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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Audiopoint, Inc. v. eCorp a/k/a Chad Folkening
Case No. D2001-0509
1. The Parties
Complainant is Audiopoint, Inc., a Virginia corporation. Complainant is represented by Knobbe, Martens, Olson & Bear, LLP.
Respondent is eCorp, Inc., an Indiana corporation represented by Ari Goldberger. The Complainant identified the Respondent as "eCorp a/k/a Chad Folkening"; Mr. Folkening is listed as the administrative contact for eCorp.
2. The Domain Name and Registrar
The domain name at issue is <audiopoint.com>. The domain name is registered with Tucows.com, Inc.
3. Procedural History
Complainant filed its Complaint under the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") by email on April 6, 2001. A hard copy version was received on April 10, 2001. After confirming that the Complaint satisfied the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Center sent Respondent notice of the commencement of this proceeding on April 18, 2001. Respondent submitted a timely response by email on May 7, 2001 and in hard copy on May 14, 2001.
On April 10, 2001, the Center requested a registrar verification in connection with this case. On April, 11, 2001, Tucows.com, Inc. confirmed that the Registrant is the Respondent.
On May 30, 2001, after clearing for potential conflicts, the Center appointed Robert A. Fashler and David E. Sorkin as Panelists and David H. Bernstein as the Presiding Panelist in this matter.
4. Factual Background
The Panel has reviewed the Complaint and Response. The following facts appear to be undisputed:
Complainant is in the business of providing voice portal services. According to the Complaint, its founder, Nicholas K. Unger, selected the AUDIOPOINT mark in January 1999 and thereafter "began using the AUDIOPOINT name and mark in connection with the development of voice portal services." Complainant did not begin to "promot[e] its services" under the AUDIOPOINT mark until June 1999, the same month Complainant filed a trademark application. That application was assigned Serial No. 75/741,380 and is still pending. On June 24, 1999, Audiopoint, Inc., was incorporated under the laws of Virginia.
Respondent registered the <audiopoint.com> domain name on February 8, 1999. As of that date, Complainant had not yet applied for a trademark registration and had not yet offered (or even promoted) any services under the AUDIOPOINT mark. Furthermore, Respondent certifies, and Mr. Folkening swears, that they had no knowledge of Complainant at the time Respondent registered the disputed domain name.
Over the course of several months (from approximately October 2000, to April 2001), the Complainant and Respondent engaged in negotiations concerning the sale of the disputed domain. These negotiations were initiated by Complainant. At the time the negotiations broke down, Complainant had offered to purchase the domain name for $35,000; Respondent had offered to sell it for $60,000.
5. Parties’ Contentions
Complainant alleges that it has rights in the mark AUDIOPOINT because it has used the mark in connection with the design and development of its voice portal service since as early as January 1999, and in promoting its services over the Internet since June 1999. Complainant contends it has been damaged by the lost traffic and business to its website, in addition to misdirected emails, all of which result from the similarity between its trade name and mark and the contested domain name.
Complainant further contends that Respondent lacks any rights or legitimate interests in the domain name. Complainant alleges that Respondent has made no use of the domain name in connection with a bona fide offering of goods or services; that Respondent’s claim that the domain name is part of a larger project in development is unsupported and without evidence; and that Respondent is in the business of registering domain names in the hopes of selling the rights in the domain names for a profit rather than for the purpose of using the domain name for legitimate purposes.
To show bad faith, Complainant states that Respondent registered the domain name <audiopoint.com> without a bona fide intent to use the domain name and with the primary purpose of selling or transferring the domain name for consideration in excess of documented out-of-pocket costs directly related to Respondent’s development of the domain name.
Complainant further contends that Respondent intentionally misled Complainant when it registered the domain name under the registrant name "AudioPoint", causing Complainant to believe Respondent was engaged in a legitimate business. Complainant claims to have been further misled when Respondent asserted that it had invested "time and money" into developing the domain name as part of its platform for a global web communications company. Complainant argues that these statements were intentionally misleading because they are completely unsupported.
Complainant also points out that the actions it attributes to the Respondent are part of a pattern of practice, citing other cases in which Respondent was accused of cybersquatting.
Finally, Complainant points to Respondent’s active communication with Complainant regarding the sale of <audiopoint.com> as proof of Respondent’s bad faith use.
In its defense, Respondent alleges that Complainant does not have enforceable rights to the mark AUDIOPOINT because it filed its trademark application four months after the domain name was registered.
