Fusion Media Network, LLC v. paolo de luca
Claim Number: FA1702001717497
Complainant is Fusion Media Network, LLC (“Complainant”), represented by Jorge Arciniega of McDermott Will & Emery LLP, California, USA. Respondent is paolo de luca (“Respondent”), represented by Eric Misterovich of Revision Legal, Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is «fusion.tv», registered with Dynadot, LLC.
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.
Fernando Triana, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 15, 2017; the Forum received payment on February 15, 2017.
On February 15, 2017, Dynadot, LLC confirmed by e-mail to the Forum that the disputed domain name «fusion.tv» is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 February 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 2017 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@fusion.tv. Also on February 16, 2017, 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 March 13, 2017.
On March 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Fernando Triana, Esq., 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
a. Complainant, operates a multimedia platform that provides news, information, and social commentary to a young, diverse audience across language and cultural divides.
b. Complainant and its predecessors have been using the marks FUSION RADIO and FUSION TV in commerce since June 1, 2003. (Annexes 2 and 3 to the Complainant).
c. Complainant has established rights in the marks FUSION RADIO and FUSION TV through continuous use in commerce since at least 2003.
d. The disputed domain name is confusingly similar to Complainant’s marks.
e. Respondent has no rights or legitimate interests in the disputed domain name «fusion.tv».
f. Respondent is not commonly known by the disputed domain name.
g. Complainant has not authorized or licensed Respondent to use the FUSION RADIO or FUSION TV marks in a domain name.
h. Respondent has no affiliation, connection or association with Complainant.
i. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather the disputed domain name resolves to a web directory containing links to various third party websites unrelated to Complaint’s marks.
j. Respondent has registered and used the disputed domain name «fusion.tv» in bad faith.
k. Respondent’s use of the disputed domain name to redirect Internet users to page of unrelated third-party links is evidence of bad faith per Policy ¶ 4(b)(iv).
l. Respondent had actual or constructive knowledge of Complainant’s rights in the marks at the time it registered and subsequently used the disputed domain name.
m. Respondent’s passive holding of the domain name is further evidence of bad faith.
B. Respondent
a. Complainant uses false or misleading statements concerning its trademark rights.
b. Registration of domain names containing common words is permissible on a first-come, first-served basis.
c. The disputed domain name comprised the generic word Fusion, word widely used in the United States of America and included in 1,725 trademark applications or registrations.
d. Complainant relies on the alleged date of first use in commerce of the FUSION RADIO and FUSION TV marks (2003), rather than the registration date; the latter being the appropriate date to consider when determining rights under the Policy.
e. Respondent’s registration of the disputed domain name on June 15, 2010 predates Complainant’s trademark rights.
f. Complainant fails to provide evidence of secondary meaning in the marks in order to show common law rights.
g. Complainant’s use of the marks since 2003 has not been continuous.
h. Complainant has not established a prima facie case showing Respondent lacks rights or legitimate interests in «fusion.tv».
i. Respondent’s use of a generic domain name for the purposes of redirecting visitors to a different site can be legitimate use.
j. Complainant’s allegation that Respondent’s operation of a pay-per-click website is not a bona fide use of the website is false.
k. Respondent has not registered and used «fusion.tv» in bad faith.
l. Respondent’s registration of the disputed domain name in 2010 predates Complainant’s filing of the marks in 2012 and 2013, making it impossible for Respondent to have had knowledge of Complainant’s rights when it registered the domain name.
m. Respondent’s use of the disputed domain name to operate a pay-per-click website does not demonstrate bad faith, due to Respondent’s lack of knowledge of Complainant’s marks.
1. Complainant owns the trademark registration of: i) FUSION RADIO since May 21, 2013 before the USPTO (United States Patent and Trademark Office Registration No. 4,337,211), and ii) FUSION TV since January 31, 2017 before the USPTO (United States Patent and Trademark Office Registration No. 5,130,987).
2. Complainant did not provide evidenced of use or secondary meaning of the trademarks FUSION RADIO or FUSION TV before the registration before the USPTO.
