WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Simple Truths, LLC v. Edward Slack, Simple Truth Publishing
Case No. D2010-1349
1. The Parties
Complainant is Simple Truths, LLC of Naperville, Illinois, United States of America, of represented by Vanek Vickers & Masini P.C., United States of America.
Respondent is Edward Slack, Simple Truth Publishing of Nashville, Tennessee, United States of America.
2. The Domain Names and Registrars
The disputed domain name <simpletruthpublishing.com> is registered with Domainclub.com, LLC.
The disputed domain name <simpletruthpublishing.net> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2010. On August 10, 2010, the Center transmitted by email to Domainclub.com, LLC and GoDaddy.com, Inc a request for registrar verification in connection with the disputed domain names. On August 10, and August 12, 2010, Domainclub.com, LLC and GoDaddy.com, Inc. respectively transmitted by email to the Center their verification responses confirming that Respondent is listed as the registrant of both domain names and providing the contact details. Complainant filed an amendment to the Complaint on August 18, 2010.
The Center verified that the Complaint together with the amendment to the 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 August 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 10, 2010. Respondent subsequently submitted an email response which was accepted by the Panelist pursuant to the Rules, paragraph 10 and is discussed and reproduced below.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on September 13, 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.
4. Factual Background
Complainant registered the trademark “Simple Truths” with the United States Patent and Trademark Office (“USPTO”) (Registration No. 2973764) on July 19, 2005. Complainant also holds the website “www.simpletruths.com” on which it sells inspirational items for the workplace and home, including photographs with inspirational phrases and inspirational books and films.
Respondent, Edward Slack/Simple Truth Publishing, registered the domain name <simpletruthpublishing.com> with Domainclub.com, LLC on May 15, 2010 and <simpletruthpublishing.net> with GoDaddy.com, Inc. on July 4, 2009. <simpletruthpublishing.com> is not operational and Respondent sells his book Two Legged Snakes: Understanding and Handling Manipulative People on <simpletruthpublishing.net>
Other pertinent facts are recited in the description of the Parties’ contentions below.
5. Parties’ Contentions
Complainant has been the owner of the trademark “Simple Truths” since July 19, 2005. Almost 4 years following Complainant’s trademark registration, Respondent created its website <simpletruthpublishing.net>. Complainant first took action to protect its trademark with a cease and desist letter to Respondent on October 27, 2009, which, according to a mark on the envelope and Complainant’s representation, was refused, and then by email on November 9, 2009. Respondent, in an email that same day, denied that it was infringing on Complainant’s rights. Complainant then submitted a letter, accepted by the USPTO on December 3, 2009, protesting the registration by Respondent of the trademark “Simple Truth Publishing”. Despite this protest being upheld and Respondent’s trademark registration being denied by the USPTO on December 18, 2009, Respondent continued using the domain name <simpletruthpublishing.net> and on May 15, 2010 registered <simpletruthpublishing.com>, though this site is not actively used or maintained.
Complainant, in its amended Complaint, requests the transfer of the disputed domain names.
Respondent did not timely reply to Complainant’s contentions but the Panel, in application of his discretion under the Rules, paragraph 10, accepts Respondent’s subsequent email response to the Center of September 10, 2010 which reads as follows:
I meant no disrespect to the court by not answering this action earlier, it’s just seems to me the complainant is taking a very heavy handed approach to a matter that could be easily resolved.
I certainly did not enter into using the name Simple Truth Publishing in bad faith. I started the corporation with the legal service agency LegalZoom.com. They did a search and said there were no problems with my operating under the name Simple Truth Publishing and the Tennessee corporation was created. Similarly I had LegalZoom.com do the paperwork for the trademark and again they saw no problems, so we applied for the trademark.
During the trademark approval process the complainant filed a complaint, one which I still find ridiculous given the huge disparity between what I sell and what they sell. I’m sure their customers run from any website with my products on it as they are not the cutesy / corny stuff Simple Truths LLC sells. To tell you the truth, and with all respect to the courts, I have a hard time taking these people seriously and wonder if, perhaps, a group of fee hungry lawyers is bilking an innocent / naïve client by building up the threat of ‘unfair competition’ in their minds and creating mounds of unnecessary litigation. I’m not asserting that but I wonder.
The solution: Buy the names from me at roughly the cost I paid to get them up and rolling plus the cost of switching to a new name. I clearly didn’t enter into this trying to impinge on Simple Truths LLC and for a lot less than I’m sure has already been spent on legal fees, we can resolve this matter.
Very Truly Yours,
Ed Slack Phd.”
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove the following:
(i) Respondent’s domain names are 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 the domain names; and
(iii) Respondent’s domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
Complainant is the owner of the trademark “Simple Truths” (Registration No. 2973764) and it sells books and other products on its website of the same name <simpletruths.com>. The subtraction of the “s” from the name “Simple Truths” by Respondent does not substantially diminish the similarity between the domain name of Respondent and the trademark of Complainant. The addition of “publishing” to the end of the domain name arguably adds to the confusion as Complainant is, at least in part, in the same industry. The Panel here finds both <simpletruthpublishing.net> and <simpletruthpublishing.com> to be confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
Complainant relies solely on the USPTO decision and the related actions to form the basis for its argument that Respondent has no rights or legitimate interests in the disputed domain names. While it is true that the USPTO rejected Respondent’s application for the trademark “Simple Truth Publishing”, that decision does not, as Complainant summarily alleges, conclusively demonstrate that Respondent has no rights or legitimate interest in the disputed domain names. The Panel is empowered to rule on the existence or absence of rights under the Policy and not trademark infringement and other issues which are issues to be addressed by appropriate competent courts, should the parties elect to do so. Paragraph 4(c) of the Policy sets forth three non-exclusive criteria evidencing Respondent’s rights and legitimate interests in a domain name. These criteria are as follows:
(i) Before any notice to you [Respondent] of the dispute, your use of, or 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; or
(ii) You [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) You [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Beyond the burden of Complainant to present a prima facie case establishing that Respondent has no rights or legitimate interests in the domain names, the Panel must examine whether, on the evidence and allegations before him, Complainant has effectively refuted whether rights of Respondent may be present under these, or other, criteria.
