Intermark Media, Inc. v. Wang Logic Corp.
Claim Number: FA0212000139660
PARTIES
Complainant is Intermark Media, Inc., Massapequa, NY, USA (“Complainant”) represented by Todd A. Green, of Turner Green Afrasiabi & Arledge LLP. Respondent is Wang Logic Corp., Karachi, PAKISTAN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freedebtsconsolidation.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 26, 2002; the Forum received a hard copy of the Complaint on December 30, 2002.
On January 6, 2003, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the Forum that the domain name <freedebtsconsolidation.com> is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 January 6, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 27, 2003, by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@freedebtsconsolidation.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On February 6, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name registered by Respondent, <freedebtsconsolidation.com>, is confusingly similar to Complainant’s FREEDEBTCONSOLIDATION mark.
2. Respondent has no rights to or legitimate interests in the <freedebtsconsolidation.com> domain name.
3. Respondent registered and used the <freedebtsconsolidation.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is in the business of providing debt management services. Complainant claims to have offered its services since May of 1999 under the FREEDEBTCONSOLIDATION mark. Complainant offers its services to the consuming public through its <freedebtconsolidation.com> website.
In 2002, Complainant urges that it spent more than $6 million to advertise and to promote its FREEDEBTCONSOLIDATION services. Complainant notes that it was the fourth largest advertiser on the Internet in 2002, according to Media Metrics, an online audience measurement service. Complainant also runs banner advertisements throughout AOL, MSN and Yahoo!
Respondent registered the <freedebtsconsolidation.com> domain name on January 6, 2002. Respondent has not actively used the domain name. The <freedebtsconsolidation.com> domain name resolves to a website that purports to be the future website of <freedebtsconsolidation.com>.
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."
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.
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
urged in this proceeding that it has an interest in the FREEDEBTCONSOLIDATION
mark based on regular use of the mark in e-commerce to promote its debt relief
services. Complainant claims that the
first date of such use of the FREEDEBTCONSOLIDATION mark was May of 1999. Complainant also has asserted that it has
made a substantial financial investment ($6 million in 2002) in the
FREEDEBTCONSOLIDATION mark in order to strengthen its marketing presence on the
Internet. Complainant concedes that the
FREEDEBTCONSOLIDATION mark is descriptive; but at the same time Complainant
contends that its financial commitment in direct association with the mark and
the mark’s significant Internet presence has helped the mark acquire secondary
meaning. These assertions are self-supporting
and are not substantiated by evidence.
To raise
a claim against another party that would support transfer of a domain name
registration, Complainant must demonstrate interests in a mark that predate the
domain name registration. A finding to
the contrary would obviate the intention of the Policy, which was prescribed to
protect infringement of existing trademark rights through identical or
confusingly similar domain name registration.
See Phoenix Mortgage Corp. v. Tom Toggas, D2001-0101 (WIPO
March 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily implies that the
Complainant’s rights predate the Respondent’s registration. . .of the domain
name”); see also Ezcommerce Global Solutions, Inc. v. Alphabase Interactive,
D2002-0943 (WIPO Nov. 21, 2002) (allowing a junior trademark user to challenge
a domain name registration, which predates Complainant’s trademark rights, is
“obviously contrary to the intent of the Policy and to trademark law
generally”).
Respondent
registered the <freedebtsconsolidation.com> domain name on January
6, 2002. Complainant’s unsubstantiated
assertion of secondary meaning is supported by claims of financial commitment
and Internet recognition in the year 2002.
Nothing in the record supports a finding of interests by Complainant in
the FREEDEBTCONSOLIDATION mark prior to 2002, including Complainant’s bald
assertion of its first use in May of 1999.
The Panel therefore finds that no proof establishes that secondary
meaning accrued prior to Respondent’s registration of the subject domain name
on January 6, 2002. As a result, the
Panel finds that any interest that Complainant may have in the
FREEDEBTCONSOLIDATION mark does not predate Respondent’s domain name
registration, and Policy ¶ 4(a)(i) has not been satisfied. See Bus. Architecture Group, Inc. v Reflex
Publishing,
FA 97051 (Nat. Arb. Forum June 5, 2001) (Complainant did not adequately
demonstrate common law rights that predate the domain name registration).
Having concluded that Complainant did not satisfy the requirement of Policy ¶ 4(a)(i) to show prior rights to or interests in the mark, no further analysis of the Policy need be undertaken because Complainant failed to satisfy one of the three required elements of Complainant’s burden of proof. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
Having failed to establish Policy ¶ 4(a)(i) the Panel determines that the Complaint should be DISMISSED. Therefore, the requested relief shall be DENIED.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 19, 2003.
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