Motorola, Inc. v. NewGate Internet, Inc.
[Indexed as: Motorola v. NewGate Internet]
[Indexed as: Talkabout.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0079
Commenced: 22 February, 2000
Judgment: 14 April, 2000
Presiding Panelists: Richard Hill, Clark W. Lackert, Paul Michael DeCicco Esq.
Domain name Domain name dispute resolution policy Trademark Identical Confusingly similar Consumer confusion Bad faith Legitimate interest Meta-tag Common law rights Common law use Right to resell products Famous Distinctive
Complainant, Motorola, Inc. is the owner of U.S. trademark, TALKABOUT, used by Motorolas predecessor in title since 1981. A predecessor of the respondent, Conner F. Ryan Company (CFR) registered the domain name <talkabout.com> on November 21, 1997 with Network Solutions, Inc. On August 11, 1998, CFR transferred the domain name to the respondent.
Respondent informed Motorola that it intended to use the domain name for an adult sex site. Respondent informed Motorola that it expected payments in excess of the costs of registration in exchange for a transfer of the domain name.
Respondent further contends that CFR was authorized by one of Motorolas distributors to resell Motorolas TalkAbout products, and that CFR and NewGate had a joint venture agreement to create a web site through which TalkAbout products would be sold. Respondent requests the right to submit, after the expiration of the filing deadline, copies of invoices proving that CFR sold a substantial amount of Motorolas products through its web site.
Held, Name Transferred to Complainant.
The panel rules that it will not accept additional documents after the filing deadline because they are irrelevant. The issue at hand is Respondents subsequent use of the disputed domain name.
The use of somebody elses trademark as a domain name (or even as
a meta-tag) clearly does not constitute a "bona fide" offering of goods
or services when the web site owner has no registered or common law rights
to the mark.
The domain name <talkabout.com> is identical or confusingly similar
to the trademark registered and used by complainant, TALKABOUT. Although
the string TalkAbout can be found in many sites on the Net this fact is
irrelevant since the Policy requires only that the domain name be
identical or confusingly similar to a mark, which is the case here.
Respondent knew when it acquired the domain name from CFR that Motorola
was requesting its transfer. Consequently, the panel infers that Respondent
already at that time had the intention of obtaining payments from Motorola
in exchange for the transfer of the domain name. Therefore Respondent
has "used" the domain name in bad faith.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
United State Federal Rule of Evidence 408
Registration Agreements referred to
NSI Domain Name Registration Agreement
Cases referred to
Panavision Intl, L.P. v. Toeppen, 141 F.3.d 1316 (9th Cir. 1998)
Panel Decision referred to
--
Hill, Panelist: -
1. The Parties
The complainant is Motorola, Inc., a corporation organized under the
laws of the State of Delaware, United States of America, having its principal
place of business at Schaumberg, Illinois, United States of America. The
respondent is NewGate Internet, Inc, a corporation organized under the
laws of the State of California, United States of America, having its principal
place of business at Sausalito, California, United States of America.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is <talkabout.com >, which domain name
is registered with Network Solutions, Inc.
3. Procedural History
On February 17, 2000, an ICANN Domain Name Complaint was submitted
electronically to the World Intellectual Property Organization Arbitration
and Mediation Center (WIPO), and the signed original with four copies was
forwarded by express courier on the same date. On February 22, 2000, WIPO
sent to the complainant an Acknowledgement of Receipt, electronically and
by post.
On February 22, 2000, a Formal Requirements Compliance Checklist was
completed by WIPO.
On February 22, 2000, a Request for Registrar Verification was sent
to the Registrar, Network Solutions, Inc. requesting it to (1) confirm
that the complaint was sent to the Resistrar by the complainant, (2) confirm
that the domain name in issue is registered with the Registrar; (3) confirm
that the respondent is the current registrant of the domain name; (4) provide
the full contact details (i.e., postal address(es), telephone number(s),
facsimile number(s), e-mail address(es)) available in the registrar's Whois
database for the registrant of the disputed domain name, the technical
contact, the administrative contact and the billing contact, (5) confirm
that the Uniform Domain Name Dispute Resolution Policy (Policy) applies
to the disputed domain name, and (6) indicate the current status of the
disputed domain name.
