Audiopoint, Inc. v. eCorp a/k/a Chad Folkening

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Audiopoint, Inc. v. eCorp a/k/a Chad Folkening

Case No. D2001-0509

1. The Parties

Complainant is Audiopoint, Inc., a Virginia corporation. Complainant is represented

by Knobbe, Martens, Olson & Bear, LLP.

Respondent is eCorp, Inc., an Indiana corporation represented by Ari Goldberger.

The Complainant identified the Respondent as "eCorp a/k/a Chad Folkening";

Mr. Folkening is listed as the administrative contact for eCorp.

2. The Domain Name and Registrar

The domain name at issue is <audiopoint.com>. The domain name is registered

with Tucows.com, Inc.

3. Procedural History

Complainant filed its Complaint under the ICANN Uniform Domain Name Dispute

Resolution Policy (the "Policy") with the World Intellectual Property

Organization Arbitration and Mediation Center (the "Center") by email

on April 6, 2001. A hard copy version was received on April 10, 2001. After

confirming that the Complaint satisfied the Rules for Uniform Domain Name Dispute

Resolution Policy (the "Rules"), the Center sent Respondent notice

of the commencement of this proceeding on April 18, 2001. Respondent submitted

a timely response by email on May 7, 2001 and in hard copy on May 14, 2001.

On April 10, 2001, the Center requested a registrar verification in connection

with this case. On April, 11, 2001, Tucows.com, Inc. confirmed that the Registrant

is the Respondent.

On May 30, 2001, after clearing for potential conflicts, the Center appointed

Robert A. Fashler and David E. Sorkin as Panelists and David H. Bernstein as

the Presiding Panelist in this matter.

4. Factual Background

The Panel has reviewed the Complaint and Response. The following facts appear

to be undisputed:

Complainant is in the business of providing voice portal services. According

to the Complaint, its founder, Nicholas K. Unger, selected the AUDIOPOINT mark

in January 1999 and thereafter "began using the AUDIOPOINT name and mark

in connection with the development of voice portal services." Complainant

did not begin to "promot[e] its services" under the AUDIOPOINT mark

until June 1999, the same month Complainant filed a trademark application. That

application was assigned Serial No. 75/741,380 and is still pending. On June

24, 1999, Audiopoint, Inc., was incorporated under the laws of Virginia.

Respondent registered the <audiopoint.com> domain name on February 8,

1999. As of that date, Complainant had not yet applied for a trademark registration

and had not yet offered (or even promoted) any services under the AUDIOPOINT

mark. Furthermore, Respondent certifies, and Mr. Folkening swears, that they

had no knowledge of Complainant at the time Respondent registered the disputed

domain name.

Over the course of several months (from approximately October 2000, to April 2001),

the Complainant and Respondent engaged in negotiations concerning the sale of

the disputed domain. These negotiations were initiated by Complainant. At the

time the negotiations broke down, Complainant had offered to purchase the domain

name for $35,000; Respondent had offered to sell it for $60,000.

5. Parties’ Contentions

A. Complainant

Complainant alleges that it has rights in the mark AUDIOPOINT because it has

used the mark in connection with the design and development of its voice portal

service since as early as January 1999, and in promoting its services over the

Internet since June 1999. Complainant contends it has been damaged by the lost

traffic and business to its website, in addition to misdirected emails, all

of which result from the similarity between its trade name and mark and the

contested domain name.

Complainant further contends that Respondent lacks any rights or legitimate

interests in the domain name. Complainant alleges that Respondent has made no

use of the domain name in connection with a bona fide offering of goods or services;

that Respondent’s claim that the domain name is part of a larger project in

development is unsupported and without evidence; and that Respondent is in the

business of registering domain names in the hopes of selling the rights in the

domain names for a profit rather than for the purpose of using the domain name

for legitimate purposes.

To show bad faith, Complainant states that Respondent registered the domain

name <audiopoint.com> without a bona fide intent to use the domain name

and with the primary purpose of selling or transferring the domain name for

consideration in excess of documented out-of-pocket costs directly related to

Respondent’s development of the domain name.

Complainant further contends that Respondent intentionally misled Complainant

when it registered the domain name under the registrant name "AudioPoint",

causing Complainant to believe Respondent was engaged in a legitimate business.

Complainant claims to have been further misled when Respondent asserted that

it had invested "time and money" into developing the domain name as

part of its platform for a global web communications company. Complainant argues

that these statements were intentionally misleading because they are completely

unsupported.

Complainant also points out that the actions it attributes to the Respondent

are part of a pattern of practice, citing other cases in which Respondent was

accused of cybersquatting.

Finally, Complainant points to Respondent’s active communication with Complainant

regarding the sale of <audiopoint.com> as proof of Respondent’s bad faith

use.