3. FUSION is a common word in the English language.
4. The disputed domain name was registered before Complainant’s trademarks were applied for registration.
5. Complainant did not file any evidence regarding Respondent’s alleged bad faith.
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 contends to be the owner of the trademarks FUSION RADIO and FUSION TV and to have used them since 2003 in the United States of America to identify a multimedia platform that provides news, information, and social commentary to a young, diverse audience across language and cultural divides.
a) Existence of a trademark or service mark in which Complainant has rights
Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in a number of jurisdictions throughout the world.
The worldwide-accepted definition of a trademark involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a mark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it in connection with goods and services of the type with respect to which the trademark is registered.
However, the UDRP does not discriminate between registered and unregistered trademarks[1] and thus, it is well established that a Complainant does not need to own a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights over an unregistered trademark in order to deserve legal protection, based solely on its use in commerce.
In this case, Complainant proved its rights in the marks FUSION RADIO, and FUSION TV. Annexes 2 and 3 to the Complaint include:
· Registration of FUSION RADIO since May 21, 2013 before the USPTO (United States Patent and Trademark Office Registration No. 4,337,211).
· Registration of FUSION TV since January 31, 2017 before the USPTO (United States Patent and Trademark Office Registration No. 5,130,987).
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademark and the exclusive right to use it in connection with the stated services. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive[2].
Thus, Complainant established its rights in the trademark[3].
The Panel adds that, although Respondent’s disputed domain name «fusion.tv» predates Complainant’s trademark registration, Paragraph 4(a)(i) to the Policy does not require the trademark to be registered prior to the disputed domain name[4].
Therefore, the Panel concludes that Complainant has demonstrated rights in the trademarks FUSION RADIO and FUSION TV for purposes of Paragraph 4(a)(i) of the Policy.
b) Identity or confusing similarity between the Disputed Domain Name and Complainant’s trademark
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s trademarks FUSION RADIO an FUSION TV.
In the first place, before establishing whether or not the disputed domain name is confusingly similar to Complainant’s trademarks, the Panel wants to point out that the addition of generic top-level domains (“gTLDs”), i.e., “.com,” “.biz,” “.edu,” and “.org,” cannot be considered when determining if the registered domain name is identical or confusingly similar to the registered trademark[5]. Neither the addition of country code top-level domains (“ccTLDs”), i.e., “.co.,” “.de,” “.tv,” “.es,” nor the insertion of a gTLD have a distinctive function[6].
UDRP Panels have unanimously accepted that the inclusion of the “.com” gTLD in a disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000), the Panel stated that:
“[T]he addition of the generic top-level domain (“gTLD”) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.”
However, the Panel considers that the reproduction of the FUSION portion of Complainant’s trademark by the disputed domain name «fusion.tv» is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark[7]. This is especially so since FUSION is the main and most distinctive part of the trademarks FUSION RADIO and FUSION TV and the disputed domain name does not add any other distinctive element.
In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name is confusingly similar to Complainant’s trademarks and thus the requirement set forth in Paragraph 4(a)(i) of the Policy has been duly satisfied[8].
Paragraph 4(c) of the Policy includes a nonexclusive listing of circumstances that prove a respondent’s rights or legitimate interests in a disputed domain name:
(i) Before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant argues that Respondent does not have any rights or legitimate interests regarding the disputed domain name. However, Complainant did not file any evidence to prove its assertion.
In this case, Respondent argues that the expression “FUSION” is generic and a common word in the English language. This Panel agrees that “FUSION” is a common word. In fact, FUSION refers to “a process in which different styles, ideas designs etc. combine to form something new”, as quoted from the Macmillan Dictionary by the USPTO Office Action within the Application Serial No. 85565143, files as Annex A to the Response.
Furthermore, Respondent established its rights and legitimate interest in the disputed domain name, as follows:
(i) Respondent acquired the disputed domain name before Complainant applied for the registration of its trademarks, and has used it in connection with pay-per-click advertising. Thus, Respondent has used the disputed domain name before any notice of the dispute.
(ii) The disputed domain name contains the word FUSION as the main element, which is a commonly used word in the English language. Therefore, it is possible for anyone to have thought about obtaining the disputed domain name for pay-per-click advertisement.
