WIPO Domain Name Decision: D2005-1282

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MediaSpan Group, Inc. v. Raghavan Rajagopalan

Case No. D2005-1282

1. The Parties

The Complainant is MediaSpan Group, Inc. of Raleigh, North Carolina, United States of America, represented by DLA Piper Rudnick Gray Cary US, LLP of the United States of America.

The Respondent is Raghavan Rajagopalan of Naperville, Illinois, United States of America.

2. The Domain Name and Registrar

The disputed domain name <mediaspan.com> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2005. On December 12, 2005, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On December 14, 2005, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on December 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was January 4, 2006. The Response was filed with the Center on December 30, 2005.

The Center appointed William R. Towns as the Sole Panelist in this matter on January 11, 2006. 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.

On January 23, 2006, Administrative Panel Order No. 1 was issued to the parties, in which the Complainant was invited to make a supplemental submission regarding the issue of bad faith registration. The Respondent was afforded an equal opportunity to respond. The date for the submission of the Panel’s decision was extended accordingly. Neither party elected to make a supplemental submission, and the administrative record in this proceeding is now closed.

4. Factual Background

The Complainant is the owner of the federally registered trademark MEDIASPAN. The Complainant has used the MEDIASPAN name or mark since May 2001, in relation to the provision of digital content management and online marketing solutions for media companies. The Complainant maintains a website at “www.mediaspangroup.com”.

The Respondent registered the disputed domain name <mediaspan.com> on March 17, 2000. The Respondent has shielded his identity as the registrant of the disputed domain name through a WHOIS privacy protection service. The Respondent operates NotionTide, Inc., which he has described as a “network of Digital Commerce services” owning over 800 domain names, including the disputed domain name. The disputed domain name currently is being used to direct Internet users to the “www.claritycell.com” website, where cellular telephone services are offered. The domain name previously has been used by the Respondent to direct Internet users to other commercial websites.

The Complainant initially contacted the Respondent on June 9, 2005, at which time the Complainant expressed an interest in acquiring the disputed domain name. The Respondent replied to the Complainant indicating that he would have no interest in selling the disputed domain name unless he received an offer in the high six figure range. He further indicated that other “large media players” had expressed interest in the domain name.

Subsequently, on July 27, 2005, the Complainant, through its legal counsel, sent a notice letter to the Respondent, claiming exclusive rights in the MEDIASPAN mark, and demanding that the Respondent cease and desist all use of the disputed domain name. As noted above, the Respondent continues to use the disputed domain name to direct traffic to a commercial website offering cellular telephone services.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name is identical to its MEDIASPAN mark, in which the Complainant claims to have had rights since at least May 2001. According to the Complainant, the Respondent stockpiles domain names for sales to third parties or to direct Internet traffic to commercial websites unrelated to the domain names the Respondent owns. The Complainant alleges that the Respondent has never used the disputed domain name in connection with a bona fide offering of goods or services and has no legitimate rights or interests in the domain name.

The Complainant also maintains that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent’s registration of the domain name was in bad faith because he has no rights or legitimate interests in the domain name or the MEDIASPAN mark; the Respondent is using the domain name to divert traffic to a commercial website completely unrelated to the domain name or the MEDIASPAN mark; the Respondent has shielded his identity by using a WHOIS masking service; the Respondent has made misrepresentations regarding his interest in the domain name; and the Respondent sought payment far in excess of the costs of registration to transfer the domain name.

Further, the Complainant alleges that the Respondent’s conduct in this case is consistent with a pattern of bad faith conduct recognized by other UDRP panelists. In particular, the Complainant points out that the Respondent – under the alter ego Internet Nexus, Inc. – registered numerous domain names incorporating third party trademarks which he used to direct Internet traffic to his own commercial websites. See Oracle Corporation v. Internet Nexus Inc., National Arbitration Forum Case No. FA96336. The Complainant notes that the panelist in that case concluded that the Respondent had “acted in bad faith by engaging in a pattern of registering domain names comprised of famous marks to which the Respondent has no legitimate rights”.

