WIPO Domain Name Decision: D2008-0718

The Complainant is Laughton Marketing LLC, Rochester, New York, of United States of America, represented by Harris Beach PLLC, United States of America.

The Respondent is Boris Soposki, Rochester, New York, of United States of America, represented by Culley, Marks, Tanenbaum & Pezzulo, LLP, United States of America.

The disputed domain name <laughtonmarketing.com> is registered with GoDaddy.com, Inc.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2008. On May 8, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On May 9, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.¹ 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 May 15, 2008. In accordance with the Rules, paragraph 5(a), the initial due date for Response was June 4, 2008. With agreement of the parties, the Center extended the due date for a Response to June 25, 2008. The Response was filed with the Center on June 25, 2008.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on July 3, 2008. 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.

By email of July 16, 2008, the Center forwarded to the Panel an email letter from Respondent’s counsel (dated July 15, 2008) setting forth certain allegations regarding activities of Complainant. The information is unsupported and, in any event, does not affect the Panel’s determination. The Panel does not accept that submission.²

In its Complaint, Complainant indicated that the disputed domain name, <laughtonmarketing.com>, is the subject of litigation in the Supreme Court of the State of New York for Monroe County involving a business owned by Douglas Laughton, the husband of Complainant’s principal (i.e., Barbara Laughton), and a business entity owned and operated by Respondent, THINQ ITS, LLC. Complainant stated, inter alia, with respect to this litigation “At issue is the ownership of various websites, including “www.laughtonmarketing.com”. The primary focus of that litigation, however, is the dispute between US Sweeps [the entity operated by Complainant’s principal’s husband] and Mr. Soposki.” Respondent states that the subject matter of this administrative proceeding under the Policy is “the same matter that is being litigated in the New York State Supreme Court, Monroe County, in the case of Laughton Marketing Communications Inc. d/b/a US Sweepstakes and Fulfillment Co. v. THINQ ITS, LLC, Index No. 2754/08.”

Further reference by the Panel to “Complainant” herein is to Laughton Marketing LLC and Barbara Laughton, its principal, unless express terms or context indicate otherwise. Reference to Complainant’s husband is to the spouse of Barbara Laughton, i.e., Douglas Laughton.

Complainant does not allege registration of a trademark or service mark. Complainant’s allegation of rights is set forth in one sentence “Barbara Laughton has been using the trademark/servicemark[sic] Laughton Marketing in connection with her marketing consulting business Laughton Marketing LLC, in Rochester, New York.” (Complaint) Complainant has not provided supporting evidence regarding the business or operations of Complainant, other than to briefly provide Complainant’s prior employment history (in third party businesses), and stating “In 2007, she started her own business providing marketing services to clients” and “Laughton Marketing LLC always used the domain name in connection with its offering of goods or services” in its allegations regarding Respondent’s lack of rights or legitimate interests.

According to the Registrar’s Verification report, Respondent is registrant of the disputed domain name, <laughtonmarketing.com>. According to the Center’s GoDaddy.com WHOIS database report of May 15, 2008, the record of the disputed domain name was created on September 4, 2007.

Respondent and his controlled business, THINQ ITS (referred to as “Respondent” for purposes of this proceeding), and the husband of Complainant and his controlled business, US Sweepstakes & Fulfillment Co. (referred to further herein as “US Sweeps”), entered into a Service Agreement dated May 1, 2007 (Response, Attachment 1). Pursuant to that Service Agreement, Respondent undertook to provide various services for Complainant’s husband’s business with respect to the design and maintenance of Internet websites. The subject matter of the litigation ongoing between Respondent and Complainant’s husband (and US Sweeps) concerns allegations of nonperformance of the Service Agreement by each party, as well as disputes concerning intellectual property rights subject matter, including (but not limited to) certain domain names.

In an email dated August 30, 2007 from Doug Laughton to Boris Soposki, Mr. Laughton stated:

I may start a promotion consulting company under the corporate umbrella I currently have, Laughton Marketing Communications, Inc.

I’d like to have my email for this effort be Doug@LaughtonMarketing, and feed into my current laptop at USSC.

I’d like a second email for my wife, which would be Barb@LaughtonMarketing, which would be directed to a new laptop I’m going to set up for her ASAP, and will ask Aaron to help me get that programmed.

Respondent has provided evidence in the form of a GoDaddy.com, Inc. receipt printout that the disputed domain name was registered for five years and paid for by a Visa credit card in the name of Boris Soposki, with transaction date of September 4, 2007 (Response, Attachment 6).

An important element in the contract dispute between Respondent and Complainant’s husband’s business concerns certain rights in intellectual property that Respondent contends are owned by him pursuant to the terms of the Service Agreement. Complainant’s husband’s business (US Sweeps) contends that rights in certain intellectual property are owned by him. The specific disputed domain name in this proceeding is not explicitly referenced in the Service Agreement. The August 30, 2007 email from Doug Laughton, supra, postdated entry into force of the Service Agreement (of May 1, 2007), and express inclusion or not of the disputed domain name does not resolve the question whether it is covered by the terms of the contract. The filings of the parties in the New York state court proceeding refer to a few domain names for illustrative purposes, but these references are not purported or intended to be exhaustive. (Response, Attachment 5)

The Registration Agreement in effect between Respondent and GoDaddy.com, Inc. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

Complainant asserts that it has rights in the trademark or service mark Laughton Marketing based on use in commerce. Complainant claims that the disputed domain name is identical to its service mark.

Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name because (1) Respondent has not used the domain name for a bona fide offer of goods or services (2) Respondent has not been known by the disputed domain name (3) the domain name was registered and used in bad faith because it was supposed to be registered exclusively for the benefit of Complainant and (4) because Complainant is suffering as a result of being unable to contact its customers.

