TeleSign Corporation, a California Corporation v. Domain Administrator / Vertical Axis Inc.
Claim Number: FA1408001575510
Complainant is TeleSign Corporation, a California Corporation (“Complainant”), represented by James R. Barlow Coelho of Phillips Law Partners, LLP, California, USA. Respondent is Domain Administrator / Vertical Axis Inc. (“Respondent”), represented by Ari Goldberger of Esqwire.com, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <phoneid.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies 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.
Paul M. DeCicco, Esq., Diane Thilly Cabell, Esq., and the Honorable Charles K. McCotter, Jr. (Ret.) (Chair) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 18, 2014; the National Arbitration Forum received payment on August 18, 2014.
On August 18, 2014, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <phoneid.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 August 19, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 2014 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@phoneid.com. Also on August 19, 2014, 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.
A timely Response was received and determined to be complete on September 8, 2014.
On September 16, 2014, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Paul M. DeCicco, Diane Thilly Cabell, and the Honorable Charles K. McCotter, Jr. (Ret.) (Chair) as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <phoneid.com> domain name, the domain name at issue, is confusingly similar to Complainant’s PHONEID mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent
Respondent contends that there is no basis for transferring the <phoneid.com> domain name to Complainant. First, Respondent has a legitimate interest in the disputed domain name because it incorporates a combination of two generic words “Phone Id.” Second, the disputed domain name was purchased by the Respondent on September 7, 2005, over 7 years before Complainant filed to register its own trademark.
Complainant has not shown that the disputed domain name was registered and is being used in bad faith. The fact that Complainant’s trademark post-dates Respondent’s registration of the disputed domain name by seven (7) years precludes finding bad faith registration. The Complaint should be barred by the doctrine of laches because Complainant waited over (9) years to initiate this proceeding. Respondent contends that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute.
Complainant, TeleSign Corporation, owns the PHONEID mark through its United States Patent and Trademark Office ("USPTO") registration (Reg. No. 4,291,241 registered Feb. 19, 2013). Complainant uses the PHONEID mark for telephone verification and information services. Complainant has used the mark in commerce since about June 30, 2005.
Respondent, Domain Administrator / Vertical Axis, registered the <phoneid.com> domain name on September 7, 2005. Respondent’s registration of the disputed domain name predates Complainant’s registration of the PHONEID mark by seven (7) years.
Respondent purchased the <phoneid.com> domain name because it is comprised solely of two common English words “phone” and the short hand for “identification,” “id,” Respondent did not register the disputed domain name with Complainant’s trademark in mind and had no knowledge of Complainant, its web site, its business name or trademark when registering the domain name over nine (9) years ago.
Respondent hosts underdeveloped domain names with domain name parking services which pay a share of the advertising revenue they generate. The <phoneid.com> domain name is hosted with a service which places pay-per-click links on the page, based on an automated Google advertiser feed. The disputed domain name resolves to a page with descriptive links related to the common meaning of “phone.”
For over the nine (9) years, the <phoneid.com> domain name has been used in connection with its common meaning, relating to “phones.” Respondent does not have any links related to Complainant or its business on its webpage. The links are not selected by Respondent and are auto-generated by Google and are constantly changing based on Google’s keyword advertising inventory and user search behavior. Respondent owns thousands of domain names of which Google auto-generated links appear on any given domain at any time.
The <phoneid.com> domain name is made of common descriptive terms. Respondent was not targeting Complainant’s trademark. Respondent registered the domain name seven (7) years before Complainant registered its PHONEID mark. Respondent has legitimate interests in the domain name. Respondent’s registration and use of the domain name is not bad faith registration and use. By instituting this proceeding, Complainant has engaging in reverse domain hijacking.
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.
Complainant has rights in the PHONEID mark under Policy ¶ 4(a)(i) through registration with the USPTO. Complainant’s rights in the PHONEID mark date back to the February 29, 2012 filing date of its trademark application. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant further contends that its rights in the mark date back as early as June 30, 2005, when it first began using the mark. Complainant notes that the mark was first used in commerce beginning at or about August 31, 2005. However, Complainant has not submitted evidence of secondary meaning in the PHONEID mark prior to September 7, 2005, the date of Respondent’s registration of the <phoneid.com> domain name.
Respondent accepts Complainant’s trademark as valid, albeit recently obtained.
The <phoneid.com> domain name is identical to the PHONEID mark under Policy ¶ 4(a)(i). The two are identical but for the affixation of the generic top-level domain (“gTLD”) “.com.” See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Respondent is not commonly known as <phoneid.com> under Policy ¶ 4(c)(ii), as there is no evidence in the record to support a connection between Respondent and the domain name. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant claims that Respondent uses the disputed domain name as a parked website, which has not materially changed since 2007. Complainant contends that the landing page features several phone related links and displays the PHONEID mark.
