Mainstream Advertising, a California corporation v. Bullhorn Marketing, LLC. / Nathan Barnett
Claim Number: FA1008001338435
PARTIES
Complainant is Mainstream Advertising, a California corporation (“Complainant”), represented by Tal Grinblat, of Lewitt, Hackman, Shapiro, Marshall & Harlan, California, USA. Respondent is Bullhorn Marketing, LLC. / Nathan Barnett (“Respondent”), represented by Edwin C. Schreiber, of Schreiber & Schreiber, Inc., California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bullhornmktg.com>, <bullhorndirect.com>, and <bullhornxml.com>, registered with Spot Domain Llc d/b/a Domainsite.Com.
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.
Sally M. Abel, Paul M. DeCicco, as Panelists and David P. Miranda, as Panel Chair.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 2, 2010.
On August 3, 2010, Spot Domain Llc d/b/a Domainsite.Com confirmed by e-mail to the National Arbitration Forum that the <bullhornmktg.com>, <bullhorndirect.com>, and <bullhornxml.com> domain names are registered with Spot Domain Llc d/b/a Domainsite.Com and that the Respondent is the current registrant of the names. Spot Domain Llc d/b/a Domainsite.Com has verified that Respondent is bound by the Spot Domain Llc d/b/a Domainsite.Com 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 August 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 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@bullhornmktg.com, postmaster@bullhorndirect.com, and postmaster@bullhornxml.com. Also on August 10, 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 August 26, 2010.
A timely Additional Submission was received and determined to be complete on August 31, 2010.
On September 13, 2010, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Sally M. Abel, Paul M. DeCicco, as Panelists and David P. Miranda, as Panel Chair.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Mainstream Advertising, a California corporation (“Complainant”), seeks transfer of domain names <bullhornmktg.com>, <bullhorndirect.com>, and <bullhornxml.com> (“Bullhorn domain names”) from Bullhorn Marketing, LLC, a California Limited Liability Company; Nathan Barnett, an individual (“Respondent”). Complainant contends that it is the owner of the trademark BULLHORN MARKETING registered with the United States Patent and Trademark Office on June 29, 2010, with a date of first use of May 1, 1993, for advertising, marketing and related services. Complainant attaches a copy of the U.S. Trademark registration certificate for the mark BULLHORN MARKETING. Complainant contends that it is in the business of providing interactive online marketing services to advertisers and agencies under the BULLHORN MARKETING brand, and started using BULLHORN MARKETING trademark in 1993. Complainant provides a Declaration in support from Daniel Khoshnood, Vice President of Business Development for Complainant. Complainant owns the domain name <bullhornmarketing.com> where it advertises and sells its Bullhorn Marketing services. The domain <bullhornmarketing.com> has been in use since the year 2000. Complainant contends that Respondent registered the bullhorn domain names between February 24, 2009 and January 4, 2010, 16 years after Complainant first started using the trademark in connection with its services and 10 years after Complainant registered and began using the <bullhornmarketing.com> domain name. Complainant contends that Respondent’s domain names are virtually identical and confusingly similar to Complainant’s trademark. Complainant contends that Respondent is a junior user of BULLHORN MARKETING, and as such has no right or legitimate interest in the bullhorn domain names. Complainant contends that Respondent’s managers are Collin Kay and Nathan Barnett, former employees of Complainant. Kay worked for Complainant until February 3, 2009, and Barnett worked for Complainant until February 2, 2009. Complainant contends that immediately upon leaving Complainant’s company that Kay and Barnett formed Respondent’s company to compete directly with the advertising and marketing services provided by Complainant, and registered the Bullhorn domain names with the intention of diverting consumers seeking Complainant’s services to Respondent’s own website, and also to create a false association with Complainant, interfering with Complainant’s business.
B. Respondent
Respondent seeks a stay of this proceeding because the parties are already the subject of consolidated actions in the Los Angeles Superior Court, Case No. BC423165, Mainstream Advertising v. Collin Kay et al., and Case No. BC430324, Bullhorn Marketing, LLC v. Mainstream Advertising. The Superior Court Complaints attached allege causes of action by Complainant against Defendants for breach of contract, tortious interference with business, misappropriation of trade secrets, conversion, unfair competition, and by Respondent against Complainant for unfair competition, palming off, false advertising and unfair and deceptive business practices seeking, among other things, to restrain Complainant from using the name Bullhorn, Bullhorn Marketing, or Web address <bullhornmarketing.com>. There is no claim regarding the domain names in dispute in this proceeding.
Respondent contends that it is in the business of “pay-per-click” marketing that assists companies in directing traffic via click through when an Internet user clicks on an ad on a website. Respondent contends that it commenced business in April 2010, but some records date back to 2009. Respondent contends that the federally registered trademark which Complainant obtained through the Trademark Office was obtained fraudulently and that Respondent intends to challenge Complainant’s federal trademark and have it cancelled. Respondent contends that Complainant was not the owner of the website <bullhornmarketing.com> during the years claimed.
