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Pocketbook.com #UDRP adds another notch on John Berryhill’s belt of victories

ZFBot

The aged domain, Pocketbook.com, sounds generic enough for any reputable company to avoid challenging its status quo among domains.

Regardless, this 1997 domain registration was sent to the National Arbitration Forum via the UDRP process.

The Complainant was Pocketbook International SA / Batmore Capital Ltd.

IP attorney, John Berryhill, represented the Respondent in this case, stating the following, in part:

Respondent is a longstanding web developer that operates under its business name, SiteTools, Inc., a California-based company. Respondent has rights in the POCKETBOOK.COM mark through its own trademark registration with the USPTO claiming the services of being a software application service provider (e.g., Reg. No. 4,099,793, registered Feb. 14, 2012). Complainant’s rights in the POCKETBOOK mark are junior to that of Respondent as Complainant’s marks are registered for only one relevant marketplace (i.e. e-readers). Complainant also fails to provide a full record of its trademark prosecution of its trademarks with the USPTO. Furthermore, Complainant’s trademark registrations do not preclude Respondent’s rights in the POCKETBOOK.COM mark as Complainant’s earliest USPTO registration contains a disclaimer of the word “pocketbook”.

Final decision from a three member panel: Deny the transfer of Pocketbook.com to the Complainant. Details about this decision follow:

The domain transfer was denied.

Pocketbook International SA / Batmore Capital Ltd. v. Domain Admin / SiteTools, Inc.

Claim Number: FA1908001857174

PARTIES

Complainant is Pocketbook International SA / Batmore Capital Ltd. (“Complainant”), represented by Anna M. Vradenburgh of One LLP, California, USA. Respondent is Domain Admin / SiteTools, Inc. (“Respondent”), represented by John Berryhill, Pennsylvania, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pocketbook.com>, registered with TurnCommerce, Inc. DBA NameBright.com.

PANEL

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

Eugene I. Low, Steven M. Levy and David P. Miranda as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 13, 2019; the Forum received payment on August 13, 2019«DateHardCopy».

On August 15, 2019, TurnCommerce, Inc. DBA NameBright.com confirmed by e-mail to the Forum that the <pocketbook.com> domain name is registered with TurnCommerce, Inc. DBA NameBright.com and that Respondent is the current registrant of the name. TurnCommerce, Inc. DBA NameBright.com has verified that Respondent is bound by the TurnCommerce, Inc. DBA NameBright.com 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 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 2019 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@pocketbook.com. Also on August 19, 2019, 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 13, 2019.

On September 18, 2019, Complainant filed an Additional Submission. On September 23, 2019, Respondent filed an Additional Submission in reply to Complainant’s Additional Submission. These Additional Submissions comply with Supplemental Rule 7.

On September 23, 2019, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Eugene I. Low as the Chair of the three-member Panel along with Steven M. Levy and David P. Miranda.

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.

PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS

In the instant proceedings, there are two Complainants: Pocketbook International SA and Batmore Capital Ltd.

Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”

According to Complainant’s submissions, Complainant Pocketbook International SA operates the daily operations of the business associated with the POCKETBOOK products, while the trade mark registrations are held in the name of Complainant Batmore Capital Ltd., which is a holding company for the intellectual property of Complainant Pocketbook International SA. These entities are commonly owned, and Complainant Pocketbook International SA uses the POCKETBOOK trademarks with the permission of Complainant Batmore Capital Ltd.

Having considered Complainant’s submissions and evidence, the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and accordingly treats them all as a single Complainant in this proceeding. The Panel also notes that Respondent does not raise any concerns with regard to multiple complainants.

PARTIES’ CONTENTIONS

A. Complainant

Complainant is the third largest provider of e-reader devices and related services in the world under the POCKETBOOK mark. Complainant has rights in the POCKETBOOK mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,675,976, registered on Sep. 1, 2009) and the Madrid Protocol (“WIPO”) (e.g., Reg. No. 1,034,872, registered on Mar. 24, 2010). Complainant also has common law rights in the POCKETBOOK mark as early as May 5, 2008. Respondent’s <pocketbook.com> domain name is identical to Complainant’s POCKETBOOK mark.

