national arbitration forum
DECISION
Neal & Massy Holdings Limited v. Gregory RicksClaim Number:
FA1403001549327PARTIES
Complainant is Neal & Massy Holdings Limited (Complainant),
represented by Sheryl De Luca of Nixon & Vanderhye P.C.,
Virginia, USA. Respondent is Gregory Ricks (Respondent),
USA.ATTORNEY IF = "SENDER" ", represented by Gary IF > "!"
"Gary" "" Gary
IF W. > "!" " W." "" W.
IF Smith > "!" " Smith" "" SmithPosternak Blankstein &
Lund LLP IF > "!" ", of Posternak Blankstein & Lund LLP" ""
, of Posternak Blankstein & Lund LLPMA IF > "!" ", MA" "" ,
MA
IF MERGEFIELD cmCountry > "!" ", cCountry" "" " ""
IF Party = "ATTORNEY" ", represented by Steven IF > "!"
"Steven" "" Steven
IF W. > "!" " W." "" W.
IF Murray > "!" " Murray" "" Murray IF > "!" ", of
Posternak Blankstein & Lund LLP" "" CA IF > "!" ", CA" "" ,
CA
IF MERGEFIELD rmCountry_1 > "!" ", USA" "" " ""
IF Party = "SENDER" ", represented by Tom IF > "!" "Tom" ""
Tom
IF MERGEFIELD rmMiddle_1 > "!" " W." ""
IF Harper > "!" " Harper" "" Harper IF > "!" ", of
Posternak Blankstein & Lund LLP" "" CA IF > "!" ", CA" "" ,
CA
IF MERGEFIELD rmCountry_1 > "!" ", rCountry_1" "" " ""
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is , registered with Internet.bs
Corp.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.
Paul M. DeCicco, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration
Forum electronically on March 18, 2014; the National Arbitration
Forum received payment on March 18, 2014 MERGEFIELD DateHardCopy
.
On March 20, 2014, Internet.bs Corp. confirmed by e-mail to the
National Arbitration Forum that the domain name is registered with
Internet.bs Corp. and that Respondent is the current registrant of
the name. Internet.bs Corp. has verified that Respondent is bound
by the Internet.bs Corp. registration agreement and has thereby
agreed to resolve domain disputes brought by third parties in
accordance with ICANNs Uniform Domain Name Dispute Resolution
Policy (the Policy).
On March 25, 2014, the Forum served the Complaint and all
Annexes, including a Written Notice of the Complaint, setting a
deadline of April 14, 2014 by which Respondent could file a
Response to the Complaint, via e-mail to all entities and persons
listed on Respondents registration as technical, administrative,
and billing contacts, and to [email protected]. Also on March
25, 2014, 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 Respondents registration as technical,
administrative and billing contacts.
A timely Response was received and determined to be complete on
March 25, 2014.On April 2, 2014, pursuant to Complainant's request
to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative
Panel (the "Panel") finds that the National Arbitration 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
Complainant contends as follows:
Complainant has used the NEAL & MASSY GROUP mark since as
early as the mid 1990s.
Respondents domain name is confusingly similar to Complainants
NEAL & MASSY GROUP mark.Respondent has no rights or legitimate
interests in the domain name. Complainant has neither licensed nor
authorized Respondent to use any part of the NEAL & MASSY GROUP
mark. Complainants use of its mark precedes Respondents
registration of the domain name on September 25, 1999. Respondent
has made no legitimate or fair use of the disputed domain name.
Respondents website resolves to a website containing links to a
business operated by third-parties offering various goods and
services associated with shoes and hotels. Respondent registered
and is using the domain name in bad faith.Respondent is offering to
sell the disputed domain name via a click-through link. Complainant
offered to purchase the domain name for $1,000 and then again for
$10,000. Respondent is attempting to sell the disputed domain name
for an excessive price. Respondent admits to being involved in
numerous UDRP proceedings for the other domain names it has
registered. Respondent is attempting to either disrupt Complainants
business or to divert traffic for its own gain. Respondent has used
a privacy service to conceal its identity.Respondent was aware of
Complainant and Complainants mark when it registered the domain
name.B. RespondentRespondent contends as follows:
Respondents domain name is not identical or confusingly similar
to Complainants previously used trademark.Respondent has rights and
legitimate interests in the domain name. Complainant has failed to
provide anything indicating that Respondent has no rights or
legitimate interests.Respondent has used the domain name for the
last 14.5 years.
