Katch, LLC v. Thomas Korula / Mahaya
Claim Number: FA1508001633953
Complainant is Katch, LLC (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Thomas Korula / Mahaya (“Respondent”), represented by Douglas Barnes of CYR BARNES LLP, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <katch.me>, <katchapp.co>, and <ktch.tv>, registered with Godaddy.Com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James Bridgeman, Chair.
The Honourable Neil Anthony Brown QC, Panelist.
Honorable John J. Upchurch, (Ret.), Panelist.
Complainant submitted a Complaint to the Forum electronically on August 18, 2015; the Forum received payment on August 19, 2015.
On August 19, 2015; Aug 25, 2015, Godaddy.Com confirmed by e-mail to the Forum that the <katch.me>, <katchapp.co>, and <ktch.tv> domain names are registered with Godaddy.Com and that Respondent is the current registrant of the names. Godaddy.Com has verified that Respondent is bound by the Godaddy.Com 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 26, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 15, 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 <katch.me>, <katchapp.co>, and <ktch.tv>. Also on August 26, 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 14, 2015.
Complainant filed a timely Additional Submission on September 21, 2015.
On September 23, 2015 pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed James Bridgeman as Chair and The Honourable Neil Anthony Brown QC and Honorable John J. Upchurch, (Ret.) as Panelists.
Respondent filed a timely Additional Submission on September 28, 2015.
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
Complainant initially relied on its claimed rights in the KATCH trademark which is the subject of U.S. Trademark Application No. 86/490690 filed by Complainant on December 26, 2014 for goods and services in international class 42.
Complainant also asserts common law rights in the KATCH MARK by reason of its claimed use of the mark in connection with goods and services identified in the application since March 2, 2015.
Having been challenged in the Response, that it had failed to make any claims to common-law rights, Complainant submitted inter alia, a Declaration of Patrick Quigley, the Chief Executive Officer of Complainant, filed as an Exhibit to Complainant’s Additional Submissions, to the effect that Complainant provides what he describes as “an innovative software platform and hosted solution that enables brands to engage and monetize every visitor to their website – event those who don’t transact…( and enables customers) to identify and bid on advertising opportunities and manage and tract the effectiveness of their advertisements.” He also sets out the history of how Complainant, originally named Vantage Media LLC, decided to rebrand and selected KATCH as its new corporate name and trademark on December 3, 2014. On December 17, 2014 Complainant acquired the domain name <katch.com> and commenced notifying external parties about its decision to rebrand. On December 26, 2014, Complainant filed an application with the USPTO to register KATCH, details of which are set below and on February 26, 2015 Complainant filed Restated Articles of Organization before the Secretary of State of California, changing its name to Katch, LLC.
Complainant submits that on March 2, 2015 all outward materials, including email, signature blocks, business cards and letterheads were rebranded Katch LLC. On the same date Respondent launched a website to which the domain name <katch.com> resolves. Mr. Quigley adds that subsequently Respondent attended two prominent industry conferences namely LeadsCon and the Montgomery Summit as KATCH, and has received recognition inter alia by inclusion in the Deloitte Technology Fast 500 and has been named as one of the fastest growing companies in Los Angeles by the Los Angeles Business Journal’s 100 Fastest Growing Private Companies. He asserts that Complainant is ranked as second in the nation for fastest-growing and marketing company and 29th fastest growing company in the U.S. with more than $100 million in revenue by Inc 5000.
Complainant submits that the disputed domain name <katch.me> is confusingly similar to its KATCH mark because the disputed domain name contains Complainant’s mark in its entirety with the addition of the ccTLD extension <.me> which it argues may be ignored for the purpose of the comparison, citing Bank of Am. Corp v. McCall FA 135012 (Nat. Arb. Forum Dec.31, 2002). The disputed domain name <katchapp.co> is confusing similar because it incorporates
Complainant’s KATCH mark in its entirety with the addition of the generic term “app”, which when used in connection with Complainant’s KATCH mark, denotes the genus of Complainant’s goods and therefore does not constitute distinctive matter. Complainant further submits that the disputed domain name <ktch.tv> is also confusingly similar to Complainant’s KATCH mark because the omission of the letter from “a” from Complainant’s mark does not eliminate a likelihood of confusion. Complainant argues that when a domain name eliminates a letter from a complainant’s mark yet retains an aural similarity, transfer of the
domain name is appropriate, citing The Gap, Inc. v. Hanying Li, FA 1331209 (Nat. Arb. Forum Jul. 29, 2010), Hallelujah Acres, Inc. v. Manila Industries, Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) and Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not a licensee, distributor, retailer or subsidiary of Complainant. Complainant asserts that it has prior rights in the KATCH mark which precede the registration of the disputed domain names. Complainant filed an Intent to Use trademark application at the USPTO on December 26, 2014 and has continuously used the KATCH mark in commerce since March 2, 2015. On April 9, 2015, Complainant contacted Respondent
by letter regarding Respondent’s registration of the domain name <katchkats.com> “and its prior infringing use of the trademark KATCHKATS on the site” which upon information and belief Respondent began using around March 22, 2015. Following receipt of this communication from Complainant, Respondent took down the <katchkats.com> site. However, Respondent then registered and acquired the disputed domain names.
