Multicast Media Networks, LLC v. MDNH, Inc.
Claim Number: FA0503000434268
Complainant is Multicast Media Networks, LLC (“Complainant”), represented by Alison P. Danaceau, of Carlton Fields, P.A., 1201 West Peachtree St., Suite 3000, Atlanta, GA 30309. Respondent is MDNH, Inc. (“Respondent”), represented by John Berryhill, of Dann, Dorfman, Herrell, and Skillman, P.C., 1601 Market Street, Suite 2400, Philadelphia, PA 19103.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <multicast.com>, registered with Moniker Online Services, Inc.
Each of 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.
Hon. Ralph Yachnin (Ret.), G. Gervaise Davis, III, and Terry F. Peppard as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 3, 2005; the National Arbitration Forum received a hard copy of the Complaint on March 7, 2005.
On March 3, 2005, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <multicast.com> is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 March 9, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 29, 2005 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on March 29, 2005.
Complainant thereafter timely filed an Additional Submission under date of April 4, 2005. Respondent then timely filed an Additional Submission under date of April 11, 2005. Complainant later filed a further Additional Submission under date of April 14, 2005. Although that further Additional Submission of Complainant was not filed timely in compliance with Supplemental Rule 7, the Panel has determined to take it into account.
On April 14, 2005, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Ralph Yachnin (Ret.), G. Gervaise Davis, III and Terry F. Peppard, chair, as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Insofar as is here pertinent, Complainant contends that:
Since early 2000, Complainant has used the trademark MULTICAST continuously in commerce to promote its unique services, which include delivery of niche-based advertising and business-related multimedia content over the Internet and other media, such as satellite and terrestrial cable systems.
Complainant has spent hundreds of thousands of dollars in promoting its MULTICAST mark, which has been prominently displayed on Complainant’s website and in its advertisements.
Complainant has recently applied for a U.S. federal trademark registration for a design that includes the term MULTICAST.
Respondent is not known by the subject domain name.
Respondent uses the domain name merely to sponsor web sites offering various Internet services which compete with those offered by Complainant.
Complainant has not licensed or otherwise permitted Respondent to use Complainant’s MULTICAST mark.
Respondent contends, among other things, that:
The word MULTICAST is a generic term used in connection with targeted delivery of information by multiple electronic means, and, because it is a generic term, it is not entitled to exclusive trademark protection or to deference under the ICANN Policy.
Complainant filed its trademark application on February 2, 2005, just days before filing its Complaint in this proceeding.
That application has not yet been acted upon by the U.S. Patent and Trademark Office.
The mere filing of a trademark application does not confer upon the applicant any trademark rights.
The web site associated with Respondent’s domain name returns “pay-per-click” search results for the term MULTICAST from which Respondent derives revenues for driving Internet users to advertisers such as networking hubs and Internet service providers.
Respondent has not attempted to sell the disputed domain name to Complainant, nor has Respondent registered a pattern of marks designed to prevent Complainant from registering its mark as a domain name.
The subject domain name was registered by Respondent’s predecessor in interest in March of 2000.
Complainant’s trademark registration application reports that Complainant’s first use of the term MULTICAST occurred in January of 2005.
Accordingly, Respondent acquired and exercised rights to the disputed domain name years before Complainant commenced any commercial use of the term MULTICAST.
C. Additional Submissions
In its Additional Submissions, Complainant alleges, among other things, that:
Respondent receives revenues from the diversion of Complainant’s customers who visit the web site operated under the disputed domain name and are misled into believing that they are purchasing the services of, or those authorized by, Complainant.
In advertising its services, Complainant does not use the term MULTICAST in a common generic sense, but rather in a more inclusive sense that takes in such services as web hosting and web design.
Thus Complainant’s mark is not generic, but, rather, a descriptive term which has acquired secondary meaning in the marketplace.
Respondent has made no showing that Complainant has abandoned its MULTICAST mark.
In its Additional Submission, Respondent contends, among other things, that:
Complainant was first formed as a limited liability company in April of 2000.
Thus Complainant did not even exist in March of 2000, when Respondent obtained its registration for the disputed domain name.
By filing the instant Complaint, Complainant is guilty of “reverse domain name hijacking.”
(1) Although the domain name registered by Respondent is substantively identical, and, therefore, confusingly similar to a trademark in which Complainant claims rights, Complainant has failed to show that any rights it may have in its claimed mark supersede the rights of Respondent in that domain name;
(2) Respondent has rights and legitimate interests in respect of the subject domain name;
(3) The domain name has not been registered or used by Respondent in bad faith; and
(4) The Complaint herein was filed in bad faith in an abuse of the administrative process.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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:
(a) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(b) Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.
Respondent does not argue that the disputed domain name is not identical or confusingly similar to Complainant’s MULTICAST mark. Rather, Respondent contends that, even conceding that the mark and the subject domain name are either substantively identical or confusingly similar, Complainant does not have protectable rights in its claimed mark vis-à-vis those of Respondent in its domain name within the meaning of Policy ¶ 4(a)(i).
Respondent’s argument on this point proceeds upon two separate tracks. First, Respondent alleges that the MULTICAST mark is generic, rather than distinctive in character, and cannot therefore enjoy the protection of either trademark law or the ICANN Policy. Secondly, Respondent contends that even if the mark were not generic in character, Complainant’s first use of the mark in commerce was predated by Respondent’s domain name registration, so that Respondent’s rights have priority over those of Complainant.
