Using ICANN's UDRP: Response

IN FRONT OF THE WORLD INTELLECTUAL PROPERTY ORGANIZATION

Allocation Network GmbH)

)

Complainant,)

)

v.) Case No. D2000-0016

)

Steve Gregory)

)

Respondent.)

Response to Complainant’s Answer to Respondent’s Response

Respondent Steve Gregory, by his attorneys D’Ancona & Pflaum LLC do hereby state as follows:

1. STANDARD: Complainant states the proper standard as established in the Uniform Domain Name Dispute Resolution Policy, but has not established that the standard has been satisfied.

2. SIMILARITY: Complainant argues that the ALLOCATION mark and the ALLOCATION.COM domain name are confusingly similar, and that the famousness of its mark is not an issue. While the domain name matches the Complainant’s trademark registration, the Complainant is not using the mark that appears in its registration as a source identifier for goods and services. Rather, the Complainant uses ALLOCATION NETWORK as its trademark, not ALLOCATION. See http://www.allocation.net/. Complainant obtained a trademark registration by paying a filing fee, not by use of the mark. This brief constitutes a formal request that the Complainant file a cancellation of its registration. Complainant has shown no use of its alleged mark or the Respondent’s domain name that will lead to confusion or dilution. While the fact that the Complainant’s mark is not famous may be irrelevant to the similarity analysis, it is very significant to the other § 4A factors, as set forth below.

3. LEGITIMATE INTERST: Complainant states that the Respondent has no legitimate interest in the ALLOCATION.COM domain name, and that there is no evidence that Respondent intends to use the domain names he has registered in connection with any goods and services in commerce, and cites in support of this proposition Stella D’oro Biscuit Co., Inc. v. The Patron Group, Inc., Case No. 2000 012 (available at http://arbiter.wipo.int/domains/decisions/html/d2000-0012.html hereinafter Stella D’oro) and Nabisco Brands Company v. the Patron Group, Inc., case No. 2000 0032 (available at http://arbiter.wipo.int/domains/decisions/html/d2000-0032.html hereinafter Nabisco).

A. Respondent is legitimately using the domain names, not to label goods and services, but as his goods and services. However, he is not engaging in the conduct the Nabisco and Stella D’oro Panels (the same arbitrator decided both cases) found objectionable, namely, “to trade on the value of the marks it has registered as domain names to the long-time owners of the marks or by otherwise interfering with the owners’ rights to use their marks in commerce.” (Stella D’oro at 5. c., Nabisco at 5.c.) It is not the case, as the Stella D’oro Panel found in the case before it, that the Respondent’s “averment that it purchased only ‘selected domain names that the respondent feels do not conflict with trademarks’ simply does not ring true.” (Stella D’oro at 5.b.(1).) And it is not the case that the only possible innocent uses for the Respondent’s domain names are only “wishful fantasizing” as the Nabisco Panel found (Nabisco at 5.b.).

B. The Panel is invited to peruse the listing of Respondent’s domain names available at http://www.RockBottomDomains.com/domains/ to see that Respondent is not in the same class as the Respondent in the Stella D’oro and Nabisco cases who registered domain names “identical or virtually identical to registered U.S. trademarks of other companies, such as Nestle, General Mills, Nabisco, AT&T, Pfizer, Proctor & Gamble, and Warner-Lambert.” In this regard, the famousness of the Claimant’s mark is very significant. (Nabisco at 4.b., Stella D’oro at 4.b.) In finding a lack of legitimate interest, the Panels in Stella D’oro and Nabisco noted that The Patron Group’s registrations “reveal[] many well-known terms used by global companies to denote their products and services.” (Stella D’oro at 5.b.(1)). Here, however, there is no showing that Respondent obtained domain name registrations of famous marks. [FOOTNOTE 1]

