WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sonic Foundry, Inc. v. Allan Carlton

Case No. D2012-2389

1. The Parties

Complainant is Sonic Foundry, Inc. of Madison, Wisconsin, United States of America (“United States” or “US”), represented by DeWitt Ross & Stevens, S.C., United States.

Respondent is Allan Carlton of Nottingham, the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <mymediasite.com> is registered with 1&1 Internet AG (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2012. On December 5, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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 December 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 28, 2012.

The Center appointed Ross Carson as the sole panelist in this matter on January 11, 2013. 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 company with a head office in Madison, Wisconsin, United States. Complainant is the owner of two US federal trademark registrations directed to or incorporating the phrase MEDIASITE.

US Trademark Registration No. 3,178,908 for the word-mark MEDIASITE was applied for on September 30, 2004 and registered on December 5, 2006 for use in conjunction with “Computer software for cataloging, indexing, managing, searching, and retrieving audio and video clips; computer software for using audio and video clips; computer software for cataloging, indexing, managing, searching, and retrieving audio and video clips via a global computer network; computer software for using audio and video clips via a global computer network; computer software for use in designing, creating, hosting, and accessing web sites via a global computer network.” The MEDIASITE word mark has been used continuously in commerce in the US by Complainant since at least as early as April 30, 1999.

US Trademark Registration No. 3,172,831 is registered for the word MEDIASITE paired with a graphic element. Registration No. 3,172,831 is registered in relation to the identical goods covered by the registration for the word mark MEDIASITE. The MEDIASITE word+logo mark has been used continuously in commerce in the US by Complainant since at least as early as June 1, 2003.

Additionally, Complainant is also the owner of the corresponding URL “www.mediasite.com”. Complainant has owned and operated a business at this URL since early 1996.

The disputed domain name <mymediasite.com> was created on October 27, 2003.

Complainant’s first use in commerce of the MEDIASITE word mark pre-dates Respondent’s registration of the disputed domain name <mymediasite.com> by more than four (4) years. Complainant’s first use in commerce of the MEDIASITE word+logo mark pre-dates Respondent’s registration of the disputed domain name <mymediasite.com> by approximately four (4) months.

5. Parties’ Contentions

A. Complainant

A.1 Identical or Confusingly Similar

Complainant submits that the disputed domain name <mymediasite.com> is confusingly similar to Complainant’s registered MEDIASITE trademarks. The disputed domain name <mymediasite.com> incorporates Complainant’s trademark MEDIASITE in its entirety, adding only the generic prefix “my”. Likewise, the disputed domain name incorporates all of the word elements of Complainant’s trademark, adding only the generic prefix “my.”

Complainant further submits that It is settled law that adding the term “my” as prefix to a registered trade mark does not diffuse the confusingly similar nature between the disputed domain name and Complainant's marks. See, Infospace.com, Inc. v. Delighters, Inc., WIPO Case No. D2000-0068, (finding that the domain name <myinfospace.com> is confusingly similar to complainant’s mark); see also, NIIT Ltd. v. Parthasarathy Venkatram, WIPO Case No. D2000-0497 (finding that the “domain name <myniit.com> which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the complainant’s trade name and trademark NIIT”). UDRP arbitrators are in accord with these UDRP decisions. See, for example, PC2Call Limited v. Bernard Ferrie, NAF Claim No. 103181/FA103181, where the Panel found the domain name <mypc2call.com> to be confusingly similar to complainant's mark PC2CALL.

A.2 No Rights or Legitimate Interests in respect of the Domain Name

Complainant states that Respondent was notified on July 19, 2012, by email, first-class mail, and Fed-Ex courier delivery of Complainant’s cease and desist letter. Respondent received and accepted the correspondence on July 23, 2012. Complainant received no response to the letter. In the hopes that Respondent would simply allow the domain name to lapse in light of the dispute, Complainant waited until after October 27, 2012, the renewal date for the disputed domain name <mymediasite.com> to pass. Despite being notified of the dispute, Respondent renewed the registration to the disputed domain name.

Complainant further states that Respondent did not register the disputed domain name until well after Complainant had enjoyed market success with its MEDIASITE branded software. Complainant thus submits that Respondent is holding the disputed domain name in bad faith, either to deprive Complainant of use of the disputed domain name, or to sell the disputed domain name back to Complainant or a competitor of Complainant.