Due to the generic nature of the trademark “Simple Truths”, it is necessary for Complainant, in support of its prima facie case, to establish that this trademark has taken on “a secondary meaning, denoting the goods or services of a particular trader” (Porto Chico Stores, Inc. v. Otavio Zambon, WIPO Case No. D2000-1270). While Complainant’s products can be described by its trademark “Simple Truths”, it has not even attempted to prove a secondary meaning specific to it. The broad and generic nature of this trademarked term is evident by the disparity between the offerings on Complainant’s and Respondent’s respective websites, though both can aptly be described as pertaining to “Simple Truths”. Nor has Complainant made any attempt to establish that its trademark is world famous and that Respondent is infringing on its rights by the use of its trademark language in the disputed domain names (see Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413).
Respondent has, in its late letter to the Center, put forth a defense under paragraphs 4(c)(i) and (ii) of the Policy in respect to its <simpletruthpublishing.net> domain name and to a lesser extent its <simpletruthpublishing.com>, domain name. Respondent states:
“I certainly did not enter into using the name Simple Truth Publishing in bad faith. I started the corporation with the legal service agency LegalZoom.com. They did a search and said there were no problems with my operating under the name Simple Truth Publishing and the Tennessee Corporation was created. Similarly I had LegalZoom.com do the paperwork for the trademark and again they saw no problems, so we applied for the trademark.”
During this time, Respondent also registered <simpletruthpublishing.net> in order to offer its book for sale: a bona fide offering of goods by a corporation of the same name. As in Smart Design LLC v. Carolyn Hughes WIPO Case No. D2000-0993 the “[p]anel sees no reason to doubt that the Respondent registered the Domain Name in good faith.” All of the above actions were taken before the October 27, 2009 cease and desist letter sent by Complainant to Respondent, the first notification of the dispute. Respondent has met the criteria set forth by paragraph 4(c)(i) of the Policy.
While <simpletruthpublishing.com> was established after notification of the dispute, and indeed after the rejection by the USPTO of Respondent’s trademark application, Respondent’s rights to the name “Simple Truth Publishing”, and the related domain names, is no different for the two. Respondent did not, as Complainant alleges “know that he [had] no rights or legitimate interests in his domain names”, he just knew that he could not register a trademark with his corporate name.
Thus paragraph 4(c)(i) can be applied to the “.com” domain name here in dispute as it clearly states that a bona fide offering of goods or services under “a name corresponding to the domain name” before notification of the conflict establishes rights and legitimate interest. Both disputed domain names recite the full name of Respondent’s corporation, established for the bona fide offering of goods (i.e. his book) and one of these virtually identical domain names was registered before the notice of a dispute with Complainant; the notice of dispute does not affect the rights and legitimate interests, only the bad or good faith of the registration and use (see Luvilon Industries NV v. Top Serve Tennis Pty Ltd., WIPO Case No. DAU2005-0004, “[t]he close timing weighs against Respondent, but only if it is accepted that Respondent had no rights in the names.”).
Paragraph 4(c)(ii) of the Policy can also be applied to both the “.com” and “.net” domain names here in dispute. Respondent operates under the corporate name “Simple Truth Publishing”, which is the full descriptive part of both domain names, although Respondent has not acquired trademark or service mark rights in connection with the name. This further supports Respondent’s rights and legitimate interest in the domain names.
In this proceeding, the burden is on Complainant to prove that Respondent has no rights or legitimate interests in the disputed domain names; it has fallen short of meeting this burden and Respondent has, although informally, met multiple criteria set forth for the establishment of its rights and interests under the Policy, and this notwithstanding Respondent’s absence of trademark rights in its corporate and disputed domain names.
C. Registered and Used in Bad Faith
As Complainant has failed to meet its burden of demonstrating Respondent’s lack of any rights in the disputed domain names, the Panel does not elaborate on the issues of bad faith registration and use. The Panel does, however, note that the registration of <simpletruthpublishing.com> after the notice of Complainant’s rights and trademark might well be constitutive of bad faith, but the registration and use in bad faith is dependent on the prior determination of the absence of any right of Respondent to the name. Had Complainant met its burden of demonstrating the absence of Respondent’s rights in <simpletruthpublishing.com>, the chronology relating to the registration of the disputed domain name could have indicated bad faith (see Luvilon Industries NV v. Top Serve Tennis Pty Ltd., WIPO Case No. DAU2005-0004), but this issue need not be determined here having regard to the Panel’s finding above.
For all the foregoing reasons, the transfer of <simpletruthpublishing.com> and <simpletruthpublishing.net> to Complainant is denied.
Dated: September 20, 2010