Airpet Animal Transport, Inc. v. Marchex Sales, Inc / Brendhan Hight
Claim Number: FA1211001470056
Complainant is Airpet Animal Transport, Inc. (“Complainant”), represented by Mark W. Good of Terra Law LLP, California, USA. Respondent is Marchex Sales, Inc / Brendhan Hight (“Respondent”), represented by John Berryhill, Esq., PhD, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <petexpress.com>, registered with eNom, inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Brown QC, Judge Carolyn Marks Johnson and Houston Putnam Lowry, Chartered Arbitrator, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 6, 2012; the National Arbitration Forum received payment on November 6, 2012.
On November 7, 2012, eNom, inc. confirmed by e-mail to the National Arbitration Forum that the <petexpress.com> domain name is registered with eNom, inc. and that Respondent is the current registrant of the name. eNom, inc. has verified that Respondent is bound by the eNom, 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 November 7, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 27, 2012 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 firstname.lastname@example.org. Also on November 7, 2012, 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 November 27, 2012.
Complainant submitted an Additional Submission that was received and determined to be timely on December 3, 2012.
Respondent submitted an Additional Submission that was received and determined to be timely on December 10, 2012.
On December 13, 2012, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed The Honourable Neil Brown QC, Judge Carolyn Marks Johnson and Houston Putnam Lowry, Chartered Arbitrator as Panelists.
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.
Complainant requests the domain name be transferred from Respondent to Complainant.
Complainant has significant common law rights in the mark PET EXPRESS by virtue of its continuous use of the mark in commerce since 1978 to provide pet transportation services under the PET EXPRESS mark. A complainant does not need to hold a registered trademark in order to establish rights in a mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy P 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy P 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant also has rights in the mark PET EXPRESS, as evidenced by Complainant's United States trademark registration no. 4,004,320 for the PET EXPRESS mark as used to provide pet transportation services since 1978 and registered ... Panel decisions have consistently held that registration of a mark is prima facie evidence of validity, which Respondent bears the burden of refuting. See Savin Corp. and Ricoh Corp. v. Kent S. Schisler, FA 294206 (Nat. Arb. Forum Aug. 25,2004) (stating that "[r]egistration of a mark is prima facie evidence of validity."); (http://www.arb-forum.com/domains/decisions/294206.htm). Since at least June of 2001, Complainant has also provided its services under the mark PET EXPRESS through the domain <petmove.com>. Id. (Whois Database search results for the domain <petmove.com>.)
Complainant is the sole source of quality control and direction for the PET EXPRESS mark, used to provide pet transportation services for others. Complainant has used the PET EXPRESS mark in connection with pet transportation services since 1978. Further, Complainant has used the PET EXPRESS mark in connection with the provision of PET EXPRESS services via the domain <petmove.com> since June, 2001 and Complainant’s website, located at http://www.petmove.com/.
Complainant has spent thousands of dollars in advertising and promoting the PET EXPRESS mark in connection with its’ PET EXPRESS services, averaging expenditures in excess of $20,000.00 annually during the last several years. By virtue of this long use, and extensive advertising and promotion, the PET EXPRESS mark has become well-recognized and famous as used to provide its services under the PET EXPRESS mark.
A. THE DOMAIN NAME IS CONFUSINGLY SIMILAR TO THE PET EXPRESS MARK.
The Domain Name <petexpress.com> is confusingly similar to the PET EXPRESS
mark. Because the Domain Name focuses on and relies upon Complainant's registered, strong and well-recognized mark PET EXPRESS, and because it is an exact copy of Complainant’s trademark, the Domain Name is confusingly similar to the PET EXPRESS Mark.
The domain name <petexpress.com> includes the entire trademark of Complainant, while adding only the generic top-level domain (gTLD) .com and removing the space between the terms. The Respondents disputed domain name is confusingly similar to Complainants mark under Policy P 4(a)(i) because the changes fail to differentiate the domain name from the mark. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.); see also Bond & Co. Jewelers, Inc. v. Tex. Intl Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainants mark under Policy P 4(a)(i)).
C. RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DOMAIN NAME.
Respondent has no rights or legitimate interests in respect of the Domain Name because (1) Respondent is not using, and has never used, the Domain Name in connection with a bona fide offering of goods and services; (2) Respondent is not, and has never been, commonly known by the Domain Name; and (3) Respondent is not making, and has never made, a legitimate non-commercial or fair use, without intent for commercial gain, of the Domain Name.
1. No Use in Connection With a Bona Fide Offering of Goods or Services.
Respondent is not using, and has never used, the Domain Name in connection with a bona fide offering of goods and services. Respondent's use of the Domain Name is not bona fide because (a) Respondent is not authorized to use the PET EXPRESS Mark, (b) Respondent uses the Domain Name to promote the sale of competing products and services, and (c) Respondent registered and uses the Domain Name with the intent to confuse consumers.
a. Respondent is Not Authorized to Use the PET EXPRESS Mark.
Respondent uses the Domain Name in the promotion of competitive products and services. The only use Respondent has made of the domain name <petexpress.com> was to provide links offering for sale goods and services in the same market as Complainant’s goods. Such use of the domain name containing Complainant’s trademark also is evidence of bad faith. See Arizona Mail Order, Inc. v. INSS, FA 99757 (Nat. Arb. Forum Oct. 22, 2001) (finding that respondent’s use of a confusingly similar domain name for commercial gain is evidence of bad faith).
Registering and using a domain name that is known to contain another’s trademark evidences bad faith registration of that mark. See Umbers & Toltec Scenic R.R. Comm’n v. Ravin, FA0 99599 (Nat. Arb. Forum Oct. 30, 2001) (holding respondents’ knowledge of complainant’s mark and use of the mark in the railroad business to evidence registrants’ bad faith use of the mark for a domain name offering railroad services); see also Trump v. Graham, FA 100177 (Nat. Arb. Forum No. 2, 2001) (holding respondent’s likely knowledge of the TRUMP mark to evidence bad faith).
Respondent has intentionally caused confusion with the PET EXPRESS mark and continues to intentionally use the domain name in bad faith. Respondent, with the intent to operate a website with links to businesses selling goods and services competitive with the services provided by Complainant, registered a domain name that incorporates the PET EXPRESS mark in its entirety, namely “PET EXPRESS.” Initially, the domain was used by Respondent only as a “holding page” listing the domain for sale with contact information for Respondent. Subsequent to Complainant contacting Respondent in an attempt to purchase the domain, Respondent then changed the website using it in connection with a business Web site linking to other sites selling goods and services in the same field and competitive with the services provided by Complainant under the PET EXPRESS mark.
Respondent, by its wholesale copying of Complainant’s trademark, and listing of links to websites selling similar pet related products and services undoubtedly was aware of Complainant’s significant market presence in the industry in which Respondent listed links to goods and services competitive with Complainant’s goods.
In addition, Respondent's use of the PET EXPRESS mark is not bona fide because Respondent is not authorized to use the PET EXPRESS mark. Prior decisions have held that Respondent's use of Complainant's mark without authorization to sell even genuine products of Complainant is not bona fide. See, e.g., Robert F. Lopez et. al. v. Shurhold Indus., Inc./Key West Sandal Factory, FA 399602 (Nat. Arb. Forum Mar. 1, 2005) (finding no bona fide use where Respondent used Complainant's mark without authorization to attract Internet users to its website, which offered Complainant's products for sale); (http://www.arb-forum.com/domains /decisions/399602.htm); Alticor, Inc. v. Yong Zhang, FA 450803 (Nat. Arb. Forum May 31,2005) (finding that Respondent's unauthorized use of confusingly similar domain names to sell Complainant's products is not bona fide.); (http://www.arb-forum.com/domains/ decisions/450803.htm).
b. Respondent Uses the Domain Name to Promote Competitive Products.
Respondent's use of the Domain Name is not bona fide because Respondent uses the Domain Name to promote pet related products and services, unrelated to Complainant. When the domain name in dispute contains links to commercial sites selling unrelated or competing products, the offering is not bona fide. See, e.g., The Gillette Co. v. RFK Assoc., FA 492867 (Nat. Arb. Forum Jul. 28, 2005) (finding no bona fide use where Respondent's <duracellbatteries.com> website promoted not only DURACELL brand batteries, but also contained a link to a website selling competing EVEREADY brand batteries); (http://www.arb-forum.com/domains/ decisions/492867.htm); The Napoleon Hill Foundation v. Leah Bguyong, FA 520085 (Nat. Arb. Forum Sept. 13, 2005) (finding no bona fide use where Respondent’s website promoted links to unrelated commercial entities); (http://www.arb-forum.com/domains/decisions /520085.htm).
In the present case, Respondent's website consists primarily of links to other commercial websites, which sell products or services related to the pet industry.
The use of links to other website selling related or competitive products is not considered a bona fide use in commerce. See Graebel Van Lines, Inc. v. Texas International Property Associates - NA NA, FA 0805001195954 (Nat. Arb. Forum Jul. 17, 2008); (http://domains.adrforum.com/domains/decisions/1195954.htm). See also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007); (http://domains.adrforum.com/domains/decisions/888651.htm), rejecting the respondents contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)); see also Jerry Damson, Inc. v. Tex. Intl Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007); (http://domains.adrforum.com/domains/decisions/916991.htm), (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)).
c. Respondent Registered and Uses the Domain Name to Attract Internet Users to its Website for Commercial Benefit.
Respondent's use of the PET EXPRESS mark is not bona fide because Respondent registered and uses the Domain Name to attract Internet users to its website for commercial benefit. See Nextel Comm., Inc. v. Jason Greer, FA 477183 (Nat. Arb. Forum Jut 15, 2005) (finding no bona fide use when Respondent registered <nextell.com> with the intent to confuse consumers looking for Complainant Nextel’s website); (http://www.arb-forum.Com/domains/decisions/477183.htm); Apple Computer, Inc. v. Apple-Computers c/o Marcus Grey, FA 535416 (Nat. Arb. Forum Sept. 22, 2005) (finding no bona fide use where "Respondent is using the <apple-compuers.us> domain name to redirect Internet users to a website that purports to be an authorized seller or reseller of Complainant's products, and Respondent is not affiliated with or related to Complainant's business"); (http://www/arb-forum.com/domains/decisions/535416.htm).
In the present case, Respondent uses the domain <petexpress.com>, in a manner that is confusingly similar to the PET EXPRESS mark, listing links to vendors selling competitive products and services for commercial gain. Not only is the Domain Name itself confusingly similar to the PET EXPRESS mark, but Respondent's website falsely suggests to the consumer that a closer relationship exists between Complainant and Respondent than actually exists. Clearly, Respondent is taking advantage of the goodwill associated with the PET EXPRESS Mark and cannot defend such use of the Domain Name as bona fide. See Savin Corp. and Ricoh Corp. v. Kent S. Schisler, FA 294206 (Nat. Arb. Forum Aug. 25,2004); (http://www.arb-forum.com/domains /decisions/294206.htm). As such, Respondent has no rights or legitimate interests in the Domain Name.
d. Respondent Has No Legitimate Right To Use The PET EXPRESS Mark
The mark PET EXPRESS is neither a generic nor descriptive term. On the contrary, it is identical to Complainant’s distinctive service mark used by Complainant for the past 34 years. Therefore, Respondent cannot make the argument that its use of the disputed domain name constitutes a legitimate interest, even under the liberal standards that permit domain name monetization.
