On Time Media, LLC v. Zonetta Balfanz
Claim Number: FA0512000616709
PARTIES
Complainant is On Time Media, LLC (“Complainant”), represented by Jeffrey Furr, 253 N. Main Street, Johnstown, OH 43031. Respondent is Zonetta Balfanz (“Respondent”), represented by Ronald J. Ehinger of Barrett & McNagny LLP, 215 East Berry Street, P.O. Box 2263, Fort Wayne, IN 46801-2263.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <expeditersonlineforum.com>,
<expeditersonlineforums.com>, <expediteonlineforum.com>,
<expeditersonlineforjobs.com>, <expeditejobsonline.com>,
<expeditedonline.com>, <expeditersnetwork.com> and
<fortwayneexpediteexpo.com>, registered with Brandon Gray Internet
Services, Inc. d/b/a Namejuice.
PANEL
The
undersigned certifies that he or she 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.
R. Glen Ayers, Jr. served as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 28, 2005; the National Arbitration Forum received a
hard copy of the Complaint on January 3, 2006.
On December 29, 2005, Brandon Gray Internet Services, Inc. d/b/a
Namejuice confirmed by e-mail to the National Arbitration Forum that the <expeditersonlineforum.com>,
<expeditersonlineforums.com>, <expediteonlineforum.com>,
<expeditersonlineforjobs.com>, <expeditejobsonline.com>,
<expeditedonline.com>, <expeditersnetwork.com> and
<fortwayneexpediteexpo.com> domain names are registered with Brandon
Gray Internet Services, Inc. d/b/a Namejuice and that the Respondent is the
current registrant of the name. Brandon
Gray Internet Services, Inc. d/b/a Namejuice has verified that Respondent is
bound by the Brandon Gray Internet Services, Inc. d/b/a Namejuice 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 January 9, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 30, 2006 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@expeditersonlineforum.com,
postmaster@expeditersonlineforums.com,
postmaster@expediteonlineforum.com,
postmaster@expeditersonlineforjobs.com,
postmaster@expeditejobsonline.com,
postmaster@expeditedonline.com, postmaster@expeditersnetwork.com and postmaster@fortwayneexpediteexpo.com by e-mail.
A timely Response was received and determined
to be complete on January 30, 2006.
On February 6, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed R. Glen Ayers, Jr. as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Because Respondent has asserted numerous
arguments regarding whether or not the registration of the mark EXPEDITERSONLINE.COM
should have been granted as a registration on the Supplemental Register, and
Respondent contends that it has filed a petition with the Trademark Trial and
Appeal Board requesting cancellation of Complainant’s registration of the mark,
this case involves trademark issues that are outside of the scope of the ICANN
Policy. Therefore, as to the Complaint
concerning the domain name <expeditedonline.com> the Complaint
is DISMISSED.
The reasoning is simple. The mark, EXPEDITERSONLINE.COM and the
domain name <expeditedonline.com> are so similar
as to meet the first test – identical or confusingly similar – set out in the
ICANN policy. As set out below, the
other domain names are not confusing similar, and the Complainant’s request for
relief will be denied. However, there
is a real argument about identical or confusingly similar names between the
mark and the domain name <expeditedonline.com>. Further, there are live proceedings in the
patent office challenging the existence of the mark itself. Therefore, dismissal or denial of the
Complaint as to that particular domain name (<expeditedonline.com>) is
appropriate. In Stevenson Indus.,
Inc. v. CPAP-PRO ONLINE, FA105778 (Nat. Arb. Forum April 25, 2002), the
panel stated:
If the existence of [rights or legitimate interests] turns on resolution of a [legitimate trademark dispute], then Respondent must prevail because disputes are beyond the scope of this [ICANN] proceeding.
Other cases with similar holdings include AutoNation Holding Corp. v.
Rabea Alawneh, D 2002-0581 (WIPO May 2, 2002). Compare, however, cases such as Am. Online, Inc. Anytime
Online Traffic Sch., FA146930 Nat. Arb. Forum (Apr. 11, 2003).
PARTIES’ CONTENTIONS
Complainant asserts that the domain names
listed in its Complaint are identical to or confusing similar to its claimed
EXPEDITERSONLINE.COM trademark. (The
Panelist assumes, for purposes of this decision, that EXPEDITERSONLINE.COM is a
valid, enforceable mark.) Complainant
uses the term “nearly identical” to describe the relationship between the
challenged domain names and its mark.
Complainant also asserts that Respondent has
no rights or legitimate interest and that Respondent does not use the marks in
commerce. Further, Complainant asserts
that the “planned use” constitutes an attempt to misrepresent the source of
goods or exploit Complainant’s good name.
Further, Complainant asserts that “Respondent is not commonly known by
the domain name . . . .”
As to bad faith, Complainant asserts the circumstances
show an attempt to cause confusion among consumers. Further, Complainant asserts activities by Respondent in the U.S.
Patent and Trademark Office that reflect bad faith and has attached copies of
the materials filed to challenge its mark.
Respondent asserts that Complainant has not
met its burden of proof. Respondent
asserts that the trademark registration of EXPEDITERSONLINE.COM was denied on
the Principal Register, but allowed for the Supplemental Register as a
descriptive mark. Respondent goes on to
assert that there is no secondary meaning and that the descriptive mark
registration should not have been granted.
Further, Respondent asserts that the EXPEDITERSONLINE.COM mark is not
confusingly similar to any of the alleged domain names. (The Panelist would note that, were he
considering <expeditedonline.com> as a domain name challenged by an
established mark EXPEDITERSONLINE.COM, the Panelist would find that the two
names are confusingly similar.)
Respondent asserts that it has a legitimate interest in the domain names
and has used at least one of the domain names.
The domain name used, says Respondent, is
<expeditersnetwork.com>. Respondent
asserts that it reserved the name on September 27, 2004 and offers evidence to that
event. Complainant and Respondent have
both offered evidence that the EXPEDITERSONLINE.COM mark was not submitted to
the Patent and Trademark office for registration until December 2, 2004. Finally, as to bad faith, Respondent asserts
that there is no evidence of bad faith, but admits that it is a direct
competitor of Complainant in the “Expediter Industry.”
FINDINGS
The Panelist finds, first, that the mark EXPEDITERSONLINE.COM, is not
confusingly similar to the domain names which include:
1. <exeditersonlineforum.com>
2.
<expeditersonlineforums.com>
3.
<expediteonlineforum.com>
4.
<expeditersonlineforjobs.com>
5.
<expeditejobsonline.com>
6.
<expeditersnetwork.com>
7.
<fortwayneexpediteexpo.com>
As to “rights in the names, the Panelist finds that the Respondent has
shown use prior to issuance of the alleged mark, so it has some rights in the
name used. As to “bad faith,”
Complainant ofers no more than an allegation based upon surmise.
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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
The Panelist will address the claims against
the other domain names.
There is a significant line of decisions that a registration on the supplemental register is not sufficient to establish rights in a mark, which is a fundamental requirement pursuant to Policy ¶ 4(a)(i). See CyberTrader, Inc. v. Bushell, D2001-1019 (WIPO Oct. 30, 2001) (stating that Supplemental Register “provides the Complainant with no protectable rights” in its marks); see also Chiappetta v. Morales, D2002-1103 (WIPO Jan. 20, 2003) (holding that the complainant’s registration of the DISCOUNT HYDROPONICS mark on the Supplemental Register did not confer any rights under the UDRP). However, here there is simply no “confusingly similar” domain name.
At best, generic terms strung together must be reasonably identical or confusingly similar. Here generic terms are strung together with additional words simply are not identical or confusing similar. So, even if Complainant does have rights in the mark, the disputed domain names are not confusingly similar to Complainant’s mark. The addition of descriptive terms to other descriptive terms certainly creates domain names that are distinct from any mark in which Complainant may have rights. See Prudential Ins. Co. of Am. v. QuickNet Commc’ns, FA 146242 (Nat. Arb. Forum Mar. 27, 2003) (holding that the <prudentialmotors.com> domain name, which incorporated the PRUDENTIAL mark with the addition of the word “motors,” had no apparent connection to the complainant or the insurance and financial industry and was thus not confusingly similar to the complainant’s mark); see also Bank of Am. Corp. v. Fluxxx, Inc., FA 103809 (Nat. Arb. Forum Feb. 18, 2002) (finding that the complainant failed to prove “confusing similarity” under Policy ¶ 4(a)(i) because it did not demonstrate that the public would be confused between its NATIONSBANK mark and the disputed domain name <nationsbanking.com>).
Respondent has demonstrated some rights in these names, which pre-date the attempted registration (on the Principal Register) on the mark. Even if Complainant has established a prima facia case which Respondent must rebut, Respondent has at least gone some distance in establishing a rebuttal position by asserting use. See generally Do The Hustle, LLC, v. Tropic Web, D 2000-0624 (WIPO Aug. 21, 2000). In reality, though, it would appear that Complainant really has not satisfied its burden with respect to ICANN policy ¶ 4(a)(ii). See Lush Ltd. v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001).
Although the parties compete, there is certainly no evidence of bad faith presented by the Complainant. In fact, the Respondent probably offers more evidence of bad faith than does the Complaint. The Panelist finds that the Complainant simply restates a portion of the ICANN Policy at ¶ 4(a)(iii). See Starwood Hotels and Resorts Worldwide, Inc. v. Sam Joe SalTech, Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005). The case law universally holds that mere assertions of bad faith are simply not sufficient.
DECISION
Having failed to establish all three elements required under the
Policy, the Panel concludes that relief shall be DENIED, except as to
the domain name <expeditedonline.com>, as to which domain name the
Complaint is DISMISSED.
R. Glen Ayers, Jr., Panelist
Dated: February 20, 2006
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