Semotus, Inc. v. Brendhan
Hight and Mdnh Inc
Claim Number: FA1003001313556
PARTIES
Complainant is Semotus, Inc. (“Complainant”), represented by Christopher
J. McGeehan, of McGeehan Technology Law, Ltd.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hiplink.com>, registered with Moniker.
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge has no known conflict in serving
as Panelists in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 16, 2010.
On March 17, 2010, Moniker confirmed by e-mail to the National
Arbitration Forum that the <hiplink.com> domain name is
registered with Moniker and that the
Respondent is the current registrant of the name. Moniker
has verified that Respondent is bound by the Moniker
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@hiplink.com. 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 timely Response was received and determined to be complete on April 12, 2010.
On April 12, 2010, Respondent addressed a timely response to the
complaint. Complainant addressed an additional submission on April 19, 2010.
Then, a response to the additional submission was addressed on April 26, 2010.
They were all received in a timely manner according to The Forum's Supplemental
Rule #7. Parties went to great lengths to submit additional materials. The
Panel has considered them in its decision.
On April 20, 2010, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant alleges that the domain name is confusingly similar to Complainant’s
HIPLINK trademark. Complainant owns a
and has common law rights in HIPLINK dating to 1995 based on the
widespread use and high quality of service associated with this trademark
notably in the
Complainant further alleges that Respondent has no rights with respect
to the disputed domain name because he has not engaged in any bona fide use of
the domain name.
Finally, there can be no question according to Complainant that the
domain name was registered and is being used in bad faith, notably, since
Respondent, a U.S.-based entity was aware or should have been aware of the
HIPLINK trademark when the disputed domain name was acquired. Further,
Respondent’s conduct constitutes bad faith because it confuses Internet users
about the sponsorship of the disputed domain in addition to providing an
improper commercial benefit to Respondent with the pay-per-click website.
Respondent’s use of “robots.txt” in the domain name is another indicator of bad
faith.
B. Respondent
Regarding the confusing similarity allegedly created by the domain
name, Complainant does not show it is the owner of a federal registration.
Complainant also claims common law rights, arising from an alleged predecessor,
in a term which has never been exclusive to Complainant, in a specialized field
of non-consumer services provided to businesses engaged in mobile
telecommunications. Someone may indeed own the federal registration and common
law rights in HIPLINK in that specialized field, but the record does not
demonstrate that such owner is Complainant.
Regarding the claim that it has no rights or legitimate interest with
respect to the disputed domain name, Respondent argues among other things that
Complainant’s evidence shows that the domain name <hiplink.com> was used
prior to notification of a dispute for overwhelming providing “hip links”; that
is, links to advertising subject matter relating to the primary meanings of the
English word hips. Such use of the domain name does not infringe or usurp any
cognizable right of Complainant in relation to the purpose for which it owns a
federal trademark registration for “computer software for wireless instant
messaging purposes”. There is simply nothing illegitimate about using the
domain name <hiplink.com> to providing links to things that relate to
the word “hip”.
Finally, regarding claim of bad faith registration, at the time the
domain name was acquired by Respondent, the latter was under no duty of
constructive notice of a federal trademark registration which did not issue
until 2006. Indeed, as late as March 2005, after Respondent acquired the domain
name, the federal trademark application was itself under refusal at the USPTO. When
it comes to bad faith use, Respondent argues notably that nowhere in the
Complaint does Complainant allege the domain name has ever been used in connection
with “computer software for wireless instant messaging purposes”. It is shown
in the Complaint that the domain name has been used for links relating to a
large pelvic joint, and for entertainment subjects which may be considered
“hip” in the colloquial sense of that word. Rather than to present any evidence
or argument of how the domain name has been used in any manner relating to its
mark for “computer software for wireless instant messaging purposes”, the
entirety of the Complainant’s “bad faith” case here is built on the fact that
the Respondent blocks automated computer programs from following links on its
pages.
C. Additional Submissions
Parties went to great lengths to submit additional materials.
In its additional submission, Complainant argued among other things
that under
In its response to Complainant’s additional submission, Respondent notably
stated that Complainant failed to demonstrate the chain of title by which it can be deemed as being the holder of both the
registered and common law trademark HIPLINK. Respondent also argues that
Complainant manipulated the search engine of the website towards which the
domain name directs.
