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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Florida Department of Management Services v. Thomas Rask/Logical Sites, Inc.

Case No. D2006-1595

 

1. The Parties

The Complainant is Florida Department of Management Services, Tallahassee, Florida, United States of America, represented by Gerard T. York, Tallahassee, Florida, United States of America.

The Respondent is Thomas Rask/Logical Sites, Inc., Largo, Florida, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <myflorida.mobi> is registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2006. On December 18, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On December 19, 2006, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant¹ and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 December 21, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2007. The Response was filed with the Center on December 31, 2006.

The Center appointed William R. Towns as the sole panelist in this matter on January 5, 2007. The Panel finds that it was properly constituted. 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 is the owner of the federally registered trademarks MYFLORIDA and MYFLORIDA.COM. The United States Patent and Trademark Office (USPTO) issued certificates of registration for the Complainant’s marks in June 2003, which reflect the Complainant’s use of these marks in commerce since as early as July 24, 2000. The Complainant since 2000 also has operated a website at “www.myflorida.com”, the official portal for the State of Florida, which is divided into section dealing with government, business, tourism, and services for residents.²

The Respondent, a resident of Florida, registered the disputed domain name <myflorida.mobi> on September 26, 2006. The Respondent’s business activities include development, ownership and operation of destination portal websites, including <beachdirectory.com>, <keysdirectory.com>, <eurekasprings.com>, and <hattiesburg.com>. The Respondent has attempted no use of the disputed domain name in relation to any active website since registering the name, although after being placed on notice of this dispute by the Complainant, the Respondent through his attorney offered to sell the disputed domain name to the Complainant for $50,000.00.

 

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it has exclusive rights in the federally registered MYFLORIDA and MYFLORIDA.COM marks, which the Complainant uses in connection with the operation of the State of Florida’s official portal website, <myflorida.com>. According to the Complainant, <myflorida.com> is one of the most frequently visited government websites in the United States, experiencing an average of three million hits per weekday. The Complainant notes that the State of Florida has expended millions of dollars supporting the <myflorida.com> portal since its inception in 2000.

The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s MYFLORIDA marks, and that the Respondent has no legitimate rights or interests in the disputed domain name. The Complainant points out that the Respondent has never been known by the disputed domain name and has made no legitimate noncommercial or fair use of the domain name. According to the Complainant, the Respondent registered the disputed domain name <myflorida.mobi> in bad faith, in a deliberate attempt to capitalize on the reputation and goodwill developed in the Complainant’s MYFLORIDA marks, by diverting mobile internet users seeking the State of Florida’s official <myflorida.com> portal. The Respondent’s bad faith is further reflected, the Complainant contends, by his offer to sell the domain name to the Complainant for a sum greatly in excess of the Respondent’s out-of-pocket expenses in relation to the domain name.

B. Respondent

The Respondent contends that the MYFLORIDA and MYFLORIDA.COM marks are alternatively generic or merely descriptive of the goods or services they are used with. Accordingly, the Respondent contends that the marks should never have been registered by the USPTO in the first place. Since, according to the Respondent, these marks are neither famous nor distinctive, the Respondent concludes that the Complainant does not have exclusive rights in them, and that the Respondent in turn has established rights or legitimate interests in the disputed domain name by being the first to register it. Although the Respondent denies registering the domain name in order to offer it for sale to the Complainant, he contends that he has a legitimate right to offer the domain name for sale, should he choose to do so, and that such would constitute a bona fide offering of goods or services for purposes of paragraph 4(c)(i) of the Policy. The Respondent also asserts that the disputed domain name likely would be used in connection with a destination website, but that no attempt to do so has been made because of the Complainant’s cease and desist letter issued to the Respondent within hours of the registration of the disputed domain name.

 

6. Preliminary Issues

A. Respondent Allegations

According to the Response, the Center violated the Rules by failing to verify that the proper Respondent was named in the Complaint, failing to provide proper notification of the commencement of the administrative proceeding, and failing to ensure the Complainant’s submission to a mutual jurisdiction for purposes of paragraph 3(b)(xiii) of the Rules. As discussed below, the Respondent’s allegations regarding the Center are groundless. Further, to the extent that the Respondent relies on such allegations to support an argument that the Complainant is administratively deficient within the meaning of paragraph 4 of the Rules, the Respondent’s position is frivolous.

For purposes of the Policy, “Respondent” is defined in paragraph 1 of the Rules as “the holder of a domain name registration against which a complaint is initiated.” In this case, the Registrar’s Whois Database indicates that the disputed domain name was registered by Thomas Rask (“Registrant Name”), ostensibly on behalf of an organization whose identify was not disclosed (“Registrant Organization: Private Registrant care of Thomas Risk”). It has been alleged for the first time in the Response that the owner of the disputed domain name registration is Valueforge, Inc.,³ but the Respondent has offered no evidence that this was the entity on whose behalf Mr. Rask allegedly registered the domain name.

