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J. Crew International, Inc. v. crew.com

WIPO Case No. D2000-0054

Outcome
Transfer
Domain names
crew.com
Complainant
J. Crew International, Inc.
Respondent
crew.com
Panel
Richard W. Page, Mark V.B. Partridge, Dissenting
Decided
25 Apr 2000
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0054.html

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

J. Crew International, Inc. v. crew.com

Case No. D2000-0054

1. The Parties

Claimant is J. Crew International, Inc. a corporation located at 802 West Street,

Suite102, Wilmington, Delaware 19801 USA with its corporate headquarters located

at 770 Broadway, New York, New York 10003 USA.

Respondent is "crew.com" an entity of unknown type located at P.O.

Box 9911, Washington, DC 20016 USA. Respondent's alter ego is Telepathy, Inc.,

which uses the identical post office box as Respondent, and which is listed

as the Administrative Contact, Technical Contact and Billing Contact for Respondent.

Respondent refers to itself in the Response as Telepathy, Inc. The only time

it used the business name "crew.com" was when it registered its domain name

<crew.com>. Respondent is not incorporated under the name "crew.com"

and has not filed an assumed name certificate under the name "crew.com."

2. The Domain Name and Registrar

The domain name at issue is <crew.com>. The registrar is Network Solutions,

Inc. (the "Registrar"), 505 Huntmar Park Dr., Herndon, Virginia 20170

USA.

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received

the Complaint of Complainant on February 10, 2000 by email and on February 15,

2000 in hardcopy. The Complainant paid the required fee.

On February 16, 2000, the Center sent an Acknowledgement of Receipt of the

Complaint to the Complainant. On the same date, the Center sent to the Registrar

a request for verification of registration data. On February 16, 2000, the Registrar

confirmed, inter alia, that it is the registrar of the domain name in

dispute and that <crew.com> is registered in the Respondent's name.

Having verified that the Complaint satisfies the formal requirements of the

ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"),

the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"),

and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

(the "Supplemental Rules"), the Center on February 16, 2000 sent to

the Respondent, with a copy to the Complainant, a notification of the administrative

proceeding together with copies of the Complaint. This notification was sent

by the methods required under paragraph 2(a) of the Rules. The formal date of

the commencement of this administrative proceeding is February 16, 2000.

On March 7, 2000, the Center received Respondent’s Response by email with hardcopy

received on March 9, 2000. On March 10, 2000, the Center sought clarification

of certain items in the Response and in correspondence from Complainant. On

March 24, 2000, after receiving their completed and signed Statements

of Acceptance and Declarations of Impartiality and Independence, the Center

notified the parties of the appointment of a three-arbitrator panel consisting

of Mr. Richard W. Page as the Presiding Panelist, Mr. Mark Partridge as Complainant’s

party-appointed panelist and Mr. G. Gervaise Davis, as Respondent’s party-appointed

panelist.

The Panel met by telephone conference call on April 5, 2000. In the Panel’s

Procedural Order No.1delivered to the Center and the parties, the Presiding

Panelist confirmed the Panel’s finding that the resolution of the present dispute

involved extraordinary circumstances warranting the extension of the deadline

to deliver the Decision until April 20, 2000.

4. Factual Background

Complainant is a leading retailer of women's and men's apparel, shoes and accessories

and is the owner of two United States trademarks (1) J. CREW for bags,

clothing and catalog services, Reg. No. 1308888, issued December 11, 1984, and

(2) CREW for clothing, Reg. No. 1348064, issued July 19, 1985. Complainant has

been using its principal trademark is J. CREW since 1982. It has used in a more

limited manner its secondary trademark CREW for in-store signs, but not in its

primary advertising. Complainant's products are distributed exclusively through

the company's retail stores, factory outlet stores, catalogs and Internet site

www.jcrew.com. Complainant currently circulates over 73 million J. CREW catalogs

per year and operates over 80 J. CREW retail stores and 45 J. CREW factory outlet

stores. In 1998, products sold under the J. CREW brand name contributed $626

million in revenues. Revenues derived from the Internet were estimated at $20

million for 1998.

