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Generic Top Level Domain Name (gTLD) Decisions |
The VideoCall Company v M Koenig c/o
Techton LLC
Claim Number: FA0307000167922
PARTIES
Complainant
is The VideoCall Company, Austin, TX
(“Complainant”). Respondent is M Koenig c/o Techton LLC, Santa
Monica, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <videocall.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.
Houston
Putnam Lowry, Chartered Arbitrator, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 7, 2003; the Forum received
a hard copy of the Complaint
on July 7, 2003.
On
July 8, 2003, Register.com confirmed by e-mail to the Forum that the domain
name <videocall.com> is
registered with Register.com and that the Respondent is the current registrant
of the 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
July 9, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of July 29,
2003 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@videocall.com by e-mail.
A
timely Response was received and determined to be complete on July 29, 2003.
On August 6, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Houston Putnam
Lowry, Chartered Arbitrator, as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1. Complainant’s Rights in and to the VIDEOCALL Marks
VideoCall is a well-known, single-source provider of video
teleconference products and services, headquartered in Austin, Texas. (The factual allegations in this Complaint
were verified by the Declaration of Richard King) Since 1993, VideoCall has offered video teleconferencing and
network hardware coupled with expert services in custom design, system
integration, installation, training and maintenance. Through use and development, VideoCall has gained valuable rights
in the VIDEOCALL Marks.
Since June of 1993, VideoCall has continuously used the
VIDEOCALL Marks in relation to video teleconferencing hardware and
services. VideoCall has received
substantial recognition as a result of the extensive advertising, marketing and
promotion of the VIDEOCALL
Marks through various media:
Television
The VIDEOCALL Marks have been promoted through national and
regional television broadcasts. From
1993 to 1995, over 14 million households received cable television programs
bearing the VIDEOCALL trademark onscreen during lengthy
interviews with
newsmakers, for an average of six times per day. Moreover, the VIDEOCALL Marks have been promoted on screen during
the nationally televised Sally Jesse Rafael show and the Joan Rivers’
syndicated program “Can We Shop?”
Screenshots from these shows appear in the VideoCall Update publication
submitted with the complaint.
Print
Since 1993, the VIDEOCALL Marks have been featured in articles
in national newspapers such as The New York Times and the Austin American
Statesman, and regional publications such as the Austin Business Journal and
Texas Lawyer. Examples of these
articles were submitted with the complaint.
In addition to attention from the media, VideoCall publishes
its own print advertisements that feature the VIDEOCALL Marks.
Internet
Since as early as 1998, VideoCall has used the domain name
<videocall.net>. This website
garners significant traffic for VideoCall and serves as the company’s online
contact with consumers. Pages from
VideoCall’s web site at <videocall.net> and Whois information relating to
same were attached to the Complaint. Moreover,
the Internet’s preeminent search engine, Google, further underscores the status
of the VIDEOCALL Marks as unique identifiers
of goods and services. A search of the entry “videocall” generates
a link to VideoCall’s web site as the top-rated result. Copies of Google results pages were
submitted with the complaint.
Awards
In 1996, VideoCall’s ingenuity and services earned it an
award for “Outstanding Advance in Video On Command or Cable” from TeleCon,
a
leading organization of the video teleconference industry. A photograph of the plaque awarded by
TeleCon is submitted with the Complaint.
Clients
Representative clients of VideoCall’s
services include:
AT&T
IBM
Motorola
Subaru
Advanced Micro Devices
Gannett Company
Halliburton Energy Services
First USA Bank
Qwest Communications
Siemens
International Creative
Management, Inc.
University of Texas
Texas A&M University
Baylor University
VideoCall’s use of the VIDEOCALL Marks in connection with
its goods and services is arbitrary and has no recognized meaning in the
field
of video teleconference services except as designating VideoCall as the source
of its goods and services. Further, by
dint of VideoCall’s ten years of sales, offering of services, and promotional
activities, and in view of the millions
of viewers in the American cable television
audience that are familiar with VideoCall’s services, the VIDEOCALL marks are
famous.
2. Respondent’s
Improper Use of the VIDEOCALL Marks
Respondent is the registrant of the
domain name <videocall.com>.
Copies of Whois registration information for the <videocall.com>
domain name were submitted with the Complaint.
VideoCall claims Respondent has improperly
used the VIDEOCALL marks by (after notice of confusion by Complainant):
increasing consumer
confusion by redirecting traffic intended for <videocall.com>
to <focusfocus.com> – the web site of Complainant’s competitor; and
demanding that Complainant pay Respondent $50,000 in exchange
for the domain
name <videocall.com>. As a
result of this improper use, described in further detail below, the <videocall.com>
domain name should be transferred to the rightful owner of the VIDEOCALL
Marks, Complainant.
