National Arbitration Forum

 

DECISION

 

Aquire, Inc. v. MySite Corporation

Claim Number: FA0604000671532

 

PARTIES

 

Complainant is Aquire, Inc. (“Complainant”), represented by Jason P. Shanks, of Jackson Walker, L.L.P., 901 Main Street, Suite 6000, Dallas, TX 75202.  Respondent is MySite Corporation (“Respondent”), represented by MoonHee Joh, of NetService Corporation, 682-12- Jayang-dong Gwangjin-gu, Seoul, Korea 143-190.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

 

The domain name at issue is <acquire.com>, registered with Tlds, LLC d/b/a SRSPlus.

 

PANEL

 

Each of 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.

 

Hon. Nelson A. Diaz, Hon. Carolyn Marks Johnson and Mr. Myungsuk Sean Choi as Panelists.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 4, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 7, 2006.

 

On April 6, 2006, Tlds, LLC d/b/a SRSPlus confirmed by e-mail to the National Arbitration Forum that the <acquire.com> domain name is registered with Tlds, LLC d/b/a SRSPlus and that the Respondent is the current registrant of the name.  Tlds, LLC d/b/a SRSPlus has verified that Respondent is bound by the Tlds, LLC d/b/a SRSPlus 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 April 17, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 8, 2006 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@acquire.com by e-mail.

 

A timely Response was received and determined to be complete on May 8, 2006.

 

 

On May 24, 2006, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson and Mr. Myungsuk Sean Choi as Panelists and Hon. Nelson A. Diaz as Chair.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A. Complainant

 

Complainant asserts that it has established common law rights in the AQUIRE mark through continuous use of the mark in commerce in connection with its business as the leading provider of automated organization charting, workforce compliance and budgeting solutions since 1994.  Complainant also asserts that it has used the AQUIRE mark in connection with its other products and services such as “Aquire OrgPublisher” and “Aquire OrgBuilder.”  Additionally, Complainant contends it has a pending trademark application filed with the United States Patent and Trademark Office (“USPTO”) (Ser. No. 76/638,412 filed May 12, 2005).

 

Complainant asserts that Respondent is not using the <acquire.com> domain name in connection with any bona fide offering of goods or services.  Rather, Respondent is merely using the disputed domain name to redirect Internet users to third party commercial websites for which Respondent presumably receives click-through fees. 

 

Furthermore, Complainant contends that Respondent is not an authorized dealer of Complainant and does not have Complainant’s permission to use the AQUIRE mark.  Furthermore, the WHOIS information does not reflect, and there is no evidence on the record indicating, that Respondent is commonly known by the <acquire.com> domain name.  Furthermore, Complainant contends that Respondent is not an authorized dealer of Complainant and does not have Complainant’s permission to use the AQUIRE mark.  Furthermore, the WHOIS information does not reflect, and there is no evidence on the record indicating that Respondent is commonly known by the <acquire.com> domain name. 

 

B. Respondent

 

Respondent registered the <acquire.com> domain name on December 12, 2000.  Complainant’s trademark application for the AQUIRE mark was filed on May 12, 2005 and is currently pending.  Respondent further asserts that on May 2, 2005, Complainant changed its name Aquire Solutions, Inc. and that previously it had been trading under the name TimeVison, Inc.  Respondent further asserts that Complainant had not established rights in the AQUIRE mark (either through registration of the mark with the pertinent trademark authorities or through common law rights) prior to Respondent’s registration of the disputed domain name.  Furthermore, Respondent contends that its <acquire.com> domain name is not confusingly similar to Complainant’s AQUIRE mark because the  two are prounounced differently.  Finally, Respondent contends that, as evidenced by Google results which list more than 202,000,000 web pages which use the word “acquire”, acquire is itself generic.   

 

Although admitting to using the <acquire.com> domain name to generate click-through fees, Respondent asserts that such use of the disputed domain name does not constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). 

 

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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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.

 

In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the “Policy”) have been satisfied:

 

(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

 

(ii) the Respondent has no rights or legitimate interests with respect to the Domain Name; and,

 

(iii) the domain name has been registered and used in bad faith.

