Quirk Productions, Inc. (“Complainant”), which owns QuirkBooks.com lost its bid to grab the generic domain name Quirk.com
The domain holder officially was TobyClements.com, LLC / Toby Clements but in fact the domain was owned by Michele Wilson d/b/a Exotic Design Group (“EDG”) since 2004, who was represented by John Berryhill.
There is a lot of mud slinging between the parties and a lot of history including a $85,000 offer the Complainant made in 2011 and which was accepted by the domain holder which the Complainant later failed to follow through with and it sounds like these parties maybe heading to court on a breach of contract on the $85,000 non-sale.
The domain was acquired by the domain holder in 2004 for $4,000.
The Complainant based it case on a registered trademark registered June 22, 2004 and alleged common law trademark rights
There is a pretty interesting set of facts so I will start by highlighting some of the arguments made by each of the parties starting with the Respondent:
a) The present dispute concerns a dictionary word referring to things that are unusual, peculiar, or offbeat. The term “quirk” alone is neither exclusive nor distinctive of Complainant. The term “quirk” is incorporated in some 17 pending and registered U.S. marks for a variety of goods and services.
b) Complainant has been harassing the owner of the quirk.com domain name since 2005, and multiple instances of Complainant’s breach of agreement to purchase the disputed domain name caused the owner of the quirk.com domain name to assign an agent, TobyClements.com LLC, for the purpose of receiving correspondence for the domain name.
c) The domain name has been legitimately used by Michele Wilson d/b/a Exotic Design Group (“EDG”) since 2004, and continues to be used for the same purpose as it has been for several years.
d) Complainant’s rights in the QUIRK mark are minimal. One of the registrations for the mark was acquired years after Complainant had been interacting with Respondent regarding the purchase of the disputed domain name. While Complainant’s other registration does predate the registration of the <quirk.com> domain name, Complainant fails to substantiate its first use in commerce, claimed date of 2001, and does not allege prior common law rights.
e) Complainant does not make any arguments that the <quirk.com> domain name is used in connection with any goods or services listed in Complainant’s trademark registration.
f) The domain name is one of several video sharing websites operated by Respondent, including <robottv.com>, <bestviralvideos.com>, <mysunsets.com>, <pokervideos.com>, <ujoke.com>, and <ufunny.com>.
Quirk.com allows registered users to share videos of things the users find to be “quirky,” and is subdivided into categories.
g) Respondent first acquired the domain name for $4,000 in 2004.
Prior to the notification of the dispute, Respondent made substantial investment in developing the quirk.com domain name as a video sharing website.
Since 2005, Complainant has repeatedly been badgering Respondent about selling the domain name, at one point in 2011 accepting an offer to sell the domain name for $85,000 before attempting to revoke.
Complainant also breached a 2012 agreement to purchase the disputed domain name for $21,250.
Dictionary words command a high asking price when being sold for their expansive potential purpose.
Complainant knows that Respondent was unaware of Complainant at the time of the quirk.com domain name’s registration. Complainant had to explain its business when it first contacted Respondent in 2005.
Here was some of the arguments of the Complainant:
Complainant never reached a binding agreement with Respondent as to the purchase of the disputed domain name. Whenever Complainant was near reaching a binding agreement, Respondent would impose additional conditions to the deal. The agreements that Respondent mentioned were never final, and Respondent fails to mention the related communications following the possible deals that caused them to fall apart, such as new conditions being imposed.
Respondent has a pattern of cybersquatting on trademarks.
Respondent did not deny that it is the owner of numerous domain names.
Two previous WIPO decisions have held that EDG is a cybersquatter, based on its registration of a trademark of Gateway, Inc. and a trademark of the National Football League, where EDG waited for these companies to make an offer to purchase the domains. See Nat’l Football League v. Exotic Design Grp, D2007-1000 (WIPO Sep. 6, 2007); see also Gateway Inc v. Exotic Design Grp., D2008-0051 (WIPO Feb. 29, 2008).
To these allegations the domain holder responded as follows:
Complainant attempts to establish that Respondent is a cybersquatter by referencing two prior UDRP decisions. However, Complainant fails to note that Respondent is the owner of several thousand domain names, only two of which have been disputed, and one of those two was transferred with the uncontested consent of Respondent.
Complainant itself has been sued for copyright infringement by no less than NBC Studios, Jay Leno, Rita Runder et al. in the U.S. District Court for the Central District of California.
Respondent need not repetitively deny being a cybersquatter in order to avoid such a finding by the Panel merely because Complainant repeats the argument numerous times over.
