Visual Sound, Inc. v. Visual Sound LLC
Claim Number: FA1608001687118
Complainant is Visual Sound, Inc. (“Complainant”), represented by Robert B. Famiglio of Famiglio & Associates, Pennsylvania, USA. Respondent is Visual Sound LLC (“Respondent”), represented by Douglas T. Johnson of Miller & Martin PLLC, Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <visualsound.net>, registered with Network Solutions, LLC.
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.
ROBERT T. PFEUFFER, Senior District Judge, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 5, 2016; the Forum received payment on August 5, 2016.
On August 5, 2016, Network Solutions, LLC confirmed by e-mail to the Forum that the <visualsound.net> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 2016 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@visualsound.net. Also on August 9, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 August 29, 2016.
On September 9, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed ROBERT T. PFEUFFER as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Complainant has rights in the VISUAL SOUND mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,430,806, registered Feb. 27, 2001). Respondent’s <visualsound.net> domain name is identical to the VISUAL SOUND mark because it contains the words of the mark along with the generic top-level domain (“gTLD”) “.net.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <visualsound.net> domain name because Respondent’s attempted trademark of the VISUAL SOUND mark was refused and Respondent maintains its business under the “Truetone” name. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the website merely redirects to Respondent’s business portal at <truetone.com> and because Respondent has demanded $10,000.00 from Complainant to transfer the domain name.
Policy ¶ 4(a)(iii)
Respondent uses the <visualsound.net> domain name in bad faith because it merely redirects to Respondent’s <truetone.com> website and because Respondent has demanded $10,000.00 from Complainant in order to secure a transfer of the domain name.
B. Respondent.
Policy ¶ 4(a)(i) Respondent makes no assertions.
Policy ¶ 4(a)(ii)
Respondent has been known by the <visualsound.net> domain name as its predecessor began using the VISUAL SOUND mark in conjunction with guitar pedals and amplifiers as early as 1999, Respondent has owned a USPTO registration for the VISUAL SOUND mark, and Respondent’s business name is “Visual Sound, LLC.” Respondent uses the <visualsound.net> domain name to provide a legitimate offering of goods as it was used from 1999–2014 to sell goods branded with the VISUAL SOUND mark and currently redirects Internet users to its current web portal.
Policy ¶ 4(a)(iii)
Respondent has not engaged in bad faith registration or use of the <visualsound.net> domain name as Respondent has common law rights and prior trademark rights in the VISUAL SOUND mark, Respondent does business as “Visual Sound, LLC,” and the domain has been used in connection with legitimate offerings of goods branded with the VISUAL SOUND mark without having targeted Complainant.
Preliminary Issue: Trademark Dispute Outside the Scope of the UDRP
Complainant argues that its USPTO registrations of the VISUAL SOUND mark, provided in its Exhibits, combined with actions taken by the USPTO refusing Complainant’s registration of the mark, are sufficient to show that it has exclusive rights in the mark.
Respondent maintains that, rather, it did own a USPTO registration of the VISUAL SOUND mark in the past, and additionally, has common law rights in the mark dating back to its first use by Respondent’s predecessor in interest in 1999 in conjunction with guitar pedals and amplifiers.
In sum, Complainant and Respondent both assert rights to the VISUAL SOUND mark. The Panel has determined that this dispute falls outside the scope of the Policy, and therefore chooses to dismiss the Complaint. In Commercial Publishing Co. v. EarthComm, Inc., FA 95013 (Forum July 20, 2000), the panel indicated that legitimate disputes should be decided by the courts:
The adopted policy establishes a streamlined, inexpensive administrative-dispute resolution procedure intended only for the relatively narrow class of cases of “abusive registrations.” Thus, the fact that the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute is a feature of the policy, not a flaw. The policy relegates all “legitimate disputes” to the courts. Only cases of abusive registrations are intended to be subject to the streamline [sic] administrative dispute-resolution procedure.
Previous panels have chosen to dismiss UDRP complaints which centered upon legitimate trademark disputes. See, e.g., Abbott Labs. v. Patel, FA 740337 (Forum Aug. 15, 2006) (holding that assertions of trademark infringement are totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else); see also Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Forum Apr. 25, 2002) (“If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding.”). Therefore, the Panel chooses to dismiss the instant Complaint.
The panel having determined that this dispute is a matter to be decided in a court of law, not this forum, orders the complaint dismissed.
ROBERT T. PFEUFFER, Panelist
Dated: September 20, 2016.
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