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Generic Top Level Domain Name (gTLD) Decisions |
Action Software, Inc. v. Alphacom
Distribution, Inc.
Claim Number: FA0203000105734
PARTIES
The
Complainant is Action Software, Inc.,
Eastlake, OH (“Action Software” or “Complainant”) represented by Steven M. Auvil. The Respondent is Alphacom Distribution, Inc., San Diego, CA (“Alphacom” or
“Respondent”) represented by Rob G.
Leach, of Charmasson & Buchaca.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <actiondvd.com>,
registered with Register.com.
PANEL
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.
Jonathan
Hudis as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on March 1, 2002; the Forum received
a hard copy of the
Complaint on March 5, 2002. The Complaint was submitted for decision in
accordance with the Uniform Domain Name
Dispute Resolution Policy, adopted by
the Internet Corporation for Assigned Names and Numbers on August 26, 1999 and
approved on
October 24, 1999 (the “Policy”), and the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”), adopted by ICANN
on August 26,
1999 and approved by ICANN on October 24, 1999, and the National Arbitration
Forum (the “Forum”) Supplemental Rules
(the “Supplemental Rules”). ICANN Rule
3(b)(i).
On
March 7, 2002, Register.com confirmed by e-mail to the Forum that the domain
name <actiondvd.com> is
registered with Register.com and that Respondent, along with Kiet Bland as the
administrative, technical and zone contact, is
the current co-registrant of the
domain name. Register.com has verified
that Respondent is bound by the Register.com registration agreement and has
thereby agreed to resolve domain-name
disputes brought by third parties in
accordance with the Policy.
On
March 8, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of March 28,
2002 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@actiondvd.com by e-mail.
A
timely Response was received and determined to be complete on March 28, 2002. An Additional Submission from Complainant
was received and determined to be complete on April 2, 2002.
On April 5, 2002, pursuant to Complainant’s request to
have this dispute decided by a single-member
Panel, the Forum solicited the interest of
the undersigned to arbitrate this matter.
After clearing potential conflicts of interest, the undersigned notified
the Forum on April 8, 2002, that he was available to arbitrate
this
dispute. On April 9, 2002 the Forum
appointed the undersigned, Jonathan Hudis, as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name(s) be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
began using the alleged service mark ACTION-DVD.COM in January 1999. Complainant states it has continuously used
ACTION-DVD.COM as a service mark ever since.
The mark is prominently featured on Complainant’s web site and is
incorporated into the URL http://www.action-dvd.com.
Complainant
asserts not only that ACTION-DVD.COM is inherently recognizable as a trademark,
but that ACTION-DVD.COM has also acquired
trademark significance in the eyes of
consumers. Between November 2000 and
November 2001, Complainant states it invested nearly $50,000 in advertising the
ACTION-DVD.COM mark and
recorded sales of more than $1,000,000. Complainant says that as a result of this
success, ACTION-DVD.COM is a strong designation of source in which Complainant
owns valuable
good will.
As evidence of the alleged success of the
ACTION-DVD.COM “brand” and web site, Complainant submits that between 100,000
and 200,000
page views or impressions of the <action-dvd.com> web site are recorded per day. Additionally, according to the web page
ranking service at <alexa.com>,
Complainant’s site has 85 inward-pointing links. Additionally, in 2001, Complainant won an “Editor’s Choice” award
from the publication Adult Video News for its <action-dvd.com> web site.
On January 29, 2002, Complainant filed a
trademark application with the U.S. Patent and Trademark Office to federally
register ACTION-DVD.COM
as a service mark.
There is no evidence that a registration has yet issued from this
application, much less that it has been examined by the U.S. Patent
and
Trademark Office. Rather, Complainant asserts service mark
rights in <action-dvd.com>
based upon its common law usage rights.
