Philadelphia Media Network (Digital), LLC v. Gametime Media, LLC
Claim Number: FA1302001485861
Complainant is Philadelphia Media Network (Digital), LLC (“Complainant”), represented by Nancy Rubner Frandsen, Pennsylvania, USA. Respondent is Gametime Media, LLC (“Respondent”), represented by Scott Good of Law Offices of Scott J. Good, LLC, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <philly2philly.com> (the “Disputed Domain Name”), registered with GoDaddy.com, LLC.
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.
Lewis Maltby, the Honorable Nelson A. Diaz, and Michael A. Albert (chair) as Panelists.
Complainant submitted a complaint to the National Arbitration Forum electronically on February 19, 2013; the National Arbitration Forum received payment on February 19, 2013. On February 20, 2013, the National Arbitration Forum sent Complainant a Deficiency Letter, indicating that Complainant had five calendar days to amend its complaint to correct the deficiencies. On February 25, 2012, Complainant submitted an amended complaint (the “Complaint”).
On February 20, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <philly2philly.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 February 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 18, 2013 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@philly2philly.com. Also on February 26, 2013, 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, 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 March 18, 2013.
Complainant submitted an Additional Submission on March 22, 2013, which was determined to be compliant.
Respondent submitted an Additional Submission on March 27, 2013, which was determined to be compliant.
On April 9, 2013, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Michael A. Albert as Panel Chair and Lewis Maltby and the Honorable Nelson A. Diaz as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the domain name <philly.com> in its business to provide “general interest information through the Internet, including news, sports, entertainment, culture and arts, recreation and leisure, and games.” Complainant also provides links to other information via a web portal. Complainant owns the PHILLY.COM trademark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,722,761 registered June 3, 2003). See Complainant’s Exhibit A. Complainant owns the newspapers The Philadelphia Inquirer and the Philadelphia Daily News, content from both of which is published at the <philly.com> website. Complainant’s website and mark are well-recognized due to the large circulation of its newspapers in the United States.
Respondent registered the <philly2philly.com> domain name on May 3, 2008, and uses the domain name to display links to news stories and commentary, including rotating stories and photographs that feature famous sports figures, adoptable pets, current events, and videos. Complainant alleges that Respondent’s use of the Disputed Domain Name causes consumer confusion between the resolving website and Complainant’s website found at <philly.com>. Complainant further alleges that the <philly2philly.com> domain name is confusingly similar to Complainant’s PHILLY.COM mark and contends that Respondent fails to establish rights or legitimate interests in the <philly2philly.com> domain name, as Respondent is known by a name other than the Disputed Domain Name, Respondent is not authorized by Complainant to use the PHILLY.COM mark, and Respondent advertises at the resolving website, demonstrating that Respondent makes a commercial gain from its use of the domain name. Complainant also alleges that Respondent’s bad faith registration and use is apparent from its attempt to make a commercial gain by confusing visitors to the resolving website and that Respondent was on notice of Complainant’s PHILLY.COM mark at the time it registered the Disputed Domain Name.
B. Respondent
Respondent contends that Complainant attempts to reverse hijack the <philly2philly.com> domain by using its larger size and greater resources. Respondent denies damaging Complainant’s reputation or infringing upon its mark, and contends that no evidence supporting such an argument exists. Respondent also argues that its use of the resolving website does not lead to consumer confusion and that the <philly2philly.com> domain name is not confusingly similar to Complainant’s PHILLY.COM mark, as the domain name uses geographic terms that Complainant cannot exclusively claim. Respondent asserts that it did not register and does not use the <philly2philly.com> domain name in bad faith.
Respondent operates a “user-generated content” website that offers articles to regional users based on the interest of people in the area, and its goal is to “present the views and opinions regarding Philadelphia by Philadelphians,” from which the name <philly2philly.com> is derived. Respondent owns a trademark registration for the PHILLY2PHILLY mark with the USPTO (Reg. No. 4,248,540 registered November 27, 2012). See Respondent’s Exhibit 3. Respondent’s trademark registration covers services that include providing a website that features business information, news and information on a variety of topics, classified advertising, hyperlinks to other websites, community resources, and other similar services.