The use of generic and descriptive terms as domain names for redirecting Internet traffic to websites with sponsored advertising is also questionable. Arbitrators have held that such domain name monetization is not specifically approved as a bona fide commercial activity, because domainers do not use their domain names in connection with the offering of goods or services. See Media Gen. Commc’ns, Inc. v. Rarenames, WebReg, D2006-0964 (WIPO Sept. 23, 2006) (citing cases). Paragraph 4(c)(i) of the UDRP contemplates a bona fide offering of goods and services by Respondent, rather than simply parking the domain where Respondent or a third party can generate click-through advertising revenues from parties advertising their own goods and services. Mobile Commc’n Serv. Inc. v. WebReg, RN, D2005-1304 (WIPO Feb. 24, 2006); accord, KIS v. Anything.com Ltd.; Gerber Products Co. v. LaPorte Holdings, D2005-1277 (WIPO Feb. 8, 2006).
2. Respondent Has Not Been Commonly Known by the Domain Name.
Respondent has no rights or legitimate interests in the Domain Name because, to the best of Complainant's knowledge, Respondent is not now and has never been “commonly known by” the Domain Name. Prior decisions have held that Whois Database information can confirm that Respondent is not “commonly known by” the domain name in dispute. See, e.g., The Napoleon Hill Foundation v. Leah Bguyong, FA 520085 (Nat. Arb. Forum Sept. 13, 2005) (finding that where Whois Database information listed the registrant of the domain name <thinkand-grow-rich.com> as Leah Bugayong, the registrant was not “commonly known by” the domain name); (http://www.arb-forum.com/domains/decisions/520085.htm).
In the present case, the Whois Database information shows that the Domain Name is registered to “Marchex Sales, Inc” and “Brendan Hight.” Accordingly, Respondent, cannot credibly claim that it is “commonly known by” the Domain Name, and accordingly has no rights or legitimate interests in the Domain Name.
3. Respondent's Use Is Not a Legitimate Noncommercial or Fair Use.
Respondent has no rights or legitimate interests in the Domain Name because Respondent's use of the Domain Name is not a legitimate noncommercial use or fair use, without intent to profit. As demonstrated by the printouts of Respondent's website, Respondent uses the Domain name to market products and services which are competitive to the services offered by PET EXPRESS for a profit. Each of the hyperlinks on the left side of Respondent’s website bring up a new listing of various “Related Search” options for products or services related to pets. This use of the Domain Name is clearly commercial, and intended to generate a profit. Accordingly, Respondent cannot credibly claim that it is making a legitimate noncommercial or fair use of the Domain Name, and thus has no rights or legitimate interests in the Domain Name.
4. Conclusion: Legitimate Rights or Interests.
For all of the forgoing reasons, Respondent has no rights or legitimate interests in the PET EXPRESS mark. Complainant has made a prima facie case in support of its allegations and the burden now shifts to Respondent to prove it has rights or legitimate interests. See Policy 4(a)(ii).
D. RESPONDENT REGISTERED AND USES THE DOMAIN NAME IN BAD FAITH
Respondent registered and uses the Domain Name in bad faith because (1)
Respondent has knowledge of Complainant's rights in the PET EXPRESS Mark, and (2) Respondent is intentionally attempting to attract internet users to its website by creating a likelihood of confusion with the PET EXPRESS Mark. See Policy 4(b)(iv).
1. Respondent Has Knowledge of Complainant's Rights in the PET EXPRESS Mark.
Respondent has knowledge of Complainant's rights in the PET EXPRESS Mark because of the well known and famous status of the PET EXPRESS Mark, as well as Respondent's familiarity with PET EXPRESS services. The unauthorized registration of a domain name incorporating Complainant's mark with actual or constructive knowledge of Complainant's rights in the mark evidences bad faith use and registration. See The Napoleon Hill Foundation v. Leah Bguyong, FA 520085 (Nat. Arb. Forum Sept. 13, 2005) (finding bad faith use and registration of the domain <think-and-grow-rich.net> where Respondent knew of Complainant's registration of the mark THINK AND GROW RICH with the U.S. Trademark Office); (http://www.arb-forum.com/domains/decisions/520085.htm); Alticor Inc. v. Amwayco c/o Yang Zhang, FA 467762 (Nat. Arb. Forum June 8, 2005) (finding bad faith registration and use of the domain name <amwaypower.com> when Respondent had actual or constructive knowledge of Complainant's AMWAY mark); (http://www.arb-forum.com/domains/decisions/467762.htm).
Complainant has used the PET EXPRESS mark in commerce to provide its services since 1978, and through its domain <petmove.com> since 2001. Through extensive use and advertising of the PET EXPRESS mark used with PET EXPRESS services, the PET EXPRESS mark has become well known and famous as applied to PET EXPRESS services. It is by no coincidence that Respondent copied the Complainant’s entire mark as a domain name, and has several commercial links to vendors selling competitive pet products and services.
The Domain Name was not registered until July 2, 2001, well after Complainant began using the PET EXPRESS mark in commerce in 1978, and just days after Complainant registered the domain <petmove.com> on June 28, 2001 to market its services under the PET EXPRESS mark. When Complainant first contacted Respondent with regards to purchasing the domain and advised Respondent of Complainant’s use of the PET EXPRESS mark in commerce since 1978, Respondent told Complainant that it could not be compelled to transfer the domain because Complainant did not have a registered trademark. Instead of consulting with a trademark attorney regarding its rights to the domain, Complainant then applied for and obtained a registration for the PET EXPRESS mark based on its use in commerce of the mark since 1978. In addition, Respondent's manner of use of the Domain Name, namely, to market competitive products and services using the PET EXPRESS Mark, clearly shows that Respondent has actual knowledge of the PET EXPRESS mark. Such knowledge of the PET EXPRESS mark evidences bad faith registration use and registration of the Domain Name.
As a professional Cybersquatter, Respondent is no stranger to UDRP proceedings. In a similar case involving Respondent, the Panel held that:
Respondent suggests that it acquired the at-issue domain name entirely because of its descriptive value. However its method of wholesale bulk acquisition of domains comprised of facially generic terms makes it no surprise that its portfolio will, with a high degree of certainty, contain trademarks. . . .
Respondent apparently believes that it has found a loophole whereby it may register trademarked domain names, traffic in such names, offer such names for sale to the trademark holder, or otherwise profit from the fact that the registered domain name has trademark value apart from, and in addition to, its descriptive value but [nevertheless] not have any exposure from a UDRP action. The Panel disagrees. . . .
It thus seems disingenuous for Respondent to claim it acquires domains because of the target domain names descriptive value. And even if Respondents motivation is as stated, the fact that Respondent cares not that it also is acquiring trademarked names is troubling and further calls into question the bona fide nature of Respondents endeavors. . . .
. . . Respondent must have been aware that at least some of the domain names in the lot it purchased were trademarked by other parties despite the fact that they may have also been combined generic terms. But Respondent did not bother to exercise even the most trivial inquiry as to the trademark status of the at-issue domain name before trading on it.
What it would have in fact concluded upon doing such a check seems irrelevant given that by not investigating it shows Respondent’s indifference to the rights of actual mark holder(s). This indifference is at Respondent’s peril and indicates bad faith where, as here, the domain name is the trademark of another and where, as here, the domain name is used to direct Internet users to a website which contains links to Complainant’s competitors and otherwise attempts to trade on the trademark value of Complainant’s mark for commercial gain.
Superior Play Systems, Inc. v. Marchex Sales / Brendhan Hight, FA1103001379684 (Nat. Arb. Forum May 23, 2011)
2. Respondent Is Intentionally Attempting to Attract Internet Users to Its Website by Creating a Likelihood of Confusion as to Source, Sponsorship, Affiliation or Endorsement.
Respondent is engaging in bad faith registration and use of the Domain Name because, as discussed above, Respondent's website falsely suggests an affiliation with Complainant. Bad faith registration and use exists when Respondent uses the Domain Name with the intent to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's mark as to source, sponsorship, affiliation or endorsement. See Policy 4(b); Apple Computer, Inc. v. Apple-Computers c/o Marcus Grey, FA535416 (Nat. Arb. Forum Sept. 22, 2005) (finding bad faith where Respondent used the domain <apple-computers.us> to redirect Internet users to a website falsely purporting to be an authorized seller and reseller of Complainant's products); (http://www.arb-forum.com/domains/decisions/535416.htm); Stanley Logistics, Inc. v. Motherboards.com, FA 128068 (Nat. Arb. Forum Dec. 2, 2002) (finding that Respondent, through use of Complainant's mark to redirect Internet users to a website selling Complainant's product, placed itself without Complainant's consent in a preferred position with respect to other distributors, which caused consumer confusion and evidenced bad faith registration and use of the domain name); (http://www.arb-forum.com/domains/decisions/128068.htm).
As discussed above, Respondent has actual knowledge of the PET EXPRESS mark due to Complainant's longstanding prior use and promotion of, the PET EXPRESS mark for more than twenty years prior to the registration of the Domain Name. Respondent clearly registered and is using the Domain Name for the purpose of attracting customers to Respondent's website <petexpress.com> where it hosts numerous links to websites selling pet related products and services for commercial gain. In fact, Respondent's website contains material intended to confuse consumers into believing a closer relationship exists between Respondent and Complainant than actually exists. This confusing material includes Complainant’s mark displayed prominently at the top of its website stating: “petexpress.com”
However, as noted above, Respondent does not have any permission from Complainant to register or use the Domain Name. Without such an agreement, Internet users will mistakenly assume that Complainant and Respondent are affiliated, and that Complainant endorses Respondent's use of the PET EXPRESS mark. See AWcor Inc. v. Amwayco c/o Yong Zhang, FA 467762 (Nat. Arb. Forum, June 8, 2005) (finding that "a consumer searching for Complainant could be confused as to Complainant's affiliation with the resulting website. Therefore, Respondent's opportunistic and commercial use of the disputed domain name represents bad faith ..."); (http://www.arb-forum.com/domains/decisions/467762.htm).
3. Respondent Acquired The Domain To Sell To Complainant Or A Competitor
In Rovert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001, it was held that:
"paragraph 4(b) of the Policy sets out without limitation three examples of circumstances that if found "shall be evidence of the registration and use of a domain name in bad faith." Subparagraph (i) lists circumstances that the respondent acquired the domain name primarily for the purpose of selling it to the complainant or a competitor. Here the evidence in the documentation submitted shows only one purpose selling for profit for respondent's acquisition or registration of www.musicweb.com. There is no indication of any other actual or intended use of the domain name. The panel therefore concludes that the circumstances presented in this default proceeding qualify as sufficient evidence of registration and use in bad faith within the meaning of paragraph 4 of the Policy and applicable legal principles".
Respondent appears to be primarily in the business of selling domain names. At the bottom of the Respondent’s home page, it states: “This domain may be for sale. Click here for more information.” When this hypertext link was clicked on August 24, 2012, the domain was listed for sale at $100,000. At the top of the web page in bold large letters it stated “Please Make Us an Offer.” The web page also stated:
We are a leading local search and performance advertising company. Every day, we connect millions of local consumers and businesses. One of several ways we accomplish this is through the operation of Internet Web sites corresponding to generic domain names. Therefore, we own a portfolio of domain names, only some of which may be available for sale. In order for us to assess your inquiry, please provide us the information below. We will contact you if there is an interest in your offer.
After the notice of infringement letter was sent to the Respondent on September 12, 2012, this page was changed slightly, with the header stating in large bold letters “This domain may be for sale – Request Price.” In addition, the $100,000 price was gone and a “Price Range” box was inserted allowing the potential buyer to select a price range. Finally, another disclaimer was listed on the page which stated “I understand the minimum selling price for generic domains is $50,000. The domain(s) above [referring to <petexpress.com>] may be significantly more or may not be available for sale.”