On February 22, 2000, the Registrar confirmed that (1) it was in receipt
of the Complaint, (2) it was the Registrar for the domain name in dispute,
and (3) the respondent was the current registrant of the domain name. The
Registrar also (4) provided the contact details for the respondent, (5)
confirmed that the Policy applied to the disputed domain name, and (6)
stated that the domain name was on HOLD status.
On February 22, 2000, WIPO sent to respondent the Notification of Complaint
and Commencement of Action electronically and by courier.
On March 14, 2000, the respondent requested by fax an extension of
10 days.
On March 16, 2000, the complainant objected to the respondents request.
On March 17, 2000, WIPO granted the request for the extension of the
deadline for the filing of the response. The new deadline was 23 March
2000.
On March 22, 2000, the respondent sent to WIPO its response by e-mail
and courier.
On March 24, 2000, WIPO sent to respondent an Acknowledgment of Receipt
of Response by e-mail.
On April 5, 2000, the respondent requested permission to submit additional
documentary evidence in the form of invoices from Connor Ryan and Company.
On April 5, 2000, WIPO informed the respondent that the request for
permission to submit additional documentary evidence would be submitted
to the Panel for decision.
On April 6, 2000, the complainant filed an objection to respondents
request for permission to submit additional evidence.
On April 7, 2000, WIPO confirmed receipt of complainants objections
and informed complainant that these objections would be forwarded to the
Panel.
On April 7, 2000, WIPO informed the parties that a Panel had been named
and transmitted the case file to the Panel, informing it that the decision
should be forwarded to WIPO by April 20, 2000.
4. Factual Background
The complainant has provided evidence of the registration of the following
marks:
Trademark -TALKABOUT, with the United States Patent and Trademark Office,
used by Motorolas predecessor in title since 1981 and by Motorola itself
since May 2, 1997. (Complaint, Annexes C and D.)
A predecessor of the respondent, Conner F. Ryan Company (CFR) registered
the domain name <talkabout.com> on November 21, 1997 (Complaint, Annex
H).
On March 13, 1998, Motorola wrote to CFR to request, among other things,
a transfer of the domain name <talkabout.com> (Complaint, Annex I).
On June 11, 1998, Motorola wrote to CFR to offer to acquire the domain
name in exchange for reimbursement of registration fees and costs. This
offer was rejected by CFR on June 18, 1998 (Complaint, Annexes L, J).
On August 11, 1998, CFR transferred the domain name to the respondent
(Complaint, Annex A). Respondent had been informed by CFR of the issues
raised by Motorola (Complaint, Annex J).
Neither the respondent nor CFR are licensees of complainant, nor are
they otherwise authorized to use complainant's marks. (Complaint, Annexes
I, L, P).
On August 27, 1998, respondent informed Motorola that it intended to
use the domain name for an adult sex site (Complaint, Annex G).
On September 2, 1998, respondent informed Motorola that it expected
payments in excess of the costs of registration in exchange for a transfer
of the domain name and stated: "... we are simply not in a position to
donate our domain name to you. We cannot afford to sacrifice our investments.
... if you offer us no other means of recouping our investment, we will
be forced to use this URL ..." (Complaint, Annex M).
5. Parties' Contentions
A. Complainant
As a procedural matter, complainant requests the panel to deny respondents
request to submit additional documents after the expiration of the filing
deadline.
As to the subject matter, complainant contends that respondent has
registered as a domain name a mark which is identical to the trademark
registered and used by complainant, that respondent has no rights or legitimate
interests in respect to the domain name at issue, and that respondent has
registered and is using the domain name at issue in bad faith.
B. Respondent
As a procedural matter, respondent requests the right to submit, after
the expiration of the filing deadline, copies of invoices proving that
CFR sold a substantial amount of Motorolas products through its web site.
As to the subject matter, respondent contends that CFR was authorized
by one of Motorolas distributors to resell Motorolas TalkAbout products,
that CFR and NewGate had a joint venture agreement to create a web site
and to sell TalkAbout products through that web site, that no consumer
confusion was created by the CFRs use of the domain name <talkabout.com>
because the string TalkAbout is found in many web sites, and that the respondent
did not act in bad faith.
