Misikko, Inc v. Freedman,
Iko
Claim Number: FA0811001235081
PARTIES
Complainant is Misikko, Inc. (“Complainant”), represented by David
L.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <missiko.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.
Nathalie Dreyfus as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 20, 2008; the
National Arbitration Forum received a hard copy of the Complaint on November 20, 2008.
On November 20, 2008, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <missiko.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 25, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 15, 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@missiko.com by e-mail.
A timely Response was received and determined to be complete on December 15, 2008.
On December 19, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Nathalie Dreyfus as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that
[a.] Pursuant to ICANN Rule 3(b)(ix)(1) and ICANN Policy ¶ 4(a)(i), the domain name used by Respondent, <missiko.com>, is extremely similar to Complainant Misikko, Inc.’s trademark MISIKKO.COM in sight and identical in sound. The Respondent’s domain name is also spelled very close to Complainant’s spelling, differing by simply adding an “s” to make a double “s” and taking away a “k” to make a single “k.” Given the exact same pronunciation and very similar appearance, it is quite easy for customers of Complainant to inadvertently go to Respondent’s web site by typographical error, by erroneous selection from search engine results, and by other errors.
[b.] Respondent (domain-name holder of the <missiko.com> domain name) should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the complaint because Respondent is improperly using the domain name to cause trademark infringement and unfair competition, and to misled consumers to Respondent’s web site due to the same sound and substantially similar spelling and thus the confusingly similar nature of Respondent’s domain-name. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶ 4(a)(ii).
[c.] Respondent’s use of the domain name is in bad faith. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶ 4(a)(iii).
Respondent’s use of the domain name intentionally attempts to attract and is believed to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service advertised on Respondent’s web site.
In the appendices list, Complainant provides excerpts of Respondent’s <missiko.com> domain name from Wayback machine dating back to May 22, 2003
B. Respondent
Respondent contends that
-
The <missiko.com> domain name is
not identical or confusingly similar to a trademark or service mark in which
the Complainant has rights
-
Respondent
has rights/and or legitimate interest in respect of the domain name
-
The
disputed domain name has not been registered in bad faith and is not being used
in bad faith
-
Complainant
committed reverse domain name hijacking
FINDINGS
Complainant has failed to establish that it
has sufficient common law rights in the trademark MISIKKO.COM on which the
Complaint is based. It is unnecessary
for the Panel to examine the second and third elements of the policy, and
transfer is denied.
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.
To satisfy Policy ¶ 4(a)(i), Complainant must first establish rights to
a mark. This can be accomplished either
through a trademark registration with a governmental authority, or by proving
that the mark has acquired common law rights through a showing of secondary
meaning. See Hiatt v. Pers. Fan &
Official Site Builders: we build great sites, FA 881460 (Nat. Arb. Forum
Feb. 21, 2007) (“Registration with a trademark authority is unnecessary under
Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through
extensive commercial use and common law rights have been established ….”); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat.
Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a
trademark registration if a complainant can establish common law rights in its
mark).
Complainant alleged trademark right in MISIKKO.COM and submitted abstract of this corresponding website. It is not registered trademark right. According to the Policy ¶ 4(a)(i), common law rights are sufficient to establish rights in a mark. The ICANN dispute resolution policy is thus broad in scope in that the reference to a trademark or service mark in which Complainant has rights means that ownership of a registered mark is not required and unregistered or common law trademark or service mark rights will suffice to support a domain name Complaint under the Policy. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000).
Although Complainant’s assertion that it
holds rights in MISIKKO.COM is not contested by Respondent, the Panel considers
that Complainant failed to demonstrate its rights with sufficient evidence.
See Molecular Nutrition, Inc. v. Network News &
Publ’ns, FA 156715 (Nat. Arb. Forum June
24, 2003) (finding that the complainant failed to establish common law rights
in its mark because mere assertions of such rights are insufficient without
accompanying evidence to demonstrate that the public identifies the
complainant’s mark exclusively or primarily with the complainant’s products).
As already recognized by different panels, common law right demonstration requires an evidentiary submission providing, inter alia, indications in respect of length and amount of sales under the mark, nature and extent of advertising, consumer survey and media recognition. Here the evidence submitted does not provided indications in these respects. See Amsec Enters., L.C. v. McGall, D2001-0083 (WIPO Apr. 3, 2001) (stating that evidence of a secondary meaning for a mark, sufficient to justify a finding of a common law trademark “includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products); see also RecruitUSA Inc. v. Krueger, FA 1203764 (Nat. Arb. Forum Aug. 5, 2008) (finding that the standards required to this effect by panels include length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (failing to find common law rights where the complainant provided little evidence showing the extent of its use of the mark over the three years that the complainant claimed to have been using the mark); see also Occidental Hoteles Mgmt., S.A., & Corictal II, S.A. v. Hargrave Arts, LLC, FA 959645 (Nat. Arb. Forum May 21, 2007) (finding that the complainant did not submit sufficient evidence showing that its OCCIDENTAL mark had acquired the necessary secondary meaning for it to establish common law rights pursuant to Policy ¶ 4(a)(i)).
The Panel therefore finds that
Policy ¶ 4(a)(i) has not been satisfied and thus declines to analyze the other two elements of the Policy. 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 Hugo Daniel Barbaca Bejinha v. Whois Guard
Protected, FA 836538 (Nat. Arb.
Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or
legitimate interests or its registration and use in bad faith where the
complainant could not satisfy the requirements of Policy ¶ 4(a)(i)); see also Toyota of Des Moines v. Domain Administrator, FA 1216446 (Nat. Arb.
Forum Sept. 16, 2008) (finding that Policy 4(a)(i) has not been satisfied and
consequently declined to analyze the other two elements of the policy).
For the reason stated above, the Panel declines to analyze this element of the Policy.
For the reason stated above, the Panel declines to analyze this element of the Policy.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <missiko.com> domain name remain with
Respondent.
Nathalie Dreyfus, Panelist
Dated: January 2, 2008
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