Here, Complainant contacted Respondent in 2009 to purchase the “for sale” domain, which was only used as a holding page, offering $250.00 for the <petexpress.com> domain, which Complainant reasonably estimated to compensate the owners out of pocket costs for an unused domain with no active website. Respondent rejected this offer and instead demanded that Complainant pay Fifty Thousand Dollars ($50,000.00) for the Domain. Respondent further told Complainant that Complainant could not compel transfer of the domain without a registered trademark, and shortly thereafter significantly modified the website, adding a number of links to the website under the domain to other commercial websites selling products and services, most related to “pets” in some form or another.
Numerous decisions have held that it is bad faith where Respondent has made no use of a domain name other than to offer it for sale at a price that substantially exceeds its out-of-pocket costs of registration, as the price would largely be based on the trademark of the Complainant. COMPAGNIE GERVAIS DANONE v. Zhenglingyan, Lingyan Zheng, D2008-1955 (WIPO Feb. 23, 2009); General Electric Company v. John Bakhit, D2000-0386 (WIPO June 22, 2000); 3636275 Canada, dba eResolution v. eResolution.com, D2000-0110 (WIPO April 10, 2000); Educational Testing Service v. TOEFL, D2000-0044, (WIPO March 16, 2000). Given Respondent's behavior in connection with the <petexpress.com> Domain Name, Respondent clearly registered and uses the Domain Name in bad faith.
E. CONCLUSION AND REMEDY SOUGHT: THE DOMAIN NAME SHOULD BE TRANSFERRED FROM RESPONDENT TO COMPLAINANT.
Respondent's Domain Name <Petexpress.com> is confusingly similar to the PET EXPRESS mark, in which the Complainant has rights. The Domain Name should be transferred from Respondent to Complainant because: (A) the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights; and (B) Respondent has no rights or legitimate interests in respect of the Domain Name; and (C) the Domain Name was registered and is used in bad faith. See Policy 4(a); Rule 3(b)(x).
This Proceeding concerns a descriptive term in which the Complainant’s alleged date of acquired distinctiveness in its US trademark registration, issued under Section 2(F) of the Lanham Act long post-dates the Respondent’s acquisition and use of the domain name. As will be discussed herein, the Complaint is misleading with respect to the activities claimed therein to have been carried on by the Complainant, which itself did not exist prior to acquisition of the domain name by the Respondent in relation to this non-exclusive term, of which the Respondent informed the Complainant three years ago.
II. Identity or Confusing Similarity
The first criterion required to be proven by the Complainant is that the domain name is identical or confusingly similar to a trade or service mark in which the Complainant has rights. The Complainant proffers a number of items to advance the first criterion, which will be discussed in turn below. However, a fundamental and recurring set of objectively misleading statements throughout the Complaint render this to be something of a challenge, and must first be discussed, so that the remaining discussion is understood to be contingent on the Complainant’s burden to explain these misleading statements.
A. Complainant Did Not Exist Prior To April 2005
We must first pause at the very first sentence of the “Factual and Legal Contentions” of the Complaint, which was certified to be “complete” by the Complainant:
“Complainant has significant common law rights in the mark PET EXPRESS by virtue of its continuous use of the mark in commerce since 1978 to provide pet transportation services under the PET EXPRESS mark.”
The Complaint is rife with assertions of similar import, such as:
“Complainant has used the PET EXPRESS mark in connection with pet transportation services since 1978.”
These statements, in the form set forth, and annotated above to emphasize the subject-verb correspondence, are categorically false. The Complainant in this Proceeding is Airpet Express Inc., identified in the Complainant’s recently-issued federal trademark registration as a corporation of the State of California. According to the California Secretary of State, Complainant was formed on April 11, 2005. The Complainant was, most assuredly, not doing anything “since 1978”. Nowhere does the Complaint claim any connection with a predecessor in interest in relation to the alleged mark, and nowhere does the Complaint refer to or show an assignment of such alleged rights from a predecessor in interest.
While the Complainant may seek to supplement the record in relation to the fact that the Complainant did not exist until April 11, 2005, the Policy is intended to provide a streamlined procedure for the resolution of disputes. Hence, filings under the Policy are required under UDRP Rule 3 to bear a certification averring:
“Complainant certifies that the information contained in this Complaint is to the best of Complainant's knowledge complete and accurate […]”
Knowing full well that it did not exist until 2005, the Complainant has certified the Complaint here to be “complete and accurate”, while it includes dozens of statements which are simply untrue in relation to activities which are stated to have been conducted by the Complainant, and no other, prior to April 2005. While the Complainant may have believed it to be in some manner “convenient” to omit this basic information, the fact is that with respect to any activities alleged to have occurred before 2005, we are left with no clue whatsoever who engaged in them and why the Complainant may seek, in the shortened supplemental response period, to attempt to explain the clearly and objectively misleading statements throughout the Complaint which allege the Complainant to have been conducting activities before its own existence. Were these activities conducted by others? Who were they? When and how did they assign their claimed rights to the Complainant? How were those others organized, and on what basis is such an assignment – not of record here – to be considered effective? Was this claimed goodwill purchased or licensed? Is it still licensed? Does the Complainant actually own such rights? We certainly have no idea, due to the Complainant’s obvious and deliberate decision to make statements which are objectively false, in a filing which is, by any reasonable measure, not “complete” with respect to critical facts concerning these alleged activities.
Hence, for the purpose of preparing a somewhat comprehensible Response, it must first be noted that the Respondent is not willing to take on faith whatever the Complainant may throw together and submit under Forum Supplemental Rule 7 to attempt to paper over this factual gap, of which the Complainant could not have been unaware when it filed the Complaint and certified it to be “complete and accurate”. It was obviously both incomplete and inaccurate, and contains numerous assertions as to activities conducted “by the Complainant” and involving parties which are nowhere identified in the Complaint. Accordingly, the remainder of the Response, in relation to the Complainant must be considered by the Panel to be prefaced by a contingent proposition taken solely arguendo. As stated, the Complaint is in form for dismissal, for being facially false with respect to every such allegation involving the Complainant’s history, and which are not stated in the Complaint in such a form as to be understood to have been derived by assignment from some anonymous “predecessor” or “predecessors” who, for all we know, may have abandoned their activities, parted on hostile terms, or any number of circumstances which the Complainant has not seen fit to hint at or explain in its “complete and accurate” Complaint.
B. Complainant’s US Trademark Registration
The Complainant proffers US TM Reg. No. 4,004,320 for “PET EXPRESS” issued August 2, 2011 on an application filed in 2009. This registration, of course, long post-dates acquisition of the domain name by the Respondent. The Complainant admits that the application was filed after the Complainant was informed that the Respondent had conducted a search of registered marks in an attempt to substantiate the Complainant’s bare assertion of trademark rights. UDRP Panels have seen this type of behavior before. Lacking any enforceable right, a Complainant then proceeds with a trademark application specifically designed to attempt to re-write history as in:
Kevin Aylward v. GNO, Inc. and Gregg Ostrick
NAF Claim Number: FA0607000751622
“On October 7, 2004, Complainant wrote to Respondent to inquire about buying the name, which Respondent was not willing to sell.
On November 16, 2004, clearly having been aware of the prior registration of the domain name, Mr. Aylward applied to obtain a federal trademark registration for services having nothing to do with the Respondent’s use of the domain name. Complainant then waited until after the registration issued to bring this proceeding.”
However, the first criterion of the Policy is atemporal, and hence this registration facially satisfies the first criterion, and chronological considerations become relevant under the remaining Policy criteria. However, before delving into the activities of the Respondent, it is useful at the outset to make several observations in relation to the Complainant’s claimed rights, as they bear on the scope of the Complainant’s rights and the weight which may be given to other allegations of the Complaint.
Noting that this registration is chronologically irrelevant, the Complaint includes what it purports to be evidence of prior “common law” rights. It is of significant importance under the Policy for the Complainant to prove that it is not a junior party, and that its rights pre-date those of the Respondent, in order to make a case of registration in bad faith. However, the Complainant is not entitled to claim ownership of a distinctive mark prior to the date at which the Complainant itself claimed in connection with prosecution of the proffered US trademark registration. The Panel will note that the proffered registration issued under Section 2(F) of the Lanham Act. In the event any of the Panel are unfamiliar with Section 2(f) of the Lanham Act, it is codified as 15 USC 1052(f), stating:
“Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing herein shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made.”
Accordingly, in connection with a registration under Section 2(f), the relevant inquiry is at what date had the alleged mark become distinctive. After the Complainant filed its application, it was refused as being merely descriptive by the USPTO. In response to such a refusal, the applicant is entitled to attempt to show or declare that the alleged mark, while descriptive, had acquired distinctiveness at an earlier date. As can be seen from Complainant’s responses, the Complainant’s attorney first merely represented:
“The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.”
The Complainant did not allege or present evidence to claim an earlier date upon which the Complainant claims to have acquired distinctiveness in the asserted mark, but instead claimed that it had acquired distinctiveness as of a five year period “immediately before the date of this statement” which statement was dated August 10, 2010. Unfortunately, the Complainant’s attorney refused to actually sign the statement, and for good reason. After the Complainant’s attorney was apparently reminded that a signature is required for a 2(F) declaration, the Complainant’s attorney submitted an electronically signed email declaration on March 17, 2011, declaring that to be the date of acquired distinctiveness.
Hence, the proffered registration demonstrates three things – (1) the Complainant did not contest the USPTO determination that the term at issue is descriptive, but (2) instead, the Complainant acceded to the determination of descriptiveness, and claimed it had acquired distinctiveness in the subject mark as of March 17, 2011, and at no earlier date. Finally, the proffered registration demonstrates that (3) the mark was not deemed, or alleged by the Complainant, to be distinctive as of the alleged date of first use, nor as of the filing date of the application. Finally, the allegation of “first use” in a US trademark registration is not probative of an actually proven date of first use, but is a mere allegation which the USPTO itself does not consider competent evidence in inter partes proceedings. See Trademark Manual of Examining Procedure, TMEP 903.07 (“In an inter partes proceeding, a date of use must be established by appropriate evidence unless the party to the proceeding is entitled to rely on a date by virtue of ownership of a registration or filing of an application.”)
C. Alleged “Common Law” Rights
As noted above, the Complainant did not exist prior to April 2005, and the Complaint provides no connection between activities alleged to have been conducted prior to that date by unidentified parties and the Complainant’s claim of ownership of goodwill accruing therefrom. However, as noted above in connection with Complainant’s proffered registration, the term at issue was deemed inherently descriptive, and nowhere other than in the Complainant’s 2(F) declaration submitted to the USPTO, does the Complainant identify a date at which the Complainant considers the mark to have acquired secondary meaning.
To this end, the Complainant presents no documentary evidence, and relies solely on testimonial evidence in the Declaration of Mark Botten. The Respondent requests the Panel to carefully consider this Declaration. Mr. Botten specifically avers:
“I have personal knowledge of all facts stated in this declaration […]”
wherein we emphasize his averment to “all facts” of the declaration. Mr. Botten avers to be “Director in charge of Sales and New Business Development” for the Complainant. Mr. Botten goes on to aver facts concerning the Complainant at such dates as 2001, and indeed back to 1978. Nowhere in the declaration does Mr. Botten state how long he has held his position with the Complainant.
