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Generic Top Level Domain Name (gTLD) Decisions |
ADMINISTRATIVE PANEL DECISIONUnder the ICANN Uniform Domain Name Dispute Resolution |
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1. Parties and Contested Domain Name The Complainant is Acoustical Publications, Inc. of 27101 East Oviatt Road, Bay Village, Ohio 44140. The Respondent is Frank L. Citron, of 12 Cold Spring Drive, Trumbull, Connecticut 06611. The domain name is soundandvibration.com. The Registrar is Reg ister.com. 2. Procedural History The electronic version of the Complaint form was filed on-line through eResolution's Website on August 17, 2000. The hardcopy of the Complaint Form was received on August 22, 2000. Payment was received on the same date. Upon receiving all the required information, eResolution's clerk proceeded to: - Confirm the identity of the Registrar for the contested Domain Name; - Verify the Registrar's Whois Database and confirm all the required contact information for Respondent; - Verify if the contested Domain Name resolved to an active Web page; and - Verify if the Complaint was administratively compliant. The Clerk's Office of eResolution reached the following conclusions: the Registrar is Register.com, the Whois database contains all the required contact information, the contested Domain Name resolves to an active Web page, and the Complaint is administra tively compliant. This Panel confirms the Clerk's findings, except that this Panel finds the contested domain name is apparently "parked," and does not resolve to an active web page. This finding comports with the assertions of both Complainant and Resp ondent. An email was sent to the Registrar by eResolution's Clerk's Office to confirm the name of the billing contact and to obtain a copy of the Registration Agreement on August 17, 2000. The requested information was received August 22, 2000. The Clerk's Office then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on August 22, 2000. That date is the commencement date of the administrative proceeding. On August 22, 2000, the Clerk's Office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding. On September 11, 2000, the Respondent submitted his response via eResolution's Internet site. The signed version of the response was received on September 15, 2000. The complaint, official notification and all the annexes were sent by Canadian Registered Postal Mail to the Respondent's various addresses. According to the tracking system, all were delivered. On September 18, 2000, the Clerk's Office contacted the undersigned, and requested that he act as panelist in this case. On September 20, 2000, the undersigned accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality. On September 20, 2000, the Clerk's Office forwarded a user name and a password to this Panel, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System. On September 20, 2000, the parties were notified that the undersigned had been appointed and that a decision was to be handed down on October 3, 2000, save exceptional circumstances. 3. Factual Background Complainant publishes a monthly business magazine titled SOUND & VIBRATION. Published since 1967, the magazine covers the fields of noise and vibration control, equipment reliability, structural analysis, dynamic measurements, and dynamic testing. Compl ainant's Detailed Statement, Paragraph 1. Complainant registered with the U.S. Patent and Trademark Office the following composite trademark in connection with a magazine relating to "engineering acoustics and sound and vibration control": The mark is the subject of Registration No. 842,478, issued January 16, 1968. This Panel notes that the words "sound" and "vibration" have been disclaimed apart from the mark as shown. In the registration, Complainant claimed first use of the mark comme ncing in January, 1967. On March 20, 2000, Respondent received an e-mail at the address listed in its domain name registration information from Jack Mowry, stating: Dear Mr. Cintron, We are interested in the domain name soundandvibration.com. Please advise if this name can be acquired. Sincerely, Jack Mowry Jack Mowry is Complainant's authorized representative in this proceeding. 4. Parties' Contentions a. Complainant Complainant asserts the following: Complainant has been publishing since January 1967 a monthly business magazine entitled SOUND & VIBRATION. Detailed Statement, Paragraph 1. The publication covers the fields of noise and vibration control, equipment reliability, structural analysis, dyn amic measurements, and dynamic testing. Id. Complainant was incorporated in 1966, and registered its trademark, as shown above, in 1968. Complainant "wishes to establish a website under the URL 'http://www.soundandvibration.com.' Complainant intends to provide services of subscription, application and address change response forms, databases of articles and buyers guides, a bulletin board and other services. Detailed Statement, Pararaph 3. Complainant asserts that Respondent is the owner of the subject domain name, which has no presence on the Internet other than as a domain name registration, and provides no services. Complainant asserts that the domain name has been registered and is being used in bad faith, and that "circumstances indicate that the name has