Mosaic International, LLC v. PZ -- No Auction
Claim Number: FA1002001307578
PARTIES
Complainant is Mosaic International, LLC (“Complainant”), represented by John E. Russell, of Allmark Trademark,
California, USA. Respondent is PZ -- No Auction (“Respondent”),
represented by Steven L. Rinehart,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mia.com>,
registered with Network Solutions, 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.
Honorable Charles K. McCotter Jr., (Ret.),
and Honorable John J. Upchurch (Ret.) as Panelists and Honorable Karl V. Fink
(Ret.) as Chair.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 10, 2010.
With its Complaint, Complainant also chose to proceed entirely
electronically under the new Rules for Uniform Domain Name Dispute Resolution
Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name
Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form
available on the Forum’s website.
On February 12, 2010, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <mia.com>
domain name is registered with Network Solutions, Inc. and that the Respondent
is the current registrant of the name.
Network Solutions, Inc. has verified that Respondent is bound by the
Network Solutions, 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 February 22, 2010, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 15, 2010 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@mia.com by e-mail.
On February 22, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of March 15,
2010 by which Respondent could file a Response to the Complaint, via e-mail to
all entities and persons listed on Respondent’s registration as technical,
administrative, and billing contacts, and to postmaster@mia.com. Also on February 22, 2010, the Written Notice
of the Complaint, notifying Respondent of the email addresses served and the
deadline for a Response, was transmitted to Respondent
via post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March
15, 2010. Respondent did not indicate
assent to participate in an electronic process; therefore Respondent’s
submission was required to be sent in hard copy per the version of UDRP Rule 5
currently in effect.
Complainant’s Additional Submission was received on March 22, 2010 in
compliance with Supplemental Rule 7.
An Additional Submission dated March 24, 2010 was submitted by
Respondent and determined to be deficient.
This additional submission was not considered by the Panel.
On March 24, 2010, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Honorable Charles K. McCotter Jr., (Ret.),
and Honorable John J. Upchurch (Ret.) as Panelists and Honorable Karl V. Fink
(Ret.) as Chair.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Mosaic International, LLC. is the
owner of the trademark MIA. The MIA
trademark has been used in connection with a wide array of hair accessories and
appliances since the beginning of 2004.
Since its introduction in 2004, Complainant’s MIA brand has become one
of the best known names in the consumer hair accessories field.
The domain name is identical or confusingly similar to a trademark or
service mark in which Complainant had rights.
Respondent has no rights or legitimate interests in this domain name
whatsoever. Complainant has not
authorized, licensed or otherwise given permission to any individuals or
entities to register or use the MIA mark on its behalf.
Respondent is neither using nor preparing to use the mia.com domain
name in connection with a bona fide offering of goods. The circumstances of Respondent’s procurement
and use of the domain name belie any claim of a bona fide offering of goods or services.
The currentmia.com website has an assortment of advertising listings
and links to other websites. Mia.com is
a classic example of a parked domain situation.
At the very top of the webpage, it is stated that “THIS DOMAIN IS FOR
SALE.” This type of parked domain is the
prototypical work of a large-scale domainer, which secures hundreds or
thousands of domain name registrations for the sole purpose of resale, and/or
generating revenue from random keyword searches. Such conduct does not constitute the bona
fide offering of goods and services.
Respondent is not commonly known by the domain.
Respondent has made no legitimate noncommercial or fair use of the
domain name. The website at mia.com is
entirely composed of links to a variety of websites which sell a variety of
goods and services and provide links to competitors of Complainant.
The domain name was registered and is being used in bad faith. Respondent had acquired the domain name for
the purpose of selling it to Complainant, for a price far in excess of its out of pocket costs.
On March 4, 2009, Respondent offered to sell the domain name mia.com to Complainant
for the amount of $800,000.00. This
offer by Respondent is sufficient to show bad faith on the part of Respondent.
Respondent has intentionally attempted to attract, for commercial gain,
Internet users to its website, and has at least created initial interest
confusion, as to the source of the mia.com website, and the goods or services
sold therein.
