MarketScore Inc. v. comScore, Inc
Claim Number: FA1611001704584
Complainant is MarketScore Inc. (“Complainant”), represented by Mark Fedchyshyn, Canada. Respondent is comScore, Inc (“Respondent”), represented by Kelu Sullivan of Kelly IP, LLP, District of Columbia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marketscore.com>, registered with MarkMonitor Inc.
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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 24, 2016; the Forum received payment on November 24, 2016.
On November 30, 2016, MarkMonitor Inc. confirmed by e-mail to the Forum that the <marketscore.com> domain name is registered with MarkMonitor Inc. and that Respondent is the current registrant of the name. MarkMonitor Inc. has verified that Respondent is bound by the MarkMonitor 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 December 1, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 2016 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 firstname.lastname@example.org. Also on December 1, 2016, 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.
A timely Response was received and determined to be complete on December 20, 2016.
On December 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
- Complainant has established rights in the MARKET SCORE and MARKETSCORE marks, as it has registrations for those marks with the United States Patent and Trademark Office ("USPTO") and Canadian Intellectual Property Office ("CIPO").
- The disputed domain name, <marketscore.com>, is identical to Complainant's marks since the spelling, appearance and sound are the same.
- Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, but rather as "comscore.com." Respondent has not used the disputed domain name in a legitimate commercial manner for over ten years, as Respondent allowed its registered rights with the USPTO in the MARKETSCORE mark to expire in 2010.
- Respondent is not using the disputed domain name for a bona fide offering of goods or services or for a noncommercial or fair use purpose, as the name is not connected to a functioning website. Moreover, as further evidence of a lack of bona fide use, the previous website to which the name was connected a decade ago was found by many experts to contain spyware and/or malware, an illegitimate condition that led Respondent into a multi-million dollar settlement regarding a lawsuit filed against it for violation of internet privacy laws.
- The disputed domain name was registered and is being used in bad faith, since it was used previously to host a website, containing spyware and/or malware, that generated a successful lawsuit against its illegitimate use.
- Respondent has most recently opted for one-year registration renewals of the disputed domain name in an obvious attempt to extract a purchase price in excess of Respondent's actual out-of-pocket ownership costs. As further evidence of its bad faith, Respondent's one response to communications from Complainant was to suggest that Complainant's offer of $2,000 (certainly above Respondent's out-of-pocket costs) was insufficient to procure acquisition of the disputed domain name.
- Respondent is a leading cross-platform measurement company that measures audiences, brands, and consumer behavior for its clients.
- Respondent registered the disputed domain name in 1999, some 14 years before Complainant’s rights in the MARKETSCORE mark. The disputed domain name is identical to the MARKETSCORE service mark, which Respondent registered with the USPTO in 2003 and used in connection with its services from 2001 to 2007.
- Respondent has rights and legitimate interests in the disputed domain name. During the above-referenced time period, Respondent offered market research services and passive metering software available for consumers to voluntarily download, and used the disputed domain name to advertise its MARKETSCORE products and services. When Respondent discontinued its software and services in 2007, it used the disputed domain name for a notice website, regarding the discontinuation, through 2010.
- Respondent registered and used the disputed domain name in good faith. The disputed domain name was registered in 1999, 14 years before Complainant could claim any rights in its marks, and the name was used for legitimate purposes by Respondent for many years.
- Respondent never offered to sell the disputed domain name to anyone, and even rejected Complainant's offer to buy the name. Moreover, Respondent's registration renewal pattern in connection with the name does not imply any motive for such a sale.
- The lawsuit brought against Respondent, and referred to in the Complaint, has no bearing in this proceeding. It indicates neither a lack of bona fide offerings nor illegitimate or bad faith use by Respondent in any manner with respect to the disputed domain name. Moreover, the lawsuit settlement agreement expressly stipulates that there is no admission or concession of wrongdoing on the part of Respondent.
