Corporation v. NameBubble LLC
Claim Number: FA0804001180949
Complainant is DotNetNuke
Corporation ("Complainant"), represented by Michael G. Atkins,
of Graham &
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dnn.com>, registered with GoDaddy.com, Inc.
The undersigned certifies 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.
David A. Einhorn (Chair), Judge Carolyn Marks Johnson and Judge R. Glen Ayers as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 23, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 1, 2008.
On April 24, 2008, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <dnn.com> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 May 2, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 22, 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 May 21, 2008.
On May 27, 2008, Complainant submitted an Additional Submission that was determined to be timely.
On June 2, 2008, Respondent submitted an Additional Submission that was determined to be timely.
On June 4, 2008, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed David A. Einhorn (Chair), Judge Carolyn Marks Johnson and Judge R. Glen Ayers as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant alleges as follows:
(1) Complainant owns the mark DNN
for computer software and computer programming.
Complainant filed an application for federal registration of this mark on March
25, 2008 based on an alleged first use date of March 25, 2008. Said
application, Serial No. 77/431,300, is currently pending. Complainant also
asserts that the company Perpetual Motion
Interactive Systems, Inc. ("PMIS"), a Canadian corporation, owns a
registration for DOTNETNUKE under registration number 3,206,060 (as well
as a similar registration in
(2) Respondent has no rights or legitimate interests with respect to this domain name.
(3) The domain name has been registered and is being used in bad faith.
Respondent argues that Complainant's pending trademark application does not confer rights. Respondent also argues that the cited DOTNETNUKE registrations are irrelevant since they are owned by a company other than Complainant.
C. Additional Submissions
Complainant points to a 2006 press release from PMIS saying that PMIS will transfer its trademarks to Complainant.
Complainant further asserts common law rights based on usage of the mark beginning February 2003. Respondent argues that Complainant has not established common law rights, having failed to provide any evidence of active use of the DNN mark during the relevant time, such as the size and location of Complainant's customer base, its sales figures, its revenues, its advertising, expenditures, etc.
FINDINGS AND 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.
The threshold issue here is whether Complainant has established a protectable right in the mark DNN. Here, Complainant has filed a federal trademark application for DNN which is, as of yet, unexamined by the Trademark Office. This filing of an application is, in itself, insufficient to confer any protectable rights in Complainant. See Razorbox, Inc. v. Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003) ("Complainant's pending trademark application does not in and of itself demonstrate trademark rights in the mark applied for."). Complainant also claims rights to the mark DNN because registrations for that mark is owned by the Canadian corporation, PMIS, which had announced, two years ago, an intention to assign those marks to Complainant. PMIS has not assigned those marks to date, however, and Complainant's assertion of rights, based on PMIS' alleged past intention to assign, followed by no actual assignment, is groundless and frivolous.
Complainant also claims to have acquired common law rights in the mark DNN. However, Complainant has provided no information or evidence to support its bare assertion that this mark has acquired secondary meaning. Absent any proof of secondary meaning, this Panel cannot conclude that Complainant has a protectable right in the mark DNN. See Molecular Nutrition, Inc. v. Network News & Publ'ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (Complainant in that case had alleged that it had been selling its products over the Internet for over two years. However, the panel found no protectable common law rights in the mark since complainant had supplied the panel with no documentation concerning the volume and scope of such sales). See also U.S. Fire Arms Mfg. Co. v. Salvia Corp., FA 612350 (Nat. Arb. Forum Feb. 1, 2006) ("The type of evidence generally required to support a finding of common law rights in a mark includes business sales figures, revenue, advertising expenditures, number of consumers served, and evidence that there is a strong customer identification of the mark with Complainant's goods or services").
For the foregoing reasons, this Panel finds that Complainant has failed to prove that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights.
Since Complainant has failed to satisfy paragraph 4(a)(i) of the Policy, the Panel need not examine whether Complainant would prevail as to the criteria in paragraphs 4(a)(ii) and 4(a)(iii).
Having considered all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <dnn.com> domain name remain registered to Respondent.
David A. Einhorn, Presiding Panelist
Judge Carolyn Marks Johnson, Panelist
Judge R. Glen Ayers, Panelist
Dated: June 18, 2008
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