Acoustica Inc. v. Three Roads Communications
Claim Number: FA1504001614339
Complainant is Acoustica Inc. (“Complainant”), California, USA. Respondent is Three Roads Communications (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <mixcraft.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 13, 2015; the Forum received payment on April 13, 2015.
On April 14, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mixcraft.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 April 17, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 2015 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@mixcraft.com. Also on April 17, 2015, 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 May 7, 2015.
On May 19, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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" 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 registered the MIXCRAFT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,921,796, filed October 20, 2003, registered January 25, 2005), which demonstrates its rights in the mark. Respondent’s <mixcraft.com> domain name is identical to the MIXCRAFT mark as it merely adds the generic top-level domain (“gTLD”) “.com” to the end of the mark.
Respondent has no rights or legitimate interests in the <mixcraft.com> domain name. Respondent is not commonly known by the disputed domain name. Respondent is not using the <mixcraft.com> domain name in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Rather, the disputed domain name resolves to an inactively held page displaying the error message “Server Not Found.”
Respondent is using the <mixcraft.com> domain name in bad faith. As Respondent has inactively held the page located at the <mixcraft.com> domain name, bad faith is shown under Policy ¶ 4(a)(iii).
B. Respondent
Complainant has not demonstrated that the domain name is used in a manner that is in direct infringement of or confusingly similar to the trademark and in the same market as the trademark’s International Classification (Nice Classification). Specifically, Complainant’s trademark has Nice Classification: 09, “Computer software for digital sound mixing, recording, and editing”. In contrast, the Respondent’s purpose for registering the newly-created domain name in February, 2000 and subsequently renewing it is for use in relation to an original novel and motion-picture screenplay.
Respondent’s intended usage of the domain name is in markets unrelated to Complainant’s trademark classification. Furthermore, Complainant has not established a high likelihood of confusion between (1) the use of the domain name by the Respondent in an unrelated market and (2) the Complainant’s trademark. Respondent has a legitimate interest in the domain name beginning at least fifteen years prior to any notice of the dispute.
Respondent did not register the domain name for the purpose of selling or renting it to the Complainant or a competitor of that Complainant. Respondent did not register the domain name primarily for the purpose of disrupting the business of a competitor. The domain name is not used with an associated website nor other online location that intentionally attempts to attract Internet users by creating a likelihood of confusion with Complainant’s mark. Furthermore, the domain name is not used to address a website with advertisements, descriptions of productions, or links to websites relevant to brands of the Complainant or the Complainant’s competitors. Respondent is not acting in bad faith as it registered the disputed domain name five years before Complainant acquired a trademark in the MIXCRAFT mark.
Complainant, Acoustica Inc., registered the MIXCRAFT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,921,796, filed October 20, 2003, registered January 25, 2005), showing rights in the mark. Complainant’s trademark shows a first use date of April 16, 2004.
Respondent, Three Roads Communications, registered the <mixcraft.com> domain name on February 10, 2000. Respondent registered the disputed domain name three years before Complainant’s trademark application and four years before Complainant’s first use of the MIXCRAFT 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 rights in the MIXCRAFT mark under Policy ¶ 4(a)(i) through registration with the USPTO effective October 20, 2003, the filing date of the trademark application. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). Respondent’s <mixcraft.com> domain name is identical to the MIXCRAFT mark under Policy ¶ 4(a)(i) as it merely adds the gTLD “.com” to the end of the mark.
As the Panel finds that Respondent did not register the <mixcraft.com> domain name in bad faith, it is unnecessary to address rights or legitimate interests.
Respondent did not register the <mixcraft.com> domain name in bad faith as it registered the disputed domain name three years before Complainant’s trademark application for the MIXCRAFT mark and four years before Complainant’s first use of the mark. See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark); see also See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith).
Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <mixcraft.com> domain name REMAIN WITH Respondent.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 2, 2015
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