The Panel is now requested to carefully inspect Mr. Botten’s declaration, which is a profile of Mr. Botten. Presumably, this profile was prepared on the basis of information provided by Mr. Botten, and has been published with his approval, thus constituting admissions chargeable to Mr. Botten. Several facts are apparent, outside of the context of a self-serving declaration made for this Proceeding. Mr. Botten’s biography states:
“Mark relocated from Australia to the USA in 2005 to oversee the expansion of Pet Express throughout the US and global pet relocation markets.”
Mr. Botten’s biography further states:
“Mark joined the Pet Relocation industry in 1994 […]”
The Panel is invited to attempt to square the facts stated in Mr. Botten’s declaration – i.e. that he has “personal knowledge” of the Complainant’s activities prior to 2005, and that such “personal knowledge” dates back to 1978 – when Mr. Botten was not located in the United States prior to 2005, could not have been employed by a non-existent Complainant prior to that date, and admits not to having been engaged in the relevant industry until 1994. Mr. Botten’s sworn statement to have “personal knowledge” of the facts averred in his declaration, likely prepared by counsel for the purpose of this Proceeding, cannot be reconciled with Mr. Botten’s own biographical statement published elsewhere.
Not only is it impossible for Mr. Botten to possess the claimed “personal knowledge” dating to 1978 in an industry he elsewhere admits to not being engaged until 1994, but his declaration establishes no facts which pre-date the Respondent’s registration of the domain name. The Complainant is correct that the first criterion may be satisfied by a showing of evidence establishing common law rights. The Complainant has two problems here. First, the Complainant admitted to the determination of the USPTO that the term at issue is primarily descriptive as of the date of filing its application in 2009. Secondly, the Complainant provides no evidence other than Mr. Botten’s woefully suspect and unsupported declaration. Mr. Botten refers to such vagaries as advertising:
“averaging expenditures in excess of $20,000.00 annually during the last several years. In fact, approximately $40,000.00 was spent on marketing activities during the last year alone.”
“services provided under the PET EXPRESS mark generate approximately $3 million in annual gross revenue.”
The claim of advertising during “the last several years” of a vague round figure, and a claim of current revenue do not establish any such figures prior to the Respondent’s acquisition of the domain name or prior to Complainant’s sworn date of acquired distinctiveness in March 2011.
The Complainant is quite correct that common law rights, if shown, may satisfy the first criterion, but the vague facts recited by Mr. Botten are woefully inadequate. In addition to being claimed recent figures, Mr. Botten gives no indication of the geographic extent of Complainant’s claimed services in any jurisdiction, numbers of customer, or such common indicia as are normally required to satisfy the bar of establishing common law rights:
Todd Witteles v. Domain Guy
NAF Claim Number: FA0512000616302 http://www.adrforum.com/domains/decisions/616302.htm
Complainant did not provide any evidence of secondary meaning or continuing use of the sort discussed in the following precedents. See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (holding that prior UDRP precedent did not support a finding of common law rights in a mark in lieu of any supporting evidence, statements or proof (e.g., business sales figures, revenues, advertising expenditures, or number of consumers served)); see also Molecular Nutrition, Inc. v. Network News & Publ’ns., FA 156715 (Nat. Arb. Forum June 24, 2003) (approving of and applying the principals outlined in prior decisions that recognized “common law” trademark rights as appropriate for protection under the Policy “if Complainant can establish that it has done business using the name in question in a sufficient manner to cause a secondary meaning identifiable to Complainant’s goods or services”); see also Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that Complainant failed to prove trademark rights at common law because it did not prove the CYBERIMPRINTS.COM mark was used to identify the source or sponsorship of goods or services or that there was strong customer identification of the mark as indicating the source of such goods or services)
Molecular Nutrition, Inc. v. Network News and Publications c/o Dennis Baratta
NAF Claim Number: FA0305000156715 http://domains.adrforum.com/domains/decisions/156715.htm
In this case, Complainant alleges that it has been selling its products over the Internet and through distributors under its mark for a little more than two years. Even if the Panel accepts Complainant's contention that its sales involve as many as ten states in the United States, Complainant has supplied the Panel with no documentation to determine the volume and scale of such sales. Furthermore, the Panel possesses no independent knowledge that any significant group in the population identifies the relatively non-distinctive words, "Molecular Nutrition", exclusively, or even primarily, with Complainant's products to produce a secondary meaning.
The situation here, with no explanation by the Complainant of how it conducted activities prior to 2005, or how Mr. Botten has “personal knowledge of all facts” prior to his engagement with the Complainant or indeed his involvement in the industry, is set forth on all fours in:
3DCafe, Inc. v. 3d Cafe.com
NAF Claim Number: FA1010001351489
The Complainant must fail for two reasons. First, it is clear that it was incorporated only days before the Complaint was filed. Therefore its only right to claim an interest in any mark, whether common law or registered depends on proof that the previous owner of the mark had assigned it to the Complainant.
The Complainant has failed conspicuously to do this. It has not named the entity or entities which allegedly traded under the mark since 1991. The Respondent suggested an identity but it is not for the Respondent to prove this.
The Complainant made no comment on the Respondent’s suggestion that it ought to have exhibited an assignment to it of the rights from the entity which owned the common law mark. The Panel should have received a copy of a signed legal document assigning these rights.
Assignments of or licenses to use are common in the case of registered trademarks. No doubt an unregistered mark could be capable of assignment. There is just no proof that the present Complainant has any rights in any trademark. It had only been in business for a few days at the date of filing the Complaint.
Secondly, the evidence offered by the Complainant falls far short of the fairly high standard for establishing a common law mark. Assuming that it did have some right as an assignee to an interest in a common law mark if any, the fact that it may have had a presence on the Internet since 1991 is not enough.
The precise two conditions are present here. Mr. Botten’s declaration contradicts his own biography, does not explain who it is that is supposed to have conducted pre-2005 activities, and provides zero documentary evidence of the type normally expected to satisfy the high bar of a common law claim.
D. Complainant’s Use Cannot Have Been “Substantially Exclusive”
While it is utterly clear that the Complainant has provided no documentary evidence establishing a trade or service mark right prior to its proffered registration, it is further worth noting that the conditions required to demonstrate acquired distinctiveness in a descriptive term are that the use be longstanding, continuous, and substantially exclusive. Here, we focus on the last of those conditions. While the Complainant claims to have unsupported pre-existing “common law rights” that are utterly undocumented as to time, geographic extent, market size, etc., it was of course quite easy for the Complainant to aver acquired distinctiveness as of March 2011 during ex parte prosecution of its registration application. However, the Complainant’s use of “PET EXPRESS” is readily and trivially shown not to be “substantially exclusive” are required under Section 2(F) of the Lanham Act.
Attached hereto as Exhibit E are print-outs of a few of the many businesses which use “PET EXPRESS” in connection with pet transport and other pet-related services. Given the discussion above, the Respondent does not seek to belabor the point, and will supply many more if, in the view of the Panel, the point here is determined not to be demonstrated:
- Pet Express Transport Service LLC, located at www.petexpresstransportservice.com which provides nationwide pet transportation services
- Action Pet Express, located at www.actionpetexpress.com which provides worldwide pet shipping “Since 1969” and was a founder of the International Pet and Animal Transportation Association from 1975 to 1979
- TJR Pet Express, located at www.tjrpetexpress.com, providing pet transportation services based on “25 years of experience”
- East Coast Pet Express, located at www.eastcoastpetexpress.com, which provides pet transportation service in 19 states of the Eastern US.
- Europet Express Transport, located at www.europetexpress.com, which provides international pet transportation services
What is readily apparent from these business alone – all of which use “Pet Express” in their trading names, logos, and domain names, and all of which appear to have longstanding reputations and testimonials, is that the Complainant’s ex parte claim of “substantially exclusive” use of “Pet Express”; the Complainant’s claim in this Proceeding to have “famous” association with this term; and the Complainant’s claim of distinctive or exclusive association with the term “Pet Express” are a sham. While elsewhere in the Complaint, the Complainant seeks to hold the Respondent to a duty of “constructive notice” of the Complainant’s thoroughly undocumented, undated, and unsupported claims of common law rights, we can be reasonably certain that the Complainant has long known its competitors in the business who all use “PET EXPRESS” in connection with the identical services. Many of these competitors are members of a common trade association, and one in particular – Action Pet Express, which claims to have been around since 1969 – is certainly aware of the Complainant.
The Complainant has facially satisfied the first criterion by presentation of a recently issued US trademark registration issued under Section 2(F) on the basis of acquired distinctiveness as the March 2011 2(F) declaration. The Complainant’s claims of pre-existing common law rights are unsupported, at best, and more likely entirely specious. Even as alleged, the Complainant’s sparse “facts” do not establish a date of acquisition of secondary meaning in “PET EXPRESS” as a distinctive mark for the Complainant’s services, and we have shown that in fact it is not. Mr. Botten’s declaration conflicts with his own biography, and it is beyond clear that the term “PET EXPRESS” is and was neither exclusive nor distinctive of the Complainant at the time the Complainant claimed to be making “substantially exclusive” use of the term during prosecution of its trademark application. While we understand that Panels are loathe to question the validity of even a chronologically irrelevant US trademark registration which is not necessary to decide the outcome here, we are prepared to make a challenge to the Complainant as follows:
We are aware of additional facts showing outright fraud in the Complaint and in prosecution of its US trademark registration application. We are prepared to allow the Complainant to try to explain the circumstances above in a Supplemental Filing under Forum Rule 7. We eagerly await the Complainant’s Supplemental Filing and, in particular, if the Complainant attempts to show (a) a predecessor-in-interest, and (b) an assignment of all rights from that predecessor, the Complainant’s explanation of what, if anything, that phantom predecessor has been doing since the 1978 date the Complainant has sworn to here. There is a reason why the attorney prosecuting the Complainant’s trademark application demurred from actually signing the 2(F) declaration submitted during prosecution.
III. Legitimate Rights Or Interests
The second criterion required to be proven by the Complainant is that the Respondent lacks legitimate rights or interests in the domain name. This criterion is not limited to trade or service mark rights, but includes equitable interests such as expectation and reliance interests implicated by the use of the domain name prior to notice of a dispute in connection with a bona fide offering of goods and services
On the evidence of record in this Proceeding, the Respondent is the senior party in relation to the Complainant with respect to any documented trade or service mark claim of the Complainant. As it is apparent the Complainant has a limited understanding of the Respondent, we provide yet again, primarily for the Complainant’s edification, the basic outline of the Respondent’s acquisition of the domain name. The Respondent, Marchex Sales Inc. is a wholly-owned subsidiary of Marchex Inc., a publicly-traded US corporation on the NASDAQ exchange (MCHX) with a market capitalization of US $149 Million. The Respondent is well known for having purchased the Ultimate Search portfolio of domain names in late 2004 for a price of $165 Million, as discussed in
Xbridge Limited v. Marchex Sales, Inc.
WIPO Case No. D2010-2069
The question arises as to whether the disputed domain name was registered in bad faith. The following are the relevant events:
1. Disputed domain name first registered in 2000.
2. MDNH Inc. established in late 2004.
3. Disputed domain name transferred to MDNH Inc. by Ultimate Search Inc. in February 2005 (pursuant to a deal done in late 2004).
4. The Complainant commenced business and established its Simply Business website some time in 2005.
5. The Complainant filed for its first relevant trademark registration on November 2005.
6. Recently, MDNH Inc. changed its name to Marchex Sales, Inc.
(Compare David Robinson v. Brendan, Hight / MDNH Inc., WIPO Case No. D2008-1313, for a similar factual timeline involving the same Respondent.)
