Push Traffic Inc. v. Art
Lynch
Claim Number: FA0908001281020
PARTIES
Complainant is Push Traffic Inc. (“Complainant”), represented by Andrew
M. Weitz,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pushtrafficswindle.com>, registered
with Netfirms,
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.
Robert A Fashler as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 24, 2009. The National Arbitration Forum
received a hard copy of the Complaint on August
31, 2009.
On August 24, 2009 Netfirms, Inc.
confirmed by e-mail to the National Arbitration Forum that the <pushtrafficswindle.com>
domain name is registered with Netfirms, Inc.
and that the Respondent is the current registrant of the name. Netfirms, Inc.
has verified that Respondent is bound by the Netfirms,
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 September 3, 2009 a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of September 23, 2009 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@pushtrafficswindle.com
by e-mail.
A timely Response was received and determined to be complete on September 23, 2009.
An Additional Submission was received from the Complainant on September
28, 2009 and an Additional Submission was received from the Respondent on
September 29, 2009.
On September 30, 2009 pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Robert A Fashler as Panelist.
RELIEF SOUGHT
Complainant requests that the <pushtrafficswindle.com> domain name
be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts that:
(a)
Complainant is a corporation incorporated on May 9,
2007, in the State of
(b) Complainant operates an Internet consulting business through a website (“Complainant’s Website”), which is accessed via the domain name <pushtraffic.com> (“Complainant’s Domain”).
(c) Complainant’s Domain was registered on October 12, 2005, which is approximately two years before Complainant came into existence. Complainant does not explain who registered Complainant’s Domain in 2005. Complainant does not explain how or when Complainant’s Domain came to be owned and used by Complainant.
(d) Respondent owns the domain name pushtrafficswindle.com (“Respondent’s Domain”) and operates a website accessed via the <pushtrafficswindle.com> (“Respondent’s Website”). There is no evidence showing when Respondent’s Domain was registered or by whom.
(e) Respondent’s Website contains false, libelous and abusive statements concerning Complainant, including statements that Complainant:
(i) misused a customer’s credit card details; and
(ii) made up statements about one of its customers.
(f) “The website <pushtrafficswindle.com> is confusingly similar to pushtraffic.com causing potential Push Traffic customers to be diverted to the defamatory abusive site of <pushtrafficswindle.com> adversely affecting the business of pushtraffic.com.”
(g) Respondent has no rights or legitimate interests in Respondent’s Domain “in that its only purpose is to defame, libel, attack and otherwise threaten complainant based on no facts in violation of respondent’s host’s terms of service…which prohibits the use of services ‘to store, post, transmit, display or otherwise make available …defamatory, harassing, abusive or threatening language’ ”.
(h) Use of Respondent’s Domain is in bad faith as its primary purpose is for disrupting the business of Complainant.
Complainant bases the Complaint exclusively on the “website pushtraffic.com”. Complainant does not make any mention of any registered trade-mark. Complainant does not expressly characterize pushtraffic.com as a common law trademark. Complainant does not provide any evidence demonstrating that the “website pushtraffic.com” has acquired any distinctiveness or goodwill. It does not even assert such facts. Its arguments are all directed to the allegedly false statements about Complainant that appear at Respondent’s Website.
B. Respondent
Respondent asserts that:
(a)
He is an individual who resides in
(b) Respondent’s Website does not infringe upon any trademark owned by Complainant. Complainant does not have a trademark registration for PUSHTRAFFIC.
(c) Respondent’s Website is a public service site. The purpose of the website is to warn the public of the allegedly unethical business practices of Complainant.
(d) Respondent does not sell anything via Respondent’s Website and it does not compete with Complainant’s Website.
(e) Respondent’s Website does not seek to capitalize upon Complainant’s name, be in competition with Complainant’s Domain, or divert internet traffic from Complainant’s Website.
(f) The statements on Respondent’s Website that Complainant says are false are in fact true.
