10th Dec 2012

national arbitration forum

 

DECISION

LiveOne Group, Ltd. v. Kim KwangPyo / MediaBlue Inc.

Claim Number: FA1210001467218

 

PARTIES

Complainant is LiveOne Group, Ltd. (“Complainant”), represented by Matthew D. Kellam, Esquire, Illinois, USA. Respondent is Kim KwangPyo/MediaBlue Inc. (“Respondent”), represented by Ari Goldberger, Esquire of ESQwire.com, PC, New Jersey, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <liveone.com>, registered with Moniker Online Services, Inc.

PANEL

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

M. Kelly Tillery, Esquire as Panelist and Chair

Hon. Neil Anthony Brown, QC as Panelist

David C. Perkins, Esquire as Panelist

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 12, 2012; the National Arbitration Forum received payment on October 15, 2012.

On October 16, 2012, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <liveone.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 October 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 2012 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@liveone.com. Also on October 17, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.

On November 1, 2012, Respondent requested an extension to file its Response to the Complainant in the amount of eight days. Complainant consented to the extension and the Forum approved of the extension on November 2, 2012, thereby extending the deadline to Respond to November 14, 2012.

A timely Response was received and determined to be complete on November 14, 2012.

Complainant submitted an Additional Submission on November 19, 2012 that was deemed to be in compliance with Supplemental Rule 7.

On November 30, 2012, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed M. Kelly Tillery, Esquire as Panelist and Chair and Hon. Neil Anthony Brown, QC and David C. Perkins as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

  1. Complainant Alleges:

1. It owns a Trademark Registration with the United States Patent and Trademark Office (“USPTO”) for the LIVEONE mark (Reg. No. 4,023,644 filed May 15, 2010; registered Sept. 6, 2011).

2. Respondent’s <liveone.com> domain name is identical to the LIVEONE Trademark.

3. The addition of the “.com” generic top-level domain (gTLD) is not enough to distinguish the <liveone.com> domain name from the LIVEONE Registered Mark.

4. It has never authorized, licensed or otherwise permitted Respondent to use the LIVEONE Trademark.

5. Respondent does not have any rights or legitimate interests in the <liveone.com> domain name.

6. Respondent has not made a bona fide offering of goods or services.

7. Respondent’s resolving website is a parked website containing pay-per-click advertisements.

8. Respondent is likely collecting pay-per-click fees when Internet users click on the advertisements.

9. Respondent has registered and is using the <liveone.com> domain name in bad faith.

10. Respondent is attempting to attract for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the LIVEONE Trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s <liveone.com> domain name.

11. Respondent has offered to sell the <liveone.com> disputed domain name for $50,000.

  1. Respondent Alleges:

1. It is the owner of the <liveone.com> domain name.

2. This is a Reverse Domain Hijacking case and there is no basis for transferring the <liveone.com> domain name to Complainant.

3. Respondent registered the disputed domain name in September 2007.

4. At the time the disputed domain was registered, Complainant was not yet operating.

5. Complainant has provided no evidence establishing secondary meaning.

6. The <liveone.com> domain name is comprised of two common English terms that are not subject to third party trademark rights.

7. Respondent registered the <liveone.com> domain name when it was deleted and expired when the previous registrant failed to renew it.

8. Complainant had knowledge of Respondent’s domain name and initiated this claim after it was unsuccessful in purchasing the domain name.

9. Respondent had no knowledge of Complainant or Complainant’s business or Registered Mark.

10. Responding to an inquiry to purchase a domain name is not evidence of Respondent’s bad faith. Complainant submitted an unsolicited offer to purchase the domain name, thereby acknowledging Respondent’s legitimate interest in the domain name. Reselling domain names, without targeting the trademark owner, satisifes the legitimate interest prong of the Policy, and is not evidence of bad faith.

11. Respondent has rights and legitimate interests in the <liveone.com> domain name.

12. Respondent did not register the <liveone.com> domain name to prevent Complainant from owning it.

13. Respondent did not select the links on its resolving website with the intent to profit from any trademark owners, including Complainant.

14. The links result from automated software technology.

C. Additional Submission of Complainant

    1. Respondent is not merely a professional business name registrant, it is a Cybersquatter, engaged in the business of commercially benefiting from the goodwill of others trademarks.
    2. Respondent’s defenses hinge on the fact that it registered the disputed domain name prior to Complainant establishing U.S. trademark rights in the LIVEONE mark. However, past panelists have held that if such a rule were adopted it would allow a Respondent that originally registered a domain name in good faith to continuously and flagrantly exploit a Complainant’s mark.
    3. Respondent renewed the disputed domain name after Complainant had established a large Internet presence and received a registration for the LIVEONE mark in 2010.
    4. After Complainant registered its mark with the USPTO Respondent changed the type of click-through advertisements that appeared on the disputed domain name.
    5. Complainant’s trademark registration need not predate the registration of the domain name.
    6. Bad faith is not limited solely to the date of registration of the disputed domain name.

i. Panels have held that a registrant has an ongoing duty to make sure that it is not violating others’ rights in trademark or copyright where the domain name was registered prior to a complainant owning a trademark.

ii. Still other panels have held that the date of Respondent’s last renewal is the date on which to measure whether the disputed domain name was registered and used in bad faith.