Complainant submits that whatever Respondent’s intent, Respondent has been cyber-squatting on the disputed domain name <mymediasite.com> for close to a decade. The landing page on the website associated with the disputed domain name is a temporary homepage generated automatically by the Registrar featuring a series of advertising links. The landing page also includes a link entitled: “Why is this page displayed?” Clicking on this link shows a page advertising the Registrar’s services. The disputed domain name <mymediasite.com> was first created on October27, 2003, more than nine (9) years ago, yet there is no bona fide offering of goods or services at the site.

Complainant further states that Respondent is not making any legitimate noncommercial or fair use of the disputed domain name. Respondent is simply squatting on the disputed domain name <mymediasite.com> to Complainant’s detriment, and in contravention of Complainant’s trademark rights.

A.3 Registration in Bad Faith

Complainant states that Respondent did not create the disputed domain name until October 27, 2003 well after Complainant had enjoyed market success with its MEDIASITE branded software.

A.4 Use in Bad Faith

Complainant submits that the circumstances strongly suggest that Respondent registered the disputed domain name solely for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant, who had been selling MEDIASITE branded software for more than four (4) years before Respondent registered the <mymediasite.com> domain name. As noted above, almost a decade has passed since Respondent registered the URL at issue, yet there is still no bona fide commercial presence at the domain name

Complainant further states that It is unknown to Complainant at this time whether Respondent has engaged in a pattern of cyber-squatting on domains that are trademarked. It does appear, however, that Respondent registered the domain name at issue in order to prevent Complainant from mirroring its trademarks in a corresponding domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “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.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

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

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

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

The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.

Complainant has established that it is the owner of US Trademark Registration No. 3,178,908 for the word-mark MEDIASITE applied for on September 30, 2004 and registered on December 5, 2006 for use in conjunction with web-based, rich media presentation and data base software more particularly described in Section 4 above. The MEDIASITE word mark has been used continuously in commerce in the US by Complainant since at least as early as April 30, 1999. Complainant is also the owner of US Registration No. 3,172,831 registered for the word “mediasite” paired with a graphic element. US Registration No. 3,172,831 is registered in relation to the identical goods covered by the registration for the word mark MEDIASITE. The MEDIASITE word+logo mark has been used continuously in commerce in the US by Complainant since at least as early as June 1, 2003.

The disputed domain name <mymediasite.com> incorporates Complainant’s word trademark MEDIASITE in its entirety, adding only the generic prefix “my”. Likewise, the disputed domain name incorporates all of the word elements of Complainant’s design mark, adding only the generic prefix “my.” The word “my” is a common possessive pronoun. Many UDRP panels have found that domain names are confusingly similar to trademarks when the disputed domain name incorporates the trademark in its entirety. See eBay, Inc v. Progressive Life Awareness Network, WIPO Case No. D2001-0068, (finding that the domain name <gayebay.com> incorporated the complainant’s mark in its entirety and holding it to be confusingly similar to complainant’s EBAY mark). See also, Auxilium Pharmaceuticals, Inc. v. Kumar Patel, NAF Claim No. 642141 (finding <auxilium-pharmaceuticals.com> confusingly similar to complainant’s AUXILIUM name and mark).

A number of UDRP panels have found that adding the term “my” as prefix to a registered trade mark does not diffuse the confusingly similar nature between the domain name and complainant’s trademark. See, Infospace.com, Inc. v. Delighters, Inc., WIPO Case No. D2000-0068, (finding that the domain name <myinfospace.com> is confusingly similar to complainant’s mark); see also, NIIT Ltd. V. Parthasarathy Venkatram, WIPO Case No. D2000-0497 (finding that the “domain name <myniit.com> which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the complainant’s trade name and trademark NIIT”).

The inclusion of the generic top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusing similarity. UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

The Panel finds that Complainant has proven that the disputed domain name is confusingly similar to Complainant’s trademarks MEDIASITE and MEDIASITE and design.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainants must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Respondent is not apparently affiliated with Complainant and has never apparently been authorized by Complainant to use Complainant’s trademarks MEDIASITE or MEDIASITE and design.

