DECISION

Broadvox, LLC v. Broadvox Metrocom Corporation and Daniel Mullen

Claim Number: FA0408000310976

PARTIES

Complainant is Broadvox, LLC (“Complainant”), represented by Robert E. Chudakoff, of Ulmer & Berne LLP, 1300 E. 9th St., Suite 900, Cleveland, OH 44114-1583.  Respondent is Broadvox Metrocom Corporation and Daniel Mullen (“Respondent”), P.O. Box 1900, Charlottetown, Prince Edward Island, Canada C1A 7N5.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <broadvox.com>, <broadvox.biz>, and <broadvox.info>, registered with Neonic Oy, Tucows Inc. and R139-Lrms, respectively.

PANEL

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 Panelist in this proceeding.

David P. Miranda, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 10, 2004; the Forum received a hard copy of the Complaint on August 12, 2004.

On August 11, 2004 and Aug 12, 2004, Neonic Oy, Tucows Inc.or  R139-Lrms confirmed by e-mail to the Forum that the domain names <broadvox.com>, <broadvox.biz>, and <broadvox.info> are registered with Neonic Oy, Tucows Inc., and  R139-Lrms respectively, and that Respondent is the current registrant of the name.  Neonic Oy, Tucows Inc., and R139-Lrms have verified that Respondent is bound by the Neonic Oy, Tucows Inc., or R139-Lrms registration agreements 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 August 16, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 6, 2004 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@broadvox.com, postmaster@broadvox.biz, and postmaster@broadvox.info by e-mail.

A Response was received on September 7, 2004.

Complainant’s additional submission in support of Complaint was submitted on September 10, 2004.  Respondents’ Response to the additional submission was dated September 14, 2004.  Both were considered by the Panel.

On September 14, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David P. Miranda, Esq., as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Broadvox, LLC (“Complainant”) claims that BROADVOX is its trademark in use since August 29, 2001, for the purpose of providing Internet telephony services.  Complainant contends that Respondent Broadvox Metrocom Corporation and Daniel Mullen (“Respondent”) registration and use of <broadvox.com>, <broadvox.biz>, and <broadvox.info> are in violation of ICANN policy and seeks transfer of these domains.

Complainant contends that it owns exclusive rights in and to the mark “BROADVOX” based upon its use since August 29, 2001 and based upon its application for federal registration of the trademark with the United States Patent and Trademark Office.  Complainant also claims to be the holder of the <broadvox.net> and <broadvoxdirect.com> domain names since August 29, 2001, and has advertised, promoted, and offered its services via those domain names.

Complainant contends that Respondent has no rights or legitimate interests in the Broadvox domain names because it has not conducted any business under the BROADVOX marks, and Respondent’s website located at <broadvox.com> is blank, reading only “broadvoxmetrocom │ voice data wireless and more.”   The <broadvox.biz> and <broadvox.info> domain names both returned search errors.

Complainant contends that Respondent’s registration and use is in bad faith because Complainant’s website was in use for nearly 18 months prior to Respondent’s registration of the domains at issue, and that Respondent knew of Complainant’s business and of Complainant’s website located at <broadvoxdirect.com>.

Complainant contends that after issuing a cease and desist letter to Respondent, Respondent registered domain names <broadvox.biz> and <broadvox.info>.  Complainant contends that further evidence of Respondent’s bad faith is evidenced by the multiple UDRP decisions in which Daniel Mullen was Respondent and was ordered to transfer certain other unrelated domain names.

B. Respondent

Respondent contends that Complainant does not have exclusive rights to use BROADVOX as a trademark, and that prior use of the name was made by an apparently unrelated party Broadvox.com, Inc.  Respondent contends that registration of the domain names <broadvox.net> and <broadvoxdirect.com> are to parties other than Complainant.  Respondent disputes Complainant’s alleged use of the BROADVOX name via the web, showing the printout of the <broadvoxdirect.com> website dated January 11, 2004, indicating the website is not currently available, and that <broadvoxdirect.com> is preparing for the official launch of its site.

Respondent contends that it made extensive preparations with respect to its business under the BROADVOX name, including gaining clearance under Canadian law prior to expending $6,000 to purchase the domain name <broadvox.com>.  It developed its website and engaged in other business activities prior to notice from Complainant of the dispute.

Respondent contends that Complainant has misrepresented its use of the mark, Complainant’s website was not operable in August of 2001, Complainant does not have a physical presence in Canada and on April 8, 2004, and Complainant changed its name from Broadvox Carrier Services, LLC to Broadvox, LLC.  The service mark application submitted by Claimant lists Broadvox Carrier Services, LLC, not the Complainant Broadvox, LLC as the Applicant.