Respondent has no rights or legitimate interests in the <pocketbook.com> domain name. Respondent is not licensed, permitted or otherwise authorized to use Complainant’s POCKETBOOK mark and is not commonly known by the disputed domain name. Respondent also uses a privacy service to hide its identity. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent attempts to sell the disputed domain name to Complainant for “six figures.” Furthermore, the disputed domain name resolves to Respondent’s website where it commercially benefits.

Respondent registered and uses the <pocketbook.com> domain name in bad faith. Respondent acquired the disputed domain name with the intent to sell it for more than out-of-pocket costs. Furthermore, Respondent attempts to disrupt Complainant’s business by preventing Complainant from reflecting its mark in a corresponding domain name. Respondent also attempts to attract, for commercial gain, users to the disputed domain name where Respondent advertises its own goods and services. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the POCKETBOOK mark.

B. Respondent

Respondent is a longstanding web developer that operates under its business name, SiteTools, Inc., a California-based company. Respondent has rights in the POCKETBOOK.COM mark through its own trademark registration with the USPTO claiming the services of being a software application service provider (e.g., Reg. No. 4,099,793, registered Feb. 14, 2012). Complainant’s rights in the POCKETBOOK mark are junior to that of Respondent as Complainant’s marks are registered for only one relevant marketplace (i.e. e-readers). Complainant also fails to provide a full record of its trademark prosecution of its trademarks with the USPTO. Furthermore, Complainant’s trademark registrations do not preclude Respondent’s rights in the POCKETBOOK.COM mark as Complainant’s earliest USPTO registration contains a disclaimer of the word “pocketbook”.

Respondent has legitimate interests in the <pocketbook.com> domain name. Respondent acquired the disputed domain name in 2010 after it was abandoned by its previous owner. Respondent has made substantial preparations to use the domain name in connection with a mortgage calculator and lead generator. Respondent uses the financially-related term “pocketbook” for consumers’ financial issues. Complainant’s claim that Respondent acquired a trademark registration solely to protect its domain name and frustrate this UDRP proceeding is utterly bizarre. Complainant also attempts to deceive the Panel by mischaracterizing UDRP case law, providing an incomplete prior case list and failing to provide two decisions in which Respondent successfully kept the domain name.

Respondent did not register or use the <pocketbook.com> domain name in bad faith. Respondent did not attempt to sell the disputed domain name to Complainant as it was approached by a person named “Dmitry Shemet” of “Obreey Products” who was interested in purchasing the domain name for a “new web-startup” in 2013, nearly 3 years after Respondent acquired the domain name. Respondent also alleges that the doctrine of laches should be considered in connection with Complainant’s claim. Furthermore, Respondent uses the domain name in connection with a legitimate business, which is offering mortgage and financial-related services, not diverting purchasers of e-reader products in Russia (as Complainant claims). Respondent chose this name as it is descriptive of the services it provides (financial services i.e. benefiting the user’s “pocketbook”). Respondent only had notice of Obreey Products and did not have actual knowledge of Complainant’s rights in the POCKETBOOK mark. Finally, the disclaimers on Complainant’s USPTO registrations mitigate a finding of Respondent’s knowledge.

C. Additional Submissions

In its Additional Submission, Complainant submitted that Respondent blatantly

mischaracterized or misstated the evidence discussed in the Complaint. Complainant submitted that contrary to Respondent’s statement, Respondent did not use the Domain Name for suggestive purposes since May 12, 2010. Instead,

