MediaTrac, LLC v. eNet Buzz Inc.
Claim Number: FA0908001281461
PARTIES
Complainant is MediaTrac, LLC (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <loyaltytrac.com>,
registered with Network Solutions, Inc.
PANEL
The undersigned Daniel B. Banks, Jr., as Panelist, 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On
A timely Response was received and determined to be complete on
A timely Additional Submission was filed by the Complainant and was
considered by the Panel.
A timely Additional Submission was filed by the Respondent and was
considered by the Panel.
On September 30, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Daniel B. Banks, Jr., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complaint is based on the trademark MediaTrac, LLC has on the
LoyaltyTrac name (USPTO Reg. No. 3,219,665) registered on March 20, 2007. The disputed domain name <loyaltytrac.com> is identical to the trademark held by the
Complainant. Complainant uses this
trademarked brand to provide customer retention programs to a variety of
industries such as automotive and real estate sales. Respondent also conducts business in the
automotive sector creating brand confusion.
Respondent has no rights or legitimate interests in respect of the
domain name because it is currently not hosting any content at the disputed
domain name and does not appear to be commonly know by the domain name. It currently does not resolve to an active
web page.
Respondent appears to be attempting to make commercial gain from the
sale of this domain name. Complainant
inquired about the domain name on two separate occasions but the requests were
ignored. At that time, Gigabytes
Dealership Solutions of El Paso, TX had the domain name but is now a part of
Respondent eNet Buzz, Inc. When Respondent
was contacted on 2/25/2009, Linda Keller, a representative of eNetBuzz, stated
that they would consider selling the domain name for a sum of $5,000. On 8/24/2009, Complainant received a letter
from Respondent’s attorney requesting the sum of $15,000 for the domain. It is apparent that they intend to profit
from the domain by selling it, not by using it for their web site.
B. Respondent
The program loyaltytrac was
actually written by Linda Keller for GigaBytes, Inc. before 2001. Subsequently, eNet Buzz purchased the assets
of GigaBytes and, along with its predecessor company, has been actually using
the name since before January, 2002.
MeidaTrac LLC was only granted its trademark status in 2007. They did not apply for trademark status until
2005. The original registration of the
domain name loyaltytrac.com was done in 2004.
Complainant did not contact Respondent until 2007 (6 years after the
domain name was being used) and demanded they stop using the name.
The original loyaltytrac program was a PC based software which was sold
to auto dealers in order to award repeat customers points for multiple
purchases. One of the sellers of the
program was Arkona. That company worked
with Respondent and/or its predecessor company to sell the PC version of the
program. Respondent is still using the
loyaltytrac.com website but it is a private website for dealers who sign up for
its program. This was done in part to
protect the website and its dealer’s information and privacy. Respondent has a legitimate, ongoing
business, dating from 2002 using the loyaltytrac name. While Respondent has offered to sell its
rights to the name, even a selling price of $15,000 will not fully compensate
for its costs in establishing this product and its name.
Complainant has failed to establish that Respondent has confused the
public since its use predates Complainant’s use. Respondent and its predecessor had been using
this name before it had notice of Complainant’s interest in the name. Respondent has its own internet and PC based
program which predates any claim of Complainant. Complainant has failed to prove it has
greater right to use the name.
Complainant has failed to present persuasive evidence that Respondent
acquired the name for confusion with Complainant’s product; there is no
evidence that Respondent registered the name for the purpose of disrupting
Complainant’s business; and, there is no evidence of a likelihood of confusion
between the names.
C. Additional Submissions
Complainant
In dispute of Respondent’s claim, a software program named loyaltytrac
was originally developed by BuyerTouch, Inc. at least as early as April 24,
2000 and pre-dates the claimed use by GigaBytes, Inc. It was a web-based community where members
could rate and discuss their buying experiences. There was no affiliation with GigaBytes. Factually, neither eNet Buzz nor Gigabytes
can claim first use of the term.
Complainant continues to contend that Respondent is cyber squatting and
is using the domain name in bad faith.
On multiple occasions, Respondent has directly attempted to sell the
domain name strictly for commercial gain.
Complainant currently holds the Federal Trademark for the name
“LoyaltyTrac” and is the rightful owner.
Respondent is holding the domain name hostage causing Complainant to
lose customers, revenue and causing irreparable product harm.