Given that the disputed domain name <mymediasite.com> is confusingly similar to Complainant’s MEDIASITE trademarks and is being used in association with a website which resolves to an advertising page with active links to advertisers including a link to the Registrar’s broad range of services, it is evident to the Panel that Respondent is trying to attract Internet users for click through income by creating a likelihood of confusion with Complainant’s trademarks.

While the disputed domain name was created on October 27, 2003, a visit to The Internet Wayback Machine shows this Panel that the disputed domain name was not in active use between 2005 and 2011.

There is no evidence that before any notice of the dispute Respondent used or made demonstrable preparations to use the disputed domain name <mymediasite.com>, in connection with a bona fide offering of goods or services.

There is no evidence that Respondent is known by Complainant’s trademark or has registered or used the disputed domain name as a trademark.

There is no evidence that Respondent is making any legitimate, noncommercial or fair use of the disputed domain name pursuant to paragraph 4(c)(iii) of the Policy.

The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in a domain name. Once this showing is made, the evidentiary burden shifts to the respondent to demonstrate its rights or legitimate interests in the domain name. See Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487 where the panel stated “A number of WIPO cases have established that, by virtue of paragraph 4(c) of the Policy, once a Complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent.”

In this case, Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the disputed domain names pursuant to paragraph 4(c) of the Policy. However, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.

Under the circumstances, the Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and is being used in bad faith.

C.1. Registered in Bad Faith

The disputed domain name <mymediasite.com> was created on October 27, 2003.

Complainant’s first use of the MEDIASITE word mark in commerce in the US pre-dates Respondent’s registration of the disputed domain name <mymediasite.com> by more than four (4) years. Complainant’s first use of the MEDIASITE word+logo mark in commerce in the US pre-dates Respondent’s registration of the disputed domain name <mymediasite.com> by approximately four (4) months. Additionally, Complainant is also the owner of the corresponding URL “www.mediasite.com”. Complainant has owned and operated a business at this URL since early 1996.

A Google search conducted by the Panel as part of its efforts to establish possible conflict before accepting the case (pursuant to paragraph 7 of the Rules) showed an article dated May 2, 2003 appearing in the well-known international publication PC World announcing that Sony was purchasing Sonic Foundry’s MEDIASITE web-based, rich-media presentation and streaming video software product. The Panel notes the disputed domain name <mymediasite.com> was created shortly thereafter.

Complainant forwarded a cease and desist letter to Respondent advising Respondent of its trademark rights in the trademark MEDIASITE and its domain name <mediasite.com> and alleging breach of the rights by Respondent’s use of the disputed domain name <mymediasite.com>. Complainant did not receive a reply from Respondent.

The Panel finds on a balance of probabilities that Respondent registered the disputed domain name <mymediasite.com> with knowledge of Complainant’s trademark rights with the intention to trade on the goodwill associated with Complainant’s trademark rights which constitute registration in bad faith.

C.2. Domain Name Used in Bad Faith

Under paragraph 4(b)(iv) of the Policy, inter alia, the following circumstances shall be evidence of the use and registration of a domain name in bad faith: by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

The disputed domain name <mymediasite.com>, which is confusingly similar to Complainant’s MEDIASITE trademarks, resolves to a website featuring a general advertising page including active links to named advertisers, one of whom is the Registrar, whose link resolves to a website advertising a broad range of web services offered by the Registrar. The Panel infers that Respondent is trying to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s MEDIASITE trademarks as Internet users looking for official information about Complainant’s goods or services will be misled to Respondent’s website. Previous UDRP panels have found that the use of a confusingly similar trademark to attract Internet users to the website associated with the confusingly similar domain name for pay per click income shall be evidence of use in bad faith. See Laramar Group, L.L.C. v. XC2, WIPO Case No. D2006-0617, where the panel found: “In many previous UDRP decisions […] such exploitation of trademarks to obtain click-through commissions from the diversion of internet users was held of use in bad faith.” (citing Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584)

The Panel finds that the use of the website in the manner described above, in conjunction with the lack of response from Respondent to Complainant’s cease and desist letter and to the Complaint lead this Panel to draw adverse inferences and finds, on the balance of probabilities, that Respondent has used the disputed domain name <mymediasite.com> in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <mymediasite.com> be transferred to Complainant.

Ross Carson
Sole Panelist
Date: January 25, 2013