West Corporation v. Domain
Admin c/o Mrs Jello, LLC
Claim Number: FA1004001321540
PARTIES
Complainant is West Corporation (“Complainant”), represented by L.
Kyle
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <entrado.com>, registered with Moniker.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Ms. Diane Cabell, Esq., Mr. James A. Carmody, Esq. Prof. Darryl C.
Wilson, Esq., Chair, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 27, 2010.
On April 29, 2010, Moniker confirmed by e-mail to the National
Arbitration Forum that the <entrado.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 May 3, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of May 24, 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@entrado.com. Also on May 3, 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 May 24, 2010.
A timely Additional Submission was received from the Complainant on May
28, 2010. The Respondent also timely submitted an Additional Submission which
was received on June 2, 2010. Both submissions complied with Supplemental Rule
7.
On June 2, 2010, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Ms. Diane Cabell, Esq., Mr. James A.
Carmody, Esq., and Prof. Darryl C. Wilson, Esq., Chair, as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that it is the owner of the registered marks
INTRADO and INTRADO & Design which are used in connection with its business
as a provider of 911 systems as well as other emergency services response
systems. Complainant further contends that Respondent wrongfully registered the
disputed domain name <entrado.com>
which is confusingly similar to its registered marks and the family of
marks in which Complainant allegedly has rights. Complainant states that the
Respondent, who is currently using the disputed domain in conjunction with a
dating services website, has no rights or legitimate interests in the disputed
domain name. Complainant further asserts that the Respondent registered and is
using the disputed domain name in bad faith.
B. Respondent
Respondent contends that the disputed domain name consist of the word
“entrado” which is a generic Spanish word for “coming in” or “entrance” and as
such Complainant has no exclusive right to the word. Respondent further
contends that Complainant did not allege that the Respondent registered or used
the word because of any perceived trademark value. Respondent also states that
it does have a legitimate interest in the domain name and that Respondent
neither registered nor used the domain name in bad faith. In support of the latter
Respondent also argues the significance of the time between Complainant’s
acquisition of its registrations and its bringing of the instant UDRP
proceeding. Respondent asserts that it is using its domain name in its common
descriptive sense choosing “entrado” because it suggests it is an entry or
opening to the Internet or more specifically to a paid directory of adult
content. Respondent also contends that Complainant has engaged in reverse
domain name hijacking.
C. Additional Submissions
Complainant’s additional submission principally restates the assertions
of its complaint first arguing that Complainant has established its rights to
the INTRADO marks and then again restating its basis for concluding that
Respondent lacks rights or legitimate interests in the disputed domain. That
basis includes the lack of authorization by the Complainant to use its INTRADO
marks, the failure of the Respondent to be commonly known by the disputed
domain name and the assertion that Respondent’s use of the disputed domain name
in conjunction with adult services renders that use noncommercial or unfair.
Respondent’s additional submission recasts its contention regarding the
invalidity of the Complainant’s marks based on Complainant’s alleged fraud on
the trademark office and the marks lack of notoriety insisting that
Complainant’s marks are not famous. Respondent also disputes the prospect for
initial interest confusion by netizens due to the difference in services
provided by the parties in the past and at present. Respondent’s additional submission
finally again rejects the Complainant’s assertion that Respondent has engaged
in bad faith use and registration of the domain name instead putting forth
arguments in support of its legitimate interest in the disputed domain name
premised upon the generic nature of its secondary level domain, the manner in
which it is using the domain name and Respondents lack of knowledge of
Complainant’s marks when Respondent secured its registration.
FINDINGS
Complainant, West Corporation is engaged in
the emergency service response system business purportedly acquiring notoriety
as such a service provider through various types of direct advertising,
Internet advertising and the carrying out of its business endeavors.
Complainant provided a wealth of documentary support to that end including
affidavits by various company executives attesting to the company’s acquired
fame. Complainant is the owner of the United States Patent and Trademark Office
(USPTO) trademark registrations for the word mark INTRADO (US Reg. No.
2,612,789) and for the word mark and design (US Reg. No. 2,631,743). Both
registrations issued in 2002.
Respondent, Domain Admin c/o Mrs. Jello, LLC,
claims to have a registered portfolio “of domain names consisting of common
words, generic terms, and useful phrases.” Respondent uses its domain names in
conjunction with an advertising subscription database to return certain types
of search results to various paid subscribers. Respondent’s <entrado.com> domain resolves to
a website that focuses on adult dating services and nothing therein implicates
Complainant’s business or links to that of any of Complainant’s competitors.