B. Respondent

The Respondent contends that the disputed domain name is not confusingly similar since the domain name was registered more than a year before the Complainant first sought to register the MEDIASPAN mark with the United States Patent and Trademark Office, more than a year prior to the Complainant’s first use of the mark, and more than four years before the Complainant obtained federal registration of the mark. Further, the Respondent disputes the Complainant’s contention that it has exclusive rights in the name “MediaSpan”, asserting that other companies have used “MediaSpan” either as a brand name or a trade name.

The Respondent claims that he registered the disputed domain name in 1999, for use with a venture capital project that never reached fruition due to the dot-com bust and other impacting events in 2001. The Respondent asserts that he has plans to re-launch the venture given a more stable market environment, but that the domain name is simply parked at present, pending such further efforts.

The Respondent denies that the disputed domain name was registered and is being used in bad faith. According to the Respondent, he has been in the business of creating software and online commercial ventures for more than ten years, during which time he has never once solicited or initiated an offer to sell a domain name for profit or otherwise. The Respondent denies that he registered the disputed domain name to disrupt the Complainant’s business, and he contends that he has never used the domain name to direct Internet traffic to products or services confusingly similar to those offered by the Complainant.

The Respondent claims to have developed over 25 successful online ventures relating to travel, wireless phones, software, movies, magazines, and discount shopping, as part of a network of e-commerce ventures, securing domain names for use in connection with such ventures that are rarely disputed. The Respondent alleges that the Complainant is conducting a “smear campaign” to portray the Respondent and NotionTide as cybersquatters in order to secure a domain name that legitimately belongs to the Respondent. The Respondent alleges that the Complainant’s conduct presents a “clear case of Reverse Name Hijacking”.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

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

(i) 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) The Respondent has no rights or legitimate interests with respect to the domain name; and

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

Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a), a number of panels have concluded that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

There is no question for purposes of paragraph 4(a)(i) that the disputed domain name <mediaspan.com> is identical to the MEDIASPAN mark, in which the Complainant has established rights through federal registration and use. At a minimum, the mark is entitled to a presumption of validity by virtue of its registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. While the record reflects that the Respondent registered the disputed domain name more than one year before the Complainant’s first use of the mark, it is not necessary under paragraph 4(a)(i) for the Complainant to demonstrate that its rights in the mark arose prior to the Respondent’s registration of the disputed domain name. See, e.g., Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527; Iogen Corporation v. IOGEN, WIPO Case No. D2003-0544; MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598. See also PC Mall, Inc. v. Pygmy Computer Systems, Inc., WIPO Case No. D2004-0437.

While paragraph 4(a)(i) embodies no requirement that the complainant’s trademark rights must have arisen before the disputed domain name was registered, this factor is relevant for purposes of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy, as is addressed below. See, e.g., Nãofumomais, Clínica de Homeopatia Antitabágica, Lda. v. Re-Surgir - Consultores em Desenvolvimento Individual e Organizacional, Lda., WIPO Case No. D2004-0399.

C. Rights or Legitimate Interests

The disputed domain name beyond question is identical to the Complainant’s mark, and the Complainant has documented the Respondent’s use of the domain name, without the Complainant’s authorization or consent, to direct Internet traffic to a number of commercial websites associated with a “network of Digital Commerce services” operated by the Respondent. The Respondent has used and continues to use a WHOIS privacy protection service to conceal his identity.

The Complainant has submitted evidence that the Respondent has registered or acquired more than 800 domain names, and that the Respondent has registered numerous domain names incorporating third party trademarks which he used to direct Internet traffic to his own commercial websites. See Oracle Corporation v. Internet Nexus Inc., National Arbitration Forum Case No. FA96336. When contacted by the Complainant in June 2005, the Respondent sought a “high six figure” number from the Complainant to obtain the transfer of the disputed domain name. Further, even after being placed on notice of the Complainant’s rights in the MEDIASPAN mark, there is evidence that the Respondent is continuing to use the disputed domain name to direct Internet traffic to a commercial website offering cellular telephone services.

