The College Network, Inc. v. IV-MEDIA, LLC
Claim Number: FA0811001234688
Complainant is The College Network, Inc. (“Complainant”), represented by Jonathan G. Polak, of Taft Stettinius & Hollister LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thecollegenetwork.com>, registered with Network Solutions, Inc.
The undersigned certify 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.
Hon. Nelson A. Diaz, Diane Cabell, and Joel M. Grossman, Chair, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 18, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 21, 2008.
On November 19, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <thecollegenetwork.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 November 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 11, 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 December 11, 2008.
An Additional Submission was received from Complainant on December 16, 2008, which was determined to be timely and complete under the National Arbitration Forum’s Supplemental Rule 7.
An Additional Submission was received from Respondent on December 22, 2008, which was also determined to be timely and complete under the National Arbitration Forum’s Supplemental Rule 7.
On December 19, 2008, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Nelson A. Diaz, Diane Cabell, and Joel M. Grossman, Chair, as Panelists. On December 22, 2008, the time in which to render a Decision in this matter was extended to January 23, 2009.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts that the domain name is identical to its mark, THE COLLEGE NETWORK. Complainant further asserts that it has rights in the mark. Although Complainant does not own a registered trademark in the mark, it asserts that it owns a common law trademark. Complainant further points out that on May 19, 2008 it submitted its trademark application to the USPTO. Complainant asserts that its common law trademark has acquired secondary meaning based on the following facts: (1) it has used the mark in commerce since 1995; (2) for the period 1996-2007 it spent over $33 million in marketing and advertising costs; (3) it advertises its products, using the mark, through direct mailing, magazine ads, and Internet marketing; and (4) from 1996-2007 it earned $410 million in net national sales.
Complainant next asserts that Respondent has no rights or legitimate interests in the name. To this end Complainant argues that Respondent is not known by the name, and Respondent cannot establish a bona fide offering of goods or services or legitimate noncommercial use of the name. Complainant points out that Respondent has not placed any substantive content on the website accessed by the name, and that the website automatically forwards users to a different site. Complainant also asserts that Respondent offered to sell or lease the domain name to Complainant for $750 per month for the rest of Respondent’s life, further showing lack of any legitimate interests in the name.
Finally, Complainant asserts that the name was registered and is being used in bad faith. As evidence of bad faith Complainant points first to its assertion that Respondent has offered to sell or lease the name to Complainant at well above the cost of registration, and second, that it has placed no content on the website using the name, and instead is using the name to redirect users to another website where it earns pay-per-click fees.
On the subject of Complainant’s trademark application, Respondent points out that the USPTO refused the registration through an Office Action, on September 8, 2008, based on its conclusion that the mark was merely descriptive. As to Complainant’s assertion that it has a common law trademark which has acquired secondary meaning, Respondent asserts that Complainant’s showing is insufficient. Citing other UDRP panel decisions, Respondent contends that to establish secondary meaning in a mark the complainant must establish that the public associates the mark with the complainant’s services. Respondent claims that Complainant’s evidence of a lump sum dollar amount for advertising over a 10-year period, and a lump sum for net sales is not sufficient. Complainant has provided no evidence to establish that its mark has acquired distinctiveness, or that the public identifies the term “College Network” with Complainant’s products. Complainant has not cited consumer surveys which might provide such evidence, and has not provided evidence of media usage of the mark. Respondent further points out other websites which have names very similar to the mark, including <collegenetwork.com>; <thecollegenetwork.org>; <thecollege-network.org>; the existence of which call into question Complainant’s assertion that the public has come to associate the mark with Complainant.
Respondent next asserts that it has rights and legitimate interests in the name. It explains that it has registered many domain names which, pursuant to its business plan, it groups into affinity website groups in areas of interest to consumers. Respondent disputes Complainant’s assertions that there is no content on the website, and that the only use of the domain name is to redirect users to a different site so that Respondent can earn pay-per-click fees. Respondent claims that a user going to the website reflected in the name will at first be redirected to Respondent’s <newschannelnetwork.com> home page, which in turn has a link to <thecollegenetwork.com>. That website, which uses the domain name, contains leads related to college information.
Finally, Respondent denies that the name was registered or is being used in bad faith. Rather, Respondent registered the domain name for a specific purpose, the creation of an affinity group of websites. Additionally, Respondent denies that it offered to sell or lease the name for an amount in excess of registration fees, as set forth in the Affidavit of its principal. Further, Respondent denies that it earns pay-per-click fees by use of the name.
