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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Nextag, Inc. v. Internet Ministry

Case No. DTV2005-0001

 

1. The Parties

The Complainant is Nextag, Inc., San Mateo, California, United States of America, represented by Greg Wharton, United States of America.

The Respondent is Internet Ministry, Stone Mountain, Georgia , United States of America, represented by Adonis Adams, Stone Mountain, Georgia, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <nextag.tv> is registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2005. On April 14, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name(s) at issue. On April 15, 2005, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 21, 2005. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 April 26, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2005. The Response was filed with the Center on May 16, 2005.

The Center appointed Ian Blackshaw as the sole panelist in this matter on May 30, 2005. 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 is the owner of trademark registrations in the United States Patent and Trademark Office in International Class 35 (US Classes 100, 101 and 102) for the NEXTAG trademark in connection with its comparison-shopping services for products, mortgages, travel, cars and other services. The Complainant offers its services through its Internet commerce site at “www.nextag.com”, having owned the domain name registration <nextag.com> since October 15, 1998.

The NEXTAG trademark is the subject of Registration Nos. 2,820,935 and 2,470,374 granted for “shopping facilitation services, namely providing an online comparison-shopping search engine for obtaining purchasing information.”

A copy of the corresponding Certificate of Registration has been provided to the Panel.

The Complainant has used the NEXTAG trademark since at least 1998.

 

5. Parties’ Contentions

A. Complainant

The Complaint is based on the following grounds:

A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, paragraphs 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The use of “nextag” in the domain name at issue <nextag.tv> is identical to the NEXTAG trademark in which the Complainant has valuable and established rights.

B. The Respondent has no rights or legitimate interests in respect of the domain name; (Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

Internet Ministry has no legitimate business interest in the <nextag.tv> domain name. In light of the longstanding and extensive rights of the Complainant in the NEXTAG trademark, Internet Ministry registered nextag.tv in bad faith with intent to promote its services by trading on the goodwill of the Complainant. In addition, the mark NEXTAG being used in a domain name is likely to cause the public to believe, contrary to fact, that Internet Ministry and its website are sponsored or approved in some way by the Complainant. Internet Ministry’s anticipated use of the domain name at issue <nextag.tv> is also an attempt to divert customers from the authentic <nextag.com> domain name.

Mr. Adonis Adams, Internet Ministry’s administrative representative, has not responded to the Complainant’s good faith attempt to communicate with him on this matter. A copy of the corresponding letter dated March 13, 2005, sent by the Complainant to Mr. Adams has been provided to the Panel.

C. The domain name was registered and is being used in bad faith;

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

In light of the Complainant’s longstanding and extensive rights in the NEXTAG trademark, Internet Ministry registered the domain name at issue <nextag.tv> in bad faith with intent to promote his services by trading on the goodwill of the Complainant. In addition, the mark NEXTAG being used in a domain name is likely to cause the public to believe, contrary to fact, that Internet Ministry and its website are sponsored or approved, in some way, by the Complainant. Internet Ministry’s anticipated use of the domain name at issue is also an attempt to divert customers from the authentic nextag.com domain name.

B. Respondent

The Respondent replied to the statements and allegations made by the Complainant in the Complaint as follows:

Internet Ministry is the corporate holder of the domain name at issue <nextag.tv> and began its business venture with the Internet of providing an online median to provide ministry to parties that could not adapt to or were never involved with the corporate structure of ministry with a church or a religious body.

In its research and endeavors, it found that many Christians were turning or partaking in a great deal of Internet related medians for spirituality. Of which a great multitude of Christians indulge in ungodly websites and Internet practices. The founders of this corporate body, Internet Ministry, developed a theology and belief of gaining that type of people. The name “Nextag” is an acronym for ‘Never Ever X-Scape To Another God’ used by Internet Ministry. It was not the intent to infringe on “www.nextag.com” business practices. Internet Ministry, in accordance with the domain name at issue <nextag.tv>, is going to provide such a median to the targeted demographic of people who search for unbiblical spirituality on the Internet. ‘Never Ever Xscape To Another God’ are the “words” that describe the reason why Internet Ministry chose the domain name at issue <nextag.tv>. It was never researched to find the availability of “www.nextag.com” due to the manner and format in which Internet Ministry and the Internet is moving into a dimension in which the Live Video & Live Audio streams are becoming more popular for internet users. With the “.tv” suffix it was new and it offers the ability to tie into the growing demand of Internet users. The “.tv” suffix was a match for this format due to the transmission of live Audio & Video which is just what our TVs (televisions) offer in our daily lifestyles. There was never an intention to neither disrupt, mislead consumers, nor violate the trademark of the Complainant. At the time of conception, Internet Ministry had no prior knowledge of “www.nextag.com”. Nor of its offerings.