The additional terms Complainant claims that Respondent imposed before completing the previous sales of the disputed domain name was simply to post the transaction to escrow.com, and this condition was accepted by Complainant prior to Complainant’s acceptance of the sale offers.
Complainant is attempting to resolve contract disputes through the UDRP which is the wrong forum.
Respondent retains a claim to be compensated for Complainant’s breach of contract. Respondent is well within the statute of limitations.
Complainant is a publisher of books. Complainant shows to be the holder of the following trademarks, which it uses in connection with its book publishing business:
– QUIRK & Design mark (Reg. No. 2,856,317 registered June 22, 2004) registration with the USPTO. See Complainant’s Exhibit A.
– QUIRK, word mark (Reg. No. 4,037,242 registered October 11, 2011) registered with the USPTO. See Complainant’ Exhibit B.
The Complainant advertises its services through the domain name quirkbooks.com>
The disputed domain name, <quirk.com>, is registered since July 29, 2004.
The disputed domain name currently resolves to a video sharing website.
Between 2005 and 2012, Complainant approached Respondent in view of purchasing the disputed domain name.
Complainant ultimately offered up to USD 85,000 for the disputed domain name.
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
Respondent asserts that Complainant is attempting to make the Panel resolve a breach of contract dispute between Complainant and Respondent by having the Panel transfer the disputed domain name to Complainant, thereby satisfying Respondent’s obligation under the contract while allowing Complainant’s breach to remain unremedied. Respondent asserts that Complainant accepted two different offers to purchase the domain name, one for $21,250 and one for $85,000, having already consented to all terms and conditions of the sale, but later refused to pay Respondent. Respondent further argues that Complainant consciously hid these sordid past dealings in an attempt to mislead the Panel into believing that nothing more than a normal UDRP dispute had arisen.
Complainant asserts that it was merely in negotiations with Respondent, and whenever the parties were reaching a deal Respondent would impose new conditions on the contract. Complainant asserts that a binding obligation was never made.
According to the Panel, such business/contractual dispute between two companies falls outside the scope of the UDRP (See Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005), where the panel held that complex trademark issues and contractual issues must be brought before a competent court and are not to be dealt with in the framework of administrative proceedings in the framework of the UDRP).
The fact that a business/contractual dispute may exist, however, does not necessarily discharge the Panel from proceeding with its analysis under the UDRP.
The administrative decision does not prevent parties to bring their contractual dispute before a competent court.
Therefore, the Panel decided to proceed with its analysis under the UDRP.
Rights or Legitimate Interests
Respondent contends that the <quirk.com> domain name has been legitimately used by Michele Wilson d/b/a Exotic Design Group (“EDG”) since 2004. Respondent argues that Complainant has been harassing EDG about the <quirk.com> domain name since 2005, and multiple instances of Complainant’s breach of agreement to purchase the disputed domain name caused EDG to assign an agent, TobyClements.com LLC, for the purpose of receiving correspondence for the domain name.
Respondent asserts that the disputed domain name has been legitimately used since 2004, and continues to be used legitimately.
Respondent argues that the <quirk.com> domain name is one of several video sharing websites operated by Respondent, including <robottv.com>, <bestviralvideos.com>, <mysunsets.com>, <pokervideos.com>, <ujoke.com>, and <ufunny.com>.
Respondent notes that the <quirk.com> domain name allows registered users to share videos of things the users find to be “quirky,” and is subdivided into categories.
Respondent also argues that the term of the <quirk.com> domain name is common and generic, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet.
Respondent argues that quirk is a dictionary term referring to things that are unusual, peculiar, or offbeat. Respondent asserts that the term “quirk” alone is neither exclusive nor distinctive of Complainant, and that the term “quirk” is incorporated in some 17 pending and registered U.S. marks for a variety of goods and services.
Respondent argues that Complainant fails to demonstrate the limitations on the use of the QUIRK mark by other individuals.
Finally, Respondent contends Complainant does not make any arguments that the <quirk.com> domain name is used in connection with any goods or services listed in Complainant’s trademark registration. In any event, Complainant cannot expand its trademark protection by stating that it is in the market of video production, while it is only producing some videos that are trailers and commercials for its books, according to Respondent.
The Panel indeed notes “quirk” is a dictionary term and that Complainant does not make any arguments that the disputed domain name is used in connection with any goods or services listed in Complainant’s trademark registration.
