Inter123 Corporation v. Lawrence darwish / urbbana
Claim Number: FA1405001557370
Complainant is Inter123 Corporation (“Complainant”), represented by Lance C. Venable of Venable, Campillo, Logan & Meaney, P.C., Arizona, USA. Respondent is Lawrence darwish / urbbana (“Respondent”), represented by David D. Lin of Lewis & Lin LLC, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is <mobile.co>, registered with INSTRA CORPORATION PTY LTD.
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.
Honorable John J. Upchurch
Debrett Gordon Lyons
Fernando Triana
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 2, 2014; the National Arbitration Forum received payment on May 2, 2014.
On May 8, 2014, the Registrar confirmed by e-mail to the National Arbitration Forum that the disputed domain name is registered with it and that Respondent is the current registrant of the name. The Registrar verified that Respondent is bound by its 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 May 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 2014 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@mobile.co. Also on May 14, 2014, 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 June 3, 2014.
Both parties made Additional Submissions in a timely manner compliant with the Forum’s Supplemental Rule 7.
On June 3, 2014, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable John J. Upchurch (Ret.) (chair), Debrett Gordon Lyons and Fernando Triana as the Administrative Panel (the “Panel”).
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is in the business of investing in technological ventures and in March 2013 launched the website at <mobile.pro> to provide an online community for mobile communications industry professionals.
2. Complainant alleges that this new business is a substantial undertaking and has approximately 100 shareholders and approximately USD4 million in funding.
3. Complainant has filed several, pending, trademark applications with the United States Patent and Trademark office (“USPTO”) as follows:
a. MOBILE.CO (86/236,426 filed March 30, 2014)
b. MOBILE.PRO (85/933,143 filed March 15, 2013)
c. MOVIL.PRO (85/890,416 filed March 29, 2013)
d. MOVIL.CO (86/238,065 filed April 1, 2014)
4. Complainant, as part of its business plan, intends to obtain Internet domain names it considered highly valuable for its current and future business dealings.
5. The disputed domain name would be extremely valuable to Complainant, especially in light of its Hispanic-related ties.
6. In early 2014, Complainant learned that the disputed domain name was for sale through the domain name auction site at Sedo.com.
7. A third party, Chadi Ghaith, had registered the disputed domain name and it was hosted on GoDaddy LLC’s server.
8. Complainant negotiated with Ghaith for purchase of the disputed domain name and reached an agreed price of $59,000. Ghaith then sent Complainant a “Transfer Overview” page. The purchase agreement between the parties stated that, “in the event a breach of this agreement results in a failed attempt to transfer control of the purchase object [<mobile.co>] from seller to buyer, the aggrieved party shall have the right to demand specific performance in lieu of monetary damages.”
9. Once Complainant’s identity was revealed, Ghaith refused to honour the agreement and did not transfer the disputed domain name to Complainant.
10. When Ghaith was informed of the suit Complainant brought in the District Court of Arizona, Ghaith attempted to renegotiate sale of the domain name for “not below a $150k reserve.”
11. Prior to these events the domain name had not been used but now Ghaith began offering services that directly competed with Complainant.
12. Ghaith then transferred the domain name to Respondent, a personal friend.
13. The disputed domain name is identical or confusingly similar to a service mark in which Complainant has rights.
14. Respondent has no rights or legitimate interests in the domain name.
15. Respondent has never been commonly known by the disputed domain name.
16. Respondent acquired the disputed domain name for the purpose of furthering the prior owner’s fraudulent scheme to extort money from Complainant.
17. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
18. Respondent registered and is using the disputed domain name in bad faith.
19. Ghaith and Respondent acquired and registered the disputed domain name for the purposes of engaging in a deliberate and fraudulent scheme to extort substantial sums of money from Complainant by trying to sell the disputed domain name.
B. Respondent
1. Complainant’s allegations do not pertain to any conduct by Respondent apart from his purchase of the domain name from the prior registrant.
2. Complainant asserts a breach of contract claim that is inappropriate for resolution under the UDRP process.
3. There are pending legal proceedings that involve the same issue presented in these Administrative Proceeedings.
4. Complainant has failed to satisfy the elements set forth in the UDRP 4(a) because it does not have trademark rights in the descriptive term “Mobile.”
5. Complainant should be held to have engaged in reverse domain name hijacking.
C. Complainant’s Additional Submissions:
1. Pending litigation does not require dismissal; rather, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.
2. It is a fair and reasonable assumption that Respondent has been inextricably involved from the moment Ghaith transferred the disputed domain name.
3. Complainant has common law rights in the MOBILE.CO, MOBILE.PRO, MOVIL.CO and MOVIL.PRO trademarks.
D. Respondent’s Additional Submissions:
1. There is no possibility that the USPTO will register Complainant’s trademarks since the word “Mobile” (and its Spanish language equivalent, “Movil”) merely describe Complainant’s business and Complainant has not provided any evidence of use proving secondary meaning.
