True Media LLC v. Alexander Selinsky
Claim Number: FA1601001655216
Complainant is True Media LLC (“Complainant”), represented by Emmett McAuliffe, Missouri, United States. Respondent is Alexander Selinsky (“Respondent”), Latvia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <truemediapartner.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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:
Debrett G. Lyons,
Carol M. Stoner Esq.,
Eduardo Montaury.
Complainant submitted a Complaint to the Forum electronically on January 5, 2016; the Forum received payment on January 5, 2016.
On January 6, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <truemediapartner.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 January 7, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 27, 2016 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@truemediapartner.com. Also on January 7, 2016, 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 January 15, 2016.
On January 21, 2016 pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Carol M. Stoner Esq., Eduardo Montaury and Debrett G. Lyons (chair) as the Administrative Panel (‘the Panel”).
On January 28, 2016, Complainant’s Affidavit was received by the Forum. While the Panel reviewed this Affidavit, they did not consider its contents to be influential in their decision making process.
Complainant requests that the domain name of <truemediapartner.com>, be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in TRUE MEDIA and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith because Respondent uses the disputed domain name to redirect Internet users seeking Complainant’s website to Respondent’s competing website.
B. Respondent
Respondent questions Complainant’s exclusive trademark rights because an internet search of the terms “true media” is said to show multiple users of that expression.
Respondent argues that the domain name is not confusingly similar to Complainant’s asserted trademark because Respondent’s domain name would be naturally perceived as a combination of the two parts, “True” and “Media Partner”, rather than “True Media” and “Partner”.
Respondent asserts that it has run an affiliate advertising program for three years and has “about 5000 registered affiliates. About 500 of them work with Respondent on a permanent basis”. Respondent alleges to be known as providing a “stable and honest affiliate program”.
Respondent suggests that the domain name is composed of entirely descriptive terms and therefore Respondent was under no obligation to undertake a search for potential third party rights.
Respondent asserts that it had no knowledge of Complainant at the time it registered the domain name. Further, that Complainant and its trademark are not well known.
Respondent accordingly submits that there can be no finding of bad faith since Respondent has a different business and did not target Complainant and Complainant’s customers. Even if they landed at Respondent’s online location by error, they would not be confused in thinking that it was connected with Complainant.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides advertising and business services by reference to the registered trademark TRUE MEDIA;
2. the trademark is registered with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 3,076,490, registered April 4, 2006;
3. the disputed domain name was registered on January 11, 2015;
4. the domain name is in use and resolves to a website which offers services related to, and competitive with, those provided by Complainant; and
5. there is no commercial agreement between the parties, and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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 inquiry – an 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.
It is well established by decisions under paragraph 4(a)(i) that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides credible evidence of its USPTO registration for TRUE MEDIA, Panel is satisfied that it has trademark rights in that expression (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).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
Panel notes here that even if Respondent had provided evidence that the expression “true media” was widely used by third parties and diluted (which it did not), that information would not alter the finding that Complainant had shown trademark rights through registration since, for the purposes of paragraph 4(a)(i) of the Policy, the consensus view of UDRP panelists has been that arguments of
genericism should be left for consideration under the other limbs of the Policy.
The disputed domain name takes the trademark and adds the word “partner” and the gTLD “.com”. Panel rules that the gTLD is of a non-distinctive nature (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Further, the word “partner” is not the memorable component of the domain name, but rather, a non-distinctive addition. Panel negates Respondent’s argument that it is more likely than not that the domain name would be seen as a combination of “true” and “media partner.” Instead, Panel rules that the two terms compose an integrated mark, and thus finds the domain name to be confusingly similar to the trademark.
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, you use or make demonstrable preparations to use, the domain name, or a name corresponding to the domain name, in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information identifies Respondent as “Alexander Selinsky” and so there is no prima facie evidence that Respondent might be known by the domain name for the purposes of paragraph 4(c)(ii) of the Policy. Respondent has no proven trademark rights and has not been authorized by Complainant to use the trademark or to register any domain name incorporating the trademark.
Further, Complainant’s Exhibit No. 5 evidences that the services provided by Respondent are in competition with those offered by Complainant under its trademark.
Thus, Panel finds that Respondent’s use of the domain is likely to divert Internet users from Complainant’s website to Respondent’s website.
Therefore, Respondent’s use does not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) (see Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Panel finds that Complainant has made a prima facie case and so the onus shifts to Respondent to show that it has rights or a legitimate interest in the domain name.
Respondent states that “we wished being named MediaPartner.com, since we accept the entertainment/media traffic and partner affiliate. But that domain name had been taken, and so we decided to add the appropriate additional word ‘TRUE.’”
Respondent’s unsupported assertions that he might have “about 5000 registered affiliates” and might be “known as the stable and honest affiliate program” does not establish his legitimate threshold rights and interest in the mark.
Respondent has not rebutted the prima facie case and so Panel finds that Complainant has established the second limb of the Policy.
Complainant must prove that the disputed domain name has been registered and is being used in bad faith.
Complainant convincingly argues that Respondent registered the competing domain with actual knowledge of Complainant’s mark, to capitalize on consumer recognition of the mark, because Respondent registered a domain name containing a reproduction of Complainant’s mark, along with the generic word “partner.” Past panels have held that a respondent demonstrated bad faith pursuant to paragraph 4(a)(iii) of the Policy where the respondent was well-aware of the complainant’s mark at the time the disputed domain name was registered. Here, Complainant registered the trademark with the “USPTO on April 4, 2006, nearly nine years before Respondent registered the disputed domain name on January 11, 2015, giving the Respondent a long stretch of time to become aware of Complainant’s mark (see Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Accordingly, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark, thereby violating paragraph 4(a)(iii).
Panel’s view and consideration of Complainant’s Exhibit No. 5, wherein Respondent was offering competing services under a confusingly similar name, is Panel’s basis for its ruling that Respondent is using the disputed domain name in bad faith.
Complainant’s Exhibit 5 is a printout of a site accessible through <truemedia partner.com>. This website states that Respondent has been in business since 2012 and “We offer competitive payouts and some of the best converting specialty sites online.” This site invites viewers to “Join and make money now” and offers multiple click-on “about us” and sign-up boxes, presumably purposed for click-through advertising and fees and to divert internet users to unrelated third part websites. Complainant’s Exhibit 5 is credible evidence that Respondent attempts to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s website.
In accordance with paragraph 4(b)(iv), Panel finds that Respondent’s intention was to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s trademark and therefore, has used the competing domain name in bad faith. (see, for example, MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Complainant also offers credible evidence through its Exhibit 5, that Respondent uses the disputed domain to disrupt and compete with Complainant’s business. Past panels have concluded that a respondent’s attempt to divert a complainant’s customers to that respondent’s competing website constitutes bad faith registration and use under Policy ¶ 4(b)(iii) (see Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) holding that the respondent’s registration of domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)). Thus, the Panel finds that Respondent’s disputed domain name competes with and disrupts Complainant’s business per Policy ¶ 4(b)(iii).
Complainant has therefore satisfied the third and final requirement of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <truemediapartner.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, chair
Carol M. Stoner Esq.,
Eduardo Montaury
Panelists
Dated: February 6, 2016
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