Media Bridge Inc. v. Mediabridge Infosystems Inc.
Claim Number: FA1912001873710
Complainant is Media Bridge Inc. (“Complainant”), represented by Alexander J. Farrell, USA. Respondent is Mediabridge Infosystems Inc. (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mediabridge.com>, registered with Network Solutions, LLC.
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 December 4, 2019; the Forum received payment on December 4, 2019.
On December 9, 2019, Network Solutions, LLC confirmed by e-mail to the Forum that the <mediabridge.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 December 13, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2020 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 13, 2019, 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 January 5, 2020.
A timely Additional Submission from Complainant was received and determined to be complete on January 10, 2020.
A timely Additional Submission from Respondent was accepted by the Panel on January 14, 2020.
The Panel has taken both Additional Submissions into consideration in formulating this Decision.
On January 8, 2020, 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, Media Bridge Inc., has provided advertising agency services and related marketing consulting services since at least 2010. In conjunction with those services, Complainant has used the MEDIA BRIDGE ADVERTISING service mark during that time period. Complainant registered that mark with the United States Patent and Trademark Office (“USPTO”).
- The disputed domain name, <mediabridge.com>, is confusingly similar to Complainant's MEDIA BRIDGE ADVERTISING service mark. The name merely excludes the generic term, "advertising," found in the mark, and adds an obligatory generic top-level domain ("gTLD") ".com." Those differences fail to distinguish meaningfully the disputed domain name from the service mark.
- Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not permitted or licensed by Complainant to use the MEDIA BRIDGE ADVERTISING service mark and is not commonly known by the disputed domain name. Moreover, Respondent is using the disputed domain name neither to make a bona fide offering of goods or services nor for a legitimate noncommercial or fair use. Evidence indicates that Respondent ceased business operations some time ago. Now, Respondent uses the disputed domain name to mimic Complainant in order to promote services that compete directly with Complainant's business.
- Respondent has registered and uses the disputed domain name in bad faith. Respondent is a domain name speculator and cybersquatter who is using Complainant's good faith offer to buy the disputed domain name as a tool to illegitimately drive up the price of the name through deceptive counter-offer measures. Evidence that Respondent has closed its New York office, in favor of a California post office box address, suggests that Respondent operates in bad faith and not as a legitimate business.
- Respondent was incorporated as Mediabridge Infosystems, Inc. on Oct. 14, 1994, and began offering computer consulting and web-hosting services. At the same time, Respondent registered the disputed domain name, <mediabridge.com>, which has been used continuously to support Respondent's business operations since then. In short, Respondent has established common law rights in the MEDIABRIDGE mark.
- Respondent has rights and legitimate interests in the disputed domain name, as it is and has been engaged in the bona fide offering of services in connection with that name. Respondent's founding partners relocated from New York City to San Francisco, thus changing mailing address, but not the rendering of services, under their corporate structure.
- Respondent registered and is using the disputed domain in good faith. The name was registered by the Respondent some sixteen years before Complainant came into existence. Respondent responded legitimately to Complainant's purchase offer for the disputed domain name, but concluded, as Respondent had with respect to other similar offers from third parties, that Complainant's offer was inconsistent with Respondent's business operations.
C. Complainant Additional Submission
- Respondent has not used the disputed domain name for bona fide offerings as of at least 2000. Moreover, there is scant evidence that the name was ever put into use as more than a place-holder by Respondent.
- Complainant has superior rights in the MEDIA BRIDGE mark with respect to Respondent.
- Respondent misstated when it claimed to have submitted a copy of the Response to Complainant, and the Panel should draw a negative inference regarding Respondent due to this clear factual misstatement.
D. Respondent Additional Submission
The Respondent sent a Response to the Complainant on January 6, 2020.
Complainant, Media Bridge, Inc., is a United States company that has provided marketing and related consulting services since 2010. Complainant conducts its operations under the service mark, MEDIA BRIDGE ADVERTISING, which Complainant registered with the USPTO (i.e., Reg. No. 5819167; registered July 30, 2019).
Respondent, Mediabridge Infosystems, Inc., owns the disputed domain name, <mediabridge.com>, which it registered on October 14, 1994. Respondent has used the name in connection with its business of providing computer and web-hosting services.
