The Complainant is The Motley Fool Inc., Alexandria, Virginia, United States of America, represented by Cooley Godward Kronish LLP, United States of America.
The Respondent is Domain Works, Inc, Vancouver, British Columbia, Canada, represented
by Ari Goldberger Esq., United States of America.
2. The Domain Name and Registrar
The disputed Domain Name <fools.com> (the “Domain Name”)
is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2006. On December 22, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 28, 2006, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 13, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“the Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“the Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“the Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2007. Upon request by the Respondent and consent by the Complainant, the due date for the Response was extended to February 16, 2007. The Response was filed with the Center on February 15, 2007.
The Center appointed Tony Willoughby, Debra J. Stanek and David E. Sorkin as
panelists in this matter on March 6, 2007. The Panel finds that it was properly
constituted. Each member of the Panel has submitted the Statement of Acceptance
and Declaration of Impartiality and Independence, as required by the Center
to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant, a United States corporation, is engaged in the provision of information and guidance to consumers in the field of financial and related services. It communicates this information and guidance via the Internet and other media. It is a major player in its field.
The Complainant commenced business under its name, The Motley Fool, in 1993/4.
Since 1994 it has developed in its field of operation a substantial reputation and goodwill under and by reference to its so-called ‘FOOL Marks’, namely THE MOTLEY FOOL, FOOL, FOOL.COM and FOOLISH.
The Complainant is the registered proprietor of a number of trademark registrations in the United States of America and elsewhere covering the ‘FOOL Marks’, including the word FOOL and the domain name, <fool.com>, a domain name which it registered in 1995. Apart from the earliest of the registrations of THE MOTLEY FOOL, which was registered in 1996 with a filing date in 1995, none of these trademark registrations pre-dates the Respondent’s registration of the Domain Name. The earliest <fool.com> registration came through on March 6, 2001 with a filing date in 1999 and the earliest FOOL registration is dated December 16, 2003 with a 1999 filing date.
In 1997 the Complainant’s website at “www.fool.com” was nominated for a Webby Award.
The Respondent, a Canadian corporation, registered the Domain Name on March 6, 1998. Initially, the Domain Name was connected to a website of the CES Marketing Group, which according to Christopher Wall, a principal shareholder of the Respondent, is a former name of the Respondent. At that site CES Marketing Group described itself as a specialist in the marketing and development of valuable domain names. For the last three years it has been connected to a financial services directory site from which the Respondent has been deriving click-per-view income.
It is to be noted that the Complainant has trademark registrations for a stylized
jester device and the word mark FOOLISH (both registrations dating back to 2000)
and that the Respondent features on its site a representation of a female wearing
a jester’s hat and a slogan incorporating the word ‘foolish’.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Name is confusingly similar to trademarks and service marks in which it has rights. The Complainant points to its ‘FOOL Marks’ referred to in section 4 above in which it has registered rights and claims unregistered rights. The Complainant points out that the Domain Name is substantially identical to two of its marks, the only difference being the addition of an ‘s’.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant observes that the Respondent’s company website located at “www.domainworks.com” claims that the Respondent is an “online real estate specialist” that owns and operates a “series of high quality domain names” which may be leased from the Respondent. The Complainant asserts that it has given the Respondent no permission to use any of the ‘FOOL Marks’ or the Domain Name.
The Complainant further points to the fact that the site to which the Domain Name was connected as at the date of the Complaint featured automatically-generated click-through links to websites owned by direct competitors of and businesses similar to the Complainant. The Complainant refers also to the depiction of the woman wearing a jester’s cap and the tag line “Experts in All Things Foolish” on the website. The Complainant contends that this is all part and parcel of an attempt on the part of the Respondent to divert business from the Complainant’s website for the Respondent’s commercial gain.