Nor did Mr. Rask, either in his pre-complaint communications with the Complainant or in the Response which he prepared and submitted, disclose certain information publicly available on the Logical Sites and Valueforge websites, revealing his substantial identity of interest with both of these organizations. The websites reflect that Mr. Rask is the president and owner of Logical Sites and the CEO of Valueforge’s Florida office.⁴ Further, Valueforge and Logical Sites occupy the same physical office in Largo, Florida, and share a common postal address, telephone number and fax number.

As noted above, for purposes of the Policy the respondent is the holder of a domain name registration against which a complaint is initiated. The Complaint in this case was initiated against Thomas Rask, and the information contained in the Registrar’s Whois Database amply supports a conclusion that Mr. Rask is the holder of the registration from the disputed domain name. Accordingly, The Panel concludes from the record before it that Thomas Rask properly has been named as the Respondent in this administrative proceeding.

The Respondent’s claim that the Center violated the Rules by failing to forward the Complaint to the domain name registrant’s correct postal address as identified in the Registrar’s Whois Database is frivolous. The Registrar’s Whois Database contains a single postal address for the registrant, administrative, billing and technical contacts, and the administrative record unequivocally reflects that the Center sent a copy of the Complaint to this postal address. This address, coincidentally, is also the postal address for Logical Sites, based on information on file with the Florida Secretary of State.

The Respondent’s claim that the Center failed to properly notify the Respondent because copies of the Complaint were sent to Logical Sites, Inc.’s registered agent and to the Respondent’s attorney⁵ is equally frivolous. Pursuant to paragraph 3(b)(v) of the Rules, the Complainant was required to furnish to the Center all contact information known to the Complainant regarding how to contact the Respondent or any representative of the Respondent, including contact information based upon pre-complaint dealings. The Center, in turn, is required under paragraph 2(a)(iii) of the Rules to send the Complaint, to the extent practicable, to all such addresses provided by the Complainant. Ultimately, the Center’s responsibility under 2(a) is to employ all reasonably available means calculated to give actual notice to the Respondent, which is precisely what the Center did.

Finally, the Respondent presents an argument that the Center failed to require the Complainant to submit to mutual jurisdiction under paragraph 3(b)(xiii) of the Rules because the Complainant agreed to submit only to challenges brought by the Respondent, as opposed to “any challenges to a decision in the administrative proceeding”. In narrowly focusing on this quoted language from the Rules, however, the Respondent conveniently ignores paragraph 4(k) of the Policy, which in providing for the availability of court proceedings, requires only that a complainant submit to mutual jurisdiction for purposes of a lawsuit commenced against it by the respondent.

In short, the Panel finds that Thomas Rask has been properly named as the Respondent, properly notified of this proceeding, and that the jurisdiction of the Panel has been properly invoked.

B. Court Proceedings

On January 22, 2007, the Complainant sent an email to the Center, indicating that Thomas Rask, on behalf of Valueforge, Inc. apparently has filed a “Complaint for Declaratory Judgment” in the US District Court in Tampa, Florida. The Complainant also contested the Respondent’s individual standing to present this court case on behalf of Valueforge, Inc. and requested the UDRP Panel to exercise its discretion and proceed to a decision. On the same day, the Respondent reacted by stating that he agreed with the Complainant that the Panel should proceed to a decision. However, the Respondent further asserted that if such Panel decision would be for a transfer of the domain name, the court case filed should prevent such decision from being implemented.

Paragraph 18 of the Rules grants panels the discretion to decide whether to suspend, terminate or decide an administrative proceeding in the event of any legal proceedings initiated prior to or during a UDRP case. In the present circumstances this Panel determines that it shall proceed to a decision. It does so without prejudice to the relationship between paragraph 4k of the Policy and this particular court case during the UDRP proceedings, or to any determination which a court of competent jurisdiction may make in relation to this domain name dispute.

 

7. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent 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 with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three non-exhaustive means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, a number of panels have concluded that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, the Complainant must demonstrate rights in the marks that it asserts the disputed domain name is identical or confusingly similar to. In this instance, the Complainant asserts rights in the MYFLORIDA marks based on the use of the marks in commerce since July 2000, and their registration by the USPTO in 2003. The Panel notes that, at a minimum, the Complainant’s marks are entitled to a presumption of validity by virtue of their registration with the USPTO. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

The Respondent asserts, however, that the USPTO should never have registered the Complainant’s marks because they are either generic or merely descriptive with respect to the goods or services for which they are used. Some panel decisions have held that registration of a mark is prima facie evidence of validity, creating a rebuttable presumption that the mark is inherently distinctive, which respondents have the burden of refuting. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Other Panels have concluded that the complainant’s holding of a registered mark is sufficient without more to establish rights under the Policy, and that a respondent’s claim that registration should not have been granted or should be revoked is a matter for the courts or trademark authority of the relevant country. See, e.g., Hola S. A. v. Idealab, WIPO Case No. D2002-0089. See also Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini, WIPO Case No. D2001-0700.