Respondent registered the domain name <crew.com> on July 12, 1998, then

later registered the domain name <j.crew.com> as a sub-account. Respondent's

alter ego is Telepathy, Inc., which uses the identical post office box as Respondent,

and which is listed as the Administrative Contact, Technical Contact and Billing

Contact for Respondent. Telepathy has registered or acquired more than 50 domain

names consisting of words that may be trademarks of others or are generic words

that others may wish to use. The identical post office box also is listed for

an individual named Nat Cohen, who is believed to be a principal of both Respondent

and Telepathy, Inc.

None of Telepathy's domain names (other than its own domain name <telepathy.com>)

is being used for an active website. Telepathy is clearly in the business of

offering its domain names for sale. Its purpose in registering or acquiring

these domain names has been expressly stated on its website, www.telepathy.com:

Telepathy has acquired attractive domains both for use in its own development

efforts and for its development partners and clients.

Telepathy registered or acquired these domain names primarily for the purpose

of selling, renting, or otherwise transferring the domain name registrations

to its "clients." The same appears to be true of Respondent's domain name <crew.com>.

Complainant registered the trademarks J. CREW and CREW before Respondent registered

the domain name <crew.com> or the variation domain name <j.crew.com>.

Respondent has used its domain name <crew.com> only for a website linked

to Complainant's web site, and for no other purpose.

After Respondent had registered the domain name <crew.com>, an employee

of Complainant invited Respondent to join Complainant’s affiliate network. Pursuant

to this affiliate program, Respondent was permitted to place a banner ad on

Respondent’s website which was linked to Complainant’s website. Complainant

promised Respondent a commission for sales made to customers using that link,

but has apparently defaulted on its obligation. The only material on Respondent's

website was the banner ad linked to Complainant's website.

When Complainant's attorney asked Respondent's attorney whether Respondent

might be willing to sell its domain name <crew.com> to Complainant, Respondent's

attorney said that Respondent had "spent over 6 figures for domain names" and

"would not be interested in a nominal sum." Complainant then revoked Respondent's

participation in the affiliate network. Respondent is not a licensee of Complainant,

nor has Respondent ever been authorized by Complainant to use Respondent's domain

name <crew.com> or the variation domain name <j.crew.com>.

In response to a request by Complainant to Network Solutions, Inc. ("NSI"),

Respondent's domain name <crew.com> was placed on "Hold" on September

3, 1999 in accordance with NSI's Domain Name Dispute Policy. However, under

the new ICANN Uniform Domain Name Dispute Resolution Policy, NSI has informed

Complainant that Respondent's domain name <crew.com> will be reactivated

on February 11, 2000 unless it receives a copy of the Complaint in this matter.

5. Parties’ Contentions

A. Complainant contends that the domain name <crew.com> is identical

to the trademark CREW and confusingly similar to the trademark J. CREW pursuant

to the Policy paragraph 4(a)(i).

B. Complainant contends that Respondent has no rights or legitimate interest

in the domain name <crew.com> pursuant to the Policy paragraph 4(a)(ii).

C. Complainant contends that Respondent registered and is using the domain

name <crew.com> in bad faith in violation of the Policy paragraph 4(a)(iii).

D. Respondent does not contest that the domain name <crew.com> is identical

with the trademark CREW. Respondent does contest that the domain name <crew.com>

is confusingly similar to the trademark J. CREW.

E. Respondent contends that it has rights and legitimate interest in <crew.com>

because of Respondent’s legitimate business of developing domain names for its

own use and for sale to its clients.

F. Respondent contends that its registration and use of <crew.com> is

in good faith because it had no actual knowledge of the CREW or J. CREW trademarks

when it registered the domain name and because it was asked to join Complainant’s

affiliates group.

6. Discussion and Findings

Identity or Confusing Similarity.

The domain name presently at issue is <crew.com>. The "crew"

portion of this domain name is identical to Complainant’s trademark CREW. Therefore,

a majority of the Panel finds that the requirement of the Policy paragraph 4(a)(i)

is satisfied.

The Complainant has not offered sufficient proof to warrant a finding the domain

name <crew.com> is confusingly similar to Complainant's trademark J. CREW

or to its domain name <jcrew.com>.

Rights or Legitimate Interest.

