9 Squared, Inc. v. Mass Management Limited
Claim Number: FA0610000811932
PARTIES
Complainant is 9 Squared, Inc. (“Complainant”), represented by Libby Huskey, of Holland & Hart LLP, 1800 Broadway, Ste. 300, Boulder, CO 80302. Respondent is Mass Management Limited (“Respondent”), Suite 2, Portland House, Glacis Road, Gibraltar, II GI.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mob.com>,
registered with Dotster.
PANEL
The undersigned certifies that he 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.
Debrett Lyons as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 3, 2006; the National Arbitration Forum received a
hard copy of the Complaint on October 4, 2006.
On October 3, 2006, Dotster confirmed by e-mail to the National
Arbitration Forum that the <mob.com>
domain name is registered with Dotster and that the Respondent is the current
registrant of the name. Dotster has
verified that Respondent is bound by the Dotster 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 October 6, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 26, 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@mob.com by e-mail.
A Response in electronic form was received on October 13, 2006 but the
Forum did not consider there to be compliance with ICANN Rule #5 because the Response was not
submitted in hard copy.
Complainant’s additional submission was received and determined to be
complete pursuant to The Forum’s Supplemental Rule # 7 on October 18, 2006.
Respondent’s additional submission was received and determined to be
complete pursuant to The Forum’s Supplemental Rule # 7 on October 19, 2006.
On October 21, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Debrett Lyons as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PRELIMINARY POINTS
Although the National Arbitration Forum received the Respondent’s electronic submission in a timely manner, the Forum did not consider that there was compliance with ICANN’s Rule #5.
ICANN’s Rule #5 states :
(b) The response shall be submitted in hard copy and (except to the extent not available for annexes) in electronic form and shall:
(vii) State that a copy of the response has been sent or transmitted to the Complainant, in accordance with Paragraph 2(b); and
The Panel observes that the Respondent copied its electronic Response to the Complainant and so satisfied Rule #5(b)(vii) but it did not submit a hard copy of the Response.
In light of this deficiency, the Panel has the discretion as to whether to accept the Response as well as decide the amount of weight given to it. See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003), holding that the respondent’s failure to submit a hard copy of the response and its failure to include any evidence to support a finding in its favor placed the respondent in a de facto default posture, permitting the panel to draw all appropriate inferences stated in the complaint; see also Bank of Am. Corp. v. NW Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (refusing to accept respondent’s deficient response that was only submitted in electronic form because it would not have affected the outcome had the panel considered it). See finally J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003), finding that where respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”.
In this case, there was not a mere oversight to comply with Rule 5(b). The Panel notes in the Response the statement that the “[r]espondent will not spend money sending an international fax or 3 hard copies of this response as required in Supp. Rule 5.”
Despite the Respondent’s knowing breach of procedure, the Panel is of the view that the important question is one of procedural fairness. The Response was copied to the Complainant in a timely manner. There were no annexures or exhibits to the Response and nothing which only a hard copy could provide. The Panel is of the view that there was no prejudice to the Complainant in consequence of the breach and no appreciable administrative upset.
For these reasons the Panel allows the Response and gives it full weight.
Both parties made Additional Submissions which were admitted and taken into account by the Panel. For the sake of orderly analysis, those submissions will be addressed where relevant in the Findings and Discussion which follow.
The Panel has concentrated on the parties’ submissions and on the evidence on record in reaching its decision. It is nonetheless established by consensus in earlier cases under the Policy that a panel can perform independent research when reaching a decision. A panel may, for example, visit the Internet site linked to the disputed domain name in order to obtain more information about a party and the use of its domain name. A panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision. See Société des Produits Nestlé SA v. Telmex Management Service Ltd., D2002-1038 (WIPO Dec. 31, 2002); see also Howard Jarvis Taxpayers Ass’n v. Paul McCauley D2004-0014 (WIPO Apr. 22, 2004).
PARTIES’ CONTENTIONS
The Complainant is a US subsidiary of a publicly listed UK company,
Monstermob Group PLC (“the UK parent”) and is in the business of providing
downloadable entertainment-related content for mobile phones.
It contents that the UK parent launched the business in the UK in
October 2004 under the name THE MOB which is a service mark now enjoying global
recognition.
According to the Complainant, its subscription services marketed under
THE MOB mark are widely available generating more that 220,000 downloads to
customers in several countries.