Mr. Brendan Hight is a technical employee of the Respondent, and for reasons unknown to the Respondent, the WIPO Center case managers insist on identifying Mr. Hight as the Respondent in Marchex cases, despite the fact that his name is included in the WHOIS information for the purpose of identifying the administrator of domain names registered to Marchex Sales Inc.
The Respondent is the successor in interest with respect to the domain name, originally registered by Ultimate Search, under the ACPA principles elucidated in GoPets Ltd. v. Hise, 657 F. 3d 1024 (9th Cir., 2011). The UDRP principle of title diverges from that controlling law of the Mutual Jurisdiction – which is the jurisdiction of both parties here – and the Respondent is typically held to the acquisition date of late 2004 as described in various prior cases involving the Respondent. In either event, the Complainant has not shown that as of 2004 it had acquired secondary meaning in the non-exclusive, widely-used, and descriptive term here at issue, in which the Complainant itself claims to have acquired distinctiveness as of March 2011. Accordingly, on the record of this Proceeding, the Respondent is the senior party in relation to any established trade or service mark claim of the Complainant.
As well established under many prior decisions Respondent maintains a sizeable portfolio of domain names comprising simple words, short phrases, and other descriptive or common terms for the purpose of providing keyword advertising in relation to the words in the domain name. The Respondent does not assert that such descriptive keywords are trade or service marks, and the Respondent does not use the domain name as a trade or service mark. The domain name in this Proceeding is one of the names purchased in the Ultimate Search portfolio by the Complainant in late 2004, and is composed of the common words “pet” and “express” which were deemed descriptive by the USPTO in connection with pet transportation services, and which are widely and non-exclusively used by a sizeable contingent of mutually non-exclusive users in that trade. While the Complaint alleges with no support that the Respondent somehow “changed” the automated advertising results associated with the domain name, the domain name has, to the best of the Respondent’s knowledge, always been connected with an advertising system based on domain name keyword content, and has been used in connection with pet products and services since the Respondent’s acquisition of it.
The Respondent’s use of such domain names is well-known among UDRP panels, as noted in:
Advanced Drivers Education Products and Training, Inc v. MDNH, Inc. (Marchex)
NAF Claim Number: FA0509000567039 – teensmart.com <http://domains.adrforum.com/domains/decisions/567039.htm>
“The concept of hosting a web site with paid links to relevant sites can be a legitimate interest, and the teen-oriented nature of at least the majority of the links on the site supports Respondent’s assertion that its site is a “mart” for teen users. It is irrelevant that the site consists largely of paid advertising rather than original content. […] Because there is some reasonable connection between Respondent’s use and the Domain Name and for the other reasons set out above, Complainant has not succeeded in proving that Respondent lacks any rights or legitimate interests in the Domain Name.”
While the Complainant deems the Respondent to be a “serial cybersquatter” it is quite apparent that the Complainant has not considered the import of the Respondent’ s record in UDRP proceedings. The Respondent is a frequent participant in these proceedings, which is a natural consequence of the covetousness of others toward the Respondent’s valuable domain names. In a procedure which results in transfer of disputed domain names more than 80% of the time, the Respondent has been a party to some two dozen UDRP disputes, and has failed to prevail, in what are sometimes close cases involving novel issues in which the Respondent does indeed seek resolution of recurring issues from UDRP panels, in approximately three instances – one of which is subject to litigation under UDRP Par. 4(k) in the US District Court for the Western District of Washington. The Respondent is proud of its record in proceedings under the UDRP which, with overall consistency, demonstrates the Respondent to be a legitimate monetizer of the inherent value of non-proprietary terms.
The Respondent submits that it has been legitimately using the disputed domain name for far longer than any established trade or service mark claim proven by the Complainant, in connection with pet-related goods and services, including pet transportation services. As the senior party, the Respondent is entitled to do so.
IV. Bad Faith
The final criteria required to be proven by the Complainant is that the domain name was (a) registered in bad faith, and (b) used in bad faith by the Respondent. The “bad faith” criterion is an element of specific intent directed toward the Complainant, and arising from rights known by Respondent to belong to the Complainant.
A. Respondent Acquired the Domain Name Prior To Complainant’s Existence
The Respondent had acquired, and has been using the domain name prior to the Complainant’s existence, years before the proffered US trademark registration, and prior to any common law claim established on the record here (and in view of the Complainant’s accession to registration under Section 2(F)). As noted in
The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services 
WIPO Case No. D2007-1438
Respondent could not have registered the domain name before Respondent existed, and its existence began on November 16, 2004
As the Complainant admits, the Complainant filed its trademark registration application after alleged contact with an employee of the Respondent. Hence, there was no duty of constructive notice in relation to the Complainant’s junior registration at the time.
B. Alleged Offer For Sale
Given the serious doubts about Mr. Botten’s credibility, we take his recollection of telephone conversations alleged to have been held three years ago with skepticism. The Respondent does indeed entertain sales inquiries, the Respondent did indeed obtain the domain name in a transaction valued at US $165 million, and the domain name is indeed a non-exclusive and non-distinctive descriptive term which the Complainant has held for longer than the Complainant has existed. Mr. Botten seems to indicate that the Respondent’s employee further conducted a search of USPTO records and found none belonging to Mr. Botten’s claimed organization. The suggestion that an administrative employee of a substantial publicly traded corporation would make representations suggesting that corporate property was his personal property, or that he stood to profit in some manner other than receipt of his ordinary salary as an employee, is difficult to believe. Mr. Soff recently separated from Marchex, but such allegations are incredible, and somewhat amusing on their face. Mr. Soff is known to the Respondent to have conducted himself during his term of employment with professionalism. Mr. Botten’s remarkable memory of this alleged conversation held three years ago, while at the same time having forgotten that he was not employed by the Complainant, or even in the US, prior to 2005; and having forgotten that he was not involved in relocation services until 1994, instead of 1978, suggests that Mr. Botten has profound neurological issues, or that his declaration is unreliable.
The Declaration of Mark Good is unremarkable. Indeed, the Respondent’s web pages do lead to an offer submission form and, indeed, the Respondent is a substantial public corporation which does not entertain the thousands of trifling unsolicited offers it receives is thoroughly accurate. Concerning the cease and desist letter sent by Mr. Good, the Complainant has not provided a full record of correspondence between the parties. Mr. Good’s assertion of a junior trademark registration did not impress the Respondent. It still does not. The Respondent had engaged counsel to reply to Mr. Botten back in 2009, and neither of these men with odd memories seems to remember.
C. Pre-Dispute Correspondence
Attached is the correspondence held between the parties in 2009, which the Complainant has chosen to omit from the record of this Proceeding. Given Mr. Botten’s sharp memory for three year old telephone conversations, we can only assume the Complainant’s omission of this relevant correspondence is deliberate.
In August 2009, as shown therein, Mr. Botten used the Respondent’s inquiry submission form, was dissatisfied with the results, and then threatened to file a UDRP Proceeding to obtain the domain name on October 16, 2009. Interestingly, Mr. Botten claims that ICANN advised him to file such a UDRP.
On November 16, 2009, undersigned counsel sent a reply to Mr. Botten. The letter included the observation that Complainant had filed its trademark application a few days earlier, and included a synopsis of the reasons why the Complainant’s claim here is non-distinctive, and was at that time, in addition to the observation that other relevant US trademark registrations have been required to disclaim the descriptive term at issue. Finally, Mr. Botten was told “we look forward to disposing your complaint under the UDRP”. This letter is interesting for at least one other reason than the Complainant’s deliberate omission of it. Because it identified other users of the “PET EXPRESS” phrase in commerce, the Complainant was on notice, at that time, that its use of the phrase could not have been “substantially exclusive” as sworn to in the Complainant’s trademark registration application.
We received no reply from Mr. Botten or his counsel, and we were not impressed with the cease and desist letter sent by Mr. Good three years later, which advanced the Complainant’s junior registration, and failed to address any of the points we had raised with the Complainant in 2009. We have been waiting for the Complainant to file this frivolous claim for three years.
The Complainant’s behavior here should shock the conscience, and the UDRP requires the Panel, in all instances at its own discretion, to consider whether a complaint constitutes abuse of the Policy. Reverse Domain Hi-Jacking is not set forth in the Policy as some sort of “counterclaim”. The Complaint reeks with the stench of violation of the UDRP certification, misleading and objectively false allegations concerning the Complainant’s claimed pre-existence activities, omission of evidence of the prior correspondence between the parties, and what appears to be direct perjury. The Complaint is such a kettle of wrong, that the Respondent is comfortable to permit this Panel to pick its favorites from it. The dessert course remains to be had in relation to the challenge put to the Complainant, as stated above in connection with the first criterion of the Policy.
In accordance with the foregoing remarks and the attached exhibits, the Respondent requests that the Complaint be DENIED.
B. Additional Submission by Complainant
A. Respondent Has Submitted No Evidence To Support Its Contentions That It Is The Senior User of the PET EXPRESS Mark
Fundamentally, Respondent makes a number of claims without any evidentiary or factual support, and a large amount of hyperbole and speculation. Respondent submits no argument, facts or law which contravene the fact that the domain name in question is identical to a service mark in which the Complainant has rights, (which precede the date the domain was acquired by Respondent); that the Respondent has no rights or legitimate interests in respect of the domain name; and that the domain name has been registered and is being used in bad faith. Of note, the Respondent admits that it did not acquire the domain until “late 2004” making “late 2004” the relevant date for purposes of this dispute. It also fails to provide any evidence of bona fide use of the mark as discussed in the Complaint.
First, Respondent makes a hyper technical argument that because the Complainant’s corporation did not exist until 2005, that it could not have trademark rights to PET EXPRESS dating back to 1978. That allegation ignores the reality of trademark ownership in the modern world. For example, the United States trademark for AMANA (Reg. No. 0605819) was originally applied for in April of 1954, with a date of first use claimed in September 1953 by Amana Refrigeration, Inc., an Iowa corporation. That corporation no longer exists. The current owner of the AMANA brand and trademark is Maytag Properties, LLC, a Michigan company formed in December of 2010 who was the final assignee of the business and brand. Respondent’s argument would suggest that Maytag Properties, LLC could not possibly own a trademark for AMANA with rights dating back to 1953. Obviously, that is not the case.
The business PET EXPRESS owned by Complainant has been in existence since 1978 as shown by the declaration of Mark Botten and other exhibits supplied with the complaint, including Complainant’s website. Respondent does not dispute that the mark PET EXPRESS has been used by the business since 1978, just that the current corporation owning PET EXPRESS was established in 2005. The PET EXPRESS business operated under the service mark PET EXPRESS owned by Complainant has gone through the following transfers in ownership since its inception:
· The pet transportation business owned by Complainant was founded in 1969 by Jerry Mishler. The business operated under the service mark PET EXPRESS at least as early as 1978.
· Nancy Davis, who was a co-owner of the PET EXPRESS business, bought out Jerry Mishler’s interest in the business, (including the accompanying goodwill) in 1978.
· Sandra Rogers, an employee of PET EXPRESS working for Ms. Davis, purchased the PET EXPRESS business, (including the accompanying goodwill) from Nancy Davis in 1994.
· Complainant purchased the PET EXPRESS business, (including the accompanying goodwill) from Sandra Rogers in 2005.
The Respondent acknowledges that it is the successor in interest to the domain, which it vaguely states it acquired in “late 2004” from Ultimate Search. Respondent admits in its response the relevant date for this proceeding is in “late 2004” as opposed to the earlier creation date listed on the domain’s Whois.
