Acorn Media Group, Inc. v. Lawrence Magen
Claim Number: FA1108001401194
Complainant is Acorn Media Group, Inc. (“Complainant”), represented by James L. Lester, North Carolina, USA. Respondent is Lawrence Magen (“Respondent”), represented by Paul Godfread, Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <acorn.tv>, registered with eNom, Inc.
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.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 1, 2011; the National Arbitration Forum received payment on August 1, 2011.
On August 1, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <acorn.tv> domain name is registered with eNom, Inc. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 2011 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@acorn.tv. Also on August 2, 2011, 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 22, 2011.
On August 29, 2011 an Additional Submission was received by the Forum in a timely manner according with Supplemental Rule 7.
On August 28, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant contends that:
· It holds registered trademark rights in ACORN, ACORN EXCEPTIONAL ENTERTAINMENT IMAGINATIVE GIFTS UNCOMMON QUALITY, ACORNMEDIA and provides evidence of its registration of these marks with the United States Patent and Trademark Office (“USPTO”).
· The Respondent’s <acorn.tv> domain name is confusingly similar to Complainant’s ACORNMEDIA mark.
· The Respondent is not authorized to use the ACORNMEDIA mark and is not a licensee of Complainant.
· The Respondent’s website at the <acorn.tv> domain name distributes video programming over the Internet and offers products, such as watches, for sale and such activities infringe on Complainant’s rights in the mark.
· The Respondent’s use of the <acorn.tv> domain name does not satisfy Policy ¶ 4(c)(i) as a bona fide offering of goods or services or Policy ¶ 4(c)(iii) as a legitimate noncommercial or fair use.
· The Respondent’s use of the <acorn.tv> domain name competes with Complainant because both Respondent and Complainant offer video programming or recordings and sell watches, among other things.
· Respondent registered the <acorn.tv> domain name specifically to take unfair advantage of the goodwill associated with Complainant’s mark.
· Since ACORNMEDIA mark has been used in commerce from1999 and registered with the USPTO since 2003 and thus serves as constructive notice of Complainant’s rights in the mark and this represents bad faith in registration and use of the disputed domain name.
By its Response, the Respondent asserts:
· While the Complainant submitted evidence that it owns the ACORNMEDIA mark and the ACORN EXCEPTIONAL ENTERTAINMENT IMAGINATIVE GIFTS UNCOMMON QUALITY mark, neither of the marks for which Complainant has demonstrated rights is confusingly similar to Respondent’s <acorn.tv> domain name.
· it has rights and legitimate interests in the <acorn.tv> domain name as it represents a legitimate business concept that he has created and developed since the early 2000s.
· The business concept for Acorn TV involves creating themed video content for the Internet targeted at an upscale affluent audience.
· The Respondent’s idea for the name “acorn” came from a saying of his father: “From small acorns, giant oak trees grow.” which he has used this on his website, business cards, and other business materials since 2005.
· He specifically chose the <acorn.tv> domain name with the “.tv” ccTLD because of its relevance to “TV” and its suggestion that the resolving website would provide a form of Internet television.
· When he decided to create his business project, he had never heard of Complainant.
· He has spent tens of thousands of dollars of his own money developing this project, meeting with outside interested parties, making business cards, producing brochures, developing the website, producing webcasts, paying outside sources for work performed, etc.
· In 2010, the Respondent began to develop the concept publicly by creating a show called “Chilling with Larry Magen” that was intended to serve as a low budget vehicle to allow for setting up an infrastructure for future programming.
· The shopping cart that offers some watches for sale (the watches are from the company Respondent works for) is also intended to help in setting up the website’s infrastructure for the future.
· Respondent alleges the doctrine of laches, as because of the Complainant’s considerable delay, Respondent has been led to believe that his <acorn.tv> domain name would be safe and that the additional expenditures in time and money would not be wasted.
C. Additional Submissions
By the Additional Submissions, the Complainant further contends that:
· ACORN appears as dominant portion of all the Complainant’s trademarks and that the portion of the Respondent’s domain name that it is compared against the Complainant’s trademarks is primarily the dominant element in the Complainants’ trademarks.
· Complainant has established both registered and common law rights in the ACORN mark for various video and media and for mail order catalog services featuring home entertainment software and watches.
· The Respondent holds no rights and legitimate interests in the disputed domain names it registered it and then did not use it for five years, at which time the Respondent began using the site to infringe the Complainant’s trademark rights., by targeting the exact portion of public targeted by the Complainant for his goods, including videos and watches.
