WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fairway Promotions, Inc. v. Rika Bronsther/Rika Designs, Ltd.
Case No. D2001-1460
1. The Parties
Complainant is Fairway Promotions, Inc., an Illinois corporation having its principal place of business in Chicago, Illinois, USA.
Respondent is Rika Bronsther, formerly known as Rika Designs, Ltd. Rika Designs, Ltd. was apparently a New York corporation dissolved by proclamation on June 27, 2001. Respondent resides in Hempstead, New York, USA.
2. The Domain Name(s) and Registrar(s)
This dispute concerns the domain names <fairwaypromotion.com>; <fairwaycurve.com> and <thefairwaycurve.com>.
The registrar of <fairwaypromotion.com> is Go Daddy Software.
The registrar of <fairwaycurve.com> and <thefairwaycurve.com> is Dotster, Inc.
3. Procedural History
The Complainant submitted a Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("UDRP Policy") implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999, under the Rules for the UDRP Policy implemented by ICANN on the same date ("UDRP Rules"). The Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center"), by e-mail on December 14, 2001, and in hard copy on December 18, 2001.
On January 7, 2002, the Center performed its check for compliance with formal requirements.
On December 27, 2001, the Center received verification that the registrant of the domain name <fairwaypromotion.com> is Rika Bronsther, but that the registrar (originally named in the Complaint as Domainbury) is actually Go Daddy Software. Domainbury is a reseller for Go Daddy Software. Consequently, on January 8, 2002, the Center notified the Complainant of this deficiency in the Complaint, and requested that Complainant amend the Complaint accordingly. That same day, January 8, 2002, Complainant filed an amended Complaint with the Center to add the correct Registrar information for <fairwaypromotion.com>. Copies were sent to the Center by e-mail and express courier, and to the Respondent by certified mail.
On January 3, 2002, the Center received verification from Dotster, Inc. that the registrant of the domain names <fairwaycurve.com> and <thefairwaycurve.com> is Rika Designs, Ltd.
The Center did not receive the Complaint as an attachment to Complainantís e-mail of January 8, 2002. The Center requested another copy from Complainantís representative, who sent it on January 9, 2002. The hard copy of the amended Complaint was received by the Center on January 14, 2002.
On January 15, 2002, the Center issued a Notification of Complaint and Commencement of Administrative Proceeding, forwarding the Complaint to the Respondent by courier and email. The Notification set the deadline for response to the Complaint as February 4, 2002.
On February 5, 2002, Respondentís representative contacted the Center to request an extension of time to respond to the Complaint, asserting that Respondent had some difficulties receiving copies of the Complaint and annexes; that Respondent is disabled and had not been able to act quickly on the Complaint; and that it took Respondent some time to find an attorney. Complainant objected to the requested extension by e-mail on February 5, 2002, asserting that Respondent was already represented by her sister, an attorney; that Respondentís disability should have no bearing on these proceedings unless Respondent can show that the disabilities are the cause of the delay; and that the task of finding an attorney is not a valid reason for granting an extension.
That same day, February 5, 2002, the Center granted Respondent until February 7, 2002 to file a Response.
On February 7, 2002, Respondent filed an electronic copy of its Response. The Center received a hardcopy of the Response on February 13, 2002. This Panel provided its Declaration of Impartiality and Independence to the Center on February 19, 2002. The Center issued its Notification of Appointment of Administrative Panel and Projected Decision Date, and transmitted the case file to this Panel for review, on February 20, 2002. The Center scheduled the date for issuance of this Panelís decision as March 6, 2002.
4. Factual Background
Complainant is an Illinois corporation.
Respondent and its company are graphic and website designers, who were hired by Complainant to design Complainantís online magazine "The Fairway Curve." In the course of doing so, Respondent registered the domain names at issue.
5. Partiesí Contentions
Complainant asserts that it uses FAIRWAY PROMOTIONS as a service mark to identify its golf services, including golf related promotions, advertising, merchandise, premiums, travel, outings, instruction, website development, and e-marketing, to corporations, charities, junior golf programs and individuals. Complainant asserts it operates a web site with a domain name <fairwaypromotions.com>, created January 2001.
