MOCAP, Inc. v. Fortune One Financial, Inc.
c/o Admin Manager
Claim Number: FA1003001312625
PARTIES
Complainant is MOCAP, Inc. (“Complainant”), represented by Andrew B. Mayfield, of Armstrong Teasdale LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xtremetape.com>
and <extreme-tape.com>,
registered with Spot Domain LLC.
PANEL
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.
David P. Miranda, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 10, 2010.
On March 12, 2010, Spot Domain LLC confirmed by e-mail to the National
Arbitration Forum that the <xtremetape.com>
and <extreme-tape.com>
domain names are registered with Spot Domain LLC and that the Respondent is the
current registrant of the names. Spot
Domain LLC has verified that Respondent is bound by the Spot Domain LLC
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 March 22, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of April 12,
2010 by which Respondent could file a Response to the Complaint, via e-mail to
all entities and persons listed on Respondent’s registration as technical,
administrative, and billing contacts, and to postmaster@xtremetape.com and
postmaster@extreme-tape.com by e-mail.
Also on March 22, 2010, the Written Notice of the Complaint, notifying
Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to
all entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts.
A Response was received and determined to be complete on April 13,
2010, and considered by the Panel.
An Additional Submission of Complainant was received on April 19, 2010,
and considered by the Panel.
On April 20, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David P. Miranda, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant MOCAP, Inc. of
B. Respondent
Respondent submits Response dated
April 13, 2010 contending that the domain names are not identical to
Complainant’s trademark because the domain <xtremetape.com> does
not contain a hyphen between the x and the t and the domain <extreme-tape.com>
adds an e to the beginning of the domain and a hyphen between extreme and
tape. Respondent also contends that the words “x-treme” and “xtreme” are
highly generic, diluted and very common used words and thus, Complainant has no
further rights to the domain names as a result of its registered
trademark. Respondent further contends that the words xtremetape and
extremetape are generically used phrases that are currently in use commercially
in the industry. Respondent admits that the two domains in dispute are currently in
a temporary “parking service”, that the reference that the domain is “for sale’
is automatically listed by the parking service and Respondent has no intention of selling the domains, but rather
plans to utilize the two domains for promoting unnamed products, services,
media and entertainment. Respondent contends that although the
parking service generates some revenue per click, neither of the domains divert
internet users in a way that users will be confused, or directs traffic to any
other website or product that may compete with Complainant’s product or
brand. Respondent further contends that its registration and use of the
domain names is not in bad faith because there is no confusing similarity
between the mark and the domains, and there is no claim that it is sponsored,
affiliated, endorsed, or in any way related to Complainant’s brands, services
or goods. Respondent further contends that its registration and use of the
domains is not in bad faith because of the highly generic and common nature of
the terms and it has not sought to sell the domain for an amount greater than
the out-of-pocket costs related to the domain as evidenced by its rejection of
Complainant’s offer to purchase the domain.
C. Additional Submissions
Complainant submits an additional
submission contending that Respondent’s
response should not be considered because it was filed on April 13, 2010, one
day after the due date. Complainant
further contends that Respondent
does not challenge the validity of Complainant’s federal registration and
trademark rights in X-TREME TAPE, but rather argues that the mark is weak and
therefore not entitled to protection with respect to the domain names at
issue. Complainant provides evidence of recent USPTO refusals to
applications to register similar trademarks based upon Complainant’s registration cited herein. Complainant
further contends that there was no undue delay by Complainant that would bar transfer. Complainant
also contends that the temporary “parking” of the domain names is not a
legitimate use, and that Respondent Fortune One Financial, Inc. is closely related to Complainant’s direct competitor Harbor
Products, Inc., which has the same contact information, officers, physical
address, phone numbers and email address as Respondent.
FINDINGS
The Panel finds
that Complainant has established
that the domains <xtremetape.com> and <extreme-tape.com>
are identical or confusingly similar to Complainant’s
registered trademark, that Respondent has no rights or legitimate interests with respect to
these domain names, and that these domain names have been registered and are
being used in bad faith, in accordance with the Uniform Domain Name Dispute
Resolution Policy. As such, the domain
names should be transferred 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.
Complainant, MOCAP, Inc. holds a
trademark registration with the United States Patent and Trademark Office
(“USPTO”) for its X-TREME TAPE mark (Reg. No. 2,470,883 issued July 24,
2001). Complainant asserts that it uses
the mark in connection with Complainant’s multi-use silicon tape products. Complainant’s federal trademark registration
is sufficient to establish rights in the X-TREME TAPE mark. Complainant has established rights in its
X-TREME TAPE mark pursuant to Policy ¶ 4(a)(i). See Miller Brewing
Respondent’s <xtremetape.com> and <extreme-tape.com>
domain names are confusingly similar to Complainant’s X-TREME TAPE mark. The disputed domain names incorporate
Complainant’s mark into the domain names and simply remove the hyphen
separating “x” and “treme.” The <extreme-tape.com> domain name
merely adds the letter “e” and a hyphen.
Both of the disputed domain names have added the generic top-level
domain (“gTLD”) “.com” to Complainant’s mark.
The Panel finds the removal of a hyphen, the addition of a hyphen, the
addition of a letter, or the addition of a gTLD are insufficient to adequately
distinguish the disputed domain names from Complainant’s mark. See Nat’l
Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name
<cspan.net>, which omitted the hyphen from the trademark spelling,
C-SPAN, is confusingly similar to the complainant's mark); see
also Am. Int’l Group, Inc. v.