Complainant alleges that the disputed domain name was registered and used in bad faith because Respondent purchased the domain name with funds of Complainant’s husband or his business and was supposed to be registered in “Lawton Marketing’s name.” Complainant further contends that Respondent is holding the disputed domain name to pressure Complainant’s husband’s business to settle its contract dispute with Respondent.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.

Respondent claims that he registered the disputed domain name as a service for his client, Douglas Laughton and his company (US Sweeps) pursuant to a Service Agreement executed on May 1, 2007. Respondent alleges that US Sweeps breached the Service Agreement, inter alia, by failing to pay fees when due.

Respondent alleges that, pursuant to the express terms of the Service Agreement, all intellectual property developed under that agreement is owned by Respondent. Pursuant to the Service Agreement, US Sweeps was granted a license to use certain intellectual property. Because US Sweeps breached the agreement, Respondent acting under the terms of the agreement terminated the intellectual property license.

Respondent contends that the disputed domain name was registered at the request of Douglas Laughton and hosted by Respondent under the terms of the Service Agreement. Respondent alleges that fees for registration of the disputed domain name were paid for by Respondent using his credit card. Respondent contends that Douglas Laughton was not directly billed for this registration because it was understood that this would be billed under the Service Agreement.

Respondent argues that the subject matter of the present administrative proceeding under the Policy is precisely at issue in civil litigation in the state of New York, and this matter should not be heard as the same matter is pending in another jurisdiction and will be adjudicated there.

Respondent argues that the disputed domain name was registered in good faith because registration was undertaken at the request of Douglas Laughton pursuant to the Service Agreement under which Respondent would own covered intellectual property. Respondent alleges that because US Sweeps breached the Service Agreement, respondent legitimately retains ownership of the disputed domain name.

Respondent claims that Complainant’s husband, Douglas Laughton, requested registration of the disputed domain name for his business, and not for his wife to use pursuant to “her alleged trademark”. Respondent alleges that since the Service Agreement has been terminated, Douglas Laughton registered the domain name <laughtonmarketingllc.com>, but that Complainant is not using the web address identified by that domain name to conduct business.

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

Respondent received notice of the Complaint and commencement of the administrative proceeding from the Center and filed its Response in a timely manner. Respondent received adequate notice of these proceedings and had reasonable opportunity to respond.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

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

(ii) respondent has no rights or legitimate interests in respect of the domain name; and

(iii) respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

“(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”

Respondent has indicated its view that civil litigation in the state of New York between Respondent and Complainant’s husband’s business is directly concerned with the domain name that is the subject of the Complaint. Complainant has indicated its view that the disputed domain name is not the primary focus of that litigation.

The Panel considers that the state court litigation in New York is directly relevant to the disputed domain name because that litigation is intended to determine ownership and control of all intellectual property developed by Respondent under the Service Agreement. Respondent has made a prima facie showing (Response, Attachment 2) that he registered the disputed domain name at the express request of Complainant’s husband during the pendency of the Service Agreement. It will be up to the New York Supreme Court to determine whether that was an activity covered by the Service Agreement and, if so, which party is the rightful owner of the registration of the disputed domain name.

While the Panel has discretion to suspend or terminate this Administrative Proceeding in light of this finding, the Panel will render a decision based upon the evidence (or lack thereof) before it.

Paragraph 4(a)(i) of the Policy requires Complainant to demonstrate rights in a trademark or service mark.

Complainant has not alleged or provided evidence of registration of a service mark. Under the US Lanham Act, however, a person may secure “common law” trademark or service mark rights when (a) a sign it has used as a mark to identify a good or service in commerce is inherently distinctive or (b) a descriptive sign it has used as a mark in commerce has acquired secondary meaning.³

“Laughton” is a family name (i.e., surname) that is in reasonably common use in the United States.⁴ As such, “Laughton” standing alone is not inherently distinctive as identifying Complainant’s alleged business.⁵ The term “marketing” is commonly descriptive. The combination of terms forming “Laughton Marketing” is not inherently distinctive such as to qualify for common law service mark rights. Complainant alternatively must demonstrate that the combination of terms has acquired secondary meaning as a trademark or service mark.

Complainant has merely asserted service mark rights and has not provided any supporting evidence of Complainant’s use of the alleged mark in commerce. Complainant has not provided evidence that would establish consumer association of the alleged mark with a business. The Panel does not have an evidentiary basis from which it might conclude that Complainant has rights in “Laughton Marketing” as a service mark.

¹ Complainant provided a GoDaddy.com WHOIS database printout dated March 28, 2008 showing Domains by Proxy, Inc., as registrant of the disputed domain name. The Registrar’s Verification report and the Center’s GoDaddy.com WHOIS printout, dated May 15, 2008, both show Boris Soposki as registrant, with the last update to registration information as of September 4, 2007. The Panel finds no reason to name Domains by Proxy as an additional Respondent.

² Complainant’s counsel transmitted to the Center (received by the Panel on July 18, 2008) a reply (dated July 17, 2008) to Respondent’s counsel’s July 15, 2008 letter. The Panel, having rejected Respondent’s July 15, 2008 submission, does not accept Complainant’s reply.

“Personal names are placed by the common law into that category of non-inherently distinctive terms which require proof of secondary meaning for protection. Under the traditional rule, personal names are regarded as in the same category as descriptive terms. This mans that they can be protected as trademarks only upon proof that through usage, they have acquired distinctiveness and secondary meaning.” [footnotes omitted]