Registration and use of a common word domain name establishes Respondent’s legitimate interest. The registration of the <phoneid.com> domain name, that incorporates common descriptive terms, establishes Respondent’s legitimate interest, since there is no evidence Respondent targeted Complainant’s trademark. Energy Source Inc. v. Your Energy Source, FA. 96364 (Nat. Arb. Forum Feb. 19, 2001)(“[r]espondent has persuasively shown that the domain name is comprised of generic and/or common descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”); see also LML Investments LLC v. P.A. Gordon, FA 1571756 (Nat. Arb. Forum Sept., 2014) (“Such use of the disputed domain name in connection with its descriptive meaning establishes Respondent’s rights and interests in the disputed domain name.”).
The registration of domain names that contain common words are permissible on a first-come, first served basis, and such registration establishes the Respondent’s legitimate interest, provided the domain was not registered with a trademark in mind. See National Gardening Association, Inc. v. CK Ventures, FA 1294457 (Nat. Arb. Forum Feb. 16, 2010) (“common words and descriptive terms are legitimately subject to registration as domain names on a first come, first-served basis”). Respondent’s rights and legitimate interest in the disputed domain name are established because Respondent registered the domain name based on its common descriptive meaning and not to target a trademark. CNRV, Inc. v. Vertical Axis, Inc., FA 1300901 (Nat. Arb. Forum May 3, 2010)(legitimate interest is established where “domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks”).
Corroboration that Respondent registered the <phoneid.com> domain name based on its common meaning -- and not because of Complainant’s trademark -- is the fact that Respondent has registered numerous other common word domain names that incorporate the word “Phone”. Likewise, Respondent has registered many domain names that incorporate the suffix “Id”.
Respondent’s use of the <phoneid.com> domain name in connection with its descriptive meaning is a legitimate interest. Respondent’s legitimate interest is bolstered by the fact that it uses the disputed domain name to display descriptive advertising links to items related to “phones.” Respondent’s use of the disputed domain name in connection with posting of descriptive links is a bona fide offering of goods or services. Libertad Servicios Financeros, S.A. DE C.V. S.F.P. v. Telepathy, Inc., D2011-1635 (WIPO Jan. 10, 2012); see also Novartis AG v. Name Administration Inc. (BVI), FA 1548210, (Nat. Arb. Forum Apr. 24, 2014) (Registration of descriptive domain names to advertise by hyperlink non-competitive categories of goods or services that bear relation to the terms in the domain names is a Policy ¶ 4(c)(i) bona fide offering of goods. The “domain names are not used to target the types of products sold by any specific trademark holder, only a broad range of goods related to the ‘key words’ that underlie the domain name.”).
Complainant has not shown that the disputed domain name was registered and is being used in bad faith. The fact that Complainant’s trademark post-dates Respondent’s registration of the disputed domain name by seven (7) years precludes a finding of bad faith registration. See LML Investments LLC v. P.A. Gordon, FA 1571756 (Nat. Arb. Forum Sept., 2014) (“Respondent could not have registered the domain name to target Complainant’s mark as Complainant did not register the Country Girl mark for 7 years after Respondent registered the disputed domain name. As such, the Panel finds no evidence of bad faith under Policy ¶ 4(a)(i).”).
As Respondent has legitimate interests in the<phoneid.com> domain name, Respondent did not register or use the disputed domain in bad faith. See Novartis AG v. Name Administration Inc. (BVI), FA 1548210, (Nat. Arb. Forum Apr. 24, 2014) (“Since the Panel concludes that Respondent has rights or legitimate interests in the <clearcare.com> domain name pursuant to Policy ¶ 4(a)(ii), it also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”).
It is not bad faith to offer a descriptive domain name for sale where the domain name is registered for its inherent value as a common word and not for the purpose of targeting a trademark. See LML Investments LLC v. P.A. Gordon, FA 1571756 (Nat. Arb. Forum Sept., 2014) ( “[S]ince the Panel finds that Respondent has rights in the domain name at issue which far predate and are superior in some respects to those of Complainant, it is clear that Respondent is legally free to offer the domain for sale at any price it wishes.”); see also Instrumentation Northwest, Inc. v. INW.COM c/o Telepathy, Inc., D2012-0454 (June 1, 2012)(noting a party is free to sell a domain name for a profit where the domain name is registered because of its inherent value as a three-letter domain or a common word). There is no evidence Respondent targeted Complainant’s PHONEID mark with respect to registration and use of the <phoneid.com> domain name.
Laches
Respondent contends that Complainant should be barred by the doctrine of laches as the disputed domain name was registered 9 years ago. However, as Complainant has failed to prove the second and third elements, it is unnecessary to consider laches as a potential defense in this case.
Reverse Domain Name Hijacking
Complainant has engaged in reverse domain name hijacking by initiating this dispute. Complainant is attempting to deprive Respondent, the registered holder of the <phoneid.com> domain name, of its rights to use the disputed domain name. Complainant knew or should have known that it would be unable to prove at least two of the elements needed to prevail. Thus, the Panel finds that reverse domain name hijacking has occurred. See Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) (finding that the 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.”).
Complainant 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 <phoneid.com> domain name REMAIN WITH Respondent.
Paul M. DeCicco, Esq., Diane Thilly Cabell, Esq., and
the Honorable Charles K. McCotter, Jr. (Ret.) (Chair), Panelists
Charles K. McCotter, Jr.
For the Panel
Dated: September 30, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page