4th May 2011

national arbitration forum

DECISION

BrightSign LLC v. Administrator, Domain / Vertical Axis, Inc

Claim Number: FA1103001379395

PARTIES

Complainant is BrightSign LLC (“Complainant”), represented by Kim Funk, California, USA. Respondent is Administrator, Domain / Vertical Axis, Inc (“Respondent”), represented by Ari Goldberger of ESQwire.com Law Firm, New Jersey, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <brightsign.com>, registered with Nameview, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Jonas Gulliksson, Carolyn M. Johnson and David E Sorkin as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 22, 2011; the National Arbitration Forum received payment on March 22, 2011.

On March 23, 2011, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <brightsign.com> domain name is registered with Nameview, Inc. and that Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent is bound by the Nameview, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On March 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 12, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@brightsign.com. Also on March 23, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on April 13, 2011.

On April 21, 2011, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Jonas Gulliksson, Carolyn M. Johnson and David E Sorkin as Panelists.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant makes, sells, and provides the tools to manage, via a server network, multi-media players and controllers for displaying dynamic and interactive ads and other video content (e.g., interactive product descriptions, maps, and exhibit explanations) as part of retail displays, or displays at museums or other institutions.

Complainant is the holder of the federal U.S. trademark registration No. 3,323,468 for the BRIGHTSIGN mark issued October 30, 2007.

Respondent is not conducting any business under the name of Brightsign, nor does the disputed domain name consist of the legal name of or a name commonly used to identify Respondent. Moreover, Respondent has not made any demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods and services, and has no bona fide non-commercial or fair use of Complainant’s mark in a site accessible under the disputed domain name. The disputed domain name wholly incorporates Complainant’s registered trademark.

Respondent has registered and is using the disputed domain name in bad faith.

The website linked to the disputed domain name is simply a “parking site”. Immediately below the heading that states, “Welcome to brightsign.com,” there is a link that says: “Click here to make an offer on this domain name”. One click from the home page’s “business” link, consumers are directed to links of Complainant’s competitor, MVIX, when the words “digital sign” are entered into the search box, and to another competitor, Western Digital, when the words “digital media player” are entered. It is well settled that by directing traffic to sites of competitors or by confusing customers of Complainant, Respondent creates confusion with the intent of driving up the price of the disputed domain name, which constitutes bad faith under the Policy.

Additionally, the email and correspondence exchanges between representatives of the parties clearly indicate that Respondent registered the name anticipating an opportunity to sell the disputed domain name to an entity that operated under or whose business was related to the name ‘Brightsign” and not because of the possibility of attracting users based on the disputed domain name’s descriptive terms, since no links from the home page have anything to do with signs or lighted signs.

Finally, Respondent has engaged in a pattern of registering domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name so that Respondent may sell those domain names to the entities which have a legitimate business interest in them.

B. Respondent

Respondent registered the disputed domain name on May 18, 2002, nearly four years before Complainant’s admitted first use of the term (September 12, 2006) and nearly nine years before this proceeding. Respondent registered the disputed domain name because it incorporates the descriptive term “bright sign.” Complainant had no trademark rights when the disputed domain name was registered.

At a minimum, Complainant was aware of Respondent’s ownership of the disputed domain name nearly six years ago. Complainant has not explained why it waited so long to initiate this Complaint. This long delay in taking action bars the Complaint under the Doctrine of Laches which has been recognized under the Policy.

Respondent has a legitimate interest in the disputed domain name because “bright sign” is a descriptive term composed of two common words: “bright,” which means “radiating or reflecting light; luminous; shining” and “sign” which means a notice, bearing a name, direction, warning, or advertisement that is displayed or posted for public view.” Combined, the two words mean, among other things, “a luminous or lighted posting,” or a “positive symbol or message” as in, there is a bright sign in the economy. Respondent has used the disputed domain name in connection with the bona fide goods and services in the nature of pay-per-click ads which further establishes its legitimate interest.

The descriptive term “bright sign” is commonly used by third parties, appearing in 164,000,000 Google search results and third party web pages. Respondent had no knowledge of Complainant, its business, its web site or trademarks when it registered the disputed domain name.

Moreover, the sale of descriptive domain names is entirely legitimate when there is no evidence of intent to target a trademark. Nor is it true, as Complainant has alleged, that Respondent has engaged in a pattern of registering domains to prevent owners of trademarks from obtaining domains. To the contrary, there is no evidence that Respondent targets trademark holders. In fact, Respondent has registered over one thousand other descriptive term domain names incorporating the words “bright” and “sign.” The only pattern present is one of registering common words and descriptive terms.

FINDINGS

Complainant is the holder of the federal U.S. trademark registration No. 3,323,468 for the BRIGHTSIGN mark issued on October 30, 2007.

Complainant is produces and sells the tools to manage, via a server network, multi-media players and controllers for displaying dynamic and interactive ads and other video content.

The Complainant has alleged use of the disputed domain name as a parking page with pay-per-click links which inter alia leads to the web sites of Complainant’s competitors.

Respondent has alleged that the disputed domain name consists of descriptive terms and that the use is not targeting any trademark holder.

According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, the use of “domain names consisting of dictionary or common words or phrases supporting posted PPC links genuinely related to the generic meaning of the domain name may be considered as a permissible use.”

