THERE'S NO 'UNIFORM' IN THESE DRP'S...

HIGHLIGHTS:

CASE 1.

Respondent has clearly demonstrated good faith intentions originally, and thereafter... Complainant’s allegation is nonsensical... . Complainant is disingenuous.

... the Respondent has no rights or legitimate interest in respect of the domain name; and the Respondent domain name has been registered and is being used in bad faith.

CASE 2.

It seems appropriate to consider whether Shirmax brought the complaint in bad faith. "If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding." ICANN Rules, para. 15(e). "Reverse Domain Name Hijacking" is defined rather circularly as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." Ibid. para. 1.

Although the applicable policy and rules are quite vague on what constitutes bad faith in bringing a complaint, it seems logical that bad faith should be found if the complainant has an obvious interest in obtaining the respondent's domain name for its own use, yet lacks even a plausible argument on each of the elements set forth in paragraph 4(a) of the ICANN Policy. .

Mere identicality of a domain name with a registered trademark is sufficient to meet the first element of the test, even if there is no likelihood of confusion whatsoever.

Go figure. Both rulings verbatim below.

P.O. BOX 50191 MINNEAPOLIS, MINNESOTA 55405 USA

_________________________________________

Dollar Financial Group, Inc. 1436 Lancaster Avenue, Suite 201 Berwyn, PA 19312-1288

COMPLAINANT,

vs.

Carlton Roark d/b/a Loanmart 5580 LaJolla Boulevard, #300

RESPONDENT.

DECISION Forum File No.: FA0002000093671

_________________________________________

The above entitled matter came on for an administrative hearing on March 7, 2000, before Paul A. Dorf, Arbitrator, on the Complaint of Dollar Financial Group, Inc., hereafter "Complainant", against Carlton Roark d/b/a/a Loanmart, hereinafter "Respondent". Complainant was represented by Hilary B. Miller, Esq., 112 Parsonage Road, Greenwich, Connecticut 06830-3942. There was an answer on behalf of Respondent. Upon the written submitted record, the following DECISION is made.

PROCEDURAL FINDINGS

Domain Name: loanmart.org and loanmart.net

Domain Name Registrar: Network Solutions, Inc.

Date of Domain Name Registration: March 25, 1999

Date Complaint was sent to Respondent in accordance with Rule 2(a)*: February 9, 1999

Response Due Date: March 3, 1999

The Complainant filed its complaint with the National Arbitration Forum on February 9, 2000. After reviewing the Complaint for administrative compliance, The Forum transferred the Complaint to the Respondent in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d) The Forum immediately notified the above Registrar, ICANN and the Complainant that the administrative proceeding had commenced.

The Respondent registered the domain name with Network Solutions, the entity that is the Registrar of the domain name. By registering its domain name with Network Solutions, the Respondent agreed to resolve any dispute regarding it domain name through ICANN’S Uniform Domain Name Dispute Resolution Policy.

Respondent on February 19, 2000 filed a response to Domain Complaint.

FINDINGS OF FACT

1. Respondent’s second-level domain name is identical to complainant’s registered service mark and identical to complainant’s registered domain name loanmart.com.

2. Respondent acknowledges registration of domain names loanmart.net and loanmart.org, which are similar to complainant’s registered trademark. However, the use of names that are identical to those used by others is allowed by Federal Trademark law, as long as the class of goods and services is not similar or confusing. Incidentally, Respondent’s investigation of the domain name loanmart. com through www.whois.net and the Whois Lookup at www.networksolutions.com (copy enclosed) as of February 12, 2000 discloses a registrant other than the complainant.

3. Complainant is the senior user of the mark Loan Mart®. Upon information and belief, respondent has made no commercial use of the mark and has sold no goods or services under the mark.

4. Complainant is not the senior user of the mark, as it pertains to the domain name. Furthermore, Respondent has been unable to make commercial use of its Loanmart domain names solely because Complainant initiated actions to have respondent’s domain names deactivated and placed on hold status.

5. Prior to make any commercial use of the mark, and shortly after registering the domain names loanmart.org and loanmart.net with Network Solutions, respondent initiated contact with complainant with a view toward attempting to extort $7,500 from complainant in return for respondent’s agreement to transfer the domain names to complainant.