FINDINGS
Complainant owns an unregistered and a
registered trademark HIPLINK.
The disputed domain name was registered on
January 31, 2001 and acquired by Respondent in early 2005.
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 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 Respondent is
identical or confusingly similar to a trademark or service mark in which Complainant
has rights;
(2) 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 provided evidence of the
registration of a HIPLINK mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 3,060,049 issued February 21, 2006) in connection
with computer software for wireless instant messaging services. Said trademark
is registered by Semotus Solutions, Inc, which is not Complainant in the
present procedure. In its additional submission dated April 19, 2010,
Complainant provided the Panel with the various changes of names and
acquisitions that lead to the company Semotus Inc, Complainant in the present
dispute. It is now up to the Panel to determine whether the Registration No.
3,060,049 is acceptable or not.
When a complainant doesn’t provide explanation
on why the registered trademark is not in its name, the Panel believes that
said mark should be disregarded; see
Salton, Inc. v. H. Khan, D2008-1540 (“The Complainant premises its trade
mark rights on U.S. Federal Trademark Registration No. 1,078,331, filed
February 2, 1977 and registered on November 29, 1977 and Registration No.
2,707,321, filed September 17, 1997 and registered on April 15, 2003. No
explanation is given as to why Registration No. 1,078,331 is owned by Beatrice
Foods Co. and there is no change of owner documentation. The Panel must
disregard it.”). The situation is different when Complainant provides
information on the change of owner. In the present dispute, the Panel deems
that Complainant has provided said information, even if an updated trademark
registration mentioning the right holder would have been far better.
The Panel therefore finds that Complainant’s
registration of its HIPLINK mark is sufficient to establish Complainant’s
rights under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June
29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the]
complainant has met the requirements of Policy ¶ 4(a)(i).”);
see also Intel Corp. v. Macare, FA
660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had
established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by
registering the marks with the USPTO).
Complainant also asserts common law rights in
its HIPLINK mark. Complainant’s
registration with the USPTO indicates that Complainant first used the mark in
commerce in April 7, 1995. An Office Action from the USPTO provided by
Complainant dated March 22, 2005 required the trademark holder to provide a
substitute specimen showing the mark as it is used in commerce on the goods or
on packaging for the goods and a statement that “the substitute specimen was in
use in commerce at least as early as the filing of the date of application”. The
Panel understands that Semotus Solutions, Inc submitted the required specimen
showing the mark as it is used in commerce at least as early as the filing date
of the application. Said specimen was accepted by the USPTO, which is why the
current trademark certificate indicates that the trademark was first used in
commerce in April 7, 1995.
Complainant also asserts that it has, on its
own and through its predecessor in interest, continuously used the HIPLINK mark
in commerce since 1995 and that it has therefore acquired a common trademark.
The latter is demonstrated by providing documents on, notably, the length and
amount of sales under the mark, the nature and extent of advertising, consumer
surveys and media recognition. See Oasis Technology Partners, Inc. v. James Dale c/o Administrative
Contact, FA1003001310642 (Nat. Arb. Forum April 20, 2010 (“The
complainant must show that the name has become a distinctive identifier
associated with the complainant or its goods and services. Relevant evidence of
such “secondary meaning” includes length and amount of sales under the mark,
the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only
exist in a small geographic area does not limit complainant’s rights in a
common law trademark. Unregistered
rights can arise even when the complainant is based in a civil law jurisdiction”).
Complainant states that its mark has been
used in press releases and product literature promoting its products and
services as from 1995. Complainant also states that it has spent over $4
million dollars marketing its HIPLINK brand since 2000 when it acquired the
mark from its predecessor in interest.
Even if the Complaint lacks digits such as amounts of sales of the
HIPLINK product, the Panel finds that Complainant has demonstrated continuous
use and promotion of the mark since 1995, which has provided the mark with
sufficient secondary meaning and establishes Complainant’s common law trademark
rights in the HIPLINK mark under Policy ¶ 4(a)(i). See
Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16,
2005) (finding that the complainant had common law rights in the McMULLEN COVE
mark because the complainant provided sufficient evidence that the mark had
acquired secondary meaning, including development plans, correspondence with
government officials, and newspaper articles featuring the mark); see also Quality Custom Cabinetry, Inc. v.
Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002)
(finding that the complainant established common law rights in the mark through
continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).
