31st Jul 2008

WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Collective Media, Inc. v. CKV / COLLECTIVEMEDIA.COM

Case No. D2008-0641

 

1. The Parties

The Complainant is Collective Media, Inc., New York, United States of America, represented by Lowenstein Sandler PC, United States of America.

The Respondent is CKV / COLLECTIVEMEDIA.COM, Hong Kong, China, represented by ESQwire.com Law Firm, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <collectivemedia.com> is registered with Nameview Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2008. On April 25, 2008, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. On May 22, 2008, Nameview Inc. transmitted by email to the Center its verification response confirming that “CKV” is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient (in that the Complaint, as originally filed, did not identify CKV as the Respondent) the Complainant filed an amendment to the Complaint on June 4, 2008, to include CKV as the named Respondent. 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 June 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2008. The Response was filed with the Center on June 25, 2008.

The Center appointed James A. Barker, Susanna H.S. Leong and David E. Sorkin as panelists in this matter on July 17, 2008. The Panel finds that it was properly constituted. Each member of 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 following facts are not contested.

The disputed domain name was created on May 22, 2002 (as indicated by the Whois record).

The Complainant operates its business in the advertising industry. It has no registered trademark. The Complainant filed an application with the United States Patent and Trademark Office for the mark COLLECTIVE MEDIA, on January 9, 2008.

There is little direct evidence of the nature of the Respondent “CKV”. It has been named in a number of previous proceedings under the Policy. In LeasePlan Corporation N.V. v. Vertical Axis, Inc. dba CKV, WIPO Case No. D2008-0289, the Respondent then admitted that its corporate name was “Vertical Axis, Inc.” doing business as “CKV”. The then Panel found that “the Respondent has acted in a pattern of preventing owners of a trademark or service mark from reflecting their marks in a corresponding domain name as required under paragraph 4(b)(ii) of the Policy.”

The Complainant provides evidence that, in April and September 2005, the website to which the disputed domain name reverted was a “landing” website. That website concerned primarily media and entertainment-related links.

 

5. Parties’ Contentions

A. Complainant

The following is summarized from the Complaint.

The Complainant claims that the Respondent is no stranger to proceedings under the Policy, having regularly been involved in registering domain names in connection with landing websites.

The Complainant notes that the disputed domain name was registered in May 2002. It argues that it should no longer be registered to the Respondent, since it is confusingly similar to a mark the Complainant has used since at least October 2005. The Complainant also notes that it would be the owner of the disputed domain name but for the Respondent’s registration.

The Complainant claims that the disputed domain name is identical to the mark for which it has a pending trademark application with the United States Patent and Trademark Office. It also claims to have unregistered trademark rights.

The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant claims, in effect, that there is no evidence that the Respondent could demonstrate any of the circumstances set out in paragraph 4(c) of the Policy. Those circumstances are taken to be evidence of a legitimate interest under the Policy. The Complainant notes that the Respondent’s website is nothing more than a “pay-per-click search portal”, and refers to a number of decisions under the Policy which, it claims, establish that such a use is not bona fide.

The Complainant, lastly, claims that the disputed domain name was registered, and is being used, in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

B. Respondent

The following is summarized from the Response.

The Respondent notes that it registered the disputed domain name in May 2002, more than 5 years before the Complainant’s trademark application was filed, and three years before its claimed first use. The Respondent claims that, to be enforceable under the Policy, the Complainant’s trademark rights must predate the registration date of a disputed domain name. This is not the case here.

The Respondent claims that it has a right or legitimate interest in the disputed domain name. This is because it is comprised of two dictionary terms. The Respondent has a legitimate interest because the registration was based on the descriptive value of the domain name. It claims that the links on its website were automatically generated by software which selected links relevant to the appearance of the word “media”.

The Respondent denies that it registered and has used the disputed domain name in bad faith. It claims that such a finding is impossible since the disputed domain name was registered before the Respondent’s first use of its trademark.

The Respondent seeks a finding of reverse domain name hijacking against the Complainant.

 

6. Discussion and Findings

To succeed under paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) the disputed domain name was registered and is being used in bad faith.

These grounds are discussed as follows.

A. Identical or Confusingly Similar; Rights or Legitimate Interests

Because of the Panel’s findings in relation to the bad faith ground below, it is not necessary for the Panel to make findings on these two grounds.

B. Registered and Used in Bad Faith

The Respondent registered the disputed domain name on May 22, 2002. The earliest date of effect of the Complainant’s mark is, as argued by the Complainant, October 2005.

From this, it is evident that the Respondent registered the disputed domain name before any trademark rights which the Complainant might establish. The Complainant does not suggest otherwise. Instead, the Complainant suggests that the disputed domain name should “no longer” be registered by the Respondent, since the Complainant obtained trademark rights from October 2005.

Whether bad faith can be found in these circumstances is addressed in item 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, as follows:

Consensus view: Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right. …

However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. …”

The reason for this is simple enough. For a finding of bad faith under paragraph 4(a)(iii) of the Policy, there must be some evidence that the Respondent was aware of the Complainant and sought to take advantage of its mark.

Here, the Respondent clearly cannot have sought to take advantage of the Complainant’s mark. When the Respondent registered the disputed domain name in 2002, the Complainant had no mark. Neither was there any evidence that, at that time, the Respondent knew or should have known that the Complainant was intending to use or register any potential mark.

For these reasons, the Panel finds that the Complainant has not established that the disputed domain name was registered in bad faith. It follows that the Complainant has not established its case under paragraph 4(a)(iii) of the Policy. It also follows that the Complainant cannot succeed at all, because it cannot establish all three elements under paragraph 4(a) of the Policy.

C. Reverse Domain Name Hijacking

The Respondent seeks a finding of reverse domain name hijacking against the Complainant.

Paragraph 15(e) of the Rules provides that if “the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” Paragraph 1 of the Rules 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.”

The Complainant has sought an order that the disputed domain name be transferred to it. It has therefore used the Policy in an attempt to deprive the Respondent of the disputed domain name. For a finding under paragraph 15(e) the issue is whether this attempt was made in bad faith.

A number of previous panel decisions have found such bad faith in circumstances where the complainant knew or should have known when it filed the complaint that it could not succeed. Those include cases where the complainant could not have reasonably believed it could succeed, since the registration date of the domain name at issue preceded the complainant’s trademark rights. (See e.g. Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM, WIPO Case No. D2006-0905; carsales.com.au Limited v. Alton L. Flanders, WIPO Case No. D2004-0047, and the cases cited in those ones.)

The circumstances of this case are similar. As outlined above, the disputed domain name was registered well before the Complainant claimed to have first used its mark in commerce.

In addition, the Complainant’s case was weak in other respects. The Complainant provided no strong evidence of its trademark rights. The Complainant has no registered trademark. The Complainant provided evidence of having only a pending application for a registered mark. Neither did the Complainant provide strong evidence of having common law, or unregistered, trademark rights. The Complainant’s evidence in this respect comprised of three pages from its own website, and a small number of articles with incidental references to it, or containing (among others) short quotes of the “CEO of ad network Collective Media”. Those articles were dated between January and March 2008. The evidence from its own website appears to have been obtained in April 2008. The Complainant provided no evidence to support its claim of having unregistered trademark rights in 2005, let alone in 2002 when the disputed domain name was registered.

The Panel therefore finds that the Complainant should have appreciated that its Complaint could not succeed and, as such, was brought in bad faith for the purpose of paragraph 15(e) of the Rules.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

   

James A. Barker
Presiding Panelist


Susanna H.S. Leong
Panelist


David E. Sorkin
Panelist

Dated: July 31, 2008