1st Apr 2007

National Arbitration Forum

 

DECISION

PowerFilm, Inc. v. Port Media

Claim Number: FA0702000912327

 

PARTIES

Complainant is PowerFilm, Inc. (“Complainant”), represented by James J. Johnston, of Dechert LLP, Cira Centre, 2929 Arch Street, Philadelphia, PA 19104-2808.Respondent is Port Media (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.

REGISTRAR AND DISPUTED DOMAIN NAME

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

PANEL

On behalf of the entire 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 Panelist in this proceeding.

Louis E. Condon as Chair of the Panel.Diane Cabell and Honorable Carolyn M. Johnson as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 7, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 7, 2007.

On February 15, 2007, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <powerfilm.com> domain name is registered with Nameview, Inc. and that the 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-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On February 20, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 12, 2007 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@powerfilm.com by e-mail.

A timely Response was received and determined to be complete on March 12, 2007.

On March 19, 2007, the Complainant’s additional submission was received by the Forum in a timely manner according to Supplement Rule 7. The contents thereof were duly considered by the Panel in reaching its decision.

On March 20, 2007, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Diane Cabell, and the Honorable Carolyn M. Johnson as Panelists, and Louis E. Condon as Chair of the Panel.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

Complainant, PowerFilm, Inc., is a publicly traded Delaware corporation founded in 1988 as Iowa Thin Film Technologies. It is a global technology leader in the development and distribution of flexible photovoltaic products, which convert solar energy into electricity for use in portable, remote, mobile and structural applications. The Complaint is based on Complainant’s use in commerce of the mark POWERFILM and

its US trademark registration of PF POWERFILM and design mark in connection with apparatus that convert solar radiation to electrical energy. The mark was first used in commerce by the Complainant on November 11, 2001.

Complainant has experienced steady growth and reputation for innovation in the field of photovoltaics culminating in 2006 when the company was listed on the Alternative Investment Market of the London Stock Exchange. In addition to its own sales and developments the company also sells POWERFILM solar modules that are integrated into the finished products of other companies. By virtue of continuous use, growth of POWERFILM business and the exceptional reputation Complainant enjoys in the photovoltaic industry, the Mark has become well known, and represents substantial goodwill of Complainant’s business.

Respondent is not a reseller, licensee or agent of Complainant. The Domain Name was initially registered by a domain name broker, DomainDeluxe.com, in July, 2001. The website at the Domain Name continued to resolve to a landing page advertising that the Domain Name was for sale through 2003. At some time subsequent to May, 2003, more than two years after Complainant began using the Mark, the website resolving at the Domain Name was changed to include a page of links related to solar power and battery technology, including links purporting to be related to Iowa Thin Film Technologies, the corporate entity that was Complainant’s predecessor. A visitor who clicks through these links is directed to additional web pages with the “sponsored results” comprised of links to third party websites that offer various services, including photovoltaic products and services.

A.Complainant makes the following assertions:

1. Respondent’s domain name <powerfilm.com> is confusingly similar to Complainant’s POWERFILM mark.

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

3. Respondent registered and used the <powerfilm.com> domain name in

bad faith.

B. Respondent

Respondent registered the Disputed Domain on July 16, 2001, prior to the date Complainant filed its application for the mark POWER FILM and prior to Complainant’s date of first use of the mark.Complainant filed an application for a trademark for POWER FILM more than five months later on December 30, 2001, with an alleged first use date of November 12, 2001. It is, thus, impossible for Respondent to have had knowledge of Complainant’s mark when it registered the disputed Domain Name, because the mark did not exist at the time. Respondent registered the Disputed Domain name when it expired and became available for registration.Respondent registered <powerfilm.com> because it believed it was a descriptive term composed of generic terms to which it believed no one had exclusive rights.Respondent did not register the Disputed Domain with the intent to disrupt Complainant’s business, or to confuse consumers seeking to find Complainant’s website. Respondent did not register the Disputed Domain to prevent Complainant from owning a domain name incorporating its trademark.

Respondent hosts the Disputed Domain on a website that provides sponsored links. The sponsored links are provided by Yahoo Search Marketing. While Complainant has alleged that sponsored links related to Complainant’s goods and services appeared on the <powerfilm.com> website for periods prior to the filing of the Complaint, those links were not placed there by Respondent but, rather, were the result of Yahoo!’s automated technology. After receiving the Complaint, Respondent began pointing the Disputed Domain to a lander page with generic links.

Moreover, Respondent asserts that Complainant has rights only in the PF POWERFILM mark through a design mark with the USPTO, and the <powerfilm.com> domain name is distinct from this mark in the Internet context, as small differences matter, and Respondent’s disputed domain name does not contain the letters “pf” that are found at the beginning of Complainant’s mark

C. Additional Submissions

In its additional submission, Complainant makes two claims. First, that the Respondent failed to establish that its rights in the domain name predate Complainant’s rights in the POWERFILM mark; and secondly, Respondent’s contention that use of an automated ad-generation service to populate the website resolving at the Domain Name is an innocent and excusable use of a trademark is unsupported by the weight of precedent in proceedings under the policy.

 

FINDINGS

Complainant maintains that the change in the use of the Domain Name was calculated to trade off of the goodwill and reputation of the Mark and to divert prospective customers of Complainant’s products.Further, Complainant says Respondent is deriving income in the form of click-through or referral fees based on visitors clicking through the links at the Domain Name.

Respondent asserts that although Complainant holds a registration with the USPTO for the PF POWERFILM mark, Respondent’s registration of the <powerfilm.com> domain name pre-dates the registration date, filing date, and first use in commerce date of the mark by Complainant.As such, Respondent asserts that it holds rights in the disputed domain name that pre-date any rights Complainant may have in the mark. Complainant made no showing of having any common law rights in the mark prior to its obtaining the trademark or Respondent’s acquiring the Domain Name.

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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

The Panel unanimously concludes that Complainant does not have prior rights in the <powerfilm.com> Domain Name according to Policy ¶ 4(a)(i). Accordingly, the Panel declines to analyze the other two elements of the Policy.See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also 01059 GmbH v. VARTEX Media Mktg. GmbH/Stefan Heisig, D2004-0541 (WIPO Sept. 10, 2004) (holding that if the complainant does not satisfy Policy ¶ 4(a)(i) by showing it has rights in a mark, the panel need not consider whether the respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) or whether it registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).).

The Panel makes no comment or decision as to what rights Complainant asserts as to its trademark in a court having jurisdiction thereof.

 

DECISION

Complainant having failed to establish the elements required under the ICANN Policy, the Panel concludes that relief should be DENIED.

Accordingly, it is Ordered that the Complaint be dismissed with prejudiced and the <powerfilm.com> domain name be retained by the Respondent.

Louis E. Condon, Chair, for the Panel

Diane Cabell and Honorable Carolyn M. Johnson, Panelists
Dated: April 1, 2007

 

National Arbitration Forum