The factual findings pertinent to the decision in this case are that:
1. There is a serious associated dispute already before the Courts
2. Respondent is not a party to that action
3. Complainant has no trademark rights by reason of registration alone
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Complainant contends to be the owner of the trademarks MOBILE.CO, MOBILE.PRO, MOVIL.CO and MOVIL.PRO in the United States of America, since their first use in March, 2013. Those trademarks are currently pending registration before the USPTO.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”). Equally, it is the consensus opinion of panelists that a pending application for registration, of itself, gives no such trademark rights. Accordingly, in this case, Complainant must establish unregistered or common law trademark rights if it is to succeed with its Complaint.
In S.N.C. Jesta Fontainebleau v. Po Ser, D2009-1394 (WIPO November 21, 2009), the Panel stated that:
[F]or the purpose of assessing what might constitute an equivalent to a common law trade mark right, it is important to understand what a common law trade mark is. In this context it is a name or sign, the use of which (or a confusingly similar variant of which) a person can restrain by way of a passing off action. For the purposes of a passing off action the plaintiff needs to be able to prove that (a) it has a reputation and goodwill in respect of the name or sign in question, (b) the defendant is using it or a confusingly similar variant of it to cause deception in the marketplace and (c) the plaintiff is suffering or is likely to suffer consequential damage.
In other words, in a common law jurisdiction, if a third party set up in competition with the Complainant under the same or a confusingly similar name, the Complainant could succeed in a passing off action and stop the activity complained of if it were able to establish those three elements.
Therefore, to determine whether or not Complainant owns unregistered trademark rights the Panel must, as a threshold matter, be able to identify a reputation in respect of the name or sign in question. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, available at http://www.wipo.int/amc/en/domains/search/overview2.0/1.9, asks at paragraph 1.7: “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?” In answer, the consensus view of UDRP panelists is that:
The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required … Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.
It should be added that a corollary to these principles is that the lower the level of inherent distinctiveness of the alleged trademark, the higher will be the bar to proof of secondary meaning.
In this case Complainant essentially lays claim to rights in the term MOBILE (or its Spanish language equivalent) either with or without the identifiers “.CO” or “.PRO”, it not being entirely clear from the submissions.
In any event nothing turns on that point since UDRP panelists have long held that the addition of a gTLD or ccTLD to a trademark adds nothing of distinguishing value over and above the trademark. Many panelists, for example, will for the purposes of paragraph 4(a)(i) treat TRADEMARK. COM as “legally identical” to TRADEMARK.
Moreover, this Panel is aware that the USPTO has a similar attitude to the registrability of trademarks which reproduce a domain name. In particular, if the USPTO regards a trademark as prima facie descriptive and unregistrable, then the addition to that trademark of, for example, “.co” or “.pro” will do little if anything to improve the stakes.
In this case Complainant’s trademark applications remain pending and the Panel is told that there is resistance to their registration for reason of lack of distinctive character. Panel need not assume the job of the USPTO examiner since from the Complaint itself Panel is told the Complainant launched the website at <mobile.pro> to provide an online community for mobile communications industry professionals. In other words, the name was chosen because it was entirely apt to describe the character of the services. On this basis Complainant faces the additional hurdle of showing secondary meaning in a descriptive term other traders are likely to desire to use for their similar services.
The evidence does not advance Complainant’s position. Panel is told that Complainant’s Chairman and Chief Executive Officer, Mr. Jeffrey Peterson, is highly recognized for work for the Hispanic community in the United States of America and that the business has approximately USD 4 million in funding and more than 100 shareholders. Panel is told in broad terms that the promotion of the business under the name MOBILE or MOBILE.PRO is via the Internet and mainly directed to the Hispanic community.
In spite of the great many people who primarily speak Spanish or who would regard themselves as part of the Hispanic community, this information does very little to assist the Panel to understand the reach and recognition of the trademark as an indicator of Complainant’s services and not as a reference to mobile communications services generally.
Finally, it is noted that this enterprise only gained momentum in March 2013. Even allowing for the speed at which online businesses can now promote themselves to a broad audience, the fact remains that 15 months is a very short timeframe for any directly descriptive term to rise to a level where it is connected in the minds of the public, or even a section of the public, with one business undertaking.
For these reasons, this Panel is not able to conclude that Complainant has common law trademark rights and accordingly Panel finds that Complainant has failed to establish the first limb of the Policy.
No findings required.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); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006).
Again, no findings required.
Having failed to establish one of the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the disputed domain name <mobile.co> remain with Respondent.
Honorable John J. Upchurch (Ret.)
Chair
Debrett Gordon Lyons Fernando Triana
Panelist Panelist
Dated: July 10, 2014
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