WIPO Arbitration and Mediation Center


News-Journal Corporation v. Amatzia Benartzi

Case No. D2008-1294

1. The Parties

Complainant is News-Journal Corporation, Florida, United States of America.

Respondent is Amatzia Benartzi, Nevada, United States of America.

2. The Domain Name and Registrar

The disputed domain name <mytopia.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2008, identifying Domains By Proxy, Inc. as Respondent. On August 26, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On August 26, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response, identifying Amatzia Benartzi as the domain name registrant and providing the contact details. In response to a notification by the Center that Respondent was Amatzia Benartzi, Complainant filed an amendment to the Complaint on August 26, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 22, 2008. The Response was filed with the Center on September 22, 2008.

The Center appointed M. Scott Donahey as the sole panelist in this matter on October 3, 2008. 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 is a newspaper circulated in Volusia and Flagler counties of the state of Florida, headquartered in Daytona Beach, Florida. Complainant is the registrant of the service mark MYTOPIA CAFÉ with the United States Patent & Trademark Office (“USPTO”) in the category of computers services, namely an entertainment website featuring local news, events and entertainment information. The application for the mark was filed on January 22, 2008, and the registration issued on August 19, 2008, and shows a first use in commerce of September 12, 2007. Complaint, Annexes 3 and 4. Complainant contends that as it began using the MYTOPIA CAFÉ mark on September 12, 2007 and began acquiring common law trademark rights in the mark as of that date.

Complainant is also the registrant of the domain name <mytopiacafe.com>, which domain name was registered on July 24, 2007. Complaint, Annex 6. Complainant's domain name is used to resolve to a web site related to the newspaper which serves as a communication web site for residents of Volusia and Flagler counties in Florida. Complaint, Annexes 6, 7, and 8.

The domain name at issue was originally registered on December 16, 1998, by a third party, who used the name “Mytopia” as a trade name under which she performed marketing, consulting, and copywriting services for a number of Fortune 1000 companies until 2007. Complaint, Annex 1; Response, Annex 4. The original registrant transferred the domain name at issue to respondent on January 24, 2008. This is two days after Complainant filed its trademark application and some seven months before the registration issued. Complaint, Annex 10. However as the transaction was brokered through Escrow.com, the offer to purchase had to have been made prior to Complainant's filing of its application for a service mark. Respondent paid in excess of USD 35,000 for the domain name at issue. Response, Annex 2.

Respondent uses the disputed domain name at issue to resolve to a web site at which gaming is offered on a global basis. Response, Annexes 6 and 7.

On September 19, 2008, Complainant's counsel wrote Respondent a letter confirming a conversation they had had during the preceding week. Response, Annex 8. Complainant proposed to license the term “mytopia” to Respondent in return for an acknowledgement of Complainant's superior rights to that term, a license fee to be agreed upon, and agreement between Complainant and Respondent such that Respondent's gaming site would become “family friendly”. Respondent rejected the offer, and this matter ensued.

5. Parties' Contentions

A. Complainant

Complainant contends that the domain name at issue is confusingly similar to its MYTOPIA CAFÉ service mark, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name in bad faith.

B. Respondent

Respondent contends that the term “mytopia” was coined by his predecessor in 1999 and pre-existed Complainant's use of that term, that Respondent purchased the domain name at issue prior to the issuance of Complainant's registered trademark for use in conjunction with Respondent's gaming web site, and that Respondent registered and is using the domain name at issue in good faith. Respondent requests a finding of reverse domain name hijacking.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “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 and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:

(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

There is no question that the domain name at issue is confusingly similar to the service mark in which Complainant has rights. It is also undisputed that Respondent purchased the domain name at issue prior to the issuance of the trademark registration by the USPTO. However, Complainant contends that it has common law trademark rights that date from its first use of the mark.

In a recent decision, the panel set out what a Complainant is required to show and the elements of proof necessary to establish common law rights in a mark:

“The Center's website helpfully includes various resources intended to assist participants in administrative proceedings under the Policy. One of these resources is the Index of WIPO UDRP decisions which is broken down into categories, one of the search categories being ‘Unregistered mark'. A review of the cases identified in that category makes it very clear what panelists expect of complainants seeking to establish that they have common law or unregistered rights in respect of a given name or mark.