C. Additional Submissions
Complainant’s additional submission contends that the proceeding should not be stayed because there is no procedural or substantive basis for granting a stay of this administrative proceeding under UDRP ¶ 4. Complainant contends that Complainant’s <bullhornmarketing.com> website went live on the Internet in 2000 and has been live on the Internet continuously since that time, while Respondent did not begin commencing its business until April 2010, ten years after Complainant registered the <bullhornmarketing.com> domain name. Complainant contends that Respondent’s papers confuse the “registrar” of the domain name <bullhornmarketing.com> with the “owner” of the domain name <bullhornmarketing.com>. Complainant further contends that its trademark registration for BULLHORN MARKETING is prima facie evidence of the validity of the mark and that although Respondent contends that the registration was obtained fraudulently, it fails to present evidence supporting its argument or sufficient to overcome the presumption of validity. Complainant also notes that Respondent have not petitioned to cancel the trademark, or filed a Notice of Opposition to Complainant’s trademark. Complainant contends that Respondent’s arguments are false, without sufficient proof and should be rejected.
FINDINGS
The Panel finds that Complainant is the owner of a registered trademark BULLHORN MARKETING, that the Bullhorn domain names <bullhornmktg.com>, <bullhorndirect.com>, and <bullhornxml.com> are confusingly similar to Complainant’s mark, that Respondent lacks rights and legitimate interests in the disputed domain names, and has registered and is using the domain names in bad faith. As such the domain names should be transferred to Complainant.
Preliminary Issue: Concurrent Court Proceedings
Respondent argues that the action must be stayed because the disputed domain names are already the subject of consolidated actions in the Los Angeles Superior Court. Respondent provides a copy of the summons and complaint, cross-complaints, and answers for Case No. BC423165, entitled Mainstream Advertising v. Collin Kay et al., and Case No. BC430324, entitled Bullhorn Marketing, LLC v. Mainstream Advertising.
In its Additional Submission, Complainant contends Respondent’s request to dismiss should be denied. Complainant argues that Supplemental Rule 6(b) allows the proceeding to be stayed only if the parties jointly request a stay prior to the appointment of a panel. Moreover, Complainant claims that there is no provision in the Policy that requires a panel divest itself of its ability to continue with an administrative proceeding in light of concurrent action between the parties.
UDRP Rule 18 gives the Panel the power to determine if it is best to continue with the UDRP proceeding, stay the UDRP proceeding, or terminate the UDRP proceeding when there are concurrent court proceedings that may affect the domain name or trademarks at issue.
There is precedent for proceeding with a UDRP action in situations involving concurrent court proceedings. See eProperty Direct LLC v. Miller, FA 836419 (Nat. Arb. Forum Jan. 3, 2007) (holding that the panel could decide the dispute under Rule 18(a) of the Policy “since the legal proceedings referred to by the parties appear to be concluded and Orders made. Moreover,… those Orders do not touch directly on the disposition of the disputed domain name or on the parties’ intellectual property rights.”); see also W. Florida Lighting v. Ramirez, D2008-1122 (WIPO Oct. 2, 2008) (deciding to proceed under the UDRP despite concurrent court proceedings because “the Panel does not find that it is necessary or advantageous to await a judicial determination of the issues raised in the federal litigation in order to reach a decision strictly under the Policy. This administrative proceeding under the Policy concerns only control of the Domain Name, not any of the other remedies at issue in the federal litigation. It is not binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the federal litigation”); see also Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (choosing to proceed under the UDRP despite concurrent court proceedings for multiple reasons, including that the proceedings appeared to be filed in a court that did not commonly adjudicate intellectual property issues and that the court proceedings were filed by the respondent on the same day the response in these proceedings was filed).
Although in the instant matter there are two Superior Court proceedings pending between the parties, those actions do not appear to involve a request for relief regarding the Bullhorn domain names at issue in this proceeding, and there is no clear indication that the resolution of those cases will resolve the issues presented here. Accordingly, the Panel does not consider a stay appropriate, and will consider the contentions of the parties in this proceeding.
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.
Complainant, Mainstream Advertising, a California corporation, asserts rights in the BULLHORN MARKETING mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,810,103 issued on June 29, 2010; filed on November 1, 2009). This trademark registration sufficiently proves Complainant’s rights in the BULLHORN MARKETING mark pursuant to Policy ¶ 4(a)(i) dating back to November 1, 2009. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); 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)); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant states it provides online marketing services to advertisers and agencies under the BULLHORN MARKETING mark. Complainant claims that it first used the BULLHORN MARKETING mark in commerce on May 15, 1993. Complainant asserts it also operates a website at the <bullhornmarketing.com> domain name, which incorporates its BULLHORN MARKETING mark. Complainant alleges the website resolving from this domain name went live on the Internet in 2000. Complainant also provides the WHOIS information for the <bullhornmarketing.com> website, which lists the domain name creation date as September 9, 2003. Complainant further alleges that screen shots of the <bullhornmarketing.com> website show posts by Complainant’s staff about Complainant’s marketing services from April 2000 through December 2000.