3. Confusing Similarity
The
domain name <videocall.com> is confusingly similar to the
VIDEOCALL Marks since it is identical to the VideoCall trademark
VIDEOCALL™. Given the similarity in
name, there is a strong likelihood of confusion between the Domain Names and
the VideoCall Marks. See Ty, Inc. v.
O.Z. Names, D2000-0370 (WIPO June 27, 2000)(finding that the domain names
<beanybaby.com>, <beaniesbabies.com>, and <beanybabies.com>
are confusingly similar to complainant’s mark “Beanie Babies”).
Moreover,
Respondent’s use of the domain name at issue has already generated several
instances of actual confusion to the detriment of VideoCall:
1. Prior to October of 2000, Respondent’s web
site appearing at <videocall.com> depicted pornographic products
and services. Two VideoCall customers –
The University of Texas and Austin Community College – each contacted VideoCall
to inquire why VideoCall’s
website offered pornography products and services;
and
2. During October of 2000, Respondent
redirected Internet traffic from <videocall.com> to
<focusfocus.com> – the web site of a VideoCall competitor. (As explained below, after VideoCall
contacted Respondent about the trademark issues and confusion created by the
domain name, Respondent
redirected traffic to the domain name to VideoCall’s
competitor, FocusFocus.) On October 31,
2000, VideoCall received an email from an existing customer that was confused
by the <videocall.com> web site.
That confused customer stated “I
have looked at your web site and was directed to focusfocus.com - is this a new
company name?” A copy of this email
message was submitted in the Complaint.
Within the last month, Respondent again redirected
traffic intended for <videocall.com>. Traffic is now directed to <hotline.com>, a for-profit
travel site believed to be operated by Respondent. Like the earlier instances of actual confusion, customers and prospective customers
searching for VideoCall on the Internet are likely to be similarly confused by
this new redirection.
4. Respondent
Has No Legitimate Rights or Interests in <videocall.com>
Respondent has no legitimate rights or
interests in either the VIDEOCALL Marks or the disputed domain name. In 1998, Respondent used the domain name to
link to pornographic websites.
Respondent’s use of web sites to present pornographic material is not
unique to this domain name. In a
trademark infringement case before the United States District Court for the
Central District of California, the court found that
Respondent was using
another domain name to advertise pornographic websites. See Order Granting Plaintiff’s Motion
for Preliminary Injunction submitted with the Complaint.
In 1999, Respondent directed traffic
intended for <videocall.com> to an online mall providing thousands of
goods and services. In response to
concerns from VideoCall that Respondent’s use of <videocall.com> was
damaging VideoCall’s trademarks, Respondent
responded by redirecting all
traffic to <videocall.com> to the website of VideoCall’s competitor,
FocusFocus. A copy of the FocusFocus
website as it existed prior to April 30, 2003 was submitted with the Complaint.
Respondent is not affiliated with FocusFocus. Representatives of VideoCall previously
contacted FocusFocus and spoke with owner Jillian Pinsker requesting that they
stop using
<videocall.com>. Ms.
Pinsker stated that she had called Respondent and requested that he stop
directing <videocall.com> to <focusfocus.com>. Respondent did not do so. It is obvious that Respondent’s sole intent
in directing traffic to a website operated by VideoCall’s competitor – but
against that
competitor’s wishes – indicates Respondent’s sole intent was to
exert pressure on VideoCall to purchase the domain name. This is not a legitimate interest.
Between May 14, 2003 and May 30, 2003,
Respondent changed the redirection parameters so that traffic intended for
<videocall.com>
is now directed to <hotline.com>.
Respondent can claim no legitimate
interest in the domain name. Based upon
the existing online content, no goods or services are currently offered in
connection with the domain name <videocall.com>. Respondent is not in any way associated with
VideoCall. Respondent has adopted the
VIDEOCALL Marks solely for the “for profit” purposes of: (i) trading upon
VideoCall’s goodwill; (ii) increasing
traffic; (iii) intentionally
tarnishing and diluting the VIDEOCALL Marks; and/or (iv) to sell the
domains to VideoCall for substantially
more than the cost of registration.
5.
Bad Faith
Respondent’s registration of the domain name constitutes bad
faith pursuant to the Uniform Domain Name Dispute Resolution Policy (“Policy”)
paragraph 4(b). Because the domain name
is so similar to the trademarks at issue, Respondent’s intent to create a
likelihood of confusion may be presumed.
