WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
usDocuments, Inc. v. Flexible Designs, Inc. / Craig Dinan
Case No. D2003-0583
1. The Parties
The Complainant is usDocuments, Inc., Lafayette, California, United States of America.
The Respondent is Flexible Designs, Inc. / Craig Dinan, General Manager, Denver, Colorado, United States of America, (hereinafter referred to jointly and severally as "Respondent").
2. The Domain Name and Registrar
The disputed domain name <usdocuments.com> is registered with TierraNet, Inc. d/b/a DomainDiscover (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") electronically on July 24, 2003, and in hardcopy on July 25, 2003. On July 25, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On July 25, 2003, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 the Respondent of the Complaint, and the proceedings commenced on August 4, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2003. The Response was filed with the Center on August 23, 2003.
The Center appointed M. Scott Donahey as the Sole Panelist in this matter on September 3, 2003. 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 registrant of the domain names <usdocuments.org> and <usdocuments.net>. These domain names were registered in March 2002. Complainant uses the domain names at issue to resolve to a website at which document preparation services are offered by Complainant.
Complainant incorporated its business, "usDocuments, Inc.," on April 30, 2003.
On May 13, 2003, Complainant applied for a trademark or service mark for the mark USDOCUMENTS with the United States Patent and Trademark Office ("USPTO"). Complaint, Annex 4. The application states that the mark is to be used in connection with document preparation, editing and graphic design for businesses and consumers. Response, Annex 3. The application claims a first use and a first use in commerce of July 16, 2003. Id. In the complaint, Complainant alleges that the name had begun to be used "for the purpose of advertising and has been online using the name usdocuments beginning in January 2003." The documentary support offered by Complainant consists of printout s of web pages showing a copyright date of 2003 and printout dates of July 21 and 24, 2003. Complaint, Annex 5.
Respondent registered the domain name at issue on May 10, 2000. Complaint, Annex 2. BuyDomains.com, an alternative registrar selected by Respondent, acknowledged Respondent’s renewal of the registration on May 9, 2003. Response Annex 2. On May 8, 2003, Complainant had placed an order with another registrar, GoDaddy.com, to purchase the domain name once it had expired. Complaint, Annex 2.
On June 25, 2003, Complainant contacted Respondent and offered to purchase the domain name at issue for an unspecified price. Complaint, Annex 1. Respondent indicated that it intended to use the domain name at issue in relation to tax forms for banking institutions, but that it would be willing to sell the domain name at issue for US$22,000. Id. Respondent produced a declaration and documents supporting its plans to use the domain name at issue for the purposes mentioned above. Response, Annexes 6 and 7. It is undisputed that Respondent has made no use of the domain name at issue.
On July 3, 2003, Respondent contacted Complainant and offered to do a monthly lease for an unspecified amount. Id. Complainant thereafter offered to purchase the domain name at issue for US$500, which was rejected by Respondent. Complaint, Annex 1.
5. Parties’ Contentions
Complainant contends that the domain name at issue is identical to a service mark in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
Respondent contends that Complainant’s application for a mark concerns a term that is either generic or merely descriptive, that the application shows a first use more than three years after Respondent’s registration of the domain name at issue, that Respondent has rights or legitimate interests in respect of the domain name at issue in that Respondent has planned to use it in connection with Respondent’s business, and that Respondent registered the domain name at issue in good faith.
Respondent requests that the Panel make a finding of bad faith reverse domain name hijacking.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) 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; and
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant does not possess a registered trademark in USDOCUMENTS, but Complainant has filed an application for such a mark. The Panel does not believe that an application for a mark and some use of that mark in commerce, however brief, or the mere intent to use, are sufficient to give the Complainant "rights" in the trademark claimed although some decisions have so held. See, e.g., Phone-N-Phone Services (Bermuda) Ltd. v. Shlomi (Salomon) Levi, WIPO Case No. D2000-0040 (effectively finding the filing of an application to register a mark plus an intent to use is sufficient to give rights in the mark).