Complainant can provide evidence of its rights in PET EXPRESS mark on the Internet as of November 29, 2001, which is three years before Respondent acquired the domain at issue. Each of these website printouts demonstrate Complainant’s use of and rights to the mark PET EXPRESS before the “late 2004” date claimed by Respondent. The 2001 “under construction” web page also displays the same phone number [(415) 821-7111], for Complainant’s business that is still used today. The web pages from 2002 forward also retain the same style elements and information used by Complainant today.
B. The PET EXPRESS Mark Is Not Merely Descriptive
Respondent makes the wild and unsupported claim based on its analysis of the USPTO application history that Complainant’s former attorney “acceded to the [USPTO] determination of descriptiveness.” First, there was no “determination” by the USPTO that the mark was descriptive. An “office action” was issued by the Examining Attorney on the trademark application initially refusing registration claiming that the mark was descriptive. Complainant could have disputed the Examining Attorney’s claim by providing an argument that the mark was not descriptive and that it was instead suggestive. Instead, it was much more expedient and cost effective to simply file the requested statutory language establishing distinctiveness to overcome the objection, as the mark had been continually used in commerce since 1978. The language stated simply:
“The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.” (Emphasis supplied.)
If counsel for Respondent had any experience filing trademarks with the USPTO, he would know that the statement filed by Complainant’s attorney is simply rote language which states the minimum requirements necessary to establish distinctiveness of a mark. It does not preclude or eliminate the fact that the mark was used in commerce for the immediately preceding 32 year period before the form was signed on behalf of Complainant. The “at least” language in this statement is clear on this point. The March 17, 2011 date claimed to be at issue by Respondent is simply the date Complainant’s former attorney signed the response to the office action and has no other significance with regard to the PET EXPRESS mark or registration.
Regardless, even if the PET EXPRESS mark was descriptive in 1978 (which Complainant does not concede), as of 1983 the mark had become distinctive by its extensive use in commerce throughout the United States. Assuming arguendo, that the mark did not acquire distinctiveness until 1983, that date of acquired distinctiveness still predates Respondent’s acquisition of the domain by more than twenty one years.
Respondent’s examples of other third parties using variations of the mark thereby suggesting “fraud” on the part of Complainant are similarly without basis with regards to Respondent’s contentions. Respondent makes much of the domain <actionpetexpress.com> which website claims to have been in business since 1969. First, there is no evidence submitted which supports the contention that the mark PET EXPRESS has been used in commerce since 1969 by another party. Second, the owner of this business was actually the original owner of Complainant’s business (started in 1969) which he sold in 1978. In addition, this party acted as an agent for Complainant until very recently.
The other domains cited by Respondent are either used in other limited geographic areas and/or have been registered decades after extensive use of the mark in commerce by Complainant throughout the U.S. (<europetexpress.com>, registered 8/12/2012; <petexpresstransportservice.com>, registered 6/26/2009; <tjrpetexpress.com>, registered 3/19/2009; and <eastcoastpetexpress.com>, registered 11/24/2008.
PET EXPRESS is one of the largest Pet Relocation companies in the United States. It is no surprise that there are competitors who may try to benefit by implied-association with PET EXPRESS. The infringing acts of others however, do not create a right for Respondent to violate the rights of Complainant under the UDRP, nor does the existence of these infringing parties support Respondent’s contention that PET EXPRESS is merely descriptive, and not entitled to protection under the UDRP.
C. Complainant’s Common Law Rights To The PET EXPRESS Mark
Are Well Established
Complainant has provided substantial evidence of its common law rights and use of the mark PET EXPRESS since 1978 in its Complaint, including its annual advertising expenses and history of use of the mark, all predating acquisition of the disputed domain by Respondent in “late 2004.”
Respondent disputes the common law rights of Complainant by trying to discredit (without any evidentiary support) the “personal knowledge” of Mark Botten, and citing domain name decisions with no application to the case at bar. (Todd Witteles v. Domain Guy, Case No.: FA0512000616302, finding no common law rights in lieu of any supporting evidence, statements or proof; Molecular Nutrition, Inc. v. Network News and Publications c/o Dennis Baratta, Case No.: FA0305000156715, allegation of sales for two years in ten states without evidence of the volume and scale of sales; and 3DCafe, Inc. v. 3d Cafe.com, Case No.: FA1010001351489, complainant incorporated only days before complaint was filed and no evidence of assignment of rights supplied.) Here, there is more than a thirty year history of continuous use of the PET EXPRESS mark throughout the United States and internationally to provide animal transportation services, with ample evidence of its use in commerce, geographic scope, customer numbers and advertising expenditures. It is disingenuous of Respondent to maintain the charade that this is not the case, especially considering the lack of evidence to the contrary.
Although Respondent supplied a non authenticated copy of a third party web page describing the biography of Mark Botten to support its claim that Mr. Botten’s declaration is suspect, there is nothing factually inconsistent between this biography and either of the declarations supplied in support of the Complaint by Mr. Botten.
Here, in addition to evidence of common law rights to PET EXPRESS supplied with the Complaint:
D. Respondent’s Bad Faith Registration And Use Is Unrefuted
It is telling that Respondent, while relying on its acquisition date of the domain in “late 2004” concerns itself only with addressing the Complainant’s registered trademark, (obtained years later) and ignores the common law rights of Complainant exceeding three decades as alleged in the Complaint. Instead, Respondent claims that because Complainant was not incorporated until 2005, that Respondent must be the senior user of the mark. This argument is without merit as discussed above.
Respondent has also failed to provide a response to any of the bad faith allegations in the complaint, other than to say that it has “serious doubts about Mr. Botten’s credibility” and that it was not impressed with Complainant’s “cease and desist letter.”
While failing to provide any evidence disputing its attempt to market the domain to Complainant, Respondent simply states in its response, that it doesn’t remember anything about conversations with Mr. Botten and that it is a “substantial public corporation which does not entertain the thousands of trifling offers it receives. . .” This is curious, as it appears clear from the domain selling pages submitted with the complaint, that selling domains is precisely the business that Respondent is in.
C. Additional Submission by Respondent
I. The Complainant Has Relied On Section 2(f) To Obtain Registration
A. Complainant’s Counsel’s Affidavit Concerning 2(F) Registration
A registration issued under Section 2(f) of the Lanham Act can only be considered distinctive by virtue of alleged acquired distinctiveness by longstanding, continuous and substantially exclusive use sufficient to obtain secondary meaning in the minds of consumers in a term which is otherwise descriptive. The Complainant proposes that 2(f) registration does not constitute an admission as to whether the alleged mark is otherwise primarily a descriptive term. This legal proposition is supported in the Complainant’s Supplement by an affidavit of an attorney attesting to such a legal conclusion. Additionally, the Complainant makes a number of interesting assertions about trademark prosecution practice before the USPTO, about which members of the Panel may be unfamiliar. For the Panel’s edification on these points, a minor digression here may be illuminating.
The Complainant’s approach to proving a legal proposition by affidavit is novel. Ordinarily, one seeks to prove a legal proposition by citing authority, rather than by swearing to a conclusory statement of it. First, to rely on the Section 2(f) is to admit to the statutory language, cited in the Response. Courts have consistently deemed reliance on 2(f) to be an admission of underlying descriptiveness. For example, in:
Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd.,
840 F2d. 1572, (Fed. Cir. 1988):
“Where, as here, an applicant seeks a registration based on acquired distinctiveness under Section 2(f), the statute accepts a lack of inherent distinctiveness as an established fact. When registration is sought under Section 2(f), therefore, it is idle to continue to speak of an opposer's burden to establish that fact, or to say that the applicant "conceded" that fact. Similarly, in cases where registration was initially sought on the basis of distinctiveness, subsequent reliance by the applicant on Section 2(f) assumes that the mark has been shown or conceded to be merely descriptive. Whether in ex parte proceedings under Section 2(f), In re McIlhenny Co., 278 F.2d 953, 957, 126 USPQ 138, 141, 47 CCPA 985 (1960), General Foods Corp. v. MGD Partners, 224 USPQ 479, 485 (TTAB 1984), Sunbeam Corp. v. Battle Creek Equipment Co., 216 USPQ 1101, 1102 (TTAB 1982), or in subsequent oppositions, neither party bears any burden on inherent distinctiveness, as it is a nonissue under that subsection of the statute. The only remaining issue under Section 2(f) relating to the proposed mark itself is acquired distinctiveness.”
The Cold War Museum, Inc. v. The Cold War. Air Museum, Inc.,
586 F.3d 1352, 1356 (Fed. Cir. 2009)
“Where an applicant seeks registration on the basis of Section 2(f), the mark's descriptiveness is a nonissue; an applicant's reliance on Section 2(f) during prosecution presumes that the mark is descriptive.”
These basic observations of the import of Section 2(f) (15 USC 1025(f)) are themselves codified in the USPTO Trademark Manual of Examining Procedure, which is the USPTO’s authoritative guide to the prosecution and examination of trademark registration applications, Sections 1212.02(b) and (c) as follows:
1212.02(b) Section 2(f) Claim Is, for Procedural Purposes, a Concession that Matter Is Not Inherently Distinctive
For procedural purposes, a claim of distinctiveness under §2(f), whether made in the application as filed or in a subsequent amendment, may be construed as conceding that the matter to which it pertains is not inherently distinctive (and thus not registrable on the Principal Register absent proof of acquired distinctiveness). Once an applicant has claimed that matter has acquired distinctiveness under §2(f), the issue to be determined is not whether the matter is inherently distinctive but, rather, whether it has acquired distinctiveness. See, e.g., Yamaha Int'l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 1577, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988); In re Cabot Corp., 15 USPQ2d 1224, 1229 (TTAB 1990); In re Professional Learning Centers, Inc., 230 USPQ 70, 71 (TTAB 1986); In re Chopper Industries, 222 USPQ 258, 259 (TTAB 1984). However, claiming distinctiveness in the alternative is not an admission that the proposed mark is not inherently distinctive. TMEP §1212.02(c).
1212.02(c) Claiming §2(f) Distinctiveness in the Alternative
An applicant may argue the merits of an examining attorney's refusal and, in the alternative, claim that the matter sought to be registered has acquired distinctiveness under §2(f). Unlike the situation in which an applicant initially seeks registration under §2(f) or amends its application without objection, the alternative claim does not constitute a concession that the matter sought to be registered is not inherently distinctive. See In re E S Robbins Corp., 30 USPQ2d 1540 (TTAB 1992); In re Professional Learning Centers, Inc., 230 USPQ 70, 71 n.2 (TTAB 1986).
No such alternative claim was made during prosecution of the Complainant’s registration, and hence the Complainant is deemed to have conceded that fact.
It is unfortunate that neither the Court of Appeals for the Federal Circuit nor the United States Patent and Trademark Office had the benefit, as we do here, of an affidavit from an attorney testifying to a novel proposition otherwise. However, whether or not Complainant’s counsel believes she was making such an admission binding on the Complainant at the time, does not change the legal effect of reliance on Section 2(f) to obtain registration, nor the controlling legal authority on that precise question.