6. Respondent argues that this is a false and gross mischaracterization of the events that transpired. Please note that respondent was already pursuing the development of a commercial web site in the field of Health and Beauty care products. Good domain names for this field, and most others, for that matter, are already taken, so respondent chose to use a domain name that was an acronym for "Lotions, Oils, And Nutriments Mart". In addition, Respondent also obtained for this endeavor, the toll free number 1-877-LOANMART, which currently rings into Respondent’s home office. As further evidence of Respondent’s bona fide intention to create a Health & Beauty care web site, Respondent previously obtained U.S. Patent # 5,379,909 on January 10, 1995 on a consumer product container for Health & Beauty care lotions and liquids. This can be verified at www.uspto.gov. The product was also featured in at least one Health and Beauty care trade magazine.

a. After registering loanmart.net and loanmart.org Respondent checked the USPTO’s online Trademark database to ensure that the name was not already registered for the class of goods and services sought, (Health & Beauty Care) and it was not. Respondent noted that Complainant had a registered trademark for that name in a completely unrelated class of goods and services and assumed Complainant had abandoned their Trademark. This assumption was reasonable given the fact that Complainant had willfully neglected to undertake the minimal effort required to obtain registration for the disputed domain names herein, for over an entire year after their first use of the name.

b. Approximate the time Respondent had registered the loanmart domain names, Respondent was seeking capital for another business venture, and chose to offer Complainant the domain names, if they had not in fact abandoned their Trademark. Registering and then contacting Complainant for the sale of Respondents domain names was not Respondents original intention, as evidenced by the facts above.

7. Not until after he was requested to desist from use of the domain names and his extortion demands were spurned, did Respondent in fact create content at a World Wide Web site with the domain names in question; such content was unrelated to loans or anything having to do with the registered mark.

8. Respondent was developing site content offline immediately after the domain names in question were registered, but ceased after Complainant initiated actions to deactivate Respondent’s domain names, and place them on hold.

a. For the record, Respondent vehemently objects to Complainant’s irresponsible and inflammatory use of the words "extort" and "extortion" to malign Respondent.

b. Please also note that Complainant has previously indicated their intention to effect a form of malicious prosecution upon Respondent in order to obtain Respondent’s domain names. On April 22, 1999 Mike Marcus of Dollar Financial Group transmitted an email message to Respondent stating "lube up", a threatening metaphor commonly used to warn one of malicious and hardball legal tactics, a copy of which was presented.

c. Please also note for the record that on April 13, 1999 Complainant’s attorney Hillary Miller transmitted a similarly profane email message to Respondent in which she instructed Respondent to "Go to Hell", a copy of which was presented.

d. Respondent respectfully requests that Complainant’s inflammatory use of the words "extort" and "extortion" be taken in light of Complainant’s true motivations.

9. Based on the foregoing, Respondent should be found to have registered the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations for loanmart.org and loanmart.net to complainant, who is the owner of the service mark Loan Mart®, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.

10. Based on the above, Respondent has clearly demonstrated their good faith intentions originally, and thereafter, to use the domain names loanmart.org and loanmart.net for a Health & Beauty care web site.

11. Based on the foregoing, Respondent intentionally attempted to attract, for commercial gain, Internet users to his web sites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site.

12. Complainant’s allegation above is nonsensical. Why would Respondent who is seeking to develop a Health & Beauty care web site seek to attract those seeking financial services?

13. Complainant is being quite disingenuous to suggest that visitors to a web site for Health & Beauty care products would be confused and possibly believe that Dollar Financial Group might be somehow affiliated, sponsoring, or endorsing the products featured at the site.

14. If Complainant’s allegation #6 were true or had any merit, they (Complainant) themselves would be guilty of their own charge, since the second level name of their own web site at www.dfg.com is identical to the mark of another currently registered Trademark. The owner of that mark is the Dalton Foundries Group who registered the mark in 1964.

15. If Complainant’s argument had any merit, Trademarks would be issued once, to one party, without regard to their use (i.e., class of good or services), which is not the case.

16. Respondent respectfully requests that it be allowed to keep and use the domain names loanmart.net and loanmart.org for use as a Health & Beauty care products web site. Complainant’s actions have already caused Respondent to incur unnecessary delays and expenses.

17. As required by the rules governing this response, Respondent states that it does in fact prefer correspondence by U.S. Mail, and does "not" request a three-member panel.

18. "Respondent certifies that the information contained in this Response is to the best of Respondent’s knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument."

CONCLUSIONS

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions:

The undersigned has reviewed all the evidence presented in this case by both parties and has concluded to believe the facts and circumstances as set forth by the Complainant. For that reason, the undersigned decides that:

a. The domain name as registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

b. the Respondent has no rights or legitimate interest in respect of the domain name; and

c. the Respondent domain name has been registered and is being used in bad faith.