Respondent contends that the federally registered trademark, which Complainant obtained through the Trademark Office, was obtained fraudulently and that Respondent intends to challenge Complainant’s federal trademark and have it cancelled. Complainant contends that its trademark registration for BULLHORN MARKETING is prima facie evidence of the validity of the mark and that although Respondent contends that the registration was obtained fraudulently, it failed to present evidence supporting its argument sufficient to overcome the presumption of validity. Respondent has not petitioned to cancel the trademark, or filed a Notice of Opposition to Complainant’s trademark.
Complainant argues that Respondent’s <bullhornmktg.com>, <bullhorndirect.com>, and <bullhornxml.com> domain names are confusingly similar to its BULLHORN MARKETING mark. Complainant contends that Respondent incorporates the “bullhorn” portion of its mark in all of the disputed domain names. Complainant states that Respondent also replaces the second term in Complainant’s mark with the letters “mktg,” which is a common abbreviation of the term “marketing,” in the <bullhornmktg.com> domain name. In addition, Complainant claims that Respondent replaces the word “marketing” in Complainant’s mark with the generic term “direct” in the <bullhorndirect.com> domain name. Lastly, Complainant states that Respondent replaces the second word in Complainant’s mark with the letters “x,” “m,” and “l” in the <bullhornxml.com> domain name. Replacing the second word in Complainant’s mark with an abbreviation of the word, a generic term, or a string of letters does not sufficiently distinguish Respondent’s disputed domain names from Complainant’s mark. Furthermore, the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant to the Policy ¶ 4(a)(i) analysis. See SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Nat. Arb. Forum Apr. 9, 2007) (finding that the <atlhomeshow.com> domain name was confusingly similar to the complainant’s ATLANTA HOME SHOW mark, as “atl” was a common abbreviation for the city of Atlanta); see also Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); 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). Respondent makes no contentions with regards to Policy ¶ 4(a)(i), and as such, there is no dispute regarding Complainant’s contentions in this regard. As such, the <bullhornmktg.com>, <bullhorndirect.com>, and <bullhornxml.com> domain names are confusingly similar to Complainant’s BULLHORN MARKETING 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
Complainant alleges that Respondent uses the Bullhorn domain names to offer pay-per-click advertising services and marketing services that directly compete with Complainant’s advertising and marketing services. In addition, Complainant claims the website resolving from Respondent’s <bullhornmktg.com> domain name displays Complainant’s BULLHORN MARKETING mark. Complainant has made the necessary prima facie showing to shift the evidentiary burden to Respondent.
The WHOIS information lists “Bullhorn Marketing, LLC. / Nathan Barnett” as the registrant of the disputed domain names. Although the registrant information appears to incorporate part of the disputed domain names, Respondent fails to submit proof that it is actually known by the disputed domain names. Respondent is not commonly known by the <bullhornmktg.com>, <bullhorndirect.com>, and <bullhornxml.com> domain names under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (“[O]ther than Respondent’s infringing use of the ULTIMATE ELECTRONICS mark on its web page and in its domain name . . . , there is no evidence that Respondent is commonly known by the <ultimateelectronics.net> domain name pursuant to Policy ¶ 4(c)(ii), or that there is any other entity besides Complainant authorized to trade as ULTIMATE ELECTRONICS.”).
Respondent uses confusingly similar domain names to resolve to websites that prominently display Complainant’s mark and offer services that compete with Complainant’s services. This use does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003). Respondent has not established any right or legitimate interests in the domains.
Complainant contends that Respondent consists of former employees of Complainant who registered and are using the Bullhorn domain names to divert Internet consumers seeking Complainant’s services to its own websites. Furthermore, Respondent uses the disputed domains to offer services that compete with Complainant’s business and purportedly disrupt Complainant’s business. This behavior constitutes registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Complainant argues that Respondent, as former employees, could not have registered and used the disputed domain names without actual knowledge of Complainant and its rights in the BULLHORN MARKETING mark. Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Complainant also contends that Respondent registered and is using the Bullhorn domain names in an effort to create a false association with Complainant. Complainant states Respondent creates consumer confusion by prominently displaying Complainant’s mark on its resolving websites, and thus, Respondent attempts to use the disputed domain names to receive commercial gain. Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. Accordingly, Respondent’s disputed domain names were registered and are being used in bad faith pursuant to Policy ¶ 4(b)(iv). See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000).
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 <bullhornmktg.com>, <bullhorndirect.com>, and <bullhornxml.com> domain names be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Panel Chair
Sally M. Abel and Paul M. DeCicco, Panelists
Dated: October 5, 2010
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