Respondent is a speculator who registers domain names in the hopes that others

will seek to buy or license the domain names from it. Speculation means the

practice of registering or acquiring domain names without any demonstrable plan

for a specific use of that domain name. The speculator hopes to license or sell

the domain name in the future for profit, but has no specific use in mind at

the time of registration or acquisition. Such conduct does not fall within any

of the circumstances listed under Paragraph 4 of the Policy as evidence of rights

or legitimate interest in the domain name. Such conduct precludes others who

have a legitimate desire to use the name from doing so. Persons precluded by

such conduct may be those who have no prior right or interest in the name, as

well as those who have a demonstrable prior interest in the name. Speculation

is not recognized by the Policy as a legitimate interest in a name, and the

Policy should not be interpreted to hold that mere speculation in domain names

is a legitimate interest. To hold otherwise would be contrary to well-established

principles that preclude mere speculation in names and trademarks and would

encourage speculators to appropriate domain names that others desire to put

to legitimate use. Ultimately, speculation in domain names increases costs to

the operators of websites and limits the availability of domain names.

The Complainant and the Respondent are both domiciled in the United States

of America. Therefore, the case law on United States trademarks gives the most

persuasive point of reference for resolution of the legitimacy of speculation

in domain names and provides authority that speculation in the registration

and use of domain names corresponding to another's trademark is an abusive registration.

Respondent asserts that its activities are no different than what other entrepreneurs

do in developing intent to use trademarks. However, Respondent is in error in

its suggestion that speculation in trademarks is permissible. Under United States

trademark law, an applicant must have a demonstrable bona fide intent to use

a trademark before filing an intent to use application. 15 U.S.C. 1051(b). Failure

to present evidence of a demonstrable plan to use the mark can result in a finding

that the application is invalid. See Commodore Electronics Ltd. v. CBM Kabushiki

Kaisha, 26 U.S. P.Q.2d 1503, 1507 (T.T.A.B. 1993):

[W]e hold that absent other facts which adequately explain or outweigh the

failure of an applicant to have any documents supportive of or bearing upon

its claimed intent to use its mark in commerce, the absence of any documentary

evidence on the part of an applicant regarding such intent is sufficient to

prove that the applicant lacks a bona fide intention to use the mark in commerce.

Further, the applicant may not obtain a registration before it has made actual

use of the mark. 15 U.S.C. 1051(d). While the application is pending, the application

may not be sold to any other party except in connection with a sale of the underlying

business. 15 U.S.C. 1060. Otherwise, the application becomes void and any subsequent

registration is subject to cancellation. Clorox Co. v. Chemical Bank, 40 U.S.P.Q.2d

1098, 1104-1106 (T.T.A.B. 1996)(holding that the assignment of an intent to

use application and resulting registration were void). These statutory rules

were carefully considered and serve a valuable purpose of preventing mere speculation

in the registration of trademarks. As discussed in Clorox, the provisions of

United States law preventing the assignment of intent to use applications without

the sale of the underlying business is part of a strong public policy recognized

by the United States Congress to prevent trafficking or speculation in trademarks.

Id. at 1104. The policy against trafficking in trademarks has also been adopted

in other countries besides the United States.

The ICANN Policy is based on the principle of "abusive registration" set forth

in the Report of the WIPO Internet Domain Name Process, April 30, 1999 (the

"WIPO Report"). Paragraph 172 of the WIPO report identifies situations

not considered to fall within the definition of an abusive registration:

The cumulative conditions of the first paragraph of the definition make it

clear that the behavior of innocent or good faith domain name registrants is

not to be considered abusive. For example, a small business that had registered

a domain name could show, through business plans, correspondence, reports, or

other forms of evidence, that it had a bona fide intention to use the name in

good faith.

Here, Respondent has failed to show demonstrable evidence of plans to use the

domain name in good faith. Indeed, its response concedes that it had no definite

plan for use of the <crew.com> domain name when it obtained the registration

and made no bona fide use of the domain name prior to being contacted by Complainant

to participate in Complainant's affiliate program.

Respondent has given various justifications for its registration of <crew.com>,

claiming that the domain name could be used for rowing or for construction teams.

Shifting justifications for the selection of a domain name has been deemed to

support a finding of bad faith. See Northern Light Technology, Inc. v. Northern

Lights Club, 2000 U.S. Dist. LEXIS 4732 (D. Mass. March 31, 2000)(finding the

defendant’s various explanations to be mere pretext).

Mere speculation in domain names is distinguishable from the conduct allowed

in other cases where the domain name registrant has prevailed over the objections

of a trademark owner. For example, in Avery Dennison Corp. v. Sumpton, 189 F.3d

868 (9th Cir. 1999), on which Respondent relies, the defendant was

making bona fide use of the domain names at issue. That is not the case here.

