National Arbitration Forum

 

DECISION

 

iMotions - Emotion Technology A/S v. Name Administration Inc. (BVI)

Claim Number: FA0610000824170

 

PARTIES

 

Complainant is iMotions - Emotion Technology A/S (“Complainant”), represented by Patrick J. Jennings, of Pillsbury Winthrop Shaw Pittman, LLP, 2300 N Street N.W., Washington, DC 20037.  Respondent is Name Administration Inc. (BVI) (“Respondent”), represented by John Berryhill, 4 West Front Street, Media, PA 19063.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <imotions.com>, registered with Domain Name Sales Corp.

 

PANEL

 

The undersigned certify 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.

 

James A. Carmody, Esq., Q. Todd Dickinson, Esq. and Bruce E. Meyerson, Esq. as Panelists.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 19, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 24, 2006.

 

On October 20, 2006, Domain Name Sales Corp. confirmed by e-mail to the National Arbitration Forum that the <imotions.com> domain name is registered with Domain Name Sales Corp. and that the Respondent is the current registrant of the name.  Domain Name Sales Corp. has verified that Respondent is bound by the Domain Name Sales Corp. 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 27, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 16, 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@imotions.com by e-mail.

 

A timely Response was received and determined to be complete on November 16, 2006.

 

An Additional Submission from Complainant was received and determined to be complete on November 21, 2006. 

 

An Additional Submission from Respondent was received and determined to be complete on November 27, 2006. 

 

On December 5, 2006, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., Q. Todd Dickinson, Esq. and Bruce E. Meyerson, Esq. as Panelists.

 

RELIEF SOUGHT

 

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

 

PARTIES’ CONTENTIONS

 

A.     Complainant

 

Complainant contends that the disputed domain name is confusingly similar to its “IMOTIONS” trademark.  Complainant asserts that Respondent is not commonly known or identified by the domain name or by “IMOTIONS.”  Finally, Complainant contends that Respondent is not using the domain name in connection with a bona fide offering of goods or services.

 

B.     Respondent

 

Respondent contends that Complainant has no “rights” in the mark “IMOTIONS” because the United States Patent and Trademark Office refused to register the mark and that Complainant’s “International Application” is not sufficient to grant trademark rights in any jurisdiction.  Respondent asserts that it has rights or interests in the domain name because it is a well known provider of keyword-based paid search services.  Respondent “registers and associates domain names with paid search results on the basis of correspondence between the content of the domain name and keywords upon which advertisers bid for placement through a third-party keyword-search advertising agency.”  Respondent asserts it has not registered the domain name in bad faith because Respondent registered the domain name before Complainant even began using its mark.

 

C.     Additional Submissions

 

In its Additional Submission Complainant reasserts that the domain name is confusingly similar to its mark and that it has rights in the mark.  Complainant states it is immaterial that Respondent registered the domain name before Complainant began using its mark.  Complainant contends that Respondent is not using the domain name in connection with a bona fide offering of goods or services because the domain name is nothing more than a compilation of links to third-party web sites.  In its Additional Submission Respondent contends that Complainant not only lacks ownership of a trade or service mark in any jurisdiction, but also Complainant has produced no evidence of common law rights to its mark.  Respondent also points out that its business has been the subject of national news coverage.  Respondent accuses the Complainant of reverse domain name hijacking.

 

FINDINGS

 

Complainant provides computer hardware and software products based in Denmark.  Although Complaint began use of its mark “IMOTIONS” in commerce in 2006, Complainant has not registered its mark with any jurisdiction and has presented no evidence establishing that it has common law rights to the mark.   Respondent is a provider of keyword-based paid search services and it has used the domain name in question since April 10, 2002. 

 

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.

 

Because Complainant has not established that it has “rights” in a trademark identical or confusingly similar to the domain name, it is not necessary to consider the second two elements of Paragraph 4(a).

 

Identical and/or Confusingly Similar

 

Respondent has owned the domain name since April 10, 2002.  The record reflects that Complainant has abandoned the application process for its trademark with the United States Patent and Trademark Office, and its international trademark application made in 2005 does not by itself, grant it trademark rights in any jurisdiction.  Thus, the Panel finds that Complainant has not established rights in the mark prior to Respondent’s domain name registration and therefore has failed to satisfy Policy ¶ 4(a)(i).  See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily implies that Complainant’s rights predate Respondent’s registration . . . of the domain name”); see also Trujillo v. 1Soft Corp., FA 171259 (Nat. Arb. Forum Sept. 10, 2003) (“As Complainants have not shown that their rights pre-date Registrant's domain name, Complainants have not satisfied paragraph 4(a)(i) of the Policy.”).  Although Complainant contends that it also has common law rights in its trademark, it has not presented evidence of use sufficient to establish such rights.  See County Bookshops v. Loveday, D2000-0655 (WIPO Sept. 22, 2000).   Thus, Complainant has been unable to establish sufficient “rights” in a trademark similar or identical to the domain name at issue.

 

Because Complainant has failed to prove the first element of the Policy, it is not necessary to make a determination with respect to the remaining two elements.

 

DECISION

 

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered denying Complainant’s request that the <imotions.com> domain name be transferred from Respondent to Complainant.

 

 

 

James A. Carmody, Esq., Q. Todd Dickinson, Esq. and Bruce E. Meyerson, Esq., Panelists
Dated: December 19, 2006

 

 

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