ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
Complainant: Eric H. Bryant
1. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on August 14, 2000. The hard copy of the Complaint Form was received on August 21, 2000. Confirmation of payment was received on August 15, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the required contact Information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
These inquiries lead the Clerk of eResolution to the following conclusions: the Registrar is Network Solutions Inc., the Whois database contains all the required contact information, the contested Domain Name aseenontheinternet.com resolves to an inactive Web page. The Complaint is administratively compliant.
An e-mail was sent to the Registrar by eResolution Clerk's Office to obtain a copy of the Registration Agreement on August 15, 2000. The requested information was received August 16, 2000.
The Clerk's Office proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2(a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.
The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on August 23, 2000. That date is the commencement date of the administrative proceeding.
On August 23, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
Emails to the firstname.lastname@example.org were returned 'undeliverable'. The faxes were unsuccessful.
The complaint, official notification and all the annexes were sent via FEDEX to the Respondent. According to the FEDEX tracking system, all were delivered.
The Respondent submitted a late response on September 12, 2000, by e-mail to eResolution. The response was not initially posted because it was filed late.
On September 12, 2000, the Clerk's Office contacted Mr. Alfred Frawley, and requested that he act as panelist in this case.
On September 13, 2000, Mr. Alfred Frawley accepted to act as panelist in this case and filed the necessary Declaration of Independent and Impartiality.
On September 18, 2000, Mr. Alfred Frawley agreed to accept the late-filed response on the condition that Complainant be afforded the opportunity for a reply. The reply, styled as a rebuttal, was timely filed on September 21, 2000. Both the response and the rebuttal, with their respective associated annexes, were placed online.
2. Factual Background
The Complainant, Eric H. Bryant, has obtained a registration for the mark AS SEEN ON THE INTERNET on the Supplemental Register of the United States Patent and Trademark Office. The mark, Registration Number 2,183,163, in International Class 35, covers the following services: "Promoting the goods and services of others by placing advertisements, and printed advertisements, on radio and television, and in other print display and electronic media." The Respondent, Norman Yerke, has registered the domain name asseenontheinternet.com. Presently the url locator does not point to an active website. Instead, one encounters the legend "page cannot be displayed". Registrant does not appear to be using the domain name in connection with any goods and services. Complainant asserts, and the evidence shows, that the Registrant has attempted to sell the domain name on an Internet auction site, namely "greatdomainsauction.com", and the site has solicited a bid of $4,000,000.
3. Discussion and Findings
To qualify for a remedy, the Complainant bears the burden of proving each of the three elements set forth in paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999 ("the Policy"). The Complainant must show:
(1) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (emphasis supplied);
(2) The 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.
These factors are discussed below.
Complainant's claim rests on the undisputed fact that he has obtained a registration for the term AS SEEN ON THE INTERNET on the Supplemental Register of the U.S. Patent and Trademark Office (Registration No, 2,183,163). In the view of the Panel, this, without any further showing, does not suffice. Registration on the Supplemental Register occurs when an applicant seeks registration for a mark that is descriptive in nature and has not yet acquired distinctiveness in the trade.
To be sure, to successfully invoke the ICANN UDR process, a mark owner may, in appropriate circumstances, rely upon a registration on the Supplemental Register and, in fact, may rely simply on rights in a common law mark which has never been registered. This Panel has upheld a claim based upon a common law mark in Automobile Atlanta v. Dempsey, AF-0173. However, in the case of either a common law mark or a mark registered on the Supplemental Register, a Complainant must show that the mark is used as a trademark or service mark and in such use, the mark has acquired distinctiveness for the Complainant's goods or services. This, Complainant has not done.
The bare registration on the Supplemental Register cannot carry the day. Registration on the Supplemental Register does not serve as prima facie evidence of distinctiveness. Nor does it preclude a Complainant from making such a showing. But, a showing must be made and it has not been done here. Without evidence of the strength and distinctiveness of the mark AS SEEN ON THE INTERNET, there can be no finding of confusing similarity by Respondent. Complainant's registered term and Respondent's domain name are identical (save for the spacing between words), but if Complainant's term is not shown to function as a mark, and has not acquired distinctiveness as a mark, there is no confusing similarity between the term and the alleged offending domain name.
Registration on the Supplemental Register is an indication that the mark has not acquired distinctiveness, at least at the time of the registration. Although registration on the Supplemental Register is not a deemed admission of a lack of acquired distinctiveness, 15 U.S.C. sec. 1095, the applicant (Complainant in this case), in order to press its rights, if any, in the mark against others must establish through record evidence that the mark has acquired distinctiveness. Complainant has not done that on this record. The Complaint simply noted the fact of Supplemental Register status. On rebuttal, the Complainant offered examples of the use of the term, but this evidence, in fact, undermines his case. A close review of the Annexes supplied by the Complainant shows that the term AS SEEN ON THE INTERNET is not used as a source identifier, but rather, simply as the name of his company. See e.g. "Annex -Services" which uses the term only as a mailing address for the services promoted by the site under the EGOLDNUGGETS service mark. See also "Annex- Untitled", which refers to the Complainant as doing business under the name "As Seen On the Internet ® Advertising". These uses do not appear to be functioning as a trademark for the registrant's claimed services, namely "promoting the goods and services of others by placing advertisements, and printed advertisements, on radio and television, and in other print display and electronic media". The use of the term is simply, in Complainant's examples, incorporation of the term into his business name.
There is no evidence offered by Complainant, as there must be, that his use of the mark or that the mark, in use, has acquired distinctiveness in the marketplace to operate as a source identifier for his services. The Panel notes that the mark was registered on the Supplemental Register on August 18, 1998 based upon a date of first use in commerce of December 31, 1995. Accordingly, nearly four years of use have passed since the date of first use and, if it existed, Complainant would have at its disposal, ample evidence of how the mark, on its surface highly descriptive, has acquired distinctiveness and secondary meaning in the marketplace.
Since Complainant shows no rights in a mark sufficient to require transfer of the domain name, he has failed to meet the first requirement of the ICANN UDRP. Accordingly, the Panel does not address the second and third requirements (legitimacy and bad faith). The Panel is constrained to observe, however, that the lack of evidence of distinctiveness which attends Complainant's registered term would render much of the analysis under the bad faith requirement null, since there is not, nor could there be, evidence of marketplace confusion or advantage-taking on the part of the Respondent. Nor is there any evidence, prior to registration of the domain name, that Respondent was aware of Complainant's use of the term. Unlike registration on the Principal Register, registration on the Supplemental Register does not create constructive notice upon Respondent. Complainant points to Respondent's attempt to sell his domain name registration (after, apparently, being contacted by Complainant) for $ 4 million at auction as evidence of bad faith. However, in the Panel's view, fantastical, irrational exuberance on Respondent's part would not, standing alone, be bad faith, particularly where Complainant has not shown secondary meaning in an otherwise descriptive mark.
As the most appropriate remedy for the circumstances of this dispute, I determine that the Complaint should be dismissed.
This decision of the Administrative Panel in Case No. AF-0315 was rendered on the 15th of October, 2000.
North Yarmouth, Maine, U.S.A.
(s) Alfred C. Frawley