C. Additional Submissions
Complainant additionally asserts that:
(a) The Response relies on a collection of unsworn customer complaints, which are, at best, hearsay and inadmissable.
(b) The policy of Complainant is to respond to legitimate complaints by its customers.
(c) Respondent’s Website hinders Complainant from serving its customers and deters potential customers from doing business with Complainant.
Respondent additionally asserts that:
(a) Complainant’s Domain and Respondent’s Domain are slightly similar.
(b) There is no similarity between Respondent’s Website and Complainant’s Website. Complainant’s Website offers services for sale whereas Respondent’s Website sells nothing and is a public service site.
FINDINGS
The Panel finds that Complainant has not
proven the first element stipulated in Paragraph
4(a) of the Policy and consequently the Respondent’s
Domain should not be transferred from
Respondent to Complainant.
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.
Paragraph 4(a) of the Policy requires
Complainant to establish that Respondent’s Domain is identical or confusingly similar to a
trademark or service mark in which Complainant has rights.
Complainant bears the onus of proving that
Complainant’s Domain is a trademark or service mark in which Complainant
has rights. Complainant does not say that either
Complainant’s Domain or PUSHTRAFFIC is a registered trademark. Complainant does not provide any evidence of
the existence of any trademark registrations for Complainant’s Domain or
PUSHTRAFFIC. The Panel concludes that
Complainant is not asserting rights in any registered trademarks.
With no trademark registration, Complainant
can only satisfy Paragraph 4(a)(i) of the Policy by establishing that
Complainant’s Domain is a common law trademark. The Complaint is seriously
lacking in this regard. First of all, Complainant has not even asserted that
Complainant’s Domain is a common law trademark.
If Complainant had made such an assertion, it would then have been appropriate for Complainant to identify the jurisdiction in which it is claiming common law rights and to elucidate the relevant legal principles of that jurisdiction. This is important because not every country recognizes common law rights, and the relevant law of each jurisdiction has its own nuances.
Once a complainant establishes a satisfactory legal underpinning for claiming common law trademark rights, it should then provide sufficient evidence from which the Panel can infer the existence of common law rights in that legal context.
In this dispute,
Complainant failed to assert the existence of any trademark rights (whether
registered or common law), and did not indicate any legal context pursuant to
which common law trademark rights might have arisen. However, given the facts of the case, the Panel
will assume that Complainant intends to rely on common law trademark rights in
Complainant’s Domain arising under federal or state laws prevailing in the
State of
The Panel consists
of a Canadian lawyer, so the Panel must look to
McCarthy on Trademarks and
Unfair Competition, 4th ed. (Thomson West: 1992, last
updated March 2007) (“McCarthy”) is generally considered to be a leading
treatise on trademark law in the
To create trademark or trade dress rights, a designation must be proven to perform the job of identification: to identify one source and distinguish it from other sources. If it does not do this, then it is not protectable as a trademark, service mark, trade dress or any similar exclusive right. With each sale of goods or services under such a business symbol, the seller builds up greater and greater legal rights in that symbol. In the absence of customer recognition of the symbol, the “owner” of the business has no good will, and thus there is nothing for the “trademark” or “trade dress” to symbolize or represent. [emphasis added; citations omitted].
Hence, under
When a complainant asserts a UDRP claim based on a common law trademark, it must demonstrate that the trademark is, in fact, associated by the relevant public with the complainant’s goods or services. It must prove that at least some goodwill and reputation has been generated in connection with the mark as a consequence of active use in commerce. In other words, Complainant must provide credible evidence establishing that the common law trademark on which it relies has acquired distinctiveness. See Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) which made a finding that no common law rights were proven where the complainant did not present any credible evidence establishing acquired distinctiveness. Relevant evidence includes the length and amount of sales under the mark, the nature and extent of any advertising, consumer surveys, media recognition or customer awareness.