Further, the Court decisions have not yet interpreted the meaning of "abusive

registration" within the context of the ICANN policy.

This also is not a case of reverse domain name "hijacking." The typical

case of reverse domain name hijacking arose where a trademark owner would use

the old NSI policy to place a domain name on "Hold" status even though

the domain name holder was using the name in connection with unrelated goods

or services or was already known by the name. Here, Respondent has not presented

any evidence of demonstrable plans to use the domain name in connection with

a bona fide offering of goods or services or actual use of the domain name.

Rather, it has registered the domain name for purely speculative purposes despite

the fact that it had constructive notice as a matter of law that the name was

a registered trademark of another.

Therefore, a majority of the Panel finds that Respondent has no rights or legitimate

interest in the domain name <crew.com> and that the requirement of the

Policy paragraph 4(a)(ii) is satisfied.

Bad Faith.

Paragraph 4 of the Policy provides that evidence of bad faith registration

and use includes circumstances showing:

(ii) you have registered the domain name in order to prevent the owner of the

trademark or service mark from reflecting the mark in a corresponding domain

name, provided that you have engaged in a pattern of such conduct.

a. Preclusion

Respondent's registration prevents Complainant from using the <crew.com>

or <j.crew.com> domain names corresponding to Complainant’s registered

trademarks. We recognize that Complainant has registered the domain name <jcrew.com>.

However, the ability of the Complainant to obtain alternate domain names should

not make this provision inapplicable. Otherwise, the provision would always

be inapplicable for it would nearly always be possible for the Complainant to

obtain an alternative domain name or even to register the same name as its trademark

in another gTLD or ccTLD.

b. Constructive Notice

Although Respondent claims it acquired the domain name without knowledge of

Complainant's trademark registration, Respondent had constructive notice of

that registration as a matter of United States trademark law pursuant to 17

U.S.C. 1072. As a result, Respondent cannot rely on lack of knowledge as a defense

to its conduct. It knew or should have known that its registration of <crew.com>

prevented Complainant from reflecting its CREW trademark in a corresponding

.com domain name. Because of the constructive notice provisions of United States

trademark law, lack of actual knowledge is not a defense and it is not necessary

to find actual knowledge to conclude that the use or registration of a mark

is in bad faith.

c. Pattern of Conduct

Respondent admits it is engaged in a pattern of conduct involving the speculative

registration of domain names for profit. While Respondent owns a long list of

registrations, it has given only one example where it has made bona fide use

of a domain name. This pattern of conduct prevents others from making bona fide

use of desirable domain names that may correspond to their trademarks.

Therefore, a majority of the Panel finds that Respondent has registered and

used the domain name <crew.com> in bad faith and that the requirement

of the Policy paragraph 4(a)(iii) is satisfied.

Prior Decisions Regarding Speculation

A majority of the Panel has considered the decision in General Machine Products

Company, Inc. v. Prime Domains, ICANN Case No. FA0001000092531, finding that

registration of the domain name <craftwork.com> was not an abusive registration.

In General Machine, Respondent’s alter ego Telepathy, Inc. (then known as Prime

Domains) was in the business of selling generic and descriptive domain names.

Respondent demonstrated that the phrase "craftwork" was commonly used as a descriptive

term, and claimed that it registered the domain name without actual knowledge

of the complainant's trademark because it had widespread use as a descriptive

or generic term.

Although General Machine appears to be directly applicable to the present case,

the panel in that case did not discuss the fact that Respondent had constructive

notice as a matter of law of the complainant's mark and the decision does not

disclose whether the Respondent had a demonstrable plan to use the domain name

when it was registered. A majority of the present Panel could only agree with

the result in General Machine if there were evidence of a demonstrable plan

at the time of registration. If it is the holding of the panel in General Machine

that the Policy permits speculative registration of names that happen to be

the trademarks of others without a demonstrable plan for bona fide use of the

domain name, then a majority of the present Panel must respectfully disagree

with the decision.

In reaching our opinion we are well aware that trademarks are not "rights in

gross" and we do not think our opinion grants trademark owners rights beyond

those recognized under applicable law, particularly in the United States where

Congress has enacted the Anti-Cybersquatting Consumer Protection Act ("ACPA"),

in part, to prevent trafficking in domain names that are the same as the trademarks

of another. See, for example, Cello Holdings, L.L.C. v. Lawrence-Dahl Companies,

2000 U.S. Dist. LEXIS 3936 (S.D.N.Y. March 30, 2000)(denying cross motions for

summary judgment due to factual disputes); Northern Light Technology, Inc. v.

