National Arbitration Forum

 

DECISION

 

Denis Freiden v. 411WEB Directory

Claim Number: FA1005001323356

 

PARTIES

Complainant is Denis Freiden (“Complainant”), represented by Antoinette M. Tease, of Antoinette M. Tease, P.L.L.C., Montana, USA.  Respondent is 411WEB Directory (“Respondent”), represented by Thayer Preece, of Sheppard Mullin Richter & Hampton LLP, California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mycity.com>, registered with ENOM, INC.

 

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 6, 2010.

 

On May 7, 2010, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <mycity.com> domain name is registered with ENOM, INC. and that the Respondent is the current registrant of the name.  ENOM, INC. has verified that Respondent is bound by the ENOM, 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 May 13, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 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@mycity.com.  Also on May 13, 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 June 1, 2010.

 

On June 10, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

            A.  Complainant makes the following assertions:

 

1.      Respondent’s <mycity.com> domain name is confusingly similar to Complainant’s MYCYTY mark.

 

2.      Respondent does not have any trademark rights in the <mycity.com> domain name.

 

3.      Respondent registered and used the <mycity.com> domain name in bad faith.

 

B. Respondent makes the following assertions:

 

1.   The <mycity.com> domain name is not identical or confusingly similar to a

      trademark or service mark in which the Complainant has rights.

 

2.  Respondent has rights in the <mycity.com> domain name.

 

3.    Respondent did not register the <mycity.com> domain name in bad faith.

 

                      4.   Complainant has engaged in reverse domain name hijacking by filing this Complaint.

 

FINDINGS

Complainant holds a U.S. Trademark Registration for MYCYTY, which was registered on October 27, 2009, with a first use date of May 26, 2006.  Respondent’s predecessor-in-interest held a U.S. Trademark Registration for MYCITY, which was registered on August 29, 2000, with a first use in 1995.  The MYCITY mark was assigned to Respondent in 2004.  The Trademark Registration for MYCITY inadvertently lapsed in 2009, and a new trademark application is pending.  Respondent has continuously used the MYCITY mark commercially since 2004.

 

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.

 

Identical and/or Confusingly Similar

 

Complainant has provided evidence of its trademark registration with the United States Patent and Trademark Office (“USPTO”) for its MYCYTY mark (Reg. No. 3,729,443 issued December 22, 2009).  The Panel find that Complainant’s registration of its MYCYTY 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 Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).

 

Respondent’s <mycity.com> domain name is confusingly similar to Complainant’s MYCYTY mark.  Respondent’s disputed domain name replaces the “y” in Complainant’s mark with the letter “i” which Complainant argues is phonetically identical to Complainant’s mark.  Respondent’s disputed domain name also adds the generic top-level domain (“gTLD”) “.com.”  The Panel finds that these alterations do not sufficiently alter the disputed domain name to negate a finding 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 Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to the complainant’s mark satisfies ¶ 4(a)(i) of the Policy); 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.”). 

 

Respondent argues that its registration of the <mycity.com> domain name predates Complainant’s rights in the MYCYTY mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).

 

            The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant states that Respondent does not have trademark rights in the <mycity.com> domain name, yet acknowledges Respondent’s claim that its rights date back to 1995 through the lapsed Trademark Registration.  Complainant states that Respondent operates its online directory business under the <mycity.com> domain name, in competition with Complainant’s online directory business under the <mycyty.com> domain name. 

 

Complainant complains that, during communications regarding this dispute, Respondent did not provide Complainant with any evidence that Respondent has been using the MYCITY mark since 1995, nor is there any evidence of an assignment to Complainant from its predecessor-in-interest.  The Panel notes that Complainant did not provide any evidence of its use of MYCYTY on any date, let alone firmly establishing use and rights pre-dating Respondent’s use of MYCITY.

 

Respondent, however, provided evidence that the <mycity.com> domain name was in use by Respondent as early as October 31, 2004, and showed that the use continues to the present day with the same mark and logo displayed at <mycity.com>.  The Panel notes that the Trademark Registration for MYCITY inadvertently lapsed, and that Respondent indeed failed to produce proof of the assignment from its predecessor-in-interest, showing use of the MYCITY mark all the way back to 1995.  The Panel also notes that the current, pending application for MYCITY by Respondent does not appear to be for online directory services.

 

Nonetheless, the Panel finds that Respondent has rights in the <mycity.com> domain name dating back to at least 2004, regardless of the Trademark registrations for MYCITY, based on its demonstrated commercial use which began before Complainant filed its trademark application for MYCYTY mark in 2006.  Again, the Panel notes that Complainant did not allege any date upon which it started using MYCYTY in its Complaint.

 

The Panel finds that Complainant did not meet its burden to show 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 has met its burden of showing that it has been using the disputed domain name in connection with a bona fide offering of services continuously for years before notice of this dispute.  The Panel therefore finds that Respondent does have rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(i).  See 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); see also Digital Interactive Sys. Corp. v. Christian W, FA 708968 (Nat. Arb. Forum July 3, 2006) (concluding that the complainant failed to satisfy Policy ¶ 4(a)(ii) because the respondent provided sufficient evidence to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).

 

The Panel finds Complainant has not satisfied Policy ¶ 4(a)(ii).

 

Reverse Domain Name Hijacking

 

Even though Complainant has failed to satisfy its burden under the Policy, the Panel declines to find reverse domain name hijacking on behalf of Complainant in bringing this case.  While the Panel agrees with Respondent that Complainant could have discovered Respondent’s rights and interests in the <mycity.com> domain name, Respondent did not provide evidence of the assignment of the MYCITY mark from its predecessor-in-interest, and the Trademark Registration for MYCITY had lapsed, making Complainant’s claim colorable.  See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).

 

DECISION

Having failed to establish the second of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

Sandra J. Franklin, Panelist
Dated:  June 18, 2010

 

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