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PC Mall, Inc. v. Pygmy Computer Systems, Inc. [2004] GENDND 1107 (25 August 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PC Mall, Inc. v. Pygmy Computer Systems, Inc.

Case No. D2004-0437

1. The Parties

The Complainant is PC Mall, Inc., Torrance, California, United States of America, represented by Morrison & Foerster, LLP, United States of America.

The Respondent is Pygmy Computer Systems, Inc., Miami, Florida, United States of America.

2. The Domain Names and Registrars

The disputed domain names <mobile-mall.com> and <mobilemall.com> are registered with Go Daddy Software and R&K Global Business Services, Inc. d/b/a 000Domains.com, respectively.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2004. On June 14, 2004, the Center transmitted by email to R&K Global Business Services, Inc. d/b/a 000Domains.com (“R&K”) a request for registrar verification in connection with the domain names at issue. On June 14, 2004, R&K transmitted by email to the Center its verification response, confirming that only <mobilemall.com> is registered with R&K, confirming that the Respondent is listed as the registrant, and providing the contact details for the administrative, billing, and technical contact. On June 15, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with <mobile-mall.com>. On June 16, 2004, Go Daddy Software transmitted by email to the Center its verification response, confirming that <mobile-mall.com> is registered with GoDaddy.com, confirming that the Respondent is listed as the registrant, and providing the contact details for the administrative, billing and technical contact. In response to a June 17, 2004, email notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amended Complaint on June 23, 2004. The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 29, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was July 19, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2004.

The Center appointed Gregory N. Albright as the Sole Panelist in this matter on August 11, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.

4. Factual Background

Complainant PC Mall, Inc., is a Delaware corporation with its principal place of business in Los Angeles, California. Complainant’s wholly owned subsidiary, PC Mall Sales, applied to the United States Patent and Trademark Office (“USPTO”) for registration of the MOBILE MALL mark on August 7, 1996, and it was registered on the supplemental register on May 2, 2000, (Reg. No. 2,347,743).

Respondent Pygmy Computer Systems, Inc. registered <mobilemall.com> on March 14, 1997, and registered <mobile-mall.com> on July 28, 1998.

5. Parties’ Contentions

A. Complainant

1. Identical or Confusingly Similar

Complainant, through its wholly owned subsidiary PC Mall Sales, Inc. (“PC Mall Sales”), owns the MOBILE MALL trademark and the registration for that mark, and is using the MOBILE MALL trademark. PC Mall Sales adopted the MOBILE MALL trademark in 1996 for use in connection with catalogs, telephone order services, mail order services, retail store services, and electronic retailing, all in the field of computer-related products, namely computer hardware, software, peripherals, accessories, supplies, books and instructional materials. PC Mall Sales applied for USPTO registration of the MOBILE MALL mark on August 7, 1996. Complainant and PC Mall Sales have used the MOBILE MALL mark in connection with the goods and services listed above since 1998. PC Mall Sales obtained registration of the MOBILE MALL mark on May 2, 2000. Exhibit C to the Amended Complaint shows that MOBILE MALL is registered on the supplemental register (Reg. No. 2,347,743).

Complainant and PC Mall Sales also have USPTO registrations of the MACMALL, PCMALL, THE MALL WITH IT ALL, and GRAPHICS MALL trademarks (Reg. Nos. 2,021,649; 1,938,926; 2,006,944; 2,007,047; 2,175,765; 2,336,369; 2,660,968; 2,247,889; 2,063,494; and 2,358,756), and Complainant and PC Mall Sales have used those marks in commerce. (Complainant also asserts that it has foreign registrations of certain of its marks, but has not submitted evidence to support the claim.) Complainant has also adopted and used the following common-law marks: SYSTEMS MALL, SOFTWARE MALL, SUPPLIES MALL, CLEARANCE MALL, WEB MALL, UTILITIES MALL, PERSONAL COMPUTING MALL, BUSINESS SOFTWARE MALL, INTERNET MALL, HOME COMPUTER MALL, and HARDWARE MALL. Complainant has also registered, and is using, the following domain names: <macmall.com>, <mac-mall.com>, <pcmall.com, <pc-mall.com>, <computermall.com>, <datacom-mall.com>, <datacommall.com>, <iwirelessmall.com>, and <iplaymall.com>.

The disputed domain names are identical to PC Mall Sales’ trademark MOBILE MALL. In addition, the disputed domain names are confusingly similar to Complainant’s other MALL-based marks given that Complainant and PC Mall Sales have developed a family of such trademarks in connection with computer-related products and services.