Complainant asserts it has prepared to publish a web-based golf-related magazine named "The Fairway Curve." In preparation, the Complainant asserts it designed and developed a web site, created copyrighted content for the site, sought and secured advertisers and endorsers for the site and used the site to attract investors and potential investors. Complainant asserts it uses "The Fairway Curve" in connection with its magazine and other services, which it markets and sells to corporations, charities, junior golf programs and individuals.
Complainant asserts that Respondent was hired April 30, 2001, as an outside contractor to design a web site for Complainantís THE FAIRWAY CURVE Magazine. As part of her duties, the Respondent registered the domain names <fairwaycurve.com> and <thefairwaycurve.com> for use with the web site for Fairway Promotions, Inc.ís THE FAIRWAY CURVE Magazine. Complainant asserts that Respondent had no rights or interest in THE FAIRWAY CURVE trademark; but Respondent nevertheless registered the domain names <fairwaycurve.com> and <thefairwaycurve.com>, listing herself rather than Fairway Promotions, Inc. as the Registrant.
Complainant asserts that when Respondent registered the domain names, she was acting as an agent of Complainant and must be held to have registered the domain name on Complainantís behalf.
Complainant asserts that it became dissatisfied with Respondent's services, and contracted with another web design company in July 2001. Since then, this third company has designed the Complainantís web site.
Complainant asserts that Respondent has repeatedly demanded employment with Complainant, renewal of a web design contract, stock in the company or a cash payment, in excess of out-of-pocket expenses for the domain names. On Thursday November 29, 2001, Complainant sent a letter to Respondent at the address shown on the WhoIs database by registered mail, return receipt requested. In the letter, Complainant notified Respondent that the Complainant sought "the proper legal designation as the owner of the domain names <fairwaycurve.com>, <thefairwaycurve.com> and <fairwaypromotion.com>."
Complainant asserts that on or about Thursday, December 6, 2001, Respondent caused the domain names <fairwaycurve.com> and <thefairwaycurve.com> to be directed to a new server, and essentially locked Complainant out from using them. Instead of "The Fairway Curve" magazine, Complainant asserts that visitors found a greeting from Respondent welcoming them "to the NEW Fairway Curve."
Complainant asserts that Respondent has never been commonly known by the domain names; and is not making a legitimate noncommercial or fair use of the domain names.
Complainant asserts that the domain names should be considered as having been registered and used in bad faith because they were registered primarily for the purpose of selling or transferring the domain names to the Complainant for valuable consideration in excess of the domain name registrantís out-of-pocket costs directly related to the domain name. Complainant asserts that Respondent demanded that Complainant retain her web design company in return for using the domain name; that Respondent demanded that the Complainant hire her to oversee the web designers hired by Complainant; that Respondent demanded $10,000.00 in return for transferring the domain names to the Complainant; that subsequent to the dispute regarding the domain names <thefairwaycurve.com> and <fairwaycurve.com> came to light, Respondent registered <fairwaypromotion.com>, knowing it to be virtually identical or confusingly similar to Complainantís service mark, thereby establishing a pattern of conduct that indicates that Respondent registered <fairwaypromotion.com> in order to prevent the Complainant from reflecting the mark in a corresponding domain name.
Finally, Complainant asserts that Respondent is acting in bad faith because Respondent has not developed any websites connected to the domain names; but has instead held them without active use.
Respondent asserts that Complainantís allegations of trademark rights are unsupported by any proof, evidence or substantiation, and include no proof of any registration, nor any information with respect to the effective date of any alleged trademark rights.
Respondent asserts that Complainant has also failed to prove that Respondent did not have any legitimate interest in the domain names, and instead only makes some unsupported statements that do not relate to the issue of the Respondentís "legitimate interest in the domain name" for purposes of the UDRP.
Respondent asserts that it does have legitimate rights in the domain name, on the basis that it engaged in preparing to use the domain name in connection with a bona fide offering of goods and services, and that Respondent has been commonly known by the domain name.