Northern Lights Club, 2000 U.S. Dist. LEXIS 4732 (D. Mass. March 31, 2000)(refusing

to modify preliminary injunction against northernlights.com domain name based

on ACPA). In Cello Holdings, the Court stated that a reasonable fact finder

could conclude the defendant had a bad faith intent to profit from registration

of a domain name that matched the plaintiff's CELLO mark because " he had no

proprietary rights to the ‘Cello’ mark when he registered ‘cello.com,’ he had

not previously used it, and he had engaged in a pattern of registering domain

names that could be of interest to others and then trying to sell them." Thus,

our conclusion--that the Respondent's registration of <crew.com> was an

abusive registration--is consistent with the scope of protection afforded consumers

and trademark owners under U.S. law.

7. Decision

The majority of the Panel does not decide that all speculation in domain names

is prevented by the Policy. Rather, for the purpose of this case, we merely

hold that registration of domain names for speculative purposes constitutes

an abusive registration when (1) the respondent has no demonstrable plan to

use the domain name for a bona fide purpose prior to registration or acquisition

of the domain name; (2) the respondent had constructive or actual notice of

another's rights in a trademark corresponding to the domain name prior to registration

or acquisition of the domain name; (3) the respondent engages in a pattern of

conduct involving speculative registration of domain names; and (4) the domain

name registration prevents the trademark holder from having a domain name that

corresponds to its registered mark. This definition is consistent with the considerations

stated in the WIPO Report and allows speculation in domain names that do not

correspond to registered marks or where the registrant has a demonstrable plan

to use the domain name for a bona fide purpose prior to registration or acquisition.

A majority of the Panel concludes (a) that the domain name <crew.com>

is identical to the trademark CREW, (b) that Respondent has no rights or legitimate

interest in the domain name and (c) that Respondent registered and used the

domain name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy

and 15 of the Rules, a majority of the Panel orders that the domain name <crew.com>

be transferred to Complainant J. Crew International, Inc.

Richard W. Page

Presiding Panelist

Mark V.B. Partridge

Panelist

April 20, 2000

DISSENT BY PANELIST

I respectfully dissent from the decision of the majority of this panel because

their decision creates and applies a test for "abusive domain name registrations"

which is not, in my opinion, part of the ICANN Uniform Dispute Resolution Policy

nor consonant with the stated and very limited purpose of this Policy. It does

so in what I deem a mistaken view that it is up to the panel to enforce a non-existent

policy of ICANN to prevent people from registering domain names for resale to

others than the trademark owner. Whether such activity is proper or improper

is not before us under the ICANN Policy and we do not, in any event, have the

authority to so decide under the ICANN rules. Even if the decision were correct

under the Anti-Cybersquatting Consumer Protection Act [1],

which I do not think is the case, we are not here authorized to apply that Act

which differs significantly from the ICANN Policy and Rules. The majority decision

goes far beyond the scope of the present ICANN Policy.

The panel holds "that the registration of domain names for speculative purposes

constitutes a abusive registration when (1) the Respondent has no demonstrable

plan to use the domain name for a bona fide purpose prior to registration or

acquisition of the domain name; (2) the Respondent had constructive or actual

notice of another's rights in a trademark corresponding to the domain prior

to registration or acquisition of the domain name; (3) the respondent engages

in a pattern of conduct involving speculative registration of domain names;

and (4) the domain name registration prevents the trademark holder from having

a domain name that corresponds to its registered trademark."

Unfortunately, the biased test the panel has used here automatically creates

a situation, in every case, where there is only one element left to test, if

the Complainant has a registered trademark and the domain registered by the

Respondent is similar to the Complainant’s registered trademark. Since every

ICANN case, by definition, has to have these two other elements the decision

obviates two thirds of the tests set up under the ICANN Policy. The majority

view boils each case down to the single question, "Did the Respondent have a

specific bona fide purpose or use in mind prior to acquisition of the domain

name?" It rejects the idea that someone might not know exactly how he or she

intends to use the domain name, and makes such uncertainty bad faith registration.

That is not what the Policy we, as rule bound arbitrators, are directed to apply

by the Rules.

