WIPO Domain Name Decision D2010-0059 for nexmedia.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Nexmedia Pte Ltd v. Domain Administrator, Heavy Lifting, LLC Case No. D2010-0059 1. The Parties

The Complainant is Nexmedia Pte Ltd of Singapore, represented internally.

The Respondent is Domain Administrator, Heavy Lifting, LLC, United States of America, represented internally. 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 January 13, 2010. On January 13, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On January 19, 2010, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 January 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2010. The Response was filed with the Center on February 8, 2010.

The Center appointed John Swinson as the sole panelist in this matter on February 23, 2010. 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 in this matter is a limited private company incorporated in Singapore in 2003. The Complainant is engaged in the sale of products and services in the field of mobile communications. It owns and operates the domain name .

The Respondent is a limited liability company incorporated in the United States. The Respondent's representative in these proceedings, Mr. Mason, is also the sole member of the Respondent company. Among other pursuits, Mr. Mason is involved in the motion picture industry. The Respondent company undertakes motion picture financing and production in addition to other business.

The Respondent has held the registration of the disputed domain name since 2003. The disputed domain name is currently “parked” and has been so for a number of years. 5. Parties' Contentions A. Complainant

The Complainant submits that although it has not registered the NEXMEDIA trademark, it has common law rights in the name in a number of countries. It has continuously operated the company NEXMEDIA PTE LTD since 2003. It has sold, marketed and advertised products and services relating to mobile telephone technology under the NEXMEDIA name since 2004, including through co-branding arrangements with customers and business partners. It has operated the website since 2004 for the purpose of marketing and selling its products. It has conducted business, product demonstrations and related trade under the NEXMEDIA mark, including appointing resellers and sales agents in various countries who are licensed to use the mark. As a result, the NEXMEDIA mark is well recognised internationally and the Complainant has substantial goodwill in a number of countries in relation to it.

The Complainant submits that the disputed domain name is identical to the NEXMEDIA trademark, with the addition of the suffix “.com”. The disputed domain name is therefore confusingly similar to the NEXMEDIA mark in which the Complainant has better rights. It is also confusingly similar to the domain which the Complainant owns.

The Complainant submits further that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant did not consent to or authorise the use of the NEXMEDIA mark by the Respondent. The Respondent does not have any trademarks in NEXMEDIA, is not commonly known by the name and does not engage in trade under it. The Respondent has not made any bona fide use of the domain name, but uses it to generate “pay-per-click” revenue by virtue of inadvertent access of the domain name by Internet users.

Finally, the Complainant submits that the disputed domain name was registered and is being used in bad faith. The Respondent has engaged in a pattern of speculative domain name registrations and sales. Upon being contacted by the Complainant, the Respondent indicated that the domain name was available for purchase at the sum of twenty-five thousand USD ($25,000), considerably more than the cost of securing and maintaining registration. B. Respondent

The Respondent concedes that the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights.

However, the Respondent submits that it has legitimate interests in the disputed domain name. While the disputed domain name is now owned by the Respondent, it was initially registered by Mr. Mason. The Respondent submits that these two registrations should be considered as a single continuous registration period for the purposes of this case. The Respondent submits that Mr. Mason has had extensive involvement in the motion picture industry, a media industry, and that the domain name has clear media applications. While the Respondent has not yet made use of the disputed domain name, it is entitled to do so at a time of its choosing.

The Respondent also submits that the disputed domain name was not registered, and is not being used, in bad faith. The Respondent does not deny that it is the registrant of multiple domain names, nor that it has previously sold domain names, but submits that this cannot be evidence of bad faith in respect of the disputed domain name. The Respondent submits that the term “nexmedia” has generic qualities. “Media” is a generic term and the use of “nex” as a component of brands is widespread. “Nexmedia” itself is a name used by several companies around the world.