been acquired primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant, who is the owner of the trademark or service mark, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name." Detailed Statement, Paragraph 4. Complainant asserts the domain name "soundandvibration.com" is identical to the mark "Sound and Vibration" except for word spaces. b. Respondent Respondent asserts the following : Respondent admits that Acoustical Publications owns a mark that includes the words "sound and vibration" as part of the artwork and it is included in their publication "SOUND & VIBRATION". However, Respondent asserts that the mark as registered disclaims rights to the words "sound" and "vibration" apart from the entire mark as shown. Respondent has attached as an Annex a printout from the Trademark Registration Database of the U.S. Patent and Trademark Office, corroborating his assertion. Respondent asserts that the domain name soundandvibration.com was named after the common scientific terms "sound" and "vibration" which describe physical phenomena. The phrase "sound and vibration" is widely used in physics and engineering. Respondent h as attached as an Annex material he asserts to come from an engineering textbook by William W. Seto entitled MECHANICAL VIBRATIONS-SHAUM'S OUTLINE SERIES, 1964 McGraw-Hill Inc. The Annex is an excerpt from Chapter 9 of that book, entitled VIBRATION & SOU ND. Respondent points out that the book was published in 1964, three years before Complainant asserts it first published its magazine. Respondent asserts the domain name soundandvibration.com does not yet provide a service due to his lack of know-how as far as creating and maintaining an internet web page. Respondent asserts the original idea behind registering the domain name came when he was searching for technical information on the Internet on the subject of sound and vibration and found very little useful information on the topic. Due to that lack of i nformation, Respondent decided to create and maintain a free public information and research site for questions and answers, where people with similar needs could find some answers. Respondent asserts that on March 30, 2000, he received an e-mail from Mr. Jack Mowry expressing interest in acquiring the domain name. It was then that Respondent looked into the possibility of selling the domain name. Respondent asserts he used guidelin es from great-domains.com, attached to the Response, for pricing and valuation criteria. Respondent asserts that the domain name soundandvibration.com "is not making any allusions or disrupting in any way the publication SOUND & VIBRATION. There are no and there have not been any commercial gains from the use or lack of use of the domain name ." Respondent asserts he is still interested in pursuing his original idea of creating and maintaining a free public questions/answers and general information web site, where the public could post and find answers on the topic of sound and vibration. 5. Discussions and Findings The UDRP Policy requires the Complainant to prove each of the following three elements, in order to prevail in this proceeding: 1. That the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and 2. That Respondent has no rights or legitimate interests in respect of the domain name; and 3. That the domain name has been registered and is being used in bad faith. UDRP Policy, Section 4(a). As has been pointed out by previous Panels, it is not sufficient to prevail that a Complainant prove only registration in bad faith; rather, the Complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainme nt, Inc. v. Michael Bossman, Dispute No. D99-0001; Robert Ellenbogen v. Mike Pearson, Dispute No. D00-0001. However, the UDRP Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith: (i) Circumstances indicating that [the Registrant has] registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or ser vice mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or (ii) [the Registrant has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Registrant has] engaged in a pattern of such conduct; or (iii) [the Registrant has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the Registrant has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location. UDRP Policy, Section 4(b). These circumstances are non-inclusive, and the Panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id. The Respondent may demonstrate rights or legitimate interests to the domain name by any of the following, without limitation: (i) Before any notice of the dispute, Registrant'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) Registrant, as an individual, business, or other organization has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) Registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. UDRP Policy, Paragraph 4.c. This Panel finds that Complainant has not proved all of the factors necessary to entitle it to relief. The Panel will address each of the factors in turn. a. Similarity of the domain name to a mark in which Complainant has rights. As is shown by Complainant's Detailed Statement, and the Trademark Office records submitted by Respondent, Complainant's mark is a composite mark consisting of the letters S and V in a stylized logo, with the words "sound and vibration" underneath in smal ler type. By its