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1. The Parties
Complainant is Audiopoint, Inc., a Virginia corporation. Complainant
is represented by Knobbe, Martens, Olson & Bear, LLP.
Respondent is eCorp, Inc., an Indiana corporation represented by Ari
Goldberger. The Complainant identified the Respondent as “eCorp a/k/a
Chad Folkening”; Mr. Folkening is listed as the administrative contact
for eCorp.
2. The Domain Name and Registrar
The domain name at issue is <audiopoint.com>. The domain name
is registered with Tucows.com, Inc.
3. Procedural History
Complainant filed its Complaint under the ICANN Uniform Domain Name
Dispute Resolution Policy (the “Policy”) with the World Intellectual Property
Organization Arbitration and Mediation Center (the “Center”) by email on
April 6, 2001. A hard copy version was received on April 10, 2001.
After confirming that the Complaint satisfied the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”), the Center sent Respondent
notice of the commencement of this proceeding on April 18, 2001.
Respondent submitted a timely response by email on May 7, 2001 and in hard
copy on May 14, 2001.
On April 10, 2001, the Center requested a registrar verification in
connection with this case. On April, 11, 2001, Tucows.com, Inc. confirmed
that the Registrant is the Respondent.
On May 30, 2001, after clearing for potential conflicts, the Center
appointed Robert A. Fashler and David E. Sorkin as Panelists and David
H. Bernstein as the Presiding Panelist in this matter.
4. Factual Background
The Panel has reviewed the Complaint and Response. The following
facts appear to be undisputed:
Complainant is in the business of providing voice portal services.
According to the Complaint, its founder, Nicholas K. Unger, selected the
AUDIOPOINT mark in January 1999 and thereafter “began using the AUDIOPOINT
name and mark in connection with the development of voice portal services.”
Complainant did not begin to “promot[e] its services” under the AUDIOPOINT
mark until June 1999, the same month Complainant filed a trademark application.
That application was assigned Serial No. 75/741,380 and is still pending.
On June 24, 1999, Audiopoint, Inc., was incorporated under the laws of
Virginia.
Respondent registered the <audiopoint.com> domain name on February
8, 1999. As of that date, Complainant had not yet applied for a trademark
registration and had not yet offered (or even promoted) any services under
the AUDIOPOINT mark. Furthermore, Respondent certifies, and Mr. Folkening
swears, that they had no knowledge of Complainant at the time Respondent
registered the disputed domain name.
Over the course of several months (from approximately October 2000 to
April 2001), the Complainant and Respondent engaged in negotiations concerning
the sale of the disputed domain. These negotiations were initiated
by Complainant. At the time the negotiations broke down, Complainant
had offered to purchase the domain name for $35,000; Respondent had offered
to sell it for $60,000.
5. Parties’ Contentions
A. Complainant
Complainant alleges that it has rights in the mark AUDIOPOINT because
it has used the mark in connection with the design and development of its
voice portal service since as early as January 1999, and in promoting its
services over the Internet since June 1999. Complainant contends
it has been damaged by the lost traffic and business to its website, in
addition to misdirected emails, all of which result from the similarity
between its trade name and mark and the contested domain name.
Complainant further contends that Respondent lacks any rights or legitimate
interests in the domain name. Complainant alleges that Respondent
has made no use of the domain name in connection with a bona fide offering
of goods or services; that Respondent’s claim that the domain name is part
of a larger project in development is unsupported and without evidence;
and that Respondent is in the business of registering domain names in the
hopes of selling the rights in the domain names for a profit rather than
for the purpose of using the domain name for legitimate purposes.
To show bad faith, Complainant states that Respondent registered the
domain name <audiopoint.com> without a bona fide intent to use the domain
name and with the primary purpose of selling or transferring the domain
name for consideration in excess of documented out-of-pocket costs directly
related to Respondent’s development of the domain name.
Complainant further contends that Respondent intentionally misled Complainant
when it registered the domain name under the registrant name “AudioPoint”,
causing Complainant to believe Respondent was engaged in a legitimate business.
Complainant claims to have been further misled when Respondent asserted
that it had invested “time and money” into developing the domain name as
part of its platform for a global web communications company. Complainant
argues that these statements were intentionally misleading because they
are completely unsupported.
Complainant also points out that the actions it attributes to the Respondent
are part of a pattern of practice, citing other cases in which Respondent
was accused of cybersquatting.
Finally, Complainant points to Respondent’s active communication with
Complainant regarding the sale of <audiopoint.com> as proof of Respondent’s
bad faith use.