B. Furthermore, Complainant goes on at length in its Answer as to how Respondent’s registrations are “infringing” other marks. For there to be an infringement, trademark law looks to whether there is a likelihood of confusion between the goods and services of the trademark holder and the alleged infringer, or whether there is a likelihood of dilution of the mark. Complainant offers no evidence of confusion or dilution to support its claims of infringement. The marks listed by Complainant in its Answer constitute a subset of a subset of Respondent’s domain names—those domain names that Complainant searched, and of those searched, those for which Complainant could find something that looks official from some trademark office somewhere in the world applying to some random class of goods and services. For example, Complainant incredibly alleges infringement of an abandoned application refused registration as evidence of Respondent’s bad faith. (See Complainant’s reference to ADOPTION GUIDE, http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=75607421 which has received an Office Action refusing registration but for which no response was filed within the six month window provided under U.S. trademark law. This definition of infringement, that Claimant would use to take away another’s domain name, is wholly unprecedented in any trademark jurisdiction of which Respondent’s attorneys are aware, much less applied globally across all trademark jurisdictions as Complainant seeks to have done in this case.

C. Complainant states that these “infringements” prove that Respondent is infringing the ALLOCATION “mark” of the Complainant as part of a systematic practice (Answer at p. 8), and that a domain name registrant must “check the worldwide registers of trademark offices whether there are any trademarks, he is infringing...” (Answer at p. 4.) Besides the argument that the existence of a registration is not indicative of infringement, as trademark rights are territorial and line of goods and services limited, Complainant’s argument is brought with unclean hands in this respect. Had Complainant conducted such a search itself, it would have discovered that its domain name registrations (ALLOCATION.NET, ALLOCATION.ORG, ALLOCATION.AT and ALLOCATION.DE, under Claimant’s theory, would be precluded by existing trademark registrations (as shown in the attached World Identical Screening Search) in Canada (Listing # 3, predating the Complainant’s incorporation by ten years and Listing # 5, predating the Complainant’s incorporation by three years) and in Japan (Listing # 27, predating Complainant’s incorporation by six years).

D. Complainant argues that it is undisputed that the ALLOCATION.COM domain name has not been used by Respondent for a domain name for over two years, and cites the Stella D’oro case for the theory that Respondent’s lack of a Web page available at the ALLOCATION.COM domain is indicative of Respondent’s illegitimate intent. First, the domain name was registered less than a year before the complaint was filed, specifically, on March 1, 1999, as can be seen in the “record created” date available at http://www.networksolutions.com/cgi-bin/whois/whois?STRING=allocation.com. Second, the World Wide Web is not the sum total of uses of a domain name on the Internet. The mere presence or absence of a Web site hosted at the domain name is not indicative of whether or not the registrant has rights in a domain name, or whether or not the domain name is in use. Indeed, this is not listed as a factor on whether a registration is made with bad faith.

4. BAD FAITH: Respondent can not contest the fact that he registers domain names and sells them to interested third parties. Such conduct is apparent from Respondent’s Web site. There is nothing wrong with doing so and such activity is indicative of an entrepreneur, not a squatter. There is absolutely no evidence that Respondent is a squatter who intends to register domain names that match trademark holders’ marks in order to sell them to the trademark holders.

A. Complainant cites Robert Ellenbogen v. Mike Pearson, Case No. D00-0001 (available at http://arbiter.wipo.int/domains/decisions/html/d2000-0001.html) for the proposition that an attempt to sell the domain name to anyone constitutes bad faith. This case was a default judgement where the Respondent’s only contact with the arbitration consisted of two e-mail messages asking that the domain name be taken away, as the Respondent had been unsuccessfully trying to get rid of the domain for some time—hardly an analogous case or one of strong precedent to the case at issue here.

B. Complainant also cites Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003 (available at http://arbiter.wipo.int/domains/decisions/html/d2000-0003.html) for the proposition that inaccurate registration information had a “severe impact” in the Panel’s finding, and for the proposition that mere registration may show bad faith. While the issue of the out-of-date registration information was addressed in our Response to the Complaint, a more significant reason for the Panel’s holding in the Telstra case, again, a default judgment where the Respondent did not appear to defend his actions, was that "[g]iven the Complainant’s numerous trademark registrations for, and its wide reputation in, the word <TELSTRA> . . . it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name <telstra.org>. It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration.” (Telstra at 7.7.) Again, although the Claimant in this case states that the fame of a mark is not relevant to a showing of bad faith, the Telstra Panel found crucial to its decision that the Respondent at issue registered a globally famous mark. Such a factor is not present in this case.