Another resource available on the Center's website is the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”. This document lists a number of questions, which commonly arise in these proceedings, and provides an overview of panelists' approaches to those questions. Question 1.7 is: What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights? The answer provided reads as follows:

Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant's rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.” Mancini's Sleepworld v. LAKSH INTERNET SOULTIONS PRIVATE LIMITED, WIPO Case No. D2008-1036.

The evidence submitted by Complainant consists of the following assertion: “[Complainant] has been using, and thereby acquiring common law rights in, the Mytopia Café mark since September 12, 2007.”

Complainant argues that as both parties are from the United States that United States of America law should govern, citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. Assuming that the law of the United States of America might assist the Panel in analyzing the current dispute, the Panel will examine Complainant's arguments under that law.

Complainant argues that under the constructive use provision of the Lanham Act, Complainant is entitled to priority in connection with the goods or services specified in the registration against any third party. Complainant attaches a copy of the applicable statute, 15 U.S.C. § 1057 as Annex 14 to the Complaint. The statute provides in pertinent part:

“Contingent on the registration of a mark on the principal register provided by this chapter, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any other person except for a person whose mark has not been abandoned and who, prior to such filing – has used the mark.”

The statute talks in terms of registration and use of a mark rather than registration and use of a domain name, so the Panel believes it is inapposite to the present situation. The question before the Panel is whether a registrant of a mark can use the relation back aspect of the quoted statute to establish common law rights in the mark vis-à-vis a domain name whose registration and use predates the first use of the mark by some nine years, where the domain name at issue was transferred to Respondent after first use of the Complainant's mark, but before the issuance of the registration.

The general rule established by panels is that a subsequent acquirer of a domain name is held to have “registered” that domain name for purposes of the determination of bad faith as of the date of acquisition of the registration rights. HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062 (“[T]he transfer of a domain name to a third party amounts to a new registration, requiring the issue of bad faith registration to be determined at the time the current registrant took possession of the domain name.”). However, in analyzing the first prong of the three part test required by the Policy, we are not concerned with the determination of the issue of bad faith registration and use, but rather whether Complainant has the requisite trade mark rights. And in this Panel's view, at least where common law rights are relied upon, this would also entail showing that the domain name at issue was registered and in use prior to the establishment of those common law trademark rights.

Complainant cites the case of Tally-Ho, Inc. v. Coast Community College Dist., 889 F.2d 1018, 1022 (11th Cir. 1989) for the proposition that “under common law, trademark ownership rights are appropriated through actual prior use in commerce.” (emphasis added). The Panel agrees with this statement but finds that the actual use by Complainant in commerce of the claimed trademark began years after the domain name was first registered. Although Respondent appears to have acquired the domain name some four months after the first use of the claimed trademark, significantly in this case Respondent initiated the acquisition shortly before the application for the mark and some seven months prior to the issuance of the registration. Even if one were to find that the actual date of acquisition (as opposed to for example the date on which Respondent initiated the acquisition process) of the domain name should be considered the appropriate date at which a complainant must establish “rights in a trademark,” Complainant has offered no competent evidence sufficient to establish that through the four months of use of the MYTOPIA CAFÉ mark preceding Respondent's acquisition of the domain name at issue that the mark had acquired sufficient secondary meaning as to source so as to constitute common law trademark rights.

Under the facts of the present case, Complainant has failed to establish that it had acquired common law trademark rights either prior to the first registration of the domain name at issue or prior to the acquisition of the domain name at issue by Respondent.

Complainant would in any event have failed under bad faith, as the Panel is not persuaded in the circumstances that Respondent acquired (or sought to acquire) the domain name with Complainant's possible trademark rights specifically in mind. See e.g. ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669.

B. Reverse Domain Name Hijacking

The Panel does not believe this case is appropriate for a finding of reverse domain name hijacking.

7. Decision

For all the foregoing reasons, the Complaint is denied, and the Panel declines to find Reverse Domain Name Hijacking.

M. Scott Donahey
Sole Panelist

Date: October 16, 2008