Complainant submits that Respondent is clearly trying to capitalise on Complainant’s mark to gain revenue by falsely suggesting that Complainant is affiliated with the disputed domain names and or sponsors or approves Respondent’s products.
Complainant adds that Respondent is not commonly known by the disputed domain names. Also, the term “KATCH” is neither geographically descriptive nor has it any descriptive or dictionary meaning.
Alleging that the disputed domain names were registered and are being used in bad faith, Complaint submits that it enjoys exclusive rights to the KATCH mark by virtue of its above trademark “application and prominent use of that mark”. Complainant has never consented to Respondent’s use of its mark in the disputed domain name and it is unlikely that the registrant would have selected the name without knowing of the reputation of the KATCH mark. Complainant alleges that Respondent acquired the <katch.me> domain name without any bona fide basis for such a registration in an attempt to capitalize unfairly on the goodwill of Complainant’s trademark, by creating a false impression that services provided on Respondent’s website are affiliated with Complainant. Complainant submits that it has received numerous emails directed for Respondent. Citing Perot Sys. Corp. v. Perot.net FA 95312 (Nat. Arb. Forum Aug. 29, 2000).
Finally, Complainant states that Respondent is passively holding the disputed the disputed domain names <katchapp.co> and <ktch.tv> which supports a finding of bad faith registration and use under Policy ¶ 4(a)(iii).
B. Respondent
Respondent submits inter alia that Complainant has failed to prove rights in the KATCH mark; that the above-mentioned application for registration by the USPTO is still merely an application in progress; and that the consensus view is that a trademark application alone does not establish sufficient rights for Complainant to make a prima facie case pursuant to UDRP ¶ 4(a)(i) citing Boston Private Financial Holdings, Inc. v. Eric Kuniholm / Beacon Capital Management Advisors, FA1503001611880 (Nat. Arb. Forum May 21, 2015), Wave Indus., Inc. v. Angler Supply, FA0407000304784 (Nat. Arb. Forum Sept. 20, 2004) and Razorbox, Inc. v. Skjodt, FA0303000150795 (Nat. Arb. Forum May 9, 2003).
Respondent states that Complainant’s trademark application is currently subject to a non-final denial and it is far from clear whether Complainant will ultimately be able to register a federal trademark. Accordingly its application should be given no weight.
Respondent submits that Complainant has not presented a prima facie case satisfying the requirement that Complainant has rights enforceable under UDRP ¶ 4(a)(i); Complainant has not made even a conclusory claim of common law rights in the KATCH mark; and has failed to present any evidence from which such a claim could be implied.
Respondent asserts that Complainant has used the Katch mark with respect to a bona fide offering of the Katch Service since March 21, 2015. On March 17, 2015 staff members of Respondent began working on a side project – a service that would capture otherwise transitory streaming video from the Meerkat live streaming application (the “Katch Service”). Respondent called this project “Katch” and first made it available for testing outside the company on March 21, 2015 at the domain address <katchkats.com>, which was registered on March 20, 2015. Respondent states that the Katch Service received some initial favorable publicity, including a prominent mention in Product Hunt on March 22, 2015. On or about April 3, Respondent, noting the popularity of the Katch Service for Meerkat, decided to “pivot” and focus primarily on the Katch Service. In connection with the pivot, Respondent made plans to include support for the Periscope streaming video service. Accordingly, Respondent no longer believed that <katchkats.com> was the appropriate domain, because of its connection with Meerkat. On May 14, 2015, Respondent registered the domain name <ktch.tv> and has been actively using it as a URL shortener for links to content generated by the Katch Service. On May 26, 2015, Respondent registered the domain name <katchapp.co>, and prepared to use it to provide information about a possible downloadable “app” relating to Katch Service. On July 6, 2015, Respondent acquired the domain name <katch.me> for the purpose of operating the Katch Service, and relaunched the Katch Service at that domain address on July 14, 2015.
After an analysis Respondent determined that Complainant’s cease and desist letter was not sent in good faith, as the success of Complainant’s application to register the KATCH mark was far from assured and Complainant’s proposed field of use and actual use did not create a likelihood of confusion with Respondent’s proposed and actual use of the KATCH mark. Accordingly, Respondent filed its own trademark application, serial number 86/622883, on May 7, 2015.
