National Arbitration Forum
DECISION
Thru, L.L.C. v. Yoshiki
Okada
Claim Number: FA0611000849145
PARTIES
Complainant is Thru, L.L.C. (“Complainant”), represented by Cathryn
Berryman, of Jenkens & Gilchrist, A Professional
Corporation, 1445 Ross Ave., Suite 3700, Dallas, TX 75202. Respondent is Yoshiki Okada (“Respondent”), represented by Ari
Goldberger, of ESQwire.com Law Firm,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thru.com>, registered with Enom, Inc.
PANEL
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.
Joel M. Grossman as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 22, 2006; the
National Arbitration Forum received a hard copy of the Complaint on November 27, 2006.
On Nov 22, 2006, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <thru.com> domain name is registered
with Enom, Inc. and that the Respondent
is the current registrant of the name. Enom, Inc. has verified that Respondent is
bound by the Enom, 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 November 28, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 18, 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@thru.com by e-mail.
A timely Response was received and determined to be complete on December 12, 2006.
An Additional Submission from Complainant was received and determined to
be complete on December 18, 2006.
On December 20, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Joel M. Grossman as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts
(1) that the domain name
<thru.com> is identical or confusingly similar to its mark THRU.
(2) that
Respondent has no rights or legitimate interests in the domain name; and
(3) that
the domain name was registered and is being used in bad faith.
B. Respondent
Respondent asserts that
(1)
Complainant
cannot prevail in its attempt to find the two marks identical, or confusingly
similar, because Respondent registered the domain name on January 24, 2001,
several years before Complainant began using its mark in commerce in 2005;
(2)
Respondent
is using its domain name for a bona fide offering of goods and services,
as it derives revenue from advertising on its site. Respondent also asserts
that it may use the term “thru” because it is a common descriptive term, an
abbreviation of the word “through.”
(3)
Respondent
asserts that it cannot have registered the domain name in bad faith since its
registration predates Complainant’s use of its mark in commerce. In fact,
Respondent accuses Complainant of reverse domain name hijacking.
C. Additional Submissions
In its Additional Submission Complainant, through a Declaration of its
Chief Executive Officer, asserts that it has spent over $700,000 in branding
and advertising its mark. Complainant further states the
United States Patent and Trademark Office has now approved its pending
trademark application.
FINDINGS
The Panel finds the following:
1.
The
domain name <thru.com> is not identical to, nor
confusingly similar to the Complainant’s THRU mark, because of the domain
name’s registration four years before Complainant’s mark was used in commerce.
2.
Respondent
has legitimate rights and interests in the domain name.
3.
The
domain name was not registered and is not being used in bad faith.
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.
Identical and/or Confusingly
Similar
Because Respondent registered its domain name
years before Complainant began using the THRU mark in commerce, there can be no
finding that the name is identical to or confusingly similar to Complainant’s
mark. See Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003): “To raise a claim
against another party that would support transfer of a domain name
registration, Complainant must demonstrate interests in a mark that predate the
domain name registration.” See also Trujillo v. 1Soft Corp., FA
171259 (Nat. Arb. Forum Sept. 10, 2003).
Because Complainant cannot establish use of its mark prior to
Respondent’s registration of the domain name, Complainant cannot prevail.
Rights or Legitimate Interests
While the Panel may not be required to
address either this issue or the bad faith registration issue in light of the
above finding, see Intermark, supra,
the Panel notes briefly that it is satisfied that Complainant could not prevail
on this point. First, as Respondent
points out at great length, the term “thru,” which is shorthand for the
preposition “through,” is an incredibly common term. See SOCCERPLEX, Inc. v. NBA, Inc. FA 94361 (Nat. Arb. Forum
May 25, 2000). Moreover, Respondent
asserts that it has made legitimate use of the domain name, specifically by
earning ad revenues on its website when it directs visitors to other
websites. See Eastbay Corp. v. VerandaGlobal.com, Inc.
FA 105983 (Nat. Arb. Forum May 20, 2002.) The Panel does not reach the issue of whether
this ad revenue is enough to create legitimate interest in the domain name, and
therefore the Panel will not resolve this secondary issue.
Registration and Use in Bad Faith
It is axiomatic that this domain name was not
registered in bad faith because the Complainant had not begun using the THRU
mark in commerce until four years after the registration. Nor can it be said that Respondent is using
the domain name in bad faith since, as noted above, the term “thru” is
extremely common and Respondent has the right to use this common term in its
business venture.
DECISION
Having failed to establish any of the three elements required under the
ICANN Policy, the Panel concludes that relief shall be DENIED.
Joel M. Grossman, Panelist
Dated: December 28, 2006
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