The Complainant asserts that it has extensively promoted THE MOB mark, by
means of advertisements on televisions channels, such as MTV, MTV2, and Comedy
Central, as well as print advertisements in numerous magazines including Seventeen, and Cosmo Girl. The Complainant
claims that its advertising efforts have established secondary meaning and
public goodwill in the mark.
The Complainant has filed US Federal trademark applications for
MOBMUSIC, MOBFLIX, MOB MUSIC GROUP and THE MOB (“the mrks”).
The Complainant and the UK parent are said to maintain a website at
<mob.tv> which has an average 5,000 daily visits.
The Complainant claims rights in the marks and contends that the
disputed domain name <mob.com> is confusingly similar to the
marks. It argues that neither the presence of “.com”, nor the exclusion of the
common qualifiers “the”, “music”, “music group” or “flix” differentiates the
domain name from the marks.
The Complainant contends that the Respondent has no recognizable rights
or legitimate interests in the disputed domain name and in pre-Complaint
correspondence between the parties did not provide any facts that would support
such interests, stating only that the domain name was acquired for development.
The
Complainant argues that the Respondent acted in bad faith because the
circumstances lead to an inference that the Respondent acquired the domain name
primarily for the purpose of selling it to the Complainant or its competitors.
The Respondent broadly denies that the disputed domain name is
confusingly similar to the marks, denies acting in bad faith and asserts
legitimate interests in the domain name.
In particular, it provides information which questions the
Complainant’s claimed traffic to <mob.tv> and its popularity with
internet users and challenges the Complainant’s assertion that THE MOB service
mark has become famous to wireless handset consumers throughout the world. The Respondent argues that the term “mob” is
generic and is not monopolized by the Complainant.
The Respondent denies that it acted in bad faith by acquiring the
domain name in order to sell it to the Complainant or one of its
competitors. It states that it acquired
the name in 2006 for $35,000 (presumably US$) after long negotiations with the
prior registrant who had held it for 11 years.
It asserts that its good faith is manifested by its tardy and reluctant
replies to the Complainant in pre-Complaint offer of purchase correspondence
initiated by the Complainant under an “anonymous” Yahoo email address.
The Respondent alleges legitimate interests in the name as it has been
developing a social networking site for the past two years with the intention
of ultimately hosting that site at <mob.com> once the name was
acquired.
FINDINGS
1. The domain name <mob.tv> is registered to neither the Complainant nor the UK Parent but to Monstermob Limited.
2. It was registered by Monstermob Limited on February 20, 2002 but by the Complainant’s evidence there was either no active website at <mob.tv> until October 2004, or no website featuring THE MOB until that time.
3. The undated homepage screenshot from <mob.tv> provided by the Complainant under Exhibit 3 shows potentially four trade/service marks:
MONSTERMOB
THEMOB ( no break)
MOB MUSIC & Logo
MOBGAMES & Logo
4. The disputed domain name <mob.com> is registered to the Respondent (albeit that information had to be obtained from the registrar).
5. It was registered on July 26, 1994 and last updated on March 10, 2006 which is the best evidence available of the time when the Respondent became its proprietor.
6. At the time of this decision there was no active website at <mob.com> although one is promised shortly.
7. None of the US Federally filed trade mark applications is yet registered. Their brief filing details are as follows:
|
Mark |
Serial Number |
Filing Date |
Status |
|
MOBMUSIC |
Sept 1, 2005 |
78-705322 |
Pending – Office objections |
|
MOBFLIX |
Sept 1, 2005 |
78-705335 |
Pending – Office objections |
|
MOB MUSIC GROUP |
Mar 23, 2006 |
78-844884 |
Pending – Office objections |
|
THE MOB |
Sept 27, 2006 |
77-008473 |
Awaiting Examination |
8. Each of the applications is filed in the name of the Complainant and filed on an “intent-to-use” basis.
9. Each of the examined applications has been the subject of objection(s) by the USPTO.
10. The only unexamined application for THE MOB was filed 5 business days before the Complaint and is unlikely to be examined for some months.
11. Examination of Serial No. 78-705322 for MOBMUSIC is typical of the others and the published Office Action letter of March 20, 2006 refused registration, inter alia, on the basis of the direct descriptiveness of the mark for the class 9 services, the examiner arguing that “mobmusic” is a recognized genre of music. The public file shows that the Complainant rebutted that with argument that “mob” was an abbreviation for mobile or mobile phone, in consequence of which the USPTO Examining Attorney raised an added descriptiveness objection. At the time of this decision, the application is in suspension.