Respondent’s domain name, <actiondvd.com>, was obtained on
August 10, 2000, long after Complainant’s first use and continued use of
ACTION-DVD.COM as an alleged mark. The
only difference between Complainant’s alleged mark and Respondent’s domain name
is the lack of a hyphen. Therefore, says Complainant, confusing
similarity is firmly established.
As initially discovered
by Complainant, Respondent did not include a disclaimer on its web site of any
connection between Complainant
and Respondent.
Under the circumstances, Complainant submits that Respondent’s intent at
the outset was to trade off Complainant’s goodwill in the
alleged
ACTION-DVD.COM mark and divert consumers to Respondent’s <actiondvd.com> web site for
commercial gain.
Complainant also points
to Respondent’s other flagrant efforts to divert Complainant’s customers to
Respondent’s adult-only web site,
<www.adultdvdnow.com>. As early as March
2001, Internet users who typed http://actiondvd.com
(instead of http://www.actiondvd.com) were routed to
Respondent’s <adultdvdnow.com>
web site. It is well known, says
Complainant, that Internet users commonly omit the “www” when trying to reach a
popular web site. Complainant contends
that Respondent has been taking advantage of this situation.
Additionally, Internet users who type https://www.actiondvd.com (instead of http://www.actiondvd.com) also are also routed
to Respondent’s <adultdvdnow.com>
web site. A user is also taken to this site when it
clicks on a link pointing to the URL https://www.actiondvd.com. Thus, says
Complainant, Respondent has deployed two independent diversionary tactics to
wrongfully attract Internet users to its own
adult-content web site. Both of these tactics misuse the DNS (Domain
Name System) architecture, says Complainant, by configuring a registered domain
name
to two different IP addresses, one for the adult-content site and the
other to a different site.
Complainant says it has
used ACTION-DVD.COM throughout its existence.
In addition to prominent display on Complainant’s web site, the alleged
mark is heavily advertised in association with the Complainant’s
services. This longstanding use, says Complainant, has
led to an association in the relevant market between the Complainant and the
designation
ACTION-DVD.COM. The
Complainant and Respondent are in the video entertainment distribution business
and compete head-to-head in the adult video business.
Complainant points to
Respondent’s extreme measures that it has taken to divert traffic from
Complainant’s web site to Respondent’s
<adultdvdnow.com> web site as bad faith in registering and using
the <actiondvd.com> domain
name. In other words, says Complainant,
the only purpose of using the disputed domain name in this context is to
misdirect consumers trying
to reach Complainant’s web site.
B.
Respondent
Respondent
contends that ACTION-DVD.COM is a “descriptive and generic” term not subject to
trademark protection. Respondent points
to the fact that Complainant has not yet registered ACTION-DVD.COM as a
trademark or service mark, despite its recent
application filed with the U.S.
Patent and Trademark Office. Respondent
denies that ACTION-DVD.COM has acquired secondary meaning in connection with
any product or service offered by Complainant.
Respondent
contends that it has rights or legitimate interests in using the contested <actiondvd.com> domain name, because
it had been using the disputed domain name in connection with a legitimate
online business (selling DVDs)
for 1 ˝ years before being notified of the
parties’ dispute. During that time,
Respondent says that it was totally unaware of Complainant or its use of the
domain name and web site <action-dvd.com>.
Respondent
denies Complainant’s allegations of bad faith registration and use of the
contested domain name. Respondent
denies that it sells any adult content materials at its <actiondvd.com> web site, and denies
that there exists any link between its <actiondvd.com>
web site and its other web site that sells adult videos. Finally, Respondent contends that the
diversionary actions alleged above by Complainant were a “mistake” which have
since been corrected. Moreover,
Complainant points the Panel to the presence of a new disclaimer on its <actiondvd.com> web site between
Complainant and Respondent.
C.
Complainant’s Additional Submission
In
its Additional Submission, Complainant largely repeats the allegations
contained in its original Complaint.
Complainant asserts that its allegations of trademark/service mark
rights were largely un-rebutted by Respondent.