The majority has identified the second element as "knowledge." This test, however,

is always satisfied per se by what the majority identifies as automatic

"constructive" notice of another's trademark rights. This is not a test, since

this element would be satisfied for all registered trademarks by virtue of the

simple fact of registration under the majority’s logic.

Similarly, the third element of the majority's test is also satisfied per

se anytime the second level domain name and the registered trademark are

similar or identical. Thus, the only test left, in each case, is whether the

Respondent had a demonstrable plan to use the domain name for a bona fide purpose

prior to registration or acquisition of the domain name. This is a gross over-simplification

of the issues involved in preventing abusive domain name registrations. It ignores

the planned limits of the ICANN Policy and adds wholly new purposes to what

is presently a fairly clear set of rules. These rules were worked out as a compromise

between the one view of assuming all registrations of domains that are the same

as or similar to a trademark were abusive, and the other that recognizes that

it is not against the trademark laws of the world to register a domain with

an intent to use it that is not fully developed at the time of the registration.

The majority decision would create a world where Intent to Use Registrations

could be destroyed by simply showing that the ITU registrant has changed his

mind after the fact, or was not entirely certain how the mark would finally

be used or on what type of product or service. I do not believe this was the

intent of the ICANN Directors or the many people who participated in developing

these rules. To do so, would be tantamount to repeal of some of the very sound

reasons the US and other nations permit ITU registrations.

Factual Background

Complainants are the owners of the United States trademark registrations for

(1) J. CREW for bags, clothing and catalog services, Reg. No. 1,308,888 and

(2) CREW for clothing, Reg. No. 1308064. Complainant uses as its principal mark

J. CREW, and admits that the trademark CREW has not been used as primary advertising

for its products and mostly only for in-store signs, etc. Even that is questionable

given that the only evidence of that is a few pictures of signs which could

have been created for this case, although I do not suggest that that is the

fact here. While the majority notes that substantial amounts of advertising

have been expended on the J. CREW brand-name, this also appears to be of little

relevance in the instant case because the trademark at issue is the CREW mark,

not J. CREW. It appears all of Complainant's products are distributed exclusively

through the retail stores, factory outlet stores, catalogs and an Internet site

at www.jcrew.com. In 1998 for example, Complainant sold under the J. CREW brand-name

$626 million worth of merchandise. There is no evidence before this panel that

any goods or services were ever sold under the CREW name.

The Respondent claims to have had no actual knowledge of the CREW trademark

when it registered the CREW domain name. There is no evidence before this panel

to the contrary. The majority states that "Telepathy has registered or acquired

more than 50 domain names consisting of words that may be trademarks

of others or which are generic words that others may wish to use." [2]

[Emphasis added]

The parties to this dispute are not unfamiliar with each other. Long prior

to this dispute, Respondent was solicited by Complainant to become part

of Complainant’s affiliate network advertising its goods. Respondent agreed

to permit Complainant to place banner ads on Respondent's Web site that were

linked to Complainant’s web site. Complainant promised Respondent to pay a commission

on sales made to customers using that link, but defaulted on its obligation

to pay the commission. At one time Complainant’s attorney apparently unilaterally

offered to purchase the <crew.com> domain name from Respondent. When it

became clear that Respondent would not sell the domain name for a nominal sum,

Complainant revoked Respondent's participation in the affiliate network and

instituted this action. One might question whether this does not suggest that,

in fact, this is a case of reverse domain name hijacking in which the Complainant

has unilaterally decided this is a domain it would now like to have, after encouraging

its use by another, and that it is now trying to use the ICANN rules to achieve

what it cannot do by negotiations for the purchase of the name.

Nature of the word and trademark "CREW"

It is not disputed that the Complainant's trademark CREW and the Respondent's

domain name are essentially the same. Paragraph 4 (a) (i) of the ICANN Policy

requires that the domain name be identical or confusingly similar to the Complainant’s

trademark. The Complainant clearly meets this test. In this case, however, that

fact cuts both ways because the word CREW is so generic. The American Heritage

Dictionary defines CREW as:

CREW1 (kr›) n. 1.a. A group of people working together;

a gang: a CREW of stagehands. b. A group of people gathered together

temporarily; a crowd. 2.a. All personnel operating or serving aboard

a ship. b. All of a ship's personnel except the officers. c. All

personnel operating or serving aboard an aircraft in flight. 3.a.