Given the limited scope of the Policy and this Panel’s narrowly circumscribed jurisdiction, this Panel’s inclination is to adopt the reasoning of the Panels in the second line of cases referred to above. See Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin, WIPO Case No. D2002-0635. However even if, for purposes of reaching a decision in this case, the Panel would adopt the reasoning of the first line of cases, the Panel, having carefully reviewed the record in this case in light of the arguments presented by the Respondent, concludes that the Respondent has not made a sufficient showing to rebut the presumption of validity arising from the USPTO registration of the Complainant’s MYFLORIDA marks.

The Panel has considered the registration of the Complainant’s marks in light of the USPTO requirements for registration of a mark on its principal register.⁶ There is nothing in the record of this administrative proceeding that would justify the Panel in disregarding the USPTO’s determination the Complainant’s marks are distinctive and entitled to registration. The Panel does not consider that the marks are merely descriptive of the goods and services for which the registrations were granted, and clearly the marks are not generic.

The Respondent offers little more than conclusory averments to rebut the presumption of validity arising from USPTO registration of the Complainant’s marks. The Respondent’s contention that the USPTO’s refusal to register the State of Florida’s proposed MYFLORIDAHOUSE and MYFLORIDAHOUSE.COM marks is evidence that the Complainant’s MYFLORIDA should not have been registered is misplaced. Even a cursory review of the USPTO’s online database confirms that the examining attorney refused registration of the proposed MYFLORIDAHOUSE marks because the specimens of use submitted reflected the use of the proposed marks only as an internet address. See United States Patent & Trademark Office, Examination Guide No. 2-99: Marks Composed, in Whole or in Part, of Domain Names (1999) (“If the proposed mark is used in a way that would be perceived as nothing more than an address at which the applicant can be contacted, registration must be refused.”

In this case, the record contains ample indications of the Complainant’s use of its MYFLORIDA marks as a source indicator. The fact that the Complainant also uses <myflorida.com> as an internet address for the State of Florida’s official portal does not compel the conclusion urged by the Respondent. In short, there is nothing in the record to support the Respondent’s conclusory allegation that the USPTO registrations for the Complainant’s MYFLORIDA marks should not have been granted or should now be revoked. Given the Complainant’s use of the marks since as early as July 2000, and the unrebutted evidence of the State of Florida’s operation of its heavily trafficked official portal website during the same time frame, the Panel, if it were to presume authority to do so in the first place, has no reason to question the validity of the USPTO registrations.

It is well settled under paragraph 4(a)(i) of the Policy that the question of identity or confusingly similarity is evaluated solely based on a comparison of the complainant’s mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, WIPO Case No. D2000-1525. Thus, the Panel compares the mark and the domain name alone, independent of the use factors usually considered in a traditional trademark infringement action. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe’s Internet Cafй, WIPO Case No. D2000-0068.

The Panel finds that the Complainant has established rights in its MYFLORIDA marks, and that the disputed domain name <myflorida.mobi> is identical or confusingly similar to the Complainant’s marks. Accordingly, the Complainant has satisfied its burden under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainant has not authorized the Respondent to use the Complainant’s MYFLORIDA marks or to register domain names reflecting those marks. The record fairly reflects that Respondent was aware of the Complainant and its MYFLORIDA marks when he registered the disputed domain name. The Respondent has made no claim to have been commonly known by the disputed domain name, and has made no noncommercial or fair use of the domain name. Further, the record does not reflect the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with any bona fide offering of goods or services.

Given the foregoing, the Panel finds that the Complainant has made a prima facie showing under paragraph 4(a)(ii) of the Policy. The circumstances as set forth and documented in the Complaint and its Annexes are sufficient to require the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has failed to come forward with any evidence demonstrating rights or legitimate interests in the disputed domain name. The Respondent does not deny that he was aware of Complainant’s marks or the popularity of the Complainant’s official portal website prior to registering a domain name that incorporates the Complainant’s MYFLORIDA mark in its entirety. Instead, the Respondent’s claim of legitimacy is predicated exclusively upon the asserted lack of efficacy of the Complainant’s marks, an assertion that for the reasons set forth above is unfounded.