B. Respondent
In its defense, Respondent alleges that Complainant does not have enforceable
rights to the mark AUDIOPOINT because it filed its trademark application
four months after the domain name was registered.
Respondent contends that it has a legitimate interest in the domain
name, citing its plan to use the name within its “Point Network”.
This network, consisting of over sixty domain names containing the suffix
“point.com”, would provide users with easily accessible information and
links to web sites related to the various descriptive terms found in the
domain name; thus, <audiopoint.com> would direct users to audio hardware,
software, service, and companies. Other domain names in the series
include <mediapoint.com>, <cablepoint.com> and <deliverypoint.com>.
In response to the allegations of bad faith, Respondent challenges Complainant’s
interests in the AUDIOPOINT mark. Particularly, Respondent claims
that no trademark existed at the time the domain name was registered, making
Complainant’s burden of proving bad faith registration impossible to satisfy.
Further, Respondent asserts that it had no knowledge of Complainant at
the time it registered the contested domain name.
Respondent further contends that Complainant engaged in Reverse Domain
Name Hijacking due to the fact that Complainant knew Respondent registered
the disputed domain before Complainant had ever filed a trademark application.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is
to prove:
(i) That the domain name registered by the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant
has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect
of the domain name; and
(iii) That the domain name has been registered and used in bad faith.
A. Similarity of the Mark and Domain Name
Although the extent of Complainant’s rights in the mark AUDIOPOINT is
ambiguous as of the time Respondent registered the domain name, the first
factor of Policy ¶ 4(a) examines the status of Complainant’s trademark
rights at the time the Complaint is filed, not at the time the domain name
is registered. Document Technologies, Inc. v. International Electronic
Communications Inc., Case No. D2000-0270 (WIPO June 6, 2000). Consequently,
Respondent’s focus on Complainant’s uncertain trademark rights as of January
1999 is misplaced with regard to this first factor. At the time it
filed the Complaint, Complainant was using the AUDIOPOINT mark in connection
with the sale of goods and services. 1
Having established that Complainant has rights in the AUDIOPOINT mark,
it is simple to complete the analysis under the first factor. The
domain name <audiopoint.com> is virtually indistinguishable from Complainant’s
mark AUDIOPOINT. The only difference between Complainant’s name and
mark and the disputed domain name is the addition of “.com”. Therefore,
the Panel concludes that the Complainant has satisfied paragraph 4(a)(i)
of the Policy.
B. Legitimate Interest in the Domain Name
Paragraph 4(c)(i) of the policy states that respondents may establish
legitimate interests in a domain name by presenting evidence of use of,
or demonstrable preparations to use, the domain name before any notice
of the dispute. Respondent’s mere assertion that it planned to use
<audiopoint.com> within its Point Network does not constitute “demonstrable
preparations.” See World Wrestling Federation Entertainment, Inc.
v. Ringside Collectibles, Case No. D2000-1306 (WIPO January 24, 2001).
Nor does Respondent’s purchase of sixty domain names, all of which end
with the suffix “point” signify “demonstrable preparations”. If it
did, it would allow cybersquatters to protect their unlawful activity by
engaging in wholesale cybersquatting all at once, through the registration
of multiple, related domain names, and then claiming that all of the names
were part of a planned future use. Moreover, since the purchase of
the first “point” site, three years have passed, and Respondent has submitted
no evidence of any actions to develop the alleged Point Network.
See Helen Fielding v. Anthony Corbert aka Anthony Corbett, Case No. D2000-1000
(WIPO September 25, 2000) (Respondent’s allegations of legitimate use overcome
by Respondent’s failure to use the domain name for two years).
This is not to say that a respondent must have a fully developed website
in order to show a legitimate interest. Indeed, speculation in domain
names when done without any intent to profit from others’ trade mark rights
may itself constitute a bona fide activity under paragraph 4(c)(i).
See, e.g. Kis v. Anything.com Ltd., Case No. D2000-0770 (WIPO November
20, 2000); Allocation Network GmbH v. Steve Gregory, Case No. D2000-0016
(WIPO March 24, 2000); General Machine Products Co. V. Prime Domains, Case
No. FA92531 (NAF March 16, 2000). However, Respondent does not allege
that it has engaged in domain name speculation, nor that it has any interest
arising therefrom.
In order to rebut Complainant’s prima facie showing, Respondent should
have provided this Panel with concrete evidence of its preparations to
use <audiopoint.com>. See Document Technologies, Inc., supra (once
complainant makes prima facie showing that Respondent lacks a legitimate
interest, the burden of production shifts to the Respondent to rebut that
showing, but the burden of proof always stays on the Complainant).
