WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn
Case No. D2010-1413
1. The Parties
Complainant is Tradewind Media, LLC d/b/a Intopic Media of Atlanta, Georgia, United States of America, represented by Williamson Intellectual Property Law, LLC, United States of America.
Respondent is Jayson Hahn of Daleville, Indiana, United States of America.
2. The Domain Name and Registrar
The disputed domain name <intopicmedia.org> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2010. On August 23, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on September 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 22, 2010.
The Center appointed Mark Partridge as the sole panelist in this matter on September 30, 2010. 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.
4. Factual Background
Complainant provides marketing and advertising services and has registered the domain names <intopicmedia.com> and <intopicmedia.net> on July 21, 2008. The domain names are used for a website relating to online Internet advertising.
The disputed domain name was registered on May 18, 2010.
Complainant applied to register INTOPIC as a trademark with the United States Patent and Trademark Office (USPTO) on July 19, 2010.
5. Parties’ Contentions
Complainant avers that it is the owner of the mark INTOPIC (for advertising and marketing services) for which it has filed an application with the USPTO. Complainant maintains that it has been using the mark as early as June 25, 2008 and in commerce as early as January 1, 2010.
The Complaint is based on Complainant’s use of INTOPIC since June 25, 2008 and its websites located at <intopicmedia.com> and <intopicmedia.net> which were registered on July 21, 2008.
Complainant avers that the disputed domain name is confusingly similar to Complainant’s INTOPIC mark, that Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent has registered and is using the disputed domain name in bad faith. Complainant contends that Respondent registered the disputed domain name primarily for the purpose of disrupting the business of Complainant by attracting Internet users to Respondent’s website based on a likelihood of confusion with Complainant’s INTOPIC website.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 14 of the Rules provides in the event of default that the Panel “may draw such inferences therefrom as it considers appropriate.” Paragraph 15(a) of the Rules instructs the Panel that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules or principles of law that it deems applicable.”
Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts. Time Equipment Corp. v. Stage Presence, WIPO Case No. D2003-0850 (December 23, 2003); Express Scripts, Inc. v. Roy Duke, Apex Domains aka John Barry aka Domains for Sale and Churchill Club aka Shep Dog, WIPO Case No. D2003-0829 (February 26, 2004); Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004 (February 16, 2000).
A. Identical or Confusingly Similar
Complainant has claimed rights in the mark INTOPIC based on its United States (U.S.) application of the mark for “advertising and marketing services” (Serial. No. 85087604). The application was filed on July 19, 2010 and claims a first use date of June 25, 2008. Complainant also registered the domain names <intopicmedia.com> and <intopicmedia.net> on July 21, 2008.
The U.S. application for trademark registration in itself fails to prove rights in the claimed mark. Thus, Complainant must prove rights based on common law use. Complainant’s website shows trademark use of INTOPIC. The mark appears to be suggestive, rather than directly descriptive, of Complainant’s services. Therefore, we find that Complainant has rights in the INTOPIC mark.
The disputed domain name was registered on May 18, 2010, and incorporates the INTOPIC mark in full, combined with the term “media” which apparently is a facet of the Complainant’s business. The addition of an apt descriptive term to another's mark does not avoid confusing similarity. The disputed domain name is also identical to Complainant’s trade name and two other domain names with the exception that the suffix is “.org”. Numerous other panels have held the addition of the “.org” suffix which is required for registration is irrelevant for trademark purposes. See, News Holding Limited v. Steve Kerry/WWW Enterprise, Inc., WIPO Case No. D2006-1374 (January 24, 2006); and The Bear Stearns Companies, Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (June 22, 2007). Therefore, the Panel finds that that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
Complainant asserts that Respondent lacks any right or legitimate interests in the disputed domain name because Respondent has not acquired trademark rights in the name and is using the disputed domain name to tarnish and dilute Complainant’s trademark INTOPIC.
Complainant has the burden of proving each element of its claim, and is thus in a tricky position with respect to this element as Respondent has not responded. Generally speaking, once a complainant makes a prima facie showing based on available evidence, the respondent must come forward with contrary evidence. The consensus position on this point is well-stated in Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110 (April 24, 2004):
“While the overall burden of proof is on Complainant, the element of possible rights or legitimate interests of Respondent in the disputed domain name involves Complainant proving matters, which are peculiarly within the knowledge of Respondent. It involves the Complainant in the often impossible task of proving the negative. This should, as indicated correctly in WIPO Case No. D2001-0121, Julian Barnes v. Old Barn Studios, be approached as follows: Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, Respondent has no rights to the name of which he is aware, he has not given any permission to Respondent). Unless the allegation is manifestly misconceived, Respondent has to demonstrate his rights or legitimate interests in respect of the domain name under paragraph 4 (c) of the Policy.”