12. Under Exhibit 1 of the Complaint are examples of magazine advertisements. The dates and frequency of the advertisements are not given. There are three styles of advertisement but they are identical in carrying the expression “themob – join the family” and a reference to <mob.tv> and <wapmob.tv> websites.
13. There is no further physical evidence submitted of the Complainant’s claim of “global commercial use” or of the Marks being “famous and well known throughout the world”.
14. In terms of internet traffic, the Parties have submitted contradictory reports of hits on the <.mob.tv> website and these will be discussed where pertinent below.
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.
Paragraph 4(a)(i) of the Policy requires two positive findings for a complainant. That it has rights in a mark, and that the disputed domain name is identical or confusingly similar to the mark. In this case, it is convenient to examine those questions in that order.
As noted already, the Complainant has no registered rights, but as it correctly reminds the Panel, it is not necessary to hold a registration of a mark with a governmental authority to establish rights in a mark. Common law rights are sufficient. See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (stating that “The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy).
The Complainant asserts common law rights in the marks on the basis of broad public recognition. The key issue in this case is to determine the strength of that claim.
In addition to the National Arbitration Forum, a second body responsible for the administration of ICANN’s domain dispute resolution Policy is the World Intellectual Property Organization (“WIPO”). To improve awareness of views on certain questions that commonly arise in proceedings under the Policy, the WIPO Arbitration and Mediation Center produced an overview of panel positions on key procedural and substantial issues. See http://www.wipo.int/amc/en/domains/search/overview/index.html.
One key question
considered was what needs to be shown for a complainant to successfully
assert common-law or unregistered trademark rights? The consensus view was that the complainant must show that the
name has become a distinctive identifier associated with the complainant or its
goods and services. Relevant evidence of such “secondary meaning” includes
length and amount of sales under the mark, the nature and extent of
advertising, consumer surveys and media recognition. See Uitgeverij Crux v. W. Frederic Isler, D2000-0575 (WIPO
Oct. 30, 2000); see also Skattedirektoratet v. Eivind Nag, D2000-1314
(WIPO Dec. 18, 2000); see also Amsec Enters, L.C. v. Sharon McCall, D2001-0083
(WIPO Apr. 3, 2001); see also Australian Trade Comm’n v. Matthew Reader,
D2002-0786 (WIPO Nov. 12, 2002); see also Imperial College v. Christophe
Dessimoz, D2004-0322 (June 30, 2004).
The Panel may therefore find that the Complainant has established common law rights in THE MOB or its other marks by creating secondary meaning and public recognition through marketing and continuous use. 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 BroadcastAmerica.com, Inc. v. Quo, D2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).
The Complainant claims use of THE MOB since late 2004. By admission, the first use was by the UK Parent. There is no evidence of the relationship between the UK Parent and the Complainant, either in terms of group ownership or in terms of regulation or use of group trademarks. The question of whether a complainant which is a trademark licensee or a related company to a trademark holder has rights in a trade mark under the Policy has engaged earlier panels. See Telcel, C.A. v. Jerm and Jhonattan Ramírez, D2002-0309 (WIPO June 5, 2002); see also Toyota Motor Sales U.S.A. Inc. v. J. Alexis Prods, D2003-0624 (WIPO Oct. 16, 2004); see also Grupo Televisa, S.A v. Party Night Inc., D2003-0796 (WIPO Dec. 2, 2003); see also Spherion Corp. v. Peter Carrington, D2003-1027 (WIPO Mar. 10, 2004). The consensus is that in most circumstances a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a mark is considered to have rights in the trademark. Nonetheless, the question in this case remains unresolved since the Panel is reminded that in NBA Properties, Inc. v. Adirondack Software Corp., D2000-1211 (WIPO Dec. 8, 2000), where it was held that a complainant that holds a non-exclusive trade mark license does not have rights in a trade mark under the Policy.
Leaving to one side that question concerning ownership of the goodwill, all that can be said on the evidence is that sometime after October 2004, the Complainant and its UK Parent collaboratively launched the service in the United States, Canada and the Netherlands and that it would be normal to assume that the Complainant somehow shares in the enjoyment of that goodwill and reputation.
A second difficulty concerns the extent of the goodwill and reputation. The Respondent contends that the Complainant has not demonstrated that THE MOB mark has established secondary meaning in connection with the Complainant’s business.