The
Panel notes Complainant’s further arguments that the evidence of record belies
Respondent’s claims that Respondent’s Internet-user
diversionary tactics were a
“mistake.” The Panel also notes
Complainant’s contentions that Respondent’s curative actions came only after
Respondent’s receipt of the UDRP
Complaint.
FINDINGS and DISCUSSION
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 Complainants
have 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.
In
an administrative proceeding pursuant to policy, the Complainant must prove
that each of these three elements are present.
ICANN Policy ¶4(a).
The
following circumstances, in particular but without limitation, if found by the
Panel to be present, shall be evidence of the registration
and use of a domain
name in bad faith:
(i) Circumstances
indicating that the registrant 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 service
mark, or to
a competitor of that Complainant for valuable consideration in
excess of the registrant’s documented out-of-pocket costs directly
related to the
domain name;
(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 it is shown that the registrant has engaged in a pattern of
such conduct; or
(iii) The
registrant registered the domain name primarily for the purpose of disrupting
the business of the competitor; or
(iv) By
using the domain name, the registrant has intentionally attempted to attract,
for commercial gain, internet users to his 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 the registrant’s web site
or location of a product or service on his web site or location.
Policy,
¶4(b).
On the other hand, any
of the following circumstances, in particular but without limitation, if found
by the Panel to be proved based
on its evaluation of all evidence presented,
shall demonstrate the registrant’s rights or legitimate interests to the domain
name:
(i) Before
any notice to the registrant of the dispute, its use of, or demonstrable
preparations to use, the domain name or a name corresponding
to the domain
name, in connection with the bona fide
offering of goods or services; or
(ii) The
registrant (as an individual, business, or other organization) has been
commonly known by the domain name, even if the registrant
has acquired no trade
mark or service mark rights; or
(iii) The registrant is making a legitimate non-commercial or
fair use of the domain name, without intent for commercial gain to misleadingly
divert consumers or to tarnish the trademark or service mark at issue.
Policy
¶4(c).
It
is Complainant that has the burden of proving all three elements of Paragraph
4(a) of the Policy. Complainant’s
failure to prove any one of these three elements is fatal to its claim. See,
e.g., EMoney Group, Inc. v. Eom San Sik, FA96337 (Nat Arb. Forum Mar. 26,
2001); J.L. Wilson Co., Inc. v. Ultraviolet Resources Int’l., FA97148 (Nat Arb. Forum June 18, 2001). Further, as the explanatory history to the
Policy states: “excepting cases involving ‘abusive registrations’ made with
bad-faith intent
to profit commercially from others’ trademarks, (e.g., cyber-squatting and cyber-piracy),
the adopted policy leaves the resolution of disputes to the courts …. The adopted policy establishes a streamlined
inexpensive administrative dispute-resolution procedure intended only for the
relative
narrow class of cases of ‘abusive registrations.’ Thus, the fact that the Policy’s
administrative dispute-resolution procedure does not extend to cases where a
registered domain name
is subject to a legitimate dispute (and may ultimately
be found to violate the challenger’s trademark) is a feature of the
Policy….” ICANN Staff Report, http://www.icann.org/udrp/udrp-second-staff-report-24oct99-htm.
Complainant’s
Trademark Rights -
Identical and/or Confusingly Similar
Domain Name
Respondent, Alphacom, does not and cannot
seriously dispute that the domain names <action-dvd.com> and <actiondvd.com>
are confusingly similar for purposes of the Policy. Colgate-Palmolive Co. v. Kasinga, FA94203 (Nat. Arb. Forum April 7,
2000) (“The addition of .net or .com or the absence of a space between the
words is not significant
in determining similarity.”). The only difference between the domain names
is the presence or absence of a hyphen.
The critical element for the Panel to
decide is whether Complainant, Action Software, has sufficient trademark or
service mark rights
in ACTION-DVD.COM under the Policy. The Panel finds that Complainant does not
have such rights.
