Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Corey Hauer Desktop Media, Inc., Albert Lea, MN, USA ("Complainant") represented by Dustin R. DuFault, of Kinney & Lange, PA. The Respondent is Ron Gewirtzman Desktop Media, Inc., Glen Spey, NY, USA ("Respondent").

The domain name at issue is "desktopmedia.com" registered with Network Solutions, Inc.

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as a panelist in this proceeding.

James Alan Crary as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on March 7, 2001; the Forum received a hard copy of the Complaint on March 8, 2001.

On March 8, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "desktopmedia.com" is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5 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 March 8, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 28, 2001 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 postmaster@desktopmedia.com by e-mail.

A timely response was received and determined to be complete on March 28, 2001.

On April 2, 2001, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed James Alan Crary as Panelist.

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

A. Complainant

The Complainant is an owner of a trademark DESKTOP MEDIA which mark was allegedly first used in the year 1990. A trademark application dated November 14, 2000 indicates the mark is used in connection with personal computers, modems, scanners, printers, computer hardware, and computer software, for use in receiving and transmitting information from the global computer network. Complainant alleges a common law trademark as well.

Complainant maintained that the disputed domain name desktopmedia.com is identical and confusingly similar to Complainant’s DESKTOP MEDIA mark since except for the space between DESKTOP and MEDIA and the absence of the ".com", they are identical. Actual confusion is also alleged in that Respondent had related that it had received e-mails from Complainant’s customers who were under the impression Respondent’s domain name was actually the Complainant.

It was maintained that Respondent should be considered as having no rights or legitimate interests with respect to the domain name desktopmedia.com: "any use of the domain name in connection with a bona fide of offering of goods and/or services has ceased to exist." It was maintained that any rights or legitimate interests in respect to the domain name that Respondent may have had were terminated when Respondent ceased to use the domain name in connection with a bona fide offering of goods or services. It was asserted that Respondent merely used the domain name in order to receive e-mails citing Respondent’s failure to link the e-mail address with a bona fide offering of goods and/or services. It was further asserted that by offering the domain name for sale there was evidence that Respondent no longer intended to make any demonstratable preparations to ever again use the domain name for any bona fide use.

Complainant asserted that Respondent was not making a legitimate non-commercial or fair use of the domain name.

Respondent had discontinued the practice of advising Internet users who e-mailed Respondent concerning the Complainant that they were in error. Complainant offered to pay for this service but Respondent declined to continue to advise e-mailers of their error. It was asserted that Respondent was creating a barrier to Complainant’s customers and in turn using this barrier to leverage the asking price for the domain name. Complainant also asserted that Respondent’s practices tarnished Complainant’s trademark in the effort to extract a higher price for transfer of the domain name.

Complainant maintained that while that at the time of the registration of the disputed name "the domain name was more than likely not used in bad faith" a prima facie case of bad faith occurred when Respondent ceased to use the domain name in connection with a bona fide offering of goods or services and by offering the domain name for sale for a price far in excess of the out-of-pocket costs of registration.

Complainant again cited the confusion experienced by customers who mistakenly e-mail Respondent. Respondent used this knowledge as leverage to artificially increase the price at which Respondent would sell the domain, which was prima facie evidence of bad faith.

B. Respondent

Respondent claimed a right to a trademark in "DESKTOP MEDIA" and intended to oppose claimant’s application before the U.S. Patent and Trademark Office. It was noted that the Complainant offered no proof for the support of the contention that first use occurred in 1990.

It was asserted Complainant had the opportunity to acquire desktopmedia.com before the Respondent registered the domain name March 12, 1996. Instead Complainant chose a different domain name.

Respondent was in the publishing business and it properly obtained the domain name desktopmedia.com and used it in the connection with its business, which is different and distinct from the goods and/or services offered by Complainant.

Respondent insisted it had a fully functioning domain offering goods and services, the web site consisted of more than just an E-mail address and bona fide services and/or goods were being offered at the web site.

The Respondent maintained that due to a company reorganization various assets including the domain name were made available for sale to the general public. The domain name in dispute was not offered for sale to any one entity specifically. It was asserted that the domain name is no longer for sale and not subject to claim by the Complainant.

Respondent denied bad faith use. The domain name is used in connection with its legitimate business operation.

The Respondent attached various documents indicating receipt of payment for services rendered and payment of outstanding accounts in connection with its business. There was also a letter from Respondent’s landlord attesting to bona fide activity in the publishing field. Respondent also included a copy of a February 28, 2001 letter from Dustin R. DuFault indicating an offer of $1200 to purchase the disputed domain name.

C. Additional Submissions

Complainant again emphasized that its claim is founded both on its trademark application and on common law rights based on a first use dating to 1990. Its verified statement that common law use began in 1990 satisfied federal law as to use of the mark.