Respondent further alleges that Complainant was aware of Respondent’s mark and did not oppose its registration at the time, yet is currently pursuing a cancellation against Respondent’s mark and that Complainant brought the present action in bad faith. Respondent contends that Complainant cannot claim that Respondent tarnishes its reputation when Complainant itself posts stories and photographs similar to those posted on Respondent’s website.
A. Additional Submissions
1. Complainant contends the following in its Additional Submission:
Complainant insists that Respondent’s <philly2philly.com> domain name is indeed confusingly similar to its mark due to the strong secondary meaning associated with its mark and the newspapers it represents and that the existence of Respondent’s registered trademark incorporating the word “philly” is irrelevant to the domain name’s confusing similarity to Complainant’s mark. Complainant further argues that Respondent lacks rights or legitimate interests in the Disputed Domain Name because it offers services for which Complainant secured rights in its PHILLY.COM mark, and acts as competition. Complainant claims that Respondent is not commonly known by the <philly2philly.com> domain name and has no evidence to demonstrate otherwise, that Respondent intentionally attempts to attract Internet users to its website for commercial gain, which clearly demonstrates bad faith, and that Respondent’s constructive notice of Complainant’s mark prior to registering the Disputed Domain Name is sufficient to show Respondent’s bad faith.
Complainant denies engaging in Reverse Domain Name Hijacking, stating that it brought the action based on its good-faith belief that the <philly2philly.com> domain name infringed on its PHILLY.COM mark, that Respondent’s rights in its claimed PHILLY2PHILLY mark were invalid, and that the domain name was registered to attract users who would otherwise have visited Complainant’s website.
2. Respondent asserts the following in its Additional Submission:
Respondent contends that Complainant’s allegations in its Additional Submission reiterate Complainant’s previous unfounded assertions. Respondent argues that Complainant’s delay in filing its complaint is evidence that Respondent registered the <philly2philly.com> domain name in good faith, since Complainant would have reacted sooner to a bad faith registration. Respondent also refutes Complainant’s contention that Respondent’s constructive notice of the mark establishes Respondent’s bad faith registration of the Disputed Domain Name, arguing that even actual knowledge of the PHILLY.COM mark would not by itself support a finding of bad faith, since there is no evidence that Respondent targeted the Philly.com site. Respondent further develops its Reverse Domain Name Hijacking argument, pressing the issue of whether Complainant could have a good faith basis for the Complaint without evidence of essential elements of its case, specifically challenging Complainant’s lack of evidence of actual confusion.
The Panel finds:
1. Complainant owns the <philly.com> domain and uses it for commercial purposes, including the dissemination of news articles published in its newspapers and the generation of advertising revenue.
2. Complainant owns and makes sufficient use of the PHILLY.COM trademark.
3. Respondent owns the <philly2philly.com> domain and uses it for commercial purposes, including the dissemination of user-generated content and the generation of advertising revenue.
4. Respondent owns and makes sufficient use of the PHILLY2PHILLY.COM trademark.
5. Respondent published a book titled “A Snowball’s Chance” that was featured on Complainant’s web site, referring to the authors as “a clutch of sincere, young bloggers (Philly2Philly)” and captioning an accompanying photo with the explanation, “Philly fans set the record straight about Philly fans.”
6. “Philly” is the widely-used nickname for the City of Philadelphia, Pennsylvania.
7. Numerous domain names incorporating the PHILLY.COM mark are in use, including <visitphilly.com>, <cwphilly.com>, <praisephilly.com>, and <hot1079philly.com>.
8. Complainant did not oppose the registration of Respondent’s PHILLY2PHILLY.COM trademark, but subsequently initiated a post-grant challenge to the mark.
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 has provided sufficient evidence that it is the owner of a valid U.S. Registration for, and makes substantial use of, the PHILLY.COM trademark.
The Disputed Domain Name, however, is not identical to the PHILLY.COM trademark. Therefore, the first issue is whether the Disputed Domain Name and the PHILLY.COM trademark are confusingly similar.
