Betsysellsfluvanna.com, Betsysellslakemonticello.com

The timeline behind betsysellsfluvanna.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Elizabeth "Betsy" Gunnels v. Patsy Strong Claim Number: FA0506000499337 PARTIES Complainant is Elizabeth "Betsy" Gunnels (“Complainant”), represented by Donald D. Long, of Feil, Pettit & Williams, PLC, 530 East Main Street, PO Box 2057, Charlottesville, VA 22902. Respondent is Patsy Strong (“Respondent”), represented by Caroline D. Bragg, of Cattano Law Firm, One Boar's Head Lane, Charlottesville, VA 22903. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <betsysellsfluvanna.com> and <betsysellslakemonticello.com>, registered with Network Solutions, Inc. PANEL The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding. Hon. Charles K. McCotter, Jr. (Ret.), G. Gervaise Davis, III and Dennis A. Foster as Panelists. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on June 17, 2005; the National Arbitration Forum received a hard copy of the Complaint on June 20, 2005. On June 20, 2005, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the domain names <betsysellsfluvanna.com> and <betsysellslakemonticello.com> are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On June 27, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 18, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@betsysellsfluvanna.com and postmaster@betsysellslakemonticello.com by e-mail. A timely Response was received and determined to be complete on July 18, 2005. Per the Forum’s Supplemental Rule no. 7, a timely Additional Submission was received from Complainant on July 22, 2005. A timely Additional Submission was received from Respondent on July 27, 2005 On July 28, 2005, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Charles K. McCotter, Jr. (Ret.), G. Gervaise Davis, III and Dennis A. Foster as Panelists. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant --Complainant has continuously operated under the name Betsy Gunnels and has used that name in commerce since 2001 (Complaint Exhibit A). Indeed, Complainant has even registered that service mark with the Virginia State Corporation Commission (Complaint Exhibit B). --Complainant began marketing her services under the marks “Betsy Sells Fluvanna” and “Betsy Sells Lake Monticello” in or about 2001 and has continuously done so since. Her business card displays the “Betsy Sells Fluvanna” mark. The advertisements attached as Exhibit C demonstrate her use of the “Betsy Sells Lake Monticello” mark. --On February 17, 2005, just days after receiving Complainant’s business card, Respondent registered the following domain names: < betsysellsfluvanna.com> and <betsysellslakemonticello.com>. Copies of the Whois Searches showing the registrations are attached as Exhibit D. --Respondent knew at the time of the registration of the disputed domain names that Complainant was using the service mark “Betsy Sells Fluvanna” and intended to register the domain name <betsysellsfluvanna.com> because that domain name was shown on her business cards. See Complaint Exhibit A. Further, Respondent knew that Complainant was using the “Bestsy Sells Lake Monticello” mark as revealed by the advertisement attached at Exhibit C. --Complainant had been working with a website designer to develop the website <betsysellsfluvanna.com>. When Complainant attempted to register <betsysellsfluvanna.com> on February 18, 2005, she discovered Respondent had already registered that name as well as others. At the time of this discovery, Complainant was not aware that <betsysellslakemonticello.com> had also been registered by Respondent. --Respondent has not used the disputed domain names or any names corresponding to the disputed domain names in connection with a bona fide offering of goods or services. --Respondent is not commonly known by the disputed domain names. --Respondent is not making a legitimate noncommercial or fair use of the disputed domain names because she is only holding the disputed domain names to keep Complainant from using them. --Respondent’s registration of the disputed domain names has prevented the Complainant from reflecting the service marks in corresponding domain names, and Respondent has engaged in a pattern of such conduct which is shown through the registration of the domain name of her former employer, Monticello Country Realtors. See Monticello County Realtors, Inc. v. Patsy Strong (NAF), filed contemporaneously with this Complaint. --The disputed domain names are confusingly similar to Complainant’s service marks for the purposes of paragraph 4(a)(i) of the ICANN Policy. Further, the use of the domain names by Respondent, who is not named “Betsy,” is likely to confuse consumers into believing that Respondent’s web sites are owned and supported by Complainant. Thus, Complainant satisfies its burden under paragraph 4(a)(i) of the ICANN Policy of demonstrating that the trademark is identical or confusingly similar. --Complainant has rights in the service marks through ownership of a common law mark. A common law mark is established when a complainant’s mark becomes distinctive or acquires secondary meaning. Complainant has continuously, consistently, and exclusively used the marks “Betsy Sells Fluvanna” and “Betsy Sells Lake Monticello” since 2001, and the Service Marks have acquired secondary meaning and have become distinctive. Complaint Exhibits A and C. ---Pursuant to paragraphs 4(a)(ii) and 4(c) of the ICANN Policy, Respondent has no rights or legitimate interests in the disputed domain names. Respondent has not used the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services. Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. --Pursuant to paragraph 4(a)(iii) of the ICANN Policy, Respondent has registered and used the disputed domain names in bad faith. Respondent’s sole use of the disputed domain names has been to attempt to deprive Complainant of an effective Internet marketing tool. --Respondent’s registration of the disputed domain names was in bad faith, i.e., the act of registering disputed domain names that are identical to Complainant’s service marks. --Although Respondent is not actively using the disputed domain names, a finding of bad faith is supported because Respondent could not possibly use the domain names in a manner that does not infringe Complainant’s service marks. --Respondent’s passive holding of the disputed domain names is also evidence of bad faith registration and use. B. Respondent --The scope of an ICANN UDRP proceeding is extremely narrow. It only targets abusive cybersquatting and nothing else. --Prior UDRP decisions make clear that this Panel should not engage in attempts to resolve matters where there are facts in dispute. --The Complainant provides no evidence that she used the name “Betsy Gunnels” as anything other than her name before this dispute began. --The Complainant must provide credible, relevant evidence in order to prove that the descriptive mark has acquired secondary meaning among the relevant consuming public. In response to its burden [of proof], the Complainant has not offered a single piece of credible, relevant, admissible evidence. --In fact, the Complainant has not used either of the names “Betsy Sells Fluvanna” or “Betsy Sells Lake Monticello” consistently, continuously, or exclusively. See Response Exhibits A, B, C, D, E, F, G. --If, as the Complainant maintains, Complaint Exhibit A is in fact a copy of the Complainant’s actual business card, then she is advertising a website which she does not own and has never had rights to. As such, the Complainant’s Exhibit A is an example of fraud and is not a trademark use which subsequently provides her trademark rights. --In this case Complainant asserts mark rights in a fully descriptive phrase that could fairly be used by Respondent in a descriptive sense in regards to her services. --While working with the Complainant, the Respondent learned that the Complainant was intentionally using the Respondent’s name, advertising slogans, and marketing techniques to divert business to the Complainant. See Response Exhibit J. --The Complainant has not proved any of the facts under Policy paragraphs 4(b)(i-iv) to show the Respondent registered and is using the disputed domain name in bad faith. C. Additional Submissions Complainant’s Additional Submission --Complainant has continuously operated under the service marks (“Betsy Sells Fluvanna” and “Betsy Sells Lake Monticello”) since 2001 and has used the marks in commerce during that entire period in connection with the purchase and sale of real estate in Fluvanna County, Virginia and in Central Virginia. Recognition of a common law mark under these circumstances is well-established. --Respondent acknowledges that she was aware of Complainant’s use of the service marks and of Complainant’s intention to market a website using those marks yet intentionally registered the disputed domain names to prevent the Complainant from doing so. --In addition, passive holding of the disputed domain name is also evidence of bad faith registration and use. --Respondent’s claim that she is not acting in bad faith because she is attempting to minimize customer confusion with her own advertising slogans is specious at best. Respondent’s Additional Submissions --The Respondent does not concede that the Complainant has been “marketing her services” under the terms “Betsy Sells Fluvanna” and “Betsy Sells Lake Monticello.” --The Respondent has no information as to whether or not the Complainant provided her or any member of her real estate firm with a copy of the Complainant’s card in February 2005. --The Complainant attaches an exhibit (Exhibit B) to her Additional Submission indicating that she attempted to register the “Betsy Sells Fluvanna” mark with the Virginia State Corporation Commission. This registration is dated May 25, 2005, just weeks before the Complainant filed her Complaint in this matter. More importantly however is the fact that this registration states on its face that the date claimed for the first use of the mark anywhere is January 15, 2005. Therefore, by her own admission, the Complainant has not used this mark continuously, consistently, or exclusively since 2001. --In her Additional Submission, the Complainant merely