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WIPO Arbitration and Mediation Center

The complainant is Marketing Mix, Inc., a corporation organized and existing under the laws of the State of Missouri, with its principal place of business located at 9643 Olive Boulevard, Saint Louis, Missouri 63132, U.S.A. Complainant is represented in this proceeding by Ralph W. Kalish, Esq., of Blackwell Sanders Peppers Martin LLP, 720 Olive Street, Suite 2400, Saint Louis, Missouri. The respondent is MIX (operated by Creative Producers Group, Inc.), located at 4818 Washington, Saint Louis, Missouri 63108. Respondent is represented by Ruth Ann Binger and Thomas Jensen, of Danna McKitrick, P.C., 150 N. Meramec, Fourth Floor, Saint Louis, Missouri 63105.

The domain name at issue is <marketingmix.com>, which domain name is registered with Network Solutions, Inc. ("NSI"), Herndon, Virginia, United States of America.

A Complaint was filed with the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on April 28, 2000. No formal deficiencies to the Complaint were found, and on May 10, 2000, an Acknowledgment of Receipt of Complaint, Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the respondent (with copies to the complainant, NSI and ICANN). Respondent timely filed its Response to the Complaint Under the Uniform Domain Name Dispute Resolution Policy, dated May 30, 2000.

On June 19, 2000 a Notification of Appointment of Administrative Panel and Projected Decision Date designating Roderick M. Thompson as the single member of the Administrative Panel for this dispute was sent to all parties. The Projected Decision Date was set as July 3, 2000.

A Formal Requirements Compliance review was completed by the assigned WIPO Center Case Administrator. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the complainant.

Having reviewed the communications records in the case file, this Sole Panelist shall proceed to a decision based on the statements and documents submitted and in accordance with the ICANN Rules and Policy, as well as all applicable "rules and principles of law" as directed by Paragraph 15(a) of the Policy.

The following facts are not in dispute.

The complainant has provided evidence of the registration with the U.S. Patent and Trademark Office, of Registration No. 1,712,776 of the following service mark:

1. Service Mark – MARKETING MIX, for advertising agency, public relations, and marketing consulting services. Class 35.

Complaint, Annex C.

Complainant has also provided documentation showing that it is the assignee of that registration, and that it has made the requisite filings attesting to continued use thereby demonstrating that the registration has become incontestable. Complaint, Annexes G--H.

The respondent, MIX (MARKETINGMIX-DOM), is the current registrant of the domain name <marketingmix.com>. MIX is operated by Creative Producers Group, Inc. (and the respondent herein as both entities). The WHOIS database shows that THOMPSON, D. of respondent MIX is the Administrative Contact for the domain name <marketingmix.com>. Complaint, Annex A. The WHOIS record of the domain name MARKETINGMIX was created on January 3, 1998 and last updated on April 27, 2000. Id.

Complainant and respondent both provide marketing services of some kind, though it appears to be disputed exactly how closely their respective services may overlap. There has been communication between complainant and respondent about the domain name <marketingmix.com>, including some discussion about the possible transfer of ownership of the domain name from respondent to complainant, though once again the specifics of the communications are in dispute.

A. Complainant

Complainant contends: 1) the domain name <marketingmix.com.> is identical or confusingly similar to a service mark MARKETINGMIX in which the complainant has rights; and 2) the respondent has no rights or legitimate interests in respect of the domain name <marketingmix.com>.; and 3) the domain name <marketingmix.com> was registered and is being used in bad faith.

Complainant asserts that the domain name <marketingmix.com> is being used in connection with services identical to the services offered by complainant, and that internet users seeking to find information about complainant are diverted to respondents’ web site, <www.getcreative.com>.

Complainant also contends that respondent offered to sell domain name <marketingmix.com> to complainant for a payment of $4,500 to $7,500, which is in excess of respondent’s out-of-pocket expenses.

Complainant alleges that the foregoing establishes both bad faith registration and bad faith use of the domain name <marketingmix.com> within the meaning of paragraph 4b of the Uniform Domain Name Dispute Resolution Policy ("POLICY").