Domain Admin. Ltd., FA
1106369 (Nat. Arb. Forum Dec. 31, 2007); see
also Pirelli & C. S.p.A.
v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen
between terms of a registered mark did not differentiate the <p-zero.org>
domain name from the P ZERO mark under Policy ¶ 4(a)(i)); see also Amazon.com, Inc. v. Ikhizamah,
D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain
name was confusingly similar to the complainant’s AMAZON.COM mark); see
also Jerry Damson, Inc. v.
Tex. Int’l Prop. Assocs.,
FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic
top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the
Domain Name from the mark.”). Therefore, the Panel finds Respondent’s <xtremetape.com> and <extreme-tape.com> domain names
are confusingly similar to Complainant’s X-TREME TAPE mark.
While Respondent contends that Complainant’s mark is comprised of common and generic
terms the Panel finds that such a determination is not necessary under Policy ¶
4(a)(i) as the USPTO has found the mark suitable for
registration and protection under
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii), and then
the burden shifts to Respondent to show it does have rights or legitimate
interests. See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006); AOL LLC v. Gerberg, FA 780200 (Nat. Arb.
Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or
legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
Complainant alleges that Respondent is not
commonly known by the <xtremetape.com> and <extreme-tape.com>
domain names. Complainant contends that
it has not authorized or licensed Respondent to use Complainant’s X-TREME TAPE
mark. Complainant contends that websites
resolving from the disputed domain names do not contain any information
identifying Respondent in association with the disputed domain names. The WHOIS information identifies the domain
name registrant as “Fortune One Financial, Inc. c/o Admin Manager,” which
Complainant claims is not similar to the <xtremetape.com>
and <extreme-tape.com>
domain names.
Respondent offers no proof to show it is commonly known
by the domains. The Panel concludes that
Respondent is not commonly known by the disputed domain names under Policy ¶
4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb.
Forum July 7, 2006) (concluding that the respondent was not commonly known by
the disputed domain names where the WHOIS information, as well as all other information
in the record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089
(Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
Respondent utilizes the <xtremetape.com> and <extreme-tape.com>
domain names to resolve to parked websites that feature hyperlinks and
advertisements to Complainant’s competitors and competing products. Respondent receives click-through fees from
the hyperlinks. The Panel finds that
Respondent’s use of the <xtremetape.com>
and <extreme-tape.com>
domain names is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a legitimate and non-commercial
use of the disputed domain names pursuant to Policy ¶ 4(c)(iii). See Skyhawke
Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18,
2007) (“Respondent is using the <skycaddy.com>
domain name to display a list of hyperlinks, some of which advertise
Complainant and its competitors’ products.
The Panel finds that this use of the disputed domain name does not
constitute a bona fide offering of
goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii).”); see also Vance Int’l, Inc. v. Abend, FA
970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a
pay-per-click website at a confusingly similar domain name does not represent a
bona fide offering of goods or services
or a legitimate noncommercial or fair use, regardless of whether or not the
links resolve to competing or unrelated websites or if the respondent is itself
commercially profiting from the click-through fees).
Complainant claims that Respondent uses the <xtremetape.com> and <extreme-tape.com>
domain names to resolve to parked websites featuring hyperlinks and
advertisements to Complainant’s competitors in the silicon tape business. Complainant asserts that Respondent is
affiliated with one of Complainant’s competitors in the silicon tape
business. Complainant contends that
Internet users interested in purchasing silicon tape products from Complainant
may instead purchase the tape products from one of Complainant’s competitors
because of Respondent’s use of the confusingly similar <xtremetape.com> and <extreme-tape.com>
domain names. The Panel finds
Respondent’s use of the disputed domain names disrupts Complainant’s business,
which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum
Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to
attract Internet users to a directory website containing commercial links to
the websites of a complainant’s competitors represents bad faith registration
and use under Policy ¶ 4(b)(iii));
see also Am. Airlines, Inc.
v. Tex. Int’l Prop. Assoc.,
FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where
the respondent’s website featured hyperlinks to competing websites and included
a link to the complainant’s website, the respondent’s use of the
<redeemaamiles.com> domain name constituted disruption under Policy ¶
4(b)(iii)).
Respondent’s <xtremetape.com> and <extreme-tape.com>
domain names feature hyperlinks and advertisements. Complainant alleges that Respondent profits
from these hyperlinks and advertisements through the receipt of click-through
fees. Complainant asserts that Internet
users may become confused as to Complainant’s affiliation with and sponsorship
of the disputed domain names, resolving websites, and featured hyperlinks. Complainant argues that Respondent attempts
to profit from this confusion. While
Respondent alleges that it does not control the content of the resolving
websites, the content of the resolving websites is to be considered in this
determination. See Cengage
Learning Inc. v. Myers, FA 1116919 (Nat.
Arb. Forum, Jan. 15, 2008); see also Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had
been parked, the panel found the “the
Registrant is responsible for the content of the material appearing on the
webpage associated with the domain name in dispute.”). The Panel finds Respondent’s use of the <xtremetape.com> and <extreme-tape.com> domain names
constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v.
Siddiqi, FA 721969 (Nat.
Arb. Forum July 18, 2006) (finding that the respondent
engaged in bad faith registration and use by using a domain name that was
confusingly similar to the complainant’s mark to offer links to third-party
websites that offered services similar to those offered by the complainant); see
also AOL LLC v. AIM Profiles,
FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(b)(iv) because the respondent was commercially gaining from the likelihood of
confusion between the complainant’s AIM mark and the competing instant
messaging products and services advertised on the respondent’s website which
resolved from the disputed domain name).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xtremetape.com> and <extreme-tape.com> domain names
be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: May 3, 2010
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