Respondent states that the <katch.me> domain name was originally registered on September 12, 2012, long before Complainant claims to have acquired any rights in the KATCH mark and before Complainant applied for trademark registration. Complainant began its rebranding process knowing that this domain had been registered.
Respondent argues that even if Complainant’s minor examples of prior use and its trademark application are credited, Respondent’s use of the KATCH mark is bona fide because there is no substantial likelihood of confusion between Respondent’s use of the KATCH mark and Complainant’s use.
The Parties’ goods and services and respective marketing channels of trade are dissimilar. Users of Respondent’s services are not making sophisticated or careful buying decisions whereas Complainant’s consumers are sophisticated, discriminating purchasers who are less likely to be confused about the origin of goods offered under Complainant’s mark. “In making purchasing decisions regarding 'expensive' goods, the reasonably prudent person standard is elevated to the standard of the 'discriminating purchaser” Weiss Assocs., Inc. v. HRL Assocs., Inc., 902 F.2d 1546, 1548, 14 U.S.P.Q.2d 1840, 1841 (Fed. Cir. 1990)
Complainant’s products are easily distinguished from Respondent’s product. Complainant’s products could be best described at a high level as being “about advertising”. That is, they are not advertising themselves, nor are they a form of content that carries advertising, but rather they are services intended to help businesses that themselves conduct advertising. In contrast, Respondent’s product provides individual users of live streaming video services with the ability to capture and play back those live streaming videos.
Respondent does not claim that Respondent’s mark is famous, and this is consistent with the modest, recent amounts of traffic reflected in Respondent’s Alexa ranking for <katch.com>.
Respondent states that there is no evidence of actual marketplace confusion. Complainant has made three indirect claims of actual confusion, most prominently that Respondent sought to somehow associate Respondent with Complainant by listing Complainant as the legal contact for Respondent in Respondent’s Terms of Service. This was, however, due to a typographical error by Respondent that primarily resulted in Respondent failing to receive important legal notices and resulted in no harm to Complainant other than the minor inconvenience of receiving some no doubt puzzling emails. This is a type of problem handled routinely by co-existing identical or similar brands, usually by courteously alerting the other party of the problem. Respondent promptly fixed the email address in question upon learning of it.
Complainant’s second claim of actual confusion is embedded in Complainant’s first cease and desist letter, and it actually supports Respondent’s position that there is no real marketplace confusion. Despite Complainant’s minimal online visibility as “Katch” at that time, the author was able to quickly and easily distinguish between Complainant and Respondent, and provided a clarifying note to that effect.
Complainant’s third claim of actual confusion, embedded in Complainant’s second cease-and-desist letter, is based on the fact that using the term “katch” in Google, one receives links to both Respondent and Complainant. Note, however, that the summary information provided by the two links makes it very straightforward for someone to distinguish between the two offerings (see discussion above regarding the dissimilarity of the goods and services).
At this point the parties have co-existed for approximately five months, and if these are the best examples that Complainant can provide of “confusion”, then there is no actual confusion in the marketplace.
Respondent’s registration and use of the disputed domain names is in good faith. Respondent’s only interest in the disputed domain names is for the purpose of operating the Katch Service, which is an active and growing service with over 20,000 registered users.
Addressing Complainant’s submission that the registration of <ktch.tv> and <katchapp.co> are in bad faith because Respondent has not used them yet, Respondent states that it has simply not yet launched the aspects of its service planned for those domain names. Respondent is in the process of developing a mobile “app” for delivering the Katch Service (thus the registration of <katchapp.co>) and plans to provide the viewing interface for captured videos using the <ktch.tv> domain name.
Respondent states that it has not targeted Complainant in any way. Respondent began using the KATCH mark prior to learning of Complainant’s claim to conflicting rights in the mark. Because of the great dissimilarity between Complainant’s and Respondent’s services and markets, Respondent has not received any benefit and does not expect to receive any benefit based on Complainant’s use of the KATCH mark. Respondent is not a competitor of Complainant and has no interest in causing any harm to Complainant. Complainant’s only example of Respondent “targeting” Complainant was Respondent’s accidental listing of a <katch.com> email address as Respondent’s legal contact, which would be more aptly described as Respondent targeting its own foot.
Finally, Respondent submits that the UDRP is not an appropriate mechanism for resolving this dispute. As recently noted in Sweet Art Company LLC v. Sweet Art, Inc., FA1505001617812 (Nat. Arb. Forum July 31, 2015): The UDRP was designed to handle only a "relatively narrow class of cases of 'abusive registrations.’" Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy ¶ 4.1(c) (Oct. 24, 1999), <http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm> (noting that "the policy's administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger's trademark)"). "The Policy covers only cybersquatting and cyber piracy, that is, instances 'where the domain name registrant's business activities (to the extent that they exist at all) are merely a pretext designed to camouflage the registrant's intent to exploit the trademark value of a domain name.'" Public Co. Accounting Oversight Bd. v. Nagel, FA 290974 (Nat. Arb. Forum Aug. 17, 2004) (quoting Palace Holding SA v. Priston Entmt. Ltd., D2003-0705 (WIPO Dec. 5, 2003)).
