Etsey.com

The timeline behind etsey.com

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

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

NATIONAL ARBITRATION FORUM DECISION Etsy, Inc. v. Texas International Property Associates - NA NA Claim Number: FA0809001222645 PARTIES Complainant is Etsy, Inc. (“Complainant”), represented by David A. W. Wong, of Barnes & Thornburg LLP, Indiana, USA. Respondent is Texas International Property Associates - NA NA (“Respondent”), represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker, Texas, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <etsey.com>, registered with Compana, LLC. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. Bruce E. Meyerson as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on August 29, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 2, 2008. On September 3, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <etsey.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 September 8, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 29, 2008 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@etsey.com by e-mail. A timely Response was received and determined to be complete on September 29, 2008. An Additional Submission was received from Complainant on October 3, 2008, and was determined to be timely and complete pursuant to Supplemental Rule 7. An Additional Submission was received from Respondent on October 8, 2008, and was determined to be timely and complete pursuant to Supplemental Rule 7. On October 14, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant Complainant states that it is an online marketplace for buying and selling “all things handmade.” Complainant began offering its services on June 1, 2005. Complainant’s mark in the word “ETSY” was filed with United States Patent and Trademark Office on September 12, 2005 and the mark was registered on December 5, 2006. Complainant contends that Respondent’s web site which incorporates the word “etsey,” a misspelling of Complainant’s mark, is confusingly similar to it. Respondent’s web site features a search engine which includes links to competitors of Complainant. Complainant asserts that Respondent has a pattern of registering domain names in bad faith. B. Respondent Respondent states that “etsey” is a surname and is not confusingly similar to Complainant’s mark. Respondent states that the links on its site go to a variety of businesses, and relate to a variety of topics, many of which have nothing to do with Complainant’s business (e.g., information technology, New York, real estate agents, and Hurricane Betsy). Respondent states that the relationship it has with a company that connects it own web sites to Respondent’s domain name offers a legitimate business of targeted advertising and is “legal everywhere in the world.” Respondent states that it has not acted in bad faith because when the disputed domain name was registered on December 31, 2005, Respondent was completely unaware of Complainant’s mark which itself was not published for opposition until September 19, 2006. Thus, Respondent states that it had no knowledge of Complainant when it registered the domain name. Respondent acknowledges that it is the registrant of thousands of domain names and that registering terms “which no other party can claim exclusive use is a legitimate business.” C. Additional Submissions The Complainant and Respondent each made Additional Submissions. With one exception the arguments in the Additional Submissions were similar to those made in the Complainant and Response. In its Additional Submission, Respondent contests Complainant’s Additional Submission, claiming it to be improper because it was not solicited from the Panel. Respondent cites Rule 12, which states that “[i]n addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.” FINDINGS The ETSY mark was registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,179,782) on December 5, 2006. The mark was first used in commerce on June 1, 2005, and Complainant filed its trademark application with the USPTO on June 17, 2005. The disputed domain name was created on December 31, 2005. 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. Preliminary Issue: Complainant’s Additional Submission In its Additional Submission, Respondent contests Complainant’s Additional Submission, claiming it to be improper because it was not solicited from the Panel. Respondent cites Rule 12, which states that “[i]n addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.” It is true that the Panel may request additional statements or documents pursuant to Rule 12 as it deems necessary. It is also true, pursuant to the National Arbitration Forum’s Supplemental Rule 7, that “[a] party may Submit additional written statements and documents to the Forum and the opposing party(s) within five (5) Calendar Days after the date the Response was received by the Forum, or, if no Response has been filed, the last date the Response was due to be received by the Forum.” Moreover, the preamble to the Rules states that the administrative proceeding “shall be governed by these Rules and also the Supplemental Rules of the Provider administering the proceedings.” Respondent argues that Supplemental Rule 7 is invalid because it conflicts with ICANN Rule 12. It should be noted that Respondent has presented this argument before previous UDRP panels, and these panels have held Supplemental Rule 7 to be valid, and not in conflict with ICANN Rule 12. See, e.g., Alive Hospice, Inc. v. Tex. Int'l Prop. Assocs. - NA NA, FA 1211670 (Nat. Arb. Forum Aug. 14, 2008) (“In its Additional Submission Respondent first objects to the filing of Complainant’s Additional Submission on the grounds that the Forum’s Supplemental Rule 7 . . . is an improper modification of Rule 12 . . . which allows for an Additional Submission only upon the request of the panel. The Panel determines that the Forum’s Supplemental Rule 7 is valid and overrules this objection.”); Post-Newsweek Stations, Mich., Inc. v. Tex. Int'l Prop. Assocs.