Multicast Media Networks, LLC v. MDNH,
Inc.
Claim Number: FA0503000434268
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@multicast.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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
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.
B.
Respondent
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.”
FINDINGS
(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.
DISCUSSION
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).
DECISION
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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