Respondent and its predecessor previously used the domain to redirect
web based traffic to an affiliated site that sells commercially similar
products as Complainant. There was not
any first/top level content on the domain.
Respondent continues to demonstrate that it has no legitimate interest
in the disputed domain name as the actual domain has been taken down and has
been inactive for many months.
Furthermore, Respondent has changed their program name from LoyaltyTrac
to RewardsTrac and most recently, RPMS.
The LoyaltyTrac name is no longer in commercial use.
Respondent relies on the fact that Complainant was only granted its
trademark status in 2007 and that it did not apply until 2005. This position is beyond the scope of the
ICANN and/or the NAF dispute resolution authority. The date of application and when it was
granted is irrelevant. The fact that the
trademark was granted is the only relevant point. It is not up to ICANN or the NAF to dispute
or question the validity of a USPTO Trademark.
That is a matter that can only be settled in a Federal Court of Law.
Respondent contends that its registration of the disputed domain name
was done in 2004. Such registration does
not always constitute rightful ownership or use of the domain. Also, Respondent contends that the trademark
was improperly granted and allows Respondent until 2012 to file a complaint to
contest the granting of the trademark.
This is the wrong forum to dispute the trademark.
Respondent says Complainant waited 6 years after Respondent’s first use
make contact and demand it to cease using the name. Complainant did formally file and submit with
Respondent’s predecessor two separate ceas-and-desist requests but received no
response. Respondent’s predecessor did
voluntarily remove any web based references to Complainant’s trademark and
renamed their competing loyalty product, however they did not relinquish the
domain name.
Respondent’s claim that it is still using the disputed domain name for
a private website for dealers who sign up is incorrect. The domain is not being used for any public
or private access and has been in that dormant state for months. When it was active, it only served to
redirect users to the Respondent’s other web site.
Complainant is the only commercial business that currently markets
under the LoyaltyTrac name. There is
significant and costly confusion with Respondent’s use of the trademark. Complainant’s search results show that
Respondent’s site shows up in listings under the URL “vehicletrac.com”.
Although Respondent is not the original registrant of the disputed
domain name, they renewed the name
after they acquired control and they surely knew about the domain/trademark
dispute. Also, they never attempted to
object to the granting of the trademark which they claim holds great value to
them. They have continued to renew the
domain in order to maintain control of it, yet serve no content on the
site. This all points to the fact that
Respondent maintained control to disrupt the business of Complainant and profit
form Complainant’s desire to use its federally trademarked name.
Complainant developed and markets the largest and most recognized
automotive loyalty program in the
Respondent
The fact that MediaTrac LLC first used the
name loyaltytrac as of March, 2004, filed an application for trademark status
in 2005 (granted in 2007), does not decide the issue of the right to use <loyaltytrac.com> under trademark
law or the Uniform Domain Name Dispute Resolution Policy.
Gigabyte and its predecessor were using the
name loyaltytrac before March, 2005 which is the date Mediatrac claims in its
trademark application it first used the trademark. The date MediaTrac lists in
their application is presumed to be the correct date.
The registration does not decide the common
law right to the trademark or trade name. eNet Buzz has provided proof of the
use of loyaltytrac since 2001. It filed and registered loyaltrac.com as a
domain name in October of 2004. If MediaTrac was using the name, why didn’t it
register loyaltytrac.com before eNet Buzz’ use. MediaTrac does not explain this key fact which
contradicts many of its assertions.
LoyaltyTrac’s trade name usage by eNet Buzz
has declined and eNet Buzz has started to use another name for its product.
Since MediaTrac is illegally using the name LoyaltyTrac with the same program
of giving auto dealers’ customers point or discounts for continued use of the
dealers’ service departments. eNet Buzz
does not want to give free promotions to a competitor so it has started to
change the name of its particular product and will market its product under
both names. The fact that it would
slowly reduce the use of the trademark does not mean it has given it up because
it has not stopped using the name.
MediaTrac’s own exhibits prove the
loyaltytrac name is still being used by eNet Buzz Inc. as of the date of the
complaint. It complains about the confusion between the two companies.
Finally, MediaTrac has gone around the
domain registration procedures by using the <loyalty-trac.com> web-site. If MediaTrac
had owned and used the name loyaltytrac, it would have given the loyaltytrac
registration of its domain name and would have realized that it was stealing
someone else’s trademark. Gigabytes had
already obtained a common law trademark.