    1. Respondent’s use of the disputed domain name shifted in 2011 to offer directly competing advertising links through the website. Even if the links were auto-generated, Respondent bears the ultimate responsibility for the content of its websites.
    2. Respondent has willfully ignored the trademark rights of Complainant in bad faith.
    3. Respondent’s allegations of reverse domain name hijacking are baseless and without merit.

FINDINGS

1) Complainant has met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent’s Domain Name is identical or confusingly similar to a Trademark in which Complainant has rights.

2) Complainant has not met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s domain name has been registered and is being used in bad faith.

3) Since Complainant has not met its burden on one required element of its claim, the Panel need not decide where it has met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent has no rights or legitimate interest in respect of the Domain Name.

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 is the owner of a “LIVEONE” mark registered with the USPTO (Reg. No. 4,023,644 Filed May 15, 2010; Registered Sept. 6, 2011). Registration with a national trademark authority is evidence of rights in a mark under Policy ¶ 4(a)(i), and such rights date back at least to the original filing date of the mark with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). Based on this undisputed evidence of registration with the USPTO, the Panel finds that Complainant has rights in the “LIVEONE” mark pursuant to Policy ¶ 4(a)(i), and that such rights began at least as early as May 15, 2010.

The <liveone.com> domain name incorporates Complainant’s mark in its entirety with the addition of the gTLD “.com.” The addition of a gTLD such as “.com” is insufficient in differentiating a disputed domain name from a registered mark because all domain names are required to have a top-level domain. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). The Panel finds that the <liveone.com> domain name is identical to Complainant’s “LIVEONE” mark pursuant to Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Since Complainant has failed to prove the elements required under Policy ¶ 4(a)(iii) (See below), the Panel need not and does not make any findings on “rights on legitimate interests” under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

The Panel finds that Complainant has failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). 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 the 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 ¶ 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).

 

The Panel concludes that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

Respondent claims that responding to an inquiry to purchase a domain name is not necessarily evidence of bad faith. Respondent further claims that Complainant submitted an unsolicited offer to purchase the <liveone.com> domain name. Respondent argues that Complainant’s offer is an acknowledgement of Respondent’s legitimate interest in the <liveone.com> domain name. When a complainant indicates a willingness to engage in a market transaction for a disputed domain name, it does not violate the policy for the respondent to offer to sell for a market price, rather than for only out of pocket expenses. See Puky GmbH v. Agnello, D2001-1345 (WIPO Jan. 3, 2002) (finding insufficient evidence to hold that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) where the complainant initiated contact with the respondent and the respondent responded with an offer to sell its domain name registration for $50,000); see also Coca-Cola Co. v. Svensson, FA0 103933 (Nat. Arb. Forum Feb. 27, 2002) (finding that the respondent was not acting in bad faith when it engaged in discussions to sell its domain name registration to the complainant after the complainant initiated the discussion). The Panel finds this sufficient and finds no bad faith pursuant to Policy ¶ 4(b)(i).

Respondent argues that there can be no finding against Respondent when Complainant’s business did not exist at the time Respondent registered the <liveone.com> disputed domain name. Complainant acknowledges that its business was not in existence at the time that Respondent acquired the disputed domain name in 2007. Complainant’s First Use in commerce of the mark was on April 7, 2011, with a general First Use date of May 15, 2010.

There generally can be no bad faith when a respondent registers the disputed domain name before a complainant began using the mark. See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant company did not exist at the time of registration); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant). The Panel finds this to be sufficient. Respondent did not register or use the <liveone.com> disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

Respondent also contends that there is no evidence of bad faith registration or use because Respondent registered the <liveone.com> domain name which incorporates a descriptive term that became available when its prior registrant failed to renew it. Arespondentis free to register a domain name consisting ofcommon termsand that the domain name currently in dispute contains such common terms. ThePanel findsthat Respondent did not registeror use the <liveone.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Zero Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (“Common words and descriptive terms are legitimately subject to registration as domain names on a ‘first-come, first-served’ basis.”); see alsoTarget Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).

Reverse Domain Name Hijacking

 

Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <liveone.com> domain name, of its rights to use the disputed domain name. Respondent claims that because Complainant had knowledge of Respondent’s prior registration for the <liveone.com> domain name, Complainant should have known that it could not prove bad faith registration.

Respondent must prove that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the <liveone.com> domain name and that Respondent registered and is using the disputed domain name in bad faith. See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).

The Panel finds that on this record it is a close question. On the one hand, Complainant must have realized that the fact that its trademark was registered after the registration of the domain name would pose real difficulties for its success in this proceeding. On the other hand, Complainant was faced with a situation where the domain name was being used in a manner that Complainant regarded as inappropriate. On balance and having regard to all the circumstances, the Panel is of the view that it cannot find that Respondent has proven reverse domain name hijacking.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

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

M. Kelly Tillery, Esquire, Panelist and Chair

The Honourable Neil Anthony Brown, QC, Panelist

David C. Perkins, Esquire, Panelist

Dated: December 10, 2012