WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

323.TV LLC v. Oneandone, Private Registration, Joshua Schade

Case No. D2012-1084

1. The Parties

Complainant is 323.TV LLC of DeSoto, Kansas, United States of America (“U.S.”) represented by Hovey Williams LLP, U.S.

Respondent is Oneandone, Private Registration of Chesterbrook, Pennsylvania, U.S. and Joshua Schade of Littleton, Colorado, U.S.

2. The Domain Names and Registrar

The disputed domain names <h323.tv> and <323tv.com> are 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 May 23, 2012. On May 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 25, 2012, and May 30, 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 May 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 21, 2012.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on June 26, 2012. 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 the owner of registration of the word service mark 323.TV on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 3,939,662, dated April 5, 2011, in international classes 35 and 37, covering, inter alia, retail store services featuring video and audio conferencing equipment, and related repair, maintenance and technical support services. Said registration asserts date of first use of October 8, 2000 and first use in commerce of November 3, 2000. The filing date of the application for registration was January 29, 2010.

Complainant has provided evidence of use of the 323.TV service mark as early as October 14, 2003, in the form of a purchase order issued to “323.tv” by VX Distributing. Complainant has also provided affidavits by its Managing Member (Brant Clark) and an employee sales representative (Shawn M. Young), each of whom claims to have worked with Complainant since its initial use of the service mark as early as 2000. According to the Complaint and to the affidavit of Brant Clark, Complainant has done business in all 50 states of the U.S., “and in almost every continent”.

Complainant operates a commercial Internet website at “www.323.tv”, where it offers new and refurbished videoconferencing equipment and ancillary services.¹ Complainant on its homepage includes prominent reference and links to Polycom, LifeSize, Tandberg and Radvision videoconferencing products, and in its discussion of video products indicates that it is “a Certified Reseller of Polycom, Lifesize, Tandberg and Radvision video conferencing products”. According to a Domain Tools WhoIs report, Complainant is the owner of the <323.tv> domain name, and the record of registration was created on October 8, 2000.²

Complainant also asserts that it has referred to itself as 323TV since at least as early as 2000, and that its customers have referred to it as 323TV. Complainant has stated that when answering the telephone, it refers to itself as 323TV.

According to the Registrar’s verification, Respondent is registrant of the disputed domain names. According to “InterNIC.net” WhoIs records, the record of registration of the disputed domain name <3223tv.com> was created on June 19, 2006, and the record of registration for the disputed domain name <h323.tv> was created on June 19, 2006. The Registrar’s verification did not specify the date at which Respondent became the owner of the registrations of the disputed domain names.

Respondent operates a commercial Internet website at “www.videoconferencestore.com”. Respondent’s commercial website is headed with a banner “The Video Conference Store”, with subheading “The Industry’s Preferred Choice for New and Preowned Videoconferencing Equipment”. On its website, Respondent indicates that “we also pride ourselves on carrying the largest supply of the highest quality refurbished and used video conferencing systems in the marketplace – including new and used Polycom, Cisco/Tandberg and LifeSize”, and it includes links to information about these products (and related services).

Respondent has redirected the disputed domain names to its commercial Internet website at “www.videoconferencestore.com”. Respondent also has included the disputed domain names as metatags associating its commercial website with those disputed domain names.

According to Complainant, Respondent Joshua Schade formerly did business with Complainant under the name “VX Distributing” and “VTC”. Complainant indicates that Respondent Schade purchased and resold videoconferencing equipment from Complainant, and dissolved the VX Distributing business while owing money to Complainant.

Complainant has provided evidence in the form of Network Solutions WhoIs reports that Respondent has registered several domain names incorporating trademarks of third parties, including nine (9) incorporating the trademark POLYCOM (e.g., <polycomvideoconferencing.net>, <polycomusergroup.com>, <polycomvideo.com> and <polycomvideoconference.com>) and two (2) incorporating the trademark TANDBERG (i.e., <tandbergvideoconference.com> and <usedtandbergvideo.com>).

Complainant has provided affidavits from its owners and employees indicating that its customers have been confused by the redirection of the disputed domain names to Respondent’s website where Respondent offers directly competitive goods and services. This confusion has come to Complainant’s attention as its existing customers have sought to confirm shipping information different than previously used, and as its customers have referred to information on Respondent’s website that is different than information on Complainant’s website.

The registration agreement in effect between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant contends that it holds rights in the service mark 323.TV based on use in commerce commencing as early as 2000, and as evidenced by registration at the USPTO. Complainant states that it has used the 323.TV service mark prominently and continuously on its website at “www.323.tv”, in addition to having done business in each of the 50 states of the U.S. Complainant further contends that it has also referred to itself as 323TV since at least as early as 2000, and that it has developed common law rights in that trademark.

Complainant states that the disputed domain names <323tv.com> and <h323.tv> are nearly identical to the marks in which it has rights.

Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain names because: (1) Complainant has found no evidence that Respondent has made any bona fide offering of goods or services in connection with the disputed domain names, and has acquired no rights in its marks; (2) Respondent owns no trademark applications in the U.S. or elsewhere for the 323.TV mark; (3) Respondent is not making legitimate noncommercial or fair use of the disputed domain names, and Respondent has not registered or filed applications to register 323TV or 323TV.COM as trademarks, and (4) Respondent intends to mislead or divert consumers or tarnish the service marks at issue, and to profit from the disputed domain names “by including the goods and services of Complainant’s rival companies at its website”.

Complainant argues that Respondent registered and is using the disputed domain names in bad faith because: (1) Respondent registered domain names that are confusingly similar to trademarks in which Complainant has rights under common law and as evidenced by registration; (2) Respondent has intentionally attempted for commercial gain to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of that website or the products or services identified therein; (3) Respondent had prior personal knowledge of Complainant and its trademark rights when it registered and used the disputed domain names, primarily for the purpose of disrupting the business of a direct competitor; (4) Complainant has not authorized Respondent to use its trademarks, and; (5) Complainant’s customers are confused in fact by Respondent’s use of the disputed domain names to redirect them to Respondent’s website.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain names to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

The Center notified the Complaint to Respondent by e-mail, express courier and telefax. The tracking records of the express courier service indicate that the Complaint was received by Respondent at each of its locations. The records of the Center further indicate that telefax transmission to Respondent was successful. The Panel is satisfied that Respondent was notified of the Complaint and was afforded a reasonable opportunity to respond.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) the disputed domain name 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 disputed domain name; and

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

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has provided evidence of registration of the word service mark 323.TV on the Principal Register of the USPTO, and evidence of use of that service mark in commerce (e.g., on its commercial website). The 323.TV service mark was registered on April 5, 2011. Respondent has not challenged the presumed validity of Complainant’s registered service mark. The Panel determines that Complainant has rights in the 323.TV service mark.

Complainant further asserts that it has common law rights in the 323.TV service mark based on use in commerce dating back at least as early as November 3, 2000 (the date of first use in commerce indicated on its application for registration at the USPTO), and that it has similar common law rights in the trademark 323TV acquired by use in the same period.

Complainant’s assertion of common law rights in 323.TV is supported by the October 8, 2000 date of creation of its <323.tv> domain name used to identify its commercial website. It is further supported by the purchase order issued by VX Distributing to “323.tv” on October 14, 2003. Finally, Complainant’s assertion of common law rights in 323.TV is supported by affidavits submitted by its owner and employees.

The Panel accepts that Complainant established common law service mark rights in 323.TV some time prior to the date on which registration at the USPTO was effective.³ Complainant has provided limited evidence by which a reasonably precise date can be fixed.⁴ The dates of first use and first use in commerce listed by Complainant in its application for service mark registration do not establish evidentiary presumptions. See Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent, WIPO Case No. D2009-1033, and Super-Krete International, Inc. v. Concrete Solutions, Inc., WIPO Case No. D2008-1333.

Complainant’s 323.TV service mark appears to be arbitrary or fanciful. It was capable of acquiring common law service mark status without a showing of secondary meaning (see Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992)). Complainant need only show that it made use of the inherently distinctive 323.TV identifier in commerce in the U.S. to establish common law service mark rights. The earliest concrete evidence of use in commerce that Complainant provided is a purchase order issued on October 14, 2003. In light of the fact that Respondent has not challenged Complainant’s rights in its service mark, the Panel determines for purposes of this proceeding that Complainant’s rights in its 323.TV service mark arose in October 2003 on the basis of use of the inherently distinctive mark in commerce. The Panel’s determination in this regard is reinforced by the fact that the purchase order issued to Complainant in October 2003 was specifically from Respondent’s predecessor business, showing that Respondent was aware of Complainant’s identifying mark (323.TV) at that time.

The Panel does not consider that Complainant has provided sufficient evidence to establish common law trademark rights in 323TV independent from 323.TV. Complainant’s website text and design specifically uses 323.TV as its identifier, and does not use 323TV. The only evidence Complainant has provided to support common law trademark rights in 323TV is affidavits from its owner and employees to the effect that it refers to itself as 323TV, and as do its customers. Complainant has not provided any concrete evidence of use of the asserted 323TV trademark in commerce, such as on its website or in promotional materials. Statements by self-interested parties associated with Complainant are not sufficient to establish common law trademark rights in the absence of other supporting evidence.

The disputed domain name <323tv.com> incorporates Complainant’s registered 323.TV trademark (which includes the alphanumeric string identical to the country code top-level extension “.tv”), moves the dot (“.”), and associates it with the generic top-level domain identifier (gTLD) “.com”.⁵ Use by Respondent of Complainant’s service mark, effectively adding only the gTLD “.com”, does not serve to distinguish the disputed domain name <323tv.com> from Complainant’s 323.TV service mark. Furthermore, because Complainant's 323.TV service mark is distinctive, Internet users are likely to confuse the disputed domain name with Complainant's service mark. The Panel determines that the disputed domain name <323tv.com> is confusingly similar to Complainant's 323.TV service mark.

