2nd Mar 2005

National Arbitration Forum

DECISION

Intune Media Group LLC v. Vertical Axis, Inc.

Claim Number: FA0412000385881

PARTIES

Complainant is Intune Media Group LLC (“Complainant”), 2509 152nd Avenue N.E., Suite B, Redmond, WA 98052.Respondent is Vertical Axis, Inc. (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ, 08003 USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <intune.com>, registered with The Registry At Info Avenue d/b/a IA Registry.

PANEL

The undersigned certifies that they have acted independently and impartially and, to the best of their knowledge, have no known conflict in serving as a Panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. (Ret.), the Honorable Carolyn M. Johnson (Ret.) and Mr. Steven L. Schwartz as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 20, 2004; the National Arbitration Forum received a hard copy of the Complaint on December 23, 2004.

On December 30, 2004, The Registry At Info Avenue d/b/a IA Registry confirmed by e-mail to the National Arbitration Forum that the domain name <intune.com> is registered with The Registry At Info Avenue d/b/a IA Registry and that Respondent is the current registrant of the name.The Registry At Info Avenue d/b/a IA Registry has verified that Respondent is bound by the The Registry At Info Avenue d/b/a IA Registry registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On January 3, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 24, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@intune.com by e-mail.

A timely Response was received and determined to be complete on February 7, 2005.

On February 16, 2005, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.), the Honorable Carolyn M. Johnson (Ret.) and Mr. Steven L. Schwartz as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Intune Media Group, LLC, contends that Respondent’s domain name, <intune.com>, is confusingly similar to Complainant’s registered marks INTUNE and INTUNE MEDIA GROUP.

Respondent, Vertical Axis, Inc., is using a domain name that is confusingly similar to Complainant’s INTUNE mark in order to attract Internet users to Respondent’s website. Respondent is profiting from the advertisements, links and pop-ups featured at its <intune.com> domain name.Therefore, Respondent is commercially benefiting from the likelihood of confusion created by the disputed domain name.The use of a domain name that is confusingly similar to Complainant’s mark in order to attract Internet users to an advertising website is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and is not a legitimate, noncommercial or fair use pursuant to Policy ¶4(c)(iii).

Respondent is not commonly known as anything other than “Vertical Axis, Inc.”In order to establish rights and legitimate interests under Policy ¶ 4(c)(ii), Respondent must prove that it is commonly known as INTUNE or <intune.com>.

Respondent is profiting from the advertisements, links and pop-ups featured at its <intune.com> domain name.Therefore, Respondent is commercially benefiting from the likelihood of confusion created by the disputed domain name.These circumstances also are evidence of bad faith use pursuant to Policy ¶ 4(b)(iv).

B. Respondent

There is no basis to transfer the domain name <intune.com> to Complainant. Respondent has a legitimate interest in the disputed domain.The common descriptive term “in tune” is subject to substantial third-party use.Anyone has the right to register a domain name incorporating a common descriptive term.Moreover, Respondent uses the domain name in connection with a website that posts paid advertising links related to the meaning of the term “in tune” which is a bona fide offering of goods and services.

Respondent did not register, and has not used, the disputed domain in bad faith. In order to prove bad faith registration Complainant must proffer evidence that the disputed domain was specifically registered with Complainant’s trademark in mind.There is no such proof here.It is impossible for Respondent to have registered the disputed domain name in bad faith because Complainant’s U.S. trademark application was filed June 1, 2003, more than 2 years after the May 3, 2001 registration date of the disputed domain name.Complainant’s alleged first use of the mark in commerce, November 4, 2001, also post-dates the registration date of the disputed domain name by several months.Respondent obviously had no knowledge, and could have had no knowledge, of Complainant’s mark when it registered the disputed domain name.

FINDINGS

Complainant filed its application for its INTUNE mark on June 1, 2003, alleging first use of November 4, 2001; and the mark was registered on August 10, 2004. (Reg. No. 2,871,657).Complainant filed its application for its INTUNE MEDIA GROUP mark on May 5, 2002, alleging first use of November 4, 2001; and the mark was registered on June 3, 2003.

Respondent registered <intune.com> on May 3, 2001, prior to the dates of first use, application, and registration of either of Complainant’s marks.Respondent has used the disputed domain name to post third-party pay-per-click advertising links related to music, pursuant to an affiliate agreement with Overture Services, a division of Yahoo.Respondent receives a share of advertising revenue generated by Overture.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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;

(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

Respondent registered the <intune.com> domain name on May 3, 2001; over two years before Complainant filed an application to register the INTUNE mark and over a year before Complainant filed an application to register the INTUNE MEDIA GROUP mark.Since Respondent registered the <intune.com> domain name prior to the date in which Complainant established rights in either the INTUNE or INTUNE MEDIA GROUP marks, Complainant has failed to satisfy the requirements of Policy ¶ 4(a)(i).See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily implies that Complainant’s rights predate Respondent’s registration . . . of the domain name”); see also Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding that any enforceable interest that complainant may have in its common law mark did not predate respondent’s domain name registration, therefore finding that Policy ¶ 4(a)(i) had not been satisfied).

Accordingly, the Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(i).Since Complainant has failed to satisfy the first element, it is unnecessary to address the second element, rights or legitimate interests.Because Complainant has clearly failed to show bad faith, the Panel will also address the third element.

Registration and Use in Bad Faith

Respondent’s registration of the <intune.com> domain name predates Complainant’s establishment of rights in the INTUNE or INTUNE MEDIA GROUP marks, therefore Respondent did not register and use the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).See Interep Nat’l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where respondent registered the domain prior to complainant’s use of the mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where respondent registered the domain name in question before application and commencement of use of the trademark by complainant).

The Panel finds that Policy ¶ 4(a)(iii) has not been satisfied.

DECISION

Having failed to establish the first and third elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

The Honorable Charles K. McCotter, Jr., Panelist, Chair

Dated: March 2 , 2005

National Arbitration Forum