Sports. A team of rowers, as of a racing shell. b. The sport of rowing.

--CREW intr.v. CREWed, CREW·ing, CREWs. To serve

as a member of a CREW: CREWed for my sister on a sloop; a spacecraft that

was CREWed by a team of eight people. [Middle English creue, military

reinforcement, from Old French creue, increase, from feminine past participle

of creistre, to grow, from Latin cr¶scere. See ker-2 below.]

CREW2 (kr›) v. Chiefly British. A past tense of crow2.

As discussed below, the fact that CREW is a generic term permeates any analysis

for trademark purposes. The majority's contention that any trademark registration

by Complainant means that Respondent should automatically be imbued with constructive

knowledge of the existence of the registration for purposes of the ICANN Policy,

while incorrect in and of itself, is particularly inappropriate for a generic

term. Additionally, as numerous courts have stated, a trademark owner is not

by definition entitled to all domain names incorporating their trademark or

even those identical to their trademark. See, Judge Pregerson’s excellent discussion

of this issue in Lockheed Martin Corp. v. Network Solutions, Inc., 985

F.Supp. 949 (C.D. Cal. 1997), aff'd, 194 F.3d 980 (9th Cir. 1999).

This is especially so where the mark is generic and a common term. See, Cello

Holdings, LLC v. Lawrence-Dahl Companies, 2000 U.S. Dist. LEXIS 3936

(S.D. N.Y. 2000), denying cross motions for summary judgment because the Court

felt the Plaintiff could not prove bad faith registration under the ACPA because

of the generic nature of the word Cello, as a musical instrument. In Cello

the defendant even acknowledged that it had sought to sell the domain name

to others, as part of his business of selling domain names for generic use.

This is exactly the situation here, and the same logic should apply.

Furthermore, the majority seems to assume that a trademark owner has some sort

of God given right to use the trademark to the exclusion of others. As Justice

Holmes observed, "A trademark does not confer a right to prohibit the use of

the word or words…. A trademark only gives the right to prohibit the use of

it so far as to protect the owner's goodwill against the sale of another's product

as his." Prestonettes, Inc. v. Coty, 264 U.S. 359 (1924). In short,

the Complainant does not own all rights to the generic word CREW by virtue of

its trademark registration.

Registrant Rights or Legitimate Interests

Paragraph 4 (a) (I I) of the ICANN Policy asks whether the Respondent has any

rights or legitimate interests in respect of the domain name. Where the domain

name and trademark in question are generic, and in particular where they comprise

no more than a single, short, common word, the rights and interests inquiry

is more likely to favor the domain name owner. As the court held in Hasbro,

Inc. v. Clue Computing, Inc., 66 F.Supp.2d 117, (D. Mass., 1999), holders of

a famous mark are not automatically entitled to use that mark as their domain

name; trademark law does not support such a monopoly. If another Internet user

has an innocent and legitimate reason for using the famous mark as a domain

name and is the first to register it, that user should be able to use the domain

name, provided that it has not otherwise infringed upon or diluted the trademark.

The ICANN policy is very narrow in scope; covers only clear cases "cybersquatting"

and "cyber piracy," and does not cover every dispute that might rise over domain

names. See, for example, Second Staff Report on Implementation Documents for

the Uniform Dispute Resolution Policy (October 24th, 1999), http://www.icann.org/udrp/

udrp-second-staff-report-24oct99.htm 4.1(c) which states:

Except in cases involving "abusive registrations" made with bad-faith intent

to profit commercially from others' trademarks (e.g., cybersquatting and cyberpiracy),

the adopted policy leaves the resolution of disputes to the courts (or arbitrators

where agreed by the parties) and calls for registrars not to disturb a registration

until those courts decide. The adopted policy establishes a streamlined, inexpensive

administrative dispute-resolution procedure intended only for the relatively

narrow class of cases of "abusive registrations." Thus, the fact that the policy's

administrative dispute-resolution procedure does not extend to cases where a

registered domain name is subject to a legitimate dispute (and may ultimately

be found to violate the challenger's trademark) is a feature of the policy,

not a flaw.

The majority decision spends substantial effort attempting to demonstrate that

what it terms "speculation in domain names" is sufficient per se

to be an "abusive registration." However, carefully reviewing the tests

provided in the ICANN policy indicates otherwise.

