Broadband Voice, LLC v. Nilay N Patel
Claim Number: FA1409001582384
Complainant is Broadband Voice, LLC (“Complainant”), represented by Sean Ploen of Ploen Law Firm, PC, Minnesota, USA. Respondent is Nilay N Patel (“Respondent”), represented by Steven L. Rinehart, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <broadbandvoice.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that he 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2014; the National Arbitration Forum received payment on September 30, 2014.
On September 30, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <broadbandvoice.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 October 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 22, 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 firstname.lastname@example.org. Also on October 2, 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 October 21, 2014.
Complainant submitted a timely and compliant Additional Submission on October 28, 2014.
On October 28, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
On November 4, 2014, Respondent submitted its Supplemental Response.
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.
Complainant contends as follows:
Complainant owns common law trademark rights in the BROADBANDVOICE (or BROADBAND VOICE) mark. Complainant operates under the name “Broadband Voice, LLC” to provide voice over IP technology products and services for companies across the United States. Complainant has continuously used the BROADBANDVOICE mark in commerce since mid-2006. The <broadbandvoice.com> domain name is identical to the BROADBANDVOICE mark.
Respondent lacks rights or legitimate interests in the disputed domain name. Complainant has not authorized Respondent’s use of the BROADBANDVOICE mark. Further, Respondent holds no trademark rights in the name. Respondent is an officer of Netlink Voice LLC, a direct competitor of Complainant. Respondent acquired the disputed domain name after a former employee of Complainant assumed employment with Netlink, and likely disclosed the fact that Complainant was conducting confidential settlement negotiations to acquire the disputed domain name. The disputed domain name now resolves to Netlink’s own website, which competes with Complainant.
Respondent has attempted to disrupt Complainant’s business in violation of Policy ¶ 4(b)(iii). Further, Respondent has engaged in Policy ¶ 4(b)(iv) bad faith by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain name in an effort to commercially benefit from Complainant’s goodwill. Finally, Respondent registered the disputed domain name with knowledge of Complainant’s rights in the BROADBANDVOICE mark.
The disputed domain name was registered May 1, 2005, but Respondent acquired the domain name this year in bad faith.
Respondent contends as follows:
Complainant has no enforceable trademark rights. Complainant has provided insufficient evidence to establish secondary meaning in the mark. Complainant does not enjoy exclusive use of the mark. Tellingly, a third-party tried to register the BROADBANDVOICE mark with the USPTO in 2002, but the mark was denied because it was descriptive.
The terms “broadband” and “voice” comprising the <broadbandvoice.com> domain name are common and descriptive. Respondent is not using these terms for their value as a trademark, but instead for their attraction as common terms indicative of related services. The <broadbandvoice.com> domain name is being used in connection with a bona fide offering of goods or services as Respondent uses the disputed domain name to offer services described by the alleged mark. The domain name is merely descriptive of the services offered by both Complainant and Respondent.
Respondent requests a finding of reverse domain name hijacking arguing there is no plausible basis for the complaint.
Complainant’s Additional Submission
In its Additional Submission Complainant provides a second affidavit of its Vice-President of Marketing and Corporate Development stating that over $12 million has been earned through BROADBANDVOICE services. Complainant has over 1,100 customers in 40 US states. Complainant has promoted and marketed the BROADBANDVOICE services extensively. Consumers recognize the BROADBANDVOICE mark as an indicator of source for Complainant’s services. The use of the mark since 2006 has given this otherwise descriptive mark acquired distinctiveness and secondary meaning.
Respondent’s Additional Submission
In its Supplemental Response Respondent offers argument designed to impeach and/or show bias with regard to several of the Exhibits presented by Complainant in its Additional Submission. Respondent goes on to suggest inconsistency between Complainant’s claim that its mark contains no space between the terms Broadband and Voice and the actual use of the mark on Complainant’s website. Respondent also introduces evidence to show that Complainant’s purported trademark has extensive third-party use by showing examples of the descriptive uses of Broadband Voice.
Complainant’s purported trademark is composed of generic terms describing the scope of its business as well as other businesses.
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 holds no trademark registrations for the BROADBANDVOICE mark. However, it is well-settled that trademark registration is not a requirement of Policy ¶ 4(a)(i) so long as the complainant can show clear secondary meaning in the mark. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark). Here, Complainant claims common law trademark rights in the BROADBANDVOICE mark. The initial issue for the Panel under Policy ¶4(a)(i) is thus whether or not Complainant presents sufficient evidence of secondary meaning to demonstrate that Complainant enjoys common law trademark rights in the BROADBANDVOICE mark. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”).
In support of the BROADBANDVOICE mark having acquired secondary meaning, Complainant offers varied evidence of the type recognized to be relevant. The USPTO’s Trademark Manual of Examining Procedures (“TMEP”) and case law referenced therein sets out the categories of evidence which might be used to show that a mark identifies the source of relevant goods and/or services. See TMEP ¶ 1212 et seq. (http://www.uspto.gov/trademarks/resources/TMEP_archives.jsp October 2014). The probative value of this evidence depends on the nature of the mark and the particular related circumstances. In particularly, Complainant proffers evidence of its business name being BROADBAND VOICE, LLC, of its continued use of the BROADBAND VOICE mark since 2006, of the amount of advertising expenditures spend, of the nature of the advertisements, of affidavits from insiders of Complainant’s business, and finally six (6) letter declarations in form from various customers. This evidence is in part discussed below.
