MNM Media LLC v. leftlane.com
Claim Number: FA0806001211465
Complainant is MNM Media LLC Attn: Monish K.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <leftlane.com>, registered with Network Solutions, Inc.
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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 20, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 23, 2008.
On June 23, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <leftlane.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 July 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 23, 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 July 23, 2008.
An Additional Submission was received from Complainant on July 25, 2008 and determined to be timely and complete in compliance with the National Arbitration Forum’s Supplemental Rule 7.
On July 29, 2008, Respondent filed an Additional Statement in response.
On July 29, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dawn Osborne as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. The Complainant contentions can be summarized as follows:
The Complainant provides automobile related news, reviews, pricing and
other consumer information via its Leftlane news website. It holds a
The Complainant contends the Respondent is in clear trademark violation due to the fact the Respondent’s trademark was cancelled in 2007 and the Complainant registered the LEFTLANE trademark in late 2007, without opposition from the Respondent.
The Respondent used the domain name <leftlane.com> for a consumer-oriented automotive website connected to the Suburban Collection car dealership franchise during the 1990’s or early 2000’s. The website failed and was shut down. Having reinstated the <leftlane.com> website, it is the belief of the Complainant that the Respondent is seeking to benefit from accidental visitors attempting to visit the Complainant’s LeftlaneNews website. The renewal of the domain name for a further 5 years constitutes bad faith.
The Complainant contacted the Respondent in 2007 with the intention of purchasing the domain name. The Respondent was, therefore, aware of the Complainant’s established business when renewing the domain name for an additional 5 years in May 2008. Further, the Complainant states the Respondent re-directs users to SurburbanCollection which is not commonly known to the domain name <leftlane.com> nor used in the context of their business.
B. The Respondent’s contentions can be summarized as follows:
The Respondent is an active corporation in
The Respondent registered the domain name <leftlane.com> on December 9, 1999, more than 5 years prior to the existence of LeftlaneNews and Complainant’s registration of <leftlanenews.com>, and more than 8 years before the Complainant registered its mark. It was not by intention the mark was not renewed. This was an unfortunate administrative oversight. Further, the Respondent stated that Leftland.com, Inc had been commonly known as “leftlane.com” since 1999 and enjoys common law trademark rights. The general rule as laid down in Digital Vision Ltd v. Advanced Chemill Systems, D2001-0827 (WIPO Sept. 23, 2001) is that registration of a domain name cannot be in bad faith if it is registered before the establishment of a trademark right. The Respondent was not aware of the Complainant when it renewed the domain on May 8, 2008. Rule 4(a)(iii) of the Policy is not satisfied as a renewal of a domain name does not amount to registration for the purposes of finding bad faith. The Respondent has no record of being contacted by the Complainant with regard to the purchase of the Domain Name.
C. Additional Submissions of the Complainant can be summarized as follows;
Pursuant to Rule 7 of the National Arbitration Forum’s Supplemental Rules, the Complainant filed an Additional Submission in answer to the Respondent’s Response on July 25, 2008
The Complainant reiterates its arguments placed in the original Complaint against the Respondent.
D. Additional Submissions of the Respondent
The Respondent filed an Additional Statement dated July 29, 2008 reiterating its arguments in its original Response.
The Panelist finds that although the Complainant does have trademark rights which are identical to the Domain Name for the purposes of the Policy, the Respondent did not register it 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.
The Complainant has a
The Complainant has not proven by evidence that the Respondent has not used the Domain Name consistently since 1999, but nor has the Respondent on the evidence proven that it has. In the light of the Panelist’s finding on bad faith, however, it is not necessary for the Panelist to decide this issue. 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 01059 GmbH v. VARTEX Media Mktg. GmbH/Stefan Heisig, D2004-0541 (WIPO Sept. 10, 2004) (holding that if the complainant does not satisfy Policy ¶ 4(a)(i) by showing it has rights in a mark, the panel need not consider whether the respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) or whether it registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii)).
Respondent registered the <leftlane.com> domain name on December 9, 1999, over five years prior to Complainant’s alleged first use of its LEFTLANE mark. From December 26, 2000 through September 29, 2007 Respondent held a trademark registration for the LEFTLANE.COM mark with the USPTO. Because Respondent’s domain name predates Complainant’s alleged use of the LEFTLANE mark by over five years, the Panel finds that Respondent could not have registered the <leftlane.com> 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 Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant's company did not exist at the time of registration).
Complainant contends that Respondent abandoned its rights in the <leftlane.com> domain name and that its renewal of the disputed domain name with the registrar is evidence of bad faith. However, the Panel finds that the fact that the LEFTLANE.COM trademark registration was allowed to lapse has no bearing on continued use of the <leftlane.com> domain name in connection with the Respondent’s business. Renewal of domain name registration is not an inquiry relevant for review by the Panel and that it is not considered to be bad faith under the UDRP. See Spirit Airlines, Inc. v. Spirit Airlines Pty. Ltd., D2001-0748 (WIPO July 25, 2001) (holding that, “[r]enewal of a domain name registration…is no different from renewal of a trademark registration [as] it represents a continuation of the original registration. Were Complainant’s argument to succeed, all ‘innocent’ registrants of domain names would be at risk of becoming branded ‘cybersquatters’”); see also Substance Abuse Mgmt., Inc. v. Screen Actors Models Int'l, Inc. (SAMI), D2001-0782 (WIPO Aug. 14, 2001) (“If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith.”).
The Complainant not having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Dawn Osborne, Panelist
Dated: 12 August, 2008
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