WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inter Next Media Corp. v. Mainstream Advertising, Inc., Daniel Khoshnood, and Iraj Khoshnood
Case No. D2006-0220
1. The Parties
The Complainant is Inter Next Media Corp., Encino, California, United States of America, represented by Michelman & Robinson, LLP, United States of America.
The Respondents are Mainstream Advertising, Inc., Daniel Khoshnood, and Iraj Khoshnood, all of Woodland Hills, California, United States of America, represented by Morrison & Foerster, LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2006. On February 21, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On March 2, 2006, Moniker Online Services, LLC transmitted by email to the Center its verification response.1 In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 8, 2006. The Center verified that the Complaint together with 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 March 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April�4,�2006. The Response was filed with the Center on April 4, 2006.
The Center appointed William R. Towns as the sole panelist in this matter on April�10,�2006. 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
The Complainant is in the online advertising business, and operates a pay-for-click search engine at “”. The Respondent also provides pay-for-click services and operates a search engine at “www.”. The Complainant launched its search engine at “” in 2001.
The Complainant asserts trademark rights in ABCSEARCH. The Respondent, in turn, asserts trademark rights in SEARCHABC. Neither mark is registered, but the Respondent recently filed a trademark application for SEARCHABC with the U.S. Patent & Trademark Office.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has been using ABCSEARCH as a mark in conjunction with its online advertising and internet search services since at least 2001, and that there is evidence of the existence of the domain name as early as 1998. Since at least May 16, 2001, the Complainant has provided notice on its website that “ABCSearch” is a common law trademark in which it has rights. The Complainant asserts that “ABCSearch” is one of the world’s largest meta search engines, with over 2.5 billion searches per month, and over 10,000 registered advertisers, and hence is recognized as a leader in the online search and advertising industry.
According to the Complainant, the Respondent did not begin using the disputed domain name to direct internet users to its website and search engine until May 2002. The Complainant alleges on information and belief that the Respondent registered the disputed domain name, which is confusingly similar to the Complainant’s mark, in an effort to trade on the goodwill of the Complainant’s mark. Since, according to the Complainant, the two websites are directed to the same audience, the Respondent’s unauthorized use of the disputed domain name is calculated to create confusion with the Complainant’s mark as to the source, affiliation, sponsorship, endorsement or other association with the Respondent’s website and services offered thereon. The Complainant also alleges on information and belief that the Respondent, or closely related persons or entities, have engaged in the practice of typosquatting, registering domain names that are confusingly similar to famous marks.
In view of the foregoing, the Complainant maintains that the Respondent should be considered as having no rights or legitimate interests in the domain name, which, according to the Complainant, the Respondent registered and is using in bad faith. Accordingly, the Complainant seeks the transfer of the domain name.
B. Respondent
The Respondent contends that it entered the internet and search engine industry in 1997, through its predecessor in interest by registering the disputed domain name and using the corresponding mark SEARCHABC. According to the Respondent, it has continually provided online search engine services since 1997 utilizing the disputed domain name. The Respondent notes that it continued the registration of the disputed domain name in November 2001 (through a privacy service) and that there is substantial archival evidence at “” of its use of the domain name in connection with a legitimate search engine since that time. According to the Respondent, it first learned of this dispute when it received a cease and desist letter from the Complainant’s attorneys on January 3, 2006, and the Respondent asserts that it has established rights and legitimate interests in the domain name from prior use.
The Respondent further contends that the disputed domain name is not confusingly similar to the Complainant’s mark, either facially or as used in connection with its search engine, which the Respondent maintains is an entirely different service from that offered by the Complainant. According to the Respondent, it offers “classic search engine services” similar to those offered by Google, while the Complainant’s search engine merely directs internet visitors to its paid advertisers. Accordingly, the Respondent argues that there is no likelihood of confusion.