First, the use of Broadband Voice as corporate name is insufficient to show rights under the Policy. See also, Diversified Mortgage, Inc. v. World Financial Partners, FA 118308 (Nat. Arb. Forum Oct. 30, 2002) (finding that the Policy makes clear that its rules are intended only to protect trademarks, and not mere trade names).
Second, although the mark has been used since 2006, eight years of use is not particularly long and TMEP cites cases where 18 years and 16 years were respectively found inconsequential to show acquired distinctiveness. See TMEP at 1212.06(a). Nevertheless, it is perplexing that after using the mark for eight years Complainant, a sophisticated business, never bothered to apply for a trademark registration in the BROADBANDVOICE mark. There is an glaring implication that such failure to apply for registration during the mark’s eight years of use suggests Complainant believed, or was advised, that trademark registration might fail because of the descriptive nature of its mark.
Third, the affidavit of Complainant’s CEO Gary Watts is conclusory regarding whether or not the mark has become a source identifier for Complainant’s products and presents no evidence of secondary meaning in itself.
Fourth, the affidavit of Complainant’s vice president of marketing and corporate development Laura Johns authenticates accompanying Exhibits but does little more to shed light on the public’s perception of Complainant’s mark. Respondent indicates that Ms. John may lack credibility because she has only of late been employed by Complainant.
Fifth, evidence of Complainant’s advertising expenditures is not enough in itself to prove secondary meaning. While such evidence is consistent with Complainant’s claim of secondary meaning, it is not necessarily indicative of such claim being correct. See TMEP 1212.06(b) citing Mattel, Inc. v. Azrak-Hamway Int’l, Inc., 724 F.2d 357, 361 n.2, 221 USPQ 302, 305 n.2 (2d Cir. 1983) (Large scale advertising expenditures are significant to indicated the extent of use. Proof of expensive and successful advertising campaign are not enough in itself to prove secondary meaning) also citing, In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (finding claim based on annual sales under the mark of approximately eighty-five million dollars, and annual advertising expenditures in excess of ten million dollars – two million of which were spent on promotions and promotional items which included the phrase THE BEST BEER IN AMERICA – insufficient to establish distinctiveness, in view of the highly descriptive nature of the proposed mark).
Sixth, Complainant offers six unsworn letters from different customers largely asserting recognition of Complainant’s mark as a source indicator for Complainant’s product. Letter declarations of the kind submitted by Complainant are discussed in section 1212.06(c) of the TMEP. Although the customer letters show that at least some of Complainant’s customers associate the at-issue mark with Complainant’s goods, the Panel is nevertheless reluctant to generalize from such a small sample to conclusions regarding the consuming public at-large and instead takes a position similar to that taken by the Trademark Trial and Appeals Board (“TTAB”) in In re The Paint Prods. Co., 8 USPQ2d 1863, 1866 (TTAB 1988) cited at TMEP 1212.06(c):
Because these affidavits were sought and collected by applicant from [less than eleven] customers who have dealt with applicant for many years, the evidence is not altogether persuasive on the issue of how the average customer for [the applicant’s product] perceives the words [of the subject mark] in conjunction with [the applicant’s products].
In reviewing and weighing the evidence discussed above as well as other evidence that Complainant presents to overcome its most formidable burden of proving common law trademark rights in an otherwise descriptive mark within a forum ill purposed for such effort, and further considering the papers Respondent submits in response to the Complaint, the Panel concludes that Complainant fails to demonstrates the requisite “rights in a mark” required under Policy ¶4(a)(i). Although Complainant offers evidence of the variety which might be used to persuade a panel that Complainant has common law rights in the BROADBANDVOICE mark, such mark is clearly highly descriptive. Where a claimed trademark is descriptive, the burden on a UDRP complainant to show that its mark has acquired secondary meaning is great. See TimeWorks, LLC v. Shadwan Swed, FA1519030 (Nat. Arb. Forum Oct. 15, 2013) (stating “where the claimed mark is comprised of descriptive or dictionary words, Complainant has a greater onus to present compelling evidence of secondary meaning or distinctiveness.”) Compounding Complainant’s difficulty are the limitations of the mechanisms permitted under the rules governing the UDRP for presenting and evaluating evidence. Against this background the nature and quality of the evidence proffered by Complainant, discussed in part above, is insufficient to prove that the BROADBANDVOICE mark has acquired distinctiveness or secondary meaning and that Complainant has common law trademark rights in such mark.
Having found that Complainant lacks rights in the BROADBANDVOICE mark for the purposes of the Policy, the Panel declines to analyze Respondent’s rights or interests, or bad faith, regarding the at-issue domain name. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the 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) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Reverse Domain Name Hijacking
Respondent requests a finding of reverse domain name hijacking against Complainant. However, even though the Panel holds that Complainant fails to satisfy its burden under the Policy, a finding of reverse domain name hijacking does not necessarily follow. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”) In the instant case, Complainant acted in good faith offering thoughtful Exhibits and well-reason arguments in support of its position. Indeed, the very nature of the UDRP forum itself is not conducive to a full review of evidence which might otherwise convince a trademark examiner or court that a mark has acquired secondary meaning. Indeed, this case illustrates the difficulty of proving common law trademark rights under the UDRP regarding a descriptive mark. Therefore the Panel finds no bad faith whatsoever on the part of Complainant in bringing its instant Complaint. Respondent’s request for a finding of Reverse Domain Name Hijacking is thus denied. Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
Complainant having failed to establish all elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Respondent having shown no basis for such finding, its request for a finding of Reverse Domain Name Hijacking is DENIED.
Accordingly, it is Ordered that the <broadbandvoice.com> domain name REMAIN WITH Respondent.
Paul M. DeCicco, Panelist
Dated: November 5, 2014
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