The Complainant further contends that the Respondent registered and is using the Domain Name in bad faith. The Complainant points to the fact that the Domain Name was registered four years after the Complainant commenced use of the ‘FOOL Marks’. The Complainant contends that “the Respondent knew or should have known of Complainant’s rights in the ‘FOOL Marks’ when it registered the Domain Name, given the fame of the ‘FOOL Marks’ as a result of the Complainant’s substantial investment in the advertisement and promotion of its marks ….”. The Complainant points to the nomination of the Complainant’s website at “www.fool.com” for a Webby Award about a year ahead of the Respondent’s registration of the Domain Name.
The Complainant categorises this as a clear case of typo-piracy and reiterates the features supporting its case that the Domain Name is being used in bad faith, namely the click-through links to competitors of the Complainant, the depiction of the jester’s hat and the slogan incorporating the Complainant’s registered mark FOOLISH.
Finally, the Complainant asserts that the information appearing on the Respondent’s website indicating that it is willing to lease its domain names for set periods of time demonstrates the Respondent’s bad faith intent.
B. Respondent
The Respondent contends that the Domain Name is not confusingly similar to any of the Complainant’s marks. The Respondent asserts that with ordinary English words such as ‘fool’ the addition of an ‘s’ can make all the difference.
The Respondent claims that it does have a legitimate interest in respect of the Domain Name. This claim is based partly on the absence of any exclusive rights of the Complainant covering the Domain Name, partly on the intensive third party use of the word ‘fools’ on the Internet and partly on the fact that the Respondent has been using the Domain Name to post advertising links and thus generate advertising revenue.
Insofar as the Complainant’s Complaint is that the advertising links are now links to goods and services covered by the Complainant’s trademark registrations, the Respondent asserts that it plays no part in the selection of the advertisements.
The Respondent denies that the Domain Name was registered and is being used in bad faith. The Respondent contends that when it registered the Domain Name it had no knowledge of the Complainant’s rights to FOOL and FOOL.COM. It contends that the marks THE MOTLEY FOOL and FOOLISH are so far away from the Domain Name that they should not be taken into account when assessing the issue of bad faith. The Respondent contends that any suggestion of constructive knowledge arising from the Complainant’s United States trademark registrations is misconceived because there were no registrations of FOOL and FOOL.COM in existence when the Respondent registered the Domain Name.
The Complainant contends that as it is based in Canada there is no reason why it should have been aware of the Complaint’s FOOL and FOOL.COM marks when it registered the Domain Name. The Respondent contends that it would be inappropriate to draw adverse inferences in connection with such an ordinary English word. The Respondent points out that it has registered a number of other plain ordinary English words as domain names in the ‘.com’ domain e.g. <cashews.com>, <jackets.com>, <fishingrods.com>, <snowmobiles.com> and <vinegar.com> all of which are being used to generate income in precisely the same way that the Domain Name is being used. There is no call to single the Domain Name out from the others.
The Respondent acknowledges the possibility that the Panel might regard the current use of the Domain Name as a bad faith use, but it reiterates that this use (i.e. the advertising links) is decided upon by Yahoo, not the Respondent. More fundamentally it points out that the ‘offending’ use only commenced in 2003, long after the Domain Name was registered. Hitherto the use had been unexceptionable.
As to the appearance on the site of the jester’s hat, the Respondent claims that it is an obvious illustration to use in combination with the word ‘fools’. As to the slogan, the Respondent contends that it bears no relation to the Complainant’s slogan, which does not feature the word ‘foolish’. Moreover, the Respondent claims that the slogan “Experts in Everything Foolish” is in the same format as the slogans it uses on its other sites (e.g. “Experts in Jackets”).
Finally, the Respondent points out that the Complainant is only taking action
some nine years after the Domain Name was first registered. The Respondent claims
that this is evidence that the Complainant does not believe that its claims
are truly warranted.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name and the Complainant’s marks (whether one takes FOOL or <fool.com>) only effectively differ by one letter, the letter ‘s’.
Ordinarily there would be little doubt that the mere pluralisation of a trademark must result in confusing similarity. However, the Respondent argues with some force that with a common dictionary word such as ‘fool’ the trademark owner’s rights have to be very narrow and the mere addition of an ‘s’ may be sufficient to negate any risk of confusion.