In attempting to locate MIA hair accessories on the Internet, consumers
will logically type in mia.com. Instead
of being directed to Registrant’s website, they are directed to Respondent’s
feeder website.
Respondent had intentionally concealed its identity by operating under
a name that is not a registered business name.
Such action has been found to support bad faith in a UDRP action.
B. Respondent
In 1995, when the Internet was in its infancy, the Respondent, Patricia
Zumpfe (“Patricia”) (doing business as PZ- No Auction for the purposes of the
proceeding), registered the Disputed Domain <mia.com> for use as a
bulletin board email service (BBS) for employees of the City of Miami, where
she was employed.
The Disputed Domain was used to host Patricia’s BBS and independently
formed PC user group for Miami city employees.
Patricia’s services became commonly known by the term MIA.
Complainant did not file its application for trademark registration
before the USPTO until July 18, 2007, more than twelve (12) years after
Respondent registered the disputed domain name.
By Complainant’s own admission in its trademark application and
declaration annexed to the Complaint, Complainant did not begin using the Mark
until 2004 at the earliest.
Respondent has never made use of the Disputed Domain for any purpose
relating to hair accessories. Respondent
has always been making bona fide, legitimate use of the Disputed Domain, and
the Disputed Domain was registered in good-faith, and is being used in
good-faith.
The term MIA is generic, and not a mark to which Complainant can claim
exclusive rights across all services and classes of goods. Complainant has no enforceable rights in so
generic a term, and certainly did not have these rights in 1995 when the
Disputed Domain was registered by the Respondent.
The USPTO has no less than thirty-two (32) marks which have been
successfully registered before the USPTO on the term MIA in various classes, of
which ten are presently live.
The English dictionary defines MIA as being an abbreviation for several
recognized terms, a Master of International Affairs degree, a soldier missing
in action, the Miami International Airport, and the Miami Dolphins. The fact that the mark is generic and/or
descriptive in and of itself, further establishes Respondent’s legitimate
interest in the Disputed Domains.
Complainant has submitted no evidence or allegations of common law
trademark rights predating the registration of the Disputed Domain.
Reverse Domain Name Hijacking
Complainant had no bona fide basis for commencing this proceeding under
the UDRP, and is culpable for reverse domain name hijacking.
C. Additional Submissions
Complainant
Respondent is in the business of acquiring large numbers of domain names and using them as parked domain feeder sites. Although Respondent attempts to argue that she had prior legitimate use of the mia.com domain name, her bad faith use of the site in the present is relevant.
Respondent acquired a large quantity of domain names and uses the domain names to lure visitors for the purpose of click through revenues.
Respondent is also actively attempting to sell mia.com to the highest bidder.
According to the Respondent’s own evidence, she never used the mia.com domain for any purpose related to her employment with the City of Miami.
The term “MIA” is neither generic nor descriptive for hair accessories.
The particular timing of the domain name registration should not foreclose a finding of bad faith in this case.
FINDINGS
For the reasons set forth below, the Panel
finds Complainant has not proven it is entitled to the relief requested.
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.
Since the Panel has found Complainant has not proven bad faith, no decision is made on this element.
Since the Panel has found Complainant has not proven bad faith, no decision is made on this element.
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Respondent asserts and the Panel finds that its registration of the <mia.com> domain name predates Complainant’s use of the mark in commerce. Respondent registered the disputed domain name on March 6, 1995, nearly nine years prior to Complainant’s first use of the mark in commerce. The Panel finds that Respondent’s predating registration of the disputed domain name negates a finding of bad faith registration and use. See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb.Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).
Complainant has not proven this element.
Reverse Domain Name Hijacking
Although
the Panel finds that Complainant has failed to satisfy its burden under the
Policy, this does not necessarily require a finding of reverse domain name
hijacking on behalf of Complainant in bringing the instant claim.
The Panel finds
Reverse Domain Hijacking has not been proven.
DECISION
Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <mia.com>
domain name remain with Respondent.
Honorable Karl V. Fink (Ret.), Chair
Dated: April 7, 2010
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