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Fifty Plus Media Corporation v. Digital Income [2000] GENDND 699 (17 July 2000)

National Arbitration Forum

DECISION

Fifty Plus Media Corporation v Digital Income, Inc.

Claim Number: FA0005000094924

PARTIES

The Complainant is Fifty Plus Media Corporation, Mountain View, CA, USA ("Complainant"). The Respondent is Digital Income, Canada ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain name at issue is "50PLUS.COM", registered with Network Solutions Inc. ("NSI").

PANELIST(s)

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 05/30/2000; The Forum received a hard copy of the Complaint on 05/30/2000.

On 05/31/2000, NSI confirmed by e-mail to The Forum that the domain name "50PLUS.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 05/30/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 06/19/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email. The Respondent was granted one extension, setting a new deadline of 07/05/2000.

On July 6, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Judge Harold Kalina (Ret.) as Panelist.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant offers goods, information, travel, leisure, and financial services to senior citizens. The Complainant contends Respondent has registered a domain name that is phonetically identical to equivalent portions of Claimant’s business trademarks, and confusingly similar to various business trademarks which have been registered, or are pending registration, with the US Patent and Trademark Office. These trademarks have been in use prior to the date of Respondent’s registration of the domain name. Complainant has been using 50+ MORGAN HALL trademark since 1995. Complainant has acquired the following marks from the US Patent and Trademark Office: MORGAN 50+ (in an Oval), (Class 16), Reg. #2,133,882 (first use 6-1-96), and Reg. #2,145,778 (Class 35). Complainant has registrations pending for the following: 50+ Discount Directory, Reg. #75/884,376 filed on 12-29-99 (first use June 1, 1996), and 50+ Buyer Discount Card, Reg. #75/884,354, filed on 12-29-99 (first use June, 1996). Complainant’s MORGAN HALL marks are corporate marks composed of the house mark Morgan Hall Publishing, Inc., the predecessor in interest, super-imposed over the 50+ in and oval design. Complainant claims that the most distinctive and dominant feature of the mark is "50+".

Complainant further contends that the domain name, "50Plus.com", registered on July 24, 1998, is phonetically identical to the 50+, Fifty Plus, and other phonetically equivalent portions of Complainant’s trademarks. That the symbol "+" cannot be used in a domain name, and to consumers in context of the Internet, the symbol "+" and the word "plus" are interchangeable. That the word "plus" replaces the symbol "+", making the term identical.

Complainant alleges that Respondent has leased the rights to the domain name to a direct competitor, Fifty-Plus.net.Inc., which is offering and providing nearly identical goods and services to senior citizens, the customers Complainant serves, causing customer and user confusion.

Complainant is aware of no evidence of Respondent’s use of, or demonstrable preparation to use the domain name in a bona fide offering of goods and services. That Respondent has no rights or legitimate interest in the domain name.

Complainant believes Respondent registered the domain name with the intent to sell, rent, or otherwise transfer the domain name to Complainant, or to a competitor of Complainant for a valuable consideration in excess of its documentable out-of-pocket costs directly related to the domain name.

B. Respondent

Respondent denies all of Complainant’s allegations. Specifically, Respondent denies the domain name is identical to, or confusingly similar to Complainant’s business trademarks. Respondent submits that the Complainant’s trademarks refer to MORGAN HALL 50+, of which "50+" is a small portion of the trademark in use by Complainant. Respondent contends that the 50+ is too general for Complainant to establish sole and exclusive rights. Respondent entered the term 50Plus in two search engines. In the first search there were 50,317 hits on the term 50Plus. On checking the first 15 pages, or 150 sites found in the search, Respondent found no reference to the site belonging to Complainant. On April 13, 2000, Respondent leased the exclusive rights to the domain name to Fifty-Plus.net.Inc. In this first search Fifty-Plus.net.Inc. was found at the 23^rd site visited. In the second search, there were 43,137 hits on the term 50Plus, with again no reference to Complainant.

Respondent claims to have found more than 60 existing world wide trademarks on the term 50Plus.

In response to Complainant’s allegations that Respondent offered to sell, or rent the domain name, Respondent states that Complainant first contacted Respondent on March 24, 2000 inquiring whether Respondent was interested in selling, renting… the domain name to Complainant. Discussions continued until April 11, 2000. On April 13, 2000 entered into its agreement with Fifty-Plus.net.Inc. Respondent admits he put a valuation on the domain name, but denies he ever offered to sell or lease the domain name to Complainant.

Respondent readily admits that it has registered a number of domain names that are descriptive and generic, but has not knowingly registered any domain name which is a company trademark. Respondent contends that it had never heard of, or had knowledge of Morgan Hall Publishing or Fifty Plus Media Corporation, or their trademarks prior to his registration. Respondent admits to selling or leasing over 30 domain names, all of which are descriptive/generic names. Respondent considers itself to be a viable Internet business which deals in selling or leasing descriptive/generic names.

Respondent requests Complainant’s Claim be dismissed.

FINDINGS

1. Complainant, Fifty Plus Media Corporation, has been using the trademark MORGAN HALL 50+, 50+ Discount Directory, and 50+ Buyer Discount Card in its business since 1995. The domain name at issue is not identical to , or confusingly similar to Complainant’s business trademarks.
2. Respondent registered the domain name with Network Solutions on July 24, 1998.
3. On April 13, 2000 Respondent leased the exclusive world-wide rights to the domain name to Fifty-Plus.net.Inc.
4. There are more than 60 existing world-wide trademarks on the term 50Plus
5. Complainant and Respondent’s lessee, Fifty-Plus.net.Inc., are engaged in providing similar goods and services to senior citizens.
6. Complainant initiated the offer to acquire the rights to the domain name from Respondent on March 24, 2000, and continued its interest to acquire rights even after Respondent had leased to Fifty-Plus.net.Inc. Respondent gave Complainant a value he placed on the domain name, but never offered to sell or lease to Complainant.
7. Complainant offered no credible evidence to support its claim that Respondent registered the domain name in bad faith or that Respondent has no rights or legitimate interest in respect to the domain name
8. Complainant has failed to prove any of the three elements necessary to support its claim to have the domain name transferred from the Respondent.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that the complainant must prove each of the following three elements to support a claim 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.

The domain name "50Plus.com" is found not to be identical nor confusingly similar to Complainant’s trademarks.

Complainant has failed to prove that Respondent has no rights or legitimate interest in the use of the domain name.

Complainant has failed to prove that Respondent registered the domain name in bad faith.

DECISION

The undersigned certifies that he has acted independently, and has no known conflict of interest to serve as the arbitrator in this proceeding. Having been duly selected, and being impartial, I make the following determination:

Based upon the above, I find in favor of the Respondent. Therefore, the remedy

requested by the Complainant pursuant to Paragraph 4.i of the Policy denied. The

Respondent shall not be required to cancel or to transfer to the Complainant the

domain name "50Plus.com".

July 17, 2000

Honorable Harold Kalina, Arbitrator

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