C. Additional Submissions
In its Additional Submission Complainant restates its position that it has a common law trademark in the name, and that its mark has acquired secondary meaning. Regarding the USPTO Office Action rejecting its trademark application, Complainant states that it has filed an Office Action Response and hopes to acquire the requested registration in the future, citing a potentially helpful telephone call with the Examining Attorney. Complainant further points out that Respondent does not contest the fact that it is not and never has been known by the name. Further, Complainant asserts that despite the description of its business plan, Respondent still has not shown that there is any content on the domain name website. Per Complainant, the lack of substantive content undermines Respondent’s claim to bona fide use of the name. Finally, regarding bad faith, Complainant stands by its claim that Respondent attempted to sell or lease the domain name to Complainant for more than the registration fee, and also asserts that despite owning the name for ten years, Respondent still has put no content on the website. The failure to develop the website constitutes bad faith.
In Respondent’s Additional Submission, it first addresses the issue of common law trademark and secondary meaning. Respondent points out that despite the cases cited in the initial Response, and the requirements set forth in those cases for establishing secondary meaning, Complainant’s Additional Submission merely repeats the insufficient showing set forth in the original Complaint. Complainant has not provided any consumer surveys or evidence of media use of the mark, and relies only on a citation of the dollar amounts it spent to advertise its products, and the dollar amounts of net revenue. These dollar amounts—standing alone—are insufficient to show secondary meaning. On the subject of legitimate interests in the name, Respondent states that Complainant is “retreating” from its position in the Complaint that the website has no content, and is now asserting in its Additional Submission that the website lacks “substantive content.” Respondent claims that the website, which is linked to its <newschannelnetwork.com> website, does in fact have substantive content and, as noted in the Response, the business plan which creates clusters of affinity groups is valid and legitimate use of domain names. Finally, Respondent restates that it has not attempted to sell or lease the domain name to Complainant over the ten years in which it owned the name, and that all contact between the parties was initiated by Complainant.
The Panel determines that Complainant has failed to establish rights in the mark. Based on this finding, the Panel need not discuss whether Respondent has rights or legitimate interests in the name, or whether the name was registered or being used 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 Panel determines that Complainant has not proven its rights in the mark. First, Complainant has no registered trademark in the name. Second, Complainant has failed to demonstrate that it has common law trademark rights in the name because Complainant has failed to prove that the mark has acquired secondary meaning. As discussed above, Complainant has provided evidence of the dollar amount spent to advertise its products and of the dollar amount of net sales of its products. But Complainant has not provided any evidence that the public at large has come to associate the mark with Complainant’s goods and services. As the panel pointed out in Rask Cycle LLC v. Texas International Property Associates, FA 1221628 (Nat. Arb. Forum Oct. 21, 2008) evidence of secondary meaning includes not only sales figures and advertising dollars, but also consumer surveys, media recognition or other evidence that consumers associate the mark with complainant’s goods or services. Citing the panel’s decision in Tomlinson Affiliate Services Inc. v. Texas International Property Associates, FA 1138312 (Nat. Arb. Forum Mar. 11, 2008), the Rask Cycle panel went on to state the rule generally as follows: “a complainant must show that the name has become a distinct identifier associated with the complainant or its goods and services.” Similarly, the panel in Molecular Nutrition, Inc. v. Network News and Publications c/o Dennis Baratta, FA 156715 (Nat. Arb. Forum June 24, 2003) noted that the complainant must provide evidence not only of its sales but also evidence that “any significant group in the population identifies the relatively non-distinctive words ‘Molecular Nutrition’ exclusively, or even primarily, with Complainant’s products to produce a secondary meaning.” The same is true in the instant case. The THE COLLEGE NETWORK mark is a combination of two very common words. As Respondent points out, there are many domain names, unchallenged by Complainant, that are virtually identical to the mark. Moreover, the focus of a secondary meaning inquiry should be on the public’s awareness of the mark, not just on a complainant’s sales or advertising data. It is worth pointing out, as Respondent did in its Additional Submission, that even after the above and other panel decisions were pointed out to Complainant in the Response, Complainant’s Additional Submission added nothing to the insufficient record set forth in the Complaint. In other words, Complainant had the opportunity to present additional evidence yet it failed to do so. The Panel can only conclude that Complainant does not have sufficient evidence to meet its burden of showing secondary meaning in the mark. For the above reasons the Panel concludes that Complainant cannot prevail in this matter as it cannot demonstrate sufficient rights in its mark.
Given the Panel’s findings in regards to Complainant’s failure to prove rights in the mark, the Panel need not address this issue, and declines to do so. See Creative Curb v. Edgetec Int’l Pty., Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002).
Given the Panel’s findings in regards to Complainant’s failure to prove rights in the mark, the Panel need not address this issue, and declines to do so. See Creative Curb, supra.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Hon. Nelson A. Diaz, Diane Cabell, and Joel
M. Grossman, Chair, Panelists
Dated: January 23, 2009
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