 

Identical and/or Confusingly Similar

 

Before turning to the question of confusing similarity, the panel must determine at the threshold whether Complainant had acquired common law rights in the mark, AQUIRE, as of December 12, 2000, the date that Respondent registered the <acquire.com> domain name.  As discussed below, mere proof of first chronological use of the mark is insufficient. 

 

In support of its claim of common law rights, Complainant asserts that: (1) it has made continuous use in commerce of the AQUIRE mark since 1994 in commerce in connection with its business as a provider of automated organization charting, workforce compliance and budgeting solutions; it has used the AQUIRE mark in connection with its other products and services such as “Aquire OrgPublisher” and “Aquire OrgBuilder”; and it has a pending trademark application filed with the United States Patent and Trademark Office (“USPTO”) (Ser. No. 76/638,412 filed May 12, 2005).   On the basis of this evidence, Complainant would have the Panel find that Complainant has established common law rights in the AQUIRE mark.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Suburban Ostomy Supply Co. v. Tremblay, FA 140639 (Nat. Arb. Forum Feb. 24, 2003) (“Complainant’s continuous use in commerce and its prior registration of the [disputed] domain name provide strong evidence that Complainant has rights in the SUBURBAN OSTAMY mark pursuant to Policy ¶ 4(a)(i).”).

 

An examination of the proffered evidence leads the Panel to conclude that Complainant has not met its burden.  Although Complainant claims continuous use of the mark since 1994, it proffered no evidence that such use has caused the mark to “acquire distinctiveness” or “secondary meaning.”  Secondary meaning is said to exist when the mark “is interpreted by the consuming public to be not only an identification of the product or services, but also a representation of the origin of those products or services.”  Commerce Nat’l Ins. Servs., Inc. v. Commerce Ins. Agency, Inc., 214 F.3d at 432, 438 (3d Cir. 2000).  Secondary meaning is shown when the “primary significance of the term in the minds of the consuming public is not the product but the producer.  FM 103.1, Inc. v. Universal Broadcasting of New York, Inc., 929 F. Supp. 187, 194 (D. N.J. 1996). 

 

Courts have developed various tests for determining whether secondary meaning exists. The Third Circuit Court of Appeals, for example, uses the following non-exclusive list of factors in determining the existence of secondary meaning:  (1) the extent of sales and advertising leading to consumer association; (2) length of use; (3) exclusivity of use; (4) the fact of copying; (5) customer surveys; (6) customer testimony; (7) the use of the mark in trade journals; (8) the size of the company; (9) the number of sales; (10) the number of customers; and (11) actual confusion.  See Commerce Nat’l Ins. Servs., Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, 438 (3d Cir. 2000).  In support of a finding of secondary meaning, Complainant principally relies on its pending trademark application and its uncorroborated claim of continuous use since 1994.  Complainant also avers that it has “advertised its mark extensively and at great expense”, and further that it has “enjoyed much commercial success.”  With the exception of the pending application, Complainant does not offer any documentary evidence in support of these claims. 

 

As an initial matter, the pending trademark application for the AQUIRE mark does not ease Complainant’s burden in proving the requisite rights.  See Wave Indus., Inc. v. Angler Supply, FA 304784 (Nat. Arb. Forum Sept. 20, 2004) (finding that the complainant’s pending trademark applications did not establish rights because “an application for [a] mark is not per se sufficient to establish rights [in] a trademark for the purposes of the [Policy]”).  Even if believed, Complainant’s remaining evidence shows only that, at present, the mark may have developed secondary meaning.  Complainant has not proven, however, that such secondary meaning existed as of the operative date, December 12, 2000.   It is well established that a mark holder must establish secondary meaning as of the time that the defendant began its infringing use.  See, e.g., Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding that any enforceable interest that the complainant may have in its common law mark did not predate the respondent’s domain name registration, therefore finding that Policy ¶ 4(a)(i) had not been satisfied); see also Trujillo v. 1Soft Corp., FA 171259 (Nat. Arb. Forum Sept. 10, 2003) (“As Complainants have not shown that their rights pre-date Registrant's domain name, Complainants have not satisfied paragraph 4(a)(i) of the Policy”); see also Commerce Bancorp, Inc., v. BankAtlantic, 285 F. Supp.2d 475, 485 (D. N.J. 2003) (quoting Scott Paper Co. v. Scott’s Liquid Gold, Inc., 589 F.2d 1225, 1231 (3d Cir. 1978) (“Priority depends not upon which mark succeeds in first obtaining secondary meaning but upon whether the plaintiff can prove by a preponderance of the evidence that his mark possessed secondary meaning at the time the defendant commenced use of his mark”).   The Panel thus finds that Complainant has failed to establish the first element of the Policy because Complainant has not proven prior rights in the trademark or service mark ACQUIRE.  See Tough Traveler, Ltd. v. Kelty Pack, Inc., Case No. D2000-0783 (WIPO Sept. 28, 2000) (rejecting complaint where complainant failed to establish common law rights in claimed KID CARRIER trademark).

