Pluck
Corporation v. Tarquin Cardona
Claim Number: FA0810001227739
PARTIES
Complainant
is Pluck
Corporation (“Complainant”),
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@pluckmedia.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.
RELIEF SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
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.
B.
Respondent
Respondent notes that Complainant’s trademark
registrations in
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
A. Complainant
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.
B. Respondent
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.
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
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.
DECISION
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
Panelist
Dated: November 26, 2008
National Arbitration Forum