Respondent’s first use of the Domain Name after its May 12, 2010, registration was for a direct attack and trading off of Complainant’s goodwill in its POCKETBOOK trademark. The link site lists Top 5 Ebook Readers, Kindle, Download Audiobooks, eBook Readers for Less, Top 10 ebook readers, Get NOOK Accessories, PatientKeeper Pocket PC, Which eBook Reader, and, additionally lists more under Related Topics, namely, Pocketbook, Kindle Reader, Sony Reader, EBook Pocket, and Gemstar Reader. Complainant pointed out that the use for the redirect to the mortgage website did not commence until 2014. Thus, the first use of pocketbook.com to drive traffic to e-readers was not due to the allegedly descriptive nature of the term pocketbook, but rather, due to key word linkage. Respondent’s claim that it only used the Domain Name for a suggestive purpose is false and misleading. Complainant also denied Respondent’s statement that Complainant “provides zero evidence of any public reputation or market recognition prior to the Respondent’s registration of the domain name”, and asserted that Complainant’s evidence demonstrates Complainant’s POCKETBOOK trademark and associated products were well-known by consumers prior to Respondent’s registration of the Domain Name. Complainant has provided ample evidence that its POCKETBOOK trademark was a source identifier, the function of a trademark. Thus, the disclaimer in the original registration is not dispositive, nor was the Complaint an abuse. Complainant further submitted that Respondent, SiteTools, Inc., is a California corporation that is now suspended by the California Secretary of State. Thus, any response from Respondent should be ignored as a prohibited exercise of its corporate powers.

In its Additional Submission, Respondent made a number of points in reply:

– Complainant notes that Respondent’s corporate status is temporarily suspended, pending consideration of documents which have been filed with the appropriate California authority. However, the Policy is directed to whether the domain name was abusively registered and used, and Complainant has seized on an irrelevant administrative matter which does not relate to the manner in which the domain name was registered or used by the Respondent.

– The Complainant notes that, nine years ago, the domain name was briefly parked and displayed advertisements for e-readers. The ensuing argument by the Complainant ignores several essential and obvious facts. For example, the United States Patent and Trademark Office, unlike authorities in jurisdictions in which the principal language is not English or in which substantive examination is not conducted, has determined that the term “pocketbook” is merely descriptive of e-readers in the first place. It is not surprising that a domain parking system might display links to material for which the domain name is descriptive.

– It is most bizarre for Complainant to suggest that Respondent is somehow responsible for links which appear on various third-party websites, such as those shown in the Complainant’s Annexes 18a-18g.

– The undeniable fact remains that the Respondent owns a presumptively valid US trademark registration in the term “POCKETBOOK.COM” and the

Complainant’s claim to rights in “POCKETBOOK” per se remains refused by the same authority.

FINDINGS

Complainant has established the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; but has failed to establish Respondent has no rights or legitimate interests in the domain name; or that the domain name has been registered and is being used in bad faith; and thus has failed to establish each of the elements required under paragraph 4(a) of the Policy, and as such the domain name at issue shall remain with Respondent.

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

This Panel is satisfied that Complainant has succeeded in establishing this element.

Complainant claims rights in the POCKETBOOK mark based upon registration rights and common law rights. Complainant refers to its registrations of the mark with the USPTO (e.g., Reg. No. 3,675,976, registered on Sep. 1, 2009) and with WIPO (e.g., Reg. No. 1,034,872, registered on Mar. 24, 2010). Respondent argues that Complainant merely proffered one document that is senior to Respondent’s rights in the <pocketbook.com> domain name; however, this trademark registration contains a disclaimer that reads “No claim is made to the exclusive right to use ‘POCKETBOOK’ apart from the mark as show.” This argument of Respondent alone, however, is insufficient to deprive Complainant of the requisite rights under this element. In particular, the Panel notes that some of Complainant’s other trademark registrations (e.g. US 4,820,128) do not contain this disclaimer. Although these other trademark registrations may post-date the registration of the domain name, this is irrelevant as to the assessment of whether Complainant has the requisite rights under the first element (this factor may become relevant, however, in assessing the other two elements under the Policy). The Panel also accepts that based on Complainant’s evidence, Complainant has common law rights in the POCKETBOOK mark in connection with the sale of e-reader products.