The Panel concludes that the Complainant had made a prima facie showing under paragraph 4(a)(ii), requiring the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0020.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name was in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent appears to base his claim of rights or legitimate interests in the disputed domain name on his registration of the disputed domain name more than a year before the Complainant began using MEDIASPAN either as a trade name or as a trademark. The Respondent also argues that the Complainant does not have exclusive rights in the MEDIASPAN name and mark, asserting that at least two other companies have used it. Finally, the Respondent claims to have registered the domain name for use in a venture capital project that did not materialize due to the dot-com bust in 2001, but which the Respondent intends to launch when more favorable conditions are present.

The record clearly reflects that the Respondent registered the disputed domain name at least one year before the earliest date upon which the Complainant could assert rights in the MEDIASPAN mark. The Complainant has submitted no evidence of its use of the MEDIASPAN name or mark prior to May 15, 2001, whereas the disputed domain name was registered on March 17, 2000. Nor has the Complainant offered any evidence that the Respondent was aware of the Complainant on or before the registration of the disputed domain name, such that an inference might be drawn from the circumstances that the aim of the registration was to take advantage of potential complainant rights in the MEDIASPAN mark. See, e.g., General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845.

The Panel further notes that MEDIASPAN is a composite mark combining two commonly used descriptive words – “media” and “span”. While the Complainant may assert exclusive rights in the MEDIASPAN mark in relation to the categories of goods or services for which its use been registered, the Policy was not intended to permit a party who elects to register or use a common term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. Accordingly, a number of panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive word or phrase, even where the domain name is confusingly similar to the registered mark of the complainant. See Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

The Respondent’s assertion of rights or legitimate interests in the domain name on this basis, however, is misplaced. First, the registration of a domain name in and of itself does not establish rights or legitimate interests under paragraph 4(a)(ii) of the Policy. See Asia Pacific Breweries Limited v. Chris Kwan, WIPO Case No. D2003-0920. The Respondent claims never to have used the domain name, alleging that the domain name has been parked awaiting a propitious moment for the launching of the aborted venture capital project for which the Respondent claims to have registered the domain name in 1999.

The Respondent’s claim not to be actively using the domain name is contradicted by evidence of the Respondent’s current use of the domain name to attract Internet traffic to a commercial website offering cellular telephone services. Even so, the Respondent is not using the domain name in a way that communicates any aspect of the services offered on the website, and thus the Respondent has not established rights or legitimate interests in the domain name through such use. See Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031. Further, the Respondent has provided no evidence of any demonstrable preparations to use the disputed domain name in connection with the venture capital project for which he alleges the domain name was registered in March 2000.

Thus, the record does not reflect the Respondent’s use or demonstrable preparations to use the disputed domain name in connection to any other bona fide offering of goods and services under paragraph 4(c)(i). Nor has the Respondent demonstrated (or even claimed) that he has been commonly known by the domain name for purposes of paragraph 4(c)(ii), or that he is making any legitimate noncommercial or fair use of the mark under paragraph 4(c)(iii). Accordingly, the Panel concludes that the Respondent has failed to make a sufficient showing under paragraph 4(c) of the Policy to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. Nevertheless, paragraph 4(a)(iii) embodies a requirement that is “satisfied only if the Complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith”. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Panel is unable to conclude from the circumstances of this case that the Respondent registered the disputed domain name in bad faith under paragraph 4(a)(ii) of the Policy. The primary rule in relation to domain name registrations is “first come, first served”, to which the Policy provides a narrow exception. See Macmillan Publishers Limited, Macmillan Magazines Limited and HM Publishers Holdings Limited v. Telepathy, Inc, WIPO Case No. D2002-0658. As a general rule, when a domain name is registered before any trademark rights are established, the registration of the domain name is not in bad faith since the registrant could not have contemplated the complainant’s non-existent right. In certain situations, however, when the respondent is aware of the complainant and the circumstances indicate that the aim of the registration was to take advantage of potential complainant rights, bad faith can be found. See, e.g., General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845.