See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27,
2000) (finding that the domain name in question is so obviously connected with
the Complainant and its
products that its very use by someone with no
connection with the Complainant suggests opportunistic bad faith).
Moreover, Respondent’s bad faith is made abundantly clear by
the following sequence of events:
- In 1998, VideoCall contacted Respondent, explaining that
Respondent’s use of <videocall.com> to advertise pornography was
damaging to VideoCall's reputation with its clients. While Respondent refused to return any of VideoCall’s seven (7)
phone messages, Respondent did reply to VideoCall’s email. In its email, Respondent offered to sell the
domain name <videocall.com> to VideoCall for $50,000.
- In 2000, Respondent redirected all traffic to <videocall.com>
to the website of FocusFocus, a competitor of VideoCall. As explained above, FocusFocus requested
that Respondent cease redirecting traffic to its site, and Respondent’s actions
were a blatant
attempt to exert pressure on VideoCall to extort a huge payment
for the domain name. (As explained
above, Respondent’s intended efforts to create confusion for VideoCall’s
customers were successful.)
- On March 21, 2001, VideoCall contacted Respondent via
registered letter regarding the <videocall.com> domain name,
explaining the confusion caused by Respondent and seeking an amicable resolution
between the parties. A copy of that
letter was supposed to be attached to the Complaint but was not (a copy of the
Policy was attached instead, for unknown
reasons). Respondent did not respond to this letter.
The facts support a single conclusion: Respondent has no
legitimate rights in the domain name <videocall.com> other than to
trade upon the established goodwill of the VIDEOCALL Marks. Respondent’s adoption and continued use of <videocall.com>
to the intentional detriment of VideoCall is in bad faith, has continued
with full knowledge of VideoCall’s prior rights, and is a willing infringement
of VideoCall’s trademark
rights.
Further,
under the Anticybersquatting Consumer
Protection Act (“ACPA”), 15 U.S.C. § 1125(d), it is illegal to register, use,
or traffic in domain names
that are either identical or similar to marks with
an intent to profit from such activities.
Respondent clearly intends to profit from the false association of <videocall.com>
with VideoCall. The ACPA sets forth
several factors to consider in determining bad faith. The first factor is whether the registrant has any trademark or
other intellectual property rights in the domain name. Here, as shown above, Respondent can assert
no rights in the domain name. The
second factor is whether the domain consists of the legal name of the
registrant. This factor is not
applicable here. The third factor is
whether the registrant used the domain in connection with goods and
services. Here, there is no active site
associated with the domain name, and no goods or services offered in connection
with the domain (although
Respondent did redirect traffic to the site of
VideoCall’s competitor). The fourth
factor is the registrant’s noncommercial or fair use of the mark in a site
accessible under the domain name. This
factor is inapplicable here. The fifth
factor focuses on whether the registrant intended to divert consumers from the
mark owner’s online location to another site
by creating confusion. As explained above, this was clearly Respondent’s
intent, and this factor favors transfer.
Factor six involves the registrant’s intent to sell the domain. As already explained, the offer to sell the
domain name to VideoCall for $50,000 shows that Respondent intended to
profit from the domains at issue. The
seventh factor is whether the registrant supplied misleading contact
information. This factor is
inapplicable: VideoCall cannot determine whether Respondent has registered the
domain name under a false name. The
eighth factor addresses whether the registrant acquired multiple domain names
that are confusingly similar or dilutive of famous
marks. As mentioned above, Respondent has faced
prior litigation over other domain names.
The final factor considers whether the trademark at issue is “famous”
under the Lanham Act’s anti-dilution provisions. Here, VideoCall’s marks qualify as “famous” within the niche of
their services offered because they have been long-used on a national
basis and
are recognized by Internet users. The
ACPA factors support the conclusion that Respondent’s conduct constitutes bad
faith.
Because
<videocall.com> is confusingly similar to trademarks in which
VideoCall has rights, Respondent has no rights or legitimate interests in
respect of
the Domain Names, and the Respondent’s bad faith has been
established through multiple actions, the <videocall.com> domain
name should be transferred to VideoCall.
B.
Respondent
1. ICANN Rule 3(b)(ix)(1); ICANN Policy 4(a)(i)
The domain name is not identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights. The Complainant does not own or
hold a Federal Trademark or service mark in the United States of America or in
any other part of the
world.
The domain name is comprised of generic
and/or descriptive terms, and, in any event, is not exclusively associated with
Complainant’s
equipment installation business.