A. Whether the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, paragraph 4(a)(i), Rules paragraphs 3(b)(viii), (b)(ix)(1))

The domain name at issue <nextag.tv> is not identical or confusingly similar to the trademark or service mark rights of the Complainant in its domain name of <nextag.com>.

Internet Ministry has presented no interest to the public via website, marketing design, grapics, colors used by “www.nextag.com” to violate any related trademark or service mark rights. The domain name at issue <nextag.tv> presents no infringements to the Complainant’s website “www.nextag.com”. Internet Ministry has not introduced a website, webpage or any misleading information to the public or other interested parties to support the Complainant’s argument of Trademark or Service Mark concerns. The Complainant has trademarked NEXTAG not www.nextag.com under a restricted specific category. In which the Internet Ministry and its use of the domain name at issue <nextag.tv> has no conflict with an alternative usage for the domain name. This is not confusingly similar to the trademark or service mark used by the Complainant.

B. Whether the Respondent has rights or legitimate interests in respect of the domain name; (Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

Internet Ministry has a legitimate business interest in the domain name at issue <nextag.tv> of which the letters ‘nextag’ constitute the acronym for the following mission statement of Internet Ministry: ‘Never Ever X-Scape To Another God’. Internet Ministry has been developing a business model to attract users on the Internet to an information portal that provides information for religious people who have began to use the Internet for non-biblical based entertainment. The intention is to provide users with the opportunity to gain Bible based information via the Internet. The format of <nextag.tv> with the suffix of “.tv” makes it attractive to users and visitors with the feel and look of live video and live audio streaming such as a TV (television set). Internet Ministry with its intention to use the domain name at issue <nextag.tv> is making a legitimate fair use of the domain name without any intention to divert consumers or to tarnish the trademark or service mark of the Complainant. Internet Ministry, before the Complaint was filed, had good intentions for the use of the domain name at issue with a bona fide offering of information and services.

C. Whether the domain name has been registered and is being used in bad faith; (Policy paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

Internet Ministry did not register the domain name at issue <nextag.tv> with any intention of gaining any benefit of the Complainant though its website “www.nextag.com”. At the time of registration of the domain name at issue, Internet Ministry had no prior knowledge of the Complainant nor its domain name www.nextag.com with its use or information to users of the domain name. The initial registration and intention of Internet Ministry for the domain name at issue <nextag.tv> was registered with the suffix or tld of “.tv”. The intention of this tld was to provide an interactive median for users of the site. Providing live audio and video streaming just like the TV. Internet Ministry upon registration has never made any contact with the owner of the NEXTAG mark or the website “www.nextag.com” to buy the domain name at issue <nextag.tv>; nor to offer to purchase www.nextag.com from the Complainant. Internet Ministry via its site “www.nextag.tv” is not a competitor to “www.nextag.com”. The registration of the domain name at issue <nextag.tv> was not made for the future purpose of a lease, rental or sale or transfer with the intention of profiting from the Complainant.

The Respondent in further support of its contention of good faith in the registration and use of the domain name at issue <nextag.tv> stated as follows:

The Respondent has provided all correct information for the contacting of parties involved with the ownership and registration of “www.nextag.tv”.

There has been no intent to mislead or hide information from the Whois Database.

The domain name at issue was not registered with the intent to attract commercial gain or confuse the traffic or internet users with “www.nextag.com”.

The Respondent has never attempted to contact or express an interest or offer to sell the domain name at issue <nextag.tv> to the Complainant.

The Respondent is not a direct competitor with “www.nextag.com” in its offerings or its products.

The Respondent has not launched nor presented to the public any similarities or offerings via “www.nextag.tv” to mislead or divert the public into thinking that the site “www.nextag.tv” is related to, sponsored by or an affiliation of “www.nextag.com”.

The Respondent has not placed any graphics, terms, colors, offerings to the public via its website nor its parking page to be confused with “www.nextag.com”.