6. Discussion and Findings
On the procedural issue of whether or not to accept after the expiration
of the filing deadline the additional documents, the panel rules that it
will not accept such documents, because they are irrelevant. It is not
disputed that CFR sold Motorola products through its web site, but this
fact has no bearing on the issue at hand, which is respondents use of
the disputed domain name.
The remainder of the discussion relates to the subject matter.
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
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 legitimate interests in respect of the
domain name; and,
3. that the domain name has been registered and used in bad faith.
It is clear that the domain name <talkabout.com> is identical or
confusingly similar to the trademark registered and used by complainant,
TALKABOUT. Respondent disputes this similarity by arguing that there is
no actual confusion because the string TalkAbout can be found in many sites
on the Net. This may be true, but is irrelevant, since paragraph 4(a)(1)
of the Policy requires only that the domain name be identical or confusingly
similar to a mark, which is the case here, quite independently from whether
or not any actual confusion or likelihood of confusion is present.
Respondent and its predecessor CFR have claimed that they were acting
"with Motorolas sanction and blessing", but they have presented no evidence
to this effect. Nor have they presented any evidence that they had a trademark
or common law use of the mark prior to Motorolas adoption and use of the
TALKABOUT trademark. Their actions were in violation of Motorolas intellectual
property rights and caused actual confusion among customers (Complaint,
Annexes I, L, P, Q). Thus it cannot be said that the respondent or its
predecessor CFR had or have a legitimate interest in respect of the domain
name. Respondent argues that CFR had the right to resell Motorolas products.
This assertion is not disputed by Motorola, but is irrelevant, since the
right to resell products does not create the right to use a mark more extensively
than required to advertise and sell the product. The use of a mark as a
domain name clearly goes further than what is required merely to resell
products.
We now turn to the key questions: was the domain name registered in
bad faith and was it also used in bad faith?
Paragraph 4(b)(i) of the Policy provides that "the following circumstances
... shall be evidence of the registration and use of a domain name in bad
faith: ... circumstances indicating that you have registered or you have
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 ... for valuable consideration
in excess of the documented out-of-pocket costs directly related to the
domain name."
Because respondent offered to sell the domain name to complainant "for
valuable consideration in excess of" any out-of-pocket costs directly related
to the domain name, respondent has "used" the domain name in bad faith
as defined in the Policy.
The fact that the respondent acquired the domain name from CFR in full
knowledge of the dispute with Motorola (Complaint, Annex J), that it informed
Motorola that it intended to use the domain name for an adult sex site
(Complaint, Annex G), and that it clearly indicated to Motorola that it
did not intend to relinquish the domain name in exchange for reimbursement
of costs (Complaint, Annex M), show that the respondent acquired the domain
name primarily for the purpose of selling it to Motorola, which is bad
faith use and registration according to the Policy. Respondent denies that
it acquired the site in order to sell it to Motorola, but admits that it
subsequently demanded compensation when Motorola requested transfer of
the domain name (Response, p. 10, VI(d)). But respondent knew when it acquired,
for consideration, the domain name from CFR that Motorola was requesting
its transfer (Complaint, Annex J). This fact, together with the respondents
subsequent conduct, lead the panel to infer that respondent already at
that time had the intention of obtaining payments from Motorola in exchange
for the transfer of the domain name.
It does not matter whether or not CFR acted in bad faith, because the
present action is directed against the respondent, not CFR. In any case,
respondent knew of the issues raised by Motorola in its correspondence
with CFR, so the respondent must bear the consequences of its decision
to accept the disputed domain name under those circumstances; that is,
it must accept the consequences of Motorolas announced intention to take
steps to obtain the transfer of the domain name.
