IdeaStream Consumer Products LLC v. Future Media Architects, Inc.
Claim Number: FA0801001126701
Complainant is IdeaStream Consumer Products LLC (“Complainant”), represented by James
R. Menker, of Holley & Menker, P.A.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vaultz.com>, 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.
Michael A. Albert (chair), the Honorable Carolyn Marks Johnson, and Anne M. Wallace as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 8, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 9, 2008.
On January 17, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <vaultz.com> 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 January 23, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 12, 2008 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on February 12, 2008.
An additional submission was received from Complainant dated February 19, 2008.
On February 25, 2008, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Michael A. Albert, the Honorable Carolyn Marks Johnson, and Anne M. Wallace as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant, IdeaStream Consumer Products LLC, sells media, office, and
general storage products using the mark VAULTZ.
Complainant has sold these goods in the
Complainant owns five United States Trademark Registrations using the VAULTZ mark for various kinds of media, office, and general storage products. Complainant also has two pending trademark applications for the mark, and owns registrations for the mark in other countries as well.
Complainant asserts that it uses and has exclusive rights to the VAULTZ mark for media, office, and general storage products, and that the VAULTZ mark is inherently distinctive as applied to its products. Complainant asserts that its VAULTZ mark is identical to the second-level domain name <vaultz.com>, registered to Respondent.
Complainant asserts that Respondent has no rights or legitimate interests respecting the <vaultz.com> domain name. Specifically, it asserts that respondent does not own any trademark rights in the subject domain name, is not commonly known by that name, and has not used or prepared to use the name in connection with a bona fide offering of goods or services.
Complainant asserts that Respondent is not making a legitimate noncommercial or fair use of the domain name, and is instead using the domain name for commercial gain by misleadingly diverting Complainant’s consumers to third-party websites that sell competing products. Complainant assumes that Respondent collects a pay-per-click referral fee from those third parties for diverting consumers to their websites.
Finally, Complainant asserts that Respondent has registered and used
the <vaultz.com> domain name in
bad faith. As evidence, Complainant
notes that the domain name was registered on February 10, 2004, after
Complainant began using its VAULTZ mark on goods sold in North America and
filed trademark applications in the
Respondent, Future Media Architects, Inc., does not clearly state the nature of its business in its filings. On its website, Respondent is described as “an Internet development company with a global presence” that develops its own Internet Properties, Internet Portals and Technology. It asserts there that it does not develop for third parties. See http://www.fma.com/about.html (last visited March 16, 2008).
As an initial matter, Respondent has brought a cancellation action against Complainant before the United States Patent and Trademark Office. Respondent asserts that the cancellation action must be resolved before this proceeding can be adjudicated, and that the instant proceeding should thus be either terminated, or suspended pending the resolution of the cancellation action.
Respondent asserts that Complainant does not have enforceable rights under the Policy because Respondent registered the disputed domain name prior to the registration dates for Complainant’s VAULTZ mark.
Respondent also asserts that Complainant has offered insufficient
evidence to support Complainant’s assertions of common-law trademark rights
under the Policy. In particular,
Respondent asserts that Complainant must show that its mark had secondary
meaning in the
Respondent asserts that it does have a legitimate interest in the disputed domain name because it used the domain name in its “search engine optimization services,” which, it further asserts, constitute a bona fide offering of goods and services.
Respondent additionally asserts that it did not register, and is not using, the domain name in bad faith. Respondent asserts that a showing of intent to harm Complainant’s rights is “a critical element necessary to support a claim of bad faith,” and that Complainant has failed to provide evidence of such intent.
As specific evidence of its lack of bad faith, Respondent notes that it has never attempted to sell, and has no intention of selling, the disputed domain name. It also asserts that it has not registered the domain in order to prevent Complainant from doing so, and points out a similar domain name, <thevaultz.com>, registered to a different entity. Respondent additionally asserts that because it is an Internet development company, Respondent and Complainant are not competitors. Finally, it asserts that it has not registered the domain name to intentionally create a likelihood of confusion.
As a final matter, Respondent points out that Complainant failed to disclose prior correspondence between the two parties, which Respondent asserts would have shown that 1) Complainant knew that Respondent’s registration of the domain name predated the registration dates for Complainant’s VAULTZ mark; and 2) the pending action before the USPTO made Complainant’s registrations vulnerable to cancellation. Respondent asserts that such failure to disclose constitutes reverse domain name hijacking.