C. Additional Submissions

Complainant’s additional submission contends that even by Respondent’s own admission, Complainant has been conducting business under the BROADVOX mark for at least 18 months prior to Respondent’s registration and use of the disputed domain names.  Complainant contends that it is the only party to ever actually use the mark BROADVOX in connection with goods and services and such commercial use predates Respondent’s registration.  Complainant contends that it is already offering its services in Canada, and a customer attempting to locate Complainant on the Internet will instead find Respondent’s inactive website.  Complainant contends that evidence submitted by both parties clearly shows that the consuming public has come to associate the BROADVOX mark with Complainant’s goods and services; however, Complainant fails to specify what evidence establishes this claim.

Respondent submits a Response to Complainant’s additional submission.  Respondent contends that Complainant has not demonstrated its relationship with the legal Registrant of <broadvox.net> under which Complainant alleges it was doing business.  Respondent contends that it is doing business in Canada under the BROADVOX name and that Complainant has no clearance from any Canadian regulatory authority to do so.  Respondent contends that Complainant does not have a federally registered trademark in the United States or Canada.  Respondent also requests a finding of a reverse domain name hijacking by Complainant.

FINDINGS

Complainant Broadvox, LLC is based in Cleveland, Ohio and provides Internet telephony services.  Complainant has shown a pending trademark application by a company known as Broadvox Carrier Services, LLC, for the BROADVOX mark.  Although Complainant has shown use of the mark, it has failed to show sufficient trademark rights to warrant transfer under the UDRP Rules.

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 Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) 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.

Identical and/or Confusingly Similar

Complainant alleges that it has established rights in the BROADVOX mark through its U.S. Trademark Application for registration of the mark dated April 4, 2004, and through use of the mark in commerce since August 29, 2001.  Although the rules require that Complainant’s trademark or service mark be registered by a government authority or agency for trademark rights to exist, the common law rights may be acquired through a showing of secondary meaning associated with the mark and Complainant.  See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum March 13, 2003).

Complainant’s pending trademark application, without more, does not demonstrate rights in the mark.  See Holms v. Whois Prot. Serv., FA 288395 (Nat. Arb. Forum, Aug. 17, 2004); see also Tees.com, LLC v. Emphasys Techs., Inc., FA 206362 (Nat. Arb. Forum, Dec. 27, 2003).

Complainant does not have a federal registration to the mark BROADVOX.  It has an application that is currently pending.  It is note worthy that the pending application is in the name of a company that is different than Complainant’s name, and Complainant offers no information as to the relationship between those parties.  Furthermore, Respondent raises the issue of prior commercial use of the mark BROADVOX that could prevent registration.

In the absence of registration to the mark, the applicant must establish common law trademark rights by demonstrating sufficiently strong identification of its mark by the public, showing the mark has acquired secondary meaning.  Complainant has failed to satisfy its burden of providing proof upon which a finding of secondary meaning could be based.  Although a Complainant in a proceeding such as this may establish common law rights to a mark, the Complainant in this case has failed to do so.  See, generally, NBA Prop., Inc. v. Adirondack Software Corp., D2000-1211 (WIPO Dec. 8, 2000) (denying Complaint because Complainant was not the owner of the trademarks);  Razorbox, Inc. v. Skjodt,  FA 150795 (Nat. Arb. Forum May 9, 2003) (finding that Complainant did not establish the requisite trademark or common law rights to grant Complainant the necessary standing for the Panel to find in its favor as Complainant’s pending trademark application did not, in and of itself, demonstrate trademark rights in the mark applied for); Diversified Mortgage, Inc. v. World Fin. Partners, FA 118308 (Nat. Arb. Forum Oct. 30, 2002) (finding that the UDRP makes clear that its “rules are intended only to protect trademarks, registered or common law, and not mere trade names, due to the fact that trade names are not universally protected as are trademarks”); Tees.com, LLC v. Emphasys Techs., Inc., FA 206362 (Nat. Arb. Forum, Dec. 27, 2003).

Thus, Complainant has failed to establish Policy ¶4(a)(i).

Since Complainant has failed to establish the first element of the Policy, it is unnecessary to address the claims under the remaining two elements.  See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Holms v. Whois Prot. Serv., FA 288395 (Nat. Arb. Forum, Aug. 17, 2004).

Respondent has failed to meet its burden of establishing reverse domain name hijacking by Complainant.

DECISION

Complainant having failed to establish all three elements required under the ICANN policy, the Panel concludes that relief shall be Denied.

Accordingly, it is Ordered that the <broadvox.com>, <broadvox.biz> and <broadvox.info> domain names Remain With Respondent.

David P. Miranda, Esq., Panelist
Dated: September 27, 2004

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