In reaching its conclusion, the Panel has carefully considered the possible indicia of bad faith in the record. In that regard, the Panel notes that the Respondent has registered over 800 domain names, and that the Respondent has been found to have engaged in cybersquatting in violation of the Policy by registering domain names reflecting the famous marks of third parties, which he then used to attract Internet traffic to his websites. Oracle Corporation v. Internet Nexus Inc., National Arbitration Forum Case No. FA96336. The Panel also has taken into account the Respondent’s opportunistic conduct in seeking a “high six figure” sum when contacted by the Complainant in June 2005 regarding a transfer of the disputed domain name, as well as the Respondent’s continued use of the domain name after being placed on notice of the Complainant’s rights in the MEDIASPAN mark. The Panel further notes the Respondent’s concealment of his identity as the registrant of the disputed domain name through a WHOIS privacy protection service.

Nevertheless, none of this alters the fact that, when the Respondent registered the disputed domain name on March 17, 2000, the Complainant’s rights in the MEDIASPAN mark were non-existent. Under the Policy, it remains the Complainant’s burden to establish bad faith registration. See Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016. The Complainant has not brought to the attention of this Panel any circumstances from which the Panel can justifiably infer that the aim of the Respondent in registering the disputed domain name in March 2000 was to take advantage of the Complainant’s potential or prospective rights in the MEDIASPAN mark. Notwithstanding the Respondent’s opportunistic conduct in seeking a “high six figure” sum when contacted by the Complainant regarding a transfer of the disputed domain name in early June 2005, there is no evidence in the record that the Respondent ever approached the Complainant to offer the domain name for sale, or that he has engaged in a pattern of registering marks reflecting the marks of others primarily for this purpose. The Panel cannot conclude from this recent episode that when the Respondent registered the domain name in March 2000, he did so primarily for the purpose of selling the domain name registration to the Complainant or one of the Complainant’s competitors for an exorbitant price, as required in order to demonstrate bad faith under paragraph 4(b)(i). On the contrary, it seems more probable that the Respondent registered the domain name because it has a descriptive character which appeals to many different people working in the media business. As noted, the Complainant’s rights were not established at the time the Respondent registered the domain name, and there are no indications in the case file that the Respondent was clearly aware of the Complainant and that the Respondent’s aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, see ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669 <execujet.com> and Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320 <kangwonland.com>. The prior panel decisions from which the Complainant would have this Panel conclude that the Respondent registered the disputed domain name in bad faith are simply factually inapposite. In each of these cases the respondent had registered a domain name incorporating an existing trademark in which the complainant had established prior rights.

The Panel reiterates that the overriding objective of the Policy is to prevent abusive domain name registration and use for the benefit of legitimate trademark owners. For this reason, the Panel has closely scrutinized the circumstances of the Respondent’s behavior in this case. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Nevertheless, it is paramount that panelists decide cases based on the limited scope of the Policy. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. The Policy provides a remedy only in cases where the complainant proves that the domain name has been registered and is being used in bad faith. In view of the foregoing, the Panel is constrained to conclude that the Complainant has not met its burden under paragraph 4(a)(iii) in this case.

E. Reverse Domain Name Hijacking

Paragraph 1 of the Rules defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. To prevail on such a claim, a respondent must show that the complainant knew of the respondent’s unassailable rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith. Sydney Opera House Trust v. Trilynx Pty. Limited, WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151. In view of the circumstances of this case as set forth above, the Panel finds the Respondent’s claim of reverse domain name hijacking unpersuasive. The record does not indicate that the Complaint was brought in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

William R. Towns
Sole Panelist

Dated: February 20, 2006