It was reiterated that Respondent’s were in a situation where Complainant’s customers mistakenly accessed Respondent’s web site under the false belief that desktopmedia.com is Complainant’s web site.

Complainant asserted that Respondent has since modified its web site after being put on notice it was in dispute. Prior to the knowledge of the dispute the only link available on the web page was an e-mail address available to accept offers for the domain name.

Complainant asserted that the response to Complainant’s offer to purchase at $1200 dated February 28, 2001 was met with a rejection in which Respondent described receiving up to 70 e-mails a day relating to Complainant including sales requests and complaints. This was asserted to be evidence that Respondent was seeking leverage to increase the price it sought for the domain name.

Complainant further asserted that Respondent had in effect abandoned rights to the disputed domain name arguing that upon offering the domain name for in excess of out-of-pocket expenses, Respondent relinquished its rights in the domain name "at which time abandonment of the domain name occurred" "this abandonment of the domain name caused by the Respondent offer to sell the domain name in great excess of Respondent’s out-of-pocket expenses extinguished Respondent’s rights and legitimate interests in the domain name." Finally it was asserted that the response did not comply with the Paragraph 5 (b) (vii), which requires that the response state that a copy of the response has been sent or transmitted to the Complainant in accordance with Paragraph 2 (b).

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.

The thrust of the Complainant’s position is founded on Complainant’s assumption that:

Respondent rebutted that assumption on the Complainant’s part indicating that it is in and has been in the publishing graphics business for a number of years. The Panel concluded that Respondent’s assertion that it was indeed engaged in publishing and graphics business was supported by the greater weight of the evidence.

Both the terms "desktop" and "media" are generic and descriptive in nature. The Complainant does not assert nor does the evidence support a finding that the trademark by long use and popular notoriety has achieved a secondary meaning, which would entitle it to special trademark protection.

Here for the limited purposes of the domain name dispute resolution process a low threshold of proof is all that is required to meet the first element and it was concluded by the Panel that the domain name desktopmedia.com was confusingly similar to a trademark in which the Complainant has rights. Phone-N-Phone Services (Bermuda) Ltd. v. Shlorni (Salomon) Levi, D-2000-0040 (WIPO MAR-23, 2000).

As was noted above, it was concluded that Respondent engages in the publishing and graphics business since apparently sometime in the mid-1990’s based on the written statement of Respondent’s landlord and it’s domain name registration in 1996. There was no evidence to indicate that the Respondent had ceased its operations or ceased to exist. As Respondent contended, it put the domain name up for sale in connection of other corporate assets for a business purpose, and the Panel so finds. Respondent’s contention that other assets were liquidated and the disputed domain name is no longer for sale as of the time of these precedings was not in any way rebutted by Complainant’s submissions. While it was concluded that Respondent may not have been operating an active web site and only recently added material to embellish its presence, this is immaterial. The Respondent had been using the registered domain name in connection with it’s business in publishing and graphics for approximately five years prior to notice of the dispute. There was nothing in the party’s contentions nor in the evidence to support a finding that the Claimant and the Respondent were in competition. Complainant operates in the computer and software fields, Respondent in publishing and graphics.

Complainant has failed to support its contention that Respondent has somehow abandoned the disputed domain name. There was no evidence however that the registration was not maintained appropriately with Network Solutions, Inc. There is no provision in the Policy or Rules, which suggests that the failure to have an active web site indicates abandonment of the disputed domain name. Here the evidence is that for a period of time the Respondent for a legitimate business purpose was attempting to sell desktopmedia.com and was using the web site for that sole purpose. The disputed domain name was also the Respondent’s corporate name and the evidence supports a finding that Respondent has operated under the name Desktop Media, Inc. in the conduct of its business. The Panel gave very little weight to Complainant’s arguments concerning abandonment of domain name since there was not creditable evidence to suggest that Respondent had actually abandoned the disputed domain name.

It is clear from the legislative history that under the Policy and Rules the Complainant must establish not only bad faith registration, but also bad faith use. World Wrestling Foundation Entertainment, Inc. v. Michael Bosman D-99-0001 (WIPO Jan 14 2000).

The Complainant statement that "Respondent may have used the domain name desktopmedia.com in connection with a bona fide offering of goods and/or services" is essentially an admission that at the time of registration Respondent acted in good faith. Complainant’s arguments that Respondent somehow abandoned the domain name because the site was inactive was without merit. So it was concluded that Complainant failed to show either bad faith registration or bad faith use.

It was concluded that the Complainant has failed to establish each of the three elements necessary to establish an abusive domain name registration under the Policy, therefore, Complainant is not entitled to relief under Paragraph 4 (i) of the Policy. It is therefore ordered that Respondent retain the disputed domain name.