It is therefore just, right and proper that the domain name "loanmart.org" and "loanmart.net" be transferred to the Complainant.

DECISION

Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAMES "loanmart.org" and "loanmart.net" BE TRANSFERRED TO COMPLAINANT DOLLAR FINANCIAL GROUP, INC.

Dated: March 7, 2000,

By Judge Paul A. Dorf (Ret.)

Arbitrator

ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution

Complainant: SHIRMAX RETAIL LTD./DÉTAILLANTS SHIRMAX LTÉE Respondent: CES MARKETING GROUP INC. Case Number: AF-0104 Contested Domain Name: thyme.com Panel Member: David E. Sorkin BACKGROUND

The complainant in this proceeding is SHIRMAX RETAIL LTD./DÉTAILLANTS SHIRMAX LTÉE ("Shirmax") of Montreal, Quebec, Canada. The respondent is CES MARKETING GROUP INC. ("CES"), of Vancouver, British Columbia, Canada. The domain name at issue is thyme.com, registered by the respondent with Network Solutions, Inc. ("NSI"), of Herndon, Virginia, USA. The complaint was brought pursuant to the Uniform Domain Name Dispute Resolution Policy ("ICANN Policy"), <http://www.icann.org/udrp/udrp-policy-24oct99.htm>, which was adopted by the Internet Corporation for Assigned Names and Numbers on October 24, 1999.

Pursuant to paragraph 4(d) of the ICANN Policy, Shirmax selected the Disputes.org/eResolution Consortium as the ICANN-approved administrative dispute resolution service provider to administer this proceeding. The complaint submitted by Shirmax was received electronically and in hard copy by eResolution on February 3, 2000. eResolution verified the formal sufficiency of the complaint and forwarded it to CES on February 7, 2000, the commencement date of this proceeding. eResolution subsequently granted CES's request for a brief extension of the time permitted for its response, and CES filed its response electronically on March 2, 2000, and in hard copy on March 9, 2000.

Neither party having requested a three-member panel, eResolution selected David E. Sorkin from the Disputes.org/eResolution Consortium list of arbitrators to serve as the sole panelist in this proceeding. On March 14, 2000, eResolution notified the parties, NSI, and ICANN of the panel appointment and that barring exceptional circumstances a decision would be handed down by March 28, 2000.

FACTS

Shirmax markets maternity clothing and other merchandise under the names Thyme and Thyme Maternity/Thyme Maternité. In 1994 Shirmax was granted a Canadian trademark registration for the trademark THYME, used in association with maternity clothing and other products and services. Shirmax also has registration applications currently pending before the Canadian Intellectual Property Office for THYME MATERNITY & Design and THYME MATERNITÉ & Design.

CES registered the domain name thyme.com in 1996. Shirmax does not allege that CES was aware of Shirmax or its activities at that time. With its complaint Shirmax submitted a list of fifty domain names that have been registered by CES. Most of the domain names on this list are relatively generic (e.g., decimals.com, default.com, dill.com, and doughnut.com). CES also submitted a list of about twenty domain names that it has registered, most of which are similarly generic, although only a few domain names appear on both lists.

For some time until September 1999 (the duration of this period is not clear from the record), CES used the domain name thyme.com on the web to redirect HTTP requests to a different site, at the domain name cesmarketing.com. That web site described CES's business as "the development and marketing of valuable Internet domain names" and invited persons interested in CES's plans for a particular domain name to contact the company.

Prior to August 3, 1999, Shirmax submitted a complaint to NSI alleging that the domain name thyme.com was identical to a federally registered trademark owned by Shirmax. NSI notified CES of the complaint and on September 17, 1999, having received no response to its notice, NSI placed the domain name on "hold" status pursuant to its then-current domain name dispute policy. On some date thereafter—presumably when the ICANN Policy was adopted—NSI apparently notified Shirmax that it intended to remove the domain name from "hold" status and permit CES to resume using it unless Shirmax filed a complaint under the new ICANN Policy.

ANALYSIS

Under the ICANN Policy, a complainant has the obligation to prove that the domain name at issue is identical or confusingly similar to the complainant's trademark; that the respondent has no rights or legitimate interests in the domain name; and that the domain name has been registered and is being used in bad faith. ICANN Policy, para. 4(a). If the complainant successfully proves all three elements, then this panel has the authority to require the cancellation of the respondent's domain name registration, or to order that it be transferred to the complainant. Ibid. para. 4(i). The panel also may consider and address whether the complaint was brought in an attempt at "reverse domain name hijacking" or otherwise in bad faith. ICANN Rules for Uniform Domain Name Dispute Resolution Policy (Oct. 24, 1999) ("ICANN Rules"), <http://www.icann.org/udrp/udrp-rules-24oct99.htm>, para. 15(e).