B. Respondent

In its defense, Respondent alleges that Complainant does not have enforceable

rights to the mark AUDIOPOINT because it filed its trademark application four

months after the domain name was registered.

Respondent contends that it has a legitimate interest in the domain name, citing

its plan to use the name within its "Point Network". This network,

consisting of over sixty domain names containing the suffix "point.com",

would provide users with easily accessible information and links to web sites

related to the various descriptive terms found in the domain name; thus, <audiopoint.com>

would direct users to audio hardware, software, service, and companies. Other

domain names in the series include <mediapoint.com>, <cablepoint.com>

and <deliverypoint.com>.

In response to the allegations of bad faith, Respondent challenges Complainant’s

interests in the AUDIOPOINT mark. Particularly, Respondent claims that no trademark

existed at the time the domain name was registered, making Complainant’s burden

of proving bad faith registration impossible to satisfy. Further, Respondent

asserts that it had no knowledge of Complainant at the time it registered the

contested domain name.

Respondent further contends that Complainant engaged in Reverse Domain Name

Hijacking due to the fact that Complainant knew Respondent registered the disputed

domain before Complainant had ever filed a trademark application.

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(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 used in bad faith.

A. Similarity of the Mark and Domain Name

Although the extent of Complainant’s rights in the mark AUDIOPOINT is ambiguous

as of the time Respondent registered the domain name, the first factor of Policy

¶ 4(a) examines the status of Complainant’s trademark rights at the time the

Complaint is filed, not at the time the domain name is registered. Document

Technologies, Inc. v. International Electronic Communications Inc., Case

No. D2000-0270 (WIPO June 6, 2000). Consequently, Respondent’s focus on

Complainant’s uncertain trademark rights as of January 1999 is misplaced with

regard to this first factor. At the time it filed the Complaint, Complainant

was using the AUDIOPOINT mark in connection with the sale of goods and services.

(Footnote 1)

Having established that Complainant has rights in the AUDIOPOINT mark, it is

simple to complete the analysis under the first factor. The domain name <audiopoint.com>

is virtually indistinguishable from Complainant’s mark AUDIOPOINT. The only

difference between Complainant’s name and mark and the disputed domain name

is the addition of ".com". Therefore, the Panel concludes that the

Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Legitimate Interest in the Domain Name

Paragraph 4(c)(i) of the policy states that respondents may establish legitimate

interests in a domain name by presenting evidence of use of, or demonstrable

preparations to use, the domain name before any notice of the dispute. Respondent’s

mere assertion that it planned to use <audiopoint.com> within its Point

Network does not constitute "demonstrable preparations." See World

Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, Case

No. D2000-1306 (WIPO January 24, 2001). Nor does Respondent’s

purchase of sixty domain names, all of which end with the suffix "point"

signify "demonstrable preparations". If it did, it would allow cybersquatters

to protect their unlawful activity by engaging in wholesale cybersquatting all

at once, through the registration of multiple, related domain names, and then

claiming that all of the names were part of a planned future use. Moreover,

since the purchase of the first "point" site, three years have passed,

and Respondent has submitted no evidence of any actions to develop the alleged

Point Network. See Helen Fielding v. Anthony Corbert aka Anthony Corbett,

Case No. D2000-1000 (WIPO September 25,

2000) (Respondent’s allegations of legitimate use overcome by Respondent’s failure

to use the domain name for two years).

This is not to say that a respondent must have a fully developed website in

order to show a legitimate interest. Indeed, speculation in domain names when

done without any intent to profit from others’ trade mark rights may itself

constitute a bona fide activity under paragraph 4(c)(i). See, e.g. Kis v.

Anything.com Ltd., Case No. D2000-0770

(WIPO November 20, 2000); Allocation Network GmbH v. Steve Gregory, Case

No. D2000-0016 (WIPO March 24, 2000); General Machine Products Co. V.

Prime Domains, Case No. FA92531 (NAF March 16, 2000). However, Respondent

does not allege that it has engaged in domain name speculation, nor that it

has any interest arising therefrom.

In order to rebut Complainant’s prima facie showing, Respondent should have

provided this Panel with concrete evidence of its preparations to use <audiopoint.com>.

See Document Technologies, Inc., supra (once complainant makes prima

facie showing that Respondent lacks a legitimate interest, the burden of production

shifts to the Respondent to rebut that showing, but the burden of proof always

stays on the Complainant). Respondent has failed to do so. Accordingly, this

Panel finds that Respondent has no legitimate interest in the disputed domain

name.