Respondent submits that Complainant cannot seriously claim that Respondent’s business activities are non-existent or pretextual. While Complainant’s application for trademark registration is more senior, Complainant and Respondent both have good faith trademark applications in progress with the USPTO covering their respective (very different) businesses. The USPTO has provided the appropriate forum for resolving these issues, and the UDRP is ill-suited for this purpose.
C. Complainant’s Additional Submissions
In Additional Submissions, Complainant asserts its claim to common law rights in the trademark KATCH on the basis that the mark had acquired a secondary meaning in the minds of consumers. Complainant’s use of the KATCH mark has been ongoing and continuous since at least as early as December 17, 2014 when Complainant acquired the domain <katch.com> and first began notifying persons outside of the company of the re-brand, and given that Complainant has used the KATCH mark in commerce since at least as early as March 2, 2015, Complainant has developed common law rights in the KATCH trademark. Citing Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights sufficient when use was ongoing and continuous).
Complainant argues that furthermore its KATCH mark has acquired secondary meaning in the minds of consumers given that (i) numerous articles refer to Complainant’s platform as KATCH beginning March 2, 2015; (ii) since the rebrand to KATCH in March of 2015, more than 10 million individuals have interacted with the Katch platform and its KATCH-branded websites; (iii) Complainant anticipates that its revenue will be $100 million by the end of 2015; (iv) Complainant has received several awards and industry recognitions highlighting the growth and momentum of its business; and (v) Complainant acquired the <katch.com> domain on December 17, 2014 and has used the domain to promote its business under the KATCH trademark since at least as early as March 2, 2015.
Complainant adds that Complainant and Respondent provide directly overlapping and competitive services. The content housed at <katch.me> is not only clearly used for advertising and marketing applications, but also contains multiple brands’ advertising materials and campaigns.
Developing its allegation that Respondent registered the disputed domain name in bad faith, Complainant submits that it is unlikely that Respondent would have selected #katch as the hashtag to be added to a Meerkat video stream description to enable use of the Mahaya Service without knowing of the reputation of Complainant’s KATCH trademark given that (a) Respondent adopted the #katch hashtag mere weeks after Complainant’s well-publicized re-brand to KATCH; and (b) others in the industry were aware of Complaint’s March 2, 2015 launch of its KATCH Service. The latter point is evidenced by the March 22, 2015 article included by Respondent as Exhibit B to its Response, which notes the potential for marketplace confusion with Complaint’s KATCH mark stating, “So here’s Katch* to take the incremental strain out of your post-Meerkat experience via a hashtag-triggered auto-upload. (*not to be confused with adtargeting ecommerce SaaS Katch.com).” Given that others in the industry were aware of Complaint’s March 2, 2015 launch of its KATCH Service, it is highly unlikely that Respondent was not similarly aware. Complainant was immediately made aware Respondent’s adoption of the #katch hashtag for the Mahaya Service. On April 9, 2015, just 18 days after Respondent alleges it launched the Mahaya Service, Complainant sent a cease and desist letter to Respondent
After receiving Complainant’s demand letter and accompanying notification of Complainant’s rights in the KATCH mark, Respondent registered the disputed domain names, launched the <katch.me> website, began using KATCH as a stand-alone mark on the site and listed Complainant’s legal@katch.com email address in the DMCA and trademark infringement notice sections of Respondent’s Terms of Service (Complainant notes that Respondent listed its email address correctly as legal@katch.me elsewhere in its Terms of Service). Respondent’s registration of the Domain Names occurred only after Respondent gained actual knowledge of Complainant’s rights in the identical mark KATCH. Panels have repeatedly ruled that a bad faith intent to confuse may be inferred from Respondent’s selection of a similar mark when actual knowledge of Complainant’s senior rights may be established. See Minicards Vennootschap Onder Firma Amsterdam v. Moscow Studio, FA 1031703 (Nat. Arb. Forum Sep. 5, 2007) (citing to Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135 (9th Cir. 2002) for the proposition that “[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse”).
Complainant also submits that Respondent further capitalized on Complainant’s goodwill in the KATCH mark by incorporating Complainant’s legal@katch.com contact email into the legal notices section of Respondent’s Terms of Service for the <katch.me> website. While Respondent contends that inclusion of this email was mere typographical error, Respondent consistently used the correct email (legal@katch.me) elsewhere in its Terms of Service. See Exhibit H to Complainant’s Complaint As a result, Complainant received multiple communications from third parties who experienced confusion between Complainant and Respondent’s services. Several such communications were attached as Exhibits to the Complaint; and additional instances of confusion are attached to the Quigley Declaration.
