Pluck Corporation v. Tarquin Cardona
Claim Number: FA0810001227739
represented by Christina Radocha, of Pluck Corporation,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pluckmedia.com>, registered with Register.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 3, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 6, 2008.
On October 6, 2008, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <pluckmedia.com> domain name is registered with Register.com, Inc. and that the Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.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 October 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 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.
A timely Response was received and determined to be complete on November 7, 2008.
An Additional Submission was submitted by Complainant on November 17, 2008 and was determined to be deficient. Respondent then submitted a Response to Complainant’s Additional Submission on November 21, 2008 and was determined to be timely according to The Forum’s Supplemental Rule #7. The Panel has chosen to consider Respondent’s timely Additional Submission. As a result of the aforementioned, the Panel has chosen to consider Complainant’s deficient Additional Submission, based on the fact that Respondent’s submission is a response to and also addresses points listed in Complainant’s deficient Additional Submission. This discretion is afforded to the Panel.
On November 14 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that it is the leader in
social media software solutions, “providing the technologies for content generation,
syndication and social networking”, using the domain <pluck.com> (See Complaint paragraph 6). Complainant contends that it has been operating
under the trademark of PLUCK since 2004 and states that it owns the exclusive
rights to the PLUCK trademark as U.S. Trademark registration number 3,193,110
since January of 2007. Complainant’s trademark registrations for PLUCK in
Claimant contends that Respondent’s <pluckmedia.com> domain name is confusingly similar in that in incorporates Claimant’s mark in its entirety. Furthermore, Complainant asserts that the disputed domain name includes the word “MEDIA” which is “the direct channel of commerce of the goods and services designated by” its mark (See Complaint paragraph 6). Complainant asserts that when an Internet user seeks information on “Pluck” or “Pluck Media” the user seeks information concerning Complainant and its goods and services. As a result, Complainant asserts that Respondent’s domain name is confusingly similar in sight, sound and meaning and this is likely to cause confusion amongst clients and consumers.
Claimant contends that there is no relationship between Complainant and Respondent, and as a result Respondent has no right to use Complainant’s trademark. Complainant contends that Respondent registered <pluckmedia.com> in an effort to trade off of the goodwill and recognition of Complainant’s website and to generate more traffic to Respondent’s website. Complainant asserts that Respondent is not known by the domain name <pluckmedia.com>, as users seeking information on “Pluck Media” are directed to Complainant’s website or information about Complainant’s goods and services. Complainant asserts that Respondent’s use of the domain name <pluckmedia.com> is not legitimate. Complainant also asserts that Respondent benefits economically from the website by receiving pay-per-click revenue.
Finally, Complainant contends that Respondent registered the domain name in bad faith, with the intent to hold the domain name hostage and make a profit. Complainant contends that on July 29, 2008, a representative of Complainant contacted Respondent concerning the purchase of the domain name. Respondent quickly quoted a price of $975 for the transfer but did not respond to subsequent communications from Complainant. Complainant contends that Respondent registered the domain name <pluckmedia.com> in 2007, several years after Complainant began using its PLUCK trademark in commerce and on the World Wide Web. Complainant contends that Respondent uses the <pluckmedia.com> domain name to promote links to Complainant’s goods and services and that Respondent generates revenue each time users click on these links.
Respondent notes that Complainant’s trademark
Respondent argues that he has a legitimate interest and rights in the domain name <pluckmedia.com> because Respondent is the owner of Consolidated Arts, Inc, a company involved in the media and communications business since 2001, providing services to notable companies such as NBC, ABC, Dreamworks, VHI and the U.S. Army. Respondent contends that in May of 2007 he developed an advertising campaign with a humorous chicken theme and as a result, purchased several domain names. These were <cluckmedia.com>, <cluckvideo.com> and <pluckmedia.com> (collectively, the “Chicken Domain Names”). Respondent contends that he has been developing the chicken themed campaign and has developed a list of potential clients to “pitch” the idea to but that these campaigns take several years to develop. Respondent indicates that he will continue to develop the campaign.
Respondent contends that he is not using the domain name in bad faith to confuse Internet users and divert them to Complainant’s website by benefitting from click-through-fees. Respondent contends that the domain name <pluckmedia.com> contains a parking page provided by Register.com and that Register.com is responsible for the content of the parking page. Respondent contends that he does not receive any financial benefit from this domain name. Moreover, Respondent notes that the domain name <pluckmedia.com> does not contain links to Complainant’s page, but to <kolmic.com>, a site not affiliated with Respondent.