In addition, the Panel should consider the effect of Respondent's default. Paragraph 14 of the Rules states:
“(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.”
When applying this provision, panelists have generally concluded that the respondent's default does not automatically result in a decision in favor of the complainant. Nevertheless, a panel may draw negative inferences from the respondent's default as per paragraph 14 of the Rules, particularly with respect to those issues uniquely in the knowledge and possession of the respondent.
In this case we are dealing with an unusual situation. The record is devoid of any basis for concluding that Respondent has rights or legitimate interests in the disputed domain name. Moreover, Complainant has not provided any evidence that Respondent is using the disputed domain name is a manner to tarnish and dilute Complainant’s INTOPIC trademark. Pursuant to paragraph 10(a) of the Rules, the Panel considers itself competent to independently visit the Internet to obtain additional information in a default proceeding (see InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No.D2000-0076 (April 6, 2000) and Cortefiel, S.A. v. Javier García Quintas, WIPO Case No. D2000-0141 (April 24, 2000) ). On October 8 and October 27, 2010, the Panel visited the <intopicmedia.org> website of Respondent to determine whether there was any evidence proving Complainant’s assertion its INTOPIC mark is being tarnished or diluted. On those dates, the <intopicmedia.org> resolved to a website claiming to be in “Maintenance Mode” with no reference to the INTOPIC mark. A further investigation revealed that prior to the filing of the Complaint, the disputed domain name resolved to a blog site which criticized Intopic Media and its owner. Among the blog entries are posts which read “Alert: Intopic Media owner is a thief”; “Intopic Fail” and “An Advertising Company That Can’t Advertise.”1 The blog site did not contain any advertising links nor did there appear to be any effort on the part of Respondent to commercially gain from its website. Rather, the sole purpose of the website was to criticize Complainant’s company. It appears there has been some prior dispute between Complainant and Respondent which was never brought to the attention of the Panel in the Complaint. In any event, it appears that Respondent used the disputed domain name for legitimate criticism of Complainant.
In other disputes between two United States based parties which involve criticism, panels have recognized that First Amendment protections can give rise to a claim of fair use on the respondent’s part. See Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190 (July 6, 2000); Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 (April 22, 2004); and Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206 (April 30, 2004). The panel in Howard Jarvis Taxpayers Assoication v. Paul McCauley, supra, provides a clear guideline when dealing with the same issues as presented in this proceeding:
“The Policy is designed to prevent abusive cybersquatting, but under United States law, it cannot extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain. That is true even if the critical views are unfair, overstated, or flat-out lies, (emphasis added) and even if they are posted at trademark.TLD websites. Use of the Policy to provide such insulation may undermine freedom of discourse on the Internet and undercut the free and orderly exchange of ideas that the First Amendment seeks to promote.”
This point of view is consistent with U.S. case law. See e.g. TMI Inc. v. Maxwell, 368 F.3rd 433 (5th Cir. 2004); Lucas Nursery & Landscaping, Inc. v. Grosse, 359 F.3rd 806 (6th Cir. 2004); Lamparello v. Falwell, 420 F.3rd 309 (4th Cir. 2005); and Taubman Co. v. Webfeats, 319 F.3rd 770 (6th Cir. 2003)(explaining distinction between commercial and noncommercial criticism).
The Panel agrees that bona fide, noncommercial criticism is a legitimate interest on the part of a respondent. Here, Complainant has provided no evidence or information to show a lack of legitimate interest for the purpose of criticism, such as a showing that the critical comments are a scam, merely made for the purpose of disrupting the business of a competitor, or are tied to commercial advertising benefiting Respondent or its business. Nor its it clear to the Panel how the above-described present use of the disputed domain name to post a website claiming to be in “Maintenance Mode” would, on the present record, amount to a per se illegitimate or abusive use of the disputed domain name.
For the above reasons, the Panel finds that Complainant has failed to establish that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Complainant is required to establish that each of the three elements of the Policy is present to succeed with its Complaint. The Complainant has failed to establish the second element of the Policy and accordingly it is not necessary for the Panel to consider this third element of the Policy. For the sake of completeness, however, the Panel notes that Complainant failed to put in any evidence that the disputed domain name was in use for a bad faith purpose. Instead, it relied merely on bald allegations that were not supported by the current or archived websites available at the disputed domain name. Complainant’s bald allegations fail to carry its burden of proof on its claims. As stated above, the evidence publicly available online (which was not addressed in the Complaint) shows that the site was used for bona fide noncommercial criticism, not for the purpose of cybersquatting, and the present (above-described) use is not in the circumstances per se sufficient to ground a finding of Respondent’s bad faith on the limited record in these proceedings.
For all the foregoing reasons, the Complaint is denied.
Dated: October 27, 2010
1 . A Google search for <intopicmedia.org> revealed cached copies of pages from the website.