1. Identity or Confusing Similarity

Paragraph 4(a)(i) of the ICANN Policy requires that the domain name be identical or confusingly similar to the complainant's trademark. Shirmax contends that the domain name thyme.com is identical to its trademark THYME, and confusingly similar to its pending trademarks THYME MATERNITY & Design and THYME MATERNITÉ & Design. CES submits that under Canadian trademark law, mere identicality is insufficient to support a conclusion that two marks are confusing, and encourages this panel to interpret paragraph 4(a)(i) in the conjunctive rather than the disjunctive. CES further argues that Shirmax's pending trademark applications are not relevant because the dates of first use are subsequent to CES's registration of the domain name thyme.com.

The panel declines CES's invitation to stray from the clear language of the ICANN Policy. Mere identicality of a domain name with a registered trademark is sufficient to meet the first element of the test, even if there is no likelihood of confusion whatsoever.

In the strictest sense, the domain name thyme.com is not identical to the trademark THYME. Letter case does not appear to be significant in either term, but the former includes a top-level domain, ".com", while the word "thyme" stands alone in the latter. However, where the addition of a top-level domain is the only difference—and especially where, as here, the top-level domain that appears in the domain name is the one that most closely describes the nature of the trademark (i.e., ".com" representing a commercial enterprise)—such virtual identicality seems sufficient to satisfy the requirement.

Because the identicality requirement is satisfied with regard to the trademark THYME, the panel need not address the parties' arguments concerning Shirmax's pending trademarks, THYME MATERNITY & Design and THYME MATERNITÉ & Design.

2. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the ICANN Policy asks whether the respondent has any rights or legitimate interests in respect of the domain name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (1) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (2) the fact that the respondent has commonly been known by the domain name; and (3) legitimate noncommercial or fair use of the domain name.

Shirmax argues that CES fails this test because it has never used the domain name thyme.com in bona fide commerce and has never been commonly known by the domain name. CES claims that it had made preparations to use thyme.com for the bona fide offering of goods or services, supporting this claim by pointing to other web sites that it has developed, and by presenting a list of other, related domain names that it has registered and intends to develop in conjunction with thyme.com. CES further argues that a mere idea for a bona fide business application is sufficient, and that CES should not be punished for lacking the resources to develop a definitive business plan at the time that it registered the domain name.

Where the domain name and trademark in question are generic—and in particular where they comprise no more than a single, short, common word—the rights/interests inquiry is more likely to favor the domain name owner. The ICANN Policy is very narrow in scope; it covers only clear cases of "cybersquatting" and "cyberpiracy," not every dispute that might arise over a domain name. See, e.g., Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (Oct. 24, 1999), <http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm>, para. 4.1(c).

The panel finds that the admittedly perfunctory preparations made by CES for use of the domain name thyme.com in bona fide commerce are sufficient to demonstrate the rights or legitimate interests required by paragraph 4(a)(ii). In addition, given the generic nature of the domain name, CES has at least a tenable argument that its use on the web merely for the purpose of redirecting visitors to a different site constitutes a legitimate fair use, as long as this use is not misleading to consumers and does not tarnish a trademark.

The panel concludes that Shirmax has failed to meet its burden to show that CES possesses no rights or legitimate interests in the domain name.

3. Bad Faith Registration and Use

The third element set forth in paragraph 4(a) of the ICANN Policy requires the complainant to prove that the domain name was registered and is being used in bad faith. (Because the domain name is currently on "hold" status, the panel will assess whether the domain name was being used in bad faith immediately before it was placed on "hold" in September 1999.)

Paragraph 4(b) of the policy sets forth four examples of circumstances in which the registration and use of a domain name may be found to be in bad faith: (1) the respondent has registered or acquired the domain name primarily for the purpose of selling it to the complainant or to a competitor of the complainant at a profit; (2) the respondent registered the domain name to prevent the complainant from reflecting its trademark in a corresponding domain name and has engaged in a pattern of similar conduct; (3) the respondent registered the domain name primarily to disrupt a competitor's business; and (4) the respondent's use of the domain name intentionally attempts to attract Internet users for commercial gain by creating a likelihood of confusion with the complainant's trademark.