C. Bad Faith

Complainant alleges bad faith based on Respondent’s registration of <audiopoint.com>

under the name AudioPoint rather than eCorp. On the facts of this case, though,

this factor does not establish bad faith. There is no evidence that Respondent

used fictitious names or pseudonyms to hide his true identity. Cf. Home Director,

Inc. v. HomeDirector, Case No. D2000-0111

(WIPO April 11, 2000) (finding cybersquatting based, in part, on respondent

Folkening’s use of multiple pseudonyms to mask his identity). Although false

contact information is a bad faith factor under Section 43(d) of the Lanham

Act, 15 U.S.C. § 43(d)(1)(B)(i)(VII), (Footnote

2) that provision is not implicated where there is no evidence that Respondent

attempted to hide its identity, prevent service of process, or make contacting

Respondent difficult or impossible. Here, Respondent provided information that

appears to have been accurate with regard to the administrative, technical,

and billing contact for the domain name. Moreover, Complainant never alleged

that it had difficulty contacting Respondent. For these reasons, Complainant

has failed to establish bad faith registration on this ground.

Complainant also claims that Respondent registered <audiopoint.com> with

the intention of transferring the domain name to Complainant for valuable consideration

in excess of documented out-of-pocket costs in violation of 4(b)(i) of the Policy.

Although Respondent did engage in negotiations over the possible sale of the

domain name, those negotiations do not prove a bad faith registration

when it is undisputed that Respondent never heard of Complainant or its mark

at the time of registration. Indeed, it appears that Complainant did not even

develop any protectible common law trademark rights until well after Respondent’s

registration of the domain name. See E-Duction, Inc,. v. Zuccarini, Case

No. D2000-1369 (WIPO February 5, 2001). Accordingly, this Panel finds that

Complainant has failed to show bad faith registration.

Paragraph 4(a)(iii) of the policy requires Complainant to prove both bad faith

use and bad faith registration. Id. Because the Complainant has failed

to show bad faith registration, it is unnecessary for the Panel to address the

element of bad faith use.

D. Reverse Domain Name Hijacking

Respondent has asked the Panel to make a finding of attempted Reverse Domain

Name Hijacking. Rule 1 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." See also Rule 15(e). To prevail on such a claim,

Respondent must show that Complainant knew of either the Respondent’s unassailable

right or legitimate interest in the disputed domain name or the clear lack of

bad faith registration and use, and nevertheless brought the Complaint in bad

faith. See, e.g., Sydney Opera House Trust v. Trilynx Pty. Ltd., Case

No. D2000-1224 (WIPO, October 31, 2000) Further, when determining

whether the Complainant brought the Complaint in bad faith, the Panel should

consider both "malicious intent and recklessness or knowing disregard of

the likelihood that the respondent possessed legitimate interests." Goldline

International, Inc. v. Gold Line , Case

No. D2000-1151 (WIPO January 4, 2000) citing, Loblaws, Inc. v. Presidentchoice.inc

/ Presidentchoice.com, Case Nos. Af-0170a to –0170c (eResolution, June 7,

2000)

Notwithstanding the weakness of Complainant’s bad faith claim, the Panel concludes

that Complainant’s conduct does not rise to the level of Reverse Domain Name

Hijacking. A key fact is that Mr. Unger checked to see if the <audiopoint.com>

name was available on February 6, 1999, and learned that it was, but then, when

he went back to register it on February 9, 1999, found that eCorp had snatched

up the name in the intervening days. Complainant may well have been suspicious

of this timing, and may have reached the conclusion that eCorp somehow learned

that Complainant had checked the availability of that name. Those suspicions

may have been deepened when Complainant learned that eCorp was associated with

Mr. Folkening, who has a history of cybersquatting. Furthermore, Respondent’s

communications concerning the sale of <audiopoint.com>, coupled with its

failure to show Complainant any evidence of a legitimate interest in the domain

name, may have given Complainant a basis for believing that Respondent was engaged

in the practice of cybersquatting. Accordingly, the Panel does not find Reverse

Domain Name Hijacking.

7. Decision

Complainant has failed to establish that Respondent registered <audiopoint.com>

in bad faith. The Panel therefore denies the Complainant’s request that the

domain name be transferred from Respondent to Complainant.

David H. Bernstein

Presiding Panelist

David E. Sorkin

Panelist

Robert A. Fashler

Panelist

Dated: June 14, 2001

Footnotes:

1. The Panel notes that the owner of the trademark application is listed as

Mr. Unger, not Complainant Audiopoint, Inc. When the Complainant is a different

party from the owner of the trademark application on which Complainant relies,

the Complainant should explain why the application is owned by a different entity.

In this case, it is clear that Mr. Unger is the founder, CEO, and President

of Audiopoint. (back to text)

2. When both parties are United States residents, it is appropriate for the

Panel to consider United States legal principles in determining elements such

as trademark rights, fair use and bad faith. Tribeca Film Center, Inc. v.

Brusasco-Mackenzie, Case No. D2000-1772

(WIPO April 10, 2001), n.3. (back to text)