Finally, Respondent alleges that he offered to sell Complainant the domain name for a price of $975 based on the usefulness of the domain name to Respondent in his advertising campaign. Respondent alleges that he was presented with a lengthy contract for the transfer that would have entailed a large sum of legal fees for review, thus Respondent chose not to transfer the domain name.
C. Additional Submissions
In its Additional Submission Complainant states that common English words have been granted trademark registrations in the past and that Respondent’s argument that Complainant’s mark should be given a narrow scope is incorrect. Complainant states that its trademark registration of PLUCK for media related goods and services should afford it federal protection. Complainant further asserts that it is known as “Pluck Media.”
Complainant asserts that Respondent has failed to provide evidence that is has a legitimate interest in the domain name <pluckmedia.com>. Complainant contends that Respondent has failed to supply demonstrable evidence to support a finding of a legitimate interest in relation to the marketing campaign.
Complainant argues that at the time that the Complaint was filed, that the domain name <pluckmedia.com> contained links to various third party websites which provided links to Complainant’s goods and services and those of Complainant’s competitors. Finally, Complainant asserts that Respondent has failed to show that its registration was not in bad faith and notes that since the date of the complaint, the domain name <pluckmedia.com> has been altered and no longer contains links to Complainant or Complainant’s goods or services.
In his Additional Submission Respondent reiterates that the domain name <pluckmedia.com> is not confusingly similar to Complainant’s PLUCK trademark noting that the PLUCK trademark is for use in connection with software services, whereas Respondent’s use of the domain name is for use in connection with advertising services completely unrelated to Complainant’s goods and services. Respondent also reiterates that a Google search for “Pluck Media” only displays 189 hits, only some of which pertain to Complainant.
Respondent further contends that he has demonstrated a legitimate right in the domain name <pluckmedia.com> by presenting Respondent’s background in the industry and the intended purpose for the domain name. Respondent further contends that it would be “wholly unfair” to require him to provide any proprietary information without a protective order and therefore should not be required to submit any additional information.
Finally, Respondent contends that it has not acted in bad faith by displaying a parking page at the domain name <pluckmedia.com> because the advertising campaign is in the preliminary phase of development. Respondent reiterates that he has no control over the content of the page and receives no compensation for visitors who click through the links. Respondent also notes that Complainant falsely alleged that the domain name <pluckmedia.com> contained links to Complainant’s goods and services noting that Complainant’s exhibit G referred to links from <kolmic.com>. Respondent also dismisses Complainant’s proposition that the domain name <pluckmedia.com> directs visitors to other websites which provide links to Complainant or its competitors commenting that he is unaware of any such links.
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 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;
(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 asserts that
Respondent’s domain name <pluckmedia.com>
is confusingly similar to Complainant’s PLUCK mark. The main distinction
between Respondent’s domain name and Complainant’s mark is the addition of the
generic word “media.” Furthermore, Complainant asserts a legitimate right in
the PLUCK mark by virtue of its trademark registration with the United States
Patent and Trademark Office for use in connection with social media software
(“USPTO”) (Reg. No. 3,193,110 issued January 2, 2007). While Respondent notes that several of
Complainant’s trademark registrations are pending, it is true that Complainant
does hold a trademark registration in the
Complainant contends that it is the leader in social media software solutions and has offered evidence that it has been in operation under the “Pluck” mark since at least 2004 when it registered its own domain name <pluck.com>. As a result, the generic word “media” contained in the disputed domain name is descriptive of Complainant’s goods and services. The addition or inclusion of a generic word with an obvious relationship to Complainant’s mark is sufficient to render it confusingly similar pursuant to Policy 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007); see also Accenture Global Servs. GmbH v. Alok Mishra, D2007-0559 (WIPO June 7, 2007).
In its Response, Respondent contends that the <pluckmedia.com> domain name is comprised of generic, dictionary words, and therefore cannot be found to be confusingly similar to Complainant’s PLUCK mark. However, this determination is not necessary under Policy 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
For purposes of Respondent’s argument noted above, what is relevant is whether the addition of the word “media” avoids confusion with Complainant’s mark, and therefore sufficiently distinguishes the disputed domain name from Complainant’s mark. Under these circumstances, evidence provided by both parties supports that a Google search for “Pluck Media” does in fact lead to links to Complainant’s business. Many of these links clearly refer to Complainant as “Pluck Media”. Based on this and the arguments above this Panel is unable to find sufficient differentiation between the two. This Panel finds that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights and therefore will continue to analyze the other two elements.
