Multiplied Media Corporation v.
Claim Number: FA0802001144329
Complainant is Multiplied Media Corporation (“Complainant”), represented by Lisa
M. Martens, of Fish & Richardson
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <poynt.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 13, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 15, 2008.
On February 14, 2008, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <poynt.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 February 19, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 10, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 16, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <poynt.com> domain name is identical to Complainant’s POYNT mark.
2. Respondent does not have any rights or legitimate interests in the <poynt.com> domain name.
3. Respondent registered and used the <poynt.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Multiplied Media
Corporation, is a multimedia company based in
Respondent, Belize Domain WHOIS Service Lt, registered the <poynt.com> domain name on August 6, 2004. Respondent is using the disputed domain name to display hyperlinks which advertise competing multimedia services.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 filed a trademark application with the USPTO for the POYNT mark, but the application is still pending. Nevertheless, the Panel finds that such a registration is not necessary for Complainant to establish rights in the mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Instead, Complainant can establish common law rights in the POYNT mark pursuant to Policy ¶ 4(a)(i) by showing that the mark has acquired sufficient secondary meaning through extensive commercial use in commerce. See Hiatt v. Pers. Fan & Official Site Builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“Registration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….”).
The Panel finds that Complainant has failed to establish common law rights in the POYNT mark pursuant to Policy ¶ 4(a)(i). Complainant alleges that it has established common law rights through “long and continuous use” of the mark in commerce. However, all evidence in the record indicates that Complainant’s first use of the mark in commerce dates back to June 2007, and the Panel finds that less than one year’s use of the mark is not considered long or extensive. Furthermore, Complainant has not submitted any evidence in the record of this use incorporating the POYNT mark, including letterheads, receipts, or other business records. Therefore, the Panel finds that Complainant has failed to establish rights in the POYNT mark pursuant to Policy ¶ 4(a)(i). See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (holding that prior UDRP precedent did not support a finding of common law rights in a mark in lieu of any supporting evidence, statements or proof (e.g., business sales figures, revenues, advertising expenditures, number of consumers served, trademark applications or intent-to-use applications); see also Voip Review LLC v. Nokta Internet Techs., FA 1095192 (Nat. Arb. Forum Dec. 12, 2007) (“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.”).
Since Complainant has failed to establish rights in the POYNT mark, the Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have rights or legitimate interests in the <poynt.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Panel finds that Complainant has failed to establish a prima facie case. Complainant alleges that Respondent is using the <poynt.com> domain name to display a list of hyperlinks, some of which advertise competing multimedia services. However, absent other evidence in the record, the display of hyperlinks is not prima facie evidence of a lack of rights or legitimate interests. In fact, in some instances such as this, the operation of a portal site constitutes a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See INVESTools Inc v. KingWeb Inc., FA 598845 (Nat. Arb. Forum Jan. 9, 2006) (holding that the respondent’s use of the disputed domain name to operate a web directory with links to investment-related websites in competition with the complainant constituted a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i)); see also Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002) (finding that the respondent’s use of the disputed domain name as a portal to a commercial website featuring various advertisements and links constituted a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).
The Panel thus finds that Complainant has failed to satisfy Policy ¶ 4(a)(ii).
According to the evidence in the record, Complainant’s first use of the POYNT mark in commerce was June 2007. However, the WHOIS record indicates that Respondent registered the <poynt.com> domain name on August 6, 2004, and Complainant has not submitted any evidence indicating otherwise. Therefore, Respondent’s registration of the <poynt.com> domain name predates Complainant’s use of the POYNT mark, as well as Complainant’s trademark application in June 2007. This indicates that Respondent did not register or use the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).
Consequently, the Panel finds that Respondent did not have actual or constructive knowledge of Complainant’s use of the POYNT mark. The Panel thus reaffirms that Respondent’s registration and use of the <poynt.com> domain name was in good faith pursuant to Policy ¶ 4(a)(iii). See Applegate Directory Ltd. v. Interlution, D2004-0181 (WIPO May 26, 2004) (finding no bad faith registration and use of the disputed domain name by the respondent because no evidence was presented that the respondent “had even constructive knowledge” of the complainant’s business, and no evidence that the complainant “had established any trademark rights in the APPLEGATE mark”); see also U.S. Nutraceuticals, LLC v. Telepathy, Inc., FA 365884 (Nat. Arb. Forum Jan. 17, 2005) (“Without knowledge of Complainant or its claim of right in the mark, it is difficult to see how Respondent could have the specific intent required for it to act in bad faith against the rights of Complainant.”).
The Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(iii).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Judge Harold Kalina (Ret.), Panelist
Dated: March 26, 2008
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