Finally, Complainant submits that the duration of Respondent’s passive holding of the <katchapp.co> and <ktch.tv> domains also indicates bad faith use. These domains were registered, on May 26, 2015 and April 14, 2015, respectively. Respondent’s nonuse of these domains has extended for well over three months in both instances. Panels have routinely held that nonuse for three months after registration indicates bad faith. See WordPress Foundation v. Steven M. Levy, FA 1627108 (Nat. Arb. Forum Aug. 13, 2015); Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007).
D. Additional Submissions Respondent
In its detailed Additional Response, Respondent submits inter alia that Complainant has provided misleading information claiming first use of the KATCH mark in November 2014 whereas the Internet Archives’ Wayback Machine shows that as late as December 18, 2014, Complainant’s home page links to a press release with the same headline as the “November 24, 2014” press release – but using “Vantage Media” instead of Katch. Respondent further submits that Complainant has mischaracterized the evidence claimed to support its claim of common law rights.
Respondent argues that Complainant’s claim that 10 million users have interacted with KATCH-branded websites (Quigley Dec. ¶17) – a review of these websites shows that “KATCHbranded” is a significant overstatement. For example, on university.com, no mention of “Katch” can be found within 2-3 clicks of the home page. Respondent’s CEO was only able to find the KATCH mark by performing a site-specific Google search (“site:university.com katch”), which produced as its first hit a web page with a prominent typo in the heading that uses a different subdomain. Given the obvious nature of the typo, this web page is likely not visited frequently.
Additionally, Respondent denies that it directly competes with Claimant and asserts that Complainant has ignored clear evidence provided in the Response that ktch.tv is prominently used in Respondent’s service.
Respondent also reiterated that it had used the <legal@katch.com> email address in error and denied that Respondent somehow benefitted from accidentally (or otherwise) using <legal@katch.com> on its website instead of <legal@katch.me>: as its DMCA contact.
Of most significance in the view of this Panel, Respondent submits that Complainant’s conclusory statement that “Katch has used the KATCH trademark in commerce substantially and continuously since March 2, 2015” without further supporting evidence– confuses the test for use in commerce with the requirement for the mark to have secondary meaning with consumers: a finding common law rights arise from secondary meaning with customers in the marketplace as an identifier for products or services and not merely as a trade name. See Makri S.A. v. Ashantiplc Ltd., FA 1468099 (Nat. Arb. Forum Dec. 19, 2012) (finding that notwithstanding Complainant’s provision of website screenshots, three pending trademark applications and articles in the New York Times and New York Magazine, Complainant did not show “sufficient evidence of ongoing use to establish secondary meaning”); Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products); Diversified Mortgage, Inc. v. World Fin. Partners, FA 118308 (Nat. Arb. Forum Oct. 30, 2002) (finding that the UDRP makes clear that its “rules are intended only to protect trademarks, registered or common law, and not mere trade names, due to the fact that trade names are not universally protected as are trademarks”).
Respondent asserts that when Respondent began using KATCH mark to identify Respondent’s service on March 21, 2015, Respondent was entirely unaware of Complainant’s purported common law rights, and had never heard of Complainant either as “Vantage Media” or as “Katch LLC” or any product or service identified with the KATCH mark offered by Complainant. Until receiving the Additional Submission, Respondent’s CEO had never heard of LeadsCon or the Montgomery Summit.
Respondent argues that even if the Panel somehow finds that Complainant has at some point acquired common law rights in the KATCH mark prior to commencing this action, those rights had clearly not arisen on April 9, 2015, a mere five weeks after Complainant issued a press release and “launched” katch.com. Such rights had clearly not arisen at the time of Complainant’s first cease-and-desist letter, which was sent less than two months after the first point at which common law rights could even arguably begin the process of attaching to Complainant’s use of the KATCH mark (and even then, this would require acceptance of Complainant’s extremely thin evidence of this, as discussed above). Complainant provides only the scantest evidence of confusion by anyone between Complainant and Respondent.
Complainant is a software company that own and markets a software platform and hosted solution that enables brands to engage and monetize every visitor to their website – even those that don’t transact. Customers of Katch also use the KATCH solution to identify and bid on advertising opportunities and manage and track the effectiveness of their advertisements. Brands also use Katch to set up real-time exchanges where advertisers can target and bid on in-market website visitors as they shop.
On December 26, 2015, Complainant applied to register KATCH as a US Trademark. The application is still pending. Complainant has no other registered trademark for KATCH.