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 the Panel's findings below and the necessity of Complainant to prevail on all three elements required under the Policy, the Panel finds it unnecessary to rule on Policy ¶ 4(a)(i) in this case. See, for example, Chooser S.A. v. Yoon, D2015-0813 (WIPO July 31, 2015) ("Because of the Panel’s findings in relation to the bad faith ground below, it is not necessary for the Panel to make findings on this ground.").
Policy ¶ 4(c)(ii) states clearly that a Respondent may establish its rights or legitimate interests in a disputed domain name by providing evidence that it is commonly known by that name. Although Respondent did not contend explicitly that it is commonly known as the disputed domain name, <mediabridge.com>, in the Panel's opinion it is beyond obvious that Respondent, "Mediabridge Infosystems, Inc.," would likely be known as such. The first term of Respondent's corporate name is exactly the same as the operative term of the disputed domain name. See Mechoshade Systems, LLC v. Mecho Investments, FA 1784649 (Forum June 18, 2018) (finding for the respondent based upon Policy ¶ 4(c)(ii), where the disputed domain name, <mecho.com>, precisely matched the first word of the respondent's company name "Mecho," ).
Moreover, Respondent contends, with supporting evidence, that it has been in the business of providing computer consulting and related services, which are unrelated to Complainant's offerings, in connection with the disputed domain name since 1994. The Panel finds that this continuous action by Respondent constitutes use of the disputed domain name in a bona fide offering of services, a criterion cited in Policy ¶ 4(c)(i) as sufficient to establish a respondent's rights and legitimate interests in a disputed domain name. See VIP ME ENTERPRISES LLC v. frank ma., FA 1702016 (Forum Dec. 20, 2016) (“Respondent contends that the Domain Name is used for a legitimate offering of on-line retail services featuring women’s fashion apparel which is unrelated to Complainant’s use of the VIPME mark...On that basis, the Panel considers that Respondent has sufficiently demonstrated rights or legitimate interests in the Domain Name through its use.”)
Accordingly, the Panel finds that Complainant has failed to prove that Respondent has no legitimate rights or interests in the disputed domain name.
As Complainant has failed to prevail with respect to the second element required under the Policy, the Panel declines to make a full analysis of this third element. However, the Panel does note that it would be extremely unlikely for Complainant to offer a convincing argument that the disputed domain name was registered in bad faith, since that name was registered sixteen years before Complainant came into existence. See, See Beach People Intern'l Pty Ltd v. SIEBERT REALTY, FA 1675767 (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.").
Reverse Domain Name Hijacking
Respondent has not specifically requested that the Panel issue a finding of reverse domain name hijacking ("RDNH") in this case but, given the egregious nature of this filing, the Panel believes that the subject must be addressed. In order to rule that RDNH has occurred, the Panel must find that Complainant brought the case in bad faith and engaged in an abuse of this administrative proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 4.16.
In this case, the Panel believes that it should have been obvious to Complainant that the first (and dominant) term of Respondent's corporate name, "Mediabridge Infosystems, Inc.," mirrored the disputed domain name, <mediabridege.com>, and that the name had been registered by Respondent some sixteen yeas before Complainant was even created. Ergo, Complainant could never have hoped to prevail with respect to the last two elements required under the Policy, because Respondent most likely would have been commonly known as the disputed domain name to a relevant public and there was absolutely no basis to claim that the name was registered in bad faith. See Duoserve, Inc. d/b/a ScheduFlow v. ScheduleFlow Pty Ltd, FA 1759845 (Forum Jan. 17, 2018) (finding RDNH where, "...Complainant has known at all times that Respondent is commonly known by the disputed domain name, as the Complaint itself names Respondent as ScheduleFlow Pty Ltd which corresponds directly to the disputed domain name [<scheduleflow.com>]."); 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."). Consequently, the Panel concludes that this case was brought in bad faith and is an abuse of the administrative proceeding.
As a result, the Panel finds that the Complainant in initiating this proceeding has attempted reverse domain name hijacking.
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 the Complainant, in initiating this proceeding, has attempted reverse domain name hijacking.
Accordingly, it is Ordered that the <mediabridge.com> domain name REMAIN WITH Respondent.
Dennis A. Foster, Panelist
Dated: January 22, 2020
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