The Respondent submits that bad faith cannot be found because it is impossible, on the basis of timing, for the Respondent to have registered the disputed domain name with the Complainant in mind. The disputed domain name was registered before the Complainant company came into existence and there is no evidence of use of the NEXMEDIA mark for some years after the Complainant was formed. In respect of the offer to sell the domain for USD $25,000, the Respondent notes that this was in response to numerous unsolicited enquiries from the Complainant and multiple, repeatedly declined, requests to purchase the domain. The Respondent submits that it is within its rights to place any value it wishes on the disputed domain name.

Finally, the Respondent requests that the Panel make a finding of reverse domain name hijacking against the Complainant. 6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The onus of proving these elements lies on the Complainant. A. Identical or Confusingly Similar

The Complainant must first demonstrate that it has rights in the NEXMEDIA mark.

The Complainant admits that it does not have any registered trademarks in respect of the NEXMEDIA name. It relies instead on possessing common law rights.

A Complainant may demonstrate common law or unregistered trademark rights by proving the existence of goodwill and reputation in a given name and sufficient association between the Complainant and that name: see Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322; Australian Trade Commission v. Matthew Reader,WIPO Case No. D2002-0786.

The Complainant has adduced evidence of use of the NEXMEDIA brand in the sale and marketing of its products and services since 2004. The name appears on the Complainant's website and on marketing material in respect of its products, often in association with well-known international brands.

It would not be fatal to the Complainant's contentions if its alleged common law mark were only recognised within a certain geographical area. The Panel does note, however, that evidence adduced by the Respondent demonstrates that the name “Nexmedia” is used by a number of other companies around the world. Any rights that the Complainant has in respect of the NEXMEDIA mark may therefore be viewed in this light.

However, noting the Complainant's presentation of evidence regarding the secondary meaning attached to its mark and that the Respondent concedes that this element of the Policy is made out, the Panel accepts that the Complainant has rights in the NEXMEDIA mark. As the disputed domain name is identical to the mark in which the Complainant is accepted to have rights, the first element of the Policy has been met. B. Rights or Legitimate Interests

The Complainant must demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name. However, it is accepted that once the Complainant has made out a prima facie case in this respect, then the burden falls to the Respondent to demonstrate rights or legitimate interests under this element of the Policy: see for example Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.

The Complainant in this case has adduced evidence that the Respondent does not own any trademarks in NEXMEDIA, is not commonly known by, and does not trade under, the Nexmedia name and is not making bona fide use of the disputed domain as it is “parked” and used to generate “pay-per-click” revenue. A prima facie case against the Respondent is thereby established.

Paragraph 4(c) of the Policy outlines a number of means by which a Respondent may be able to demonstrate rights or interests in a given disputed domain:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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 submits that it has a legitimate interest in the disputed domain name because it undertakes media activities (in the motion picture industry) and intends to make use of the domain name at some stage in the future in connection with motion picture production, financing and/or distribution.

While the Respondent claims to intend to use the domain name in the future in connection with the offering of services, it has evidenced no demonstrable preparation towards doing so. The website has existed in its “parked” form for many years. The evidence available to the Panel indicates that the Respondent's use of the domain name at present is directed towards generating “pay-per-click” revenue. Advertisements on the page divert users to sites selling a variety of products and services: see Auer Lighting GmbH v. Domain Privacy LTD / The Tidewinds Group, Inc.,WIPO Case No. D2009-1622.

It is conceivable that use of a domain name to generate “pay-for-click” revenue might amount to a bona fide offering of goods or services in and of itself, where the domain is generic and such use is not dependent on the trademark value of the domain in question: see The Carphone Warehouse Limited and The Phone House B.V. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2008-0483; Auer Lighting GmbH v. Domain Privacy LTD / The Tidewinds Group, Inc., supra.

