Perpetual Motion Interactive Systems Inc. v. NameBubble LLC
Claim Number: FA0806001212590
Complainant is Perpetual
Motion Interactive Systems Inc. (“Complainant”), represented by Michael
G. Atkins, of Graham & Dunn PC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dnn.com>, registered with Godaddy.com, Inc.
The undersigned certify 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.
Calvin A. Hamilton (Chair), Honorable James A. Carmody and Hugues G. Richard, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 25, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 25, 2008.
On June 25, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <dnn.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 1, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 21, 2008 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on July 22, 2008.
A timely Additional Submission was received and determined to comply with Supplemental Rule 7 on July 25, 2008.
On July 30, 2008, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton (Chair), Honorable James A. Carmody and Hugues G. Richard, as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant alleges as follows:
(1) Complainant is the creator of the DotNetNuke
Web Application Framework. Complainant registered the DNN mark in
(2) Respondent has no rights or legitimate interests in respect to this domain name. Respondent’s website is not being used for any legitimate purpose. It merely purports to be the site of the “Domain Name Network” and states that it is “under construction.” Respondent is in the business of acquiring and monetizing domain names.
(3) The domain name was registered and is being used in bad faith. On January 31, 2008, Respondent purchased the disputed domain name from the previous owner for $14,000. Respondent acquired the domain name to take advantage of the well-known DNN mark for the purpose of selling or renting it out. Respondent approached Complainant and offered to sell the domain name for $60,000.
Respondent alleges as follows:
(1) Respondent’s intention was to develop the website into a “repository of information and networking services for domain name holders.” The website was to be called “Domain Name Network,” the three letters of the disputed domain name being the initials for that designation. Because Respondent only acquired the disputed domain name three months before the first Complaint (by DotNetNuke Corporation, who did not hold the trademark) was filed, it did not have an opportunity to develop the website for its intended purpose.
(2) Prior to finalizing the terms of an agreement with a party interested in leasing the <dnn.com> domain name, Respondent directly contacted Complainant about any possible trademark infringement. Complainant’s representative informed Respondent’s representative that it was interested in acquiring the disputed domain name, and according to Respondent, was “prepared to offer a substantial amount in consideration.”
C. Additional Submissions
Complainant’s Additional Submission does not contain further factual submissions but merely expands on the arguments already presented with the Complaint.
FINDINGS AND 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.
Complainant owns the Canadian trademark registration for the DNN mark (Reg. No. TMA 661,035) since October 12, 2005. The WHOIS information lists Respondent as the current owner of the disputed domain name with a March 11, 1997 registration date obtained by the original owner. In order for Policy ¶ 4(a)(i) to be satisfied Complainant’s rights in the mark have to predate Respondent’s domain name registration. See EU Prop. Portfolio Ltd. v. Salvia Corp., FA 873726 (Nat. Arb. Forum Feb. 7, 2007) (finding that the complainant could not establish rights in the <eupp.com> domain name where its use of the EUPP mark did not predate the respondent’s registration of the domain name); see also Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“[Policy ¶ 4(a)(i)] necessarily implies that the Complainant’s [trademark] rights predate the Respondent’s registration and use of the Domain Name. Any other interpretation would allow a junior trademark user to challenge a prior domain name registration, a possibility that is obviously contrary to the intent of the Policy and to trademark law generally”); see also Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding that any enforceable interest that the complainant may have in its common law mark did not predate the respondent’s domain name registration, therefore finding that Policy ¶ 4(a)(i) had not been satisfied). However, Respondent admits that it acquired the <dnn.com> domain name on January 31, 2008. The Panel finds that this date is the relevant one with regard to the analysis of the Policy.
The Panel finds that Complainant holds a registration with the Canadian Intellectual Property Office (“CIPO”), and has established rights to the DNN mark pursuant to Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant asserts that the <dnn.com> domain name is identical to its DNN mark. The Panel finds that the disputed domain name
incorporates the main element of the mark and that the generic top-level domain
(“gTLD”) “.com” is irrelevant, and therefore finds that the disputed domain
name is identical to the mark under Policy ¶ 4(a)(i). See
While Respondent contends that the <dnn.com> domain name is comprised of a generic acronym and as such cannot be found to be identical or confusingly similar to Complainant’s 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 to Complainant’s DNN mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
The Panel does not share Complainant’s view that Respondent has the burden of proving legitimate rights or interests. Complainant has the responsibility of demonstrating a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once Complainant meets that requirement, the burden of proof shifts to Respondent to show that it has rights or legitimate interests with respect to the disputed domain name.
