Live Link, Inc. v. R Schwartz and Virtual Dates, Inc.
Claim Number: FA1007001333180
Complainant is Live Link, Inc. (“Complainant”), represented by Barry A. Furman, of Kaplin Stewart,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gaylive.com>, registered with MONIKER ONLINE SERVICES, INC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Michael Albert, as Panel Chair, Debrett Lyons, as Panelist, and Judge Karl Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 30, 2010.
On July 6, 2010, MONIKER ONLINE SERVICES, INC. confirmed by e-mail to the National Arbitration Forum that the <gaylive.com> domain name is registered with MONIKER ONLINE SERVICES, INC. and that the Respondent is the current registrant of the name. MONIKER ONLINE SERVICES, INC. has verified that Respondent is bound by the MONIKER ONLINE SERVICES, 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 July 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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 email@example.com by e-mail. Also on July 12, 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 July 29, 2010.
On August 11, 2010, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Michael Albert, Debrett Lyons, and Judge Karl Fink (Ret.) as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that it is the owner of “Gay Live” (“Mark”), a
registered trademark in the
Complainant alleges that Respondent has registered <gaylive.com> and uses this address “for third parties to advertise their products and services for the gay community” and that this web page is “parked” and “offers advertising space” but offers no “goods or services.” Complainant further alleges that some of the advertisers that appear on <gaylive.com> compete with Complainant.
Complainant alleges that <gaylive.com> is identical or confusingly similar to the Gay Live trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the <gaylive.com> domain name. Complainant contends that Complainant has used the Internet to promote Complainant’s services since “on or around May, 2000” and further alleges that since at least that time, Respondent has used <gaylive.com> to redirect visitors to competing websites, and that this behavior does not create rights or legitimate interests for Respondent in <gaylive.com>.
Complainant alleges that Respondent registered and is using <gaylive.com> in bad faith, citing Policy example ¶ 4(b)(iv) as applicable in this case. Complainant contends that Complainant was incorporated on April 26, 1994 and that since on or around November, 1992, Complainant (first through an affiliate and then through its incorporated business) provided services “using the Mark variably as ‘Gay Live,’ ‘Gay Live Network,’ ‘Gay Live [with City Name]’ and ‘1800gaylive’ which is current used.” Complainant contends that Complainant filed for trademark protection of “Gay Live Network” as a mark (“Second Mark”) on November 23, 1995, and that this Second Mark has since been cancelled. Complainant alleges that these actions and history gave Respondent “constructive or actual notice of the Mark” and that this creates a legal presumption of bad faith at registration. Complainant further alleges that Respondent’s current use (as described above) of <gaylive.com> evinces bad faith use of the domain name.
Complainant alleges that Respondent “is the self-proclaimed ‘Domain King’” who buys and sells domains for profit and that Respondent should have been aware of his need to perform a trademark search before purchasing <gaylive.com> and that these allegations evince bad faith use of the domain.
Complainant submits as exhibits to its complaint a number of documents, including a declaration of advertising costs, screen shots of trademark registrations by both Complainant and Respondent, an article allegedly written by Respondent, and an advertisement for the “Gay Live Network.”
Respondent acknowledges that Complainant’s exhibits show that Respondent registered <gaylive.com> on August 14, 1996, and that Complainant filed for the Mark and was granted the Mark in 2007. Respondent acknowledges that <gaylive.com> is a “parked” monetizing link web page. Respondent asserts that the domain <gaylive.com> uses the words “gay” and “live” in the generic sense “and are used to direct users to live and gay web sites.”
Respondent asserts in response to Policy ¶ 4(a)(i) that “there is no evidence offered by Complainant that Respondent has used Complainant’s trademark, per se, to confuse users or to profit therefrom.”
Respondent asserts in response to Policy ¶ 4(a)(ii) that “use of Domain Name in connection with a pay per click landing page gives rise to a legitimate interest under the Policy.”
Respondent asserts that in order to satisfy Policy ¶ 4(a)(iii), Complainant is required to show both that the domain name was registered in bad faith and that it is being used in bad faith, and asserts that Complainant has not met his burden. In particular, Respondent disputes the Complainant’s contention that a “parked” monetizing link web page reflects bad faith use.
Respondent asserts the doctrine of laches in that “Complainant waited fourteen (14) years to bring this action. That delay must be considered by the Panel in determining the lack of credibility of Complainant’s case.”
Respondent alleges that Complainant is guilty of Reverse Domain Hijacking.