Respondent contends that it has a legitimate interest in the domain name, citing its plan to use the name within its "Point Network". This network, consisting of over sixty domain names containing the suffix "point.com", would provide users with easily accessible information and links to web sites related to the various descriptive terms found in the domain name; thus, <audiopoint.com> would direct users to audio hardware, software, service, and companies. Other domain names in the series include <mediapoint.com>, <cablepoint.com> and <deliverypoint.com>.
In response to the allegations of bad faith, Respondent challenges Complainant’s interests in the AUDIOPOINT mark. Particularly, Respondent claims that no trademark existed at the time the domain name was registered, making Complainant’s burden of proving bad faith registration impossible to satisfy. Further, Respondent asserts that it had no knowledge of Complainant at the time it registered the contested domain name.
Respondent further contends that Complainant engaged in Reverse Domain Name Hijacking due to the fact that Complainant knew Respondent registered the disputed domain before Complainant had ever filed a trademark application.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(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 rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and used in bad faith.
A. Similarity of the Mark and Domain Name
Although the extent of Complainant’s rights in the mark AUDIOPOINT is ambiguous as of the time Respondent registered the domain name, the first factor of Policy ¶ 4(a) examines the status of Complainant’s trademark rights at the time the Complaint is filed, not at the time the domain name is registered. Document Technologies, Inc. v. International Electronic Communications Inc., Case No. D2000-0270 (WIPO June 6, 2000). Consequently, Respondent’s focus on Complainant’s uncertain trademark rights as of January 1999 is misplaced with regard to this first factor. At the time it filed the Complaint, Complainant was using the AUDIOPOINT mark in connection with the sale of goods and services. (Footnote 1)
Having established that Complainant has rights in the AUDIOPOINT mark, it is simple to complete the analysis under the first factor. The domain name <audiopoint.com> is virtually indistinguishable from Complainant’s mark AUDIOPOINT. The only difference between Complainant’s name and mark and the disputed domain name is the addition of ".com". Therefore, the Panel concludes that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Legitimate Interest in the Domain Name
Paragraph 4(c)(i) of the policy states that respondents may establish legitimate interests in a domain name by presenting evidence of use of, or demonstrable preparations to use, the domain name before any notice of the dispute. Respondent’s mere assertion that it planned to use <audiopoint.com> within its Point Network does not constitute "demonstrable preparations." See World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, Case No. D2000-1306 (WIPO January 24, 2001). Nor does Respondent’s purchase of sixty domain names, all of which end with the suffix "point" signify "demonstrable preparations". If it did, it would allow cybersquatters to protect their unlawful activity by engaging in wholesale cybersquatting all at once, through the registration of multiple, related domain names, and then claiming that all of the names were part of a planned future use. Moreover, since the purchase of the first "point" site, three years have passed, and Respondent has submitted no evidence of any actions to develop the alleged Point Network. See Helen Fielding v. Anthony Corbert aka Anthony Corbett, Case No. D2000-1000 (WIPO September 25, 2000) (Respondent’s allegations of legitimate use overcome by Respondent’s failure to use the domain name for two years).
This is not to say that a respondent must have a fully developed website in order to show a legitimate interest. Indeed, speculation in domain names when done without any intent to profit from others’ trade mark rights may itself constitute a bona fide activity under paragraph 4(c)(i). See, e.g. Kis v. Anything.com Ltd., Case No. D2000-0770 (WIPO November 20, 2000); Allocation Network GmbH v. Steve Gregory, Case No. D2000-0016 (WIPO March 24, 2000); General Machine Products Co. V. Prime Domains, Case No. FA92531 (NAF March 16, 2000). However, Respondent does not allege that it has engaged in domain name speculation, nor that it has any interest arising therefrom.
In order to rebut Complainant’s prima facie showing, Respondent should have provided this Panel with concrete evidence of its preparations to use <audiopoint.com>. See Document Technologies, Inc., supra (once complainant makes prima facie showing that Respondent lacks a legitimate interest, the burden of production shifts to the Respondent to rebut that showing, but the burden of proof always stays on the Complainant). Respondent has failed to do so. Accordingly, this Panel finds that Respondent has no legitimate interest in the disputed domain name.