As a matter of practice, as suggested by TMEP 1212.02(c), an applicant for registration may traverse the finding of descriptiveness in the alternative. Additionally, the applicant may present substantial evidence of acquired distinctiveness demonstrating an earlier date than the bare minimum declaration “as of the date of this statement”. The Panel may indeed confirm these approaches in the online docket of several 2(F) registrations shown in Exhibit A for exemplary purposes . Committing one’s client to a declaration date when seeking registration under 2(f), as in the case of the registration at issue here, is further considered to be potential malpractice by expert commentators, as discussed in “Why You Should Think Twice Before Accepting a 2(f) Registration" from the well-respected “The TTABlog”. The Complainant here expressly states the 2(f) declaration was made for the purpose of “expedience”, which is precisely the sort of expedience deemed to be potential malpractice in the article:
“These factors naturally push an attorney to consider filing a Section 2(f) amendment. If the mark has been in use for a while you may even be able to get the Examining Attorney to accept a simple declaration stating how long the mark has been in use. Who would not want to save the client more than $3,000 in fees, not to mention the embarrassment of predicting you will be able to overcome the examiner’s argument only to have to explain later that all litigation is risky and the other time-honored consolations muttered by the losing attorney for years? And, realistically, the truth is that most trademark registrations are never enforced so there is a good chance that the whole question of whether the 2(f) notation has any meaning will never come up, at least not until you are long gone.”
Unfortunately for the Complainant, this “whole question” has indeed come up, and Complainant’s counsel has made the error of not being “long gone”. Whether Complainant’s counsel did not understand a 2(f) declaration to constitute an admission does not, of course, change the legal effect of it as understood by the controlling federal circuit. The Court of Appeals for the Federal Circuit has exclusive appellate authority over decisions of the USPTO for the purpose of establishing these sorts of conclusions, notwithstanding the affidavit of Complainant’s counsel.
The Complainant’s registration under Section 2(f) is, despite the Complainant’s protestations, an admission of inherent descriptiveness as a simple matter of black-letter law. Thus, in order to demonstrate acquired distinctiveness as a trade or service mark, and particularly in the context of this dispute, at some earlier date than that sworn to in the Complainant’s trademark registration, the Complainant must show such acquired distinctiveness by competent evidence. The concept of proving a fact by the use of evidence is discussed further below, as the Complainant has novel ideas in that area as well.
B. Complainant Must Establish Acquired Distinctiveness By Competent Evidence of Longstanding and Substantially Exclusive Use Establishing Secondary Meaning In the Minds of Consumers As a Distinctive Mark Prior To Respondent’s Acquisition of the Domain Name
The Respondent realizes that Panels under the Policy are not regularly dragged into the wild and wooly mechanics of trademark prosecution. However, panels do not always confront such outright misrepresentation that registrations under Section 2(f) of the Lanham Act have distinguishable consequences from registration based on outright distinctiveness, such as is the case with fanciful or arbitrary marks. As noted in connection with a 2(f) registration asserted in:
Asset Data Corporation v. Name Administration Inc. (BVI)
NAF Claim Number: FA0605000699525
Respondent contends that it registered the <cheaphotels.net> domain name in June 2001. The evidence shows that at the time of domain name’s registration, the mark had not acquired secondary meaning.
The Complainant is absolutely correct that the Section 2(F) language of “at least as of” the five years prior to the date of the declaration does not preclude the possibility of showing an earlier date by competent evidence. What the Complainant cannot do is to deny its sworn admission before the USPTO that the term is indeed descriptive. However, the 2(F) date of record in the application is the only identifiable date in the record of this Proceeding by which the Complainant has committed to stating that it had acquired distinctiveness. If the Complainant has now committed to some other date, then we are hard-pressed to find it in the Complainant’s Supplement.
Apart from Mr. Botten’s earnest attestation to various pure hearsay and undocumented transactions to which he was not a party, the only tangible evidence of record we now have includes such gems as a webpage from 2001 stating “Our home page is under construction...please come back soon.” Hence, if we accept a starting point of 2001, when the Complainant was actively telling customers to go away, then even if the Complainant established a subsequent five years of substantially exclusive use of “PET EXPRESS” (which it cannot), then we would arrive at a date in 2006, which post-dates Respondent’s acquisition of the domain name.
II. The Complainant Has Presented No Competent Evidence Of Acquired Distinctiveness Pre-Dating Respondent’s Registration
A. The Complainant Has Shown No Assignment of Goodwill From Any Predecessor
As noted in the Response, the Complaint in this matter misleadingly and expressly referred to pre-existence activities of the Complainant, and did not note the Complainant to have obtained assignment from any predecessor. The Complainant’s digression concerning the “AMANA” mark is instructive. Indeed, the “AMANA” mark and goodwill have been assigned through a chain of successors. The reason we know this, however, is not through some folk tale told by persons who were not around at the time. Assignment of such rights is made through written instruments and, in the case of registered marks, recorded by the relevant office. Attached hereto as Exhibit C, are the assignment records of the “AMANA” mark, duly recorded by the USPTO when such assignments were made.
Here, the Complainant’s supplement merely asserts that “goodwill” in successive businesses were assigned, because it serves the Complainant’s purposes to make such assertions. However, the relevant California statute is found at the California Business and Professions Code § 14220 and notes that assignment of “any mark […] shall be by instrument in writing duly executed…” :
(a) Any mark and its registration hereunder shall be assignable with the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of and symbolized by the mark. Assignment shall be by instrument in writing duly executed and may be recorded with the secretary upon the payment of the recording fee payable to the secretary as set forth in subdivision (b) of Section 12193 of the Government Code, who, upon recording of the assignment, shall issue in the name of the assignee a new certificate for the remainder of the term of the registration or of the last renewal thereof. An assignment of any registration under this chapter shall be void as against any subsequent purchaser for valuable consideration without notice, unless it is recorded with the secretary within three months after the date thereof or prior to the subsequent purchase.
The statute refers to “Any mark”, and further notes that such assignment “may be recorded” in the case of marks registered in California.
B. Complainant’s Claimed Founder Disputes Complainant’s Representations And Continues Use Of “PET EXPRESS”
The Complainant repeatedly claims, successive assignments of goodwill which are not only nowhere in tangible evidence shown to have been made, but in fact are actively disputed by the party the Complainant identifies as its founder. The Second Botten Declaration identifies the Complainant’s founder as Jerry Mishler, and makes a number of claims about him. Mr. Mishler is the principal of “Action Pet Express” which was identified in the Response. The Panel will note that the home page of “Action Pet Express” states “since 1969”. Oddly, this is the date which the Complainant claims Mr. Mishler founded the Complainant’s business, and subsequently assigned all goodwill.
Attached hereto as Exhibit D is the Declaration of Jerry Mishler who, unlike Mr. Botten, was actually a party to at least one of the transactions in which Mr. Botten claims, on the basis of hearsay, Mr. Mishler’s goodwill was assigned. Notable points of dispute between Mr. Mishler and Mr. Botten are:
- Mr. Mishler was sole owner and never a partner or co-owner in the business he founded in 1969
- Mr. Mishler sold assets of his business in the Bay area to a Nanci Drechsler in 1978 with her full understanding that he would continue to operate in the pet transport business in California
- After selling certain assets to Ms. Drechsler, Mr. Mishler located elsewhere within the State of California and conducted business as “Action Pet Express”
- Mr. Mishler’s “Action Pet Express” is not and was not an “agent” of the Complainant, as claimed in the Second Botten Affidavit
- Mr. Mishler has never met Mr. Botten
- Mr. Mishler believes that “Pet Express” is descriptive of pet transportation and is aware that many businesses in the pet transportation industry use the term “Pet Express” to describe their services, including his.
In the shortened period under NAF Supp. Rule 7, the Respondent, of course, has not had time to take testimony from the other sources of hearsay within the Second Botten Declaration. However, it is clear that the Complainant’s Supplement presents no tangible evidence of various claimed assignments of “goodwill”. It is further clear, based on Mr. Mishler’s continued representation and use of his established reputation “since 1969” that no such goodwill was assigned in at least one instance, contradicting the Complainant’s assertions otherwise. It is also clear that Mr. Mishler, having been the principal involved, is a more reliable source of testimonial evidence in relation to transactions to which Mr. Botten was not a party at all.
There is, of course, further reason to question Mr. Botten’s Second Declaration. Mr. Botten claims that Ms. Nanci Davis “changed the name” of the business to “PET EXPRESS”, but is decidedly vague about when that occurred. Furthermore, Mr. Botten claims that Ms. Davis sold her business, and the Supplement claims all “goodwill” to the Complainant. The record of the California Secretary of State, attached hereto as Exhibit E, suggests otherwise. It appears that what actually happened is that Ms. Davis formed a “PET EXPRESS INC.” in 1980, which corporation was subsequently dissolved. There is no record of a further name change of that entity or a sale of it to any other party.
C. Complainant Presents No Evidence of Substantially Exclusive Use
At points in the Complainant’s Supplement, the Complainant appears to believe the standard for acquired distinctiveness is merely “five years of use”. This assertion mis-states both the requirements and purpose of showing evidence of acquired distinctiveness. First, the use must be “substantially exclusive”. As demonstrated in connection with Mr. Mishler’s continued use of “Action Pet Express” both within and outside of California for decades, the term “Pet Express” has not been “substantially exclusive” to the Complainant. Several other examples were also shown in the Response. The Complainant’s Supplement asserts that a few, but certainly not all, of such examples shown in the Response have recently registered domain names. First, the Complainant does not thereby disprove the point in relation to all of the examples shown. Secondly, the domain creation dates are not reliable as to when those other businesses began. The Complainant here, for example, claims to be the successor to Mr. Mishler’s business which began in 1969 (a point which Mr. Mishler himself hotly disputes), and did not register any domain name until sometime in 2001.
Moreover, in connection with the bare declaration made for “expedience” in obtaining Complainant’s US federal registration, the Complainant appears to forget that the other ground of refusal was based on an earlier application for a “PET EXPRESS” mark which was staring the Complainant in the face when that 2(f) declaration was itself made, as shown in the Office Action included as an exhibit to the Response. Furthermore, attached hereto as Exhibit F are yet further examples of records from California, Delaware and New York, chosen merely for sampling purposes which show:
- My Pet Express Inc., chartered in California since 2002
- Pet Express LLC, chartered in New York since 1995
- Pet Express Transportation LLC, chartered in New York since 2008
- Pet Express Direct Inc., chartered in New York since 2006
- Pet Express Inc., chartered in Delaware since 1996
- Pet Express LLC., chartered in California since 1998
All of these entities long pre-dated Complainant’s counsel’s representation to the USPTO of five years of “substantially exclusive” use by the Complainant. It is utterly clear, on the basis of this evidence, and that submitted with the Response, that Complainant’s 2(f) declaration, made by counsel personally unacquainted with the Complainant’s history, and indeed any actual facts, was “expedient” indeed, as it was made on the basis of utter ignorance.
As noted above in connection with the actual law in relation to Section 2(f) of the Lanham Act, the fact of admitted descriptiveness is conceded by the Complainant. However, in inter partes proceedings, whether the mark had obtained acquired distinctiveness by any particular date is open to challenge. For the purpose of this Proceeding, the Respondent has no need to challenge the “at least as” date to which the Complainant swore in the course of its application, as that date is years after the Respondent’s acquisition of the domain name. However, if the Complainant in this Proceeding seeks to claim that its use was “substantially exclusive” for the purpose of claiming an earlier date of acquired distinctiveness, we are not here in an ex parte proceeding before the USPTO, and the Complainant has no answer to the demonstrated fact that its use has not been proven to be substantially exclusive for any stretch of time by any competent, objective evidence. As Mr. Botten does not dispute, he was not in the United States until he moved to the United States in 2005, so he would be in no position to know.