Respondent did not register the domain name in bad faith.
Respondent was unaware of Complainant when it registered the
disputed domain name until February 5, 2014. Complainant made a
series of offers for the disputed domain name. Complainants first
offer was for $300, followed by a $1,000 offer and then an $800
offer. On February 10, 2014 Respondent received another $1,000
offer from Complainant.In the late 1990s, Respondent registered as
many dictionary words as it could, later including the dictionary
word Massy.Respondent requests a finding of reverse domain name
hijacking.C. Additional SubmissionsComplainant contends in its
Additional Submission as follows: Respondent has been subject to
various prior UDRP proceedings.Respondent uses the domain name to
capitalize on the trademark value of the related advertisements and
is not seeking to host advertisements that rely on the descriptive
value of the phrase massy.Regarding reverse domain name hijacking,
Complainant brought its complaint in good faith because the domain
name is confusingly similar to a dominant portion of a mark in
which Complainant has shown rights.FINDINGS
Complainant owns common law trademark rights for the NEAL &
MASSY mark.
Complainant filed an intent to use trademark application with
the USPTO for MASSY on March 14, 2014.
Complaint filed its Complaint on or about March 18, 2014.
Complainant has no trademark rights in MASSY.
Respondent is not authorized to use Complainants NEAL &
MASSY trademark in any capacity.Respondent registered the at-issue
domain name after Complainant acquired rights in its NEAL &
MASSY mark.Respondent offered to sell the at-issue domain name to
Complainant for an amount in excess of its relevant
expenses.Respondent uses the domain name to address a website that
that appears to be unrelated to Complainant.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
The at-issue domain name is confusingly similar to a trademark
in which Complainant has rights.
Complainant presents the Panel with sufficient evidence to show
it has common law trademark rights in the NEAL & MASSY mark to
demonstrate its has rights in a mark pursuant to Policy 4(i). See
Yarosh Brothers, LLC v. Junk My Cars, FA 1048718 (Nat. Arb. Forum
Sept. 12, 2007) (finding that complainant established common law
rights in its mark by providing evidence of complainants popularity
and success). Moreover, Respondent does not dispute such rights.
However with regard to MASSY standing alone, Complainant only
claims in passing that it has commonly been referred to as MASSY.
Without more, Complainants bald assertion does nothing to
demonstrate it has trademark rights in that mark. Furthermore,
although not disclosed in either partys papers the Panel notes that
Complainant filed an intent to use (ITU) application for MASSY with
the USPTO only four days before it filed its Complaint. See
Trademark/Service Mark Application, Principal Register Serial
Number: 86221184,
(http://tsdr.uspto.gov/documentviewer?caseId=sn86221184&docId=APP20140318073255#docIndex=0&page=1,
April 11, 2014). In filing the ITU application Complainant thereby
admits that it has not yet used the MASSY mark in commerce, but
instead intends to use the mark at some point in the future. See 15
U.S. Code 1051(1)b. The unavoidable conclusion that Complainant had
no rights in MASSY when it filed its Complaint is further supported
by the fact that Respondent registered the at-issue domain name
over 14 years before Complainants UDRP filing but Complainant did
not complain about the domain name until now. Notwithstanding the
forgoing, Respondents domain name lacks the term NEAL and the
ampersand & in Complainants NEAL & MASSY trademark, but
features the marks MASSY component. The necessary generic top-level
domain .com completes the domain name. Removing words and adding a
top-level domain name to a complainants mark are generally
insufficient alterations to avoid a finding of confusingly similar.