Complainant has federal trademark rights under United States law in the mark MOBILE MALL due to PC Mall Sales’ ownership of the registration for the mark MOBILE MALL. The application for registration of MOBILE MALL predates Respondent’s March 17, 1997 and July 28, 1998 registration of the disputed domain names. Respondent did not operate websites at the disputed domain names until 1999, and since that time has used the disputed domain names solely to redirect users to Respondent’s websites where it offers computer-related products and services in competition with Complainant. Complainant also has federal trademark rights under United States law due to its ownership of the registrations for the MACMALL, PCMALL, THE MALL WITH IT ALL, and GRAPHICS MALL trademarks. The filing date of these registered marks are all well prior to the dates on which Respondent registered the disputed domain names, giving rise to a presumption of prior rights under federal law.

2. Rights or Legitimate Interests

Respondent has no rights or legitimate interests with respect to the disputed domain names. Respondent is not commonly known by the disputed domain names. Instead, Respondent is commonly known by its own registered corporate name, Pygmy Computer Systems, Inc., and by the names Rupp, Rupp Technology, Rupp Technology Corp., and Mobile Mania. Respondent is also known by the domain names of its websites <pygmy.com>, <mobilemania.com>, and <mobilescape.com>, where Respondent competes with Complainant in the offering of computer-related products and services over the Internet.

The Respondent uses the disputed domain names solely to redirect users to <mobilemania.com>. Respondent’s only interest in the disputed domain names is its illegitimate interest in using them to divert customers to the website of its own competing business. Respondent makes no legitimate non-commercial or fair use of the disputed domain names, as its use is commercial and for the sole purpose of attracting potential customers to its own website for the purpose of competing with Complainant to make a profit.

Respondent has never been licensed to use Complainant’s MOBILE MALL trademark.

3. Registered and Used in Bad Faith

The disputed domain names fully incorporate the Complainant’s MOBILE MALL trademark, thereby misleading consumers to believe that the <mobilemania.com> website is affiliated with, or sponsored or authorized by, Complainant, and creating a likelihood of confusion.

Because the disputed domain names fully incorporate the Complainant’s MOBILE MALL trademark, they completely prevent Complainant from reflecting that trademark in a domain name. This is particularly disruptive of Complainant’s business, because its business is largely conducted over the Internet, and Respondent uses the disputed domain names to divert customers to Respondent’s competing website.

Respondent warranted in its agreements with the registrars of the disputed domain names, that its registration of those domain names would not infringe upon the rights of any third party. Given that Complainant had been developing its family of MALL-based marks around the world for nearly five years before Respondent registered either of the dispute domain names, Respondent should have known that its registration would violate Complainant’s intellectual property rights. Similarly, because of the notoriety of Complainant’s MALL-based marks, Respondent was on notice of the business that it could gain by being mistakenly identified with Complainant, and this is further evidence that Respondent registered and is using the disputed domain names in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, and is in default in this proceeding.

6. Discussion and Findings

Under Paragraph 4(a) of the Policy, Complainant has the burden of proving all of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain names are virtually identical to the claimed MOBILE MALL mark, and thus are confusingly similar to it. However, absent proof of Complainant’s protectable rights in the marks in question, similarity to the disputed domain names is irrelevant. CyberTrader, Inc. v. Gregory Bushnell, WIPO Case No. D2001-1019.

The Panel therefore must determine, as a preliminary matter, whether Complainant has proven that it currently has rights in the MOBILE MALL mark, or a family of “MALL-based” marks to which the disputed domain names are confusingly similar. There is also a question of whether Complainant had trademark rights before Respondent registered the disputed domain names, and whether Complainant must prove this to carry its burden of proof under Paragraph 4(a)(i) of the Policy.

Paragraph 4(a)(i) of the Policy does not explicitly require that a complainant’s trademark rights arise before a disputed domain name is registered; instead, the Policy speaks in terms of present ownership of trademark rights. In many cases the complainant has been found to have trademark rights in a registered or common law trademark even though those rights arose after the domain name was registered. See Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527; Iogen Corporation v. Iogen, WIPO Case No. D2003-0544; and Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598. However, other cases have taken a different view. Roberta Chiappata dba Discount Hydroponics v. C.J. Morales, WIPO Case No. D2002-1103 (finding no consensus as to whether trademark rights must exist before disputed domain name was registered for purposes of Paragraph 4(a)(i) of the Policy).

This Panel need not decide whether Paragraph 4(a)(i) requires a complainant to prove that it had trademark rights in the MOBILE MALL mark before the disputed domain name was registered because, as explained below, the Complainant in this matter has failed to prove that it has any such rights today.

A.1. The MOBILE MALL mark

Complainant asserts that it acquired trademark rights in the MOBILE MALL mark prior to the Respondent’s March 17, 1997 and July 28, 1998 registrations of the disputed domain names by virtue of Complainant’s August 7, 1996 application for registration, and the May 2, 2000, registration, of the mark with the USPTO. However, as discussed below, Complainant has glossed over several facts that are critical to the analysis.