Nor can the respondent claim as a defense that its original acquisition
of the disputed domain name from an individual under eighteen years of
age was not in bad faith. This may or may not be the case, but this panel
need not consider that matter, since the determining factor that this panel
must consider is the subsequent acquisition by the respondent of the domain
name from CFR on August 11, 1998. Indeed, the language of paragraph 4(b)(i)
of the Policy, is clear: "the following circumstances ... shall be evidence
of the registration and use of a domain name in bad faith: ... circumstances
indicating that you have registered or you have acquired the domain name
primarily for the purpose of selling, renting or otherwise transferring
the domain name ..." (emphasis added). That is, the mere fact that the
respondent subsequently acquired the domain name for the purpose of selling
it to Motorola for a sum in excess of costs incurred suffices to establish
the bad faith registration and use referred to in paragraph 4(a) of the
Policy.
Furthermore, the respondent has not presented evidence sufficient to
convince the panel that it has a legitimate interest in the domain name,
for example by providing evidence in favor of the conditions mentioned
in paragraph 4(c) of the Policy:
1. use or preparations to use the domain name in connection with bona
fide offering of goods and services prior to the dispute arising;
2. being commonly known by the domain name; or
3. noncommercial or fair use of the domain name.
This panel need not consider whether or not CFRs use of the disputed
domain name was "bona fide", because it suffices to consider the respondents
subsequent use. The respondent stated that it wished to use the domain
name for an adult sex site (Complaint, Annex G). While (as the respondent
correctly points out) many adult sex sites are perfectly legal and constitute
bona fide offerings of goods or services, the use of somebody elses trademark
as a domain name (or even as a meta-tag) clearly does not constitute a
"bona fide" offering of goods or services when the web site owner has no
registered or common law rights to the mark, since the only reason to use
the trademark as a domain name or meta-tag is to attract customers who
were not looking for an adult sex site, but were instead looking for the
products or services associated with the trademark. Such use of a trademark
can create customer confusion or dilution of the mark, which is precisely
what trademark laws are meant to prevent. And actions that create, or tend
to create, violations of the law can hardly be considered to be "bona fide".
7. Decision
For all of the foregoing reasons, the Panel decides that the domain
name registered by respondent is identical or confusingly similar to the
trademark in which the complainant has rights, and that the respondent
has no rights or legitimate interests in respect of the domain name, and
that the respondent's domain name has been registered and is being used
in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the
Panel requires that the registration of the domain name <talkabout.com>
be transferred to the complainant.
Dissenting Decision referred to
--
DeCicco, Panelist
Panelist Paul Michael DeCicco, respectfully dissents from the panels
majority decision in the above captioned proceeding.
1. Abridged Factual Background
Complainant Motorola holds U.S. Trademark Registration 1,210,368 for
"telephones" and U.S. Trademark Registration 2,214,198 for "radio communications
equipment, namely, two-ray [SIC] radios, batteries, and related accessories
for the foregoing goods, namely, headsets, microphones, speakers, carrying
cases, and belt clips" for the word mark TALKABOUT. The TALKABOUT mark
has been used in commerce by Motorola since May 2, 1997. Complaint pg.
5.
Complainant does not assert that its TALKABOUT mark is famous or that
it is distinctive. Complainant has not set out in its complaint or through
the documents annexed thereto, any theory or legal basis for extending
its trademark rights in TALKABOUT beyond those goods for which it maintains
registrations.
Respondent Netgame, Inc. acquired the at-issue domain name, talkabout.com,
via a transfer from prior registrant the Connor F. Ryan Company (CFR).
Since on or after August 11, 1998, Respondent has been the sole registrant
of talkabout.com. Subsequent to the registration date, Respondent did not
use the domain name to reference any Internet object (web site or other
IP addressed device). On or about August 27, 1998, Respondent indicated
by letter to Complainant herein referenced as Annex G, that it intended
to use the domain for an "adult web site."
In Respondents letter of September 2, 1998, to Complainant, Respondent
appears to reject an offer by Complainant to settle their dispute by Respondents
agreement to transfer the domain name to Complainant. Annex M. The August
28, 1998, letter from Complainant to Respondent referred to in Respondents
September 2, 1998, letter does not appear in the record. The September
2nd letter goes on to suggest that the dispute might be settled by a new
offer from Complainant.
Complainant alleges that the domain name talkabout.com is identical
to its trademark TALKABOUT.