Respondent has failed to do so. Accordingly, this Panel finds that
Respondent has no legitimate interest in the disputed domain name.
C. Bad Faith
Complainant alleges bad faith based on Respondent’s registration of
<audiopoint.com> under the name AudioPoint rather than eCorp.
On the facts of this case, though, this factor does not establish bad faith.
There is no evidence that Respondent used fictitious names or pseudonyms
to hide his true identity. Cf. Home Director, Inc. v. HomeDirector,
Case No. D2000-0111 (WIPO April 11, 2000) (finding cybersquatting based,
in part, on respondent Folkening’s use of multiple pseudonyms to mask his
identity). Although false contact information is a bad faith factor
under Section 43(d) of the Lanham Act, 15 U.S.C. § 43(d)(1)(B)(i)(VII),
2 that provision is not implicated where there is no evidence that Respondent
attempted to hide its identity, prevent service of process, or make contacting
Respondent difficult or impossible. Here, Respondent provided information
that appears to have been accurate with regard to the administrative, technical,
and billing contact for the domain name. Moreover, Complainant never
alleged that it had difficulty contacting Respondent. For these reasons,
Complainant has failed to establish bad faith registration on this ground.
Complainant also claims that Respondent registered <audiopoint.com>
with the intention of transferring the domain name to Complainant for valuable
consideration in excess of documented out-of-pocket costs in violation
of 4(b)(i) of the Policy. Although Respondent did engage in negotiations
over the possible sale of the domain name, those negotiations do not prove
a bad faith registration when it is undisputed that Respondent never heard
of Complainant or its mark at the time of registration. Indeed, it
appears that Complainant did not even develop any protectible common law
trademark rights until well after Respondent’s registration of the domain
name. See E-Duction, Inc,. v. Zuccarini, Case No. D2000-1369 (WIPO
February 5, 2001). Accordingly, this Panel finds that Complainant
has failed to show bad faith registration.
Paragraph 4(a)(iii) of the policy requires Complainant to prove both
bad faith use and bad faith registration. Id. Because
the Complainant has failed to show bad faith registration, it is unnecessary
for the Panel to address the element of bad faith use.
D. Reverse Domain Name Hijacking
Respondent has asked the Panel to make a finding of attempted Reverse
Domain Name Hijacking. Rule 1 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.” See also Rule 15(e). To prevail on
such a claim, Respondent must show that Complainant knew of either the
Respondent’s unassailable right or legitimate interest in the disputed
domain name or the clear lack of bad faith registration and use, and nevertheless
brought the Complaint in bad faith. See, e.g., Sydney Opera House
Trust v. Trilynx Pty. Ltd., Case No. D2000-1224 (WIPO, October 31, 2000)
Further, when determining whether the Complainant brought the Complaint
in bad faith, the Panel should consider both “malicious intent and recklessness
or knowing disregard of the likelihood that the respondent possessed legitimate
interests.” Goldline International, Inc. v. Gold Line , Case No.
D2000-1151 (WIPO January 4, 2000) citing, Loblaws, Inc. v. Presidentchoice.inc
/ Presidentchoice.com, Case Nos. Af-0170a to -0170c (eResolution, June
7, 2000)
Notwithstanding the weakness of Complainant’s bad faith claim, the Panel
concludes that Complainant’s conduct does not rise to the level of Reverse
Domain Name Hijacking. A key fact is that Mr. Unger checked to see
if the <audiopoint.com> name was available on February 6, 1999 and learned
that it was, but then, when he went back to register it on February 9,
1999, found that eCorp had snatched up the name in the intervening days.
Complainant may well have been suspicious of this timing, and may have
reached the conclusion that eCorp somehow learned that Complainant had
checked the availability of that name. Those suspicions may have
been deepened when Complainant learned that eCorp was associated with Mr.
Folkening, who has a history of cybersquatting. Furthermore, Respondent’s
communications concerning the sale of <audiopoint.com>, coupled with
its failure to show Complainant any evidence of a legitimate interest in
the domain name, may have given Complainant a basis for believing that
Respondent was engaged in the practice of cybersquatting. Accordingly,
the Panel does not find Reverse Domain Name Hijacking.
7. Decision
Complainant has failed to establish that Respondent registered <audiopoint.com>
in bad faith. The Panel therefore denies the Complainant’s request that
the domain name be transferred from Respondent to Complainant.
David H. Bernstein
Presiding Panelist
David E. Sorkin
Robert A. Fashler
Panelists
Dated: June 14, 2001
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