The Panel finds that Complainant has established that it owns protectable rights in the GAY LIVE Mark, as a result of its federal registration of the Mark on the Principal Register.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s Mark.
For the reasons discussed below, the Panel does not need to reach or resolve the question whether Respondent has rights or legitimate interests in respect of the disputed domain name.
Assuming arguendo that the disputed domain name is being used in bad faith, the Panel finds that Complainant has not provided sufficient evidence that Respondent registered the disputed domain name in bad faith.
The Panel finds that Complainant has not proved at least one of the three elements in Policy ¶ 4(a) and DENIES the transfer of the disputed domain to Complainant. The panel further DENIES Respondent’s request for a finding of Reverse Domain Hijacking.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs the 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 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.
Both parties have briefed the Panel on competing lines of precedent. The Panel notes that the UDRP does not operate on a strict doctrine of precedent. It is, however, desirable that the Panel’s decision be reasonably consistent with prior panel decisions dealing with similar fact situations to ensure that the UDRP system operates in a fair, effective, and predictable manner for all parties. Where a consensus opinion has developed around similar fact situations, the Panel endeavors to follow such opinion.
While the Panel finds that this case turns on Policy ¶ 4(a)(iii) concerning “bad faith,” a brief discussion of the history of the Complainant’s marks and an analysis of Policy ¶ 4(a)(i) will prove to be useful to our later discussion regarding “bad faith.”
1. The Two Marks
Complainant, Live Link, Inc., contends that it has established rights in both the GAY LIVE NETWORK and GAY LIVE marks. More accurately, Complainant defines “Mark” in its complaint as the GAY LIVE mark, but then writes “Complainant ha[s] been using the Mark variably as ‘Gay Live,’ ‘Gay Live Network,’ ‘Gay Live [with City Name]’ and ‘1800gaylive’”. Complainant submits no evidence of trademark rights in marks other than GAY LIVE and GAY LIVE NETWORK and thus the Panel restricts its attention to only these two marks. The Panel has considered these two marks separately as the Complainant appears to have acquired different levels of trademark rights at different times in the past, as detailed below.
2. GAY LIVE NETWORK mark
Complainant asserts that it has
provided evidence of trademark registration with the United States Patent and
Trademark Office ("USPTO") for its GAY LIVE NETWORK (Reg. No.
2,021,531; issued December 3, 1996; filed March 21, 1996). The Panel notes that Complainant’s “Exhibit B
to Complaint” asserts that the GAY LIVE NETWORK trademark was filed as a
supplemental (rather than principal) registration. The Complainant does not comment on this
supplemental status, but the distinction between USPTO principal and
supplemental registration is significant, especially since the Complainant and
Respondent are both parties in the
Prior UDRP panels have expressed skepticism that a supplemental trademark confers rights to the owner until it is converted into a principal registration. See Jahnke & Sons Construction, Inc. v. Trachte Building Systems, Inc., FA 1292233 (Nat. Arb. Forum Nov. 5, 2009)
(Under UDRP precedent, federal supplemental registrations of themselves convey no trademark or service mark rights upon the registrant – see Elizabeth Blair and Jennifer Miner and Caro Williams v. Shannon Lane (FA 1285345 NAF November 13, 2009) where the Panel remarked that the only registration cited was the Supplemental Register which carries little, if any, weight under [United States] law. Also, Lodging Kit Company Inc. v. Natalie Soffer (FA 1283398 NAF November 5, 2009) saying, that without showing a secondary meaning, the complainant’s registration on the Supplemental Register does not confer rights in a mark for the purposes of the Para. 4(a)(i) of the Policy.).
The Panel further notes that Complainant’s “Exhibit B to Complaint” shows that the GAY LIVE NETWORK mark was cancelled on September 6, 2003 and that this mark was never converted to a principal registration.
The Complainant has not formally asserted common law trademark rights, but because of our finding above, and because the Complainant describes its history of using the GAY LIVE NETWORK mark, the Panel has looked through the evidence to determine if the Complainant has established such common law rights. The Panel finds that the Complainant’s evidence does not support a finding of such rights. For example, Complainant submits as “Exhibit I to Complaint” what appears to be a photocopy of a print advertisement whose noteworthy features for this discussion are as follows: The advertisement includes the text “5.3.96 NEXT MAGAZINE” and contains a stylized logo with the text “GAY LIVE NETWORK.” However, there is no trademark symbol in the advertisement that would indicate to the viewer that “GAY LIVE NETWORK” is subject to trademark protection.