The Respondent denies that it registered and is using the disputed domain name in bad faith. According to the Respondent, it has owned the domain name for 8 years and has continuously conducted legitimate search engine services through the domain name. The Respondent notes that it has never approached the Complainant about a potential transfer of the domain name, that it did not register the domain name to prevent the Complainant from using its ABCSEARCH mark in a corresponding domain name, and that the Respondent and Complainant are not competitors, given the differences in the search engines.
The Respondent insists it did not register the disputed domain name in an attempt to create a likelihood of confusion with the Complainant’s mark in order to divert internet users to its website. To the contrary, the Respondent maintains it does not want consumers to associate its website with the Complainant’s website, because the Complainant’s ABCSearch website initially was used in connection with pornography, and has since been identified as a website that installs unwanted adware and spyware without the knowledge of internet visitors to the site.
The Respondent disputes that it has ever engaged in typosquatting. To the contrary, according to the Respondent it is the Complainant’s management that is guilty of registering domain names consisting of misspellings of famous brands. For all of the foregoing reasons, the Respondent concludes that the transfer sought by the Complainant must be denied.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No.�D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No.�D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs�169 and 170. Paragraph�15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph�4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph�4(i).
Paragraph�4(b) sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph�4(c) in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph�4(a), a number of panels have concluded that paragraph�4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No.�D2000-0270.
B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph�4(a)(i) that the disputed domain name is confusingly similar to the ABCSEARCH mark, in which the Complainant asserts common law trademark rights. The critical inquiry under the first element of paragraph�4(a) is simply whether the mark and domain name, when directly compared, have confusing similarity. The Panel finds that to be the case here. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No.�D2000-0662 (domain name incorporating mark in its entirety is confusingly similar).
There is evidence that the Respondent or a predecessor in interest registered the disputed domain name prior to Complainant’s first use of ABCSEARCH in relation to its search engine. Even so, it is not necessary under paragraph�4(a)(i) for a complainant to demonstrate that its rights in a mark arose prior to a respondent’s registration of a confusingly similar domain name. See, e.g., 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.
Nevertheless, it is incumbent upon the Complainant to demonstrate that at some time it established rights in the mark. It is well settled that the term “trademark or service mark” as used in paragraph 4(a)(i) encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc. WIPO Case No. D2002-0005, The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218.
Since the Complainant has not registered ABCSEARCH as a mark, the Complainant must demonstrate common law rights in the mark. The Complainant must demonstrate under United States law that ABCSEARCH is entitled to protection as a mark – that is, that the designation is not merely descriptive in relation to the goods or services to which it is attached. See Restatement (Third) of Unfair Competition � 18 (1995). Assuming the designation is not merely descriptive, common law rights in a trademark or service mark are established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918).
The Respondent has not asserted that ABCSEARCH is merely descriptive in relation to the Complainant’s search engine. Accordingly, the Panel will assume for purposes of its decision that ABCSEARCH would not be considered merely descriptive, and could be eligible for common law protection as a mark when used in relation to a search engine, although it seems an unavoidable conclusion that the word “search” is descriptive in the sense that it conveys an aspect of the services provided, thus making it unlikely that the ABCSEARCH mark could properly be classified as strongly distinctive.
There is no dispute that the Complainant has operated its search engine under the ABCSEARCH designation since sometime in 2001. The evidence of use submitted by the Complainant is sufficient to demonstrate that, at least as of the date of the submission of the Complaint in this case, the Complainant had established common law trademark rights in ABCSEARCH. Accordingly, for the reasons set forth above, the Panel concludes that the Complainant has met its burden under paragraph 4(a)(i) of the Policy.2
C. Rights or Legitimate Interests
The disputed domain name is confusingly similar to the Complainant’s mark, and the Complainant has documented the Respondent’s use of the domain name, without the Complainant’s authorization or consent, in connection with the Respondent’s search engine, which includes pay for click services. Given the confusing similarity of the disputed domain name, and the Respondent’s use of the domain name in a manner that potentially could create a likelihood of confusion between the Complainant’s mark and the Respondent’s website and the services offered there, the Panel concludes that the Complainant had made a prima facie showing under paragraph�4(a)(ii), requiring the Respondent to come forward with evidence under paragraph�4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No.�D2000-0270; Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No.�D2000-0020.