- NA NA, FA 1169950 (Nat. Arb. Forum May 16, 2008) (“With respect to Respondent’s contention that Supplemental Rule 7, which sets forth a procedure for the submission of supplemental filings, contravenes the Rules, the Panel finds no contradiction between the Supplemental Rules . . . and the Rules and the Policy on the other hand.”). Accordingly, the Panel finds that Complainant’s filing of its Additional Submission is proper, and that Supplemental Rule 7 does not conflict with ICANN Rule 12. Bad Faith Registration The ETSY mark was registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,179,782) on December 5, 2006.[1] The mark was first used in commerce on June 1, 2005, and Complainant filed its trademark application with the USPTO on June 17, 2005. The disputed domain name was created on December 31, 2005. Thus, the central question in this case concerns the temporal relationship between the registration of a domain name, and the acquisition of trademark rights by the complaining party. The question of whether the complaining party has rights in a mark within the meaning of Policy ¶ 4(a)(i) should be viewed as a question simply of standing, without regard to when those rights were established. See generally ROBERT A. BADGLEY, DOMAIN NAME DISPUTES § 6.01 (2002). The question of when the complainant established rights in a mark goes to the issue of bad faith—a domain name is registered in bad faith when the domain name is registered after the complainant has established rights in a trademark. Policy ¶ 4(a)(iii). In analyzing what should be the issue of bad faith, some decisions have found that, as part of the analysis under Policy ¶ 4(a)(i), a complainant’s rights in a registered mark relate back to the filing of the application for registration. See, e.g., Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007). Other panels have found that under Policy ¶ 4(a)(i) trademark rights do not relate back to the date of a trademark application. E.g., Poker AB v. Bim, D2005-1097 (WIPO Jan. 2, 2006). Focusing the analysis of this issue where it should be—under Policy ¶ 4(a)(iii)--the issue in this case becomes whether the registration of the ETSY mark in December 2006 should relate back to the application for registration in June 2005, six months before the registration of the domain name in December 2005. In some decisions, albeit treating the issue under Policy ¶ 4(a)(i), panels have held that a complainant’s rights in a mark date back to the trademark application’s filing date under Policy ¶ 4(a)(i). Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007); Bob Jones Univ. v. Kane, FA 324692 (Nat. Arb. Forum Oct. 21, 2004). Other panels have held that a trademark that did not exist at the time the disputed domain name was registered cannot establish successfully a claim under the Policy, because it is impossible for the domain name to have been registered in bad faith. Sealstore.com L.L.C. v. Sealpool Ltd., No. FA 96535 (Nat. Arb. Forum March 8, 2001); e-Duction, Inc. v. Zuccarini, No. D2000-1369 (WIPO February 5, 2001). If the former rule would be applied in this case, Complainant’s trademark rights in the ETSY would relate back to June 2005, six months before the domain name was registered. At first blush these cases appear inconsistent. But when looking carefully at the “relate back” cases the panels which have held that trademark rights relate back to the filing of a trademark application did so in situations where, unlike the present case, the trademarks were widely known or where the complainant also had established common law rights in the mark. See, e.g., Hershey Co. v. Reaves, supra (“The Panel has little difficulty in finding that Complainant’s continuous and extensive use of the KISSES mark for 100 years demonstrates that the mark has acquired secondary meaning in association with Complainant’s products, which shows that Complainant has common law rights in the mark pursuant to Policy ¶ 4(a)(i).”); FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003) (“The Fire Department of the City of New York, commonly known as FDNY, was established in 1898 and has continuously used the FDNY Marks to identify its services for over a century.”). In other words, as one panel explained, there is a “legal presumption” of bad faith if a respondent reasonably should have been aware of the complaining party’s rights in the mark. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002). Therefore, because those cases finding the registration of a mark relates back to the filing of an application involve situations in which the mark is well established, these cases are not necessarily inconsistent with the decisions holding that trademark rights of the complaining party must exist prior to the registration of the domain name. Thus, “[n]ormally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, http://www.wipo.int/amc/en/domains/search/overview/#31; see also ROBERT A. BADGLEY, DOMAIN NAME DISPUTES § 8.03 (2002). Therefore, because the Complainant has not established that during the last six months of 2005 it had common law trademark rights in the ETSY mark, or that its mark was so well known that Respondent reasonably should have been aware of it, I find that Respondent lacked actual or constructive knowledge of Complainant’s mark when the domain name was registered. Because Complainant did not hold “rights” in the ETSY mark prior to the registration of the domain name, Respondent did not register its domain name in bad faith. DECISION Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Bruce E. Meyerson, Panelist Dated: November 11, 2008 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM [1] Complainant holds two other trademarks which incorporate the ETSY mark.

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