Action Software’s domain name (and banner
used on its web site) is the combination of the elements “ACTION,” a hyphen,
“DVD” and the
top level domain “.COM.”
“DVD” refers to a product, among others, that Action Software sells on
its web site. “ACTION,” as Alphacom
points out, is a reference to a type of genre of entertainment shown on various
types of media – such as “Action
Video,” “Action Film” or “Action DVD.” The parties do not dispute that the top
level domain “.COM” does not create trademark significance to a term or phrase
which by itself
has no trademark significance.
Generic terms refer to the genus of which
a particular product or service is a species.
No matter how much money is spent on advertising a product or service in
connection with generic term, and no matter how much sales
success is achieved
in connection with a generic term, it can never acquire trademark rights. Abercrombie
& Fitch Co. v. Hunting World, Inc., [1976] USCA2 141; 537 F.2d 4, 9 (2d Cir. 1976). Even if not generic, terms or phrases can be
deemed so highly descriptive as to be incapable of acquiring distinctiveness
through
use in the marketplace. In re the Boston Beer Company Limited,
[1999] USCAFED 208; 198 F.3d 1370, 1373. ACTION-DVD or
ACTION-DVD.COM is such a term or phrase.
The Panel appreciates the money and
effort Action Software has given toward brand recognition of
ACTION-DVD.COM. However, as a matter of
public policy, Action Software simply cannot remove ACTION-DVD (or a domain
name containing this phrase when
asserted as a “mark”) from the lexicon of apt
terms or phrases that competitors must use in order describe their
business. Alphacom is such a
competitor. In fact, as alleged by
Action Software, Alphacom is a “direct” competitor.
Because it cannot acquire trademark or
service mark rights in ACTION-DVD.COM, Action Software has not met its burden
of proof with
respect to ¶ 4(a)(i) of the Policy.
Rights or Legitimate Interests
Alphacom contends that it has rights or
legitimate interests in using the contested <actiondvd.com> domain name, because it had been using the
disputed domain name in connection with a legitimate online business (selling
DVDs)
for 1 ˝ years before being notified of the parties’ dispute. The evidence of record supports that, at
least as of the time of the Response to the Complaint, Alphacom was making use
of the contested
domain name to describe the nature of its business of selling
DVDs. Lowestfare.com LLC v. US Tours & Travel, Inc., AF-0284
(e-Resolution Sept. 9, 2000) (descriptive use of contested domain name
constituted rights or legitimate interests in domain
name).
At a minimum, Action Software has not met
its burden of proof with respect to ¶ 4(a)(ii) of the Policy.
Registration and Use in Bad Faith
The timing of the parties’ actions also
dispel Action Software’s allegations of bad faith. Alphacom registered the contested domain name in August
2000. Action Software did not send a
letter of complaint until May 2001, and did not bring the present UDRP
proceeding until March 2002.
In June 2001, Alphacom (through counsel)
contested Action Software’s bad faith allegations and asserted at that time
that the ACTION-DVD.COM
name was a generic term. Action Software waited until almost the end of January 2002
before filing an application to register the term with the U.S. Patent
and
Trademark Office.
Action Software’s persistent delays in
taking action undercut its arguments that Alphacom registered and used
the contested domain name in bad faith.
The Panel notes that Alphacom did not take curative actions (severing
the re-routing mechanism associated with the <actiondvd.com> domain name and its associated Internet Protocol
Address; and placing a disclaimer on its web site) until after Action Software
sent its complaint letter and filed its UDRP Complaint. However, the Panel notes that Action
Software took these actions notwithstanding its firm belief that ACTION-DVD or
ACTION-DVD.COM
were and are incapable of trademark protection.
These facts support the conclusion that
Action Software has not met its burden of proof with respect to ¶ 4(a)(iii) of
the Policy.
DECISION
For the foregoing reasons, the Panel DENIES
the relief requested in the Complaint.
___________________________________________________
Jonathan Hudis, Panelist
Dated: April 15, 2002
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