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CostSaver.com : Trademark alone won’t suffice to hand over #domain via #UDRP

CostSaver.com is a domain registered in 1998 and a generic one to boot. A Canadian company, based on a 2013 trademark, filed a UDRP to get the domain from its owner.

The Travel Corporation Ltd. filed the UDRP with the National Arbitration Forum, hoping to get the domain but the Respondent fired back. The sole panelist concluded thus:

This Panel finds difficult to consider Respondent’s registration of the <costsaver.com> domain name as made in bad faith since it was done more than ten years before the first trademark filing by Complainant and thirteen years before the registration of the Complaint’s domain name. Additionally, it is difficult for this Panel to believe the registration was an attempt to divert consumers to <costsavertour.com>, or cause consumer confusion, because the Complainant’s domain <costsavertour.com> was not in existence in 1998 (it was registered in 2012).

Additional this Panel did not find sufficient evidence to prove that Respondent had knowledge of Complainant’s rights in the COSTSAVER mark when it registered the <costsaver.com> domain name.

This could have been a case of Reverse Domain Name Hijacking, in our opinion, but it wasn’t. The panelist ordered the domain CostSaver.com to remain with the Respondent.

The domain transfer was denied.

The Travel Corporation Ltd. v. Priddy Entertainment

Claim Number: FA2008001908211

PARTIES

Complainant is The Travel Corporation Ltd. (“Complainant”), represented by Mark I Reichenthal, California, USA. Respondent is Priddy Entertainment (“Respondent”), represented by Bradlee Frazer, Idaho, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <costsaver.com>, registered with MarkMonitor Inc..

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Héctor Ariel Manoff as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 12, 2020; the Forum received payment on August 12, 2020.

 

On August 18, 2020, MarkMonitor Inc. confirmed by e-mail to the Forum that the <costsaver.com> domain name is registered with MarkMonitor Inc. and that Respondent is the current registrant of the name. MarkMonitor Inc. has verified that Respondent is bound by the MarkMonitor Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On August 24, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@costsaver.com. Also on August 24, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on September 14, 2020.

 

On September 21, 2020, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Héctor Ariel Manoff as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1- Complainant, The Travel Corporation Ltd., is a travel agency controlling various travel brands, tour operators, hotels, and transportation companies.

2- Complainant has rights in the COSTSAVER mark based upon the registration with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA841145 filed in 2011 and registered January 25, 2013). See Compl. Ex. 4.

3- Complainant argues to have common law rights in the mark based on use since 1980. Evidence submitted refers to its own website and some brochures.

4- Complainant owns <costsavertour.com> as from 2012.

5- Respondent’s <costsaver.com> domain name is identical and confusingly similar to Complainant’s mark because it contains the mark without any distinction.

6- Respondent does not have rights or legitimate interests in the <costsaver.com> domain name because Respondent is not commonly known by the disputed domain name.

7- Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent uses the domain as an advertising platform for competing third parties.

8- Respondent registered and uses the <costsaver.com> domain name in bad faith. Respondent offers the domain name for sale in excess of out-of-pocket costs.

9- Respondent profits from the placement of links on the resolving website.

 

B. Respondent

1- Respondent’s registration of the <costsaver.com> domain name predates Complainant’s registration of the COSTSAVER mark. The domain name was registered in 1998 and the first registration of COSTSAVER in the name of Complainant occurred in 2011, in Canada.

2- Complainant does not provide sufficient evidence to show common law rights in the mark.

3- The mark and domain name are comprised entirely of descriptive terms with a recognized meaning to consumers.

4- Respondent has priority in the <costsaver.com> domain name because it registered the domain name prior to when Complainant had any rights in the COSTSAVER mark.

5- The domain name is merely a generic word used to indicate nonspecific cost savings. Further, Respondent’s business of acquiring domain names to later build brands is a legitimate use of the disputed domain.

6- Respondent had no knowledge of Complainant’s rights in the COSTSAVER mark when it registered the <costsaver.com> domain name.

7- Respondent could not have been attempting to divert consumers to costsaver.com, or cause consumer confusion, because the Complainant’s domain <costsavertour.com> was not in existence in 1998 it was registered in 2012.

8- Respondent’s offer to sell the domain name does not evidence bad faith because Complainant approached Respondent to buy the domain.