Complainant alleges that Respondent has no rights or legitimate interests
in the talkabout.com domain name because "Respondent does not own a trademark
registration covering the mark, and had no common law use of the mark prior
to Motorola's adoption and use of the TALKABOUT trademark." Complaint pg.
6.
Complainant considers that Respondents announcement to use the domain
name for an "adult sex site" constitutes bad faith under the Policy and
further that Respondent acquired the at-issue domain name with the intent
that it be transferred to Complainant for consideration in excess of its
"out of pocket" costs. Complainant argues that Respondent offered the domain
name "for sale" and that its offering of the domain name for sale constitutes
a "bad faith" use under the holding in Panavision Intl, L.P. v. Toeppen,
141 F.3.d 1316 (9th Cir. 1998). Complaint pg. 8.
Complainant further alleges that the domain name had previously been
used in a manner likely to cause confusion. The allegation relates to activities
occurring prior to Respondents holding registration through an association
with CFR. As additional evidence of "bad faith" Complainant points to statements
made on Respondents web site, which Complainant reads to convey that "Motorola
was a NewGate client with respect to its TALKABOUT products" when in fact
it was not.
2. Scope
Much of the data presented to the panel and information in the panel's
majority decision, concerns a dispute between the at-issue domain names
prior registrant --CFR and Complainant. The dispute centered on CFRs use
of a talkabout.com web site which advertised and sold products manufactured
by the Complainant. CFR is not a party to this proceeding. Moreover, CFR's
voluntarily removal of its web site prior to the Respondent acquiring registration
moots all issues concerning the current propriety or impropriety of that
web site. Likewise, inferences concerning whether or not CFR's talkabout
web site did, or did not infringe on the rights of Complainant, whether
or not Complainant acquiesced to or objected to the use of the site, whether
CFR and/or Complainant were enriched via the web site, as well as other
issues concerning that former web site are, irrelevant to the issue for
decision before this panel. The UDRPs focus is prospective.
The UDRPs singularly remedy --transferring an at-issue domain name
away from a registrant respondent, is designed to inhibit current and future
harm to the mark holder caused by an unauthorized use of the domain name.
The remedy should thus not be invoked to penalize past misuses of the domain
name by previous registrants which have subsequently been cured prior to
the Respondents registration.
3. Analysis
The Policy at section 4(a), sets out the three prong test for determining
whether or not a Respondents registration may be forfeited. First, the
domain name must be identical or confusing similar with Complainants trademark.
Second, the Respondent must have no right or legitimate interest in the
domain name. Third, Respondent must have registered and used the domain
name in bad faith. The Complainant must prove that all three prongs are
satisfied, if relief is to be granted. Policy 4(a) et seq.
Complainant has failed to meet its burden of proof. Although the second
level domain talkabout is symbolically identical with Complainants TALKABOUT
trademark, Complainant has not proven that the Respondent lacks "rights
or legitimate interest in respect of the domain name" as mandated by paragraph
4(a)2 of the Policy. Furthermore, the Complainant fails to prove that the
Respondent registered and is using the domain name in "bad faith." Since
the Complainant does not prove the presence of each of the paragraph 4(a)
requirements, the domain name registration should not be disturbed.
A. Identical or Confusingly Similar
There is no dispute that the second level domain name talkabout.com
maintains the same lexical form as the Complainant's registered mark. The
"identity" and "confusion" examined pursuant to paragraph 4(a)(1) is at
the symbolic level. That is, the second level domain name sounds like when
spoken (ident sonum), appears graphically identical when written, or is
otherwise confusingly similar to the Complainant's trademark 1. The requirement
is seen objectively, and is not read as "confusion" in the trademark sense
i.e. confusion in the mind of a consumer as to the source of particular
goods or services tagged by particular mark. The at-issue domain name is
identical to Complainants trademark TALKABOUT.