B. Respondent

Respondent first contests the Panel’s jurisdiction. Respondent argues that it was unaware of the Mandatory Uniform Domain Name Dispute Resolution Procedure, set out in its agreement with NSI, and that the procedure is unenforceable under Missouri law. Specifically, respondent relies on R S MO.435.460 which requires specified language in an arbitration clause for it to be enforceable.

On the merits respondent asserts: (1) that before it received notice of the dispute it was using the domain name <marketingmix.com> in connection with a bona fide offering of services; (2) that such use was a fair use and not for the purpose of commercial gain or to divert customers away from complainant; and (3) that it did not acquire the domain name <marketingmix.com> primarily for the purposes of selling the name for profit. Response, para. 2.

A. Applicable Rules and Principles of Law.

Paragraph 15(a) of the Rules instructs this Panelist as to the principles the Panelist is to use in rendering its decision: "A Panelist shall 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."

B. Respondent’s Jurisdictional Challenges.

Respondent complains that its Service Agreement with NSI was not specifically cited in the complaint. NSI, however, in compliance with the Policy has advised the WIPO Center the NSI’s 4.0 Service Agreement is in effect. That Agreement provides in relevant part:

The policy in effect at the time of the original registration of the domain name at issue provided that:

NETWORK SOLUTIONS, INC.

DOMAIN NAME REGISTRATION AGREEMENT

A. Introduction. This domain name registration agreement ("Registration Agreement") is submitted to NETWORK SOLUTIONS, INC. ("NSI") for the purpose of applying for and registering a domain name on the Internet. If this Registration Agreement is accepted by NSI, and a domain name is registered in NSI’s domain name database and assigned to the Registrant, Registrant ("Registration") agrees to be bound by the terms of this Registration Agreement and the terms of NSI’s Domain Name Dispute Policy ("Dispute Policy") which is incorporated herein by reference and made a part of this Registration Agreement. This Registration Agreement shall be accepted at the offices of NSI.

* * * * *

C. Dispute Policy. Registrant agrees, as a condition to submitting this Registration Agreement, and if the Registration Agreement is accepted by NSI, that the Registrant shall be found by NSI’s current Dispute Policy. The current version of the Dispute Policy may be found at the InterNIC Registration Services web site: "http://www.netsol.com/rs/dispute-policy.html."

D. Dispute Policy Changes or Modifications. Registrant agrees that NSI, in its sole discretion, may change or modify the Dispute Policy, incorporated by reference herein, at any time. Registrant agrees that Registrant’s maintaining the registration of a domain name after changes or modifications to the Dispute Policy become effective constitutes Registrant’s continued acceptance of these changes or modifications. Registrant agrees that if Registrant considers any such changes or modifications to be unacceptable, Registrant may request that the domain name be deleted from the domain name database.

E. Disputes. Registrant agrees that, if the registration of its domain name is challenged by any third party, the Registrant will be subject to the provisions specified in the Dispute Policy.

* * * * *

Q. This is Domain Name Registration Agreement Version Number 4.0. This Registration Agreement is only for registrations under top-level domains: COM, ORG, NET, and EDU. By completing and submitting this Registration Agreement for consideration and acceptance by NSI, the Registrant agrees that he/she has read and agrees to be bound by A through D above.

Domain Version Number: 4.0 [URL ftp://rs.internic.net/templates/domain-template.txt] [01/98].

Respondent’s assertion that it was unaware of the contractual provisions in the NSI contract cannot serve to side step the Panel’s jurisdiction. Respondent agreed to the foregoing provisions, including the NSI Domain Name dispute policy, and specifically that NSI may change the policy. The contractual provisions are available on the NSI web site and complainant’s failure to cite or quote them in the complaint does not lessen the panel’s jurisdiction.

As noted, Respondent also argues that the Mandatory Uniform Domain Name Dispute Resolution Procedure, set out in its agreement with NSI, is unenforceable under Missouri law. Specifically, respondent relies on R S MO.435.460 which requires specified language in an arbitration clause for it to be enforceable. There are two answers to this argument.

First, the United States Supreme Court in Doctors Associate, Inc. v. Casarotto, 517 U.S. 681 (1996) considered and rejected a substantively identical argument under Montana law, holding the Montana statute pre-empted by the Federal Arbitration Act. From the description of several cases included in the digest to the Missouri statute provided by respondent, it appears that the courts have found the statute preempted in analogous circumstances. Response, Annex A, pp. 2-3.