The requirement of bad faith registration and use in paragraph 4(a)(iii) is stated in the conjunctive. Registration in bad faith is insufficient if the respondent does not use the domain name in bad faith, and conversely, use in bad faith is insufficient if the respondent originally registered the domain name for a permissible purpose. The first three examples in paragraph 4(b) all refer to registration for various illegitimate purposes as evidence of registration and use in bad faith; but in each instance bad faith use may well be implicit in the act of registering a domain name, since all of the improper purposes mentioned can be accomplished merely by passively holding a domain name.

The fourth example (paragraph 4(b)(iv)), however, refers only to improper use, and does not appear to require that the domain name also have been registered in bad faith. This example thus appears to conflict with the rule set forth in paragraph 4(a)(iii). The language of paragraph 4(a)(iii) is clear, and the only reasonable interpretations are to regard the fourth example as a narrow exception to the preceding subparagraph's conjunctive rule, or to apply the conjunctive rule as it is written and disregard the example entirely.

Shirmax points to the statements that appeared on the cesmarketing.com web site as evidence that CES is engaged in "the business of registering domain names and selling them to the highest bidder." Shirmax also offers evidence of e-mail correspondence between the parties that took place in February of 1999, in which CES declined Shirmax's offer to purchase the domain name for a sum of US$2,500. (It is not clear from the record which party initiated this ultimately unsuccessful negotiation.)

It does appear that CES is involved in the business of registering domain names with the intent to resell them for a profit. If the domain name at issue were a coined trademark such as Panavision, evidence to this effect might well be sufficient to demonstrate bad faith registration and use. Thyme.com, however, involves a generic term, and there is no evidence that CES registered the domain name with the intent of capitalizing on Shirmax's trademark interests, or even that CES was aware of Shirmax's existence when it registered the domain name in 1996. Indeed, the only evidence as to CES's intent in registering thyme.com supports the conclusion that CES selected the name because "thyme" refers to an herb. (CES also registered the domain names dill.com and mineralwater.com on the same date as thyme.com.) Shirmax has offered no evidence to contradict this claim, and the panel therefore finds that Shirmax has failed to sustain its burden of proving that CES registered the domain name in bad faith.

Even if the fourth example (paragraph (4(b)(iv)) is to be viewed as an exception to the bad faith registration requirement, the panel finds that exception inapplicable here. CES did use the domain name thyme.com to attract Internet users for commercial gain, but there is no contention that it did so by creating a likelihood of confusion with Shirmax's trademark.

The panel therefore concludes that Shirmax has failed to prove the third element set forth in paragraph 4(a) of the ICANN Policy.

4. Reverse Domain Name Hijacking

In light of the panel's conclusion that Shirmax is unable to prove two of the three elements set forth in the applicable rule, it seems appropriate to consider whether Shirmax brought the complaint in bad faith. "If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding." ICANN Rules, para. 15(e). "Reverse Domain Name Hijacking" is defined rather circularly as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." Ibid. para. 1.

Although the applicable policy and rules are quite vague on what constitutes bad faith in bringing a complaint, it seems logical that bad faith should be found if the complainant has an obvious interest in obtaining the respondent's domain name for its own use, yet lacks even a plausible argument on each of the elements set forth in paragraph 4(a) of the ICANN Policy. In this proceeding, Shirmax clearly is interested in obtaining the domain name thyme.com from CES, but has made no creditable attempt to show that CES registered thyme.com in bad faith, as required by paragraph 4(a)(iii) of the policy.

Nonetheless, two procedural circumstances dissuade this panel from finding bad faith on Shirmax's part. First, the apparent conflict discussed previously between the conjunctive language of paragraph 4(a)(iii) and the example of bad faith use in paragraph 4(b)(iv) may have led Shirmax to believe that it was not required to demonstrate bad faith registration of the domain name. Second, at the time the complaint was submitted, the domain name was still on "hold" status pursuant to NSI's prior domain name dispute policy, and Shirmax was required to file a complaint under the ICANN Policy to preserve the "hold" status. Shirmax apparently had a valid claim against CES under NSI's prior policy, and does not deserve to be admonished here merely for seeking to retain the advantageous position it was able to attain under that policy.

CONCLUSION

For the reasons set forth above, the panel concludes that Shirmax has proved only one of the three elements set forth in paragraph 4(a) of the ICANN Policy, and therefore determines that the relief sought by Shirmax should not be granted.

20 March 2000

(s) David E. Sorkin

Lead Panelist

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