D. Complainant Presents No Evidence of Consumer Recognition
The Response cited relevant precedent as to the types of evidence which a Panel may consider as constituting consumer recognition. Instead of providing evidence of established consumer recognition pre-dating registration of the disputed domain name by the Respondent, the Complainant’s Supplement includes such assertions as “PET EXPRESS is one of the largest Pet Relocation companies in the United States.” If that were so, by any metric, then it would be a simple matter for the Complainant to produce evidence of on what, if anything, the Complainant has spent its claimed advertising budget. Yet not one advertisement appears for all its claimed expenditure, and there is no evidence showing the Complainant conducted any substantial business at all at the relevant time. The closest attempt to any sort of customer figures comes from the Second Botten Declaration as:
“Upon conferring with staff, I estimate that since 1978, PET EXPRESS has provided services to a minimum of 15,000 customers. Sales volumes since inception are unavailable, however we currently service 1000-1200 customers per year.”
It is worth noting that the Complainant’s current estimates are irrelevant to what, if anything, the Complainant was doing prior to the Respondent’s registration of the domain name. Needless to say, Mr. Botten’s testimony as to what unidentified staff or others may have said to him is pure hearsay, and is not competent objective evidence of anything. The Complainant has not shown that it had ever moved a single pet prior to the Complainant’s registration and use of the domain name.
The only tangible evidence of anything prior to the Complainant’s junior federal trademark registration is that the Complainant has now shown that it used the words “Pet Express” on a web page, which was located at petmove.com, and which was noted to be “under construction” for quite some time. The use of these two words on a web page at some point in time from 2002 onwards does not establish that the Complainant had any reputation or recognition among relevant consumers, and does not establish that the Complainant was in any way considered to be exclusive or distinctive in relation to the two words “PET EXPRESS” particularly in view of the other parties of record, including the Complainant’s claimed founder, whose own company has been using the term “PET EXPRESS” in connection with pet transportation services for longer than the Complainant has been shown to exist.
III. Complainant Has Not Shown Registration And Use In Bad Faith
Ultimately, the Complainant has not adduced a single fact of which the Respondent knew or should have known at the time the Respondent acquired the domain name. The Respondent’s acquisition of its domain name assets are described in publically available filings available from the Securities and Exchange Commission. It is not clear what point the Complainant attempts to demonstrate that, yes, conducting a transaction valued at $165 million dollars does indeed require a span of time between commitment and consummation, hence it is absolutely true that the Complainant committed to purchase the Ultimate Search assets in late 2004 and concluded the transaction in early 2005. From whatever point in time one analyzes that complex transaction, the Complainant has not, in the Complaint or in the Supplement, pointed to a single date at which the Complainant claims to have acquired distinctiveness as a trademark in “PET EXPRESS”, nor has the Complainant pointed to a single fact demonstrating that the Respondent knew or should have known of things only dimly recalled by Mr. Botten, or things he has been told by others who apparently are averse to committing them to a sworn statement. The Complainant has not shown that it transported a single pet prior to 2005, or indeed at any time after. The Complainant has not shown the fruits of its claimed advertising expenses in the form of revenue figures, actual advertisements, visitor statistics or any metric of consumer or industry recognition whatsoever.
The Complainant, having relied on Section 2(f) to obtain registration of its claimed mark, cannot at this point in time deny the legal effect thereof. Hence, as a pre-requisite to claiming registration of the domain name in bad faith, the Complainant must, at a minimum, show that its claimed mark had acquired distinctiveness prior to the Respondent’s acquisition of the domain name. The Complainant has failed to adduce any competent evidence of having acquired such distinctiveness as a trade or service mark prior to the Respondent’s registration of the domain name. Moreover the Complainant has failed to show competent evidence of having been assigned rights by claimed predecessors. Even if these defects were cured in the Complainant’s Supplement, the Complainant still fails to explain why the Respondent would have been aware of facts the Complainant cannot at this time produce.
(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 rights or legitimate interests in respect of the domain name; and
(3) the domain name has not been registered and is not being used in bad faith.
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 Complainant must prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.
Complainant contends it has rights in the PET EXPRESS mark. Complainant demonstrates it is the owner of the USPTO registration for the PET EXPRESS mark (Reg. No. 4,004,320 filed Nov. 2, 2009; registered Aug. 2, 2011). Panels have held USPTO registration of a mark is normally sufficient to demonstrate rights in a mark and those rights extend back to the date the registration was filed. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶4(a)(i).”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). Therefore, the Panel finds Complainant has rights in the PET EXPRESS mark dating back to November 2, 2009 (the date of registration) pursuant to Policy ¶4(a)(i).
Complainant claims the <petexpress.com> domain name is identical to the PET EXPRESS mark. Complainant notes the domain name is simply Complainant’s mark, without spaces, and the gTLD “.com.” The deletion of a space and addition of a gTLD do not cause a domain name which is otherwise nothing more than a complainant’s mark to be anything other than identical to the mark. See Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark). Complainant notes in its Additional Submission that Respondent does not contradict Complainant’s assertion that the disputed domain name is identical to the PET EXPRESS mark. Therefore, the Panel finds the <petexpress.com> domain name is identical to the PET EXPRESS mark pursuant to Policy ¶4(a)(i).
While Respondent contends the <petexpress.com> domain name is comprised of common and descriptive terms and as such cannot be found to be identical to Complainant’s mark, the Panel finds such a determination is not necessary under Policy ¶4(a)(i) because this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶4(a)(ii) and Policy ¶4(a)(iii) and not under Policy ¶4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶4(a)(ii) and 4(a)(iii)). The USPTO has made its determination and it is not up the Panel to review that decision.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant has not established a prima facie case in support of its arguments Respondent lacks rights and legitimate interests under Policy ¶4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent claims it has rights or legitimate interests in the <petexpress.com> domain name. Respondent notes it is a subsidiary of Marchex Inc., a publicly-traded U.S. corporation on the NASDAQ exchange (MCHX) with a market capitalization of $149 million. Respondent claims to have purchased the “Ultimate Search” portfolio of domain names, including the disputed domain name, in late 2004 for $165 million. Respondent claims it is a successor in interest of the <petexpress.com> domain name originally registered by Ultimate Search. The <petexpress.com> registration dates back to July 2, 2001. Respondent claims it uses the <petexpress.com> domain name. The panel in McMullen Argus Publ’g Inc. v. Moniker Privacy Servs., D2007-0676 (WIPO July 24, 2007), found that the display of third-party links on a domain name is not necessarily evidence of a lack of rights and legitimate interests, and the Panel finds Respondent’s use is that of a bona fide offering of goods or services or a legitimate noncommercial or fair use amounting to protectable rights or interests under Policy ¶¶4(c)(i) and 4(c)(iii). See Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
The parties have spent a great deal of time and effort arguing about who has superior rights to the mark. Such a decision is beyond the Panel’s jurisdiction.
The Panel finds Policy ¶4(a)(ii) NOT satisfied.
The Panel finds Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel finds Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶4(a)(iii) because Respondent has rights pursuant to Policy ¶4(a)(ii). 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.”).
The Panel further finds Respondent has not registered or used the <petexpress.com> domain name in bad faith because Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶4(a)(iii)).
Respondent claims its willingness to sell the domain name is not a demonstration of bad faith. Respondent argues it spent $165 million on the purchase of a number of domain names, including the <petexpress.com> domain name, because of the valuable descriptive nature of the domain name, and thus the asking price for the domain name is not unfounded. Panels have found that a willingness to sell a domain name, especially when a respondent has a legitimate interest, is not indicative of bad faith. See Etam, plc v. Alberta Hot Rods, D2000-1654 (WIPO Jan. 31, 2001) (“Respondent’s offer to sell the domain name does not constitute bad faith, in light of the fact that it has a legitimate interest in the domain name”). Therefore, the Panel finds Respondent’s willingness to receive requests regarding the purchase of the domain name does not demonstrate bad faith pursuant to Policy ¶4(b)(i).
Respondent argues it has developed a history of good faith registration and use of domain names. Respondent has prevailed in all but three instances of the nearly two dozen UDRP proceedings to which it has been a party. This Panel believes each case must be judged on its merits. The fact Respondent is a frequent party to UDRP proceedings is immaterial. See Nursefinder, Inc. v. Vertical Axis, Inc., D2007-0417 (WIPO July 5, 2007) (holding that although some decisions have gone against the respondent, each case has to be decided on its own merits, and the respondent also had won several cases involving domain names comprised of generic terms or short strings of letters).
Respondent additionally claims its good faith is clear, given the fact its registration of the <petexpress.com> domain name (July 2, 2001) pre-dated Complainant’s PET EXPRESS trademark application (which was filed November 2, 2009). It should be noted Complainant threatened to file a UDRP proceeding in 2009 and then acquired formal trademark rights to bolster its case. Complainant did not disclose Respondent’s use of the mark in its trademark application.
Lastly, Respondent asserts Complainant has misrepresented numerous “facts” in the Complaint and declarations. Respondent argues the personal knowledge alleged by Mr. Botten is blatantly false as he was not living in the United States or employed by the (non-existent) Complainant prior to 2005. Respondent asserts Mr. Botten’s declaration therefore contradicts his own biography and provides zero documentary evidence of the type normally expected to satisfy the high bar of a common law claim.
It is certainly true Complainant was conclusory in its initial submission (and that is being charitable). Respondent rightly pointed out Complainant’s claims were not possible as stated because Complainant was not formed until 2005. While Complainant could have stated all of this in Complainant’s initial submission, it chose not to. The question is why not? It seems Complainant did this to improve its chances in this UDRP proceeding. Complainant applied for a trademark after knowing about Respondent’s domain name and did not disclose that fact to either the USPTO or the Panel. Once again, the question is why not? Presumably, Complainant wanted to improve its chances in registering its mark and this proceeding.
The Panel finds Policy ¶4(a)(iii) NOT satisfied.
REVERSE DOMAIN NAME HIJACKING
Having not established all three elements required under the ICANN Policy, the Panel concludes relief shall be DENIED.
Accordingly, it is Ordered the <petexpress.com> domain name REMAIN WITH Respondent.
Houston Putnam Lowry, Chartered Arbitrator, Panel Chair
Judge Carolyn Johnson
The Honourable Neil Brown QC
Dated: Wednesday, January 2, 2013
 One minor exception is that the Complainant provides a copy of a website currently located at petmove.com and claims a whois creation date for that domain name in 2001. The registration of the petmove.com domain name was obviously not done by the Complainant, and the contents of that website do not demonstrate any rights pre-dating the Respondent’s registration of the domain name.
 The Panel may want to visit this site in particular, to review the choice words which Action Pet Express has about the Complainant specifically, for further tangential enlightenment about the Complainant and its reputation and “goodwill” in the pet shipping industry, and why the Complainant is likely motivated to obtain the domain name on the flimsy claims presented here. There appears to be a longstanding feud of some sort between these two entities.
 See, “What Did Marchex (MCHX) Really Purchase”, Seeking Alpha, February 15, 2005, at <http://seekingalpha.com/article/1059-what-did-marchex-mchx-really-purchase> (“Concurrent with the close of its offerings, Marchex today completed the acquisition of certain assets of Name Development Ltd., a corporation operating in the direct navigation market, for $164.2 million, including $155.2 million in cash and $9 million in stock.[ …] Marchex purchased Name Development Lts. from Hong Kong based UltSearch.”)
 Marchex Sales Inc. v. ADMINISTRADORA DE MARCAS Y FRANQUICIAS, S.A. DE C.V., Case 2:12-cv-02069, USDC Western District of Washington, filed 27 November 2012.
 For example, the observation in relation to US TM Reg. No. 3,654,370 remains valid, but the Forum page limit scarcely provides room to fully explore the numerous ways in which this Complaint is wholly fraudulent and frivolous.
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