The Respondent has not registered any other confusingly similar domain names with the intent to mislead the public or present false representation of “www.nextag.com” to divert users or customers for its own gain.

The Respondent has not offered to promote, market or sell any competitive products of “www.nextag.com”.

The Respondent has a legitimate business interest for the domain name at issue <nextag.tv>.

 

6. Discussion and Findings

To qualify for cancellation or transfer, the Complainant must prove each (emphasis added) of the following elements of paragraph 4(a) of the Policy, namely:

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

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

A. Identical or Confusingly Similar

It is established case law that where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The domain name at issue <nextag.tv> incorporates without any modification the trademark NEXTAG, which is owned and commercially used by the Complainant in and for the purposes of its business. This, apart from anything else, is a clear misuse and infringement on the part of the Respondent of the Complainant’s trademark and also a breach of the Policy.

The addition of the suffix “tv” does not prevent the domain name at issue from being identical or confusingly similar. In other words, this suffix, which, on the Respondent’s own statement, has a descriptive function, is not sufficient to render the domain name at issue distinctive from the domain name of the Complainant.

In view of this, the Panel agrees with the Complainant’s contentions and finds that the domain name registered by the Respondent is identical or confusingly similar to the trademark NEXTAG in which the Complainant has established and commercially valuable rights.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the domain name at issue (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s 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;

- Whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

- Whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not provided any evidence of the use of or preparations to use its acronym ‘Never Ever X-Scape To Another God’ which it contends describes its mission statement in the present or any other case. This acronym also conveniently spells out the Complainant’s registered trademark NEXTAG (see more on this point below).

Neither has the Respondent provided any evidence that it is commonly known by this acronym for any period of time or at all. The Respondent speaks only of future intentions.

Furthermore, the Complainant has not authorized the Respondent to use the Complainant’s registered trademark NEXTAG to identify or designate the Respondent’s activities or services. The inevitable consequence of the Respondent using the domain name at issue incorporating such trademark, without any such authorization, will be to divert Internet users and consumers, expecting to deal with the Complainant and receive details of the services provided by the Complainant, to the Respondent’s website causing confusion and harm to the Complainant’s registered trademark NEXTAG and its business.

Therefore, the Panel concludes that the Respondent does not have any rights or legitimate interests in respect of the domain name at issue.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.”

The Respondent’s explanation of the registration and use of the disputed domain name as an acronym “nextag” which stands for ‘Never Ever X-Scape To Another God’, does not appear to the Panel to be coincidental or credible. But, on the contrary, appears to the Panel to be a contrived name deliberately coined to take advantage of the Complainant’s registered trademark NEXTAG and the goodwill that it represents. The Panel particularly notes the use of the word ‘Ever’ which would appear to be tautologous given the use of the word ‘Never’ preceding it. And furthermore, the use of the letter ‘X’ in the word ‘X-Scape’ is also suspect. Even in the well-known game of ‘Scrabble’ the use of the word ‘X’ presents particular difficulties. All of which tends to suggest bad faith on the part of the Respondent.

Furthermore, there have been several previous UDRP cases in which fanciful and far-fetched acronyms have been used as part of domain names and been held to be registered and used in bad faith. Mention may be made of the case of PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696, where the choice of the acronym P.E.P.S.I. (standing for ‘Partite Emozionanti Per Sportivi Italiani’ (‘Leave the Histrionics for Italian Sports Fans’)) by the respondent in that case was clearly made in bad faith and contrary to the interests of the complainant in that case, namely, Pepsi Co, Inc., in its world famous trademark PEPSI. Mention may also be made of the case of Den norske Bank ASA (DnB) v. Anders Foss, WIPO Case No. D2003-0575 involving the domain name of <dnbnor.com>. In that case, the respondent unsuccessfully claimed that the disputed domain name was an abbreviation of the slogan “De nautiske brшdres nettside og repos” (“The nautical brothers’ website and landing”) of a water ski club and should form part of its website. But the letters ‘DnB’ constituted a significant trademark in Norway of the complainant Bank and the disputed domain name was held to be registered and used in bad faith.

Therefore, for all the above reasons, the Panel concludes that there is evidence of bad faith on the part of the Respondent in registering and using the domain name at issue.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <nextag.tv> be transferred to the Complainant.

 

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Ian Blackshaw
Sole Panelist

Dated: June 13, 2005