MNM Media LLC v.
leftlane.com
Claim Number: FA0806001211465
PARTIES
Complainant is MNM Media LLC Attn: Monish K.
Bhatia, (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <leftlane.com>, registered with Network
Solutions, Inc.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@leftlane.com 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
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.
FINDINGS
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.
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 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.”).
DECISION
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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