Having decided to rebrand its products, Complainant on December 17, 2014 acquired the Internet domain name <katch.com>.
On February 26, 2015 Complainant changed its corporate name from Vantage Media to Katch LLP
Complainant has established and maintained a website to which the <katch.com> domain name resolves since on March 2, 2015.
The disputed domain name <katch.me> was registered on September 16, 2012, although not by Respondent. Respondent acquired this domain name on July 6, 2015.
The disputed domain name <katchapp.co> was registered on May 26, 2015.
The disputed domain name <ktch.tv> was registered on April 14, 2015
The disputed domain name <katch.me> is in active use by Respondent.
The disputed domain names <katchapp.co> and <ktch.tv> are inactive.
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.
The majority of the Panel, with the Chair dissenting, finds as follows on the first element required to be proved under in the Policy. Under this element, Complainant has to show that it has a trademark on which it can rely and that the disputed domain names are identical to or confusingly similar to that trademark.
The first issue that therefore arises is whether Complainant has a trademark on which it can rely in this proceeding.
Complainant’s initial argument was that it relied solely on its US trademark application more particularly described above. The trademark application will not suffice, as it has not resulted in a trademark having been registered. When Respondent filed its Response, it accordingly argued that Complainant did not have a registered trademark and that, moreover, Complainant had not claimed that it had an unregistered or common law trademark and that it could not prove that it did. No doubt for that reason, Complainant then changed its ground and submitted that in fact it did have common law trademark rights in KATCH and then set out to establish that proposition.
The Panel is prepared to consider Complainant’s submission to that effect and the evidence offered by Complainant in its support. In doing so, two matters have to be borne in mind. The first is that the onus is on Complainant to prove its allegation on the balance of probabilities. The second is that the approach of panelists in decisions under the UDRP, such as Brett Randy Sadovnick DBA Tucson Coin v. Verticalwisdom Group, FA 1311001531775 (Nat. Arb. Forum Jan. 7, 2014), although they are not binding as precedents in the judicial sense, has been to see whether the claimed common law trademark has acquired a secondary meaning in the minds of consumers that invokes the entity claiming that it has the trademark, namely Complainant; to answer that question, panels regularly look for indicia of that secondary meaning, such as the amount and manner of advertising undertaken by Complainant, the quantity and length of sales it has made under the claimed trademark, consumer surveys, media recognition and, as was specified in San Diego Hydroponics & Organics v. Innovative Growing Solutions, Inc., WIPO Case, D2009-1545, unsolicited media recognition.[1] It is therefore the role of the Panel in the present case to look at the evidence adduced by Complainant to see if it measures up to those requirements. The matter is not entirely free from doubt, but it is difficult to see how the evidence brought forward by Complainant has made out the case that it probably has a common law trademark for KATCH.
Having regard to the totality of the evidence offered by Complainant, it is not possible to say that Complainant has discharged its burden. In particular, there is no evidence of the quantity and manner of advertising that may have been undertaken by Complainant to promote its wares under the KATCH mark. Nor is there any evidence of the quantity of sales that may have been effected by Complainant under the claimed trademark. Equally important in the present case, because the major events seem to have taken place in a short period of time, is that there is no evidence of the length of time during which such sales may have taken place, if they took place at all. There is also no evidence of consumer surveys carried out to show how the public or any part of it view the word in question and whether they associate it with Complainant or its goods and services. There is also no evidence of media recognition of the mark and its association with Complainant; there is, of course, evidence that several business media outlets carried the news of the change of name of Complainant on March 2, 2015, but that coverage was in substance exactly that, news of the change of name of the company and there has been little if any media coverage of that fact since then, and none at all of KATCH as a mark being identified in the market with the goods or services being offered by Complainant. Moreover, the Panel is not convinced that the reports in the business media outlets relied on were unsolicited, as they appear to be services that carry the press releases of companies who issue them, a useful service of course but not evidence that the market has come to associate the alleged mark with the goods and services of Complainant.
Accordingly, it is difficult to see how Complainant has provided evidence of any of the criteria required to be proved to show secondary meaning and thus a common law trademark.
Before proceeding, it is useful to say that Complainant seems to have put two arguments about its common law trademark that require separate comment. Its case in general is that it “has developed” common law trademark rights, meaning presumably that it has done so by now, being at least by the date on which it filed its additional submission. That contention cannot be accepted as there is virtually no evidence of how the public, even the advertising industry section of the public, now sees KATCH and specifically whether it now identifies the goods and services promoted under that name exclusively or in substance with Complainant.
There is no doubt that Complainant has during this time been trying to promote “Katch” as the name of its company and the name of the platform that powers the system that it wishes potential customers to buy. It has done that by attending two conferences and succeeding it having its press release written up on various online business sites. But there is no evidence of the public or even the business reaction to its campaign, apparently no advertising of the Katch name, no evidence of the sale of goods and services sold under the Katch name and no evidence of what might be called expert trademark evidence of what, if anything, the public associates with the word Katch.