The Panel sees no reason to decide this case on such a fine point and finds for the purposes of this decision that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent concedes that it has no rights in respect of the Domain Name. Does it have any legitimate interests in respect of it? The Respondent relies for this purpose on the absence of any exclusive rights of the Complainant in relation to the word ‘fools’, the fact that the word is subject to substantial third party use on the Internet and the fact that the Respondent has been using the Domain Name for a commercial purpose, namely generating advertising revenue.
In light of the Panel’s finding under the head of ‘bad faith’ (below), it is unnecessary for the Panel to make a finding in relation to this issue.
C. Registered and Used in Bad Faith
The Complainant categorizes this case as a clear case of typo-squatting and it is easy to see why. The Complainant is very well-known, the Domain Name differs from certain of the Complainant’s trademarks by only one letter and the Respondent is using the Domain Name for commercial gain connecting it to a website featuring advertising links to a variety of websites offering goods and services in the field covered by the Complainant’s trademark registrations.
The Respondent rejects this categorization claiming:
1. At time of registration (1998) its sole intent was to register a domain name featuring the dictionary word ‘fools’.
2 It has a number of domain names in the ‘.com’ domain comprising ordinary English words. They include <jackets.com>, <cashews.com>, <vinegar.com>, <fishingrods.com>, <snowmobiles.com>, <truffles.com> amongst others.
3. At time of registration (1998) it was unaware of the existence of the Complainant’s claimed rights to the marks FOOL and FOOL.COM. This should be no surprise as the Respondent is based in Canada and at that time the Complainant had no registrations of either FOOL or FOOL.COM.
4. On registering the Domain Name the Respondent connected the Domain Name to its CES Marketing Group website, CES Marketing Group being its name at that time, Subsequently it was connected to another directory website. However, it was not until 2003 that it was connected to a website featuring the advertising links to which the Complainant objects and those links were chosen by Yahoo, which controls the advertising links on the site, not the Respondent.
In summary, the Respondent’s position is that in 1998 when it registered the Domain Name it did not have the Complainant in mind and indeed could not have done so, because at that time it was unaware of the rights claimed by the Complainant in the marks FOOL and FOOL.COM.
While it is possible that the Respondent is not telling the truth and, being an expert in the field of the Internet, was aware of the Complainant’s website at “www.fool.com” and was aware that in 1997 that site had been nominated for a prestigious Webby Award when it registered the Domain Name, it is for the Complainant to prove it to the satisfaction of the Panel.
The Panel notes that the only other domain names in the Respondent’s portfolio, of which there is any evidence, are all common dictionary words. The Panel notes too that the Complainant cannot have been certain as to the Respondent’s actual intentions at date of registration. Paragraph 36 of the Complaint commences “Respondent knew or should have known of Complainant’s rights in the ‘FOOL Marks’ when it registered the Domain Name ….”. Even if it is appropriate to import into the Policy a concept of constructive knowledge based upon the Complainant’s US trademark registrations, it would be inappropriate here because at date of registration of the Domain Name the Complainant had no registrations of either FOOL or <fool.com>.
Subsequent bad faith use may be indicative of a respondent’s intentions at time of registration, but in this case the use made of the Domain Name by the Respondent for the first four years was, it seems, unexceptionable. The Panel is not prepared to deduce from the subsequent use, which has quite understandably given the Complainant cause for concern, that at time of registration of the Domain Name the Respondent had the Complainant or its trademarks in contemplation.
While the wording of paragraph 4(b)(iv) of the Policy provides scope for arguing that subsequent bad faith use of a domain name can constitute bad faith registration and use for the purposes of the Policy even though the domain name was registered in good faith, panelists have consistently held that for a complaint to succeed under the Policy the respondent’s intentions at time of registration must have been mala fide. The Panel adopts the same approach.
The Complainant has failed to satisfy the Panel that the Domain Name was registered
and is being used in bad faith.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Tony Willoughby
Presiding Panelist
Debra J. Stanek
David E. Sorkin
Panelist Panelist
Dated: March 20, 2007
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