WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Brodyag, LLC v. Feffaey Fowler Case No. DTV2010-0008 1. The Parties
Complainant is Brodyag, LLC of Arlington, Massachusetts, United States of America, represented by Saunders & Silverstein LLP, United States of America.
Respondent is Feffaey Fowler of Los Angeles, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2010. On June 23, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On the same day, GoD, Inc. 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 Respondent of the Complaint, and the proceedings commenced on June 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 19, 2010.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on July 22, 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
Complainant asserts common-law rights in the trademark SATELLITEDIRECT on the basis of use in commerce in the United States since February 1, 2010 in connection with the online marketing and sale of computer software used to provide access to audiovisual content provided over the Internet. Complainant has filed an application for registration of the SATELLITEDIRECT trademark on the Principal Register of the United States Patent and Trademark Office (USPTO), serial number 85056268, filed June 7, 2010, in international class 9, covering “Computer software, namely, downloadable players for audiovisual media content; computer software, namely, downloadable software for accessing and viewing streaming audiovisual media content via the Internet”. Complainant submitted as evidence of use to the USPTO a screenshot of a website using the SATELLITEDIRECT mark to display media content options.1
Complainant operates a commercial Internet website at “” where it offers for sale and download a computer program that is stated to provide Internet user access to audiovisual content over the Internet. Complainant states that since February 2010 it has sold “tens of thousands of copies of its SATELLITDIRECT brand software.”
Complainant states that prior to May 11, 2010, it offered and sold its computer program at the address identified by the disputed domain name, , but that on or about May 11, 2010, Respondent, without authorization or knowledge of Complainant, transferred the disputed domain name from Doster, Inc. to a new registrar, Key-Systems GMBH. Complainant states that it was thereafter unable to exercise control over the website addressed by the disputed domain name, and that Respondent offered to sell software identical to that of Complainant at that website. Complainant has not provided evidence of its ownership of registration of the disputed domain name with Doster, Inc. prior to May 11, 2010, other than a statement in an affidavit dated June 22, 2010 from Mr. Grigorian, who is self-described as manager of Complainant.
According to the Registrar's verification, Respondent is registrant of the disputed domain name. According to the Registrar, the disputed domain name was transferred to it in the name of Respondent on June 7, 2010.
The Registration Agreement in effect between Respondent and GoD, Inc. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)). 5. Parties' Contentions A. Complainant
Complainant alleges rights in the trademark SATELLITEDIRECT based on use in commerce in the United States and as supported by an application for registration on the Principal Register of the USPTO.
Complainant argues that the disputed domain name is confusingly similar to its trademark.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name because Respondent has never used the disputed domain name for any purpose other than to copy Complainant's website, to profit from unauthorized sales of Complainant's branded software, and to confuse consumers into believing they are purchasing Complainant's branded software from Complainant (rather than from, in fact, Respondent). Complainant further asserts that it has never licensed or otherwise permitted Respondent to use its trademark in a domain name or otherwise.
Complainant argues that Respondent registered and used the disputed domain name in bad faith by engaging in the illegal activity of misappropriating it from Complainant's account, and thereafter directing Internet users to Respondent's website offering computer software identical to Complainant's branded software, but without Complainant's authorization. Complainant contends this was done to disrupt its business. Complainant also contends that Respondent's activities evidence that it had knowledge of Complainant's rights in its mark when it registered the disputed domain name. Complainant finally argues that Respondent's actions create a likelihood of confusion as to whether Complainant is the source, sponsor, affiliate or endorser of Respondent's website.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent
The Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center notified Respondent of the Complaint and commencement of the proceeding at the physical and email addresses shown in the record of registration of the disputed domain name. Courier delivery records show that the Written Notice was delivered at the physical address of Respondent. The Panel is satisfied that the Center fulfilled its responsibility to provide notice as prescribed in the Policy and Rules, and that Respondent received adequate notice of these proceedings and a reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent's domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent's domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
Complainant is asserting U.S. federal common law rights in the trademark SATELLITEDIRECT based on use in commerce on the Internet in connection with sales of computer software. Complainant has provided evidence of an application for registration of the aforesaid trademark at the USPTO. An application for registration, as such, does not establish any presumption of rights in favor of Complainant.
Common law trademark rights can be established by demonstrating that the alleged mark is inherently distinctive and has been used in commerce, or that the mark has been used in commerce and has acquired secondary meaning among consumers.2 In the Panel's view, the term SATELLITEDIRECT is not inherently distinctive. It is descriptive of the product offered by Complainant: that is, computer software claimed to permit Internet users to obtain access to media content from worldwide distribution sources. In order to establish common law rights in the combination term SATELLITEDIRECT, Complainant would need to provide evidence of consumer association of that term with Complainant and its product. The only evidence of consumer association submitted by Complainant is a statement from its manager that it has sold “tens of thousands” of copies of its computer software. In the view of the Panel, such evidence is insufficient to establish consumer association with Complainant as the provider of products under the alleged trademark comprised of descriptive terms.
The Panel determines that Complainant has failed to establish rights in a trademark. For that reason, Complainant does not succeed in demonstrating abusive domain name registration and use by Respondent. B. Registered and Used in Bad Faith
Complainant has alleged that Respondent “hijacked” the disputed domain name from Complainant's registration account, and used it in abusive way. Complainant has failed to provide any evidence of its prior ownership of the disputed domain name, other than a statement from its manager. Complainant should have anticipated the need to provide
some material evidence of its prior ownership of the disputed domain name in order to substantiate its claim. Such evidence may have taken the form of invoices from its registrar, credit card receipts, or printouts of historical WhoIs database records. Complainant also failed to provide evidence of the alleged improper use by Respondent of the disputed domain name, other than a statement from Complainant's manager. Complainant has failed to substantiate its claim of bad faith registration and use by Respondent.
Complainant has not succeeded in demonstrating bad faith registration and use of the disputed domain name, and for this reason does not succeed in this proceeding. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Sole Panelist
Dated: August 5, 2010
1 The Panel's visit to USPTO TARR database of August 5, 2010, including viewing of Complainant's specimen showing available media content.
2 See Two Pesos v. Taco Cabana, 505 U.S. 763 (1992), and La Mafafa, Inc. dba Cultura Profética v. Domains Real Estate,WIPO Case No. D2009-0534, and Foundation Source Philanthropic Services, Inc. v. Arlene B Gibson/Foundations That Make a Difference/Domain Discreet,WIPO Case No. D2007-0875.
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