rehashes her earlier argument that the Respondent registered the disputed domain name in bad faith.. As previously set forth in her initial Response, the Respondent registered the disputed domain name to prevent further confusion between her advertising slogans and those of the Complainant. --Intent to minimize consumer confusion cannot possibly be considered bad faith because it is the public policy upon which trademark law was founded. The Respondent is making a legitimate noncommercial or fair use of the domain name and has never misleadingly diverted consumers or tarnished the trademark or service mark of another. FINDINGS Both the Complainant and the Respondent are real estate agents operating in the same area of Virginia. The parties are competitors. The disputed domain names, <betsysellsfluvanna.com> and <betsysellsmonticello.com> were registered on February 17, 2005. In addition to their dispute over these two domain names, the parties have a background dispute over allegedly unfair trade practices. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar The Complainant acknowledges that she does not have a registered service mark for the phrase “Betsysellsmonticello.” As to the phrase “Betsysellsfluvanna”, the Complainant has exhibited a copy of a Commonowealth of Virginia service mark registration dated May 25, 2005 with a claimed first use on January 15, 2005 (Complainant Additional Submission Exhibit B). This registered service mark is for selling real estate in Virginia. The Claimant further contends that she has common law service mark rights in both “Betsysellsmonticello” and “Betsysellsfluvanna.” In support of this contention, the Complainant has exhibited clippings from publications ( Complaint Exhibits A and C ) and a copy of a business card with the Complainant’s name and one of the disputed domain names, viz., <betsysellsfluvanna.com> (Complaint Exhibit A). The Panel can readily see that the two disputed domain names are identical or confusingly similar to the two phrases in which the Complainant is claiming service mark rights, i.e., the two disputed domain names are <betsysellsfluvanna.com> and <betsysellsmonticello.com>, and the Complainant claims service mark rights in the phrases “Betsy Sells Fluvanna” and “Betsy Sells Monticello”. The problem is the Panel can not see that the Complainant has demonstrated any service mark rights in those names. To begin, the two claimed phrases are highly descriptive. Thus, in the Panel’s view, it would take the Complainant some time to establish secondary meaning that would lead to service mark rights in the two phrases, assuming she would ever be able to do so. The Complainant claims to have used the two phrases since 2001, but there is strong evidence that this is false. The Complainant only claims to have used the business card with the email address <betsysellsfluvanna.com> as of February, 2005, i.e. recently and almost contemporaneous with this dispute. Next, the Complainant claims to have used the phrases (“Betsy Sells Fluvanna” and “Betsy Sells Monticello”) in publications and on this point offers Complaint Exhibits A and C. But in Exhibit A there are merely some articles showing that the Complainant sells real estate. In Exhibit C we do see the phrase “Betsy sells Monticello,” but it is used to say just that. The phrase is not clearly used as a service mark. Moreover, the only indication of date is the Complainant writing in by hand “May 29-June 4, 2003.” The most telling evidence that the Complainant’s use of the claimed two phrases is of recent vintage is the Virginia Commonwealth registration for “Betsysellsfluvanna,” which the Complainant exhibited at Exhibit B in its Additional Submission. Here the Complainant claims a first use of January 15, 2005. Yet, as the Respondent points out, at several places in the Complaint the Complainant contends to have used both claimed phrases continuously since 2001 (at pp. 3, 4, and 5 of the Complaint). This clearly is untrue. While United States law on the amount of time necessary to establish secondary meaning in a descriptive mark does not prescribe a precise lapse of time, the Panel is confident it is more than a few months, which is all the Complainant comes close to showing here (See McCarthy on Trademarks and Unfair Competition, Vol. 11, Sect. 15:54, 2005 ed.). The Panel concludes the Complainant has not shown that it has service mark rights in the two disputed domain names, <betsysellsfluvanna.com> and <betsysellsmonticello.com>. The Complainant thus has failed to carry its burden of proof under paragraph 4(a)(i) of the Policy. Since the Policy requires the Complainant to carry its burden of proof under paragraphs 4(a)(i-iii) inclusively, the Panel does not need to reach the issues of Legitimate Rights and Interests or of Bad Faith. DECISION The Complainant having failed to carry its burden of proof under paragraph 4(a)(i) as required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Dennis A. Foster Presiding Panelist Hon. Charles K. McCotter, Jr. (Ret.), G. Gervaise Davis, III Panelists Dated: August 10, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.