The Disputed Domain Name combines three elements: (1) the Complainant’s PHILLY.COM trademark preceded by (2) the generic geographical designation “Philly” (which is also part of the mark) and (3) the numeral “2.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “philly2philly”), as it is well established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006 0561. The addition of the geographic designation “philly” does not extinguish the similarity between the second-level portion of the Disputed Domain Name “philly2philly” and the PHILLY.COM trademark. Alstom v. Yulei, WIPO Case No. D2007-0424 (adding “-China” to a trademark failed to distinguish it, as geographic designations are generally considered generic terms and adding a generic term is insufficient to distinguish an otherwise identical trademark). Nor does the addition of the numeral “2” distinguish it. Microgaming Software Systems Limited v. WhoisGuard, WIPO Case. No. D2008-0613 (adding the numeral “7” before the domain name <microgaming.com> to make <7microgaming.com> did not add distinctive matter that would distinguish it from the claimant’s MICROGAMING mark).
However, while the individual elements of the Disputed Domain Name do not distinguish it from the Complainant’s mark, it is possible for the collective effect of such elements to be transformative, distinguishing a mark in combination where they do not do so individually. Particularly in light of the narrow protection of the underlying mark, which is simply a widely-used geographic designation (“Philly”) with a generic top-level domain extension (“.com”), this may be such a case where a domain’s added elements are not individually sufficiently distinctive to avoid confusion, but are sufficient when taken together. A strong argument can be made that a mark consisting only of a generic geographic designation and a generic top-level domain extension may be distinguished by the addition of another geographic designation or a numeral, or (as here) both, particularly where the addition has a logical meaning that will serve to avoid confusion with the mark in the minds of the public. In this case, such a logical meaning presents itself: “Philly2Philly” may be read phonetically as “Philly to Philly,” suggesting a conversation between Philadelphia residents, which appears from the record to be the domain name’s intended meaning.
The Panel finds, on this record, that whether the public would find the Disputed Domain Name to be confusingly similar to the PHILLY.COM mark is a close question. On the one hand, the mark is a component of the Disputed Domain Name. On the other hand, the addition of “Philly2” offers meaning that may be sufficient to distinguish such a weak mark. We will assume for present purposes that the first 4(a) element is satisfied, since – as will soon become apparent – this determination will have no bearing on the outcome of this decision.
Respondent owns the PHILLY2PHILLY.COM trademark and has been using it to operate a user-generated content (blogging) web site. Complainant’s registration of the PHILLY.COM mark does not give it license to monopolize domain names that incorporate the generic term “Philly,” which is a commonly-used nickname for the City of Philadelphia. Because the PHILLY.COM mark incorporates only a generic geographic designation and a top-level domain name extension (“.com”), it is entitled to thin protection and must coexist with other legitimate uses of those two elements. Descriptive terms in general and geographic identifiers in particular may be registered as trademarks when they have become associated with a source of goods or services, thereby acquiring “secondary meaning.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769, 112 S.Ct. 2753, 2757 - 2758 (1992).[1] But such marks are only entitled to protection to the extent that consumers associate them with the source of products or services, such that even small variations on trademarks consisting of geographic designations may be unprotectable. See Vail Associates v. Vend-Tel-Co., 516 F.3d 853 (10th Cir. 2008) (finding that the phone number 1-800-SKI-VAIL, registered as a trademark by the defendant, did not infringe the plaintiff’s VAIL trademark).
As discussed above, the PHILLY2PHILLY.COM mark uses the numeral ”2” phonetically to indicate a conversation between Philadelphia residents (i.e. “Philly to Philly”). This meaningful variation is similar to the addition of “1-800-SKI-“ to the mark VAIL in Vail Associates, thereby distinguishing the Disputed Domain Name from the PHILLY.COM mark sufficiently for the Respondent to register <philly2philly.com>.
Since the PHILLY.COM mark is purely descriptive, it is entitled only to a narrow band of protection, such that it must coexist with other marks that share the “Philly” moniker. That it can do so is evidenced by the significant number of other domain names ending in “philly.com” currently in active use, including <visitphilly.com>, <cwphilly.com>, <praisephilly.com>, and <hot1079philly.com>.
Accordingly, Respondent has a legitimate interest in the Disputed Domain Name and has acted within its rights in registering the domain and using it for commercial purposes.
Having determined that Complainant failed to establish one of the required elements of Section 4(a), we are not required to go further to reach the conclusion that Complainant is not entitled to the Disputed Domain Name. However, for the sake of completeness, we will address the issue of bad faith.
Whether a domain name is registered and used in bad faith may be determined by evaluating four (non-exhaustive) factors set forth in paragraph 4(b) of the Policy: (i) circumstances indicating that the registrant has registered or acquired the domain name 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.