Therefore the Panel concludes that the at-issue domain is
confusingly similar to Complainants NEAL & MASSY mark under
Policy 4(a)(i). See Asprey & Garrard Ltd v. Canlan Computing,
D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name is
confusingly similar to the complainants ASPREY & GARRARD and
MISS ASPREY marks); see also, Bank of Am. Corp. v. McCall, FA
135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a
gTLD is unable to create a distinction capable of overcoming a
finding of confusing similarity); see also, PG&E Corp. v.
Anderson, D2000-1264 (WIPO Nov. 22, 2000) (noting that PG&Es
home web page is found at because the ampersand symbol is not
reproducible in a domain name). Rights or Legitimate Interests
Under Policy 4(a)(ii), Complainant must first make out a prima
facie case showing that Respondent lacks rights and legitimate
interests in respect of an at-issue domain name and then the
burden, in effect, shifts to Respondent to come forward with
evidence of its rights or legitimate interests. See Hanna-Barbera
Prods., Inc. v. Entmt Commentaries, FA 741828 (Nat. Arb. Forum Aug.
18, 2006). Complainant fails to meet its burden. Complainant
contends it neither licensed nor otherwise authorized Respondent to
use its NEAL & MASSY mark or any part of such mark. However as
discussed above Complainant admits thought its ITU trademark
application that it has no rights whatsoever in MASSY, despite
having used the NEAL & MASSY mark prior to the time Respondent
registered the at-issue domain name. Massy is a dictionary word as
Complainant concedes, and no license would normally be needed to
use the term unless the term acquired distinctiveness. Complainants
ITU application puts that contingency to rest. Additionally, the
fact that Complainant took no action concerning the at-issue domain
name for over 14 years suggests that Complainant long believed
Respondent was within its right to use the dictionary word
component of the NEIL & MASSY mark in its domain name.
Complaints UDRP filing thus appears to be motivated not so much by
Complainants conviction that the domain name offends its NEIL &
MASSY trademark as by Complainants continued desire to secure , the
domain name that best maps to its anticipated MASSY trademark.
Given the foregoing, the Panel concludes that Complainant fails
to make out a prima facie showing that Respondent lacks rights and
interests in respect of the at-issue domain name and thus
Complainant does not meet its burden under Policy 4(a)(ii).
Finally, since Respondent has rights or legitimate interests in the
domain name pursuant to Policy 4(a)(ii), the Panel need not
consider Respondents bad faith under Policy 4(a)(iii). See Lockheed
Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18,
2005) (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 Vanguard Group
Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18,
2007) (Because Respondent has rights and legitimate interests in
the disputed domain name, his registration is not in bad
faith.).Reverse Domain Name HijackingRespondent requests a finding
of reverse domain name hijacking against Complainant. However, even
though the Panel holds that Complainant fails to satisfy its burden
under the Policy, a finding of reverse domain name hijacking does
not necessarily follow. See ECG European City Guide v. Woodell, FA
183897 (Nat. Arb. Forum Oct. 14, 2003) (Although the Panel has
found that Complainant failed to satisfy its burden under the
Policy, the Panel cannot conclude on that basis alone, that
Complainant acted in bad faith.). On the one hand, it appears that
Complainants filing was motivated not by any real desire to protect
its NEIL & MASSY trademark but rather to acquire a domain name
to support Complainants inchoate MASSY trademark application. On
the other hand, Complainant prevails under Policy 4(a)(i) and it is
not apparent from the record that Complainant knew or should have
known to a reasonable certainty that the Complaint would fail under
either Policy (a)(ii) or (a)(iii). On balance the Panel finds that
Complainant did not engage in reverse domain name hijacking. See
Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2,
2003) (finding no reverse domain name hijacking where complainant
prevailed on the identical/confusingly similar prong of the
Policy); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug.
2, 2001) (noting that a finding of reverse domain name hijacking
requires bad faith on the complainants part, which was not proven
because the complainant did not know and should not have known that
one of the three elements in Policy 4(a) was absent).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 domain name REMAIN WITH
Respondent.
Paul M. DeCicco, Panelist
Dated: April 12, 2014
