NAOP LLC v. Name Administration Inc. (BVI)
Claim Number: FA0808001220825
Complainant is NAOP, LLC (“Complainant”), represented by Christina
S. Loza, of Loza & Loza LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jumppro.com>, registered with Domain Name Sales Corp.
The undersigned certifies 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.
Hon. James A. Carmody, David S. Safran, Esq., and Joel M. Grossman, Esq., Chair, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 15, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 20, 2008.
On August 18, 2008, Domain Name Sales Corp. confirmed by e-mail to the National Arbitration Forum that the <jumppro.com> domain name is registered with Domain Name Sales Corp. and that Respondent is the current registrant of the name. Domain Name Sales Corp. has verified that Respondent is bound by the Domain Name Sales Corp. 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 August 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 10, 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 September 10, 2008.
On September 15, 2008, Complainant submitted a timely Additional Submission pursuant to the National Arbitration Forum’s Supplemental Rule 7. On September 22, 2008, a timely Additional Submission was submitted by Respondent.
On September 24, 2008, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. James A. Carmody, David S. Safran, Esq., and Joel M. Grossman, Esq., Chair, as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts that the domain name <jumppro.com> is identical to, or confusingly similar to its JUMPRO mark, noting that the addition of a second letter “p” does nothing to avoid the confusion. Complainant also claims that it now has, and at the time the domain name was registered had, rights in the mark. The application for the mark was first filed on October 2, 2003 and the mark was registered with the USPTO on July 18, 2006. Complainant maintains that as early as April, 2003, well before the registration issued, the mark was in use in commerce. The Respondent’s domain name was registered on January 19, 2004. Even though the trademark registration was not granted until July, 2006, Complainant asserts that its rights revert back to the date of application, which predates Respondent’s registration of the domain name. Thus, Complainant asserts that it meets the first test, that the domain name is identical or confusingly similar to a mark in which it has rights.
Complainant next asserts that Respondent has no rights or legitimate interests in the name. To this end Complainant points out that Respondent is not making a bona fide offering of goods or services in connection with the name, noting that the website bearing the name is used to provide links to other sites; indeed Complainant asserts that the domain name is so close to its mark that Internet users are confused when they search for Complainant’s site or products. According to Complainant, Respondent is also not making a legitimate noncommercial use of the name. Complainant therefore asserts that it has met the second prong of the test by showing that Respondent has no rights or legitimate interests in the name.
Finally, Complainant alleges that the name was registered and is being used in bad faith. Complainant asserts that the name was registered and is being used primarily to disrupt Complainant’s business, which is to sell trampolines. Complainant notes that the links on Respondent’s website are to sellers of trampolines, trampoline parts and trampoline accessories. Thus, Complainant has shown bad faith because Respondent, for commercial gain, is using an identical or confusingly similar name to divert business from Complainant to businesses linked to Respondent’s site who presumably are rewarding Respondent with pay-per-click fees. Thus Complainant asserts that it has met the third prong of the Policy showing that Respondent registered and is using the name in bad faith.
Respondent does not challenge Complainant’s assertion that the domain name is identical to or confusingly similar to Complainant’s mark. However, Respondent notes that Complainant did not have rights in the mark until its trademark issued in 2006, well after the domain name was registered in 2004. This point is further elaborated in discussing whether the name was registered in bad faith.
Respondent also contends that it has rights and legitimate interests in the name. Respondent is in the business of acquiring domain names that use common terms. In the present case, the domain name combines two common words—“jump” and “pro” (short for professional)—and derives revenues by driving Internet users to websites that sell trampoline-related products, thereby earning pay-per-click fees. Respondent contends that this is a bona fide use of a domain name.
Finally, Respondent contends that the relief sought by Complainant must be denied because Respondent registered its domain name without any knowledge of–or ability to acquire knowledge of–Complainant’s mark, and thus could not have registered the name in bad faith. Registration in bad faith would require some knowledge, actual or constructive, of Complainant’s use of its mark. But in this case, Respondent contends there is no evidence of any actual use of the mark in commerce at the time Respondent registered the domain name. Respondent claims that it cannot have registered the domain name in bad faith if the use of the mark was unknowable at the time. Thus, even if Complainant were to prevail on other points, it cannot demonstrate that the domain name was registered in bad faith.
C. Additional Submissions
In its Additional Submission Complainant states that the JUMPRO mark was first used in commerce on April 24, 2003, that the trademark filing date was October 2, 2003, and that the domain name was registered on January 19, 2004. Thus, the mark was used in commerce 9 months before the domain name was registered. Complainant notes that a specimen and date of first use were submitted to the USPTO in 2003. Complainant further notes that under the Policy, common law rights are recognized, not just registered trademark rights.
In its Additional Submission Respondent describes the key issue in this case as “what could the Respondent have possibly known at that time [when it registered the domain name]?” Respondent challenges Complainant’s assertion that it had common law rights, or any rights at all in the mark, at the time the domain name was registered. Respondent points out that Complainant has submitted no evidence, such as advertisements or representations as to where it was selling trampolines, or how many were being sold. Such evidence is required to support a claim of common law trademark rights. The fact that Complainant submitted a specimen to the USPTO is not at all relevant to proving actual use of the mark in commerce. Respondent also raises the claim of reverse domain name hijacking, asserting that the Complaint was brought in bad faith, with knowledge that Complainant could not prevail.
The Panel unanimously finds that Complainant has failed to demonstrate that it had rights in the mark at the time that the domain name was registered, and has failed to demonstrate that the domain name was registered in bad faith. Because of this finding, the Panel denies any relief to Complainant. The Panel also finds that the Complaint was filed in good faith, and Complainant has not committed reverse domain name hijacking.
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.
While the Panel finds that the domain name <jumppro.com> is identical to or
confusingly similar to the JUMPRO mark, the Panel finds that Complainant has
not shown it had rights in the name at the time the domain name was registered.
The Panel agrees with Complainant that
In light of the findings set forth above in connection with Complainant’s failure to demonstrate rights in the name, and the findings set forth below in connection with Complainant’s failure to demonstrate bad faith registration, the Panel declines to discuss this element of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002).
As discussed above in connection
with Complainant’s lack of rights in the mark, Complainant has failed to
demonstrate that it had common law rights in the mark prior to the 2006 federal
trademark registration. As Respondent correctly points out, there can be no
showing of bad faith registration when Respondent could not have known of
Complainant’s rights in the mark at the time it registered the domain name. As the panel found in the case of
Reverse Domain Name Hijacking
While the Panel denies relief to
Complainant, the Panel is not persuaded that the Complaint was filed in bad
faith. Given the virtual identity between the JUMPRO mark and the domain name,
the Panel accepts that Complainant honestly believed its rights were being
Respondent has raised other issues in connection with this matter, such as whether Complainant is the proper party, and whether the JUMPRO mark is protectible, since it is a combination of two generic terms. Given the decision set forth above, the Panel finds it unnecessary to address these issues, and therefore declines to do so.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Joel M. Grossman, Esq., Chair, Panelist
Dated: October 7, 2008
Hon. James A. Carmody, Panelist David S. Safran, Esq., Panelist
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