Pursuant to paragraph�4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial 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.
The Respondent relies on paragraph 4(c)(i) for its claim of rights or legitimate interests in the disputed domain name. The record reflects that the Respondent prior to receiving any notice of this dispute used the domain name in connection with the Respondent’s search engine. This prior use, without more, however, is not dispositive of the Respondent’s rights or legitimate interests in the domain name for purposes of paragraph 4(c)(i), since the paragraph clearly requires the Respondent to be using the domain name in connection with a bona fide offering of goods and services. In determining whether an offering of goods or services is bona fide under paragraph�4(c)(i), the dispositive question is whether the use of the disputed domain name in connection with the offering otherwise constitutes bad faith registration or use of the domain name under paragraph�4(a)(iii). See, e.g., First American Funds, Inc. v. Ult.Search, Inc, WIPO Case No.�D2000-1840 (for offering under paragraph�4(c)(i) to be considered bona fide, domain name use must be in good faith under paragraph�4(a)(iii)).
The Respondent has submitted evidence of the registration and use of the disputed domain name in connection with an online search engine as early as 1997. This evidence is not extensive, however, and consists of an invoice dated July 25, 1997 issued by GlobalCenter to Global Net 2000, Inc. for what appears to be a web hosting fee for the disputed domain name.3 The Respondent does not further explain its relationship to either of these entities, and acknowledges that its current registration for the domain name (through a privacy service) reflects a registration date of November�21, 2001. Further, the earliest documented date of the Respondent’s use of the disputed domain name, based on archival evidence submitted by the Respondent, is May�25,�2002.4
The Complainant, for its part, points to archival evidence of the existence of the domain name as early as 1998. This archival evidence, however, indicates that during the period 1998-1999, the was used in connection with a sexually oriented adult website, “www.PamC”. There is no evidence that the Complainant launched its “ABCSearch” search engine before 2001, nor any evidence of the Complainant’s use of ABCSEARCH in connection with that search engine before May 2001.
It is the Complainant’s burden to demonstrate under paragraph 4(a)(ii) of the Policy that the Respondent lacks rights or legitimate interests with respect to the disputed domain name. Ultimately, to establish that the Respondent’s use of the disputed domain name in connection with its search engine prior to any notice of this dispute is not a bona fide offering of goods or services, it must be shown that the Respondent adopted the disputed domain name in order to capitalize on the goodwill created by the Complainant in the ABCSEARCH mark. For the reasons discussed below regarding the issues of bad faith registration and use of the domain name under paragraph 4(a)(iii), the Panel is not persuaded that the Complainant has made this showing.
D. Registered and Used in Bad Faith
Paragraph�4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph�4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.�D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No.�D2004-0230. Nevertheless, paragraph�4(a)(iii) embodies a requirement that is “satisfied only if the Complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith”. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.�D2000-0003.
The Panel is unable to conclude from the circumstances of this case that the Respondent registered the disputed domain name in bad faith within the meaning of paragraph�4(a)(ii) of the Policy. As noted above, there is some evidence in the record that the Respondent through a predecessor in interest registered and began using the disputed domain name as early as 1997. This would precede the earliest registration date for the domain name, and would predate by several years the Complainant’s earliest claimed use of the ABCSEARCH designation in relation to its search engine. As a general rule, when a domain name is registered before any trademark rights are established, the registration of the domain name is not in bad faith since the registrant could not have contemplated the complainant’s non-existent right. See, e.g., General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No.�D2003-0845.