Second, and in any event, the Uniform Domain Name Dispute Resolution Procedure is not the same as binding arbitration. Specifically, paragraph 4(k) of the Policy expressly provides that mandatory administrative proceeding requirements "shall not prevent either you [respondent] or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution." In short, the panelist finds the complainant has properly invoked the panel’s jurisdiction under the Uniform Domain Name Resolution Procedures.

C. Application of Paragraph 4 and Respondent’s Substantive Arguments.

Complainant must show, under paragraph 4(a) of the Policy, each of the following:

(i) that 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) that the respondent has no legitimate interests in respect of the domain name; and,

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

As to the first point, it cannot be denied that the domain name <marketingmix.com> is identical to the service mark registered and used by complainant, MARKETINGMIX. It is the second and third points that are hotly disputed.

Respondent’s argument is twofold. First, it asserts that MARKETINGMIX is a "generic industry term" and is used as a link to respondent’s web site <getcreative.com>. Response, Para. 3. Respondent apparently uses other domain names it considers generic names, such as <salesmeeting.com>, in similar fashion as a means of increasing traffic at its web site of persons who may be interested in sales meetings or the other generic terms that are related to its services. In support of its assertion that MARKETINGMIX is a generic term, respondent supplies a web search showing thousands of web sites using the term. It is beyond the purview of the Panel, however, in this summary proceeding to determine whether or not a registered trademark is or has become generic. Respondent is reminded it is free to seek other legal remedies in court or before the USPTO to challenge the validity of complainant’s registration (i.e., a cancellation proceeding). The Panel simply determines whether or not the trademark registration exists. Here complainant has made a prima facie showing of owning a valid registration and respondent does not contest that fact.

This leads to the pivotal question that will decide the present dispute: Is respondent’s admitted use of the domain name <marketingmix.com> to direct internet users who seek that address to its own <getcreative.com> web site evidence of bad faith registration and use of the mark? Respondent explains that this use of domain name <marketingmix.com> and other domain names that relate to its services is a vital part of its strategy and that it has never once sold any of the more than a hundred domain names it uses as links in this fashion. Id., para. 13(c). Respondent apparently has accumulated more than one hundred domain names its uses or will use as links to its <getcreative.com> web site. In each case, respondent believes it has used purely generic names and is not violating the rights of trademark owners. While use of truly generic terms in domain name links, such as "salesmeeting.com," does not seem objectionable, here we are presented with the admitted use of the <marketingmix.com> which is identical to a registered trademark.

The Panel believes that it is reasonable to expect respondent to conduct a minimal trademark search to verify that what it considers to be generic is not in fact a registered trademark. Here, <marketingmix.com> domain name is in identical to the trademark of a local competitor of respondent, which highlights the need for respondent to have acted with prudence. Further, although the details are disputed, it is clear that respondent and complainant are aware of each other and that complainant has advised respondent of the MARKETINGMIX service mark registration. Although respondent alleges that it is making a bona fide offering of services in connection with its use of the name (Response para. 2A), it fails to provide any evidence of such use. Conversely, it alleges that the same use is a "fair use," and not made with the intent of commercial gain (para 2B.) But the admitted use of the domain name <marketingmix.com> as a link to its web site is not a fair use and certainly appears to be made for commercial gain. Under all of the circumstances, the Panel concludes that respondent has registered and used the <marketingmix.com> domain name in bad faith within the meaning of paragraph 4 of the Policy. 1

For all of the foregoing reasons, the Panel decides that the domain name registered by respondent is identical or confusingly similar to the service mark in which the complainant has rights, and that the respondent has no rights or legitimate interests in respect of the domain name, and that the respondent’s domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4i of the Policy, the Panel requires that the registration of the domain name <marketingmix.com> be transferred to the complainant.

Roderick Thompson
Panelist

Dated: July 3, 2000

Footnotes:

1. Given this conclusion, the Panel also rejects respondent’s contention that complainant’s actions in pursing this proceeding constitutes "Reverse Domain Name Highjacking."