For these reasons, the Panel determines that Complainant has not established the necessary rights under Policy ¶ 4(a)(i) to the GAY LIVE NETWORK mark.
3. GAY LIVE mark
Complainant asserts that it has provided evidence of trademark registration with the USPTO of its GAY LIVE mark (Reg. No. 3,229,247; issued April 17, 2007; filed November 23, 2005). The panel notes that Complainant’s “Exhibit A to Complaint” shows that the GAY LIVE trademark was filed as a principal registration.
Prior panels have concluded that a
principal trademark registration with the USPTO is sufficient to establish
rights in a complainant’s mark. 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).
4. Respondent’s Additional Arguments Regarding Policy ¶ 4(a)(i)
Complainant contends that Respondent’s <gaylive.com> domain name is confusingly similar to its GAY LIVE mark. The Panel finds that the disputed domain name removes the space separating the terms of the GAY LIVE mark and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the removal of spaces and the addition of a gTLD all fail to adequately distinguish the disputed domain name from Complainant’s mark. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).
While Respondent argues that its registration of the <gaylive.com> domain name predates Complainant’s alleged rights in the 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)).
While Respondent contends that the <gaylive.com> domain name is used “solely in its generic sense,” Response at 4, and as such cannot be found to be confusingly similar to Complainant’s 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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
5. Panel’s Finding Regarding Policy ¶ 4(a)(i)
The Panel thus concludes that Respondent’s <gaylive.com> domain name is confusingly similar to Complainant’s GAY LIVE mark pursuant to Policy ¶ 4(a)(i).
Both Complainant and Respondent have briefed this Panel on competing precedent as to whether Respondent has demonstrated rights or a legitimate interest in respect of the domain name by its use of <gaylive.com> to direct to a “parked” advertising landing page. Both parties urge the Panel to remain consistent with the (seemingly inconsistent) precedent.
Because the Panel concludes that the case at hand is best resolved under Policy ¶ 4(a)(iii) as discussed below, the Panel declines to analyze whether Respondent has “demonstrated rights or a legitimate interest in respect of the domain name.” See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
1. Panel’s Finding Regarding Policy ¶¶ 4(b)(i)-4(b)(iv)
Complainant does not allege any behavior that constitutes “evidence of the registration and use of a domain name in bad faith” under Policy ¶¶ 4(b)(i) (“selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark .”) In particular, Complainant does not allege that Respondent has offered to sell, rent, or transfer <gaylive.com> to the Complainant, or that doing so was Respondent’s primary purpose.
Nor does Complainant allege any behavior that is “evidence of the registration and use of a domain name in bad faith” under Policy ¶¶ 4(b)(ii) (“to prevent the owner of the trademark . . . from reflecting the mark in a corresponding domain name, provided that [there is] a pattern of such conduct”). In particular, Complainant does not allege that Respondent registered the domain name to block Complainant from reflecting a valid mark. For reasons discussed above, Complainant had not established rights in the “Gay Live” Mark when Respondent registered the <gaylive.com> domain name. While Complainant alludes to Respondent’s other domain activities, Complainant does not establish a pattern whereby Respondent has moved to block others from reflecting their respective trademarks in domain names.
Complainant alleges that Respondent uses the <gaylive.com> domain name to resolve to a website that contains advertisement hyperlinks that resolve to Complainant’s competitors. This claim is relevant to Policy ¶ 4(b)(iii) (“disrupting the business of a competitor”). However, the Panel finds only this bald assertion in the Complaint and no evidence in the record to support this accusation.
Complainant argues that Respondent is attempting to profit from Internet users’ confusion as to Complainant’s sponsorship of, or affiliation with, the <gaylive.com> domain name and the website to which it resolves. This claim is relevant to Policy ¶ 4(b)(iv) (“intentionally attempting to attract, for commercial gain, Internet users . . . by creating a likelihood of confusion with the complainant’s mark”). A long line of UDRP precedent, however, holds that Policy ¶ 4(a)(iii) requires proof of registration and use in bad faith. In this case, even assuming arguendo that <gaylive.com> is currently being used in bad faith, Policy ¶ 4(b)(iv) requires evidence that the domain was registered in bad faith. See Guideline Instruments Ltd. v. Anthony Anderson D2006-0157 (WIPO Dec. 4, 2006) (citing ten cases supporting the proposition that domain must be actually registered in bad faith to qualify under ¶ 4(a)(iii)’s bad faith prong). The Panel finds that because Complainant did not hold legally cognizable rights to either the GAY LIVE or GAY LIVE NETWORK marks when the <gaylive.com> domain was created in August 1996, Complainant has not proven that Respondent “intentionally attempt[ed] to attract, for commercial gain, Internet users . . . by creating a likelihood of confusion with the complainant’s mark.”