Complainant is a Canadian company that does business under the registered service marks MARKET SCORE and MARKETSCORE. Complainant has registered the MARKETSCORE mark with the CIPO (e.g., Reg. No. TMA909,563; registered July 27,2015) and the USPTO (e.g., Reg. No. 4,611,580, registered Sept. 23, 2014).
Respondent is the owner of the disputed domain name, <marketscore.com>, which was registered on May 3, 1999. Respondent operated a business from 2001 to 2007 under the mark, MARKETSCORE, for which Respondent had obtained a USPTO registration (i.e., Reg. No. 2,792,807, registered Dec. 9, 2003) that was allowed to expire on July 17, 2010.
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.
Complainant has submitted adequate evidence that it has valid registrations with the CIPO and the USPTO for the MARKETSCORE mark, so the Panel accepts that Complainant has the requisite rights in that mark for the purposes of Policy ¶ 4(a)(i). See MSI Holdings, LLC v Kobhi N / SpexFix, FA1600007 (Nat. Arb. Forum Feb. 13, 2015); see also Molson Canada v. JEAN LUCAS, FA1596702 (Nat Arb. Forum Feb. 10, 2015) ("Complainant has rights in the MOLSON mark under Policy ¶ 4(a)(i) through registration with the USPTO and CIPO.").
Upon simple visual inspection, the Panel is able to determine that the disputed domain name, <marketscore.com>, is identical to Complainant's MARKETSCORE mark. In making this determination, the Panel discounts the addition of the generic top-level domain, .com, as such suffixes are required of all domain name registrations and thus provide no distinction with respect to the name and mark. See LOKEO v. Yan Kyung Won, D2015-0128 (WIPO Apr. 21, 2015) (finding <lokeo.com> to be identical to the LOKEO mark); see also Roundabout Theatre Co., Inc. v. JABLONSKI, FA 1599161 (Nat. Arb. Forum Feb. 10, 2015) (finding <hiptix.com> to be identical to the HIPTIX mark); see also Boehringer Ingelheim Pharma GmbH & Co. KG v. ICS Inc., D2013-1067 (WIPO July 30, 2013) ("It is a common practice under the Policy to disregard the generic top-level domains ('gTLD') such as the '.com' for the purposes of the comparison under the Policy, paragraph 4(a)(i).").
As reasoned above, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Though Complainant has established to the Panel’s satisfaction that the disputed domain name is identical to Complainant's service mark, it is unclear to the Panel whether Complainant has sustained even a prima facie case that Respondent lacks rights or legitimate interests in that name. In any event, the Panel is compelled to recognize in this regard the possible applicability of the criteria set forth in Policy ¶ 4(c) that Respondent may employ to support its position that it does possess such rights or interests, as follows:
(i) before any notice to [respondent] of the dispute, [respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bone fide offering of goods or services; or
(ii) [respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [respondent has] acquired no trademark or service mark rights; or
(iii) [respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without the intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In this case, Respondent contends and presents satisfactory evidence that, subsequent to its registration of the disputed domain name, Respondent used that name in connection with a service that measured audiences, brands and consumer behavior. Complainant attempts to rebut that contention and evidence by asserting that Respondent's operations in this vein were not "bona fide" because of various flaws in Complainants operations with respect to spyware and/or malware considerations. Complainant cites, as primary evidence of Respondent’s alleged bogus services, the settlement of a lawsuit brought by dissatisfied third parties for millions of dollars.
The Panel does not find Complainant's rebuttal to be persuasive. The Panel cannot conclude that, based upon a later lawsuit, the totality of Respondent's actions were fraudulent and thus not bona fide. Ergo, the Panel determines that Respondent has presented enough evidence to satisfy Policy ¶ 4(c)(i).