· The disputed domain name has been registered and is being used in bad faith, while it appropriated the Complainant’s trademarks, with constructive knowledge of these trademarks to market and commercially benefit from the sale of competing goods.
· The Defense of Laches has no application under the Policy
The disputed domain name is confusingly similar with the Complainant’s trademark ACORNMEDIA , not only that it reproduces the dominant part of the said trademark ACORN but by associating the ccTLD “.tv” to this trademark with the clear intent to suggest television, it completes the confusing similarity. Such purpose created confusing similarity may not represent in any case a bona fide offering of goods but rather a bad faith in registration and use of the disputed domain name by the Respondent.
Paragraph 15(a) of 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; and
(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 alleges that it has rights in the ACORNMEDIA mark and ACORN EXCEPTIONAL ENTERTAINMENT IMAGINATIVE GIFTS UNCOMMON QUALITY mark provides evidence of their registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,695,190 registered March 11, 2003 and Reg. No. 2,917, 252 registered January 11, 2005).
The Respondent argues that neither of the two marks for which Complainant has demonstrated rights is confusingly similar to Respondent’s <acorn.tv> domain name. Respondent asserts that Complainant submitted evidence that it owns the ACORNMEDIA mark and the ACORN EXCEPTIONAL ENTERTAINMENT IMAGINATIVE GIFTS UNCOMMON QUALITY mark, both of which are very different from the disputed domain name and if no common law rights in ACORN mark are proven by the Complainant, the Complainant’s allegations as to its rights in the disputed domain name are to be rejected
As previous panels in cases such as Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007), and Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003), have found that a USPTO trademark registration establishes rights in a mark, the Panel here concludes that the Complainant has satisfactorily proven its rights in the ACORNMEDIA mark for the purposes of Policy ¶ 4(a)(i). and it is no need to further check the common law rights of the Complainant in the ACORN trademark.
Complainant contends that Respondent’s <acorn.tv> domain name is confusingly similar to Complainant’s ACORNMEDIA mark. The Panel finds that the only differences between the mark and the disputed domain name are the deletion of the term “media” from the mark and the addition of the country-code top-level domain (“ccTLD”) “.tv.” Based on precedent established in Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000), and WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001), the Panel determines that failing to include a word from Complainant’s mark in the disputed domain name does not negate a finding of confusing similarity. Similarly, the Panel finds that the addition of the ccTLD “.tv” has no effect on the Policy ¶ 4(a)(i) confusingly similar analysis, supported by past panel decisions that disregarded the attached ccTLD, such as World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) and Microsoft Corp. v. Zanoni, FA 1284568 (Nat. Arb. Forum Oct. 28, 2009). Moreover, the fact that the ccTLD chosen by the Respondent to register its domain name is “.tv” which suggests, as the Respondent himself asserts, that the resolving website would provide a form of television, creates, the opinion of the Panel more confusion in the mind of the average internet consumer as to the Complainant’s trademarks and the disputed domain name. The Panel holds, therefore, that Respondent’s <acorn.tv> domain name is confusingly similar to Complainant’s ACORNMEDIA mark pursuant to Policy ¶ 4(a)(i).
The Panel considers that the first element of the Policy has been proven by the Complainant.
The 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 makes no allegations concerning whether Respondent is commonly known by the <acorn.tv> domain name. Complainant does assert, however, that Respondent is not authorized to use the ACORNMEDIA mark and is not a licensee of Complainant. The Panel also finds that the WHOIS information for the disputed domain name, identifying the registrant as “Lawrence Magen,” shows no connection with the disputed domain name. Based on this evidence, the Panel determines that Respondent is not commonly known by the disputed domain name and consequently lacks rights and legitimate interests. The decisions in M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) and Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) would lend support to such a finding because they both find a respondent not commonly known by a disputed domain names based on the WHOIS information and other available information in the record.
According to Complainant, Respondent’s website at the <acorn.tv> domain name distributes video programming over the Internet and offers products, such as watches, for sale. Complainant argues that, as it has also been selling video recordings and other goods, including watches, under its mark since 2001, Respondent’s activities infringe on Complainant’s rights in the mark. Due to the competition and potential confusion, Complainant alleges that Respondent’s use of the <acorn.tv> domain name does not satisfy Policy ¶ 4(c)(i) as a bona fide offering of goods or services or Policy ¶ 4(c)(iii) as a legitimate noncommercial or fair use.
