WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Western Reserve Historical Society v. Domains By Proxy, LLC / Holly Witchey, Relevant Museums

Case No. D2017-0268

1. The Parties

The Complainant is The Western Reserve Historical Society of Cleveland, Ohio, United States of America, (“United States”) represented by Walker & Jocke, United States.

The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States / Holly Witchey, Relevant Museums of Cleveland Heights, Ohio, United States, represented by Law Offices of Brent L. English, United States.

2. The Domain Names and Registrar

The disputed domain names <clestartshere.org>, <clevelandstartshere.com>, and <clevelandstartshere.org> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2017. On February 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 14, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 17, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on February 21, 2017.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2017. The Response was filed with the Center on March 14, 2017.

The Center appointed William R. Towns as the sole panelist in this matter on March 29, 2017. 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

The Complainant, located in Cleveland, Ohio and founded in 1867, is a private historical society that concentrates on the history of Northeast Ohio. The Complainant has grown to be one of the larger private historical societies in the United States, and houses historic, educational and cultural exhibits in six locations in Northeast Ohio. The Complainant is the owner of a United States trademark registration for CLEVELAND STARTS HERE applied for on January 13, 2016, and registered by the United States Patent and Trademark Office (“USPTO”) on August 23, 2016, for use with museums, museum services, and other cultural, historical and educational purposes. The Complainant also filed with the USPTO on January 13, 2016, an application to register the trademark CLESTARTSHERE for use with museums, museum services, and other cultural, historical and educational purposes. The USPTO issued a notice of allowance respecting the Complainant’s application for the CLESTARTHERE mark on February 14, 2017. USPTO records submitted by the Complainant indicate that the Complainant has not yet used the CLESTARTSHERE mark in commerce.

The Respondent is a resident of Cleveland Heights, Ohio, and a former employee of the Complainant from February 2014 through October 2016. The Respondent registered the disputed domain names <clevelandstartshere.com> and <clevelandstartshere.org> on February 29, 2016, and the disputed domain name <clestartshere.org> on January 1, 2017. Initially, the disputed domain names resolved to parking pages provided by GoDaddy.com, which contained advertising links to third-party websites, and invited Internet visitors interested in buying the respective domain name to click on a link to “learn more.”

At some point, the Respondent by means of a letter provided by her attorney¹ offered to sell the disputed domain names to museum director Dennis Barrie for the sum of $10,000. Mr. Barrie’s company had been hired by the Complainant to design the permanent “Cleveland Starts Here” exhibit, scheduled to open in November 2017. The attorney’s letter stated in part as follows:

“I understand that your firm has been retained to assist in the design of the Wester[sic] Reserve Historical Society’s new capital campaign which is branded ‘Cleveland Starts Here’”. (emphasis in original).

“My client has directed me to contact you with an offer to sell the above referenced domain names. The price for all of these names is $10,000.”

The letter from the Respondent’s attorney further represented that the disputed domain names would be offered to other potential buyers should Mr. Barrie pass on the offer.

5. Parties’ Contentions

A. Complainant

The Complainant asserts registered and common law rights in the CLEVELAND STARTS HERE mark. The Complainant explains that the USPTO has issued a notice of allowance of the Complainant’s application for the CLESTARTSHERE mark, and also claims common law rights in the CLESTARTSHERE mark. The Complainant explains that “CLE” is widely recognized as an abbreviation for Cleveland, Ohio, and maintains that CLESTARTSHERE is a short form of CLEVELAND STARTS HERE.

The Complainant submits that the disputed domain names <clestartshere.org>, <clevelandstartshere.com>, and <clevelandstartshere.org> are identical or confusingly similar to the Complainant’s CLEVELAND STARTS HERE and CLESTARTSHERE marks. The Complainant submits that the incorporation of its marks in their entirety in the disputed domain names is sufficient to demonstrate the disputed domain names are identical or confusingly similar to the Complainant’s marks.

The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant notes that its applications for the CLEVELAND STARTS HERE and CLESTARTSHERE marks were filed with the USPTO before the Respondent registered the disputed domain names. The Complainant represents that the Respondent has not been authorized to use the Complainant’s marks. The Complainant submits there is no evidence that the Respondent has used or made demonstrable preparation to use the disputed domain names in connection with a bona fide offering of goods or services. The Complainant asserts that the use of the disputed domain names with parking pages does not constitute a bona fide use, and that the Respondent has not made any legitimate use of the disputed domain names Further, the Complainant maintains that the Respondent is not commonly known by the disputed domain names, and has no trademark registrations or applications combining the words “Cleveland” and either “starts” or “here”.