C. Bad Faith
Complainant alleges bad faith based on Respondent’s registration of <audiopoint.com> under the name AudioPoint rather than eCorp. On the facts of this case, though, this factor does not establish bad faith. There is no evidence that Respondent used fictitious names or pseudonyms to hide his true identity. Cf. Home Director, Inc. v. HomeDirector, Case No. D2000-0111 (WIPO April 11, 2000) (finding cybersquatting based, in part, on respondent Folkening’s use of multiple pseudonyms to mask his identity). Although false contact information is a bad faith factor under Section 43(d) of the Lanham Act, 15 U.S.C. § 43(d)(1)(B)(i)(VII), (Footnote 2) that provision is not implicated where there is no evidence that Respondent attempted to hide its identity, prevent service of process, or make contacting Respondent difficult or impossible. Here, Respondent provided information that appears to have been accurate with regard to the administrative, technical, and billing contact for the domain name. Moreover, Complainant never alleged that it had difficulty contacting Respondent. For these reasons, Complainant has failed to establish bad faith registration on this ground.
Complainant also claims that Respondent registered <audiopoint.com> with the intention of transferring the domain name to Complainant for valuable consideration in excess of documented out-of-pocket costs in violation of 4(b)(i) of the Policy. Although Respondent did engage in negotiations over the possible sale of the domain name, those negotiations do not prove a bad faith registration when it is undisputed that Respondent never heard of Complainant or its mark at the time of registration. Indeed, it appears that Complainant did not even develop any protectible common law trademark rights until well after Respondent’s registration of the domain name. See E-Duction, Inc,. v. Zuccarini, Case No. D2000-1369 (WIPO February 5, 2001). Accordingly, this Panel finds that Complainant has failed to show bad faith registration.
Paragraph 4(a)(iii) of the policy requires Complainant to prove both bad faith use and bad faith registration. Id. Because the Complainant has failed to show bad faith registration, it is unnecessary for the Panel to address the element of bad faith use.
D. Reverse Domain Name Hijacking
Respondent has asked the Panel to make a finding of attempted Reverse Domain Name Hijacking. Rule 1 defines Reverse Domain Name Hijacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." See also Rule 15(e). To prevail on such a claim, Respondent must show that Complainant knew of either the Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith. See, e.g., Sydney Opera House Trust v. Trilynx Pty. Ltd., Case No. D2000-1224 (WIPO, October 31, 2000) Further, when determining whether the Complainant brought the Complaint in bad faith, the Panel should consider both "malicious intent and recklessness or knowing disregard of the likelihood that the respondent possessed legitimate interests." Goldline International, Inc. v. Gold Line , Case No. D2000-1151 (WIPO January 4, 2000) citing, Loblaws, Inc. v. Presidentchoice.inc / Presidentchoice.com, Case Nos. Af-0170a to –0170c (eResolution, June 7, 2000)
Notwithstanding the weakness of Complainant’s bad faith claim, the Panel concludes that Complainant’s conduct does not rise to the level of Reverse Domain Name Hijacking. A key fact is that Mr. Unger checked to see if the <audiopoint.com> name was available on February 6, 1999, and learned that it was, but then, when he went back to register it on February 9, 1999, found that eCorp had snatched up the name in the intervening days. Complainant may well have been suspicious of this timing, and may have reached the conclusion that eCorp somehow learned that Complainant had checked the availability of that name. Those suspicions may have been deepened when Complainant learned that eCorp was associated with Mr. Folkening, who has a history of cybersquatting. Furthermore, Respondent’s communications concerning the sale of <audiopoint.com>, coupled with its failure to show Complainant any evidence of a legitimate interest in the domain name, may have given Complainant a basis for believing that Respondent was engaged in the practice of cybersquatting. Accordingly, the Panel does not find Reverse Domain Name Hijacking.
Complainant has failed to establish that Respondent registered <audiopoint.com> in bad faith. The Panel therefore denies the Complainant’s request that the domain name be transferred from Respondent to Complainant.
David H. Bernstein
David E. Sorkin
Robert A. Fashler
Dated: June 14, 2001
1. The Panel notes that the owner of the trademark application is listed as Mr. Unger, not Complainant Audiopoint, Inc. When the Complainant is a different party from the owner of the trademark application on which Complainant relies, the Complainant should explain why the application is owned by a different entity. In this case, it is clear that Mr. Unger is the founder, CEO, and President of Audiopoint. (back to text)
2. When both parties are United States residents, it is appropriate for the Panel to consider United States legal principles in determining elements such as trademark rights, fair use and bad faith. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, Case No. D2000-1772 (WIPO April 10, 2001), n.3. (back to text)