Voip Review LLC v. Nokta
Internet Technologies
Claim Number: FA0710001095192
PARTIES
Complainant is Voip Review LLC (“Complainant”), represented by Christie
McCall, of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <voipreview.com>, registered with Moniker
Online Services, Inc.
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
James A. Carmody, Esq., (Chair),
Hon. Neil A. Brown, Q.C., and G. Gervaise Davis,
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On October 23, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 12, 2007 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@voipreview.com by
e-mail.
A timely Response was received and determined to be complete on
Timely additional submissions were received from both Complainant and
Respondent in accordance with the Forum’s Supplemental Rule 7.
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <voipreview.com> domain, the domain name at issue, is confusingly
similar to Complainant’s VOIP REVIEW mark.
2.
Respondent does not have any rights or
legitimate interests in the domain name at issue.
3. Respondent registered and has used the
domain name at issue in bad faith.
B. Respondent
1.
Respondent denies that Complainant has rights in its VOIP REVIEW mark
which predate registration of the domain name at issue. In any event, says Respondent, the mark is a
descriptive expression which is not inherently distinctive and cannot be
protected based upon Complainant’s submissions to this Panel.
2.
Respondent
claims that it has rights and legitimate interests in the domain name at issue
because of a bona fide offering of
goods or services at a website associated with the domain name at issue.
3. Further, Respondent denies
registration or use of the domain name at issue in bad faith.
C. Additional Submissions
Each of the parties
filed an Additional Submission which essentially restated the arguments initially made.
FINDINGS
Complainant
is a service provider offering broadband phone service listings and offering
comparison tools for consumers regarding broadband phone service options. Since 2003, Complainant claims to have used
the VOIP REVIEW mark, alone and in connection with other terms, to identify its
broadband phone comparison services. Some evidence of Complainant’s claimed common
law trademark usage as early as May 2, 2004, as depicted on a single page in
the “Wayback Machine” Internet archives, was provided to the Panel. Interestingly, the Complaint did not furnish
the Panel evidence of its USPTO registration of VOIP REVIEW. However,
Respondent did so, and the Trademark Electronic Search System (
Complainant says that its source of income for its services is payment from sponsors such as Vonage, Packet8, Vonics Digital, BBTelsys, Callcentric, JoiPhone, and others who wish to offer their broadband phone services to Complainant’s customers. Complainant also claims a significant investment in advertising, promoting, and developing goodwill in the VOIP REVIEW mark and its continuous use for over four years.
Further, Complainant alleges that it has not licensed Respondent to use the domain name at issue, that Respondent is not commonly known by the domain name in dispute, has a history of registering other confusingly similar domain names for financial gain and has no rights or legitimate interests in the <voipreview.com> domain.
As
noted by the Respondent, the Complainant has provided no detailed affidavit,
documentation or any other evidence that Complainant had developed a secondary
meaning in the mind of the public for the VOIP REVIEW mark as of the date of
registration of the domain name at issue on
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the
“Rules”) instructs this Panel to “decide a complaint on the basis of the
statements and documents submitted in accordance with the Policy, these Rules
and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is being
used in bad faith.
Complainant has not sufficiently established common law rights in the VOIP REVIEW mark and merely makes bald assertions as to its rights in the mark without offering any evidence to support those assertions. Specifically, Complainant has not provided the Panel evidence of common law or registered trademark rights in the VOIP REVIEW mark prior to registration of <voipreview.com> as Respondent’s domain or prior to application or issuance of Complainant’s USPTO registration of the mark. Accordingly, based upon the evidence offered by the Complainant, the VOIP REVIEW mark has not acquired a secondary meaning sufficient to establish Complainant’s common law rights pursuant to Policy ¶ 4(a)(i). See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products).
Because Complainant has failed to establish rights in the mark, the
Panel need not analyze the other two elements of the Policy but would note that
this finding of lack of Complainant’s
rights in VOIP REVIEW as of registration of <voipreview.com> would
negate any claim of bad faith registration of the domain name at issue by
Respondent. See Creative Curb v.
Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002)
(finding that because the complainant must prove all three elements under the
Policy, the complainant’s failure to prove one of the elements makes further
inquiry into the remaining element unnecessary); see also Hugo Daniel
Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into
the respondent’s rights or legitimate interests or its registration and use in
bad faith where the complainant could not satisfy the requirements of Policy ¶
4(a)(i)).
Accordingly, the Panel finds that the Complainant has failed to satisfy Policy ¶ 4(a)(i)).
DECISION
Complainant not having established all three elements required under
the ICANN Policy, the Panel concludes that relief shall be DENIED.
James A. Carmody, Esq., (Chair)
Hon. Neil A. Brown, Q.C., Panelist
G. Gervaise Davis,
Dated: December 12, 2007
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