WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Janet E. Sidewater v. Worldwide Media Inc.

Case No. D2006-1281

1. The Parties

The Complainant is Janet E. Sidewater, of Gladwyne, Pennsylvania, United States of America, represented by the law firm Morgan, Lewis & Bockius, LLP, United States of America.

The Respondent is Worldwide Media Inc., of Highlands, North Carolina, United States of America, represented by Stephen H. Sturgeon, United States of America.

2. The Domain Name and Registrar

The disputed domain name <featherinyourcap.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2006. On October 5, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue, and Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced October 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2006. The Response was filed with the Center on November 3, 2006.

Complainant requested a single-member panel. Exercising its right under paragraph 5(b)(iv) of the Rules, Respondent requested a three-member panel. The Center appointed Richard G. Lyon, Steven M. Auvil, and David E. Sorkin as panelists in this matter on December 28, 2006. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. Each member of the Panel has submitted his 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 facts necessary for the Panel to determine this matter are not disputed by the Parties.

Complainant creates, markets, and sells hats, clothing, and jewelry with a theme of the sport of falconry under the trademark FEATHER IN YOUR CAP. She has registered this trademark in the United States of America, filing for registration in the United States Patent and Trademark Office (PTO) in July 1999. Her mark was published for opposition in January 2000 and registered on July 23, 2002, with a first use in commerce of April 5, 2002. Although she owns the domain names <featherinyourcap.biz> and <featherinyourcap.org>, Complainant does not currently make use of an Internet presence to sell her products.

Respondent operates the website <mostwanteddomains.com>, on which it sells or leases “the world’s very best domain names.” Respondent also offers registration services at this website. According to the website, Respondent owns 50,000 domain names. Many of these, including the disputed domain name,¹ are everyday words and phrases. Respondent registered the disputed domain name on May 20, 2002. An Internet user who enters the disputed domain name into his/her browser obtains a page entitled “welcome to featherinyourcap.com” that consists of links to many other commercial sites. The page also has a link entitled “inquire about this domain,” that when clicked takes the reader to a page at which he/she is invited to submit an offer to purchase <featherinyourcap.com>.

On June 27, 2006, Complainant sent Respondent an email message asserting among other things that Respondent’s use of it constituted trademark infringement, and inquiring about the purchase of the disputed domain name. Respondent replied the following day, offering the disputed domain name for sale for US dollars 7,500. On August 2, 2006, Complainant’s counsel wrote to Respondent, again asserting a violation of Complainant’s rights and offering to reimburse Respondent’s expenses up to US dollars 1,000 if Respondent would transfer the disputed domain name. Respondent’s counsel replied on August 23, 2006, disputing Complainant’s charges and refusing to transfer the disputed domain name.

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

Rights in a mark.

Complainant has rights in FEATHER IN YOUR CAP by virtue of her PTO-registered mark, to which the disputed domain name is identical but for the top level domain. Under United States trademark law these rights accrue from July 13, 1999, the day of her trademark application.

No rights or legitimate interests.

Respondent has never engaged in any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services; Respondent is not commonly known by the disputed domain name; and is not making a legitimate non-commercial or fair use of the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its mark, and Respondent’s business of “registering, warehousing and attempting to sell domain names... is to advertise the [disputed domain name] for sale, rather than offer any goods and services or provide useful information to internet users.”

Bad Faith.

Under United States trademark law, Respondent had actual or constructive knowledge of Complainant’s mark from the date she filed her trademark application, so its registration and use are in bad faith under Policy precedent. Respondent’s use of the disputed domain name as a “placeholder website” from which it receives click-through revenue is used “intentionally to attempt to attract, for commercial gain, internet users, to respondent’s website by creating a likelihood of confusion with complainant’s mark.” (Policy, paragraph 4 (b)(iv)). Respondent’s offer to sell the disputed domain name for an amount in excess of its costs of registration is also evidence of bad faith in registration and use. Citing many other domain names owned and held for sale by Respondent that are said to infringe trademark rights of third parties, five UDRP proceedings brought against Respondent,² and four lawsuits against Respondent for cybersquatting, Complainant asserts that Respondent’s conduct comes within paragraph 4(b)(ii) of the Policy.³

B. Respondent

Respondent contends as follows:

Rights in a mark.

Because Respondent registered the disputed domain name on May 20, 2002, about two months prior to Complainant’s trademark registration, Complainant has not established rights in her trademark for purposes of invoking the Policy. Complainant has provided no proof of common law rights predating the date of its USPTO registration or of “secondary meaning” attaching to the mark that would render its use for Complainant’s goods distinctive.

Rights or legitimate interests.

Respondent in fact has been using the disputed domain name for a legitimate offering of services “that are unrelated to any product or service for which the Complainant alleges to have trademark rights.” Respondent distinguishes its use as described above from “mere passive holding.” Respondent’s use occurred prior to its first notice of this dispute, Complainant’s counsel’s initial letter in June 2006.

Bad faith.

