That’s No Moon Entertainment Inc. v. Michael Mumbauer
Claim Number: FA2301002026822
Complainant is That’s No Moon Entertainment Inc. (“Complainant”), represented by Thomas E. Wallerstein of Venable LLP, USA. Respondent is Michael Mumbauer (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <thatsnomoon.com>, <tnmgames.com>, <tnmstudios.com>, <thatsnomoonent.com>, <thatsnomooninc.com>, <thatsnomoontv.com>, <thatsnomoonfilm.com>, <thatsnomoonfilms.com>, <tnminteractive.com>, <tnmproductions.com>, <thatsnomoongames.com>, <thatsnomooninteractive.com>, and <thatsnomoonentertainment.com>, (“Domain Names”) registered with GoDaddy.com, LLC.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on January 9, 2023; Forum received payment on January 9, 2023.
On January 10, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <thatsnomoon.com>, <tnmgames.com>, <tnmstudios.com>, <thatsnomoonent.com>, <thatsnomooninc.com>, <thatsnomoontv.com>, <thatsnomoonfilm.com>, <thatsnomoonfilms.com>, <tnminteractive.com>, <tnmproductions.com>, <thatsnomoongames.com>, <thatsnomooninteractive.com>, and <thatsnomoonentertainment.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 January 11, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 2023 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@thatsnomoon.com, postmaster@tnmgames.com, postmaster@tnmstudios.com, postmaster@thatsnomoonent.com, postmaster@thatsnomooninc.com, postmaster@thatsnomoontv.com, postmaster@thatsnomoonfilm.com, postmaster@thatsnomoonfilms.com, postmaster@tnminteractive.com, postmaster@tnmproductions.com, postmaster@thatsnomoongames.com, postmaster@thatsnomooninteractive.com, postmaster@thatsnomoonentertainment.com. Also on January 11, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On February 2, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts “exclusive rights” in the THAT’S NO MOON and TNM marks based upon allowed applications with the USPTO pending registration and recognition by consumers.
Respondent lacks rights or legitimate interests in the Domain Names since Respondent has never been authorized or licensed rights to use the THAT’S NO MOON and TNM marks.
Respondent, a former associate of the Complainant, registered and uses the Domain Names in bad faith by refusing to transfer them to Complainant despite lacking any rights or ownership.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant does not provide sufficient evidence of trademark rights for the THAT’S NO MOON and TNM marks for the purposes of satisfying Policy ¶ 4(a)(i).
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts that it does business under the trade marks THAT’S NO MOON and TNM. While Complainant has trade mark applications for the THAT’S NO MOON mark with the USPTO, an application to register a mark with the USPTO is generally not sufficient to establish rights in that mark. See Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1719671 (Forum Apr. 14, 2017) (“Pending trademark applications do not confer rights under Policy ¶ 4(a)(i).”). See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition at 1.1.4 which states that “A pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i)”.
As Complainant does not have any registered trade mark rights it is therefore necessary to consider whether Complainant holds common law rights in the THAT’S NO MOON and TNM marks as Policy ¶ 4(a)(i) does not require a complainant to hold a registered trademark if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Establishing common law rights in a mark requires a showing of secondary meaning of the mark under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Lack of evidence to support secondary meaning may result in failure to establish common law rights in a mark. See CW & Associates Consulting and Recruiting Inc. v. Lynda Pitchford / ITSR, FA 1619758 (Forum June 29, 2015) (finding Complainant failed to establish common law rights, stating, “Complainant has failed to provide evidence of any sales figures or advertising expenditures or any indication of the extent of use aside from what may be implied from the business name registration and placement of the name(s) on social media. There is no evidence to show that the public is aware of the claimed marks at all, much less a public association of the claimed ETS marks with the Complainant.”).
In the present case Complainant does not provide any evidence to support its contention that it has common law rights in the THAT’S NO MOON and TNM marks other than an assertion that it has “exclusive rights over the phrase ‘That’s No Moon’ which is recognized by consumers as an identifier for TSM’s brand”. No documentary support for the above statement of provided. Complainant provides no evidence of any use of the THAT’S NO MOON and TNM marks such as sales figures, advertising figures or documentary evidence of any advertising or public display of the marks by Complainant. Finally, Complainant provides no other evidence establishing public association with the marks. Therefore, the Panel finds that Complainant has failed to establish common law rights in the marks per Policy ¶ 4(a)(i).
As the Panel has concluded that Complainant has not satisfied Policy ¶ 4(a)(i) because it has not established rights in the THAT’S NO MOON and TNM marks, the Panel declines to analyze the other two elements of the Policy. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <thatsnomoon.com>, <tnmgames.com>, <tnmstudios.com>, <thatsnomoonent.com>, <thatsnomooninc.com>, <thatsnomoontv.com>, <thatsnomoonfilm.com>, <thatsnomoonfilms.com>, <tnminteractive.com>, <tnmproductions.com>, <thatsnomoongames.com>, <thatsnomooninteractive.com>, and <thatsnomoonentertainment.com> domain names REMAIN WITH Respondent.
Nicholas J.T. Smith, Panelist
Dated: February 3, 2023
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