Complainant alleges the fourth factor, arguing that Respondent registered the Disputed Domain Name “in an attempt to attract for its own commercial gain Internet users by creating a likelihood of [confusion with] Complainant’s famous ‘PHILLY.COM’ mark” (Compl. at p. 11). However, since Complainant’s mark does not offer it such broad protection as to encompass the Disputed Domain Name, the premise of Complainant’s argument is undermined. Since respondent was within its rights to register a domain name making use of the “Philly” moniker (which itself is a geographic descriptor in the public domain), the registration of the domain to attract Internet traffic for commercial gain does not constitute evidence of bad faith any more than does Complainant’s own registration and commercial use of the <philly.com> domain name.
Nor has Complainant offered other substantial evidence regarding Respondent’s purported bad faith. While Internet users may mistakenly arrive at <philly2philly.com> in a search for Complainant, there is no indication that Respondent is attempting to take advantage of this mistake under Policy paragraph 4(b)(iv). See Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where the respondent has an active website that has been in use for two years and where there was no intent to cause confusion with the complainant’s website and business). Accordingly, the Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy paragraph 4(a)(iii). See Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Because the Panel finds that the Respondent has not violated any of the factors listed in Policy paragraph 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy paragraph 4(a)(iii), the Panel finds that Respondent has not registered or used the Domain Name in bad faith.
Respondent alleges Reverse Domain Name Hijacking (“RDNH”) on the part of Complainant. Paragraph 1 of the Rules explains that a finding of RDNH is appropriate where a complainant misuses the Policy in a “bad faith attempt to deprive a registered domain-name holder of a domain name.” However, Respondent’s argument for RDNH is predicated on the assumption that the Disputed Domain Name is not confusingly similar to Complainant’s PHILLY.COM mark. Having found that the Disputed Domain Name and asserted mark may in fact be confusingly similar, the Panel concludes that there is no basis for a finding of RDNH. However, even if the Panel had concluded definitively that the Disputed Domain Name is not confusingly similar to Complainant’s PHILLY.COM mark, there would have been more than sufficient basis for rejecting the proposed RDNH finding.
First, it is not necessary for the Panel to find actual confusing similarity for Complainant to have reasonably believed that such confusing similarity exists. Complainant’s PHILLY.COM mark is entirely contained within the Disputed Domain Name, which in and of itself is sufficient basis for the Complainant to be under the reasonable, good faith belief that the two were confusingly similar.
Second, Complainant has challenged (however belatedly) the registration of Respondent’s PHILLY2PHILLY.COM mark. This challenge serves as evidence of Complainant’s belief that Respondent’s mark is unregisterable.
Third, Respondent has failed to offer any evidence – beyond conclusory allegations – of bad faith on the part of Complainant. Respondent’s argument that Complainant’s lack of actual evidence of confusion shows Complainant’s bad faith is to no avail because “[t]he test of confusing similarity does not require proof of actual confusion (although that fact can assist a panel) but requires examination of the character of the terms under comparison.” Source Lake Holding Corporation v. Camp Pathfinder, LLC, FA 1015782 (Nat. Arb. Forum August 9, 2007) (emphasis supplied). Complainant could have put forward a winning case without offering any evidence of actual confusion. The lack of such evidence therefore cannot constitute evidence of bad faith.
For these reasons, the Panel finds that there is insufficient evidence of bad faith to arrive at a finding of RDNH.
Having established the absence of two of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <philly2philly.com> domain name REMAIN WITH Respondent.
It is further Ordered, for the reasons discussed above, that Respondent’s request for a finding of Reverse Domain Name Hijacking shall be DENIED.
Michael A. Albert, Panel Chair
__________________________________________________________________
Lewis Maltby, Panelist
__________________________________________________________________
Honorable Nelson A. Diaz, Panelist
Dated: April 22, 2013
[1] See also Robert Brauneis & Roger E. Schechter, Geographic Trademarks and the Protection of Competitor Communication, 96 TRADEMARK REP. 782, 783 (2006) (noting that “The traditional common-law approach has been to require the demonstration of secondary meaning for virtually all trademarks consisting of geographic terms,” but noting that some courts have recently deviated from this common law tradition.)
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