In addition to the submission that it “has developed” common law trademark rights, Complainant may be making an alternative submission that it acquired common law trademark rights on or by six other dates, namely, “(t)he dates on which Complainant registered the <katch.com> domain (December 17, 2014), adopted and began using the KATCH mark in precommercialization efforts (December 18, 2014) and in commerce (March 2, 2015) precede the dates on which Respondent registered or acquired the Domain Names (<ktch.tv> on May 14, 2015, <katchapp.co> on May 26, 2015 and <katch.me> on July 6, 2015) or began using the KATCH trademark on the website associated with the <katch.me> domain, which Respondent asserts was July 14, 2015.”
But no common law trademark could have been established by those dates as there is no evidence that the KATCH name had by any of those dates been seen by the public as being associated with Complainant or as being identified with any specific goods and services sold under that name, that any sales had been made under that name, that any consumer surveys had been conducted , that Complainant had engaged in any advertising of the name or that there had been any media recognition of Complainant’s association with the Katch name, other than Complainant’s own press release, which was at best equivocal. Put more concisely, it is unlikely that, despite Complainant’s best efforts, it had established by any of those dates an association between the name KATCH, the goods and services sold under that name and an association between the name and Complainant.
Complainant has another and probably a more fundamental problem. The primary meaning of “katch”, even with its unique first letter, is probably along the lines of Webster’s definition of “catch”, namely taking hold of or seizing. Complainant says that the secondary meaning of the word is something completely different, namely Complainant’s “innovative software platform and hosted solution that enables brands to engage and monetize every visitor to their website- even those who don’t transact.” The real problem with this argument is that no-one other than Complainant agrees with it, or at least not yet. The only possible exception, at least on the evidence, is the group of four businesses that seem to use the platform and to have generated the internet hits and revenue Complainant relies on.
This conclusion is reinforced by a more detailed examination at the evidence offered by the Complainant on this issue.
Complainant relies on a Declaration from its Chief Executive Officer, Mr. Quigley, which states that it selected KATCH as its new corporate name and trademark and then issued branding guidelines which are Exhibit C to Mr. Quigley’s statement. The guidelines describe the Katch process and its availability to potential customers or “brands”. Thus is said that “[t]hese vertical brands are Health brands.com, University.com, AutoInsurasnce.net and CreditandLoan.com. They are all powered by Katch.” Mr. Quigley’s Declaration goes on to say that the service to be offered by the Complainant is available by way of a subscription of an average of $10,000 per month or $120,000 per year, but there is no evidence of any such subscriptions having been taken up.
Then, although it is said in Complainant’s additional submission that notifications of the rebranding from Vantage Media to Katch were sent out to clients, there is no evidence of consumer reaction and whether, as a result, the public has come to associate the name Katch with Complainant or its goods and services.
Mr. Quigley also states that Vantage Media’s stationery was changed to carry the Katch name rather than Vantage Media. This, however, relates principally to the name of the company rather than any trade name by which Complainant’s goods and services would henceforth be known by the public.
It is true that Complainant launched its new website at www.katch.com on March 2, 2015. It seems clear from the website that Complainant from that date was promoting itself by the name Katch and that it had a platform that it had named Katch. But again, there is no evidence of whether and to what extent the public came to associate the name with Complainant’s goods and services.
On or about the same date the change of name was noted in the publications Business Wire, Los Angeles Business Journal, socaltech.com and on www.wn.com, (a website in Seattle) and the same story seems to have been reprinted in Yahoo Finance very recently on September 15, 2015, which was in fact a few days after the Response in this matter was filed, namely on September 13, 2015. Without over-interpreting those news items it seems, however, fair to say that those publications appear to be announcing a change in the name of the company to reflect the name of the platform providing the company’s principal service. On the evidence, no other media seems to have carried any reference to KATCH or to its association with Complainant.
Complainant also relies on other events such as that it attended 2 prominent industry conferences, on or about the day of the launch of the company’s website, March 2, 2015 and another one on March 10, 2015 but those facts are of very little value for the purpose of assessing how the public viewed and now views the name KATCH and the goods and services, if any, with which they associate that name.
Exhibit G to Mr. Quigley’s Declaration, “Examples of usage of Complainant’s KATCH mark in commerce” is instructive because it draws a distinction between the brands Health brands.com, University.com, AutoInsurasnce.net and CreditandLoan.com and the Katch platform that powers the service. As a result there are a lot of hits on the websites of the four brands and Complainant is generating considerable revenue. But, as the Panel understands the evidence, it is more likely than not that the internet hits and the revenue are generated under and by means of the names of the brands specified by Complainant rather than by its using the name Katch for its platform.
