain name, <thebell.org>, provided the Complainant can prove that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel has no difficulty in determining that the disputed domain name, <thebell.org>, is identical to the service mark, THE BELL, claimed by the Complainant.
On the other hand, the Complainant has failed to furnish the Panel with evidence that the Complainant possesses, in any jurisdiction, a valid service mark registration for THE BELL mark. This failure, in and of itself, does not require the Panel to dismiss the Complainant’s assertion of rights in that mark, as the Policy is not restricted to the protection only of registered service marks. On the contrary, many previous panels operating under the Policy have deemed a complainant’s acquisition of common law rights sufficient to satisfy the requirement of trademark or service mark rights necessary under paragraph 4(a)(i) of the Policy. For example, see Pilgrim Films and Television Inc v. Brandon Bator, NAF Claim No. FA909831; and Jeffrey Archer v. Alberta Hotrods tda CELEBRITY 1000, WIPO Case No. D2006-0431.
To fall into this category, a complainant must demonstrate that its mark has achieved a “secondary meaning” associated solely with that complainant. A general consensus among prior UDRP panels has evolved as to the pertinent factors involved in sustaining a finding of common law rights. Thus, those panels have considered factors such as longevity of use, amount of sales, nature and extent of advertising, consumer surveys and media recognition. See, Mt. Vernon Mills, Inc. v. River City Holdings, LLC, NAF Claim No. FA1325209 (“Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”); Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052; Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083; as well as the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
In conducting such an evaluation, UDRP panels have also taken into consideration the distinctiveness of the mark in which a complainant claims rights. That is to say, the less distinctive (i.e., the more generic or descriptive) the claimed service mark, the more difficult to establish said common law rights. See One Creative Place, LLC v. Kevin Scott, WIPO Case No. D2006-0518; and Essential Travel Ltd v. essentialtravel.com and Underground Digital Media Ltd., WIPO Case No. D2004-0205 (“To acquire common law trademark rights, both under English law and under the case law which has developed under the Policy, a Complainant must establish evidence of acquired distinctiveness. The burden in this respect is particularly high where the mark asserted comprises words in common usage – namely, ESSENTIAL TRAVEL – as it does in this case.”). In this case, the Panel determines that though the Complainant’s claimed mark, THE BELL, is composed of two very common English language words, their generic nature is mitigated in this case by the fact that the Complainant does not use the mark in the common sense of those words, but to apply to non-profit lobbying services that are not suggestive of the literal meaning of “the bell” .
The Complainant has made an unchallenged contention as to the longevity of use of its mark, which, at approximately ten years, is certainly long enough in the Panel’s view to sustain common law service mark rights. As the Complainant is a non-profit organization, the Panel accepts that the Complainant is unable to present figures regarding sales or revenue generation. However, clearly the Complainant has maintained an online presence at the disputed domain name for the same above-referenced ten-year duration, which would in the Panel’s opinion account for more than the requisite amount of promotion and advertising of its mark in commerce for the provision of its not-for-profit services. Moreover, the Complainant has provided the Panel with concrete evidence (Annexes 21-25 to the Complaint) of significant public and media recognition of its mark within the state of Colorado, United States of America. As a result, the Panel concludes that the Complainant has obtained common law service mark rights in the THE BELL within at least the borders of Colorado – where the Respondent resides – which is sufficient for the purposes of paragraph 4(a)(i) of the Policy. See, Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786 (“Even if secondary meaning had been acquired only in a limited geographical area, Complainant would nevertheless have established sufficient common law trademark rights within the meaning of Paragraph 1(a)(i) of the Policy.”).
Accordingly, the Panel finds that the Complainant has succeeded in proving that the disputed domain name is identical or confusingly similar to a service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
As the Complainant has both furnished the Panel with sufficient evidence of rights in a service mark to which the disputed domain name is confusingly similar and asserted that the Respondent is not connected or affiliated with the Complainant in any way, the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in that name. Thus, the Respondent is now required to step forward and rebut that prima facie case. See, Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. FA741828 (“Before shifting the burden to Respondent, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy [paragraph] 4(a)(ii).”); and Clerical Medical Investment Group Limited v. Clericalmedical.com (Clerical & Medical Services Agency), WIPO Case No. D2000-1228.
