National Arbitration Forum

 

DECISION

 

This Old House Ventures, Inc. v.  Telepathy, Inc.

Claim Number: FA0602000651060

 

PARTIES

Complainant is This Old House Ventures, Inc. (“Complainant”), represented by Andrew J. Wilson, of Alston & Bird, LLP, 1201 West Peachtree Street, Atlanta, GA 30309.  Respondent is Telepathy, Inc. (“Respondent”), represented by John Berryhill, 4 West Front Street, Media, PA 19063.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <toh.com>, registered with Go Daddy Software, Inc.

 

PANEL

Each of 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.

 

Neil A. Smith, Hon. Charles K. McCotter (Ret.) and Terry F. Peppard, chair, as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 27, 2006.

 

On February 27, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <toh.com> domain name is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 March 2, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 22, 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@toh.com by e-mail.

 

A timely Response was received and determined to be complete on March 22, 2006.

 

On April 4, 2006, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Neil A. Smith, Hon. Charles K. McCotter (Ret.) and Terry F. Peppard, chair, as Panelists.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant contends, among other things, that:

 

Complainant is an affiliate of media and publishing conglomerate Time Warner Inc.

 

Complainant and its predecessors in interest have since 1980 produced and distributed a weekly television program devoted to the restoration of historic homes under the name “This Old House.”

 

Complainant has registered the THIS OLD HOUSE mark with the United States Patent and Trademark Office.

 

Complainant uses its mark to market a line of home improvement goods.

 

“TOH” is a common abbreviation for the THIS OLD HOUSE mark in the community of home improvement practitioners. 

 

Complainant owns valid and enforceable common law rights to the TOH mark.

 

Respondent registered and uses the <toh.com> domain name without the consent of Complainant.

 

Respondent’s domain name resolves to a web site featuring pornographic “web cams.”

 

The same web site also offers goods and services competing with those of Complainant.

 

Respondent has received fees for each Internet user who follows a link on that web site.

 

Respondent has hosted a web page that invites Internet users to make an offer to purchase the disputed domain name.

 

Respondent is not commonly known by the name TOH or TOH.com.

 

The disputed domain name is confusingly similar to Complainant’s mark.

 

Respondent has no rights or legitimate interests in respect to the disputed domain name.

 

Respondent has registered and is using the disputed domain name in bad faith.

 

B. Respondent

 

Respondent contends, among other things, that:

 

Because Complainant has never registered the TOH mark with the U.S. Patent and Trademark Office or any other pertinent national authority, Complainant can only rely in this proceeding on its claim to common law rights in the putative TOH mark.

 

Complainant’s limited use of the TOH mark may qualify it as a trade name, but not as a trademark.

 

Respondent registered the disputed domain name in 1998.

 

Respondent has likewise registered other three-letter domain names over a period of many years.

 

Complainant did not complain about Respondent’s use of the subject domain name until the fall of 2004, and did not institute this proceeding until the spring of 2006.

 

The TOH mark is not exclusively or distinctively associated with Complainant.

 

Complainant has failed to show that it possessed a trademark claim to the TOH mark at or before the time that Respondent registered the subject domain name.

 

From 1998 to 2004 Respondent parked the disputed domain name with a parking service which was alone responsible for relating the parking web site to the links and advertisements to which Complainant objects.

 

When Complainant objected to those links and advertisements in 2004, Respondent removed the domain name from that parking service to prevent their continuing display.

 

FINDINGS

(1)   Although the domain name registered by Respondent is substantively identical to a trade name (TOH) in which Complainant claims rights, Complainant has failed to demonstrate either that this trade name is a protectable trademark or that the acquisition of whatever rights Complainant might have in this trade name preceded in time Respondent’s registration of the disputed domain name;

(2)   It is unnecessary for the Panel to determine whether Respondent has rights or legitimate interests in respect of the domain name; and

(3)   The evidence of record fails to show that the disputed domain name was registered and is being used by Respondent 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:

 

i.  the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

ii. the Respondent has no rights or legitimate interests in respect of the domain name; and

iii. the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

In order to prevail under this heading, Complainant must first demonstrate that it has rights in a mark.  It must then show that the disputed domain name is either identical or confusingly similar to that mark.