On the whole, the case for a common law trademark has therefore not been made out. Accordingly,Complainant having failed to establish its ownership of trademark rights in the KATCH mark, fails to satisfy the first element of the test in Policy ¶ 4(a)(i), the complaint must be refused and it is not necessary to consider the second and third elements of the test in Policy ¶ 4(a)(ii) and (iii).
The Chair dissents and for reasons given in the Schedule to this Decision finds that while Complainant has acquired sufficient rights to meet the first element of the test in Policy ¶ 4(a)(i) and the disputed domain names are confusingly similar to the KATCH mark, nonetheless Respondent has rights and legitimate interests in the disputed domain name and the complaint must accordingly fail.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be Denied.
Accordingly, it is Ordered that the <katch.me>, <katchapp.co>, and <ktch.tv> domain names REMAIN WITH Respondent.
__________________________________________________________________
Signed:
James Bridgeman as Chair
The Honorable Neil Anthony Brown QC as Panelist
Honorable John J. Upchurch, (Ret.) as Panelist
Date: October 3, 2015
Schedule
Reasons for Dissenting Opinion of Chair
While in full agreement with the majority decision that the Complaint must fail, the Chair takes a dissenting view that Complainant has sufficient rights in the KATCH trademark to satisfy the threshold requirements of Policy ¶ 4(a)(i) but that Respondent has demonstrated that it has rights and legitimate interests in the disputed domain names for the purposes of Policy ¶ 4(a)(ii) for the following reasons:
Complainant’s claims to trademark rights are based on its US Federal Trademark Application and its claimed use of KATCH as a trademark in commerce since either March 2, 2015. While ownership of a trademark application is not sufficient to satisfy the threshold test in paragraph 1 of the Policy, it is well established that it is sufficient for a complainant to prove on the balance of probabilities that it has acquired common law rights in a mark.
The Chair is of the Opinion that by its, albeit very limited, use of the KATCH mark in its business since March 2015, Complainant has acquired common law rights sufficient to satisfy the threshold set by the Policy. In reaching this dissenting conclusion, the Chair is conscious that Complainant has adduced very little evidence that the KATCH mark has acquired any secondary meaning, but takes the view that it is not necessary to set the bar very high when deciding on rights in the first element of the test in Policy ¶ 4(a)(i).
Having compared the KATCH trademark with each of the disputed domain names, the Chair is of the Opinion that each of the disputed domain names <katch.me>, <katchapp.co> and <ktch.tv> are confusingly similar to Complainant’s trademark. In the case of <katch.me>, the mark and domain name are identical as the ccTLD extension may be ignored for the purpose of comparison in each case. This Panel finds that the domain name <katchapp.co> is confusingly similar as it consists of the KATCH mark in its entirety in combination with a descriptive word “app”. The domain name <ktch.tv> is perhaps the least similar however as it consists of the KATCH mark in its entirely minus the letter “a”, and has no other distinguishing elements or meaning, on the balance of probabilities it is confusingly similar to Complainant’s mark. In the Opinion of the Chair, Complainant has therefore satisfied the first element of the test in Policy ¶ 4(a)(i).
The Chair however is of the Opinion that Complainant has failed to satisfy the second element of the test in Policy ¶ 4(a)(ii). On the evidence before this Panel the first that Respondent heard of the dispute was when it received a cease and desist letter on April 9, 2015, which was 18 days after Respondent launched its service and adopted the #katch hashtag for promoting its services on digital media.
On the evidence Respondent has established a bona fide business using the KATCH mark. While it is not impossible that Respondent had no knowledge of Complainant or its <katch.com> when it acquired the Internet domain name <katch.me> and established its website, it seems improbable that a start-up company so dependent on Internet recognition would not have been keenly aware of the existence of all domain names incorporating the word “katch”, particularly as it registered on the Montenegro <.me> domain – presumably due to non-availability of the more recognizable gTLDs. Nonetheless the Chair accepts that Respondent had no intention of taking advantage of Complainant’s reputation because Complainant had at that stage acquired very little goodwill and the Complainant operates in a different field of activity from Respondent.
In the circumstances, the Chair accepts that before Respondent received any notice of the dispute, it had used, and made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services as it has claimed in the response and Respondent’s Additional Submissions. Therefore, in accordance with paragraph 4(c)(ii) of the Policy, Respondent has demonstrated that it has rights or legitimate interest in the disputed domain names. In the circumstances, the Chair is in agreement with the majority of the Panel, that the Complaint must fail and it is not necessary to proceed to consider the issue of bad faith registration and use.
[1] See also the discussion in Levine, Domain Name Arbitration, Legal Corner Press, New York, 2015, pp 123 et seq.
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