Semotus, Inc. v. Brendhan Hight and Mdnh Inc
Claim Number: FA1003001313556
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.
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.
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 firstname.lastname@example.org. 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
Complainant requests that the domain name be transferred from Respondent to 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.
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
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.
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.
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. , 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).
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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