FINDINGS

The Travel Corporation Ltd., a travel agency, owns COSTSAVER mark in Canada since 2013 and domain name <costsavertour.com> since 2012. Respondent, a company which business is to acquire domain names to later build brands, registered <costsaver.com> in 1998.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “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 requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

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

Identical and/or Confusingly Similar

Complainant asserts rights in the COSTSAVER mark based upon the registration with the CIPO since 2013. Registration of a mark with a trademark agency is generally sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. Reggie Rags, FA 1778853 (Forum Apr. 19, 2018) (“Registration of a mark with the CIPO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of registration of the COSTSAVER mark with the CIPO (e.g., Reg. No. TMA841145 registered January 25, 2013). See Compl. Ex. 4. Thus, this Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).

 

However, with respect to common law rights and trademark rights prior 2013, this Panel finds that Complainant provided insufficient evidence to show common law rights in the COSTSAVER mark and rights before 2013. Additionally, based on the fact that COSTSAVER are common words, to prove the secondary meaning necessary to establish common law right, a complainant must provide some evidence of consumer or media recognition or advertising under Policy ¶ 4(a)(i). See Copper Wire Stripper Limited v. Joe Williams / BLUEDOGINTERNATIONALINC, FA 1604460 (Forum Apr. 4, 2015) (finding that Complainant failed to establish secondary meaning where no evidence was provided with respect to sales under the mark and money spent promoting the mark.). The Panel finds that Complainant has no common law rights in the COSTSAVER mark under Policy ¶ 4(a)(i).

 

Thus, Panel finds, in the mentioned temporal context, that the disputed domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).

 

The terms of the <costsaver.com> domain name are common and descriptive, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet. Based on that, the Panel finds that Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).

 

Thus, the Panel finds that Respondent has a legitimate interest in the domain name under Policy ¶ 4(c)(i) or (iii).

Registration and Use in Bad Faith

The disputed domain name was registered in 1998 and the first filing of the COSTSAVER trademark by Complainant was in 2011. Moreover, the Complainant <costsavertour.com> domain name was registered in 2012.

 

This Panel finds difficult to consider Respondent’s registration of the <costsaver.com> domain name as made in bad faith since it was done more than ten years before the first trademark filing by Complainant and thirteen years before the registration of the Complaint’s domain name. Additionally, it is difficult for this Panel to believe the registration was an attempt to divert consumers to <costsavertour.com>, or cause consumer confusion, because the Complainant’s domain <costsavertour.com> was not in existence in 1998 (it was registered in 2012).

 

The Panel finds that if Respondent’s registration of the <costsaver.com> domain name predates Complainant’s first claimed rights in the COSTSAVER mark, Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).

 

The Panel concludes that Respondent has rights or legitimate interests in the <costsaver.com> domain name pursuant to Policy ¶ 4(a)(ii), and the Panel finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).

 

The Panel noticed that Complainant initially reached out to Respondent to discuss sale of the disputed domain name. See Compl. Ex. 17, and an offer to sell a disputed domain name is not necessarily evidence of bad faith under Policy ¶ 4(b)(i) when the complainant initiates sale negotiations. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002) (finding that “when a Complainant indicates a willingness to engage in a market transaction for the name, it does not violate the policy for a [the respondent] to offer to sell for a market price, rather than out-of-pocket expenses”).

 

This Panel finds that Complainant did not prove to have common law rights and trademark rights on COSTSAVER prior 2013.

 

Additional this Panel did not find sufficient evidence to prove that Respondent had knowledge of Complainant’s rights in the COSTSAVER mark when it registered the <costsaver.com> domain name. Policy ¶ 4(a)(iii) generally requires a respondent to have had knowledge of a complainant’s rights in a mark when registering a domain name to support a finding of bad faith. See Builder’s Best Inc. v. Okada, D2004-0748 (WIPO Nov. 17, 2004) (“…[T]o warrant a finding of bad faith under the Policy, in general, there must be some evidence of knowledge that the Respondent knew the domain name was identical or similar to the Complainant’s mark, not just ‘someone’s’ mark.”).

 

Taking into account the decision regarding the legitimate interest and the fact that the domain was registered in good faith, it is not applicable to analyze whether the use is in good or bad faith for the purposes of deciding this UDRP.

 

The Panel finds that Respondent did not register and use the disputed domain name in bad faith under Policy ¶ 4(b)(i).

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <costsaver.com> domain name REMAIN WITH Respondent.

 

 

HÉCTOR ARIEL MANOFF, Panelist

Dated: October 1, 2020


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