In response, the Respondent argues that it has rights and legitimate interests in the <acorn.tv> domain name as it represents a legitimate business concept that he has created and developed since the early 2000s. Respondent even provides an affidavit describing his involvement with and plans for the Acorn TV business and <acorn.tv> domain name. He asserts that the business concept for Acorn TV involves creating themed video content for the Internet targeted at an upscale affluent audience. Respondent explains that his idea for the name “acorn” came from a saying of his father: “From small acorns, giant oak trees grow.” Respondent contends that he has used this phrase on his website, business cards, and other business materials since 2005. Respondent alleges that he chose the business name “Acorn TV” in memory of his father and to refer to his intention to stream video on the web. He asserts that he specifically chose the <acorn.tv> domain name with the “.tv” ccTLD because of its relevance to “TV” and its suggestion that the resolving website would provide a form of Internet television. Respondent contends, that when he decided to create his business project, he had never heard of Complainant. He argues that he started creating a written business plan for Acorn TV in 2005 and continued to develop that plan through 2006. In January of 2007, he asserts that he officially organized the business as a Delaware LLC and provides evidence of that organization. As further evidence for the legitimacy of the business, Respondent claims that he has had a checking account in the name of Acorn TV, LLC since at least May 5, 2007 and that he has been involved with the project for six years now. Considering the Respondent’s allegation, the Panel notices that, the business concept birth under the disputed domain name has not arisen before 2005 and that the registration of the disputed domain name as such considered that ccTLD “.tv” suggests that the resolving website would provide a form of television. Having considered these assertions and the fact that the disputed domain name is confusingly similar with the Complainant’s trademarks together with the use of the disputed domain name to sale same types of goods and services with those of the Complainant, cannot be considered in the opinion of the Panel bona fide offering of goods.
The Panel finds accordingly. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
The Panel considers that the second element of the Policy has been proven by the Complainant.
Complainant additionally asserts that its ACORNMEDIA mark has been used in commerce since 1999 and registered with the USPTO since 2003. Complainant argues that its registered mark thus serves as constructive notice of Complainant’s rights in the mark. While constructive knowledge has not generally been held sufficient to support a finding of bad faith, it is the opinion of this Panel, as it stated in other UDRP decisions (see The Office Club,Inc. v. Razvan [P.F.] FA 1381128 (Nat. Arb. Forum, May 11, 2011)) that, in light of existing domain name registration regulations and the body of Policy-based administrative decisions, before registration of a domain name there exists a reasonable due diligence obligation of the registrant to check whether the domain name to be registered infringes a third party’s trademark rights. See Kabushiki Kaisha ASICS v. SC Gaticonstruct, DRO2008-0010 (WIPO, Sept. 10, 2008). In this case, the exercise of such due diligence would have revealed the existence of the Complainant’s trademarks and the potential for infringement of such trademarks rights by registering a domain name comprising such trademark. The facts as presented and statements of both parties supports more likely a finding on the existence of actual knowledge of the Complainant’s trademarks by the Respondent at the time of the registration of the disputed domain name.
Complainant argues that Respondent’s use of the <acorn.tv> domain name competes with Complainant because both Respondent and Complainant offer video programming or recordings and sell watches, among other things. The Panel finds that Respondent’s offering of the same types of goods and services under Complainant’s mark disrupts Complainant’s business by diverting potential customers and competing with Complainant. The Panel holds that these activities signal Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also 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).”).
Complainant argues that Respondent registered the <acorn.tv> domain name specifically to take unfair advantage of the goodwill associated with Complainant’s mark. Complainant argues that as its ACORNMEDIA brand is known for its media programming and specialty goods, including watches, Respondent uses the mark in its domain name to attract Internet users to its own website offering similar products and services. Complainant asserts that Respondent aims to draw in Internet users by creating confusion in order to increase its own commercial gain through the website resolving from the <acorn.tv> domain name. Complainant accordingly contends that a domain name that knowingly infringes on the trademark of another for commercial gain cannot be legitimate and demonstrates bad faith. The Panel agrees with Complainant and concludes that Respondent’s activities in connection with the <acorn.tv> domain name reveal bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Therefore, the Panel finds that the last element of the Policy had been proven by the Complainant.
Doctrine of Laches
Regarding the doctrine of laches invoked by the Respondent in his defense, the Panel finds that the said doctrine does not apply as a defense, and correspondingly chooses to disregard Respondent’s assertions. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <acorn.tv> domain name be TRANSFERRED from Respondent to Complainant.
Beatrice Onica Jarka Panelist
Dated: September 9, 2011
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