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October 6, 2010 / Nate Harris

Simple Truths, LLC v. Edward Slack, Simple Truth Publishing

Summary of Simple Truths, LLC v. Edward Slack, Simple Truth Publishing
(WIPO Case No. D2010-1349)

Filed: August 9, 2010; Decided: September 20, 2010 (Panelist: Nicolas Ulmer)

Disputed Domain Name: <simpletruthpublishing.com> and <simpletruthpublishing.net>

simpletruthpublishing.net

The Parties

Complainant Simple Truths, LLC (“Complainant”) sells inspirational items such as photographs with inspirational phrases, as well as inspirational books and films, on its website <simpletruths.com>. It applied for the trademark SIMPLE TRUTHS on September 16, 2003, and the registration issued on July 19, 2005.

Respondent Edward Slack/Simple Truth Publishing (“Mr. Slack”) registered the disputed domain name <simpletruthpublishing.net> on July 4, 2009. He uses this “.net” domain to sell his book Two Legged Snakes: Understanding and Handling Manipulative People. Complainant sent Mr. Slack a cease-and-desist letter and email in October and November 2009, respectively. Undeterred, Mr. Slack registered the second disputed domain name <simpletruthpublishing.com> on May 15, 2010.

Mr. Slack failed to respond to the complaint in a timely manner, but he did subsequently email WIPO to indicate that LegalZoom.com had performed a trademark clearance of SIMPLE TRUTH PUBLISHING and told Mr. Slack that there would be no problems with him using that name. Mr. Slack also applied to register SIMPLE TRUTH PUBLISHING, but registration was refused.

Mr. Slack pointed out the differences between the parties products (calling the Complainant’s goods “cutesy/corny”), but nonetheless indicated his willingness to settle the matter and offered to sell the disputed domain names for roughly the costs he had incurred.

Procedural Issues

Though Mr. Slack’s email was untimely, the Panel exercises its discretion to treat the email as an acceptable response.

Identical or Confusingly Similar

The relevant portions of the disputed domains (“simple truth publishing”) are confusingly similar to the Complainant’s trademark (“simple truths”). The removal of the “s” from “truths” does not obviate the confusion, and the addition of “publishing” arguably adds to the confusion, as both parties sell books.

Rights or Legitimate Interests

The Complainant argues that the Patent & Trademark Office’s refusal of the SIMPLE TRUTH PUBLISHING mark is evidence of Mr. Slack’s lack of rights or legitimate interests in the disputed domain names. Not so, says the Panel. The question of registrability is different from the existence of rights or legitimate interests. “The Panel is empowered to rule on the existence or absence of rights under the Policy and not trademark infringement and other issues which are issues to be addressed by appropriate competent courts, should the parties elect to do so.”

Mr. Slack has made a bona fide offering of goods on <simpletruthpublishing.net> since before he received notice of the dispute, thereby satisfying Paragraph 4(c)(i) of the Policy. Furthermore, the “.com” domain name can piggyback off the “.net” domain name under the same paragraph, which recognizes rights where the respondent has undertaken “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 [before receiving notice of the dispute]” (emphasis added). Because the two domains are “virtually identical”, the .com domain name “corresponds” to the .net domain name.

Mr. Slack also has rights under Paragraph 4(c)(ii) of the Policy, since his company is commonly known by the name “Simple Truth Publishing.”

Thus, the Complainant has failed to demonstrate that Mr. Slack lacks rights or legitimate interests in either one of the disputed domain names.

Bad Faith

Though the registration of <simpletruthpublishing.com> after the cease-and-desist could conceivably be evidence of bad faith as to that domain name, the question of good or bad faith is irrelevant unless it can be demonstrated that Mr. Slack has no rights or legitimate interests in the disputed domain name. Such a showing is not made here.

Decision

The transfer of the disputed domains is denied.

Commentary

Though the Panel’s remarks on trademark law are a bit off the mark, this decision is a great reminder that notice of the complainant’s rights, while it may tee up the bad faith prong, cannot terminate a respondent’s rights or legitimate interests.

Epilogue

<simpletruthpublishing.net> still points to a site hawking Mr. Slack’s book. <simpletruthpublishing.com> returns a “Server not found” error.

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