David Tobin v. ZeitGeist Corp
Claim Number: FA1112001421947
Complainant is Mr. David Tobin (“Complainant”), California, USA, representing himself. Respondent is ZeitGeist Corp (“Respondent”), represented by Dr. John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <audiojack.com> (“the Domain Name”), registered with Easydns Technologies, 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.
Sandra J. Franklin, the Hon. Daniel B. Banks and Alan L. Limbury, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 29, 2011. The National Arbitration Forum received payment on December 29, 2011.
On January 2, 2012, Easydns Technologies, Inc. confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with Easydns Technologies, Inc. and that Respondent is the current registrant of the name. Easydns Technologies, Inc. has verified that Respondent is bound by the Easydns Technologies, 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 January 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2012 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@audiojack.com. Also on January 6, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, and 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 January 27, 2012.
On February 2, 2012, pursuant to Respondent's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Sandra J. Franklin, the Hon. Daniel B. Banks and Alan L. Limbury as Panelists.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the proprietor of United States federally registered trademark No. 3,980,719 AUDIOJACK, for digital media, namely audio files downloadable in nature and also recorded on CDs featuring sound effects; digital music downloadable from the Internet; downloadable MP3 files and MP3 recordings featuring sound effects, in International class 9. The mark was registered on June 21, 2011 upon application filed on August 16, 2010, with a claimed first use in commerce on November 12, 2008.
Before applying to register the trademark, Complainant discovered in 2007 that the corresponding Domain Name was taken. After contacting the former owner, Complainant awaited the expiry of the Domain Name registration and then found that it had been acquired by Respondent, a company that buys domains for the sole purpose of inflating the cost and selling to the highest bidder.
The Domain Name currently resolves to a website at <www.enjoybetter.com> that has nothing to do with Complainant’s trademarked products. Respondent sought from Complainant between $20,000 and $40,000 for the Domain Name. Complainant offered $8,000 and told Respondent he wanted it for his son, in an endeavour to obtain a lower price, but Respondent figured out who Complainant is.
Complainant seeks transfer to himself of the Domain Name, saying it is identical or confusingly similar to his trademark and that Respondent has no rights or legitimate interest in the Domain Name, which was registered and is being used in bad faith.
B. Respondent
“Audio jack” is a generic term for a common item of electronic equipment used to establish connections among audio equipment. Complainant’s trademark is not for audio jacks.
Complainant has failed to establish a lack of legitimate rights and interests in the Domain Name. Respondent is indeed directing traffic to a general commerce site using the name of an item of general commerce which has nothing to do with Complainant’s trademark usage of the term in question. Absent a violation of Complainant’s limited rights, there is nothing unlawful, illegitimate or wrong with the use of generic terms for that purpose. Since the Domain Name corresponds to the generic name of a common everyday product used by millions, Respondent’s use of the name to attract general consumer traffic is perfectly legitimate and does not trade on Complainant’s reputation.
As to bad faith, Complainant has provided no evidence of any significant notoriety or reputation of which Respondent would have reason to be aware, and Respondent denies any knowledge of Complainant until having been contacted by Complainant.
Complainant’s principal argument appears to be an attempt to establish that the
Domain Name was registered, as stated in the Policy:
“primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.”
This Policy example of bad faith registration is directed to whether the registration was undertaken primarily for the purpose of exploiting a trade or service mark—i.e. with an intention arising from knowledge of its value as a mark. The pre-dispute correspondence spells out in no uncertain terms that Respondent believes generic terms like “audio jack” have substantial value because they are generic terms.
There is no basis for Complainant to claim that the $8,000 he offered to purchase the Domain Name is a “good faith price” and that the $20,000 sought by Respondent is a “bad faith price”.
Complainant cannot seriously claim that Respondent’s registration and use of the Domain Name disrupts Complainant’s business. Complainant admits that when he chose to use the term “audiojack” for his sound effects recordings, the Domain Name was already registered and in use by another party. Complainant, knowing this fact full well, was not at all bothered by selecting a mark while knowing he might never gain control of the Domain Name, and Complainant has not been disturbed or disrupted by those circumstances for years. The mere fact that Respondent subsequently acquired the Domain Name upon its lapse of registration does not render Complainant’s lack of ownership of the Domain Name any more “confusing” or diversionary than it has always been since Complainant’s decision to select his mark. That is, and has always been, a circumstance of Complainant’s own making.
Respondent’s intentions in obtaining the Domain Name are utterly clear since Respondent had no reason to believe it signified anything other than a common electronic product.
In approaching Respondent to obtain a domain name “for my son”, Complainant never mentioned a trade or service mark. He offered $8,000 as fair value for a generic term. Having been frustrated by the negotiation, he now seeks to portray Respondent as engaged in a nefarious scheme, despite having known that another party had been using the Domain Name for years. Merely coveting a domain name on Complainant’s part does not render Respondent to have acted in bad faith in its registration and use of the Domain Name for its generic traffic value, nor does it render Respondent to have been seeking to exploit a trade or service mark by recognizing that the names of generic products have substantial commercial value.
Complainant has failed to establish all the elements entitling him to relief.
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.
The Domain Name is clearly identical to Complainant’s registered AUDIOJACK trademark, the suffix “.com” being inconsequential.
Complainant has established this element of his case.
”Audio jack” is a common descriptive term. There is no evidence before the Panel that Respondent has used or attempted to use the Domain Name in relation to goods for which Complainant’s mark is registered or is otherwise seeking to capitalize on the goodwill created by the trademark owner.
Complainant has failed to establish this element of his case.
There is no evidence before the Panel from which the conclusion may fairly be drawn that Respondent had Complainant or his mark in mind when registering the Domain Name. The Domain Name has not been used in relation to goods for which the mark is registered. Making money from common descriptive domain names in ways which do not seek to trade off the reputation attaching to the trademarks of others is permissible and “the mere pricing of the Domain Name at a very high level cannot in itself indicate bad faith at the time of registration”. See Camper, S.L. v. Detlev Kasten, D2005-0056 (WIPO Mar. 3, 2005).
In choosing a common descriptive term as his trademark, knowing that the Domain Name was taken, Complainant has only himself to blame for his present predicament.
Complainant has failed to establish this element of his case.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <audiojack.com> Domain Name REMAIN WITH Respondent.
Alan L. Limbury
Presiding Panelist
Sandra J. Franklin The Hon. Daniel B. Banks
Panelist Panelist
Dated: February 13, 2012.
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