B. Legitimate Interest
Paragraph 4s second prong mandates that to prevail Complainant must
prove that the Respondent lacks "rights or legitimate interests in respect
of the domain name." Policy 4(a)(2). Neither the Policy, nor the Rules,
nor the WIPO Supplemental Rules indicate that such "rights or legitimate
interests" must be trademark rights. Therefore, while the presence of a
trademark registration for talkabout, or a common law trademark use of
that mark by Respondent may indicate a "legitimate use" for the domain
name, the absence of such factors is not dispositive of Respondents having
rights or legitimate interests in such domain name. Domain name rights
can, and often do, legally (and peacefully) co-exist with trademark rights
held by an entity other than the domain name registrant. Trademark rights
in a domain name are not a prerequisite for domain name registration; and
there are numerous uses for domain names that are outside the reach of
our trademark law.
Respondent has certain rights in the at-issue domain name pursuant
the Domain Name Registration Agreement with registrant NSI. The Registration
Agreement, found at Annex B to the Complaint, is a bilateral executory
contract that confers certain rights and obligations upon the registrant
in exchange for the payment of a registration fee and the registrants
promise to abide by its terms and conditions. Importantly, in assenting
to the Agreement the registrant warrants that to the best of its knowledge
and belief neither the registration of the domain name nor the manner in
which it intends to use such domain name will directly or indirectly infringe
the legal rights of a third party. Emphasis added. Annex B, §17(ii).
The registrant also agrees, inter alia, to be bound by the dispute resolution
policy in effect at the time of a dispute. Id. §8. If Respondent has
not breached its agreement with the Registrant, then it is undeniable that
Respondent retains rights or interest in the domain name.
Complainants concern that Respondent has announced its intentions
to create an "adult sex site" linked to the talkabout.com domain name is
certainly understandable. Nevertheless, referencing an "adult sex site"
is a non-infringing use of the at-issue domain name. Indeed, the majority
panel admits that "many adult sex sites are perfectly legal and constitute
bona fide offerings of goods or services. . ." Decision at pg. ____. It
is without question that the type of goods that presumably will be offered
at such a site are far a field from the goods in which the Respondent asserts
it has trademark rights. Although, the Complainant might ultimately be
harmed by Respondents "legitimate" use of the domain name, the use is
nevertheless permissible under the Registration Agreement.
Complainant asserts trademark rights for talkabout only as to certain
particular goods. Theses "goods" do not include "adult sex (entertainment)."
Complainants TALKABOUT mark is suggestive; it is neither famous nor distinctive.
By way of analogy, the mere existence of an entry in a telephone directory
referencing an adult bookstore named talkabout, would not, in and of itself,
give rise to Complainants having a cause action sounding in trademark
law or otherwise. Similarly, with regard to the instant dispute, the purposed
creation of a web site referenced by a domain name called talkabout.com
offering goods or services not covered by the Complainants mark is a permissible
use of the domain name.
The Majority, in finding Respondent has no rights or interest in the
talkabout.com domain name, implies that the Complainants trademark rights
in the non-famous mark TALKABOUT for telephones and radio (etc.) reach
other categories of goods and services. Consistent with the Majority decision,
these penumbral rights magically attenuate the Respondents rights and
interests in its registered domain name. Such implications are baseless.
Unlike patents, trademark rights are not rights in gross. Use of a non-famous
trademark in one class of goods or services, does not preclude the use
of an identical mark by a different entity for a different class of goods
or services. Since Respondents forecasted use of the talkabout.com domain
name is not wrongful in itself, any harm to the Complainant which might
result from such use, while potentially unfortunate for Complainant, is
permissibly incidental.
Whether or not a registrant has a "legitimate interest" in its domain
name does not turn solely on whether or not harm may result to the complainant
from a legitimate use of such domain name. If it did then the UDRP will
not square with our trademark law; the resolution of domain name disputes
under the UDRP will rest on subjective inquiries into the Respondents
state of mind; and the resulting body of decisions will be a patchwork
of ad-hoc determinations incapable of rendering guidance to either registrants
or mark holders 2.
Finally, the Majoritys discussion of the "legitimate interest" factor
mistakenly centers on evidence presented by the Respondent in support of
its having a legitimate use for the domain name. Respondent failure to
show a "legitimate interest" by way evidencing the "good faith" factors
set out in paragraph 4(C) of the Policy, does not show that the Respondent
lacks legitimate interest in the domain name. The UDRP makes clear that
it is the Complainants burden to prove "no rights or legitimate interest."
