The College Network, Inc. v. IV-MEDIA, LLC
Claim Number: FA0811001234688
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@thecollegenetwork.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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.
FINDINGS
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.
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 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.
DECISION
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
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum