Meteorlogix, LLC v.Vertical Axis, Inc. d/b/a Name
Delegation c/o Domain Administrator
Claim Number: FA0607000743648
PARTIES
Complainant is Meteorlogix,
LLC (“Complainant”), represented by Peter
G. Nikolai, of Nikolai & Mersereau, P.A., 900
Second Avenue South, #820, Minneapolis, MN 55402. Respondent is Name
Delegation c/o Domain Administrator (“Respondent”),
represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <weathersentry.com>,
registered with Nameview, Inc.
PANEL
The undersigned certifies 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.
Carol M. Stoner, Esq., as Chairperson; Edward C.
Chiasson, Esq., as Panelist; and
Steven L. Schwartz as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National
Arbitration Forum electronically on June 30, 2006; the National Arbitration
Forum received a hard copy of the Complaint on July 3, 2006.
On July 7, 2006, Nameview, Inc. confirmed by e-mail to
the National Arbitration Forum that the <weathersentry.com> domain
name is registered with Nameview, Inc. and that the Respondent is the current
registrant of the name. Nameview, Inc.
has verified that Respondent is bound by the Nameview, 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 July 11, 2006, a Notification of Complaint and
Commencement of Administrative Proceeding (the “Commencement Notification”),
setting a deadline of July 31, 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@weathersentry.com by e-mail.
A
timely Response was received and determined to be complete on July 31, 2006.
Complainant submitted a timely Additional Submission
on August 7, 2006 and Respondent submitted a timely Reply to Complainant’s
Additional Submission on
August 9, 2006.
On August 16, 2006, pursuant to Respondent’s request
to have the dispute decided by a three-member Panel, the National Arbitration
Forum appointed Carol M. Stoner, Esq., Steven L. Schwartz Esq., and Edward C.
Chiasson, Esq. as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the
following assertions:
1. Complainant contends that Respondent’s domain name
of <weathersentry.com>
is confusingly similar to Complainant’s registered
trademark of MXVISION WEATHERSENTRY, in that they are nearly identical; and
further, that people looking for information on MXVISION WEATHERSENTRY software
will be drawn to Respondent’s site; and that such initial confusion is
sufficient to prove that marks are confusingly similar.
2. Complainant contends that it has established rights
in the registered trademark of
MXVISION WEATHERSENTRY for software for processing and
displaying weather data and graphics, and that said registration is prima
facie evidence of an exclusive right to use the mark in commerce in the
United States, on, or in connection with, the goods or services specified. Complainant contends that Respondent has no
rights or legitimate interests in the contested domain name, in that Respondent
is not commonly known by the MXVISION WEATHERSENTRY marks or the <weathersentry.com>
domain name. Complainant contends that
Respondent did not apply for a license, or permission from Complainant to use
the trademarked name, and that Respondent has not made a bona fide use
of the domain name, but rather uses it as a diverting device from Meteorlogix’s
customers.
3. Complainant
contends that the <weathersentry.com> domain name was both
registered and used in bad faith to create confusion in the marketplace.
B. Respondent makes the following assertions:
1. Respondent asserts that Complainant’s mark is neither
identical, nor confusingly similar to the disputed domain name because it
incorporates the term MXVISION in front of the descriptive term
“weathersentry.” Further, said
descriptive terms are only entitled to little, if any, protection.
2. Respondent
asserts that it has both rights and a legitimate interest in the disputed
domain name. Its rights emanate from Complainants’ non-exclusive rights to a
portion of the mark, that is “weathersentry,” because such words are merely
descriptive. Respondent asserts a
legitimate interest in the name in connection with the bona fide
provision of advertising services.
3. Respondent
asserts that Complainant has not demonstrated that the disputed domain name was
registered, nor was it being used in bad faith.
C. Additional Submissions
Complainant, by way of Additional Submission, timely
received on August 7, 2006, further asserted that Respondent is a serial
registrant of other parties’ trademarks as domain names and that Respondent
makes the same “losing” argument in response to each case, that is, that the
marks are generic and descriptive and that Respondent has been found in
violation of the UDRP on several occasions.
Complainant quotes a WIPO panel that ruled that “we do
not consider it necessary to enter into an investigation of whether or not the
trademark is generic, descriptive, or used in any particular sense,” and an NAF
decision to say that, “The Panel should not second guess” the judgment of the
USPTO to say that a trademark should not have been registered.” Complainant
also states that the USPTO did not require Meteorlogix to disclaim the term
WEATHERSENTRY.
Complainant asserts that THE TIREDISCOUNTERS
case is distinguishable, and applies the E.I. duPont de Nemours test to
show that likelihood of confusion exists.
Respondent by way of Additional Submission, timely
received on August 9, 2006, asserted that Complainant’s Additional Submission
adds nothing to the case and that Complainant failed on every prong of the
UDRP. That is, the mark is not
identical or confusingly similar in that the descriptive mark is weak and
entitled to minimal protection; that Respondent’s registration and use of a
descriptive domain establishes its legitimate interest; and that Complainant
has failed to prove that Respondent registered the disputed domain name in bad
faith or even that Respondent had knowledge of Complainant’s mark when
Respondent registered the domain name.
FINDINGS
Complainant has not established that the domain name <weathersentry.com>,
which was registered by Respondent, is either identical, or confusingly similar
to the registered trademarks of Complainant.
As Complainant has not proved each of the three elements of Paragraph
4(a) of the Policy, the Panel has declined to enter into an unnecessary
discussion of whether Respondent has rights or legitimate interests in the
domain name; or whether the domain name has been registered and was being used
in bad faith. The Panel finds that the
relief requested by Complainant shall be denied; that is, the domain
name <weathersentry.com> shall not be transferred to Complainant,
or cancelled.
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.
MXVISION
WEATHERSENTRY for software for processing and displaying weather data and
graphics. Meteorlogix began using this
mark in commerce on October 21, 2001.
Respondent registered the name <weathersentry.com> on
September 11, 2005.
The Panel finds that the omission of the term
“MXVISION” from Complainant’s MXVISION WEATHERSENTRY mark is sufficient to
distinguish Respondent’s domain name from Complainant’s mark and to avoid a
finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Entrepreneur Media, Inc. v. Smith,
279 F.3d 1135, 1147 (9th 2002)
("Similarity of marks or lack thereof are context-specific concepts. In
the Internet context, consumers are aware that domain names for different Web
sites are quite often similar, because of the need for language economy, and
that very small differences matter.").
Cf. Broadcom Corp. v. Smoking Domains, FA 137037 (Nat. Arb. Forum
Feb. 11, 2003) (finding that the <broadcommunications.com> domain name
was not confusingly similar to the complainant’s BROADCOM mark because
“Complainant is not entitled to protection for every usage of the word ‘broad’
in combination with other terms”).
The
Panels’ conclusion of, no finding of confusing similarity between the domain
name and the trademark, was not based upon any analysis of whether
Complainant’s registered trademark was generic, descriptive, strong or weak. Registered trademarks are entitled to a
presumption of validity. It is not the
purview of the UDRP to second-guess the PTO.
Moreover, the PTO did not require Meteorlogix to disclaim the term WEATHERSENTRY, which it would have done, had it determined WEATHERSENTRY to be descriptive.
In order for Complainant to prevail, Paragraph 4(a) of the Policy requires that Complainant must prove each of the three elements cited under Discussion of this Decision. As Complainant has not proved under 4(a)(i) of the Policy that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, it is not necessary to enter into a discussion of Paragraph 4(a)(ii), that is, whether Respondent has rights or legitimate interests in respect of the domain name.
In order for Complainant to prevail, Paragraph 4(a)
of the Policy requires that Complainant must prove each of the three
elements cited under Discussion of this Decision. As Complainant has not proved under 4(a)(i) of the Policy that
the domain name is identical or confusingly similar to a trademark or service
mark in which Complainant has rights, it is not necessary to enter into a
discussion of Paragraph 4 (a) (iii), that is, whether the domain name has been
registered and is being used in bad faith.
DECISION
Having
failed to establish all three elements required under the ICANN Policy, the
Panel
concludes that relief shall be DENIED.
Accordingly,
it is Ordered that the <weathersentry.com> domain name shall
not be TRANSFERRED or CANCELLED from Respondent to
Complainant.
Carol M. Stoner, Esq., Chairperson, Steven L. Schwartz, Esq. Panelist, Edward C. Chiasson, Esq., Panelist
Dated: August 30, 2006
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