C. The Telstra case also stands for the proposition that bad faith must be shown at the time of registration and use of the domain name (Telstra at 7.3-7.6). At the time of registration, Respondent had never heard of Complainant, and had no intent to sell the ALLOCATION.COM domain name to any trademark holder. To this day, even following registration, Respondent has no intent to engage in any conduct listed in the Rules as being indicative of having a bad faith intent to trade on the mark of another or bad faith for the purposes of such a dispute resolution proceeding as this.

D. Claimant’s final cited case is American Vintage Wine Biscuits, Inc. v. Shane Brown, Case No. D00-0004 (available at http://arbiter.wipo.int/domains/decisions/html/d2000-0004.html). The case, another default, is cited for the proposition that failure to use a domain name for two years can be used to infer that the registration was in bad faith. Such a presumption is not appropriate to this case. Not only has Claimant not had a registration for the domain name for two years, the American Vintage panel held that “we believe the respondent’s failure to present any evidence must be considered on the issue of bad faith. Mr. Brown’s comment, ‘Well, you will probably have to sue me,’ indicates a general awareness of his right to defend himself, thus his failure to do so seems particularly significant. In the Commencement Notification, respondent was informed that Paragraph 14 of the Rules for Uniform Domain Name Dispute Resolution Policy provides that the Panel ‘may draw such inferences from your default as it considers appropriate.’ It is a general principle of United States law that the failure of a party to submit evidence on facts in its control may permit the court to draw an adverse inference regarding those facts. Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” (American Vintage, Discussion and Findings section, second to last paragraph.) Respondent in this case, unlike the Respondent in the American Vintage case, is present vigorously defending its rights. There is no default from which to draw an inference adverse to the Respondent. The American Vintage case and its presumptions are not relevant to this matter.

5. CONCLUSION: Respondent is not aware of, and Claimant has not presented, any case in any jurisdiction, including ICANN Uniform Domain Name Dispute Resolution proceedings, that has extended either trademark law or the Dispute Resolution Rules to the significant broad-reaching extent advocated by the Complainant. Steve Gregory is an entrepreneur, not a squatter. As a matter of public policy, squatters should not be allowed to intentionally register famous marks as domain names to ransom to trademark owners. This is not the conduct in which Respondent has engaged. In March of 1999, Steve Gregory sat down with a dictionary, looked up words, and looked to see if they were registered as domain names. The ALLOCATION.COM domain was then acquired. Thinking the domain name might be of value to someone looking for names in the financial services industry, he acquired the name. To argue that a five person German company, that merely paid a filing fee to the local trademark office to obtain rights in a mark that it is not even using properly to this day, should now be given unprecedented global protection by being allowed to reserve its alleged mark in every international top level domain, displacing current registrants and precluding other mark holders which may have superior rights from obtaining any international top level domain registration is unwarranted, unnecessary, unjust, and a dangerous precedent. There has been no showing of bad faith, Respondent does have a legitimate interest in the ALLOCATION.COM domain name, and the ALLOCATION.COM domain name is not virtually identical to the ALLOCATION NETWORK mark used (and registered as a .com domain name) by Claimant. Claimant’s argument fails under the Uniform Rules. There has been no showing of likelihood of confusion or likelihood of dilution. Claimant’s argument fails under traditional trademark law.

6. A copy of this Response has been forwarded to the Complainant, the arbitrator, and the Case Administrator.

7. 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 the applicable law, as it now exists or it may be extended by a good faith and reasonable argument.

Respectfully submitted,

Steve Gregory

By: /s/ David J. Loundy

One of His Attorneys

FOOTNOTES:

Footnote 1: The Panelist in the Stella D’oro and Nabisco cases states that whether or not a mark is famous carries no weight (Nabisco at 5.a.), a point cited in this case by Complainant in its Answer, however, the Panel bases its decision on circumstantial evidence, including the fact that The Patron Group registered names that match well-known marks of global companies (Nabisco at 5.b.1, Stella D’oro at 5.b.1), thus the Complainant’s and the Panelist’s claim that the famousness of a mark has no bearing on the good faith issue is not supported by the factors the Panelist explicitly stated guided his decision.