Complainant submitted four exhibits relating to its use of Complainant’s Domain or the word PUSHTRAFFIC. The first was a copy of the front page of Complainant’s Website. The document is dated August 31, 2009. That document demonstrates use of the word PUSHTRAFFIC on the home page of Complainant’s Website and Complainant’s Domain as the domain name through which Complainant’s Website is accessed. However, that use is only demonstrated, minimally, for the date of the extract (August 31, 2009). Complainant provides no additional evidence demonstrating historical use (if any) of Complainant’s Domain and PUSHTRAFFIC.
Complainant also provided a copy of a WHOIS report in relation to Complainant’s Website. However, the WHOIS extract only demonstrates that Complainant’s Domain was registered on October 12, 2005. That does not shed any light on the relevant facts. There is no evidence showing when Complainant, or a predecessor in title, began using Complainant’s Domain. However, one thing is clear - Complainant itself could not have begun to use Complainant’s Domain, as a trademark or otherwise, until Complainant was incorporated in May of 2007, which was almost two years after the domain was registered. Except for the copy of the home page for Complainant’s Website as of August 31, 2009, Complainant has failed to provide any evidence of use and advertisement of Complainant’s Domain at any time.
Complainant’s two remaining exhibits demonstrate that Complainant was incorporated with the name Pushtraffic, Inc. on May 9, 2007, and that a member of the public looking at the Complainant’s entry on the “California Business Portal” on September 1, 2009 would have seen that the Complainant’s corporate name is Pushtraffic, Inc. These last two exhibits do not contain any evidence showing the extent of the use of Complainant’s corporate name at any time after Complainant was incorporated.
Complainant in this dispute has not provided sufficient evidence to the Panel to discharge Complainant’s burden to demonstrate that it has common law trademark rights in Complainant’s Domain or the word PUSHTRAFFIC.
The Panel concludes that Complainant has not satisfied paragraph 4(a)(i) of the Policy because it has failed to establish rights in a trademark with which Respondent’s Domain is identical or confusingly similar.
The Panel 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)
which held that the complainant’s failure to prove one of the elements makes
further inquiry into the remaining two elements of the Policy unnecessary.
Because Complainant has failed to demonstrate
that PUSHTRAFFIC, PUSHTRAFFIC.COM or PUSHTRAFFIC INC are trademarks in which it holds rights, it is
not necessary for the Panel to consider the other elements contemplated in
Paragraphs 4(a)(ii) and (iii) of the Policy.
Allegations of defamation
and libel
As is evident from the summaries above, allegations of defamation and
libel have been made by Complainant and defended by Respondent. The Panel wishes to make two comments
regarding these allegations.
The authority and jurisdiction of the Panel is restricted to an
analysis based upon the grounds set out in Paragraph 4 of the Policy. As such, complainants and respondents should
direct their substantive arguments and evidence exclusively to those grounds. Submissions and evidence that are not
directly relevant to Paragraph 4 of the Policy are not relevant. In the case at
hand, Complainant has focused its efforts on the issues of defamation and libel
and ignored the requirements of the Policy.
In so doing, Complainant has rendered its own case unwinnable.
More importantly, the Panel does not have the authority or jurisdiction
to make decisions outside of the narrow scope of the Policy. Indeed, this is made clear to all parties in
section 5 of the Policy which reads “All
other disputes between you and any party …that are not brought pursuant to the
…provisions of Paragraph 4 shall be resolved between you and such other party
through any court, arbitration or other proceeding that may be
available”.
Given the allegations of defamation in this dispute, and the narrow
scope of the Policy, it is apparent to the Panel that the arguments in this
dispute are more appropriate for another forum with broader jurisdiction.
DECISION
Complainant having failed to establish the first element required under
the Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <pushtrafficswindle.com> domain name
not be transferred from
Respondent to Complainant.
Robert A Fashler, Panelist
Dated: October 14, 2009
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