2. Panel’s Finding Regarding Complainant’s
Additional Claims Regarding “Bad Faith”
Complainant goes beyond the non-exclusive examples in ¶ 4(b) and further claims that Respondent receives click-through fees from the advertisement hyperlinks, implying that this use of the domain name constitutes bad faith. The Panel finds that Respondent’s use of the <gaylive.com> domain name in this manner does not constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv). As the Response notes, quoting CNRV, Inc. v. Vertical Axis, Inc., FA 1300901 (Nat. Arb. Forum May 3, 2010), “although numerous panels have noted the lack of societal benefit offered by pay-per-click (‘PPC’) landing pages of the type offered by Respondent, see, e.g., mVisible Techs., Inc. v. Navigation Catalyst Systs., Inc., D2007-1141 (WIPO Nov. 30, 2007), panels also have recognized that domain names that are descriptive and are used solely in connection with PPC advertising keyed to the descriptive meaning of the domain name can constitute a legitimate interest for purposes of the policy.”) (citing Ustream.TV, Inc. v. Vertical Axis, Inc., D2008-0598 (WIPO July 29, 2008)). The Panel finds this argument persuasive, particularly in light of the fact that Complainant’s mark began as a descriptive term and only became registrable on the principal register after it had acquired secondary meaning.
Complainant asserts that “Respondent had constructive or actual notice of the Mark when Respondent registered the Domain Name” and argues that this notice creates a “legal presumption of bad faith.” Respondent of course had no constructive or actual notice in 1996 of the GAY LIVE registration, which was not filed by Complainant until 2005. Rather, the Panel takes Complainant to mean that Respondent’s constructive or actual notice of the GAY LIVE NETWORK mark in 1996 creates a presumption of bad faith for Respondent’s <gaylive.com> registration in 1996.
As discussed above, however, the Panel has found that GAY LIVE NETWORK was initially filed as a supplemental (rather than a principal) registration. This is significant for two reasons. First, under United States Trademark procedures, a supplemental registration does not constitute constructive notice to the public of the registrant’s claim of ownership of the mark. See §§ 801.02(a), 815 and 15 U.S.C. §§1057(c), 1072, 1094. Second, a supplemental registration is published publicly for the first time on actual registration. See §§ 801.02(a), 815 and 15 U.S.C. §§1094, 1057(c). The Panel questions whether the supplemental trademark of GAY LIVE NETWORK would have been made public prior to December 3, 2006, which is the date listed as the Registration Date in Complainant’s “Exhibit B to Complaint.”
Notwithstanding our finding above that Complainant did not have cognizable rights to the GAY LIVE NETWORK mark, the Panel has searched the record for any evidence that Respondent had actual notice of the GAY LIVE NETWORK mark on August 8th, 1996, the date of Respondent’s registration of <gaylive.com>. As mentioned above, Complainant submitted as Exhibit I what appears to be a photocopy of a print advertisement whose noteworthy features for this discussion are as follows: The advertisement includes the text “5.3.96 NEXT MAGAZINE” and contains a stylized logo with the text “GAY LIVE NETWORK.” However, there is no trademark symbol in the advertisement that would indicate to the viewer that “GAY LIVE NETWORK” was subject to trademark protection (or that the Complainant was claiming such rights and attempting to build up secondary meaning in the Mark or related marks). While the Panel takes note of the Complainant’s proffered past advertising data set forth in the Complaint and the declaration in Exhibit G, this advertising data is not specific as to the content of the advertising and does not support the premise that Respondent was on actual notice that Complainant held a protected mark.
For these reasons, the Panel declines to find that the Respondent had constructive or actual notice of either the GAY LIVE NETWORK or GAY LIVE marks.
Because none of ¶¶ 4(a)(i)-(iv), nor Complainant’s additional arguments regarding bad faith are demonstrated with the evidence in the record, the Panel declines to find that <gaylive.com> has been registered and is being used in bad faith.
The Panel finds it unnecessary to consider the Respondent’s assertion of laches. Furthermore, the Respondent does not show that the Complainant acted in bad faith in bringing this arbitration proceeding, and the Panel therefore rejects Respondent’s claim of Reverse Domain Hijacking.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Michael Albert, Panel Chair
Debrett Lyons, Panelist
Judge Karl Fink (Ret.), Panelist
Dated: August 26, 2010
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