800 Response Marketing, LLC v. Nalbant Holding AS
Claim Number: FA1508001632497
Complainant is 800 Response Marketing, LLC (“Complainant”), represented by Jeffrey Handelsman of Greenblum & Bernstein, PLC, Virginia, USA. Respondent is Nalbant Holding AS (“Respondent”), represented by Matthew Brown of UDRP POLICE DBS, London, UK.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <callfinder.com>, registered with Onlinenic 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 7, 2015; the Forum received payment on August 7, 2015.
On August 11, 2015, Onlinenic Inc confirmed by e-mail to the Forum that the <callfinder.com> domain name is registered with Onlinenic Inc and that Respondent is the current registrant of the name. Onlinenic Inc has verified that Respondent is bound by the Onlinenic 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 August 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 1, 2015 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@callfinder.com. Also on August 12, 2015, 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 1, 2015.
An Additional Submission was timely received from Complainant on Sept. 4, 2015.
An Additional Submission was timely received from Respondent on Sept. 8, 2015.
On Sept. 4, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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
Policy ¶ 4(a)(i)
Complainant has rights in the CALLFINDER mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,050,640, registered on November 1, 2011). Respondent’s <callfinder.com> domain name is identical to the CALLFINDER mark.
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <callfinder.com> domain name. In addition, Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website constitutes an inactive use, and because, in the past, the website resolved to a parked page offering the domain for sale.
Policy ¶ 4(a)(iii)
Respondent registered and uses the <callfinder.com> domain name in bad faith because the domain was registered for the purpose of selling it for profit, and because its current inactive use is disruptive to Complainant’s business operations.
B. Respondent
Policy ¶ 4(a)(i)
Respondent’s <callfinder.com> domain name was created on November 28, 1999, and as such, predates Complainant’s USPTO registration by 12 years. Complainant has not demonstrated any common law rights in the disputed domain name, as Complainant’s supposed long and continuous use of the disputed domain name is insufficient to show acquired distinctiveness.
Policy ¶ 4(a)(ii)
Respondent has not failed to use the <callfinder.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent is in the process of developing a resolving website. In addition, Complainant’s rights in the CALLFINDER mark do not prevent Respondent from having rights or legitimate interests in the <callfinder.com> domain name because it is composed of generic terms.
Policy ¶ 4(a)(iii)
Respondent neither registered nor uses the <callfinder.com> domain name in bad faith, as the domain was registered 12 years prior to Complainant’s USPTO registration. Because of this, Complainant’s argument should be barred by the Doctrine of Laches. Further, Complainant’s bringing this complaint constitutes reverse domain name hijacking.
C. Additional Submissions
Complainant’s and Respondent’s Additional Submissions provide additional case support for their arguments.
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 alleges it has rights in the CALLFINDER mark through its registration with the USPTO (Reg. No. 4,050,640, registered on November 1, 2011, filed on Nov. 2, 2010 and claiming first use date of June 15, 2011. The <callfinder.com> domain name was registered on Nov. 28, 1999.
Paragraph 4(a)(i) of the Policy requires Complainant to show that Respondent’s domain name is identical or confusingly similar to Complainant’s marks. This provision necessarily implies that Complainants’ rights predate the registration of Registrant’s domain name. See Intermark Media, Inc. v. Wang Logic Corp., FA139660 (NAF Feb. 19, 2003). As Complainant has not demonstrated that its rights predate Registrant’s domain name, Complainant has not satisfied paragraph 4(a)(i) of the Policy.
Because the Panel has determined that Complainant has not satisfied this requirement of Policy § 4(a)(i), there is no need to determine whether Respondent has rights or legitimate interests in the domain name or whether Respondent registered or used the domain name in bad faith. However, the Panel also determines that this finding of lack of Complainant’s rights in the CALLFINDER mark as of the date of registration of Respondent’s domain name negates any claim of bad faith registration of the domain name at issue by Respondent. See, LD Products, Inc. v. Viet Tech, FA1474227 (NAF Feb. 21, 2013).
Reverse Domain Name Hijacking
Complainant is a legitimate trademark owner who was attempting to improperly apply the Policy to a domain name which pre-dates its trademark rights.
While this Panel notes that the filing of this Complaint and of the Additional Submission were ill-advised, this Panel cannot find, on the record before it, that the Complaint was filed in bad faith with the knowledge that it could not prove the requisite elements of the Policy. See, Netro Corporation v. James Koustas, FA109723 (NAF June 12, 2002). (“This is a close call, but the Panel has determined not to find that Complainant has attempted a Reverse Domain Name Hijacking. True, the case was very weak and probably should not have been filed, but the facts do not justify a finding under Rule 15(c)”). Therefore, this Panel does not find Reverse Domain Name Hijacking based upon the evidence and pleadings submitted.
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 <callfinder.com> domain name REMAIN WITH Respondent.
David A. Einhorn, Panelist
Dated: September 18, 2015
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