The present disputed domain name <brightsign.com> and the trademark BRIGHTSIGN are not generic names or dictionary or common words per se.

Nor are they descriptive in relation to all goods and services. For some goods and services they may even be considered suggestive and registrable and protectable as trademarks. However, the Complainant has not presented prima facie evidence that its trademark has acquired distinctiveness for its goods and services by 164,000,000 appearances of third party use on the Google search engine.

Complainant had provided evidence of use resulting in distinctiveness for its trademark which would entail trademark protection, it would still be necessary to prove that Respondent’s use would cause likelihood of confusion in relation to the Respondent’s use in PPC advertising.

The disputed domain name was registered March 18, 2002.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “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.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1)the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)Respondent has no rights or legitimate interests in respect of the domain name; and

(3)the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant clearly has registered trademark rights in the BRIGHTSIGN mark, which date back to 2007. The disputed domain name is identical to that trademark. Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(1) of the Policy.

Rights or Legitimate Interests/Registration and Use in Bad Faith

The Parties are reminded that Complainant has the onus of making a prima facie case that Respondent lacks rights and legitimate interests under the Policy. The circumstances of this case make it appropriate to assess the final elements of the Policy together.

Complainant has asserted that the disputed domain name is used as a parking page with pay-per-click links which inter alia lead to the web sites of Complainant’s competitors. Moreover, Complainant has asserted that Respondent is not commonly known under the disputed domain name.

Respondent has contended that the parking page is permissible since the disputed domain name consists of descriptive terms and the use is not targeting any trademark holder, especially since the disputed domain name was registered well before Complainant had any registered trademark rights.

The existence of pay-per-click websites is not lack of legitimate interest per se. See, e.g., McMullen Argus Publ’g Inc. v. Moniker Privacy Servs., D2007-0676 (WIPO July 24, 2007) (holding that “pay-per-click websites are not in and of themselves unlawful or illegitimate”); see also Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002) (finding that the respondent’s use of the disputed domain name, which was comprised of generic terms, as a portal to a commercial website featuring various advertisements and links constituted a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(ii)).

Moreover; the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states:

Panels have generally recognized that use of a domain name to post parking and landing pages or pay-per-click [PPC] links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate non-commercial or fair use” of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.

Several panels have noted that the more descriptive a mark, the more difficult becomes Complainant’s burden of proof to establish registration and use with Complainant’s mark as a target. See, e.g., TLR v. United Engineering Servs. LLC, D2007-0148 (WIPO Apr. 9, 2007).; Am. Appraisal Assocs. Inc. v. R Hagar, Kinja LLC, D2006-1556 (WIPO January 29, 2007). Further, in cases where circumstances have been quite similar to those at issue in this proceeding, a number of panels have held that use comparable to that demonstrated by Respondent is bona fide for purposes of paragraph 4(a)(ii) and that registration in bad faith is lacking. See, especially, Mariah Media Inc. v. First Place® Internet Inc., D2006-1275 (WIPO Dec. 6, 2006); see also Canned Foods, Inc. v Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001).

It is an undisputed fact that the disputed domain name was registered in May 2002, several years prior to Complainant establishing trademark rights to the mark BRIGHTSIGN. Respondent has asserted that the words are descriptive, they are widely used by third parties and the disputed domain name is only one of a large number of descriptive domain names registered by the Respondent which incorporate the words “bright” and “sign”. Although the Panel’s summary search suggests that the trademark has become connected to the products of Complainant, the Respondent’s use of the disputed domain name since May 2002 cannot be regarded as lack of legitimate interest. In particular since there has been no evidence put forward to suggest that Complainant was using its trademark at the time the disputed domain name was registered. Had Complainant submitted any evidence to show that the trademark was widely used or showing that the word BRIGHTSIGN had acquired distinctiveness through use at the time the case may have been assessed differently.

Moreover, the time aspects of this case (i.e. the time of registration and the subsequent registration of the trademark) does not warrant a finding of bad faith registration under the Policy 4(a)(iii). Complainant’s allegations of bad faith registration are without sufficient facts to support such allegation. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy paragraph 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).

Although the Panel does not agree with Respondent that a finding of bad faith registration is impossible where the disputed domain name is registered prior to that, see, e.g., 537397 Ontario Inc. operating as Tech Sales Co. v. EXAIR Corp., D2009-0567 (WIPO June 19, 2009) (finding bad faith registration where Respondent would never have registered those Domain Names were it not for the fact that Respondent knew that they were in use or about to be used as trade marks by Complainant), the evidence in this case is not such that a finding of lack of legitimate interest or bad faith registration is warranted.

Reverse Domain Name Hijacking

Respondent has requested a finding of abuse of the administrative proceeding.

In this case, Complainant holds relevant trademark rights, provides evidence, and advances creditable arguments under the Policy. The Panel finds that the Complainant did not meet its burden of persuasion on the element of legitimate interest or bad faith, but not that it initiated this proceeding in bad faith. The Respondent’s request for a finding of abuse of the administrative proceeding is consequently denied.

DECISION

As Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <brightsign.com> domain name REMAIN WITH Respondent.

Jonas Gulliksson, Chair

Carolyn M. Johnson and David E. Sorkin,Panelists

Dated: May 4, 2011