national arbitration forum

 

DECISION

 

Somedia Solutions, Inc. v. Reserved for Customers / MustNeed.com

Claim Number: FA1105001388088

 

PARTIES

Complainant is Somedia Solutions, Inc. (“Complainant”), represented by Kurt D. Olender of OlenderFeldman LLP, New Jersey, USA.  Respondent is Reserved for Customers / MustNeed.com (“Respondent”), represented by Wu Xin Wei of Guang Lai Law Firm, China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <somedia.com>, registered with MONIKER ONLINE SERVICES, 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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 10, 2011; the National Arbitration Forum received payment on May 11, 2011.

 

On May 19, 2011, MONIKER ONLINE SERVICES, INC. confirmed by e-mail to the National Arbitration Forum that the <somedia.com> domain name 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On May 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@somedia.com.  Also on May 25, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on June 13, 2011.

 

On June 15, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is the owner of the Federal Registered Trademark “Somedia Solutions” under Registration Number 3,954,002 (the “Trademark”).  Additionally, Complainant has an application pending with the United States Patent Trademark Office for the mark, “Somedia”.

 

Respondent Reserved for Customers/MustNeed.com is an individual listed as owner of somedia.com at Moniker.com.

 

MustNeed is owner of the domain somedia.com, a website which uses the Trademark without the permission of Complainant and in contradiction to explicit cease and desist demands made by Complainant.  The somedia.com website is a placeholder in which MustNeeed uses the Trademark to advertise services of unrelated businesses with the specific intent that consumers searching for Complainant’s business will stumble upon MustNeed’s somedia.com website and view the advertisements for unrelated businesses who pay compensation to MustNeed for the advertisement placement.

 

Respondent has no right to use the somedia.com Internet domain because it infringes upon Complainant’s Trademark.

 

Respondent has no legitimate or legal right to use or maintain the Internet domain name and refuses to transfer ownership to Complainant.

 

On Respondent’s website there is a link to inquire about purchasing the domain name.

 

Respondent’s continued use of the Trademark in the somedia.com domain has damaged Complainant’s interest in the Trademark and will continue to do so.

 

The wrongful activities of Respondent are causing and will continue to cause severe and irrevocable injury to Complainant, including but not limited to. Complainant’s rights and Trademark.

 

B. Respondent

Respondent is an organization located in Taiwan focusing on Internet related business including web design, web hosting and internet advertising.

 

Respondent admits the domain name at dispute is identical or confusingly similar to Complainant’s pending trademark application for the term “Somedia” but the disputed domain name is neither identical, not is it confusingly similar to Complainant’s registered trade mark “Somedia Solutions” which was first used by Complainant on June 1, 2010 and registered on May 3, 2011.

 

The domain name was registered on October 2, 2001, nearly 10 years before the registration date of Complainant’s mark.  Therefore, Complainant has not established valid rights in a mark that precede the Respondent’s domain name registration.

 

Respondent has rights and legitimate interests in respect of the domain name.

 

The domain name at dispute was registered by the Respondent on October 2, 2001 as one of the domain names in its domain portfolio, Respondent owns many generic, descriptive and geographical domain names.

 

The domain name was registered for the purpose of Respondent’s search engine advertising project and it is now in use for the same purpose.

 

The domain name in dispute has not been registered in bad faith and is being used in good faith.

 

In the absence of trademark rights on the part of Complainant for some ten years, it is not possible for Respondent to have registered and used the Disputed Domain Name for the purpose of intentionally attracting, for commercial gain, internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website.

 

The Complaint was brought in bad faith.  Based on the Complainant’s submission, it is clear that it was aware of the Respondent’s domain name since 2004 and before the date it began using the mark in its sales and marketing activities.

 

FINDINGS

Complainant is the owner of the Federal Registered Trademark “Somedia Solutions”, Registration Number 3,954,002. The mark was first used by Complainant on June 1, 2010 and registered on May 3, 2011.  The domain name was registered on October 2, 2001, nearly 10 years before the registration date of Complainant’s mark. 

 

For the reasons set forth below, the Panel finds Complainant is not entitled to relief. 

DISCUSSION

Paragraph 15(a) of 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:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  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

Complainant contends that it has established its rights in the SOMEDIA SOLUTIONS mark by registering that mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,954,002 filed July 31, 2010; issued May 3, 2011).  The Panel finds that Complainant has established its rights in the mark by registering that mark with the USPTO, dating back to July 31, 2010.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration. Although it might be possible to establish rights prior to that date based on use, Complainant has submitted insufficient evidence to prove common law rights before the filing date of its federal registration.”).

While Respondent argues that its registration of the <somedia.com> domain name predates Complainant’s alleged rights in the mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).

 

Complainant has proven this element.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

The Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).  See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).

 

Respondent claims that it is using the website commercially to offer links unrelated to Complainant’s business and search services to Internet users.  Respondent further alleges that this use is a bona fide offering of goods and therefore, establishes its rights in the disputed domain name under the UDRP because it has been using the site for around 10 years.  The Panel finds that Respondent has established its rights in the disputed domain name under Policy ¶ 4(c)(i) by making a bona fide offering of goods or services .  See Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002) (finding that the respondent’s use of the disputed domain name, which was comprised of generic terms, as a portal to a commercial website featuring various advertisements and links constituted a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)); see also Chicago Bd. Options Exch. Inc. v. Private, FA 804703 (Nat. Arb. Forum Nov. 29, 2006) (finding it a persuasive factor that the respondent had used the disputed domain name for over seven years in concluding that the respondent had rights or legitimate interests in the disputed domain name).

 

Complainant has not proven this element.

 

Registration and Use in Bad Faith

 

The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).  See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).

 

Since the Panel has concluded that Respondent has rights or legitimate interests in the <somedia.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).

 

Respondent argues that it established its rights in the disputed domain name far prior to Complainant establishing its rights in the SOMEDIA SOLUTIONS mark.  Respondent asserts that its domain name was registered on October 2, 2001, while Complainant’s own contentions only allege its rights in the mark dating back to July 31, 2010 at the earliest.  Therefore, the Panel finds that Respondent did not register or use the disputed domain name in bad faith under Policy ¶ 4(a)(iii) because its rights in the disputed domain name predated Complainant’s rights in its mark.  See  TB Proprietary Corp. v. Village at La Quinta Realtors, FA 416462 (Nat. Arb. Forum Mar. 28, 2005) (because the respondent’s domain name registration predated the complainant’s trademark filing date and alleged date of first use, the panel found that “there was no bad faith on the part of Respondent when registering the subject domain name”); see also Reid v. Chao, FA 154587 (Nat. Arb. Forum May 29, 2003) (finding that the respondent could not have registered the disputed domain name in bad faith where its registration came months before the complainant filed its trademark application and no evidence of common-law rights in the mark were submitted to the panel).

 

Complainant has not proven this element.

 

DECISION

Complainant 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 <somedia.com> domain name REMAIN WITH Respondent.

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  June 27, 2011

 

 

 

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