Intune Media Group LLC v. Vertical Axis,
Inc.
Claim Number: FA0412000385881
PARTIES
Complainant
is Intune Media Group LLC (“Complainant”),
2509 152nd Avenue N.E., Suite B, Redmond, WA 98052. Respondent is Vertical Axis, Inc. (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm,
35 Cameo Drive, Cherry Hill, NJ, 08003 USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <intune.com>,
registered with The Registry At Info
Avenue d/b/a IA Registry.
PANEL
The
undersigned certifies that they have acted independently and impartially and,
to the best of their knowledge, have no known conflict in serving as a Panelist
in this proceeding.
The
Honorable Charles K. McCotter, Jr. (Ret.), the Honorable Carolyn M. Johnson
(Ret.) and Mr. Steven L. Schwartz as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
20, 2004; the National Arbitration Forum received a hard copy of the Complaint
on December 23, 2004.
On
December 30, 2004, The Registry At Info Avenue d/b/a IA Registry confirmed by
e-mail to the National Arbitration Forum that the domain name <intune.com> is registered with The
Registry At Info Avenue d/b/a IA Registry and that Respondent is the current
registrant of the name. The Registry At
Info Avenue d/b/a IA Registry has verified that Respondent is bound by the The
Registry At Info Avenue d/b/a IA Registry registration agreement and has
thereby agreed to resolve domain name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
January 3, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of January 24,
2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@intune.com by e-mail.
A
timely Response was received and determined to be complete on February 7, 2005.
On February 16, 2005, pursuant to Complainant’s request
to have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed the Honorable Charles K. McCotter, Jr. (Ret.), the Honorable
Carolyn M. Johnson (Ret.) and Mr. Steven L. Schwartz as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant,
Intune Media Group, LLC, contends that Respondent’s domain name, <intune.com>,
is confusingly similar to Complainant’s registered marks INTUNE and INTUNE
MEDIA GROUP.
Respondent, Vertical Axis, Inc., is using
a domain name that is confusingly similar to Complainant’s INTUNE mark in order
to attract Internet users to Respondent’s website. Respondent is profiting from
the advertisements, links and pop-ups featured at its <intune.com> domain
name. Therefore, Respondent is
commercially benefiting from the likelihood of confusion created by the
disputed domain name. The use of a
domain name that is confusingly similar to Complainant’s mark in order to
attract Internet users to an advertising website is not a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i), and is not a legitimate,
noncommercial or fair use pursuant to Policy ¶4(c)(iii).
Respondent is not commonly known as
anything other than “Vertical Axis, Inc.”
In order to establish rights and legitimate interests under Policy ¶
4(c)(ii), Respondent must prove that it is commonly known as INTUNE or <intune.com>.
Respondent is profiting from the
advertisements, links and pop-ups featured at its <intune.com>
domain name. Therefore, Respondent is
commercially benefiting from the likelihood of confusion created by the
disputed domain name. These
circumstances also are evidence of bad faith use pursuant to Policy ¶
4(b)(iv).
B.
Respondent
There
is no basis to transfer the domain name <intune.com> to
Complainant. Respondent has a legitimate interest in the disputed domain. The common descriptive term “in tune” is
subject to substantial third-party use.
Anyone has the right to register a domain name incorporating a common
descriptive term. Moreover, Respondent
uses the domain name in connection with a website that posts paid advertising
links related to the meaning of the term “in tune” which is a bona fide
offering of goods and services.
Respondent
did not register, and has not used, the disputed domain in bad faith. In order
to prove bad faith registration Complainant must proffer evidence that the
disputed domain was specifically registered with Complainant’s trademark in
mind. There is no such proof here. It is impossible for Respondent to
have registered the disputed domain name in bad faith because Complainant’s
U.S. trademark application was filed June 1, 2003, more than 2 years after
the May 3, 2001 registration date of the disputed domain name. Complainant’s alleged first use of the mark
in commerce, November 4, 2001, also post-dates the registration date of the
disputed domain name by several months.
Respondent obviously had no knowledge, and could have had no knowledge,
of Complainant’s mark when it registered the disputed domain name.
FINDINGS
Complainant filed its
application for its INTUNE mark on June 1, 2003, alleging first use of November
4, 2001; and the mark was registered on August 10, 2004. (Reg. No.
2,871,657). Complainant filed its application
for its INTUNE MEDIA GROUP mark on May 5, 2002, alleging first use of November
4, 2001; and the mark was registered on June 3, 2003.
Respondent registered <intune.com>
on May 3, 2001, prior to the dates of first use, application, and registration
of either of Complainant’s marks.
Respondent has used the disputed domain name to post third-party
pay-per-click advertising links related to music, pursuant to an affiliate
agreement with Overture Services, a division of Yahoo. Respondent receives a share of advertising
revenue generated by Overture.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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;
(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.
Respondent
registered the <intune.com> domain name on May 3, 2001; over two
years before Complainant filed an application to register the INTUNE mark and
over a year before Complainant filed an application to register the INTUNE
MEDIA GROUP mark. Since Respondent
registered the <intune.com> domain name prior to the date in which
Complainant established rights in either the INTUNE or INTUNE MEDIA GROUP marks,
Complainant has failed to satisfy the requirements of Policy ¶ 4(a)(i). See Phoenix Mortgage Corp. v. Toggas,
D2001-0101 (WIPO Mar. 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily
implies that Complainant’s rights predate Respondent’s registration . . . of
the domain name”); see also Intermark Media, Inc. v. Wang Logic Corp.,
FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding that any enforceable
interest that complainant may have in its common law mark did not predate
respondent’s domain name registration, therefore finding that Policy ¶ 4(a)(i)
had not been satisfied).
Accordingly,
the Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(i). Since
Complainant has failed to satisfy the first element, it is unnecessary
to address the second element, rights
or legitimate interests. Because
Complainant has clearly failed to show bad faith, the Panel will also address
the third element.
Respondent’s
registration of the <intune.com> domain name predates
Complainant’s establishment of rights in the INTUNE or INTUNE MEDIA GROUP
marks, therefore Respondent did not register and use the domain name in bad
faith pursuant to Policy ¶ 4(a)(iii). See
Interep Nat'l Radio Sales, Inc. v.
Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad
faith where respondent registered the domain prior to complainant’s use of the
mark); see also Open Sys.
Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding
no bad faith where respondent registered the domain name in question before
application and commencement of use of the trademark by complainant).
The
Panel finds that Policy ¶ 4(a)(iii) has not been satisfied.
DECISION
Having
failed to establish the first and third elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
The Honorable Charles K. McCotter, Jr., Panelist,
Chair
Dated: March 2 , 2005
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