Moreover, the Panel notes that Respondent presented compelling evidence that, after registration of <marketscore.com>, Respondent was commonly known by that name. That evidence includes the undisputed fact that Respondent registered the MARKETSCORE mark with the USPTO from 2003 to 2010. Complainant attempts to rebut Respondent's showing with the mere contention that Respondent is only commonly known as "comscore.com." Given the limited evidential examination available under the Policy, the Panel is unable to conclude that Respondent was never commonly known as <marketscore.com> when it possessed a registered service mark, MARKETSCORE, that Complainant itself has shown to be identical to that name. Ergo, the Panel determines that Respondent has presented sufficient evidence to satisfy Policy ¶ 4(c)(ii). See Pearlstein v. Soft Image Sys's, FA1053372 (Nat. Arb. Forum Sept. 18, 2007) ("The Respondent has trademark rights in the string SHOW BUSINESS. These trademark rights confer rights in the disputed domain name to the Respondent pursuant to Policy ¶ 4(c)(ii)."); see also Westec Interactive Security, Inc. v. Express Post Ltd, D2005-0811 (WIPO Oct. 7, 2005) ("There being nothing before the Panel to suggest that the Respondent’s Russian Federation trademark registration of the mark WESTEC is anything other than genuine, manifestly the Respondent has rights in respect of the [disputed] Domain Name.")
As reasoned above, the Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(ii).
Given that the Panel found that Complainant has failed to satisfy the second Policy element, the Panel is not required to consider whether the disputed domain name was registered and is being used in bad faith. However, because that determination in this case is so simple, the Panel does note, based upon the pertinent facts that the name was registered in 1999 and Complainant did not begin business until 2013, that there is no reason to suspect that the disputed domain name was registered in bad faith. See Beach People Intern'l Pty Ltd v. SIEBERT REALTY, FA1675767 (Nat. Arb. Forum June 23, 2016) ("...Complainant relies in part on 3 registered Australia trademarks...Each of those trademarks was registered on September 4, 2013. However, Respondent had registered the domain name many years before, on August 6, 1999...The Panel finds that there is no evidence on which it could be found that the domain name in the present case was registered in bad faith."); see also Meeza QSTP-LLC v. Frank, D2009-0943 (WIPO Sept. 15, 2009) ("...the Panel finds that Respondent was not aware of Complainant's not-yet extant mark at the time he registered the domain name. Accordingly, Respondent's registration of the domain name can not have been in bad faith.").
As reasoned above, the Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(iii).
Reverse Domain Name Hijacking
Respondent has not requested a finding of reverse domain name hijacking in this case, but the Panel is compelled to issue such a finding based upon the extremely poor presentation found in the Complaint. The Panel believes that Complainant should have known, based upon prior UDRP rulings, that it had absolutely no chance to prevail as to Policy ¶¶ 4(a)(ii) and (iii). Clearly, Respondent, who owned a USPTO registration for the MARKETSCORE mark during a period of disputed domain name ownership, could easily be commonly known as the disputed domain name, <marketscore.com>, even if known by other names. Clearly, Respondent was doing business ‒ i.e., engaged in a bona fide offering of services ‒ under that mark, whether or not that business was conducted on the most satisfactory basis. Clearly, if Complainant did not enter into business until 2013, no UDRP panel would find that a disputed domain name registered in 1999 was registered in bad faith with respect to Complainant. See WorldClaim Global Claims Man'm't v. Bishop, FA 1694577 (Nat. Arb. Forum Nov. 7, 2016) ("...it must have been evident to Complainant that Respondent had registered the disputed domain name over five years before the filing of the application for the WORLDCLAIM service mark...In the Panel`s view, bringing a UDRP complaint with such awareness is an abuse of the proceedings."); see also Thiercelin v. CyberDeal, Inc., D2010-0941 (WIPO Aug. 10, 2010) ("The Complainant knew that the [disputed] Domain Name was registered nearly 10 years before the Complainant acquired his registered rights...The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.").
In accordance with the factors cited above, the Panel believes the Complaint was brought in bad faith and is an abuse of the Policy. Thus a ruling of reverse domain name hijacking should obtain.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED; and the Panel also finds that reverse domain name hijacking has occurred.
Accordingly, it is Ordered that the <marketscore.com> domain name REMAIN WITH Respondent.
Dennis A. Foster, Panelist
Dated: January 2, 2017
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