The disputed domain name <h323.tv> incorporates Complainant’s registered service mark and adds the letter “h” as a prefix. It is not apparent to the Panel why the letter “h” was selected by Respondent, but in light of the distinctive character of Complainant’s service mark, it does not visually distinguish the disputed domain name <h323.tv> from Complainant’s 323.TV service mark to a sufficient extent to avoid a finding of confusing similarity. The Panel determines that the disputed domain name <h323.tv> is confusingly similar to Complainant’s 323.TV service mark.

The Panel has determined that Complainant has rights in the service mark 323.TV, and that the disputed domain names are confusingly similar to that service mark.

B. Rights or Legitimate Interests in

The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

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

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.” (Policy, paragraph 4(c))

Complainant has argued that Respondent lacks rights or legitimate interests in the disputed domain names because: (1) Complainant has found no evidence that Respondent has made any bona fide offering of goods or services in connection with the disputed domain names, and has acquired no rights in Complainant’s mark; (2) Respondent owns no trademark applications in the U.S. or elsewhere for the 323.TV mark; (3) Respondent is not making legitimate noncommercial or fair use of the disputed domain names, and Respondent has not registered or filed applications to register 323TV or 323TV.COM as trademarks, and (4) Respondent intends to mislead or divert consumers or tarnish the service mark at issue, and to profit from the disputed domain names “by including the goods and services of Complainant’s rival companies at its website”. The Panel finds Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names.

The only evidence on the record of this proceeding regarding Respondent’s use of the disputed domain names is to redirect Internet users to Respondent’s commercial website. At its website, Respondent offers goods and services that are directly competitive with those of Complainant. There is nothing on Respondent’s website that would suggest to an Internet user that Respondent is not associated with Complainant. An Internet user reaching Respondent’s commercial website by clicking on a URL incorporating one of the disputed domain names might logically assume that Complainant was doing business on its website under a new or different name. The Panel finds this is not bona fide use of the disputed domain names prior to notice of a dispute, and it is not legitimate noncommercial or fair use of Complainant’s service mark in the disputed domain names. Respondent has not otherwise established rights or legitimate interests in the disputed domain names.

The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include “(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or (ii) [the respondent has] 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; or (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site 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 [respondent’s] web site or location or of a product or service on [respondent’s] web site or location”.

Because the Panel has determined that Complainant established common law rights in the 323.TV service mark in October 2003, Complainant established rights in its service mark before the creation of the records of registration of the disputed domain names.

Respondent has used the disputed domain names solely for the purpose of redirecting Internet users to its own commercial website where it is in direct competition with Complainant. It appears to the Panel that Respondent has acted to disrupt the business of a direct competitor by registration and use of the disputed domain names (i.e., by diverting customers away from Complainant and to Respondent).

By redirecting Internet users to its website by use of Complainant’s service mark in the disputed domain names, Respondent appears to be intentionally acting for commercial gain to attract Internet users to its website by creating a likelihood of confusion as to whether Complainant is the source, sponsor, affiliate or endorser of Respondent’s website. The likelihood of confusion is heightened by the fact that Respondent offers at its website goods and services directly competitive with those of Complainant.

The Panel has determined two grounds for a finding of bad faith registration and use by Respondent. The Panel need not consider additional grounds for a finding of bad faith.

The Panel determines that Respondent registered and is using the disputed domain names in bad faith within the meaning of sub-paragraph 4(b)(ii) and (iv) of the Policy.

The Panel will direct the Registrar to transfer the disputed domain names to Complainant.

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 names, <h323.tv> and <323tv.com>, be transferred to Complainant.

Frederick M. Abbott
Sole Panelist
Dated: July 5, 2012

¹ Complaint’s home page states:

“323.TV™ is the Leading Provider of New & Used Video Conferencing Products!

Founded in 2000, we have since deployed thousands of Video Conferencing systems for companies which have one thing in common: they connect using the Internet. Organizations that choose 323.TV™ to take them to the next level; Our clients are of an eclectic sort, including everyone from hospitals to law firms, and even the Mission-to-Mars flight facility.”

² The Panel obtained the WhoIs record from DomainTools on July 5, 2012 (http://whois.domaintools.com/323.tv).

³ The date at which Complainant first acquired service mark rights is principally relevant with respect to the determination of bad faith. The Panel introduces the issue in the discussion of trademark rights because the determination is part of establishing rights in the service mark.

⁴ Complainant’s application for registration of 323.TV was filed on January 29, 2010, and that filing date served as constructive use in commerce contingent on the subsequent registration (15 U.S.C. §1057).

⁵ Complainant has rights in a service mark that includes an alphanumeric string identical to a country code extension (i.e., “.tv”). This means that the country code may not be disregarded for purposes of a confusing similarity analysis.