The Respondent meets none of the safe harbors in paragraph 4(a)(ii) of the Policy.  The Respondent has not been commonly known by the disputed domain name. He does not claim to have made any noncommercial or fair use of the domain name. And the Respondent has presented no evidence of his use of, or demonstrable preparations to use, the disputed domain name in connection with any bona fide offering of goods or services.  At best, the Respondent simply claims that, were he to attempt any use of the disputed domain name, such use would not cause confusion.

The Panel notes that under certain circumstances, a respondent may be entitled to register and use a domain name consisting of commonly used terms, even where the domain name is identical or confusingly similar to the registered mark of a complainant. See, e.g., Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016, Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843. It is clear, however, that a respondent must use the domain name not in a trademark sense but in a descriptive sense, to communicate some aspect of the respondent’s website. See Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031. In this case, the Respondent has failed to demonstrate his use, or even demonstrable preparations to use, the disputed domain name in a descriptive rather than a trademark sense. To the contrary, the Respondent intentionally registered a domain name identical to the Complainant’s MYFLORIDA mark, under circumstances that leave this Panel with little doubt that the Respondent registered the domain name primarily for purposes of trading on the inherent value of the Complainant’s marks. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant and its products or services, its very use by a respondent shown to be aware of this connection suggests “opportunistic bad faith”.

Accordingly, the Complainant has satisfied its burden under paragraph 4(a)(iii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

As noted the Panel has little doubt that the Respondent was aware not only of the Complainant but also of the Complainant’s rights in the MYFLORIDA marks prior to registering the disputed domain name, which is identical to the Complainant’s widely known MYFLORIDA mark. That the Respondent deliberately appropriated the Complainant’s mark is beyond serious dispute based on the record in this case. The Panel concludes from the circumstances as discussed herein that the Respondent’s primary motive in registering the disputed domain name appears to have been to profit from and exploit the Complainant’s trademark rights, which constitutes bad faith registration, and the Panel finds that the Respondent is continuing to act in bad faith. Leaving aside the Respondent’s offer to sell the domain name, the fact that the Respondent has not yet attempted use of the disputed domain name is immaterial, as it is well settled under the Policy that a respondent’s passive holding of a domain name does not preclude a finding of bad faith registration and use. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Accordingly, the Panel finds that the Complainant has met his burden of establishing bad faith registration and use under paragraph 4(a)(iii) of the Policy.

 

8. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <myflorida.mobi> be transferred to the Complainant.

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William R. Towns
Sole Panelist

Dated: January 23, 2007

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¹ Moniker provided the following information regarding the identity of the registrant: “Registrant Name: Thomas Rask”; and “Registrant Organization: Private Registration care of Thomas Rask”. There is no reference to Logical Sites, Inc., but Mr. Rask is the president and owner of Logical Sites, Inc., based on information published at Logical Sites’ official website. The postal address listed by Moniker for the registrant, administrative, billing and technical contacts also is a postal address for Logical Sites, Inc.

² The Complainant is an administrative agency of the State of Florida, responsible under Florida law for providing “an integrated electronic system for deploying government products, services, and information to individuals and businesses.” The MYFLORIDA marks are used by the Complainant, inter alia, with respect to the electronic deployment of such information, goods and services on the State official portal website. In addition, the MYFLORIDA.COM mark is prominently displayed on the State’s automobile license plates.

³ In pre-complaint communications, the Respondent refused to disclose the identity of this so-called “private registrant”, other than instructing his attorney to represent to the Complainant that this entity was an “affiliate” of Logical Sites, Inc.”

⁴ While it is alleged in the Response that Mr. Rask has partners in Valueforge that are not involved in Logical Sites, which Mr. Rask owns, the Valueforge website indicates that each of its three offices in the United States and Canada, including Valueforge’s Largo, Florida office, is independently owned and operated. Although Mr. Rask refused to identify the so-called “private registrant” on whose behalf he registered the domain name in pre-complaint communications with the Complainant, he did represent that this organization was “affiliated” with Logical Sites.

⁵ After receiving notice of the dispute, the Respondent instructed an attorney for purposes of critical pre-complaint communications with the Complainant, including the Respondent’s offer to sell the disputed domain name to the Complainant for $50,000.00. Given this, the Complainant reasonably assumed that the Respondent would choose to be represented by counsel in this administrative proceeding, and thus included contact information for the Respondent’s attorney in the Complaint. Indeed, under these circumstances the Complainant arguably would have been disregarding its responsibilities under paragraph 3(b)(v) of the Rules had it omitted to do so.

⁶ The USPTO must refuse registration of a mark on the principal register unless the mark is either inherently distinctive or has acquired distinctiveness through secondary meaning.