Policy 4(a). Absent proof that the "respondent has no right or legitimate
interests in respect of the domain name," Respondent need not show any
evidence in mitigation. Policy 4(a)(2), 4(c). The majority is in error
when it wrongly presumes Respondent has no legitimate interests in the
domain name. Therefore, the majority conclusion with regard thereto is
ill founded.
Since, Complainant fails to prove that Respondent lacks rights or legitimate
interest in the domain name; and since Respondent has not been shown to
have no legitimate interests in the domain name, the registration should
not be transferred.
C. Bad Faith Use
While failure to prove any one of the three test criteria under paragraph
4(a) of the Policy is sufficient to support a decision in favor of the
Respondent, the Complainant additionally has not proven that the domain
name has been registered and used in bad faith as required by paragraph
4(a)3. No indicia of "bad faith" have been presented though admissible
evidence and the domain name is not being "used."
The Policy provides at paragraph 4(b) et seq. several conditions evidencing
"bad faith." Only the first is applicable. At paragraph 4(b)(i) the Policy
provides that evidence of bad faith manifests by a showing of:
. . . circumstances indicating that [you] the respondent [have] has
registered or [you] the respondent [have] has 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 your documented out-of-pocket costs directly
related to the domain name.
Complainant alleges that Respondent acquired the domain name primarily
for the purpose of selling it to Complainant. It supports its proposition
by pointing to dealings with concerning the transfer of the domain name.
The record indicates that Complainant apparently offered Respondent its
costs of registration in exchange for transfer of the domain name. Respondent
rejected "donating" the domain name to Complainant and alluded to the fact
that it was willing to transfer the domain name for some undetermined consideration.
Annex M. Complainant and the Majority see this as an indicative of bad
faith under paragraph 4(b)1. Additionally, the fact that Respondent announced
that it was going to use the domain to host an "adult sex site" (discussed
above) further indicates to Complainant (and the Majority) that Respondents
primary agenda was to transfer the domain to the Complainant for valuable
consideration. Annex G.
Although Complainant has a strong business interest in maintaining
a domain name registration its trademark TALKABOUT,it has not demonstrated
an entitlement to do so. Complainants unqualified belief that "it has
the right to demand ownership of the domain name "talkabout.com" by virtue
of its ownership of a Federal Trademark Registration for the TALKABOUT
trademark" finds no basis in law. Annex L, pg. 2 3. Where a domain name
registrant may rightfully use its domain name in a manner which does not
violate the rights or interest of a demanding party, and there is no indication
that registrant is using, or will use, the domain name in a manner which
will violate the rights of the complaining party, (as here), the domain
name registrants refusal to turn over its domain name to a complaining
party can not be indicative of "bad faith." The Respondent should not be
prejudiced in this proceeding when acting within its rights. To hold otherwise
requires an arbitrarily presumption that Complainants ultimate claim of
right to the at-issue domain name was valid at the time of its demand.
Notably, whether or not Complainant has any a claim of right to at-issue
domain name is an ultimate issue for decision. In this context, the Majoritys
conclusion that refusing to accept Complainants demand indicates "bad
faith" is not well taken.
Under paragraph 10(d) of the Rule, the panel "shall determine the admissibility
of evidence." Rules paragraph 10(d). Evidence derived from Complainants
demand, Respondents rejection of that demand and Respondents implied
offer to further negotiate the transfer of the domain name should be excluded
from the panels consideration pursuant to Fed. Rule Evid. 408 4. This
United States Federal Rule of Evidence rule excludes from admissibility
offers of compromise as evidence of either liability or invalidity of a
claim. The rule is based on two policy considerations. First, that there
may be many reasons why one would offer to settle a claim, so such evidence
is irrelevant. Second, public policy favors settlements. This second policy
objective would be thwarted if parties feared their offers to end a dispute
might later be used to show their liability. Both reasons are equally valid
within the perspective of these proceedings.