Even allowing for the accelerated brand awareness that is possible with web based enterprises, the most generous timeframe allowable to the Complainant to garner that goodwill is from October 2004 to March 2006, a period of only seventeen months.
The Respondent cites Google and Alexa sources counter-indicative to the Complainant’s figure of 5,000 daily visits and suggests that the Complainant’s website is infrequently visited and not at all well known. In its Additional Submissions, the Complainant responds by exhibiting a “weblog” of hits but the Panel is of the view that this evidence only has modest weight since chronologically a substantial period of the report postdates the Respondent’s acquisition of the disputed domain name in March 2006.
The print media evidence provided by the Complainant and discussed under FINDINGS, para 12, above must be given very light weight as there is no time reference, frequency of publication, or circulation figures for the relevant magazines. In addition, they each carry the composite expression “themob – join the family” as the only trade source identifying material.
The Panel is not assisted by any
further evidence of the Complainant’s claim of “global commercial use,” or of
the marks being “famous and well known throughout the world” and is mindful of
the decision in Weatherford Int’l, Inc.
v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003), where the Panel held
that “[a]lthough Complainant asserts common law rights in the WELLSERV mark, it
failed to submit any evidence indicating extensive use or that its claimed mark
has achieved secondary source identity . . . [Complainant’s
claim that it is well known] is a finding that must be supported by evidence
and not self-serving assertions.”. See also 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).
These
cases, and the ones previously referred to above in the WIPO survey make plain
what must be shown by evidence to support common law rights. In this case, not so much as the UK Parent’s
( a public listed company) annual reports were tendered.
For all
these reasons, the Panel finds that the Complainant has failed to sufficiently
establish common law rights in the Marks.
With that
finding, the Panel is under no obligation to proceed further however in order
that the Paragraph 4(a)(i) of the Policy is considered in all its aspects the
Panel will in short form address the question of confusing similarity. It does so in order to underscore the
evidentiary obligation which fell to the Complainant in this case and in others
like it.
The Respondent asserts that even if the Complainant had rights in the mark THE MOB, the disputed domain name is distinct and not confusingly similar.
The Panel supports what was said in the case of 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 Broadcom Corp. v. Smoking Domains, FA 137037 (Nat. Arb. Forum Feb. 11, 2003) (finding that the <broadcommunications.com> domain name was not confusingly similar to the complainant’s BROADCOM mark because “Complainant is not entitled to protection for every usage of the word ‘broad’ in combination with other terms.”).
This case is a reminder of those
comments and of the fact that although there are many similarities between
domain names and trademarks, there are also fundamental differences. The best trademarks are per se distinctive. Frequently the most valuable domain names
are utterly generic. The term “mob”
will be recognized in the Internet context first and foremost as an
abbreviation of mobile or mobile phone. It says something that virtually every
country extension to a “mob” prefixed domain name is currently registered. In pre-Complaint correspondence between the
parties, the Respondent referred to the disputed domain name as “the #1 domain
in the mobile industry”. It said in reply
to the Complainant’s anonymous approach, we “acquired the domain for $35K for
development this year, so the offer has to be truly exceptional for us to even
start considering selling it”. In
correspondence with the USPTO the Complainant explained that MOBMUSIC was
shorthand for downloadable music to a mobile device, not mob(ster) music. The USPTO objections to the Complainant’s
applications hangs on the direct descriptiveness of both the term “mob” and ,
as the Complainant itself calls them, the
common qualifiers “the”, “music”, “music group” or “flix”.
In order for a complainant to convince a panel that it had exclusive
rights in a term such as “mob” absent a trademark registration, it would need
to marshal together exceptional evidence of consumer recognition. Amongst other qualifications, that
recognition would need to be of the exact integer and not of, for example,
“themob”, carrying as it does the suggestion of something quite different.
The Panel is therefore of the inclination that were it necessary to do so, it would also hold that under Paragraph 4(a)(i) of the Policy, the Complainant had not on the evidence shown that the disputed domain name was confusingly similar to any of the marks.
For the reasons set out above, it is not necessary to reach a finding on this aspect of the Policy.
For the reasons set out above, it is not necessary to reach a finding on this aspect of the Policy.
DECISION
Having failed to establish at least one of the three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Debrett Lyons, Panelist
Dated: November 3, 2006
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