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent was aware of the Complainant’s rights in the CLEVELAND STARTS HERE and CLESTARTSHERE when registering the disputed domain names. The Complainant explains that the Respondent was still in the Complainant’s employ when the Complainant filed its applications to register the CLEVELAND STARTS HERE and CLESTARTSHERE, and that the Respondent would have been aware of the Complainant’s “Cleveland Starts Here” project, planned in association with the Complainant’s 150-year anniversary and related activities and celebrations, which also had been publicly announced. The Complainant asserts that the Respondent had constructive notice of the Complainant’s marks because the Complainant’s trademark applications were filed prior to the Respondent’s registration of the disputed domain names.

According to the Complainant, the Respondent registered the disputed domain names primarily for the purpose of disrupting the Complainant’s business, and to sell or transfer the disputed domain names to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket cost directly related to the registration of the disputed domain names. The Complainant refers to the letter sent by J. Duncan Shorey, the Respondent’s attorney, to Dennis Barrie, offering to sell the disputed domain names to Mr. Barrie for $10,000. The Complainant explains that Mr. S. Shorey’s ex-wife and the Respondent are both former employees of the Complainant. The Complainant reiterates that the Respondent would have been aware of the “Cleveland Starts Here” project since it was a priority initiative of the Complainant at a time when the Respondent was still employed by the Complainant.

The Complainant submits it is well established that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for an amount in excess of registration costs is evidence that the domain name was registered and is being used in bad faith. According to the Complainant, the Respondent’s registration of three domain names identical to the Complainant’s marks establishes a bad faith pattern of conduct that prevents the Complainant from reflecting its marks in corresponding domain names. Additionally, the Complainant argues that the Respondent’s use of a privacy protection service in the circumstances of this case constitutes bad faith.

B. Respondent

The Respondent does not take issue with the Complainant’s registration of the CLEVELAND STARTS HERE mark and application to register the CLESTARTSHERE mark, but maintains she was entirely unaware of the Complainant’s marks until the filing of the Complaint. The Respondent submits that she holds a doctorate in art history, has authored books and articles on Cleveland history, worked in museums as a curator and during the past two decades managed exhibition and technology projects. The Respondent asserts she is accustomed to registering domain names for such projects.

The Respondent acknowledges being employed by the Complainant for a 33-month period from February 2014 to October 2016. The Respondent further acknowledges being aware that the Complainant had been considering the “Cleveland Starts Here Project” for several years. According to the Respondent, she had suggested to the Complainant that it would be prudent to acquire domain names for the project but was informed that the Complainant had a policy never to acquire domain names. The Respondent represents that, having confirmed as of February 2016 that no one had registered the domain names <clevelandstartshere.com> or <clevelandstartshere.org>, she decided to acquire them. The Respondent explains that she acquired <clestartshere.com> about ten months later after receiving a notice from GoDaddy that <clestartshere.com> also was available.

According to the Respondent, she was never asked to transfer the disputed domain names to the Complainant. The Respondent asserts that she acquired the disputed domain names intending to use them to publish historical information about Cleveland, Ohio, that (the Respondent maintains) neither the Complainant nor its current staff had any intention or capacity to do. The Respondent further submits she acquired the disputed domain names to keep them out of the hands of unscrupulous people, and that it was not her intent to “adversely affect” the Complainant or confuse Internet searchers. The Respondent observes that she is a member of the Western Reserve Historical Society and has long valued that institution.

The Respondent acknowledges that “CLE” is a well-known abbreviation for the City of Cleveland, Ohio, as well as the Cleveland Hopkins International Airport. The Respondent asserts that there are innumerable domain names with versions of “CLE” in them that coexist without confusion in the marketplace.

The Respondent maintains she did not offer to sell the disputed domain names to the Complainant. The Respondent relates that she offered to sell the disputed domain names to Dennis Barrie & Associates, a firm that was helping the Complainant with the “Cleveland Starts Here” project. The Respondent maintains that she anticipated the disputed domain names could be of use to the Barrie firm, and that she did so on the advice of a lawyer.

The Respondent stated she would consent to transfer the disputed domain names to the Complainant at no cost if the Executive Committee of the Complainant’s Board of Trustees would agree to meet with her to discuss her concerns about the direction of the Western Reserve Historical Society and deteriorating staff morale.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See “Final Report of the First WIPO Internet Domain Name Process”, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests with respect to the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Cancellation or transfer of the disputed domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain names <clestartshere.org>, <clevelandstartshere.com>, and <clevelandstartshere.org> are identical or confusingly similar to the Complainant’s CLEVELAND STARTS HERE mark, in which the Complainant has established rights through registration and use.² In considering this issue, the first element of the Policy serves essentially as a standing requirement.³ The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.