Notwithstanding this fact, Complainant
claims protection under “common law trademark rights” that are limited
to the geographic area in which the mark is used as they have been developed
under a judicially
created scheme of rights governed by state law and since no
registration is required in order to establish common law rights to a
mark, it
can be difficult to prove whether anyone has real trademark rights in a
particular mark.
Common law trademark rights
protection can’t be applied to protect common nouns for products or services
and Federal Patent and Trademark Laws
also disallow such registrations. This
basic rule prevents registrations like, “phonecall” for a phone company; or
"pen and
pencils, inc" if that's what is sold.
Even though a generic, merely descriptive
mark or common noun cannot constitute a viable common law mark, Complainant
decided to prove
that consumers see his chosen brand name or abbreviated
company name as an indicator of the product's source, but Complainant claims
and evidence fail to verify that.
It also fails to establish either fame, or strong secondary
meaning in the mark, such that consumers are likely to associate with
Complainant business, especially at the time the domain name <videocall.com>
was registered or even today. Moreover,
use alone does not automatically represent trademark recognition or acquired
distinctiveness and hundreds of websites and
companies are using the term
“videocall” in connection with videoconferencing, and none are related to
Complainant business or products.
Complainant presented evidence
The inconsistencies found after reviewing
the evidence presented by Complainant is overwhelming, as well as the
deliberate concealing
of evidence and known material facts, of which the
Complainant is aware.
For the purpose of proving “common law
trademark rights” the Complainant presents manufactured evidence by means of a
color copy of
what looks like a promotional brochure with no date, featuring
retouched pictures and fabricated pointless “interviews”, which may
have never
been distributed.
This “timeless publication” is clearly
misrepresenting Complainant’s company’s capabilities, experience and size,
trying to capitalize
and take credit for some other company’s work and
capabilities like Unitel Video Inc.
Complainant’s “brochure” states: “ You
can book VideoCall’s 26 worldwide video suites for business communications”,
when in fact Complainant
does not operate any of these, did not install or sell
a video room in Tokyo, Japan and doesn’t even have a particular product called
“videocall”.
One of the simulated interviews reads:
“How much does a VideoCall cost?” and the answer clearly shows that Complainant
is using the
term in connection with the action of placing a call (like a
“phone call”) stating an outrageous hourly rate for a “videocall”, bringing
even more confusion to define what Complainant understands, as “videocall”.
Complainant’s business focus seems to be:
sales, installation and maintenance of video conferencing equipment
manufactured by other
companies, with different names but not “videocall” and
merely uses the word “videocall” as an acronym of “The Videocall Company”, or coincidently with the action of
“making”, “booking” a call and not in connection with any real and tangible
goods or services.
The article from the New York Times
presented by Complainant mentions “Richard King, chairman of the Video Call
Company of Austin
Texas”. It just mentions a company that happens to have a
‘Video’ and a space ‘Call’ (generic and/or descriptive terms) as a part
of its
name and not VideoCall nor a service under that name.
The pictures featured in the article seem
to be supplied by Unitel Video Services and show the studio monitors with a
close-up of
the “remote” image showing Mr. John Boy. At no time any of this
monitors have any caption or lettering featuring “the Video Call
Company “ its
logo, or “videocall”.
The chances of having millions of people
see the image, that features Mr. John Boy, as presented by Complainant’s
“brochure” are slim
to none.
Please note that none of the other images
utilized by Complainant resembling broadcasted television have any reference to
“videocall”
except one that as explained by its caption text above is a “test”,
and not necessarily broadcasted “to millions of users.”
Technically challenged “486 processors”
were used at that time, as described by Complainant’s exhibits. I strongly
doubt any possible
“television broadcast quality” can be achieved with
those “486 processors” over regular
phone lines, but maybe some tests were conducted.
The fact that Complainant may have been
part of the team connecting, experimenting or setting up that videoconference
connection ten
years ago, is not tangible evidence of the continuous use (to
claim common law rights) of “videocall” in broadcasting television
in any form
and the pictures fail to prove that as well as the article itself.
The other three articles presented by
Complainant are in small local newspaper publications. Obviously “arranged”
articles, and by
no means are representative of “extensive” advertising,
marketing or promotion as claimed by Complainant.
The only reference made, about the
Complainant, by the Austin Community College website, at which Complainant
claims in the Texas
lawyer article to have a facility that “will offer a room
for up to 100 participants”, clearly shows the Complainant as one of the
“professional associations that have made use of our facilities”
basically listing “VideoCall” as one of the companies that eventually rented
the videoconference room.