The Respondent does not explicitly make an argument to this effect, but does submit that the disputed domain name is generic in nature. The disputed domain advertises various search categories, including those which may be described as generally involving “media” elements. It is not apparent to the Panel that the Respondent uses the site to divert to advertisements for products and services in direct competition to those sold by the Complainant, except perhaps in an incidental manner. It does not seem that the Respondent is using the disputed domain in order to trade off the Complainant's brand in the context of obtaining pay-per-click revenue related to the value of the Complainant's trademark.

However, in light of the Panel's findings below in respect of the third element, it is unnecessary to form a concluded view on whether the Complainant has made out the second element of the Policy. C. Registered and Used in Bad Faith

Finally, the Complainant must establish bad faith on the part of the Respondent.

As noted in Trade Me Limited v. Vertical Axis Inc,WIPO Case No. D2009-0093, the Policy requires not only that the disputed domain name is being used in bad faith but also that it was registered in bad faith. This latter requirement is fatal to the Complainant's claim in this case.

Paragraph 4(b) of the Policy outlines a non-exhaustive list of circumstances in which bad faith can be evidenced. In this Panel's view, the common thread in paragraph 4(b) is that the Respondent has undertaken action with some knowledge of the existence of the Complainant's rights.

There is ample authority for the proposition that bad faith cannot generally be established if the disputed domain name was registered before trademark rights were acquired (with some exception). This is because the Respondent will not have had the Complainant's rights in contemplation at that time: see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.1 and cases cited therein.

The evidence in this case indicates that the disputed domain name was registered in mid 2003. The Complainant was not registered as a company until later that year and did not begin to trade under the NEXMEDIA mark, even on the view of the evidence most favourable to the Complainant, until 2004. There is no evidence that the Respondent was aware of the Complainant at the time of registration. Indeed, at that time, the Complainant company apparently did not exist. The evidence does not establish that the Respondent registered the disputed domain name with the Complainant in mind. Registration in bad faith has not been proved.

In these circumstances, it is unnecessary to address the remaining submissions of the parties with respect to use of the domain name in bad faith. However, the Panel notes in passing the submission made by the Complainant that bad faith is evidenced by the Respondent offering to sell the disputed domain name for USD 25,000. When one considers the context of this offer, made after numerous unsolicited offers to purchase by the Complainant which were declined by the Respondent, the Panel does not consider that it can be used to support a finding of bad faith, either under paragraph 4(b)(i) of the Policy or more generally. D. Reverse Domain Name Hijacking

Reverse domain name hijacking is defined in the Rules to mean “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. The onus is on the Respondent to make out bad faith on the part of the Complainant.

The Respondent submits that a finding of reverse domain name hijacking should be made in this case because the Complainant proceeded to bring the Complaint when it must have known, based on the chronology outlined above, that it could not prove that the domain name was registered in bad faith.

In certain circumstances, a finding of reverse domain name hijacking may be warranted where registration of the domain name clearly predates the emergence of any trademark rights on the part of the Complainant: see Deutsche Welle v. DiamondWare Limited,WIPO Case No. D2000-1202; Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM,WIPO Case No. D2006-0905. The majority of the Panel in Sustainable Forestry Management Limited v. SFM.com and James M. van Johns “Infa dot Net” Web Services,WIPO Case No. D2002-0535 considered that registration of a company and commencement of use of a trademark more than six months after registration of the disputed domain name was sufficient to demonstrate bad faith on the part of a Complainant.

The Panel accepts that the Complainant's Complaint in this case was misconceived. However, this is not a case in which a finding of bad faith on the part of the Complainant should be made.

The time between registration of the disputed domain name and the Complainant's use of the NEXMEDIA mark was minimal. It would be overly harsh to make a finding of bad faith in circumstances where it appears that the Complainant genuinely considered that it had a legitimate claim against the Respondent. The Complainant's Complaint was not so wholly without merit to warrant a finding of bad faith. 7. Decision

For all the foregoing reasons, the Complaint is denied.

John Swinson
Sole Panelist

Dated: March 9, 2010

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