Respondent asserts that Complainant and some of its associates entered into an agreement with Respondent whereby Respondent would be a part-owner of Complainantís business. Respondent asserts she registered the domain names as a part-owner of the business. Furthermore, Respondent asserts she was told by one of Complainantís associates to register the domain names in her name in order to protect herself against non-payment and to protect her interests.
Respondent asserts that her efforts to obtain payment and ownership shares from Complainant do not evidence bad faith because Respondent has merely been attempting to resolve all the disputes between the parties, not merely to sell or transfer the domain name.
Respondent asserts there is an absence of bad faith in this case because Respondent has not registered or acquired the domain names in question for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant; because Respondent has not registered the domain names in question in order to prevent the owner of any trademark or service mark from reflecting the mark in a corresponding domain name, nor engaged in a pattern of such conduct; because Respondent has not registered the domain names for the purpose of disrupting the business of the Complainant or any competitor; because Respondent has not attempted to attract, for commercial gain, Internet users to her web site by creating a likelihood of confusion with the Complainant's alleged mark as to the source; and because Respondent has had no intent for commercial gain to misleadingly divert consumers or to tarnish any alleged trademark/service mark. Respondent supports these allegations with her own declaration, and those of two business associates.
6. Discussion and Findings
A. Applicable Policy Provisions
The UDRP Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
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.
UDRP Policy, Paragraph 4(a).
It is not sufficient to prevail that a Complainant prove only registration in bad faith; rather, the Complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D99-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.
However, the UDRP Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
i) Circumstances indicating that [the Registrant has] registered or 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 documented out-of-pocket costs directly related to the domain name; or
ii) [the Registrant has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Registrant has] engaged in a pattern of such conduct; or
iii) [the Registrant has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, [the Registrant has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location.
UDRP Policy, Paragraph 4(b). These circumstances are non-inclusive, and the Panel may consider other circumstances as constituting registration and use of a domain name in bad faith. (Id.)
The Respondent may demonstrate rights or legitimate interests to the domain name by any of the following, without limitation:
i) Before any notice to you 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, 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 are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
UDRP Policy, Paragraph 4(c).
B. Opinion of the Panel
The Panel concludes that the Complainant has not met its burden of proving the three elements of the Policy required to entitle it to relief. Specifically, Complainant has not presented any evidence that it has used or registered FAIRWAY PROMOTIONS, FAIRWAY CURVE, or THE FAIRWAYCURVE. Complainant has attached no registrations or applications for these marks, has included no evidence of use of the marks, nor directed this Panel to a web site where the marks may be in use.
Complainant asserts, without corroboration, that it began preparations to use THE FAIRWAYCURVE in connection with an Internet magazine. Preparations to use a mark may create trade identity rights akin to trademark rights, thus creating priority over subsequent adopters of the same or confusingly similar marks. Coach House Restaurant Inc. v. Coach and Six restaurants Inc., 934 F.2d 1551, 19 USPQ2d 1401 (11th Cir. 1991); see also New West Corp. v. NYM Co. of California, Inc., 595 F.2d 1194, 202 USPQ 643 (CA9 1979). However, Complainant has provided no evidence of what efforts were made, when they were made, by whom, and whether they were directed toward any members of the public.
Unless it proves it has trademark rights, a Complainant is not entitled to benefit of a mandatory administrative proceeding under the UDRP, UDRP Policy, Paragraph 4(a)(i). Since the record is devoid of any evidence of registration, application or use of the trademarks asserted, the Complainantís complaint must fail.
Even if Complainant had asserted valid, enforceable trademark rights, the partiesí assertions make clear that they have a legitimate dispute. It may well be that Respondent was acting as the agent of Complainant when she registered the domain names, and therefore should disgorge the domain names. Conversely, it may well be that Respondent is legitimately owed an ownership share in Complainantís company and remuneration for her efforts on Complainantís behalf. These assertions should be proved and decided in the context of a trademark infringement or contract dispute, and are beyond the power of this Panel to decide.
For the reasons stated hereinabove, and pursuant to Paragraph 4(i) of the UDRP Policy, and Paragraph 15 of the UDRP Rules, this Panel denies the remedy requested by Complainant.
Jordan S. Weinstein
Dated: March 6, 2002