MediaTrac has failed to prove any of the four contentions. The fact that
another company used the name of loyaltytrac for another product is not relevant
to eNet Buzz’ common law trademark rights. Further, MediaTrac has not
contradicted the evidence of active use of <loyaltytrac.com>
prior to this dispute. However, eNet
Buzz has shown that it has the right to keep the domain name according to the
Uniform Domain Dispute Resolution Policy.
It was using the name before MediaTrac and more importantly before
MediaTrac even filed its trademark application.
MediaTrac contends that eNet Buzz has
offered to sell the domain name. This
occurred only after MediaTrac tried to get Gigabyte and eNet Buzz to give them
their domain name and trademark for “free.” This is after MediaTrac illegally took
Gigabytes and eNet Buzz’ common law trademark and used it for profit.
Pursuant to the Uniform Dispute Resolution
Policy, Rule 4(a), the complaint must prove all three elements listed. Complainant has not done so.
eNet Buzz has provided proof it was using
the name “loyaltytrac” for a program for auto dealers to encourage return
customers and to give them rewards for their loyalty since the year 2001, before
MediaTrac began its use of the name in March 2004 in connection with
distribution of a product. eNet Buzz is still using the name. Further, eNet Buzz has acquired common law
rights in the name of loyaltrac from 2001.
Therefore, MediaTrac has failed to comply with the Rules to have the
loyaltytrac.com name transferred to it.
FINDINGS
1 – The disputed domain name is identical to
a trademark in which the Complainant has rights.
2 –The Respondent has rights and legitimate
interests in respect of the domain name.
3 – The disputed domain name was not
registered and 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.
Complainant has rights in the LOYALTYTRAC mark pursuant to Policy ¶
4(a)(i) due to its trademark registration with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 3,219,665 issued
The <loyaltytrac.com> domain name is identical to its LOYALTYTRAC
mark. The sole difference between the
disputed domain name and the mark is the addition of the generic top-level
domain (“gTLD”) “.com.” The addition of
a gTLD is irrelevant under Policy ¶ 4(a)(i).
The panel finds the <loyaltytrac.com>
domain name is identical to Complainant’s LOYALTYTRAC mark under Policy ¶
4(a)(i). See SCOLA v. Wick, FA 1115109
(Nat. Arb. Forum
The Panel finds that Complainant has not established
a prima facie case in support of its arguments that Respondent lacks
rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum
Respondent has been
marketing and selling the “LoyaltyTrac” computer program since at least as
early as 2001. Respondent submitted
contracts with various car dealerships as well as receipts showing transactions
for “LoyaltyTrac.” Respondent registered
the disputed domain name three years before Complainant was issued a trademark
in the LOYALTYTRAC mark from the
USPTO. Complainant submitted a copy of its trademark
registration with the USPTO, stating that its first use of the mark was in
2004, but failed to submit any additional evidence that it has rights in the
mark predating Respondent’s registration of the disputed domain name. Complainant has not established rights in the
LOYALTYTRAC mark prior to
Respondent’s registration of the disputed domain name. The Panel finds that Respondent has established rights and legitimate interests in
the disputed domain name under Policy ¶ 4(a)(ii) via its use of the disputed
domain name prior to Complainant’s use of the mark. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel concludes that Respondent
has rights or legitimate interests in the <loyaltytrac.com> domain name pursuant to Policy ¶
4(a)(ii), and also finds that Respondent did not register or use the disputed
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO
Respondent registered the disputed domain name before Complainant
obtained trademark registration for the LOYALTYTRAC mark, so it could not have
registered the disputed domain name with the intention of selling it to
Complainant in mind. The Panel finds
that the Respondent’s offers to sell the <loyaltytrac.com>
domain name are not evidence of bad faith registration under Policy ¶
4(b)(i). See Mark Warner 2001
v. Larson, FA 95746 (Nat. Arb. Forum
Also, the Panel finds
that the Respondent could not have registered the disputed domain name in bad
faith under Policy ¶ 4(a)(iii) because it held the <loyaltytrac.com> domain name for years prior to Complainant’s
rights in the LOYALTYTRAC mark through its registration of the mark with the
USPTO. See Telecom
Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb.Forum
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Daniel B. Banks, Jr., Panelist
Dated: October 16, 2009
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