 

As to the second of these requirements, Respondent does not deny that its domain name is substantively identical or confusingly similar to Complainant’s claimed TOH mark.  However, as to the first of the requirements noted above, Complainant’s argument proceeds on the basis that it has a registered mark, THIS OLD HOUSE, and that it has over time acquired common law rights in an abbreviation of that mark, TOH, which trump any rights that Respondent might claim in its domain name. There are significant difficulties with Complainant’s assertions. 

 

To begin with, an abbreviation of a mark, and particularly an unregistered abbreviation, does not necessarily itself become a mark protectable under the Policy.  See Koninklijke Nederlandse Springsstoffen Fabriek N.V. v. Kim Hyungho GMM, D2002-0707 (WIPO Oct. 1, 2002) (“As long as there is no registration of the letters KNSF as a company name or a trademark, and the Complainant has not substantiated that the abbreviation has been used to such an extent that it has generally been known to the relevant commercial circuit as a trademark or trade name for Complainant, Complainant has failed to prove that he has rights in KNSF as a trademark.”).

 

Moreover, while Complainant has presented some proof that it uses the TOH mark as a trade name, a trade name does not automatically qualify as a trademark, and only trademarks enjoy the protection of the Policy.  See, e.g., Sealite Pty Limited v. Carmanah Tech., Inc., D2003-0277 (WIPO Jun. 11, 2003) (“It is well settled that the Policy does not protect trade names or company names when that is the extent of their use.”)  Here Complainant’s evidence falls short of showing the extensiveness and degree of distinction in its use of TOH necessary to justify a conclusion that it has acquired trademark rights in that name.

 

Finally, and perhaps most importantly, even if Complainant had established that the TOH mark is eligible for protection as a mark under the Policy, it must also have shown that its rights in such a mark predate the registration of the disputed domain name.  See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (“[W]e are of the unanimous view that the trademark must predate the domain name.”)  This is because a foundational underpinning of the Policy is the rule “first-come, first-served.” SAir Group v. Pat Reinhardt, D2000-0482 (WIPO Jul. 6, 2000). 

 

It is undisputed on this record that Respondent registered its domain name in 1998.  Because Complainant has offered no evidence establishing extensive and distinctive use of the TOH mark at a date earlier than that, Complainant cannot have rights in its claimed TOH mark senior in time to Respondent’s registration of the disputed domain name.

 

For these reasons, notwithstanding that the Panel would be compelled to find that the domain name is substantively identical to the claimed mark within the meaning of Policy ¶ 4(a)(i), Complainant cannot prevail on this issue. 

 

Rights or Legitimate Interests

 

In light of the conclusion reached above with regard to Policy ¶ 4(a)(i), the Panel need not determine whether Respondent has rights or legitimate interests in respect of the disputed domain name for purposes of Policy ¶ 4(a)(ii).  See, e.g., America Online, Inc. v. GSD Internet, D2001-0629 (WIPO Jun. 25, 2001).  We therefore decline to do so.

 

Registration and Use in Bad Faith

 

Policy ¶ 4(b) spells out four non-exclusive means by which a complainant may prove that a respondent has both registered and is using a domain name in bad faith.  It is the opinion of the Panel that none of those considerations applies in the circumstances here presented.  Moreover, mindful that the domain name in question is not opposed by a registered trademark, and that the asserted mark has not been proven to have been suitably distinctive or extensive in use at the moment in time when the domain name was registered, we cannot find that bad faith registration and use have been established on the facts before us.

 

Conclusion

 

Complainant has failed to show either that it has recognizable trademark rights in the TOH mark, or, if such rights exist, that they were acquired earlier in time than, and are therefore senior in priority to, those claimed by Respondent owing to its registration of the domain name in 1998. Thus, we cannot, under the governing Policy provisions, grant the relief requested.  Rather, particularly inasmuch as both parties to this proceeding are evidently citizens of the United States, we are constrained to deny the Complaint and leave this dispute to possible further consideration by the appropriate national courts.

 

DECISION

Complainant having failed to establish all elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, DENIED.

 

 

Terry F. Peppard, Chair
Dated: April 19, 2006