As the Respondent has not entered a filing in this case, the Panel must look elsewhere in the record to determine whether there is an effective rebuttal to the Complainant’s prima facie case. In doing so, the Panel will consult paragraph 4(c)(i)-(iii) of the Policy, which sets forth three avenues through which the Respondent could substantiate its rights or legitimate interests in the disputed domain name.
With respect to paragraph 4(c)(i) of the Policy, which requires that the Respondent show use of, or demonstrable preparation to use, the disputed domain name “in connection with a bona fide offering of goods or services”, the Panel accepts the Complainant’s contention – noting also that the Respondent proffered no contradictory assertion – that it, and not Respondent, has heretofore engaged in all legitimate use of the name in a legitimate manner. Thus, since the Respondent has not used, and presented no evidence that it is prepared to make bona fide use of the disputed domain name, the Panel concludes that paragraph 4(c)(i) of the Policy cannot be invoked in Respondent’s favor. Likewise, the Panel determines that paragraph 4(c)(ii) of the Policy does not assist in Respondent’s rebuttal because there is no reason whatsoever to believe that it, Ken Hess, or his companies, Graphics, Inc. and Powerhouse Brands, were or are commonly known as the disputed domain name, <thebell.org>. Finally, because the Panel, as previously noted, has accepted the Complainant’s contention of the Respondent’s nonuse of the disputed domain name, the Panel is compelled to rule that the Respondent is not employing that name for “noncommercial or fair use” per paragraph 4(c)(iii) of the Policy. Ergo, the Panel recognizes the Complainant’s prima facie case as prevailing.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Respondent registered the disputed domain name, which duplicated the Complainant’s THE BELL service mark, with the Complainant’s permission. In some previous UDRP cases, panels have determined that such registration did not constitute bad faith registration of a disputed domain name. See ITMetrixx, Inc. v. Kuzma Productions, WIPO Case No. D2001-0668; and The Thread.com, LLC v. Jeffrey S. Poploff, WIPO Case No. D2000-1470. However, as noted by the learned panelist in Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094, those previous cases involved circumstances where the respondent was expected by the Complainant to register the respective domain name under that respondent’s name.
In this case, the Complainant contends – and has submitted evidence (Annex 5 to the Complaint) to support its contention – that the agreement between it and the Respondent to acquire the disputed domain name on the Complainant’s behalf gave no right to the Respondent to register that name under the Respondent’s name. In such a circumstance, the Panel finds that the Respondent, while acting as the Complainant’s agent in a fiduciary capacity, registered the disputed domain name in bad faith. See Champions Innovations, Ltd., supra; and Robilant & Associati Srl v. POWERLAB snc (ROBILANT6-DOM), WIPO Case No. D2006-0991.
As to usage of the disputed domain name, the Complainant admits that it, and not the Respondent, has used the name exclusively for the ten years since the domain name was registered. Moreover, the Respondent’s demand for remuneration in exchange for a transfer of said registration that is far beyond Respondent’s already reimbursed out-of-pocket registration costs has occurred ten years after that registration. As a result, the Panel believes that application of the circumstance listed in paragraph 4(b)(i) of the Policy, which revolves around a respondent’s intent at the time of registration to extort such an exorbitant price, is inappropriate in this case.
However, the Panel is not limited to the circumstances enumerated in paragraph 4(b) of the Policy in deciding that bad faith use of the disputed domain name has occurred. In this case, the Panel finds that the Respondent’s failure to respond to the Complaint and its charge of the Respondent’s bad faith registration in its own name of the disputed domain name is indicative of bad faith. See Blemain Group v. Mr. Stuart Frost, WIPO Case No. D2006-0871. That circumstance in conjunction with the Respondent’s demand for excessive transfer compensation and it’s disabling of the Complainant’s website located at the disputed domain name, are indicative of the sort of malice cited by the panelist in Champions Innovations, Ltd., supra, in supporting a finding of bad faith domain name use. For these reasons, the Panel concludes that the Respondent is indeed using the disputed domain name in bad faith.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <thebell.org>, be transferred to the Complainant
Dennis A. Foster
Dated: October 18, 2010