Bad Faith Registration and Use

The third element of the ICANN policy requires that Complainant prove that

the domain name was registered and is being used in bad faith. Paragraph 4 (B)(U)

of the policy sets forth four factual examples of circumstances under which

the registration and use of the domain name may be found to be in bad faith.

The Complainant in the instant case has not and cannot meet any of the four

alternative elements of a bad faith registration and use.

Specifically, the key alternative element which the Complainant is unable to

meet in paragraph 4 is underlined below:

(i) circumstances indicating that you have registered or you have acquired

the domain name primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the complainant who is the owner

of the trademark or service mark or to a competitor of that complainant, for

valuable consideration in excess of your documented out-of-pocket costs directly

related to the domain name; or…

Despite the majority's contention that Complainant’s registration of the CREW

trademark somehow automatically imputes to the Respondent a violation of this

element, there is absolutely no such evidence before this panel. While it is

possible that the Respondent acquired the domain name for the purpose selling

renting or otherwise transferring the domain name, because CREW is a common

word, it cannot merely be assumed that Respondent's intent was to sell and transfer

the domain name to the Complainant.

(ii) you have registered the domain name in order to prevent the owner of the

trademark or service mark from reflecting the mark in a corresponding domain

name, provided that you have engaged in a pattern of such conduct; or…

Similar to the first test element above, one cannot simply, without additional

evidence, impute that when one registered a generic name he or she by definition

does so to prevent the owner of the trademark on a generic word from having

or using that domain name. While a court of law might come, after having taken

proper evidence, listened to testimony, and properly weighed the evidence, to

a determination that this was the intent of the domain name registrant, it is

not place of this panel to do so, based on unsupported assumptions of intent.

(iii) you have registered the domain name primarily for the purpose of disrupting

the business of a competitor; or…

There is no evidence to support this element and it is thus completely inapplicable.

And finally, the last alternative test is

(iv) by using the domain name, you have intentionally attempted to attract,

for commercial gain, Internet users to your web site or other on-line location,

by creating a likelihood of confusion with the complainant's mark as to the

source, sponsorship, affiliation, or endorsement of your web site or location

or of a product or service on your web site or location.

This element of the bad faith analysis also fails for two reasons. First, the

name is generic and as such does not have an immediate relationship to the Complainant

any more than it does to thousands of CREW teams around world or any of a number

of its other meanings. (Again, see the Hasbro decision supra). Second,

there is no evidence that the Respondent in any way attempted to create confusion

as to the source of origin, sponsorship, or ownership of the domain name. Any

confusion which may have occurred was at least, in part, due to the conduct

of the Complainant whose own solicitation of the link on the web site of www.crew.com

caused an implied relationship. As noted above, at the behest of Complaint’s

own representative, the Respondent was encouraged by an offer of a commission,

to, and did, place a banner ad on the CREW.com web site to direct traffic to

the Complainant’s web site. In my judgment, it is highly illogical to find that

by placing the banner ad, solicited and sanctioned by the Complainant, that

directing traffic to the Complainant’s business should be considered an intentional

attempt to create confusion as to the source of the domain. To the contrary,

it seems an admission by Complainant that there is no confusion likely.

Conclusion

We are not legislators, but arbitrators. The majority, in an effort to stop

a practice that it seems to take upon itself to believe is an unstated purpose

of the ICANN Policy, has completely over-stepped its mandate as arbitrators.

The decision creates a new and unauthorized test out of whole cloth, based on

assumptions of fact by arbitrators without evidence on the subject, instead

of using the appropriate and carefully crafted three step test for required

evidence set out by the ICANN’ Policy and Rules. In my judgment, the majority's

decision prohibits conduct which was not intended to be regulated by the ICANN

policy. This creates a dangerous and unauthorized situation whereby the registration

and use of common generic words as domains can be prevented by trademark owners

wishing to own their generic trademarks in gross. I cannot and will not agree

to any such decision, which is fundamentally wrong. I respectfully dissent from

the majority decision of my fellow professional panelists.

G. Gervaise Davis III

Dissenting Panelist

April 20, 2000

Footnotes:

1. Found in part in 15 U.S.C. §1125(d).

2. The majority takes this fact,

rules it bad, and uses it to achieve its desired result. In contrast, see the

discussion in Administrative Panel Decision for the <thyme.com> domain

name, dispute case No.AF-0104.

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