National Arbitration Forum




Voip Review LLC v. Nokta Internet Technologies

Claim Number: FA0710001095192



Complainant is Voip Review LLC (“Complainant”), represented by Christie McCall, of Holland & Hart LLP, 90 S. Cascade Avenue, Suite 1000, Colorado Springs, CO 80903.  Respondent is Nokta Internet Technologies (“Respondent”), represented by Paul Raynor Keating, of Renova, Ltd., Balmes 173 2º 2º, Barcelona 08006, Spain.




The domain name at issue is <>, registered with Moniker Online Services, Inc.



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, III, as Panelists.



Complainant submitted a Complaint to the National Arbitration Forum electronically on October 18, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 22, 2007.


On October 19, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with Moniker Online Services, Inc. and that the Respondent is the current registrant of the name.  Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).


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 by e-mail.


A timely Response was received and determined to be complete on November 8, 2007.


Timely additional submissions were received from both Complainant and Respondent in accordance with the Forum’s Supplemental Rule 7.


On November 28, 2007, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., (Chair), Hon. Neil A. Brown, Q.C., and G. Gervaise Davis, III, as Panelists.




Complainant requests that the domain name be transferred from Respondent to Complainant.



A. Complainant

            1.  Respondent’s <> 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.



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 (TESS) reflects Complainant’s USPTO registration 3,028,654, applied for on November 5, 2004 and issued on December 15, 2005, with a claim of first use in commerce of December 1, 2003. 


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 <> 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 August 30, 2004.  Despite two bites at the apple (assuming, arguendo, that the Panel were to consider the contents of Complainant’s Additional Submission as evidence) there is simply insufficient evidence before the Panel for it to come to the conclusion that Complainant had a common law trademark in the VOIP REVIEW mark as of the date of registration of the <> domain name at issue.  Accordingly, it would not have been possible for the Respondent to have registered or used the domain in bad faith, whatever use it has subsequently made of a website associated with the domain.           



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.


Identical and/or Confusingly Similar


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 <> 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 <> 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)).



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, III, Panelist

Dated: December 12, 2007







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