Complainant asserts that Respondent does not have rights or a legitimate interest with respect to the domain name <pluckmedia.com>. Importantly, Complainant is obliged to make a prima facie case that Respondent lacks rights and a legitimate interest in the disputed domain name pursuant to Policy 4(a)(ii) and then the burden shifts to Respondent to show that is does have rights or legitimate interests.
Complainant notes that Respondent is not commonly known by the <pluckmedia.com> domain name but as “Tarquin Cardona” and Respondent fails to refute this presumption. On this basis, this Panel concludes that Respondent is not commonly known by the <pluckmedia.com> domain name pursuant to Policy 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy 4(c)(ii) based on the WHOIS information and other evidence in the record). Therefore, Complainant has met its light burden which now shifts to Respondent.
Respondent may demonstrate having legitimate rights by showing that it uses the domain name in connection with a bona fide offering of goods and services pursuant to 4(c)(i). Because the domain name contains no content of this nature, Respondent must prove that, prior to having received notice of this dispute, Respondent made “demonstrable preparations” to use the domain name in connection with a bona fide offering of goods and services by submitting “substantial, overwhelming and undisputed evidence.” See AutoNation Holding Corp. v. Alawneh, D2002-0058 (WIPO May 1, 2002).
Respondent alleges to have made preparations to use the domain name <pluckmedia.com> in connection with a chicken-themed advertising campaign. Respondent further alleges that he should not be required to submit additional information without a protective order. Furthermore, Respondent has not registered nor attempted to register the mark at either the state or federal levels. As evidence, Respondent submits a declaration stating his intent to use the domain name to develop an advertising campaign and notes that he has a list of companies to pitch the idea to. Furthermore, Respondent introduces evidence that he also owns the rights to <cluck.com> and <cluckvideo.com>, which were purchased for the same advertising campaign.
In this respect, Respondent has failed to provide sufficient evidence of “demonstrable preparations.” This Panel has not been presented with any concrete evidence, campaign plans, timelines, outlines, project notes, list of expenses already incurred for the development of the campaign, or declarations from employees or colleagues assisting in the development of the campaign.
Furthermore, Complainant contends that Respondent offered to sell the <pluckmedia.com> domain name to Complainant for $975, which Complainant claims is well in excess of Respondent’s out-of-pocket costs. Respondent admits to this. This is evidence of Respondent’s lack of rights and legitimate interests in the <pluckmedia.com> domain name pursuant to Policy 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy 4(a)(ii)).
Respondent has failed to meet its burden of proof. Therefore, the Panel finds that Respondent has no rights or legitimate interests with respect to the domain name.
Complainant contends that Respondent offered to sell the <pluckmedia.com> domain name to Complainant for an amount in excess of Respondent’s out-of-pocket costs. This is sufficient to constitute a finding of bad faith pursuant to Policy 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith).
Respondent’s <pluckmedia.com> domain name resolves to a website that displays a list of hyperlinks promoting the products of Complainant, its competitors, and unrelated businesses. This use can be presumed to disrupt Complainant’s business by diverting Internet users to other sites that sell Complainant’s products or those of its competitors and is demonstrative of bad faith pursuant to Policy 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent contends that the content posted to the website resolving from the <pluckmedia.com> domain name was posted by the Registrar. Respondent therefore argues that the Registrar has sole control over this content, and Respondent does not collect any click-through fees. Regardless of the latter, the activity of parking service providers is legally and practically attributable back to Respondent. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv), regardless of the fact that the respondent was not earning click-through fees, because “… [t]he key fact here is that Respondent, in collaboration with the domain parking service providers, is exploiting Complainant's goodwill.”).
Finally, the inference of bad faith can be overcome if Respondent demonstrates having rights or a legitimate interest in the disputed domain name. See Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005). As discussed previously, this Panel is unable to find that Respondent has rights or a legitimate interest in the disputed domain name. Therefore, based on the above the domain name have been registered and are being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pluckmedia.com> domain name be TRANSFERRED from Respondent to Complainant.
Calvin A. Hamilton
Dated: November 26, 2008
National Arbitration Forum