Complainant is misrepresenting once again
in this Texas Lawyer article its company and achievements in an obvious effort
to mislead
potential customers into believing that “VideoCall” has now 52
rental sites and opened a videoconferencing room at the Austin Community
College facility, when in fact complainant just eventually rents the space, as
well as Newstalk Television which is also mentioned
as one of the Complainant’s
“clients”)
The list of equipment used by the Austin
Community College for videoconferencing does not include any “videocall”
equipment, service
or room.
Complainant claims that
<videocall.net>, its Internet website, is listed first (among other 700
plus sites) when searching for
the term “videocall” ,by the search engine
Google and that this particular search engine “ further underscores VIDEOCALL
marks as
unique identifiers of goods and services.”
Google uses obscure selective process and
algorisms to order the results of a search.
Unfortunately this particular search engine considers some services that
“sell” positions as “important” pages or sites, affecting
the results. This
highly contagious situation also gets reflected throughout many search engines
that are considered “important pages”
by Google.
Search engine results in general are
particularly influenced by several factors, not limited to, how many pages are
in the site, how
many times the word “videocall” is in the body of the pages,
html metatags, text, and even if it paid on a pay-per-performance listing.
The fact that search engines are listing
the Complainant’s website among the first results, only proves the proficiency
and ability
of the creator of the website pages to follow the rules of
engagement to get listed on a search engine and nothing else.
Moreover a search will return over 700
plus results using the term “videocall” and only a couple of links belong to
the Complainant.
This confirms that Complainant is not the only company or
search engine listed website using the term ”videocall” and none of the
other 700+ sites refer to goods or services provided by complainant thus,
unable to claim exclusive use, or that the public
associates all video calling
with Complainant.
The award that the Complainant received
seems to be from Telecon and is dated October 30, 1996. Well after the
registration of <videocall.com> took place. We were unable to
retrieve any information on the TeleCon event that Complainant refers to in the
picture provided with
the Complaint.
TeleCon was the world's largest
conference and trade show on teleconferencing and TELECON XV was
held in, Anaheim, California. October 25-27, 1995. Please note that:
-
TELECON XIV was held on 1994
-
TELECON XV was held on 1995 and not in 1996
-
TELECON XVI was held on 1996
-
TELECON
XVII was held on 1997
-
TELECON
XVIII was held on 1998
If Complainant’s award is from TELECON XV held
in, Anaheim, California, the award should read: October 30, 1995 and not
October 30, 1996 unless the “Fifteenth TeleCon
Awards dinner” event that
Complainant assisted to, was a different event, at a different location, that
has no relation with “TELECON
XV, the
world's largest conference and trade show on teleconferencing”.
Advanstar acquired Telecon organizing
company in May 1998. We contacted
Advanstar but no records of Telecon XV can be retrieved on such a short notice,
but they did verify that Telecon XV was
held on October 1995, and did not have any
knowledge of Complainant’s Company.
Complainant claims to have the most
important American Companies as clients, but supplies no evidence of any
substantial commercial
relation with any of them before 1996 or even today.
At no time does the Complainant establish
a legitimate right over the mark that it claims or the domain <videocall.com>
and fails to present evidence capable of corroborating any of his claims or
passing any reasonable test required to prove that a
mark has ever acquired
distinctiveness or is perceived as a unique identifier of any particular goods
or services.
We are not even able to establish what
the real name of the Complainant’s company is, when and where it is
incorporated, or even if
it’s the same company as stated on the Complainant’s
actualized website, (which never mentions any of the 56 video rooms claimed
in
the Texas Lawyer article). Under
-Company Overview- reads as follows: “Founded in 1991, VideoCall is a
videoconference service provider …” and not “The VideoCall
Company” since 1993.
The Complainant now states in this
complaint to be organized as “The VideoCall Company”. Then the Complainant is in fact aware of the trademark
applications #74333083 filed on 1992-11-20 and also application # 74450039
filed on 1993-10-22 that also show the same address than the Complainant’s
“brochure”. Both applications were presented by “The VideoCall
Company” and
rejected by the US Patent and trademark office.
In any case, the Complainant is either,
deliberately concealing relevant evidence, aware of the fact that the mark is
"merely
descriptive" or once again, trying to capitalize on someone
else’s company or a previous enterprise.
Whether it is the same company or not, could be important at
the time of establishing prior and continuous use, but still irrelevant
as it
never established secondary meaning, and made no attempt to do so by
registering the mark on the US Patent and Trademark office
Supplemental
Register.
Complainant communications.
Complainant contacted us via email for
the first time on July 1999, 37 months after we registered videocall.com on
1996.