USPTO records show that on August 7, 1996, Complainant filed an “Intent-to-Use” (“ITU”) application, pursuant to 15 U.S.C. § 1051(b), for registration of the MOBILE MALL mark on the principal register. Registration of the mark on the principal register would have conferred a constructive use date of August 7, 1996, and given Complainant priority over those with competing claims to the mark based upon later use. See 15 U.S.C. § 1057(c). However, Complainant’s MOBILE MALL mark was registered on the supplemental register, not the principal register. Registration on the supplemental register does not confer the benefits of 15 U.S.C. § 1057(c). 15 U.S.C. § 1094. Thus, contrary to what Complainant contends, Complainant cannot rely on its ITU application date to establish that it had rights in the MOBILE MALL mark prior to Respondent’s registration of the disputed domain names.

Since Complainant may not rely on the constructive use date of its ITU application, Complainant must show that it has acquired trademark rights through use of the MOBILE MALL mark in commerce. “It is axiomatic in trademark law that the standard test of ownership is priority of use. To acquire ownership of a trademark it is not enough to have invented the mark first or even to have registered it first; the party claiming ownership must have been the first to actually use the mark in the sale of goods or services.” Sengoku Works Ltd. v. RMC Intern., Ltd., 96 F.3d 1217, 1219 (9^th Cir. 1996), cert. denied, 521 U.S. 1103 (1997). The record shows that Complainant first made use of the MOBILE MALL mark in 1998, after Respondent’s March 17, 1997 registration of the <mobilemall.com> domain name. However, the record does not show whether Complainant’s use of the MOBILE MALL mark was sufficient, at any time, for the mark to acquire secondary meaning.

Further, the registration of the MOBILE MALL mark on the supplemental register means that the USPTO did not find the mark distinctive, and instead “determined that the mark is ‘capable of distinguishing’” upon acquisition of secondary meaning. California Cooler, Inc. v. Loretto Winery, Ltd., [1985] USCA9 1877; 774 F.2d 1451, 1454 (9^th Cir. 1985). A “word, symbol or device on the supplemental register is not, strictly speaking, a ‘mark.’ That is, it is not registrable on the principal register and is only ‘capable’ of someday becoming a mark upon the acquisition of secondary meaning.” Films of Distinction, Inc. v. Allegro Film Productions, Inc., 12 F.Supp.2d 1068, 1075 (C.D. Cal. 1998), citing McCarthy, J. Thomas, McCarthy on Trademarks and Unfair Competition, § 19:37 at 19-76 (4^th ed. 1996). Complainant has not argued, much less submitted evidence, that MOBILE MALL acquired secondary meaning (1) before Respondent’s registration of <mobilemall.com> on March 17, 1997, (2) before Respondent’s registration of <mobile-mall.com> on June 28, 1998, or (3) even before this proceeding commenced. CyberTrader, Inc. v. Gregory Bushnell, WIPO Case No. D2001-1019 (denying Complaint where there was no evidence that mark registered on supplemental register had secondary meaning).

On this record, the Panel cannot find that Complainant has carried its burden of proving that it currently owns rights in the MOBILE MALL mark.

A.2. Complainant’s Family of “MALL-based” Marks

The analysis does not end with Complainant’s MOBILE MALL mark, because Complainant also asserts that the disputed domain names are confusingly similar to Complainant’s other “MALL-based” marks, i.e., Complainant’s registered marks MACMALL, PCMALL, THE MALL WITH IT ALL, and GRAPHICS MALL (GRAPHICS MALL is on the supplemental register), and Complainant’s common-law marks SYSTEMS MALL, SOFTWARE MALL, SUPPLIES MALL, CLEARANCE MALL, WEB MALL, UTILITIES MALL, PERSONAL COMPUTING MALL, BUSINESS SOFTWARE MALL, INTERNET MALL, HOME COMPUTER MALL, and HARDWARE MALL.

Complainant does not claim that it owns “MALL,” standing alone, as a trademark. This matter is therefore distinguishable from other UDRP proceedings in which panels have given weight to the existence of a family of marks that had an independent trademark as a common characteristic. See The Wellcome Foundation Limited, BW USA, Inc., SmithKline Beecham Corporation d/b/a GlaxoSmithKline v. Michale Kelly, WIPO Case No. D2004-0265 (WELLBUTRIN family of marks); Citigroup Inc. v. Ian Templeton, WIPO Case No. D2002-0231 (CITI family of marks); Delta Air Lines, Inc. v. Stonybrook Investments, Ltd., WIPO Case No. D2000-1686 (DELTA family of marks); Fleetboston Financial Corporation v. JFK Holdings, Inc., WIPO Case No. D2000-1352 (in proceeding regarding <fleetbank.com>, Complainant owned both FLEET and FLEETBANK marks, among other FLEET family marks).

