DotNetNuke
Corporation v. NameBubble LLC
Claim Number: FA0804001180949
PARTIES
Complainant is DotNetNuke
Corporation ("Complainant"), represented by Michael G. Atkins,
of Graham &
Dunn PC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue
is <dnn.com>, registered
with GoDaddy.com, Inc.
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
Panelists in this proceeding.
David A. Einhorn (Chair), Judge
Carolyn Marks Johnson and Judge R. Glen Ayers as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
23, 2008; the National Arbitration Forum received a hard copy of the Complaint
on May 1, 2008.
On April 24, 2008, GoDaddy.com, Inc. confirmed by
e-mail to the National Arbitration Forum that the <dnn.com> domain
name is registered with GoDaddy.com, Inc. and that the Respondent is the
current registrant of the name. GoDaddy.com, Inc. has verified that Respondent
is bound by the GoDaddy.com, Inc. 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 May 2,
2008, a Notification of Complaint and Commencement of Administrative Proceeding
(the "Commencement Notification"), setting a deadline of May 22, 2008
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@dnn.com by e-mail.
A timely Response was received and
determined to be complete on May 21, 2008.
On May 27, 2008, Complainant submitted an Additional Submission that was determined to be timely.
On June 2, 2008, Respondent submitted an
Additional Submission that was determined to be timely.
On June 4, 2008, pursuant to Complainant's request to
have the dispute decided by a three-member
Panel, the National Arbitration Forum appointed David A. Einhorn (Chair),
Judge Carolyn Marks Johnson and Judge R. Glen Ayers as Panelists.
RELIEF SOUGHT
Complainant requests that the
domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A.
Complainant
Complainant
alleges as follows:
(1) Complainant owns the mark DNN
for computer software and computer programming.
Complainant filed an application for federal registration of this mark on March
25, 2008 based on an alleged first use date of March 25, 2008. Said
application, Serial No. 77/431,300, is currently pending. Complainant also
asserts that the company Perpetual Motion
Interactive Systems, Inc. ("PMIS"), a Canadian corporation, owns a
registration for DOTNETNUKE under registration number 3,206,060 (as well
as a similar registration in
(2)
Respondent
has no rights or legitimate interests with respect to this domain name.
(3)
The
domain name has been registered and is being used in bad faith.
B.
Respondent
Respondent
argues that Complainant's pending trademark application does not confer rights.
Respondent also argues that the cited DOTNETNUKE registrations are irrelevant
since they are owned by a company other than Complainant.
C.
Additional Submissions
Complainant points to a 2006 press release from
PMIS saying that PMIS will transfer its trademarks to Complainant.
Complainant further asserts common
law rights based on usage of the mark beginning February 2003. Respondent argues that Complainant has not established
common law rights, having failed to provide
any evidence of active use of the DNN mark during the relevant time,
such as the size and location of Complainant's customer base, its sales
figures, its revenues, its advertising, expenditures, etc.
FINDINGS AND 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.
The threshold issue here is whether Complainant
has established a protectable right in the mark DNN. Here, Complainant
has filed a federal trademark application for DNN which is, as of yet,
unexamined by the Trademark Office. This filing of an application is, in itself, insufficient to confer any protectable
rights in Complainant. See Razorbox,
Inc. v. Skjodt, FA
150795 (Nat. Arb. Forum May 9, 2003) ("Complainant's pending trademark application does not in and of itself demonstrate
trademark rights in the mark applied for."). Complainant also
claims rights to the mark DNN because registrations for that mark is owned by the Canadian corporation, PMIS,
which had announced, two years ago, an intention to assign those marks
to Complainant. PMIS has not assigned those marks to date, however, and
Complainant's assertion of rights, based on PMIS' alleged past intention to
assign, followed by no actual assignment, is groundless and frivolous.
Complainant also claims to have acquired common
law rights in the mark DNN. However,
Complainant has provided no information or evidence to support its bare assertion
that this mark has acquired secondary meaning. Absent any proof of secondary meaning, this Panel cannot conclude that
Complainant has a protectable right in the mark DNN. See Molecular Nutrition, Inc. v.
Network News & Publ'ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (Complainant in that case had
alleged that it had been selling its products over the Internet for over
two years. However, the panel found no
protectable common law rights in the mark since complainant had supplied the panel
with no documentation concerning the volume and scope of such sales). See also U.S. Fire Arms Mfg. Co. v. Salvia Corp., FA 612350 (Nat.
Arb. Forum Feb. 1, 2006) ("The type of evidence generally required to
support a finding of common law rights in a mark includes business sales figures,
revenue, advertising expenditures, number of consumers served, and evidence
that there is a strong customer identification of the mark with
Complainant's goods or services").
For
the foregoing reasons, this Panel finds that Complainant has failed to prove
that the disputed domain name is identical or confusingly similar to a mark in
which Complainant has rights.
Since Complainant has failed to satisfy paragraph
4(a)(i) of the Policy, the Panel need not examine whether Complainant would
prevail as to the criteria in paragraphs 4(a)(ii) and 4(a)(iii).
DECISION
Having considered all three
elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <dnn.com> domain name remain registered
to Respondent.
David A. Einhorn, Presiding Panelist
Judge Carolyn Marks Johnson, Panelist
Judge R. Glen Ayers, Panelist
Dated: June 18, 2008
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