That first email over three years after
the <videocall.com> registration states that: “videocall was
incorporated in 1993 and used videocall for over six years”. Now the website
<videocall.net>
operated by the Complainant tells a different story, but
most importantly, it also substantially differs from the filed claim and
the
filed trademark applications.
On successive responses, Complainant
claimed to be part of other companies responsible for other “videocall”
trademarks, which are
now cancelled like “videocall plus” presented by Biocom
Inc. but it never was.
Complainant acknowledged on his emails
and it is aware of the fact that “videocall” is a generic, descriptive word and
thus not eligible
for protection. In fact nobody holds a “videocall” trademark
today, but declared his intention to obtain protection “over time”.
Unfortunately nothing will change the
past and even if Complainant manages to establish Common law rights in the
future, the fact
that no protection was achieved at that time will still remain
the same.
Even after recognizing that a trademark
would never be obtained Complainant insisted with out a valid argument that we
should surrender
the domain name to him, to what I obviously responded, no.
Then Complainant offered $500.00 and
threatened to “start interrogations”. To what I responded that “I had better
offers for over
$50,000.00. No deal.” I never intended to sell the domain or
offered the domain for sale to anybody but I received an unsolicited
offer, as
well as Complainant unsolicited emails and considering that
<videophone.net> was for sale for millions ($7,000,000.00
is still
today’s asking price) I refused to sell for $500.00.
Unfortunately Complainant believes that a
comment about another offer is the same as requesting a price or offering the
domain for
sale. I never requested any amount and Complainant obviously fails
to present any evidence to that effect.
Later on, Complainant called several
times in what I remember to be a harassing call after another, sent an
intimidating letter and
finally taking matters into his own hands decided to
pay us an uninvited and unwanted visit.
These facts confirm that Complainant is
knowingly concealing evidence committing perjury and setting up a “scenario” to
fit his needs.
Nobody ever ask him pay, call, or to visit us.
Complainant registered the domain name
<videocall.net> 21 months after Respondent registered <videocall.com>
on 1996 and did so, obviously aware of our domain name registration, thus
unable to claim surprise.
Unfair competition
The claims presented by Complainant
regarding the “unfair competition” are unfounded just because
<focusfocus.com> was intended
for videoconference online services and not
room installations or broadcasting television networks. In either case
Complainant never
offered online services, not even today.
Complainant seems to operate from the
same main address but with different suite numbers like #301 as stated on the
“brochure,” #100
on the domain registration, and #400 for this claim, but not a
single videoconference room seems to be operating at these addresses.
Complainant still today uses its Internet
site <videocall.net> to promote commercial grade videoconference room
installations
and not videoconference services rendered over the Internet.
Although different products are offered,
Complainant started using the Internet as a channel to offer his services almost
TWO years
after <videocall.com> was registered on 1996.
We were not aware of a Complainant’s
company, or the existence of a valid or active trademark (not even today), and
proceeded to register
the name <videocall.com>.
.
2. ICANN Policy 4(a)(ii)
We began to use the domain name in
connection with a bona fide offering of goods and services 3 years before
receiving an email notice regarding a possible conflict and over 7 (seven)
years before this Complaint was presented.
The registration was the result of
reasoning, after using <vdo.net> (now defunct) videophone, in 1996 for
the first time with
a 14,400 Kbs modem and the obvious use of the term in
connection with videoconferencing.
If you use a phone you can say you are
making a phone-call, but if you use a Video Phone, are you making a
video-call? I registered it, <videocall.com>.
To trademark something, which is the
common noun for products or services, is not allowed. I can't trademark,
“phonecall” for my phone
company; or "pen and pencils, inc" if that's
what I sell. Therefore I knew nobody could trademark videocall in connection
with videoconferencing using a videophone or any other similar device.
We also registered around that time,
<videoguard.com> (that we lost for non payment). We decided to integrate
a videophone application
into and alarm software capable of detecting video
motion changes and triggering an alarm over the Internet with Cinecom (now
defunct)
using of the shelf Winnov PC video capture cards hardware.
In the meantime the domain was pointed to
a videoconferencing site operated by Interactive Gallery, Inc. then a Nasdaq
listed company,
and now a subsidiary of New Frontier Media, a Nasdaq listed
company (Nasdaq:NOOF) as a co-branded version with authorized, copyrighted
and
legal adult entertainment content.
Regardless of the content, <videocall.com>
was offering video with chat services since the beginning, and years before
even knowing about the Complainant or its business.
But that was not our plan for this domain
and even though it became known in the this field, we still decided to point
the domain
to <shoppingblvd.com> that was offering free on line video
chat services software accessible to anyone trough focusfocus.com
until we
could materialize out initial plan.