Nor does Complainant assert that the disputed domain names are confusingly similar to any particular mark other than MOBILE MALL; for example, Complainant does not contend that the disputed domain names are confusingly similar to its PC MALL mark, standing alone. Instead, Complainant asserts that the disputed domain names are confusingly similar to Complainant’s MALL-based marks “given that Complainant and its wholly-owned subsidiary have developed a family of ‘MALL’ trademarks in connection with computer-related products and services.” Complainant cites no authority in support of its argument that it has rights in “family of marks” under the circumstances of this case.

“A family of marks is a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner. Simply using a series of similar marks does not of itself establish the existence of a family. There must be a recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods.” J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 1462 (Fed. Cir. 1991). “Recognition of the family is achieved when the pattern of usage of the common element is sufficient to be indicative of the origin of the family. It is thus necessary to consider the use, advertisement, and distinctiveness of the marks, including assessment of the contribution of the common features to the recognition of the marks as of a common origin.” Id. at 1463.

In J & J Snack Foods, “McDonald’s showed extensive usage and promotion of various marks using the ‘Mc’ formative, in association with the McDONALD’s mark, in advertising and at McDonald’s restaurants. McDonald’s showed that in 1987 it operated 7,600 outlets in the United States with sales of over $14 billion; that it engaged in extensive nationwide advertising, spending $405 million in 1987….” Id.

In this matter, the issue is whether Complainant has shown that Complainant’s family of MALL-based marks has achieved recognition among the purchasing public that the common characteristic of its marks – i.e., the “mall” component – is indicative of the common origin of Complainant’s goods. For reasons discussed below, the Panel concludes that Complainant has failed to carry its burden of proof on this issue.

Complainant has adduced evidence that it had obtained registration of some of its marks by 1995 and 1996. Complainant has also asserted that it made use of its MACMALL mark as early as 1989, and began to use some of its other marks as early as 1995. However, there is no specific argument, or evidence, regarding the extent of Complainant’s usage of its various marks during the relevant time period. There is no evidence at all regarding the amount of Complainant’s sales of goods or services in connection with any of its marks. Nor is there any evidence of the extent of Complainant’s advertising or promotion of any of its marks. Complainant has not presented evidence of how the purchasing public perceives the “mall” common characteristic of Complainant’s family of marks, through a survey or otherwise. And Complaint has sidestepped, rather than squarely addressed, the question of whether the members of its family of marks are distinctive (in particular those that are registered only on the supplemental register, or not registered at all). Thus, Complainant’s arguments regarding its family of marks fail for want of supporting evidence. See The Mills Limited Partnership v. Michael G. Miller, WIPO Case No. D2000-1577 (declining to find unsupported and conclusory statements regarding “family” of MILLS marks supported claim of ownership of ARUNDEL MILLS mark); AutoNation, Inc. v. Paul Schaefer, WIPO Case No. D2001-0289 (making no finding regarding rights in a family of marks due to lack of evidence).

A.3. Conclusion

For all of the foregoing reasons, the Panel finds that Complainant has failed to carry its burden of proof under Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel has considered Complainant’s evidence that the Respondent lacks rights or legitimate interests with respect to the disputed domain names. However, since the Panel has found that Complainant has failed to carry its burden of proof under Paragraph 4(a)(i) and Paragraph 4(a)(iii) of the Policy, the Panel finds it unnecessary to decide whether Respondent lacks rights or legitimate interests with respect to the disputed domain names. See Shopping.com v. Internet Action Consulting, WIPO Case No. D2000-0439; Pet Warehouse v. Pets.com, Inc., WIPO Case No. D2000-0105.

C. Registered and Used in Bad Faith

Although the Amended Complaint fails for reasons discussed in Section 6A of this decision, the Panel has also considered Complainant’s evidence regarding the Respondent’s bad faith.

As discussed above, there is insufficient evidence in this record that Complainant acquired trademark rights in its MOBILE MALL mark, or a family of “mall-based” marks, before Respondent’s registration of the disputed domain names. “There are ample authorities supporting the view that a trademark that did not exist at the time the disputed domain name was registered cannot serve as the basis for a claim under the ICANN Policy, since it is impossible for the domain name to have been registered in bad faith.” John Ode dba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074; see also, Digital Vision, Ltd. v. Advanced Chemill Systems WIPO Case No. D2001-0827; PrintForBusiness B.V v. LBS Horticulture, WIPO Case No. D2001-1182. Some cases find an exception to this general rule when a Complainant provides strong evidence that Respondent knew that Complainant was highly likely to have trademark rights in a certain mark in the future. General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Center Online, WIPO Case No. D2003-0845. The Complainant has provided no such evidence in this case. The Panel thus cannot find that the domain name was registered in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Gregory N. Albright
Sole Panelist

Dated: August 25, 2004