Fahim Saleh v. Trey Glauser
Claim Number: FA0909001283115
Complainant is Fahim Saleh (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <prankdialer.com>, <prankdials.com>, and <prankdial.org>, registered with Tucows Inc.
The undersigned 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 7, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 18, 2009.
On September 8, 2009, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <prankdialer.com>, <prankdials.com>, and <prankdial.org> domain names are registered with Tucows Inc. and that the Respondent is the current registrant of the names. Tucows Inc. has verified that Respondent is bound by the Tucows 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 22, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 13, 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 email@example.com, firstname.lastname@example.org, and email@example.com by e-mail.
A timely Response was received and determined to be complete on October 13, 2009.
On October 15, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PrankDial.com was registered on August 7, 2006. The PrankDial mark was first used in commerce on August 20, 2006. Since that time, the site has generated consistent user traffic and ad revenues. On August 23, 2009 PrankDial.com filed for a trademark from the US Patent and Trademark Office for the PRANKDIAL mark.
PrankDial is a site that allows users to prank call friends through an online interface. PrankDial is a free service with the option for users to purchase additional features. PrankDial is the leading prank service website on the internet in both traffic and online recognition.
PrankDialer.com, PrankDials.com, and PrankDial.org are all similar to both the PRANKDIAL trademark and the PRANKDIAL.com domain. These domains do not have any substantial difference from the PrankDial mark.
The Respondent is not making a legitimate noncommercial use of the domains, as the domains have intent to generate profit. This is evidenced by the fact that the Respondent offers “paid tokens” and also places advertising throughout the site. The Respondent is also misleadingly diverting traffic from PRANKDIAL.COM to his own domains.
The Respondent has a history of registering domains that are confusingly similar to PRANKDIAL.COM, in order to profit from the goodwill of the PRANKDIAL mark. PRANKDIAL has given no prior authorization to the Respondent to use the PRANKDIAL mark in any way. Glauser has also acquired the domain prankdial.biz, simply redirecting the domain to the main PRANKDIALER.COM site. Prankdial.info is also a redirect to PRANKDIALER.COM, although this domain is not owned by Glauser.
When PrankDialer.com was launched on April 1, 2008, the Complainant’s site PrankDial.com was getting minimal traffic, believed to be non-functioning and did not compete in any way with PrankDialer.com.
The Complainant’s “in commerce on August 20, 2006” claim c
PrankDial.com offered a text to speech to phone service, while PrankDialer.com was a Rick Roll by phone service, which is entirely different. Mr. Glauser, the Respondent, had no knowledge of the existence of PrankDial.com, or any site belonging to Mr. Saleh at the time of launch.
PrankDial.com has no active or legally binding trademark. Like PrankDial.com, PrankDialer.com has a pending active trademark.
On August 1, 2008, Mr. Saleh contacted Mr. Glauser. This was the first time PrankDial.com was brought to Mr. Glauser’s attention.
Around July 2009, Mr. Saleh plagiarized PrankDialer.com and re-launched PrankDial.com using much of the exact content and many of the “pranks” originated by PrankDialer.com.
PrankDialer.com is a recognized brand. PrankDialer.com is linked and referenced in 3 Wikipedia articles.
PrankDialer.com has thousands of news appearances, radio mentions,
forum discussions, blog posts, etc. PrankDialer
has also been featured by the popular youtube ch
The other domains listed in this claim were not registered by Mr. Glauser, but by fans of PrankDialer.com who heard of Mr. Saleh’s threats. Ownership of these domains were then transferred to Mr. Glauser.
For the reasons set forth below, the Panel finds the relief requested by Complainant should be denied.
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.
Respondent contends that Complainant does not have common law rights in the PRANKDIAL mark, as Complainant has not proven that the user traffic and ad revenue, upon which Complainant bases his contention of secondary meaning through use in commerce, actually stems from Complainant’s use of the PRANKDIAL mark. Respondent contends that Complainant owns several websites resolving from other domain names, and that these websites most likely share a Google AdSense account with Complainant’s <prankdial.com> domain name. Therefore, Respondent contends that these, and not the website resolving from the <prankdial.com> are very possibly the source of the user traffic and ad revenue figures that Complainant has put in evidence. The Panel finds that Complainant has not shown sufficient evidence that the PRANKDIAL mark has been used in commerce enough to acquire secondary meaning, and the Panel finds that Complainant has not established common law rights in the PRANKDIAL mark pursuant to Policy ¶ 4(a)(i). See 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)); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb.Forum May 16, 2007) (finding that when a disputed domain name, such as <187.com>, is made up entirely of generic or common terms, “good evidence will be needed to show a significant secondary meaning and, above all, one associated with Complainant.”).
Complainant has not proven this element.
Since the Panel concluded that Complainant has not satisfied Policy ¶ 4(a)(i) because Complainant does not have rights in the mark, the Panel will not 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)).
Complainant 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 <prankdialer.com>, <prankdials.com>, and <prankdial.org> domain names be REMAIN WITH Respondent.
Hon. Karl V. Fink (Ret.), Panelist
Dated: October 29, 2009
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