Policy ¶ 4(c) sets forth the manner in which a respondent may establish rights to and legitimate interests in a domain name. It provides that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate Respondent's rights or legitimate interests to the domain name for purposes of Policy ¶ 4(a)(ii):
(i) that before any notice to Respondent of the dispute, Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) that Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) that Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Where Complainant rebuts each of these elements, it has satisfied its burden by providing prima facie evidence against any of the particular claims Respondent could make under Policy ¶¶ 4(c)(i)-(iii), thereby shifting the burden to Respondent. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is "uniquely within the knowledge and control of the respondent.").
Respondent does not attempt to establish that it is making a non-commercial use of the domain name or that it is commonly known as “DNN” and thus the circumstances of Policy ¶¶ 4(c)(ii) and (iii) do not apply.
Respondent’s argument is that, under Policy ¶ 4(c)(i), Respondent used, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice to Respondent of the dispute.
Respondent alleges that its intention was to develop the website into a “repository of information and networking services for domain name holders.” Respondent contends that the website was to be called “Domain Name Network,” the three letters of the disputed domain name being the initials for that designation. This is consistent with the fact acknowledged by Complainant that Respondent trades in domain names. See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the domain name being associated with the business of the respondent points to rights and legitimate interests in the domain name).
Respondent has provided a document purporting to be its plan for the disputed domain name. Respondent contends that because it only acquired the disputed domain name three months before the Complaint was filed, it did not have an opportunity to develop the website for its intended purpose. Respondent explains that “[g]iven the short timeframe between Respondent’s registration of the disputed domain name and the notice of the Complaint it is by no means unreasonable that the preparations for use of the domain name were only in their infancy.” This explanation is plausible and consistent with the “Under Construction” notice on the Webpage. See Casual Corner Group, Inc. v. Young, FA 95112 (Nat. Arb. Forum Aug. 7, 2000) (“About ten months have elapsed since Respondent registered the domain name, therefore not enough time has passed to raise the inference of lack bona fide intent”); see also Meredith Corp. v. City Home, Inc., D2000-0223 (WIPO May 18, 2000) (non-use of domain name for eight months is reasonable time to engage in research and development).
Furthermore, the disputed domain name is comprised of a generic acronym, consisting only of three letters, which in theory may stand for several different things, with the addition of a gTLD. As evidence for its assertion, Respondent includes a listing of several examples in which the letters “DNN” are being used on a non-infringing basis. See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 9, 2001) (finding that the respondent has rights and legitimate interests in the domain name where the respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms and is not exclusively associated with the complainant's business).
The Panel further finds that Respondent’s offer to lease or to sell is not at odds with its initial plan to use the disputed domain name for itself. Respondent asserts that prior to finalizing the terms of an agreement with a party interested in leasing the <dnn.com> domain name, Respondent directly contacted Complainant about any possible trademark infringement. Complainant’s representative informed Respondent’s representative that it was interested in acquiring the disputed domain name, and according to Respondent, was “prepared to offer a substantial amount in consideration.” The fact that Respondent considered the option to lease or sell the disputed domain name, as an alternative to the original plan to itself use it for its own business purposes, does not necessarily mean that the original plan did not exist and might not be executed in the future.
While the Panel shares Complainant’s view that the threshold to demonstrate preparations to use the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) has to be higher than submitting a single, unpublished, and undated page with almost no content, since “[a]ny cybersquatter, upon receiving a UDRP complaint, could construct an undated and unpublished page […] as ostensible proof that it intends to construct a legitimate Web site,” the situation at hands goes further: The domain name is comprised of a generic acronym, consisting only of three letters which is also used by several third parties and which correspond as initials to the name for the website intended by Respondent; this name, “Domain Name Network,” again, plausibly corresponds to Respondent’s business, the trade in domain names; the timeframe between Respondent’s registration of the disputed domain name and the notice of the Complaint is indeed short, so that the lack of an active website is of little relevance.
Due to all these circumstances the Panel holds 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)). To ask Respondent to provide constructed Web pages, supporting email, a business model, schematics, notes and memoranda, would amount to a shifting the burden of proof before a prima facie case is established.
That said, the Panel finds that Policy ¶ 4(a)(ii) has not been satisfied.
Since Respondent has rights or legitimate interests in the <dnn.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel 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.”).
Because Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Calvin A. Hamilton, Chair of the Panel
Honorable James A. Carmody, Panelist
Hugues G. Richard, Panelist
Dated: August 13, 2008
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