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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Direct Stock Market, Inc. v. NextVenue, Inc.
Case No. D2000-1337
1. The Parties
The Complainant in this administrative proceeding is The Direct Stock Market, Inc., a California corporation with its principal place of business located at 1453 3rd Street Promenade, Suite 300, Santa Monica, California 90401, U.S.A. The Respondent is NextVenue, Inc., whose address is 100 William Street, 8th Floor, New York, New York, 10038, U.S.A.
2. The Domain Name and Registrar
The domain name in dispute is as follows: "virtualroadshow.com". The domain name was registered by Respondent with Network Solutions, Inc. (NSI) on October 6, 1999.
3. Procedural Background
On October 5, 2000, the WIPO Arbitration and Mediation Center received from Complainant a complaint for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).
The Complaint was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, the administrative panel was properly constituted, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.
The instant Administrative Proceeding was commenced on October 16, 2000.
Respondent filed a Response, which was received by WIPO on November 4, 2000.
The decision of the Panel was due to WIPO on or before November 27, 2000.
4. Factual Background
Complainant owns U.S. Trademark Registration No. 2,225,384 for the mark VIRTUAL ROADSHOW, as used in connection with the dissemination of advertising for others via an on-line electronic communications network and with providing road shows for public stock and bond offerings on global computer networks. See Complaint, Annex C. According to the registration certificate, the mark was first used in December 1996.
As noted above, Respondent registered the domain name in dispute with NSI on October 6, 1999. The domain name virtualroadshow.com was first registered with NSI by General Electric Company (GE) on January 23, 1997. The name was later transferred from GE to Respondent. See Response, Annex 1. The domain name was used by Respondent's predecessor as part of a joint venture with Microsoft, NBC, and Dow Jones to distribute financial news over the Internet. See Response, Annex 2. In carrying out the business started by the Joint Venture, Respondent is engaged in the business of producing and distributing "virtual road shows" via the Internet.
Respondent, apparently, does not conduct business on virtualroadshow.com, but, rather, uses the domain name to redirect Internet users to its primary web page, nextvenue.com, which advertises its "virtual road show" services. Respondent also uses the virtualroadshow.com domain name to enable customers to directly access subdirectories that direct customers to a specific part of Respondent's Web site. See Response, Annex 10.
Respondent has registered 42 other domain names, including JPMorganIMF2000.com and Mercktarget.com. See Complaint, Annex G.
5. Parties' Contentions
Complainant contends that the domain name in issue is identical or confusingly similar to the VIRTUAL ROADSHOW mark. According to Complainant, Respondent may not be found to have rights or legitimate interests in the domain name because: (1) its use of the virtualroadshow.com domain name is likely to cause confusion with the VIRTUAL ROADSHOW mark; (2) it is not known by the name "Virtual Road Show"; and (3) it failed to service or develop the site and, thus, is not engaged in a good faith, bona fide offering of goods or services under the domain name.
With respect to the issue of "bad faith" registration and use, Complainant maintains that: (1) the intentional registering of a domain name knowing that the second-level domain incorporates another company's valuable trademark suggests bad faith; (2) Respondent clearly used an identical domain name to lure potential customers to its main Web site; and (3) Respondent, in both registering and using the domain name, intentionally attempted to attract, for commercial gain, Internet users to its Web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its Web site or location or of a product or service on its Web site or location.
In its Response, Respondent concedes that the disputed domain name is nearly identical to Complainant's "alleged" service mark, but argues that the public is not likely to be confused, given the fact that the term "virtual road show" is used by many different companies. See Response, Annexes 12 and 13.
Respondent further argues that: (1) it did not use the domain name in bad faith because Respondent and its predecessor used the wording "virtual road show" and the domain name in connection with the bona fide offering of their services long prior to notice of this dispute; (2) it assumed ownership of the domain name in order to further its own legitimate "virtual road show" service and not for the purpose of disrupting Complainant's business; and (3) it is making legitimate "fair use" of the domain name in connection with its own "virtual road show" services.
In response to the allegation that it has registered 42 other domain names, Respondent indicates that such registrations were made with the permission of the companies in question.
6. Discussion and Findings
The Panel has carefully weighed the evidence presented and determines that Complainant has not met all the requirements set forth in ¶4.a. of the Policy.
The Panel first determines that the disputed domain name is identical or confusingly similar to a service mark in which Complainant has rights, as required by ¶4.a.(i) of the Policy. Indeed, Respondent concedes that the domain name is "nearly identical" to the VIRTUAL ROADSHOW mark. The Panel agrees.
While Respondent argues that this element of the Policy is not met because its use of the domain name is not likely to cause confusion, the Panel emphasizes that likelihood of confusion or trademark infringement need not be established in order to satisfy the applicable Policy. A Mandatory Administrative Proceeding is not the forum for parties to litigate a trademark infringement suit.
To the extent Respondent may suggest that Complainant has no rights in the VIRTUAL ROADSHOW mark, the Panel concludes otherwise. The grant of the U.S. registration for the VIRTUAL ROADSHOW carries with it certain evidentiary presumptions, including that the mark is valid. See 15 U.S.C. §1057(b). Upon review of the evidence submitted by Respondent, the Panel is not convinced that this presumption has been overcome.
The Panel concludes, however, that Respondent has rights or legitimate interests in the domain name. The Panel determines that Respondent, before any notice of the dispute, began use of the domain name "in connection with" a bona fide offering of services, within the meaning of ¶4.c.(i) of the Policy. The evidence establishes that Respondent uses the disputed domain name to direct customers to its nextvenue.com Web site and as a directory name so that its clients may access specific subdirectories. Under such circumstances, the Panel determines, the domain name may be considered to be used "in connection with" a bona fide offering of services.
The evidence further establishes that Respondent is making a legitimate "fair use" of the disputed domain name, within the meaning of ¶4.c.(iii) of the Policy. Upon review of the evidence, the Panel finds that Respondent is using the term "virtual road show" to describe a feature of its services and not as a service mark. The evidence, in particular Annex 12 to the Response, clearly establishes that the term "virtual road show" has descriptive characteristics and is widely used in such manner by a number of companies, including Respondent.
Finally, the evidence does not support a determination of "bad faith" registration and use. Rather, the evidence reveals that Respondent's intent in acquiring ownership of the disputed domain name was to provide customer access to its "virtual road show" service and not to misleadingly divert customers or to tarnish Complainant's rights. The fact that Respondent has registered 42 other domain names that are similar to the marks of famous companies does not support a determination of "bad faith," given Respondent's representation that these registrations were authorized by the companies involved.
In view of the above, the Panel DENIES Complainant's request for transfer to it of the domain name virtualroadshow.com.
Jeffrey M. Samuels
Dated: November 27, 2000