Respondent’s domain name was registered in 2003.
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.
As referenced above, Complainant has submitted evidence of its registrations of its INTRADO marks with the United States Patent and Trademark Office (USPTO). The Panel finds that Complainant’s registration of its INTRADO marks with the USPTO is sufficient evidence of Complainant’s rights in the mark pursuant to 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 Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Complainant argues that Respondent’s <entrado.com> domain name is confusingly similar to Complainant’s INTRADO mark. Respondent’s disputed domain name is in part comprised of a second level domain with a spelling that is similar to Complainant’s marks. Respondent’s domain name begins with the letter “e” instead of the letter “i” in Complainant’s mark and also attaches the generic top-level domain (“gTLD”) “.com.” The Panel finds that these differences are sufficient to lead to a conclusion of confusing similarity pursuant to Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Am. Online, Inc. v. Triple E Holdings Ltd., FA 281584 (Nat. Arb. Forum July 15, 2004) (“Words that are spelled differently but are phonetically similar do not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Complainant has proven this
element.
Respondent presented no evidence that it has ever been commonly known by the disputed domain name. Complainant also has not licensed or otherwise permitted Respondent to use any of Complainant’s marks or to apply for or use any domain name incorporating Complainant’s mark. The WHOIS information lists the registrant for the disputed domain name as “Domain Admin c/o Mrs Jello, LLC” which Complainant points out is not similar to or identifiable as the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant also asserts that Respondent’s
disputed domain name resolves to a dating services website that features adult
oriented material. The Panel does not
find that Respondent’s use of the disputed domain name for this purpose 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). The
mere fact that a domain name resolves to a website featuring adult content does
not per se render the registrant devoid of rights or legitimate interests in
the domain name.
The Panel holds 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 Aug. 24, 2006) (holding that the
complainant did not satisfactorily meet its burden and as a result found that
the respondent had rights and legitimate interests in the domain name under
UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA
739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the
complainant’s burden by showing it was making a bona fide offering of
goods or services at the disputed domain name).
Respondent also argues that the term used in the <entrado.com> domain name is common and generic, and
therefore, Complainant does not have an exclusive monopoly on the term on the
Internet. The Panel recognizes that the secondary level domain in dispute is a
term of common usage that is easily found in Spanish dictionaries. However the
fact that a word is found in a dictionary or has a common meaning does not
automatically prevent that word from acquiring trademark status. Common words
can acquire trademark status in certain context but they are still free for
public use in their common descriptive sense. It is therefore unnecessary to
determine whether the secondary level domain in this matter is a generic term
and the Panel finds that the Respondent’s descriptive fair use of the term
constituting the domain name in question established rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Complainant’s use and registration for emergency response systems of a mark
similar to the common term constituting the disputed domain name cannot prevent
others from using the term in a wholly different context that is aligned with
the term’s common descriptive meaning. See Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004)
(stating that “Complainant’s rights in the QWEST mark are limited to its
application to the tele-communications industry,” where a variety of other
businesses used the mark in unrelated fields).
Complainant has failed to prove this element.
Registration and Use in Bad
Faith
Respondent contends
that the <entrado.com> domain
name is comprised entirely of a common term
that has many meanings apart from use in Complainant’s INTRADO mark.
Moreover, Respondent contends that the registration and use of a domain
name comprising such a common term is not necessarily done in bad faith. The Panel
finds that a respondent is free to register a domain name consisting
of common terms for use of those terms in their common descriptive sense
as the Respondent did in the instant case. Therefore, the Respondent did not
register or use the <entrado.com> domain name in bad faith
under Policy ¶ 4(a)(iii). See Zero Int'l Holding v. Beyonet Servs.,
D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are
legitimately subject to registration as domain names on a 'first-come,
first-served' basis.”).
Complainant has failed to prove this element.
Reverse Domain Name Hijacking
The panel finds inadequate
support for Respondent’s claim of reverse domain name hijacking.
DECISION
As Complainant has failed to establish all three elements required
under the ICANN Policy, the Panel concludes that the requested relief shall be DENIED.
Prof. Darryl C.
Wilson, Esq., Chair,
Ms. Diane Cabell, Esq., and Mr. James A.
Carmody, Esq., as Panelists
Dated: June 14, 2010
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