It should go without saying that a trademark holder in a domain name
dispute should not be able to evidence prior negotiations which it initiated
pertaining to the transfer of the at-issue domain name, to prove that the
domain name was acquired for the primary purpose of selling it to the Complainant
and thus evidence bad faith 5. Applying F.R.E. 408, demands or offers regarding
the transfer of a domain name between the Claimant and the Respondent,
such as those offered as evidenced by Complainant should be excluded from
the panels consideration when they appear well within the framework of
settling the dispute between the parties. Since no other evidence has been
presented showing that the primary purpose of Respondents acquiring the
domain name was to offer it for sale to the mark holder, and since the
other paragraph 4(b) factors are lacking. Complainant has not proven that
the domain name was registered or used in bad faith.
Finally, under paragraph 4(a)3 of the Policy Complainant must prove
that the domain name was both "registered" in bad faith and being "used"
in bad faith. But here, there has been no conclusive showing by Complainant
that the domain name was "used" at all in "bad faith" or otherwise. Subsequent
to its registration Respondent neither created nor maintained a web site
linked to the domain name. Complainants suggestion that the 9th Circuits
holding in Panavision Intl, L.P. v. Toeppen, 141 F.3.d 1316 (9th Cir.
1998) supports "use" of the talkabout domain name is unpersuasive. In Panavision,
Toeppen was in the business of registering trademarks as domain names and
then attempting to sell the domain names back to the trademark holder.
Id at 1325. There were multiple instances cited by the Court where Toeppen
unabashedly offered panavision.com as well as other domain names "for sale"
to mark holders. Id. In the instant dispute however, the record is devoid
of any evidence showing a pattern of the Respondent registering trademarked
domain names for sale back to the mark holder or others. The absence of
a "use" of the domain name, foils the paragraph 4(a)(3) requirement that
there must be a "bad faith use." Complainant fails in its proof.
4. Mitigating Factors
Since the Complainant failed to meet its burden of proof, there is
no need to examine the mitigating factors found at Policy 4(c) et seq.
5. Conclusion
While the second level of the talkabout.com domain name is identical
with Complainants trademark, Complainant has not shown that the Respondent
has no legitimate interest in the domain name, nor has Complainant shown
that the Respondent registered and used the mark in bad faith. Based to
the submissions of the parties and the policy and rules governing this
proceeding, I strongly dissent; the domain should be not stripped from
the Respondent.
Footnotes
1. Examples of "symbolic confusion" with regard to talkabout.com
are: talkiebout.com and talkab0ut.com.
2. On the other hand, where there is a demonstrated wrongful
use or imminent wrongful use of an at-issue domain name, we need not speculate
whether or not some injury might result to the mark holder. A finding that
the registrant lacks a "legitimate interest" in an at-issue domain name
then flows from the fact that, under such circumstances, the registrant
Respondent would be in breach of Section 17(E) its Registration Agreement,
and thus no longer entitled to the rights the Agreement previously conferred.
3. Although this letter is directed to CRF, it evidences
Motorolas basis for demanding transfer consistent with the a its complaint.
4. Rule 408. Compromise and Offers to Compromise Evidence
of (1) furnishing or offering or promising to furnish, or (2) accepting
or offering or promising to accept, a valuable consideration in compromising
or attempting to compromise a claim which was disputed as to either validity
or amount, is not admissible to prove liability for or invalidity of the
claim or its amount. Evidence of conduct or statements made in compromise
negotiations is likewise not admissible. This rule does not require the
exclusion of any evidence otherwise discoverable merely because it is presented
in the course of compromise negotiations. This rule also does not require
exclusion when the evidence is offered for another purpose, such as proving
bias or prejudice of a witness, negativing a contention of undue delay,
or proving an effort to obstruct a criminal investigation or prosecution.
see also Uniform Rules 52 and 53; California Evidence Code § 1152,
1154; Kansas Code of Civil Procedure §§ 60-452, 60-453; New Jersey
Evidence Rules 52 and 53.
5. The propriety of applying this significant evidentiary
rule to a UDRP dispute is derived from Rule 15(a) which permits the panel
to apply applicable principles of law in rendering a decision, and Rule
10(d) which provides that "the Panel shall determine the admissibility,
relevance, materiality and weight of the evidence."
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