From thereon the Complainant recall of
dates might be accurate but irrelevant when it comes to prove bad faith, intent
to divert consumers
or to tarnish a trademark and specially at the time of
registration.
Unfortunately the Internet bubble busted
and we decided to postpone our initial plans, but we kept the domain for the
purpose of developing
online video conferencing services.
We recently registered
<callvideo.com>, before receiving this Complaint, to compliment the <videocall.com>
registration as we still expect eventually to accomplish our initial plans.
I particularly knew that cellular
videophones came finally out 4 years ago in Japan. Now they are a big hit here
in the USA, and that
may trigger our imagination once again.
3. The domain name should not be considered
as having been registered and being used in bad faith.] ICANN Rule 3(b)(ix)(3); ICANN Policy 4(a)(iii)
Techton LLC was incorporated in
California in 1996. It owns and operates hundreds of domain names and after
more than 7 years in business
this is the first time that is part of an
arbitration proceeding.
In what I understand it’s a desperate
attempt to show a “pattern” of disregard for intellectual property, although
there is no evidence
of such conduct whatsoever, the Complainant introduced as
evidence a copy of the preliminary injunction that was granted against
Techton
LLC in the year 2000, that is obviously irrelevant to this case.
Notwithstanding this and as the
Complainant pointed out Techton LLC was in fact years ago the defendant in a
fabricated trademark
infringement Federal Court case.
A Canadian Napster like software
developer initiated legal action against Techton LLC with the sole purpose of
hijacking one of our
domain names but abandoned short after been unable to
support any of their fraudulent claims and conveniently disintegrated soon
after.
One unsuccessful malicious claim in seven
years of operating hundreds of domain names can’t be considered a pattern, and
after such
an undesirable and costly experience, my company pays particular
attention as it obviously did form day one, to avoid any possible
trademark
conflict before registering any domain name.
Furthermore the registration of <videocall.com>
was not for the purpose of selling it to Complainant or a competitor and the
Complainant was never contacted with any offering.
Only one domain was registered, leaving
all the other possibilities open, thus it is impossible to infer that the
registration was
done with the purpose of preventing a rightful trademark owner
to register any of them.
Domain
names directly related to Claimant’s company, like <videocallcompany.com>
or the<videocallcompany.com> are still
available for registration.
At the time of registration the
Complainant’s business was not online under any domain name, it never provided
online videoconferencing
services, it was not known, much less famous, never
had a trademark and its hardly a competitor in any of the different stages of
<videocall.com>.
Complainant has not proven that we
registered the disputed domain name for commercial gain with the intent to
confuse Internet consumers. Our
registration and use of the disputed domain name was in good faith as they were
intended to promote online videoconferencing,
as we did form day one.
If there is a likelihood of confusion
between the domain name and Complainant’s domain name, is because of
Complainants registration
and not otherwise
Although Complainant consumers are vastly
different from ours, (at any stage of <videocall.com> history),
it’s the Complainant that decided 21 months after our domain registration and
after unsuccessfully trying to register a
trademark (if its in fact the same
company), or even having possible protection even under “common law” to use the same channels of
marketing and thus exposing our existing and his potential Internet consumers
to possible
confusion.
Complainant has provided no substantial
evidence showing that our use of this domain name created any disruption to its
business and
fails to present any proof.
There is absolutely nothing for which we
could possibly have known of Complainant’s business before registration, and
such knowledge,
is imperative to prove that the registration was “in bad
faith”.
FINDINGS
This decision turns on the Panel’s
finding Complainant has no interest in “VIDEOCALL” as a trademark.
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 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.
This entire case has caused the Panel to
reach for the keyboard to start surfing the Internet several times while
reading the pleadings
to supplement the material submitted by the parties. It would be inappropriate to do so because
ICANN proceedings are “documents only” proceedings. While the materials submitted by the parties were interesting,
the most concise recitation of the controlling facts appeared in an
email
exchange Respondent provided.
Complainant submitted an application
(“through BioCom” according to Richard King, the contact person for Complainant
in this UDRP
proceeding) to the United States Patent and Trademark Office to trademark
“VIDEOCALL PLUS” on November 20, 1992.
As part of this application, Complainant disclaimed any rights to
“VIDEOCALL” apart from “VIDEOCALL PLUS”.
This disclaimer eliminated any special
common law trademark rights Complainant had (if it ever had any) to
“VIDEOCALL.” It should also be noted
none of Complainant’s material clearly indicated “VIDEOCALL” was a trademark
(which is commonly, but not always,
done with a superscripted TM).