Complainant asserts that Respondent’s
disputed domain name is identical to Complainant’s HIPLINK mark. The disputed domain name merely adds the
generic top-level domain (“gTLD”) “.com” to the entirety of Complainant’s mark.
The addition of a gTLD does not overcome a finding that Respondent’s disputed
domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Trip Network Inc. v.
Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that
the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see
also Jerry Damson, Inc. v.
As a consequence, Respondent’s <hiplink.com> domain name is
identical to Complainant’s HIPLINK mark. Therefore, the Panel finds that the
disputed domain name is not sufficiently distinguished from, and is identical
to, Complainant’s HIPLINK mark pursuant to Policy ¶ 4(a)(i).
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) (holding
that the complainant must first make a prima facie case that the respondent
lacks rights and legitimate interests in the disputed domain name under UDRP ¶
4(a)(ii) before the burden shifts to the respondent to
show that it does have rights or legitimate interests in a domain name); see
also 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 asserts that Respondent is not
commonly known by the disputed domain name.
The WHOIS information lists the registrant as “Brendhan Hight and Mdnh
Inc.” Respondent does not claim to be commonly known by the disputed domain
name. Therefore, according to the information available to the Panel,
Respondent is not commonly known by the disputed domain name pursuant to Policy
¶ 4(c)(ii). See
M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding
that the respondent was not commonly known by the <cigaraficionada.com>
domain name under Policy ¶ 4(c)(ii) based on the WHOIS
information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb.
21, 2007) (concluding a respondent has no rights or legitimate interests in a
disputed domain name where there was no evidence in the record indicating that
the respondent was commonly known by the disputed domain name).
Complainant also asserts that it has never
authorized Respondent to use the HIPLINK trademark in the disputed domain name.
Respondent does not contest this declaration. Therefore, the Panel concludes
that Respondent has never been authorized to use the trademark HIPLINK. See IndyMac Bank F.S.B. v. Eshback, FA
830934 (finding that respondent failed
to establish rights or legitimate interests in the <emitmortgage.com>
domain name where that respondent was not authorized to register domain names
featuring a complainant’s mark).
Complainant contends that Respondent’s
disputed domain name resolves to a pay-per-click website, which is not
noncommercial or fair use of the domain name. Respondent argues in its Response
to Complainant’s Additional Submission that pay-per-click websites are
sometimes deemed legitimate and sometimes illegitimate, depending on panels’
opinions. In the present case, the domain name reproduces the trademark
HIPLINK. In this particular situation, the domain name attracts internet users
for commercial gains to a parking website by creating confusion between the
trademark holder and the domain name registrant. Therefore, Respondent’s use of
the disputed domain name is not a bona fide offering of goods and services
pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA
714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a
commercial web directory displaying various links to third-party websites was
not a use in connection with a bona fide offering of goods or services pursuant
to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees
for each consumer it redirected to other websites); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007)
(finding that the respondent was not using a disputed domain name in connection
with a bona fide offering of goods or services or a legitimate noncommercial or
fair use by redirecting Internet users to a commercial search engine website
with links to multiple websites that may be of interest to the complainant’s
customers and presumably earning “click-through fees” in the process).
As a conclusion, Complainant made a prima facie case that Respondent lacks
rights and legitimate interests in the disputed domain name. The burden has
shifted to Respondent to show that it does have rights or legitimate interests
in the subject domain name, which it has not managed to demonstrate pursuant to
Policy ¶ 4(a)(ii).
The domain name in dispute was registered in
January 2001. According to Respondent in its response dated April 12, 2010, it
acquired the domain name in between late 2004 and early 2005 from Ultimate
Search Inc. The transfer of a domain name is usually held to be a new
“registration”, such that the good faith of the registration must be evaluated
as of the date of the transfer, See
Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and
Octogen e-Solutions D2009-0786 (“Moreover, a transfer of a domain name is
held to be a new “registration”, such that the good faith of the registration
must be evaluated as of the date of the transfer. However a renewal of the
registration is not considered a new registration, so that the renewing
registrant’s good faith is to be evaluated as of the date of the original
registration even where, at the time of the renewal, the registrant is well
aware of the trademark and is using or intends to use the domain name in the
future to trade on the good will inherent in the mark.”)
Therefore, bad faith in the present case
should be evaluated as of early 2005.