In this case, the Complainant’s CLEVELAND STARTS HERE mark is clearly recognizable in the disputed domain names <clevelandstartshere.com> and <clevelandstartshere.org>. These disputed domain names are identical to the Complainant’s CLEVELAND STARTS HERE mark when the generic Top-Level Domains (“gTLDs”) “.com” and “.org” are disregarded. The Panel finds that the disputed domain name <clestartshere.org> is confusingly similar to the Complainant’s CLEVELAND STARTS HERE mark, as the term “CLE” is a widely used and well-known abbreviation for Cleveland, Ohio, and is recognizable as such in the disputed domain name <clestartshere.com>.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.⁴

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The Complainant avers that the Respondent has not been authorized to use the Complainant’s registered CLEVELAND STARTS HERE mark or the Complainant’s applied for CLESTARTSHERE mark. At the time the Complainant filed its application to register these marks the Respondent was an employee of the Complainant and had been aware for some time of the “Cleveland Starts Here” project. Notwithstanding, the Respondent registered multiple domain names, which are identical or confusingly similar to the Complainant’s CLEVELAND STARTS HERE mark, and thereafter offered to sell the disputed domain names to a third party for the sum of $10,000. The Respondent since has passively held the disputed domain names.

Pursuant to paragraph 4(c) of the Policy, the respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

The Respondent has brought forward no evidence of the Respondent’s use or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. The Respondent makes no claim to have been commonly known by the disputed domain names or to have acquired trademark or service mark rights in the disputed domain names. While the Respondent claims she acquired the disputed domain names intending to use them to publish historical information about Cleveland, Ohio, the Respondent makes no claim to have done so, and has come forward with no evidence to support such a claim.

The Respondent also has presented no evidence to have made a legitimate noncommercial or fair use of the disputed domain names. The Respondent’s assertion that she registered the disputed domain names to keep them out of the hands of “unscrupulous people” strains credulity considering (1) the Respondent’s awareness that the Complainant had been considering the “Cleveland Starts Here” project for several years; (2) the Respondent’s registration of the disputed domain names <clevelandstartshere.com> and <clevelandstartshere.org> within weeks of the Complainant’s filing applications to register the CLEVELAND STARTS HERE and CLESTARTSHERE; (3) the Respondent’s offer to sell the disputed domain names to Dennis Barrie (or Dennis Barrie & Associates) or any other interested buyers for $10,000; and (4) the acknowledgement in the letter the Respondent’s attorney sent to Mr. Barrie that the Complainant’s new capital campaign had been “branded ‘Cleveland Starts Here’”.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. The Panel considers it more likely than not that the Respondent was aware of the Complainant’s pending applications to register the marks CLEVELAND STARTS HERE and CLESTARTSHERE when registering the disputed domain names <clevelandstartshere.com> and <clevelandstartshere.org>. The Panel also considers it more likely than not that the Respondent was aware that the Complainant’s CLEVELAND STARTS HERE mark had been successfully registered when the Respondent subsequently decided to register the disputed domain name <clestartshere.com>.⁵

Based on the totality of facts and circumstances in the record, the Panel concludes that the Respondent registered the disputed domain names primarily for the purpose of selling the disputed domain names to the Complainant or any other potential buyers for an amount considerably in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names. In the attendant circumstances, the Panel also considers that the Respondent’s use of a privacy protection service would support a finding of bad faith. The Panel notes that the Respondent also took steps to conceal her identity when offering the disputed domain names for sale.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <clestartshere.org>, <clevelandstartshere.com>, and <clevelandstartshere.org> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: April 13, 2017

¹ The Respondent’s attorney is J. Duncan Shorey, the Chief Executive Officer and President of The Foundry Project, a consulting firm. The Respondent’s spouse is the Chief Financial Officer for The Foundry Project.

² The Complainant asserts the first use of the CLEVELAND STARTS HERE mark in commerce in September 2015, which the Respondent has not taken issue with.

³ See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.

⁴ While the Complainant’s application to register its CLESTARTSHERE mark has been allowed by the USTPO, the USPTO records submitted by the Complainant reflect that the mark has yet to be used in commerce, and thus the mark is not presently entitled to registration. While there appears to be no impediment to the eventual registration of CLESTARTSHERE by the USPTO once the Complainant has submitted an acceptable specimen of use, this has yet to occur.

⁵ As the record reflects without contradiction the Complainant’s use of the CLEVELAND STARTS HERE mark in commerce as early as September 2015, the Panel considers that the Complainant had acquired common law rights in the mark prior to the Respondent’s registration of the disputed domain names <clevelandstartshere.com> and <clevelandstartshere.org> on February 29, 2016. However, assuming arguendo that the Complainant’s CLEVELAND STARTS HERE mark had not yet acquired common law protection, the Respondent as a former employee was well aware that the Complainant had been considering the “Cleveland Starts Here" project for several years. The Panel concludes that the Respondent knew of the Complainant’s prospective trademark rights when registering the disputed domain names, and that the Respondent sought to take advantage of the Complainant’s likely rights in the mark. See WIPO 2.0, paragraph 3.1 and UDRP decisions cited therein.