 

Furthermore, the Panel is persuaded that the domain name itself is comprised of generic or common words which cannot be exclusively associated with Complainant’s business.  As a dictionary definition shows, “acquire” is a common verb used to refer to “to get as one’s own.”   Merriam-Webster’s Collegiate Dictionary  (9th ed. 1983).  Moreover, the word “acquire” is widely used by the general public (Google lists more than 202,000,000 web pages containing the common word “acquire”).  Under such circumstances, the first to register a generic domain name should prevail.  See Rollerblade, Inc. v. CBNO and Ray Redican Jr., D2000-0427 (WIPO Aug. 24, 2000) (finding that “genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration”); see also SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Nat. Arb. Forum May 25, 2000) (finding that the Complainant failed to show that it should be granted exclusive use of the domain name SOCCERZONE.COM, as it contains two generic terms and is not exclusively associated with its business); Energy Source Inc. v. Your Energy Source, FA 96364 (Nat Arb. Forum Feb. 19, 2001) (YOURENERGYSOURCE.COM) (finding that Respondent has rights and legitimate interests in the domain name where “[r]espondent has persuasively shown that the domain name is comprised of generic and/or common words, and, in any event, is not exclusively associated with Complainant’s business”); Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding that seminar and success are generic terms to which Complainant cannot maintain exclusive rights); Ultrafem, Inc. v. Warren R. Royal, FA 97682 (Nat. Arb. Forum Aug. 2, 2001) (Respondent “has a legitimate interest in the domain name. The <instead.com> domain name is generic, and is a commonly used word”); Shopping.com v. Internet Action Consulting, Case No. D2000-0439 (WIPO July 28, 2000) (UDRP complaint over domain name <www-shopping.com> denied because term "shopping" is generic for Internet-based shopping).  Given that the domain name is comprised of a generic word, it is self-evident that the domain name and mark in dispute are not confusingly similar for purposes of the Policy. 

 

Complainant’s trademark rights aside, the Panel finds that the <acquire.com> domain name is readily distinguishable from and not confusingly similar to Complainant’s AQUIRE mark.  Contrary to Complainant’s contention, the addition of a “c” is significant.   See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) (“Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter”); see also Google, Inc. v. Wolfe, FA 275419 (Nat. Arb. Forum July 18, 2004) (“The <froogles.com> domain name is not confusingly similar to Complainant's GOOGLE mark. The dissimilar letters in the domain name are sufficiently different to make it distinguishable from Complainant's mark because the domain name creates an entirely new word and conveys an entirely singular meaning from the mark.”).

 

In light of this finding, it is unnecessary for the Panel to consider the second and third elements of the Policy. 

 

Finally, the Panel notes that the allegations regarding Respondent’s lack of a legitimate interest in the domain name, as well as the allegations of bad faith, are so conclusory as to be almost lacking in merit.  While the Complainant’s actions border on Reverse Domain Name Hijacking, the Panel finds that Respondent has not made the requisite showing.

 

DECISION

 

The Panel concludes that relief shall be DENIED. 

 

 

 

Hon. Nelson A. Diaz, Panelist

Hon. Carolyn Marks Johnson and Mr. Myungsuk Sean Choi 
Dated: June 5, 2006