“Registration of a mark on the principal
register provided by this Act or under the Act of March 3, 1981, or the Act of
February 20, 1905, shall be constructive notice of the registrant's claim of
ownership thereof” (15 USC 1072). According to this section, Respondent had
constructive notice as from the date of registration of the trademark HIPLINK,
which is February 2006. Therefore, it cannot be argued that Respondent had
constructive notice of the trademark registration when it acquired the domain
name in 2005. This being said, as previously stated, the common law trademark
was first used in 1995. It therefore predates the acquisition of the disputed
domain name in 2005. See
B.I.E. Health Products, Inc. v. Registrant (460461) of Domain Names,
Administration, D2009-0420 ("The Complainant’s use of the mark
BIEHEALTH predates the registration of the disputed domain name by the
Respondent. Additionally, even though the Complainant’s trademark was
registered in 2008 and the disputed domain name was registered in 2004 , the Complainant has put enough evidence on record
whereby it can be inferred that the Complainants had common law rights in the
mark BIEHEALTH before the Respondent registered the disputed domain name
biehealth.com"). Therefore, the Panel deems that Respondent was aware of
the trademark HIPLINK in 2005 and has not provided sufficient arguments
attesting that, despite the knowledge of the trademark, it acquired the domain
name for legitimate reasons. Therefore, the acquisition of the domain name was
done in bad faith.
Complainant contends that Respondent
presumably receives pay-per-click fees by displaying links to commercial
websites. The Panel finds that
Respondent’s use of the disputed domain name to profit from the receipt of
referral fees is evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iv). See Bank of Am. Corp. v.
In addition, the Moniker WHOIS page of the
domain name indicates that it is for sale: “The domain hiplink.com is [not
available] [This name may be for sale - Make an unsolicited offer]”. Offering
for sale the domain name at an undetermined price is evidence of bad faith. See Blu Media Inc. v. Transure Enterprise
Ltd c/o Host Master, FA1002001307892("The
Panel finds that Respondent’s general listing of the disputed domain name for
sale, as well as its attempts to sell the disputed domain name to Complainant
for amounts in excess of its initial costs are evidence of bad faith
registration and use under Policy ¶ 4(b)(i).
See Neiman
Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb.
Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name
for $2,000 sufficient evidence of bad faith registration and use under Policy ¶
4(b)(i)); see
also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept.
30, 2003) (“Respondent's general offer of the disputed domain name registration
for sale establishes that the domain name was registered in bad faith under
Policy ¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA
95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the
domain name, even if no certain price is demanded, are evidence of bad faith”).
The Panel takes note of the parties’ argument
regarding the use of “robot.txt”. Respondent does not deny having intentionally
employed robot.txt to block archive access to the disputed domain name.
Respondent argues that it used “robot.txt” in relation to the disputed domain
name before it was actually aware of the filing of the present complaint. One
could argue that “robot.txt” may be used systematically by some registrants who
believe that their domain names reproduce/imitates a trademark in order to
prevent valuable evidence in case of a UDRP procedure. The Panel ignores what
Respondent had exactly in mind when using “robot.txt” in connection with the
disputed domain name. Therefore, the Panel considers that using “robot.txt”
does not per se equal bad faith, but
it is nevertheless an element to be taken into account when determining alleged
bad faith use of a domain name. See SCOLA
v. Brian Wick d/b/a CheapYellowPages.com, FA0711001115109 ("Second,
with regard to the general requirements of ¶ 4(a)(iii)
of the Policy, Respondent intentionally employed robots.txt to block archive
access to all of his domain names. This
has been deemed a strong indicia of bad faith. See iFranchise Group v. Bean / MDNH, Inc. / Moniker Privacy Servs. [23658], D2007-1438 (WIPO Dec. 18,
2007) (“It is the opinion of the Panel that absent convincing justification for
the employment of robots.txt in a given case, the use of the device may be
considered as an attempt by the domain name owner and operator to block access
by the panel to relevant evidence… the use of robots.txt in the particular case
may be considered as an indicia of bad faith.”).
As a conclusion, the pay-per-click website,
the fact that the disputed domain name is for sale and the use of “robot.txt”
lead the Panel to conclude that the domain name is used in bad faith pursuant
to Policy ¶ 4(a)(iii).
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 <hiplink.com> domain name be TRANSFERRED
from Respondent to Complainant.
Dated: May 4, 2010
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