C. Additional Submissions
In its reply, Complainant first asserts that the proceeding should not
be suspended or terminated. It asserts
that this proceeding can be adjudicated independently of the cancellation
action before the USPTO because the outcome of that action will not affect
Complainant’s substantive trademark rights in its VAULTZ mark. Specifically, Complainant asserts that even
While Complainant admits that Respondent’s domain name registration does
predate Complainant’s registration of the VAULTZ mark, Complainant points out
that it filed applications in the
As evidence of its common law rights in its VAULTZ mark, Complainant submits records of its sales of VAULTZ branded products in 2003, and asserts that it continues to make such sales.
Complainant asserts that it does not have to prove that its VAULTZ mark has secondary meaning because the mark is inherently distinctive.
The Panel finds that Complainant has provided sufficient evidence to establish that the disputed domain name is identical or confusingly similar to Complainant’s registered marks.
The Panel finds that Respondent has failed to rebut Complainant’s showing that Respondent lacks rights or a legitimate interest in the disputed domain name.
Finally, the Panel finds that Complainant has provided sufficient evidence that Respondent has registered and used the disputed domain name in bad faith.
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.
In its Response, Respondent asserts that it has filed a petition for cancellation with the United States Patent and Trademark Office (“USPTO”) against Complainant’s registration of the VAULTZ mark. Respondent has requested that the Panel decline to proceed with the instant case pending resolution of that petition.
According to Paragraph 18(a) of the Rules, in the event of any legal proceedings initiated during an administrative proceeding in respect of a domain-name dispute, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.
The Panel finds that this proceeding can be adjudicated independently of the cancellation action before the USPTO because the outcome of that action will not affect Complainant’s substantive trademark rights in its VAULTZ mark. Even if Complainant’s registrations were cancelled in that action, Complainant has provided sufficient evidence of common law trademark rights through use of the VAULTZ mark, as well as registrations of the mark in other jurisdictions.
Accordingly, Respondent’s request to terminate or suspend the instant proceeding pending resolution of the action before the USPTO is denied.
Complainant asserts rights in the VAULTZ mark by
virtue of common-law rights and several trademark registrations in the
Additionally, Complainant has presented evidence of common law rights in the VAULTZ mark through use of the mark in commerce since at least as early as February 2003 – again, well in advance of Respondent’s registration of the disputed domain name. As such, the Panel finds that Complainant has relevant rights in the mark.
As to confusing similarity, the mark is identical to the disputed domain name, but for the latter’s addition of the generic top-level domain “.com.” It has long been established that this technical addition necessary to the functionality of the domain name system does not eliminate confusing similarity.
Accordingly, the Panel finds that the disputed domain name is confusingly similar – indeed, identical – to a mark in which Complainant owns rights.
Complainant contends that Respondent is using the disputed domain name to misdirect Complainant’s consumers by displaying hyperlinks to Complainant’s competitors’ websites. Complainant further contends that Respondent receives commercial gain when those competitors in turn pay Respondent pay-per-click fees.
Prior cases have established that such use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). Accordingly, the Panel finds that Respondent’s use of the disputed domain name was neither a bona fide offering of goods and services, nor a legitimate noncommercial or fair use.
In addition, there is insufficient evidence in the record to show that Respondent is or has ever been commonly known by the <vaultz.com> domain name or that Respondent is authorized to use Complainant’s VAULTZ mark. Indeed, Complainant asserts that Respondent is not affiliated with or a licensee of Complainant and is not authorized to use the VAULTZ mark as a domain name or otherwise, and Respondent has not rebutted this point. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy.
As Complainant has made a prima facie case in support of its allegations that the Respondent has no rights or legitimate interests in respect of the disputed domain name, the burden now shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). As the Respondent has been unable to make such a showing, the Panel finds that Respondent has no rights or legitimate interests in the <vaultz.com> domain name.
Under Policy 4(b)(iii), where Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor, such circumstances shall be evidence of registration and use of the domain name in bad faith. Here, Complainant contends that Respondent is using the disputed domain name to disrupt Complainant’s business by redirecting Internet users attempting to find Complainant’s goods to websites of Complainant’s competitors. Prior cases have found similar uses to be evidence of bad faith under Policy 4(b)(iii). See eBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Complainant also alleges that Respondent is attempting to profit through the accrual of click-through fees by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain name and corresponding website. Such circumstances serve as evidence of registration and use in bad faith under Policy 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
Finally, Complainant alleges that Respondent had actual or constructive knowledge of Complainant’s VAULTZ mark when Respondent registered the disputed domain name. Such circumstances have previously been found to be evidence of bad faith registration and use. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”).
Because the Panel agrees that these circumstances all constitute evidence of bad faith registration and use, it finds that Respondent has registered and used the <vaultz.com> domain name in bad faith.
Having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vaultz.com> domain name be TRANSFERRED from Respondent to Complainant.
Michael A. Albert (chair), the Honorable
Carolyn Marks Johnson, and Anne M. Wallace, Panelists
Dated: March 20, 2008
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