(iii) The disputed domain name registration dates back to 2010 (Annex 4 to the Complaint). That is long before any registration of Complainant’s trademarks. Moreover, Complainant did not provide any evidence regarding the alleged use of the trademarks FUSION RADIO and FUSION TV.
(iv) Owning a pay-per-click website, as Respondent does, is in principle a legitimate business, which qualifies as a bona fide offering of goods or services. Complainant has not provided any evidence to the contrary, such as evidence that the content of the website was changed after the registration of the trademarks or affects in any way Complainant’s interests.
Thus, in view of the above arguments taken together, Respondent has established rights or legitimate interests in the disputed domain name, which Complainant failed to rebut. Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy has not been satisfied.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a disputed domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant, who is the owner of the trademark or service mark, or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.
Complainant asserts that Respondent registered the disputed domain name in bad faith as Respondent diverts internet users to obtain profits from pay-per-click fees through the operation of its website.
Respondent’s website contains sponsored links to commercial websites related to television services. This Panel believes that, in view of the common word (“FUSION”), the provision of pay-per-click advertisements for television-related services is a valid Internet advertising model which does not necessarily entail use of a domain name in bad faith[9].
Furthermore, in view of the fact that the domain name was registered before the trademarks, Complainant did not provide evidence that (i) the domain name was acquired by Respondent to prevent Complainant from reflecting its trademark in the disputed domain name, since the domain name registration was prior to the trademark registration; or (ii) Respondent registered the disputed domain name primarily for the purpose of disrupting Complainant’s business; or (iii) Respondent acquired the disputed domain name to attract, for commercial gain, Internet users, by creating a likelihood of confusion with Complainant's trademarks, since the disputed domain name registration was prior to the trademarks registration[10].
Therefore, the Panel concludes that Complainant has failed to prove Respondent’s bad faith.
Consequently, all three elements of the Policy paragraph 4(a) have not been established in the present case.
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 disputed domain name «fusion.tv» REMAIN WITH Respondent.
Fernando Triana, Esq., Panelist
Dated: March 30, 2017
[1] See MatchNet PLC. v. MAC Trading, D2000-0205 (WIPO May 11, 2000); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000).
[2] See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO May 5, 2002).
[3] See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Royal Bank of Scot. Grp. plc & Nat. Westminster Bank plc v. Soloviov, FA 787983 (Forum Nov. 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i)”.); see also Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004) (“finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world”).
[4] See Konstantin Graf Lambsdorff v. Eighty Bus. Names, D2012-2039 (WIPO Dec. 21, 2012) (“Paragraph 4.a.(i) does not require that the common law rights pre-date, or the trademark be registered prior to, the domain name; though it may be relevant to the assessment of bad faith pursuant to Paragraph 4.a.(iii), which is considered below.”).
[5] See Altec Indus., Inc. v. I 80 Equip., FA 1437753 (Forum May 18, 2012).
[6] See YottaMark, Inc. v. Lukasz Chudy, FA 1392357 (Forum July 15, 2011)
[7] See ER Marks, Inc. and QVC, Inc. v. Hansmann, FA 1381755 (Forum May 6, 2011); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).
[8] Panelist Brown respectfully disagrees with this part of the decision. His view is that the objective observer, making the comparison between the disputed domain name and the trademark, would conclude that the comparison should be made with the trademark as a whole, as it is that trademark that has been registered by the Complainant and as the Complainant has no common law or unregistered trademark rights in UHEALTH. The objective bystander would conclude that the domain name may well be referring not to the Complainant’s trademark but to another university’s health service or, indeed, a general health service directed to the reader, as in “your health.” Consequently, the disputed domain name is not confusingly similar to the only trademark relied on by the Complainant.
[9] See Microsoft Corp. v. Abdullah Ali, FA 1423605 (Forum Feb. 15, 2012).
[10] See Interep Nat’l Radio Sales, Inc. v. Internet Domain Names, Inc. D2000-0174 (WIPO May 26, 2000) (“The fact that Respondent registered its domain name two (2) years before the intent to use application of Complainant was filed and three (3) years before Complainant started using the mark is persuasive to the Panel that none of the bad faith factors in Policy 4(b) apply”).
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