Since Respondent registered the disputed domain name before Complainant’s trademark was registered, it could not have registered the disputed domain name in bad faith; as Complainant had no trademark rights when Respondent registered the disputed domain name it could not have accomplished that registration to prevent Complainant from reflecting her mark in a corresponding domain name. Respondent successfully defended the five UDRP proceedings against it referred to in the Complaint and none of the lawsuits resulting in an adverse finding against Respondent.

General.

Complainant bears the burden of proof under each item of the Policy and the requirement of proving legitimate interests by a respondent is very low. The Policy was established to permit expedited disposition of clear cases of cybersquatting. By reason of its registration of the disputed domain name prior to Complainant’s USPTO registration, this proceeding is not a “clear abuse.”

6. Discussion and Findings

Contrary to Respondent’s arguments, Complainant has established that it has rights in its federally registered trademark and has established the first element of the Policy, namely that the domain name is confusingly similar to a trademark in which the Complainant has rights

It is the consensus view that a complainant’s rights (or not) are determined at the date the complaint is filed, not the date that a respondent registered the disputed domain name. “WIPO Overview of WIPO Panel Views on Selected UDRP Questions,” (“Overview”), ¶1.4; Valve Corporation v. ValveNET, Inc., ValveNET, Inc., Charles Morrin, WIPO Case No. D2005-0038. Complainant’s USPTO registration was issued in July 2002, more than four years before she commenced this proceeding. Because the disputed domain name is identical to her mark except for the gTLD designation, she has met the requirements of paragraph 4(a)(i) of the Policy.

“While the [timing of respondent’s registration] is not relevant in determining whether a complainant has established rights in a mark to which the domain name is identical or confusingly similar, it is indeed relevant for purposes of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.” Valve Corporation, supra; Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383. Since Complainant must establish each Policy element to succeed, the Panel will now address only the issue of registration in bad faith, as the undisputed evidence requires a finding that Complainant has not carried her burden of proof to establish this Policy element.

Acquiring domain names consisting of common words or phrases is not in and of itself an illegitimate activity or presumptive evidence of bad faith in registration. Mariah Media Inc. v. First Place® Internet Inc., WIPO Case No. D2006-1275; Ibeo Automobile Sensor GmbH v. Netico Inc., WIPO Case No. D2006-0064. Of course an operator of such a business may not blithely ignore the trademark rights of third parties by registering common words or phrases merely because they are common words or phrases. But the doctrine of “constructive notice” that is available to a mark owner under United States trademark law has not been engrafted into the Policy. Overview, ¶3.4. Ordinarily the mark owner must show that the domain name registrant selected the domain name with actual knowledge of that owner’s mark; some panels have in certain circumstances also found bad faith where willful blindness has been established.⁴

The decisions applying the doctrine of constructive notice are rare and the Panel notes that the doctrine is not applicable on the record in this proceeding. Even if the Panel were to place upon a seller of domain names, as some panels have done,⁵ a duty to conduct some sort of search as to whether a newly registered domain name infringes or is comparable to the mark of a third party, had Respondent undertaken such a search in May 2002 it would have not have found Complainant’s mark, which was not registered until two months later.⁶

Complainant’s mark is an everyday phrase. She has offered no proof of any notoriety or identification in the minds of consumers with her mark, which was used first in commerce a scant six weeks prior to Respondent’s registration of the disputed domain name and which has never been used for an Internet-based business, and no proof that Respondent knew of it. In these circumstances the Panel finds that Respondent did not register the disputed domain name in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dated: January 11, 2007

¹ Feather in your cap is an American idiom meaning “an act or deed to one’s credit; a distinctive achievement.” American Heritage Dictionary of Idioms (1997 ed.).

² Complainant acknowledges that Respondent prevailed in all five of these proceedings, but distinguishes four of them on the ground that “Respondent prevailed only because the [c]omplainant failed to establish its trademark rights.”

³ Paragraph 4(b)(ii) lists “you have 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 you have engaged in a pattern of such conduct” as one example of registration and use in bad faith.

⁴ On willful blindness, see, e.g., Sprunk-Jansen A/S v. Chesterton Holdings, WIPO Case No. D2006-1080; Mobile Communication Service Inc. v. Webreg, RN, WIPO Case No. D2005-1304; Eurial Poitouraine v. Compana LLC, WIPO Case No. D2004-0270.

⁵ E.g., Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 (Listing “good-faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others” as one factor to be considered in evaluating a domain name seller’s conduct under Section 4(a)(iii) of the Policy); Mobile Communication Service Inc. v. Webreg, RN, n4 supra (“Where, in contrast, a respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, such practices may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.”).

⁶ Complainant provides no evidence that Respondent has ever been found to have infringed another’s trademark or been required to transfer a domain name in a Policy proceeding, much less engaged in a “pattern” of “prevent[ing] the owner of the trademark or service mark from reflecting the mark in a corresponding domain name,” as required by paragraph 4(b)(ii) of the Policy. This fact, and a less than common trademark at issue, distinguish this proceeding from Centron GmbH v. Michele Dinoia, WIPO Case No. D2006-0915, in which the panel found bad faith under paragraph 4(b)(ii) in part because the respondent had been described as a “recidivist cyber squatter” in an earlier Policy proceeding.