larger size and stylization, it is clear that the dominant portion of Complainant's registered trademark is the SV logo, and that the words "sound and vibration" are subservient. Respondent's domain name has copied only the subservient portion of the registered mark, and therefore cannot be considered identical or confusingly similar to Complainant's registered mark. Complainant could also rely on common-law rights for the title to its magazine, SOUND & VIBRATION. However, this Panel finds that Complainant has not established rights to these words. First, as pointed out by the Respondent, these words are terms of ar t used in engineering to describe the phenomena, which are the subject of Complainant's magazines. As such, these words are highly descriptive or generic for the subjects they cover. Complainant has made no showing that these words have acquired distinc tiveness in order to create trademark rights. Complainant itself has admitted these words are descriptive by virtue of disclaiming rights to them in its federal registration. 3 J.T. McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, § 19:65 (4th E d. 2000) and cases cited therein. Therefore, this Panel finds that Complainant has not established rights in the words "sound and vibration," standing alone, for purposes of this proceeding. b. Respondent's claim to a right or legitimate interest in respect of the domain name. Respondent has asserted that it registered the domain name with the intent of creating a research site for questions and answers on the subject of sound and vibration. As noted above, the words "sound and vibration" are highly descriptive or generic for discussions of these phenomena. Therefore, Respondent has asserted a legitimate interest in respect of the domain name, at least as of the time it was registered. Complainant has asserted that Registrant has no presence on the Internet and provides no s ervices of any kind. The UDRP Policy requires that Respondent either have made use of the domain name with a bona fide offering of goods or services, have made demonstrable preparations to use the domain name, or that Respondent be making a legitimate no n-commercial or fair use of the domain name. Had Respondent actually been making use of the domain name in the manner he states is intended, this Panel would find that such use would be legitimate for fair use. Nevertheless, this Panel cannot make such a finding because Respondent is not actually using the domain name. Therefore, Respondent has not demonstrated rights or legitimate interest to the domain name under the factor set forth in the Policy. At the same time, Complainant's assertions regarding Registrant's lack of use were countered by Registrant's explanation that he lacks the ability to create and maintain an Internet web page. Given Respondent's plausible explanation for his intended web page, this Panel finds Complainant has not met its burden of proving this factor. c. The domain name has not been registered or is being used in bad faith. Complainant has not met its burden to prove that the domain name has been both registered and used in bad faith. Respondent asserted he intended to use the term in connection with a website discussing the phenomena of sound and vibration. While Responde nt has not presented any evidence to prove this assertion, the assertion is at least logically consistent, and Complainant has presented no evidence or arguments proving otherwise. This Panel cannot say the Respondent could never have any legitimate clai m of right to use the words, since the words of the mark are ordinary technical terms, being used by Complainant and intended to be used by Respondent to refer to subjects commonly referred to by the words. Likewise, Complainant has failed to prove that the domain name is being used in bad faith. Complainant has not proved that the domain name was registered or acquired primarily for the purpose of selling, renting or transferring the domain name registrati on to Complainant. Rather, it was Complainant who first contacted Respondent to purchase the domain name months after it had been registered by Respondent. Neither has Complainant proved that Respondent has registered the domain name to block Complainan t from reflecting its trademark in a corresponding domain name, nor to disrupt the business of Complainant, nor to attract Internet users to his website or other online location. In essence, Complainant has shown that Respondent has registered a domain name corresponding to words describing physical phenomena which are discussed in a magazine whose title includes those words; Respondent has no Internet site corresponding to his do main name; and Respondent responded to Complainant's offer to purchase its domain name. This is not sufficient proof to entitle Complainant to relief herein. 6. Conclusion This Panel decides that the Complainant has not proven each of the three elements in Section 4(a) of the UDRP Policy in the present proceeding. Therefore, pursuant to Paragraph 4(I) of the UDRP Policy, and Paragraph 15 of the UDRP Rules, this Panel must deny the Complaint. The domain name shall remain registered to the Respondent. Date: October 3, 2000 Arlington, Virginia, USA
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URL: http://www.worldlii.org/int/other/GENDND/2000/1173.html