28th Dec 2006
National Arbitration Forum
Thru, L.L.C. v. Yoshiki Okada
Claim Number: FA0611000849145
Complainant is Thru, L.L.C. (“Complainant”), represented by Cathryn Berryman, of Jenkens & Gilchrist, A Professional Corporation, 1445 Ross Ave., Suite 3700, Dallas, TX 75202. Respondent is Yoshiki Okada (“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 <thru.com>, registered with Enom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Joel M. Grossman as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 22, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 27, 2006.
On Nov 22, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <thru.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 November 28, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 18, 2006 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on December 12, 2006.
An Additional Submission from Complainant was received and determined to be complete on December 18, 2006.
On December 20, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Joel M. Grossman as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
(1) that the domain name <thru.com> is identical or confusingly similar to its mark THRU.
(2) that Respondent has no rights or legitimate interests in the domain name; and
(3) that the domain name was registered and is being used in bad faith.
Respondent asserts that
(1) Complainant cannot prevail in its attempt to find the two marks identical, or confusingly similar, because Respondent registered the domain name on January 24, 2001, several years before Complainant began using its mark in commerce in 2005;
(2) Respondent is using its domain name for a bona fide offering of goods and services, as it derives revenue from advertising on its site. Respondent also asserts that it may use the term “thru” because it is a common descriptive term, an abbreviation of the word “through.”
(3) Respondent asserts that it cannot have registered the domain name in bad faith since its registration predates Complainant’s use of its mark in commerce. In fact, Respondent accuses Complainant of reverse domain name hijacking.
C. Additional Submissions
In its Additional Submission Complainant, through a Declaration of its Chief Executive Officer, asserts that it has spent over $700,000 in branding and advertising its mark. Complainant further states the United States Patent and Trademark Office has now approved its pending trademark application.
The Panel finds the following:
1. The domain name <thru.com> is not identical to, nor confusingly similar to the Complainant’s THRU mark, because of the domain name’s registration four years before Complainant’s mark was used in commerce.
2. Respondent has legitimate rights and interests in the domain name.
3. The domain name was not registered and is not being used in bad faith.
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.
Identical and/or Confusingly Similar
Because Respondent registered its domain name years before Complainant began using the THRU mark in commerce, there can be no finding that the name is identical to or confusingly similar to Complainant’s mark. See Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003): “To raise a claim against another party that would support transfer of a domain name registration, Complainant must demonstrate interests in a mark that predate the domain name registration.” See also Trujillo v. 1Soft Corp., FA 171259 (Nat. Arb. Forum Sept. 10, 2003). Because Complainant cannot establish use of its mark prior to Respondent’s registration of the domain name, Complainant cannot prevail.
Rights or Legitimate Interests
While the Panel may not be required to address either this issue or the bad faith registration issue in light of the above finding, see Intermark, supra, the Panel notes briefly that it is satisfied that Complainant could not prevail on this point. First, as Respondent points out at great length, the term “thru,” which is shorthand for the preposition “through,” is an incredibly common term. See SOCCERPLEX, Inc. v. NBA, Inc. FA 94361 (Nat. Arb. Forum May 25, 2000). Moreover, Respondent asserts that it has made legitimate use of the domain name, specifically by earning ad revenues on its website when it directs visitors to other websites. See Eastbay Corp. v. VerandaGlobal.com, Inc. FA 105983 (Nat. Arb. Forum May 20, 2002.) The Panel does not reach the issue of whether this ad revenue is enough to create legitimate interest in the domain name, and therefore the Panel will not resolve this secondary issue.
Registration and Use in Bad Faith
It is axiomatic that this domain name was not registered in bad faith because the Complainant had not begun using the THRU mark in commerce until four years after the registration. Nor can it be said that Respondent is using the domain name in bad faith since, as noted above, the term “thru” is extremely common and Respondent has the right to use this common term in its business venture.
Having failed to establish any of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Joel M. Grossman, Panelist
Dated: December 28, 2006
National Arbitration Forum