The Complainant is Viamedia, Inc. of Lexington, Kentucky, United States of America, represented by Gross McGinley LLP, United States of America.
The Respondent is Olsen Systems, LLC of Brown Deer, Wisconsin, United States of America.
The disputed Domain Name <viamediasolutions.com> is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2009. On September 23, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On September 30, 2009, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 1, 2009. A further amendment to the Complaint was filed on October 2, 2009. The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2009. On October 23, 2009, the Respondent submitted an informal response.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 30, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Both parties subsequently submitted supplemental filings, as discussed below.
The Complainant is a Pennsylvania business corporation headquartered in Lexington, Kentucky, United States of America. The Complainant is in the business of selling advertising for cable television and other video services nationwide in the United States, including the Chicago area. The Complainant has operated a website at “www.viamediatv.com” since 2002. The Complainant claims common law trademark rights to the mark VIAMEDIA and in August 2009 filed an application for registration of the standard character mark with the United States Patent and Trademark Office (USPTO).
The parties agree that sometime in 2008 the Complainant arranged for the Respondent, a website developer, to create a sample “generic” website for the Complainant. The Respondent did so and registered the Domain Name on January 6, 2009. The Complainant states that the Respondent, without the Complainant's authorization, “lifted graphics, web design, and other intellectual property and proprietary information from Complainant's website” and then launched the website live on the Internet. The Respondent says this was done with the knowledge of the Complainant's management and that the website functioned in this form for roughly a year. The Respondent also states that it was never paid for the website development.
In 2009, the Complainant contacted the Respondent about transferring the Domain Name. The Respondent says it offered to sell the Domain Name for USD1000 and then for USD 500. However, the parties did not agree on a price. The Respondent then advertised the Domain Name for sale for USD 9500. In one subsequent email exchange with the Complainant, the Respondent's principal stated, “[i]f I do not find a buyer for this domain name, I will remove the ad and have the domain name redirect traffic directly to the Comcast Spotlight website,” referring to a website operated by a direct competitor of the Complainant.
The Respondent subsequently redirected the Domain Name to a website of “OlsenSystems.com” that advertised the Domain Name for sale for USD 9500 and referred visitors to the Comcast Spotlight website.
The Domain Name currently resolves to a website headed “ViaMediaSolutions.com”, which the website identifies as a domain name “owned by OlsenSystems.com.” The website offers advertising services in Chicago and Milwaukee using Adobe Flash animation to create local television commercials for those markets. A statement at the bottom of the home page disclaims any affiliation with the Complainant or with another company, Marketing.com:
“ViaMediaSolutions.com is not affiliated with ViaMedia.com (a Marketing.com website). ViaMediaSolutions.com is not affiliated with any of the many websites with the ViaMedia name as the root name of their domain name.”
The Complainant argues that the Domain Name is confusingly similar to the Complainant's domain name and common law mark and that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant contends that the Respondent registered and used the Domain Name in an effort to “extort money” from the Complainant, or primarily for the purpose of disrupting the Complainant's business, and in addition to misdirect Internet users for commercial gain.
The Respondent, who is not represented by counsel, points out that numerous other businesses and nonprofits use the words “ViaMedia” in domain names and in labeling their services or programs.
The Respondent's principal states that he registered the Domain Name and built the website in good faith, at the request of the Complainant, and that he changed the graphics and text when the Complainant later objected and threatened to sue him. The Respondent acknowledges that he struck back at the Complainant by directing traffic for a time to a competitor. However, he asserts a continuing, legitimate commercial interest in using the Domain Name to advertise web support services for local businesses in Chicago and Milwaukee.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the Domain Names, the Complainant must demonstrate each of the following:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
The Complainant submitted a reply to the Response by email dated November 2, 2009, and the Respondent replied to that filing in a detailed email dated November 9, 2009.
Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the panel to conduct the proceeding “with due expedition”. Therefore, UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to new arguments.
The supplemental submissions in this case essentially repeat arguments made in the Complaint and Response, with no new material evidence. Consequently, the Panel declines to accept these communications as a part of the record in the proceeding.
The Complainant asserts that the Domain Name is confusingly similar to the Complainant's own domain name. However, a UDRP complaint must be grounded on trademark rights, not merely a similar domain name. The Center on two occasions asked the Complainant to specify the trademark rights underlying the Complaint, and the Complainant amended the Complaint to more clearly assert that it has common law trademark rights in VIAMEDIA. The Complainant's application for registration of this mark, filed in August 2009, has not yet been examined by the USPTO.
The Respondent points to Google search results showing that “ViaMedia” is used by numerous other parties, commercially and otherwise, and that a third party already uses the domain name <viamedia.com>. The Panel reads these remarks as challenging the Complainant's common law trademark claims and its argument that the Domain Name is confusingly similar to the claimed mark.
The Policy does not require a registered trademark. But where the Complaint is based on an unregistered mark, the Complainant must furnish sufficient evidence from which the Panel can conclude that the name has acquired a secondary meaning among a segment of the public and would be enforceable at common law as a distinctive identifier of goods or services in commerce. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions sections 1.6 and 1.7, and cases cited therein. Secondary meaning may be established, for example, by evidence of the length and volume of sales under the mark, the nature and extent of advertising, consumer surveys, and media recognition. See Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083.
Such evidence is missing from the Complaint and the two amendments to the Complaint that were submitted at least partly in response to the Center's queries about trademark rights. The Complainant merely claims to have used the mark since April 2002. The Panel finds that this is not sufficient to establish that the name VIAMEDIA has acquired a secondary meaning associated with the Complainant and subject to common law protection. Accordingly, the Complainant has not succeeded in the present proceedings in showing the requisite rights in the claimed VIAMEDIA mark.
The Panel concludes that the first element of the Policy has not been established by the Complainant on the record in the present case.
Given the Panel's ruling on the first element of the Complaint, it is not necessary to rule on the question of the Respondent's rights or legitimate interests.
Given the Panel's ruling on the first element of the Complaint, it is not necessary to rule on the question of the Respondent's alleged bad faith.
For all the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Dated: November 10, 2009