As to the first of these contentions, it appears from the record before the Panel that the term MULTICAST has indeed acquired a character best described as generic because it is widely used by competitors in the field of electronic marketing to describe their varied methods of reaching targeted segments of the marketplace. It is well established that such genericness defeats a claim of trademark rights. See Rollerblade, Inc. v. CBNO and Redican, D2000-0427 (WIPO Aug. 24, 2000).
Complainant attempts to avoid a finding of genericness by suggesting that the term MULTICAST has, to its benefit, acquired secondary meaning in the marketplace. However, Complainant offers no evidence in support of this contention.
Complainant further asserts that it has never abandoned its MULTICAST mark. It is, of course, fundamental that a mark which becomes generic is, by that fact alone, deemed abandoned to the marketplace. But the question for decision is not whether Complainant has abandoned a mark in which it has rights. Rather, the issue is whether Complainant ever acquired rights senior to those of Respondent. We address this issue below.
First, however, it should be noted that the genericness of a mark is a topic capable of spirited debate, as is demonstrated by the competing contentions of the parties here.
And it is also possible to conclude that resolution of this issue might best be left to the competent governmental and judicial authorities, as the ICANN Policy is not well suited to addressing highly fact-dependent questions of trademark invalidity, including genericness. See Lockheed Martin Corp. v. The Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005). For these reasons, the Panel does not rely ultimately upon this aspect of the parties’ proofs.
Instead, the Panel looks to Respondent’s second line of attack on Complainant’s claim of rights under ¶ 4(a)(i) of the Policy, that focuses on the comparative priority of rights between the parties, which is both clearly within the purview of the Policy and greatly more susceptible of a bright line analysis. In that connection, it seems clear from the facts of record that Respondent registered the subject domain name in March of 2000, approximately one month before Complainant came into existence, and nearly five years before Complainant first used its MULTICAST mark in commerce. On these facts, both parties being domiciled in the United States, Complainant could not hope to win a first-to-use contest with Respondent under relevant U.S. law. Moreover, the language of Policy ¶ 4(a)(i) “necessarily implies that Complainant’s rights predate Respondent’s registration.” See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001).
This being so, Respondent does not need Complainant’s consent to use the disputed domain name, so that the absence of such consent is of no avail to Complainant in these proceedings.
Respondent thus prevails on the question presented by Policy ¶ 4(a)(i).
On the question whether Respondent has rights to or legitimate interests in the disputed domain name, Policy ¶ 4(c) sets out three non-exclusive means by which this issue may be tested. Of these, two may be dispensed with quickly, because Respondent does not contend either that it has been known by the subject domain name (¶ 4(c)(ii)), or that it is making a non-commercial or fair use of that name (¶ 4(c)(iii)).
Instead, Respondent alleges, in effect, that it has used the domain name in connection with a bona fide offering of goods or services under ¶ 4(c)(i).
As to this contention, the Panel finds persuasive the evidence submitted to the effect that the web site associated with Respondent’s domain name returns “pay-per-click” search results for the MULTICAST term from which Respondent derives revenues for driving Internet users to advertisers such as networking hubs and Internet service providers. This is a bona fide use within the meaning of ¶ 4(c)(i), particularly in light of the extended period of such use. See Bankinter S.A. v. BI Fin. Inc., D2000-0460 (WIPO Sep. 5, 2000).
Accordingly, Respondent has carried the issue under Policy ¶ 4(a)(ii).
Policy ¶ 4(b) recites four non-exclusive means by which Complainant might show that Respondent has registered and is using the disputed domain name in bad faith. None of those possible branches of proof is pertinent to the facts here presented.
There is, in particular, no evidence that Respondent ever attempted to sell the domain name to Complainant (¶ 4(b)(i)), or that Respondent has engaged in a pattern of abusive domain name registrations (¶ 4(b)(ii)), or that Respondent registered the domain name in order to disrupt Complainant’s business (¶ 4(b)(iii)). And, although Complainant asserts that Respondent’s web site associated with the disputed domain name misleads Internet users into believing that they are purchasing the services of, or those authorized by, Complainant (¶ 4(b)(iv)), it offers no creditable proof in support of this assertion. Indeed, what proof can be gleaned from an examination of Respondent’s web site suggests no effort on its part even indirectly to advert to or imply a connection to Complainant.
Instead, the evidence before this Panel shows merely that Respondent has prior rights in the subject domain name and has used that domain name in connection with a bona fide offering of goods or services. This is evidence of good faith, not bad faith, on the part of Respondent. See Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000).
Reverse Domain Name Hijacking
For its part, Respondent accuses Complainant of attempted “reverse domain name hijacking” in the filing of its Complaint in this proceeding. “Reverse domain name hijacking” is an effort aimed at using the Policy in bad faith to deprive a domain name holder of a name to which it is entitled. See Rules for Uniform Domain Name Dispute Resolution Policy, §1.
Because it appears to the Panel that Complainant knew or should have known, at the time it filed the instant Complaint, that Respondent had prior rights to the disputed domain name and that Respondent was making a bona fide offering of goods or services by means of that name, a case of reverse domain name hijacking has been made out. This conclusion is buttressed by Complainant’s bald assertion that it used the MULTICAST term continuously in commerce “since early 2000,” despite evidence from its own trademark registration application that Complainant did not use that mark until January of 2005.
For these reasons, the Panel is obliged to and does find that the Complaint was brought in bad faith, and that it constitutes an abuse of the administrative process. See Rules, supra, §15(e); see also Deutsche Welle v. DiamondWare Ltd., D2000-1202 (WIPO Jan. 2, 2001).
Complainant having failed to establish any of the three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, DENIED.
Terry F. Peppard, Panelist, Chair
Hon. Ralph Yachnin (Ret.)
G. Gervaise Davis, III
Dated: April 28, 2005
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