The Panel also accepts Complainant’s claim that the <pocketbook.com> domain name is identical or confusingly similar to the POCKETBOOK mark. The only difference is the addition of a “.com” generic top-level domain (“gTLD”). It is well-established that such a difference in the gTLD string is generally insufficient to differentiate a disputed domain name from the trademark in question under a Policy ¶ 4(a)(i) analysis.

Rights or Legitimate Interests

The Panel finds in favor of Respondent under this element.

One key factor is that Respondent has rights in the POCKETBOOK.COM mark through its own trademark registration with the USPTO (e.g., Reg. No. 4,099,793, registered Feb. 14, 2012). While the existence of a corresponding trademark registration does not automatically confer rights or legitimate interests on a respondent, it does require a complainant to show why the Panel should disregard a prima facie valid registration of the respondent (for example, where the evidence demonstrates that such trademark registration was obtained primarily to circumvent the application of the UDRP). In this case, Complainant falls short of showing such circumstances. To the contrary, the fact that Respondent’s trademark was registered more than 7 years ago from the date of this Complaint suggests that at the time of registration of the trademark, Respondent could not have foreseen this UDRP complaint some 7 years later.

The Panel notes that Complainant contends that Respondent registered its mark, POCKETBOOK.COM, with the USPTO in order to feign legitimacy in the disputed domain name. In reply, Respondent contends Complainant’s arguments regarding Respondent’s registration of its mark are absurd. Respondent further argues that the disclaimer found at Complainant’s senior mark does not preclude Respondent from having rights in the POCKETBOOK.COM mark, which is used in an entirely separate marketplace than that of Complainant. The Panel wishes to remind the parties that trademark disputes fall outside the scope of the Policy. Questions about the validity of trademark registrations cannot be dealt with by this Panel and Complainant remains free to file a cancellation action against Respondent’s trademark before the appropriate body.

Respondent claims to have legitimate interests in the <pocketbook.com> domain name. Specifically, Respondent argues to have made demonstrable preparations to use the domain name for a mortgage calculator and financing service. Furthermore, Respondent argues that the disputed domain name is comprised of the term “pocketbook,” which relates to mortgage and financing services. The Panel notes that such use of the disputed domain name for a mortgage and financing services website appeared to commence in 2014 and the domain resolved to a pay-per-click website with links to finance related topics as early as December of 2011. This considerable time period of use supports Respondent’s contention that it has legitimate interests in the mark “pocketbook” in relation to a bona fide offering of services.

Registration and Use in Bad Faith

Having found in favor of Respondent under Paragraph 4(a)(ii), the Panel need not deal with an assessment under Paragraph 4(a)(iii). However, for completeness, if the Panel were wrong under Paragraph 4(a)(ii), the Panel finds that Complainant also fails to satisfy Paragraph 4(a)(iii).

This is a rather unusual UDRP case where Respondent has owned a corresponding trademark registration since 2012; the registration remains valid and apparently has not been subject to any challenge brought by Complainant (whether in court or before the trade mark office). Respondent acquired the domain name in 2010, nearly 10 years ago. The parties are engaged in different fields of business. Complainant’s earliest trademark registration is subject to a disclaimer of the textual element “pocketbook”. Respondent also argues that “pocketbook” has a descriptive meaning in relation to financial matters which mitigates or precludes any finding of bad faith. These are all factors which mitigate a finding of bad faith. In such circumstances, the Panel would require to see very clear evidence of bad faith on the part of Respondent if the Panel were to find in favor of Complainant.

Complainant has fallen short of that under the preponderance of evidence standard applicable to UDRP cases. The Panel notes that on many points Complainant makes rather conclusory allegations of bad faith but has adduced no specific evidence. There are some debates between the parties about Complainant’s complaint that some 9 years ago, the domain name was briefly parked and displayed advertisements for e-readers. Be that as it may, such use appeared to have been brief and has ceased some 8 years ago; importantly, such historical use cannot help prove that the domain name is being “used” in bad faith.

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 <pocketbook.com> domain name REMAIN WITH Respondent.

Eugene I. Low (Chair), Steven M. Levy and David P. Miranda, Panelist

Dated: October 3, 2019


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