Travis Hill v Needalife.com

DECISION

Travis Hill v. Needalife.com

Claim Number: FA0008000095345

PARTIES

The Complainant is Travis Hill, Provo, UT, USA ("Complainant"). The Respondent is Needalife.com, Phoenix, AZ, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain name at issue is "MEDIAENFORCER.COM", registered with Dotster, Inc.

PANELIST(s)

The Panelist certifies that he has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

Judge Ralph Yachnin, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 08/02/2000; The Forum received a hard copy of the Complaint on 08/02/2000.

On 07/26/2000, Dotster, Inc. confirmed by e-mail to The Forum that the domain name "MEDIAENFORCER.COM" is registered with Dotster, Inc. and that the Respondent is the current registrant of the name.

On 08/08/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/28/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts by e-mail. It was also e-mailed to postmaster@mediaenforcer.com.

On August 24, 2,000, pursuant to Complainant's request to have the dispute decided by a Single Member panel, The Forum appointed Judge Ralph Yachnin, as Panelist.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A. Complainant

The mark MEDIA ENFORCER is the name of the Complainant's software product. It protects the rights of artists and other media producers against illegitimate copying through peer-to-peer networks, such as Napster network.

The mark is the subject of a pending application for registered status with the United States Patent and Trademark Office.

The mark serves as the logo by which a Utah company is known, and of which the Complainant is the sole member.

The mark has been in heavy use previous to the registration of the subject domain name.

The mark will be used in the future to identify related software products.

The domain name "MEDIAENFORCER.COM " is identical to or confusingly similar to the Complainant's mark "MEDIA ENFORCER", except that there is a space between "MEDIA" and "ENFORCER" in the Complainant's mark and not in the Respondent's domain name, and the added "COM" in the Respondents domain name.

Respondent has no rights in the domain name as it does not reflect names by which the Respondent is known, Respondent is not using the domain name with a bona fide offering of goods or services, and Respondent is using the domain name to tarnish the Complainant's name.

Respondent used an invalid phone number when registering the domain name.

Respondent allows advertising on the site, generating income based on recognition of the mark alone.

Respondent registered the domain name following press coverage of the mark in question.

B. Respondent

The domain name "MEDIAENFORCER .COM" is being used to criticize the invasive nature of the Media Enforcer software, using parody, actual facts and views of others. This satisfies the "fair Use" clause under Copyrights, Title 17, section 107.

MEDIAENFORCER.COM is providing a bona fide offering of goods or services. MEDIA ENFORCER is an application which targets Napster and Gnutella users. Respondent is using the domain name to inform others of the existence of MEDIA ENFORCER and its invasive nature of this application.

The domain name MEDIAENFORCER,COM was not registered and used in bad

faith because (1) It was registered after Respondent found the existence of

MEDIA ENFORCER for the purpose of sharing Respondent's views and informing

the public of the product; (2) MEDIAENFORCER .COM is a non-commercial site

which criticizes the MEDIA ENFORCER software; (3) MEDIAENFORCER.COM was

specifically designed to avoid confusion with Complainant's site; (4) The link to Complainant's site was not put in place until Respondent obtained a lawyer's approval; (5) MEDIAENFORCER.COM is not used for commercial purposes and does not generate revenues, but to obtain a free domain hosting Respondent had to go to Hypermart which required their ad banners be displayed in exchange for free hosting; (6) As to the invalid phone line, respondent did not have a personal phone hence Respondent was unable to provide a telephone number.

FINDINGS

The mark is the name of Complainant's software product, which is used to stop copying of artists works through networks such as Napster.

The mark is the subject of a pending application for registration with the United States Patent and Trademark Office, has been used in the articles of a company of which Complainant is the sole owner, has served as the logo by which the product and company has been known, and as Respondent admits, has been used by the Complainant and known by the Respondent to have been used by the Complainant prior to the registration of the domain name by the Respondent.

The Respondent has no rights or legitimate interests in the domain name because it does not in any way reflect names by which the Respondent is commonly known, is not used in connection with a bona fide offering of goods or services, and Respondent is using the name to tarnish the Complainant's mark.

The Respondent used a false telephone number (620-000-000) in its application for the domain name. rather than set forth that it had no telephone number.

Respondent registered the domain name MEDIAENFORCER.COM to prevent people from gaining access to the Complainant.

Although Respondent does not gain revenue from the domain name site, it does have advertising on the site which provides income to the host who owns the site. Hence the use of the domain name does provide income through its use.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be canceled 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.

Identical and/or Confusingly Similar

Rights or Legitimate Interests

The domain name in dispute suggests some affiliation or connection of the Respondent with the Complainant, when in fact there is no such affiliation. The Respondent is using the domain name to misleadingly divert people who are attempting to contact the Complainant's. This is one fact that distinguishes this case from UDRP precedent. In Compusa Mgmt. Co. v. Customized Computer Training (FA 95082 (Nat. Arb. Forum, Aug. 17, 2000), the Complainant failed to show that there was any disruption in Complainantís business when the Respondent registered stopcompusa.com and bancompusa.com and posted negative comments on the sites. The Respondent knew before obtaining the domain name that it was in fact the Complainant's mark, but used it in spite of that. Lastly, the Respondent has never been known to use the domain name MEDIAENFORCER.COM, or any similar name, prior to registering that name as a domain name.

Furthermore, the fact that Respondent advertises on the site constitutes commercial use, and thus negates his claim that it is making a "fair use" of the site. See Bally Total Fitness Holding Corp. v. Faber, 29 F.Supp.2d 1161, 1167-68) (C.D. Ca. 1998) (stating that a domain-name registrantís rights may be outweighed if the trademark holder can show commercial use and tarnishment); Cabelaís, Inc. v. Cupcake Patrol, FA 95080 (Nat. Arb. Forum Aug. 29, 2000).

Registration and Use in Bad Faith

The circumstances show that the Respondent obtained the domain name, not for the purpose of using it in connection with a bona fide offering of goods and services, but to tarnish the Complainant's mark. The domain name was further registered by the Respondent in bad faith in that the application for same contained a false telephone number. The domain name was obtained for the purpose of causing people who were seeking the software and organization of the Complainant to be diverted to Respondent's site.

DECISION

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "MEDIAENFORCER.COM" REGISTERED BY THE RESPONDENT NEEDALIFE.COM BE TRANSFERRED TO COMPLAINANT TRAVIS HILL.

___________________________________________________

Ralph Yachnin, Panelist

Dated: August 30, 2000

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