Nevertheless, the Panel notes that Complainant’s QUIRK & Design mark is registered for “education and entertainment, namely, production of shows, movies and audiovisual programs featuring fictionalized and reality-based situations presented in an educational and entertaining way and distributed via the global computer information network […]”. Complainant’s QUIRK word mark is registered inter alia for “education and entertainment services in the nature of an interactive web site that features book recommendations, online games, and quotes and trivia relating thereto; production of DVDs, featuring science fiction”.
In such circumstances, the Panel is of the opinion that it could only decide that the video sharing services offered by Respondent are a bona fide use of the disputed domain name, to the extent that such use is not infringing Complainant’s trademark rights.
The Panel considers that the assessment of a possible trademark infringement is beyond the scope of these proceedings.
As a result, the Panel finds that on the facts there is a serious question to be tried as to whether the Respondent does have rights or legitimate interests in the name.
That question needs to be brought in an appropriate forum.
So far as this Complaint is concerned, the Panel holds that the Complainant has not discharged its onus to show that the Respondent has no legitimate interests in the disputed domain name and so decides that the Complainant has failed to satisfy the second element in Paragraph 4(a) of the Policy.
Registration and Use in Bad Faith
Respondent argues that it first acquired the <quirk.com> domain name for $4,000 in 2004.
Respondent notes that, prior to the notification of the dispute, Respondent made substantial investment in developing the domain name as a video sharing website.
Respondent argues that, since 2005, Complainant has repeatedly contacted Respondent with the request to sell the disputed domain name, at one point in 2011 accepting an offer to sell the domain name for $85,000 before attempting to revoke.
The offer for sale that was expressed later by a certain Kabnir Rawat and to which Complainant is referring was not expressed on behalf of either TobyClements.com LLC or EDG.
Complainant contends that the domain name has been listed for public sale as of this year. Complainant argues that Respondent is in the business of acquiring domain names for the purpose of resale and brokering.
This is not disputed by Respondent, who contends that the disputed domain name is comprised of a dictionary word, which justifies a high asking price when being sold for its expansive potential purpose. Respondent considers that its asking price, following negotiations with the Complainant, was legitimate.
According to the Panel, Respondent’s offer to sell the <quirk.com> domain name does not demonstrate bad faith under Policy ¶ 4(b)(i).
Indeed, Complainant itself offered high purchase prices for the disputed domain name at several instances, and, until recently, never imputed bad faith registration or use to Respondent.
If a respondent does not plan to target a particular trademark holder, a respondent is free to register a domain name consisting of common terms and since the domain name currently in dispute contains such common term, the Panel also finds that Respondent did not register or use the domain name in bad faith under Policy ¶ 4(a)(iii).
When a domain name registrant of a common generic term is then contacted by a third party, investigating its willingness to sell the domain name, the registrant is free to offer the domain name for a market price.
In the instant case, Complainant does not show that Respondent was targeting Complainant or its trademark.
The Panel considers Respondent’s offer to sell the domain name in excess of its out-of-pocket expenses not to be evidence of bad faith registration or use.
Complainant also argues that Respondent did attempt to prevent Complainant from registering its mark in a domain name and has a pattern of doing so. Respondent states that it did not know of Complainant’s company when the domain name was registered, and that Complainant stated, “We obviously don’t need it,” in reference to the domain name in a communication with Respondent, continuing to note that Complainant had done well without it for over ten years.
The Panel also notes that correspondence between the parties demonstrates that Complainant already controls quirkbooks.com.
According to the Panel, Complainant failed to prove a pattern of bad faith registration.
Also, Complainant failed to prove that Respondent, when registering a generic term as a domain name, knew or should have known that Complainant had rights in its QUIRK & Design mark
The <quirk.com> domain name is comprised entirely of a common term that has many meanings apart from use in Complainant’s QUIRK mark.
Therefore, the Panel finds that Respondent has not attempted to prevent Complainant from registering its mark in a domain name, nor has Respondent developed a pattern of bad faith so strong as to constitute an inference of bad faith in the present dispute pursuant to Policy ¶ 4(b)(ii).
Respondent argues that Complainant has never raised a disruption argument over the course of a decade.
Respondent asserts that Complainant has concealed from the Panel Complainant’s own admissions that Respondent’s use of the disputed domain name is not disrupting Complainant’s business, diverting its customers, or infringing its claimed mark.
Respondent continues to note that Complainant does not make any arguments that the <quirk.com> domain name is used in connection with any goods or services listed in Complainant’s trademark registration.
Therefore, the Panel considers that Complainant fails to prove that Respondent’s use of the domain name is disruptive to Complainant’s business under Policy ¶ 4(b)(iii).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the quirk.com domain name REMAIN WITH Respondent.