Complainant’s trademark application asserts usage of the mark only since July 16, 2003. The mark claimed is either generic or merely descriptive. Complainant has wholly failed to offer any proof that the domain name at issue has acquired secondary meaning.
"The general rule regarding distinctiveness is that an identifying mark is distinctive and capable of being protected if it either is inherently distinctive or has acquired distinctiveness through secondary meaning. Lanham TradeMark Act, § 2(e, f), as amended, 15 U.S.C.A. § 1052(e, f). Trademarks may be classified as (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful; latter three categories of marks, are considered inherently distinctive. Lanham TradeMark Act, §§ 2, 45, as amended, 15 U.S.C.A. §§ 1052, 1127. Secondary meaning is used generally to indicate that a mark or dress ‘has come through use to be uniquely associated with a specific source.’ Restatement (Third) of Unfair Competition § 13, Comment e (Tent.Draft No. 2, March 23, 1990). ‘To establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself.’ Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851, n. 11, 102 S.Ct. 2182, 2187, n. 11, 72 L.Ed.2d 606 (1982)."
2E Corporation v. Imagisys, Inc., eResolution Case No.AF-162.
The Panel finds that the Complainant has failed to show rights in the trademark asserted, as the Complainant has failed to show that its usage of the descriptive mark has been sufficient to establish the necessary secondary meaning. However, as the Respondent has requested a finding of reverse domain name hijacking, this cannot end our analysis.
B. Rights or Legitimate Interests
Complainant has asserted that Respondent has no rights or legitimate interests in respect of the domain name at issue in that Respondent has failed to make any use of the domain name in the more than three years since it was first registered by Respondent. Respondent professes an intent to use the domain name, and puts forward a "business plan" documenting the intended use.
It is undisputed that Respondent, despite his proposed plans, has yet to use the domain name at issue, despite the fact that Respondent has held the registration for more than three years. Many decisions have found that mere registration without use does not confer rights of legitimate interests. See, e.g., Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044.
However, some cases have found that where the domain name at issue consists of a generic or descriptive term, and the use of the generic or descriptive term predated the application for trademark, the domain name registrant has rights or legitimate interests in the name. Coming Attractions, Ltd. v. Comingattractions.com, NAF Case No. FA94341.
The Panel finds it is unnecessary to decide this issue for purposes of this case, since, as set out above, the Panel finds that Complainant has failed to show rights or interests in the asserted trademark. Moreover, as set out below, the Panel finds that Respondent registered the domain name at issue in good faith.
C. Registered and Used in Bad Faith
It is clear that Respondent registered the domain name at issue in good faith. Respondent’s registration preceded Complainant’s trademark application by some three years. Respondent’s registration preceded Complainant’s registration of similar domain names by some two years. Respondent’s registration of the domain name at issue preceded the incorporation of Complainant’s business by almost three years. Most important, Respondent’s registration of the domain name at issue preceded Complainant’s first use of the alleged trademark by more than three years. Such prior registration is evidence of good faith. EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.
D. Bad Faith Reverse Domain Name Hijacking
Complainant was less than candid in failing to disclose to the Panel that it had claimed a first use of the mark in commerce more than three years after Respondent had registered the domain name at issue. Its assertion that it had actually used the mark seven months earlier was not supported by its documentary submissions. Complainant held the
registration of two other domain names it could use in its business. Its attempt to monopolize the generic or descriptive term "usdocuments" through the use of a UDRP proceeding constitutes bad faith reverse domain name hijacking. Qtrade Canada Inc. v. Bank of Hydro, eRes Case No. DeC/AF-169.
For all the foregoing reasons, the Complaint is denied. Pursuant to Rule 15(e), the Panel finds that Complainant was brought in bad faith and constitutes an abuse of the administrative proceeding.
M. Scott Donahey
Dated: September 17, 2003