Respondent has
demonstrated legitimate interests in the disputed domain name because the
domain name is comprised of generic terms
that are legitimately open for
registration as domain names on a first come, first served basis. See
Car Toys, Inc. v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum Mar. 20, 2000) (finding that
Respondent has rights and legitimate interests in the domain name where
Complainant
submitted insufficient evidence to establish either fame or strong
secondary meaning in the mark such that consumers are likely to
associate
<cartoys.net> with the CAR TOYS mark); see also Seaway Bolt &
Specials Corp. v. Digital Income Inc., FA 114672 (Nat. Arb Forum August 5,
2002) (finding that because the domain name was generic term and there was no
evidence that
Respondent knew or should have known of Complainant at
registration, Respondent’s use of the domain name as a search engine is a
bona
fide use giving rise to rights and legitimate interests). Respondent has been using this domain name
since May 15, 1996 – and it is a little late for Complainant to start
proceedings seven
years later.
Respondent has
a legitimate interest in the <videocall.com> domain name because the <videocall.com> domain name was registered on May 15,
1996, while Complainant’s <videocall.NET>
domain name was registered on February 12, 1998 (about 21 months later). In the
intervening years, Complainant did nothing.
Lest anyone
think the Panel does not know what is going on here, let me explain for the
casual reader. “Video Call” are
commonplace and descriptive words. The
Panel believes Respondent registered this domain name for future development
(probably by sale or possibly by putting its own
web site at the domain). While holding a domain name for resale would
normally be an indication of bad faith, it does not indicate bad
faith when the domain name consists solely of words that are not Complainant’s
trademark.
Under these
conditions, the Panel does not ever reach the question of whether or not
Respondent was using the domain name in connection
with a bona fide
offering of goods or services. Based
upon the claims at hand (which consist primarily of accepting the Complainant’s
word because Complainant did not provide documentary
evidence – such as screen
printouts - and Respondent failed to rebut the claims), the Panel has serious
doubts forwarding the domain
name to Complainant’s competitor or posting links
to pornography sites constitutes a bona fide offering of goods and
services relating to this mark.
Complainant did not
disclose whether it asked ForcusFocus to install a block on all browser
referrals from <videocall.com> and what
FocusFocus’ response was to this request.
Such a block normally prevents one domain name from simply forwarding to
another domain name.
Respondent
did not know of Complainant’s alleged rights in the VIDEOCALL mark when it
registered the <videocall.com> domain name because the domain name
is comprised of generic terms. Thus, it did not register the domain name in bad
faith. See Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb.
Forum Feb. 13, 2001) (holding that where the domain name is a generic term, it
is difficult to conclude that
there was a deliberate attempt to confuse on
behalf of Respondent, and stating that “[i]t is precisely because generic words
are
incapable of distinguishing one provider from another that trademark
protection is denied them”); see also Lowestfare.com LLC v. US Tours & Travel, Inc., AF-0284
(eResolution Sept. 9, 2000) (finding no bad faith where Respondent was using
the descriptive domain name <thelowestfare.com>
to lead consumers to a
source of lowest fares in good faith).
Respondent did not attempt to sell its domain name
registration to Complainant, and there is no evidence supporting the proposition
Respondent registered the domain name with any bad faith intent. See
PRIMEDIA Special Interest Publ’n Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000)
(finding Respondent did not register the domain names in bad faith where there
is no evidence Respondent
intended to sell the domain name or disrupt
Complainant’s business); see also Pocatello Idaho Auditorium Dist. v. CES
Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) (finding that
"when a Complainant indicates a willingness to engage in a market
transaction
for the name, it does not violate the policy for a [Respondent] to
offer to sell for a market price, rather than out-of-pocket expenses");
see
also Etam, plc v. Alberta Hot Rods,
D2000-1654 (WIPO Jan. 31, 2001) ("Respondent’s offer to sell the domain
name does not constitute bad faith, in light of the
fact that it has a
legitimate interest in the domain name"); see also Seaway Bolt &
Specials Corp. v. Digital Income Inc., FA 114672 (Nat. Arb Forum August 5,
2002) (finding that the speculation in domains that reflect ordinary dictionary
words is not
bad faith unless Respondent registered the name with the intent of
selling the registration to Complainant or a competitor of Complainant). In this case, the email exchange shows the
process of “negotiations” and the Panel is a little concerned Complainant did
not provide
this information with its Complaint.
DECISION
Having
failed to establish all three elements required under ICANN Policy, the Panel
concludes that relief shall be DENIED.
Houston Putnam Lowry, Chartered
Arbitrator, Panelist
Dated: August 20, 2003
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