The Panel is not prepared to decide this case based solely on relatively sparse evidence that the Respondent registered and began using the disputed domain name in connection with its search engine in 1997. At the same time, the Panel does not feel free to totally disregard this evidence in reaching its decision. It is paramount that panelists decide cases based on the limited scope of the Policy. M, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. And under the Policy, it remains the Complainant’s burden to establish bad faith registration. See Allocation Network GmbH v. Steve Gregory, WIPO Case No.�D2000-0016. Assuming that the Respondent did not acquire registration rights in the disputed domain name prior to November�21,�2001, the Complainant’s first use of the ABCSEARCH designation in connection with its search engine still occurred only a matter of months earlier. The Complainant’s rights in the mark are not based on registration, but rather arise under common law principles which require continuous and extensive use sufficient to distinguish the Complainant’s services from those of its competitors.
The Panel cannot ascertain from the statements and documents submitted whether the Complainant’s use of the ABCSEARCH designation was sufficient at the time of the Respondent’s November 2001 registration of the disputed domain name to establish common law rights in the mark. The Complainant’s anecdotal evidence concerns a later time period, and does not demonstrate that the Complainant had established sufficient goodwill in the mark within a few months of its first use to establish protectable rights under the common law – that is, to distinguish the Complainant’s services from those of its competitors. While the mark may not be considered merely descriptive, it nonetheless communicates an aspect of the search engine service offered on the website, and as such is not strongly distinctive. See Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No.�D2001-0031.
Other than the similarity between the disputed domain name and the Complainant’s mark, the Complainant has pointed to no circumstances from which this Panel might conclude that, at the time the Respondent registered the disputed domain name, it was aware of the Complainant, or of the Complainant’s potential or existing common law rights in the ABCSEARCH mark.5 The Complainant’s allegation based on information and belief that the Respondent has engaged in a pattern of typosquatting independent of this case does not serve to establish otherwise. The Panel is by no means free from doubt as to the Respondent’s motivation, but the Panel is constrained to act within the limited scope of the Policy, and to reach a decision based on the statements and documents submitted.
For the foregoing reasons, the Panel is unable to conclude from the record before it that the Respondent was clearly aware of the Complainant or that the Respondent’s aim of the registration was to take advantage of the confusion between the domain name and any potential or existing complainant rights. See ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669 and Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320 . The Policy provides a remedy only in cases where the complainant proves that the domain name has been registered and is being used in bad faith. In view of the foregoing, and while recognizing that the circumstances of this case present a close question, the Panel nonetheless must conclude that the Complainant has not met its burden under paragraph�4(a)(iii) in this case.
7. Decision
For all the foregoing reasons, the Complaint is denied.
William R. Towns
Sole Panelist
Dated: April 24, 2006
1 The registrar verification identifies the registrant to be Mainstream Advertising, Inc. As used herein “Respondent” is a reference to Mainstream Advertising, Inc. only.
2 While paragraph�4(a)(i) embodies no requirement that the complainant’s trademark rights must have arisen before the disputed domain name was registered, this factor is nonetheless relevant for purposes of paragraphs�4(a)(ii) and 4(a)(iii) of the Policy. See, e.g., N�ofumomais, Cl�nica de Homeopatia Antitab�gica, Lda. v. Re-Surgir - Consultores em Desenvolvimento Individual e Organizacional, Lda., WIPO Case No.�D2004-0399.
3 The Respondent has not relied upon its recent USPTO trademark application to register SEARCHABC in its Response, but the Panel notes that the application reflects the Respondent’s first use of this mark in commerce in May 1997.
4 The Complainant and the Respondent rely heavily, if not exclusively, on search results performed on the Internet Wayback Machine at “” concerning the nature and duration of the use of both the Complainant’s ABCSEARCH mark and domain name and the Respondent’s domain name. The Panel does not infer from such archival evidence that the Respondent never used the disputed domain name in connection with its search engine at an earlier time, but merely notes that the archival evidence does not directly support the Respondent’s claimed earlier use. As noted above, the Respondent has submitted other evidence in support of its claim of earlier use.
5 The fact that the Complainant’s website provided notice of its common law assertion of rights does not, without more, demonstrate that the Respondent knew of the Complainant’s potential or existing rights when the disputed domain name was registered.
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